Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
The amendments and arguments filed on 01/12/2026 are acknowledged and have been fully considered. Claims 1-7, 9-11, 13-15, and 18-26 are now pending. Claims 1 and 9 are amended; claims 8, 12 and 16-17 are cancelled.
Claims 1-7, 9-11, 13-15, and 18-26 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Maintained Rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9-11, 15, 19-20, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20060130248 A1 (Pays et al., 2006) in view of US PGPUB 20050142089 A1 (Lu et al., 2005).
In regards to claims 9, 15, 20, and 24, Pays teaches a cosmetic composition, specifically a mascara (see Pays, paragraphs 0005, 0262, 0273) comprising water (see Pays, paragraphs 0135-0136), at least one oil (see Pays, paragraphs 0110-0134), a surfactant having a HLB of less than 6 at 25°C such as glyceryl stearate (see Pays, abstract; paragraphs 0101-0104), silicone gum (see Pays, paragraph 0271), at least one wax in the amount from 1-40% by weight (see Pays, paragraphs 0145-0148), and a siloxysilicate resin, such as trimethylsiloxysilicate resins (see Pays, paragraph 0218). Further it is taught that the oil is a non-volatile silicone oil (i.e., trimethylsiloxysilicate) which are used in an amount of 0.1 to 20% by weight of the total composition (see Pays, paragraph 0131-0134).
In regards to claim 10, Pays teaches that the composition comprises dyestuff such as pigments (i.e. colorants) (see Pays, paragraphs 0250-0256).
In regards to claim 11, Pays teaches that the composition comprises a modified clay such as hectorites (see Pays, paragraph 0191).
In regards to claim 19, the surfactant is taught to be used in an amount of 0.1 to 30%, more specifically from 1.5 to 10% by weight relative to the total composition (see Pays, paragraph 0065).
In regards to claim 22, Pays teaches that there are many types of oils that may be used in the composition, including volatile linear or cyclic silicone oils (see Pays, paragraph 0119), however provides other options as well such as hydrocarbon-based oils or fluoro oils (see Pays, paragraph 0117) or non-volatile oils (see Pays, paragraphs 0122-0134). As such, the composition of Pays is not required to comprise a volatile linear silicone oil and meets the requirements of the instant claims.
While Pays does teach that mascaras in the form of water-in-oil emulsions are known in the art and incorporates art that teaches similar compositions (see Pays, paragraphs 0006-0012), it is worth noting that the compositions of Pays are drawn to the “waterproof mascaras” which have an oil continuous phase generally (see Pays, paragraph 0006). Thus, in the interest of compact prosecution, examiner has included the secondary reference of Lu et al. to show that it would be obvious to modify the teachings of Pays with Lu to form a water-in-oil mascara.
In regards to claims 9-11, Lu teaches a mascara composition in the form of a water-in-oil emulsion (see Lu, 0029) comprising cetyl dimethicone copolyol (i.e. a low HLB value surfactant (see instant specification, 0074)), trimethylsiloxysilicate (i.e. siloxysilicate resin) (see Lu, 0064), silicone gum such as Q2-1401 or Q2 1403 (see Lu, 0296-0297) as gelling agents (see Lu, paragraphs 0275-0297) which are taught to be used from 0.5% to 20% or from 1% to 10% relative to the total weight of the composition (see Lu, paragraph 0332), a non-silicone volatile oil (see Lu, 0047-0052), a coloring agent (see Lu, 0135), a modified clay such as hectorite (i.e. a silicate clay (see instant specification, 0129)), and less than 5% wax (see Lu, 0351). In regards to the amount of the trimethylsiloxysilicate, while a specific range is not taught in Lu, it can be seen in the examples, such as example 1, that it is used in an amount of 12% w/w (see Lu, example 1, table). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). The silicone gums have a viscosity greater than 100000 MPas (which is the same as 100000 cSt) (see Lu, paragraph 0291). Further, as evidenced by the instant specification, Q2-1401 and Q2-1403 are silicone gums with a viscosity greater than 60,000 cSt and less than 300,000 cSt (see paragraphs 0056-0057). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further in regards to claims 9 and 20, specifically to the teaching of more than 5% of a wax by weight of the total weight of the composition (instant claims 1 and 9) and from about 7% to less than 26% of a wax by weight of the total weight of the composition (instant claims 3 and 20), “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” One with ordinary skill in the art would reasonably expect that a composition comprising 4.99% (i.e., less than 5%) would have the same properties as a composition comprising more 5% of a wax (i.e., 5.01%) and about 7%. Further, it is noted that the instant specification teaches that the term “about” indicates that the numerical values are approximations that may vary depending on the desired properties and that the numerical parameters inherently contain certain errors necessarily resulting from the standard deviation (see instant specification as filed, paragraph 00142), and thus the term is being broadly interpreted. Further, it is taught in Lu that the composition contains “little to no wax, and in particular less than 5% wax” (see Lu, paragraph 0353), however the former part of this teaching is more ambiguous. As such, looking at the teaching with the broadest reasonable interpretation, it is understood that while it is preferred to have less than 5% wax, the teaching of Lu does not appear to exclude more than 5% wax in the composition.
In regards to claims 9-11, 15, 19-20, 22, and 24, it would be obvious to one with ordinary skill in the art at the time of the effective filing date to formulate a composition as taught by the instant claims as Lu teaches a similar composition as Pays that is in the form of an oil-in-water or water-in-oil emulsion (see Lue, paragraph 0029). Further, Pays teaches that the linear volatile silicone oil of Lu is known to have equivalents (see Pay, paragraphs 0110-0134). Further, both references teach methods to improve properties such as waterproofing and transfer resistance (see Lu, paragraph 0017) as well as a good ability to be removed using usual make up removers (see Pays, paragraph 0009). It would be obvious to one with ordinary skill in the art to combine the composition of Pays with the teachings of Lu according to the known method of making a water-in-oil emulsion (see Lu, paragraphs 0029, 0442-0448) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Further in regards to claim 22, it would be obvious to one with ordinary skill in the art to simply substitute one of the known equivalents taught in Pays (see Pays, paragraphs 0110-0134) for the volatile non-cyclic silicone oil of Lu to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
Claims 1-7, 14, 18, 21, 23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20060130248 A1 (Pays et al., 2006) in view of JP 2019131515 A (Tsukamoto, 2019; machine translation provided by PE2E via FIT).
The teachings of Pays have been described supra in regards to claims 9-11, 15, 19-20, 22, and 24. Further, in regards to claims 1-3, 6-7, 14, and 23, Pays teaches a cosmetic composition, specifically a mascara (see Pays, paragraphs 0005, 0262, 0273) comprising water (see Pays, paragraphs 0135-0136), at least one oil (see Pays, paragraphs 0110-0134), a surfactant having a HLB of at least about 6 at 25°C such as glyceryl stearate (see Pays, abstract; paragraph 0104), silicone gum (see Pays, paragraph 0271), at least one wax in the amount from 1-40% by weight (see Pays, paragraphs 0145-0148), and a siloxysilicate resin, such as trimethylsiloxysilicate resins (see Pays, paragraph 0218). Further it is taught that the oil is a non-volatile silicone oil (i.e., trimethylsiloxysilicate) which are used in an amount of 0.1 to 20% by weight of the total composition (see Pays, paragraph 0131-0134).
In regards to claim 4, Pays teaches that the composition comprises dyestuff such as pigments (i.e. colorants) (see Pays, paragraphs 0250-0256).
In regards to claim 5, Pays teaches that the composition comprises a modified clay such as hectorites (see Pays, paragraph 0191).
In regards to claim 18, the surfactant is taught to be used in an amount of 0.1 to 30%, more specifically from 1.5 to 10% by weight relative to the total composition (see Pays, paragraph 0065).
In regards to claim 21, Pays teaches that there are many types of oils that may be used in the composition, including volatile linear or cyclic silicone oils (see Pays, paragraph 0119), however provides other options as well such as hydrocarbon-based oils or fluoro oils (see Pays, paragraph 0117) or non-volatile oils (see Pays, paragraphs 0122-0134). As such, the composition of Pays is not required to comprise a volatile linear silicone oil and meets the requirements of the instant claims.
The teachings of Pays are silent on the use of a surfactant comprising alkoxylation.
In regards to claims 1 and 25, Tsukamoto teaches a water-in-oil emulsion composition that improves skin firmness and resilience, spreads well and causes no stickiness and gives good use feeling (see Tsukamoto, abstract). It is taught that the composition is a mascara (see Tsukamoto, paragraph bridging pages 4-5). The composition comprises a part (B), which is a polyether-modified silicone, specifically PEG-9 polydimethysiloxyethyl dimethicone (i.e. a low HLB value surfactant comprising alkoxylation) (see Tsukamoto, page 2, paragraph 7; claim 1) and part (C), which is a polyethylene glycol dipolyhydroxystearate, specifically PEG-30 dipolyhydroxystearate (i.e. a low HLB value surfactant comprising alkoxylation) (see Tsukamoto, paragraph bridging pages 3-4). It is also taught that the HLB value of component (B) is 2.5-5 (see Tsukamoto, page 3, paragraph 7). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 7, as parts (B) and (C) are the components of the “surfactant component”, the total weight of the surfactant component would be greater than 50% by weight of the total weight of the surfactant component of the at least one low HLB value surfactant comprising alkoxylation.
In regards to claims 1-7, 14, 18, 21, 23, and 25, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the composition as instantly claimed using the teachings of Pays and Tsukamoto especially as it is taught that a surfactant with alkoxylation, like PEG-9 polydimethylsiloxyethyl dimenthicone, is preferred over the glyceryl stearate of Pays as glyceryl stearate did not provide satisfactory spread and that without part (C), there was not a unform expansion spread either (see Tsukamoto, page 6, final paragraph). One with ordinary skill in the art would be motivated to combine the surfactant of Tsukamoto with the composition of Pays according to the known method making a water-in-oil emulsion (e.g. see Tsukamoto, page 7, production method) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claims 9-11, 13, 15, 19-20, 22, 24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20060130248 A1 (Pays et al., 2006) in view of JP 2019131515 A (Tsukamoto, 2019; machine translation provided by PE2E via FIT) as applied to claims 1-7, 14, 18, 21, 23, and 25 above, and further in view of US PGPUB 20050142089 A1 (Lu et al., 2005).
The teachings of Pays and Tsukamoto have been described supra.
The teachings of Pays and Tsukamoto are silent on the viscosity of the silicone gum.
The teachings of Lu have been described supra.
In regards to claim 9-11, 13, 15, 19-20, 22, 24, and 26, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as taught by the instant claims as Lu teaches a similar composition as Pays and Tsukamoto that is in the form of an oil-in-water or water-in-oil emulsion (see Lue, paragraph 0029). Further, both references teach methods to improve properties such as waterproofing and transfer resistance (see Lu, paragraph 0017) as well as a good ability to be removed using usual make up removers (see Pays, paragraph 0009). It would be obvious to one with ordinary skill in the art to simply substitute the silicone gums of Pays with the silicone gums of Lu to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive.
In regards to applicant’s argument that Pays teaches a surfactant having an HLB value of 6 or more and that the purpose of the surfactant is to stabilize the compositions, however, it is pointed out that Pays does teach surfactants with an HLB value of less than 6 (see Pays, paragraphs 0101-0104). As such, applicant’s argument that it would not be obvious to one with ordinary skill in the art to modify the teachings of Pays to include a surfactant that has an HLB value of less than 6 is moot, as it is part of the teaching of Pays. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983).
In regards to applicant’s argument that the compositions of Pays are not “easily removable” and that one with ordinary skill in the art would not modify the teachings of Pays in the manner taught by the instant invention because the goal of Pays is to form a stable inverse emulsion using HLB values greater than 6, it is pointed out that the claim is drawn to a composition with specific components and the prior art teaches that it would be obvious to use those components in the amounts as claimed. The test for obviousness is not to recreate a composition from the prior art, rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The motivation for combining the art has been described above. Further, the composition of Tsukamoto is taught to have reduced “stickiness” (i.e. easier to remove) due to the use of a low HLB value surfactant (see Tsukamoto, page 3, paragraphs 7-8). Applicant argues that Tsukamoto teaches that the composition comprises nicotinamide and the reduction of stickiness is in regards to its use, however the reduction of stickiness and good spread are benefits of emulsions that one with ordinary skill in the art would want to have for a composition being applied to the skin. As such, it would be within the purview of one with ordinary skill in the art to use the teachings of Tsukamoto with Pays to achieve those results, regardless of the inclusion of nicotinamide. However, even then the language of the instant claims is open (i.e., comprising) and as such the inclusion of nicotinamide is within the bounds of the claims and using the techniques of Tsukamoto to reduce the stickiness would be even more relevant.
Further, applicant points to example 6 and comparative examples B and C to show that the combination of ingredients would yield a composition that is not “easily removable” as taught by Pays, however, it is pointed out that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). This is also relevant to applicant’s argument that Pays teaches a laundry list of types of ingredients, examiner points out that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). Applicant further argues that Pays would not provide a starting point from which the present claimed invention could be obtained, however, the rejection is not made over just Pays, rather over Pays in view of Tsukamoto, which teach the materials as claimed. As taught in Tsukamoto, the composition is taught to have reduced “stickiness” (i.e. easier to remove) due to the use of a low HLB value surfactant (see Tsukamoto, page 3, paragraphs 7-8). Thus, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
No claims allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Isis A Ghali/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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