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 .
Status of Claims
The arguments filed on 07/10/2025 are acknowledged and have been fully considered. Claim 1 has been amended. Claim 21 has been withdrawn. Claim 22 has been canceled. Applicants’ amendments are supported by the originally filed disclosure.
No new matter has been added.
Thus, claims 1-20 will be examined on the merits herein.
Rejections Maintained and Made Again in view of Applicant’s Amendments
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over WEINLING (machine translation of FR 2923390 A1) in view of BLIN (US 20130129652 A1).
Regarding instant claim 1,3-4, 6-9 and 19-20 WEINLING discloses a cosmetic composition of eyeshadow (see entire document, for instance, page 1, line 15 and claims 1-9). WEINLING teaches eye shadow comprises at least one film forming polymer in the form of solid particles in aqueous dispersion and a coloring agent comprising diffracting pigments, interference pigments (dyestuff) and/or reflective particles, in an aqueous medium (see entire document, for instance, abstract). WEINLING teaches the use of particles of film-forming polymer in aqueous dispersion and dyestuffs makes it possible to obtain a composition capable of forming on the keratin materials a glossy film having an intense color effect, moreover, the resulting composition film is smooth and homogeneous and has good durability over time (page 1, lines 22-26). WEINLING discloses fillers which may be selected from those well known to those skilled in the art and commonly used in cosmetic compositions (page 11, lines 491-492). The fillers can be mineral or organic, lamellar or spherical (page 11, lines 492-495). They may represent from 0.1 to 25% (page 11, lines 495-497). As filler, it is possible to use: kaolin which is a hydrated aluminum silicate ...silica (page 11, lines 515-522). The composition according to the invention may comprise a water-soluble gelling agent (thickener) (see entire document, for instance, page 7-8). Claim 1 recites that the composition provides a matt-effect after application. Looking to Applicants’ instant specification, the limitation of matt-effect appears to be a property that is tethered to and definitive of the instantly encompassed composition limitation discussed therein (see Spec., page 3, lines 5-12and lines 45-48). As such, consistent with MPEP §2111.01(IV), §2112.01(I) and (II), and §2173.05(g), the Examiner submits that where Applicants’ defining composition is disclosed in the prior art, the recited limitation of claim 1 will also be considered to be met. WEINLING discloses the film-forming polymers may in particular be vinyl polymers, or copolymers, in particular acrylic polymers (see entire document, for instance, page 6 lines 275-280). The vinyl film-forming polymers may result from the polymerization of ethylenically unsaturated monomers having at least one acid group and/or esters of these acid monomers and/or amides of these acid monomers (see entire document, for instance, page 6 lines 279-282). As monomer carrying an acid group, it is possible to use unsaturated α, |3-ethylenic carboxylic acids such as acrylic acid, methacrylic acid, crotonic acid, maleic acid, itaconic acid (see entire document, for instance, page 6 lines 282-284). (Meth)acrylic acid and crotonic acid are preferably used, and more preferably (meth)acrylic acid (see entire document, for instance, page 6 lines 284-286). However, they do not expressly disclose including the ionic polymeric dispersant is in the form of a salt. Blin et al remedies this deficiency.
Blin discloses formulations that are more particularly intended for making up facial skin, which combine the makeup properties of a foundation and the sensory and/or efficacy properties of a care product of aqueous architecture ([0001]). Blin teaches it would be advantageous for users to combine in a novel formulation the respective qualities of aqueous formulations, namely freshness and softness, and of formulations of foundation type, in terms of dispersion of particulate materials and uptake ([0005]). Blin discloses hydrophilic acrylic polymer makes it possible especially to obtain a composition that has good stability properties ([0043]). Blin teaches hydrophilic acrylic polymers that may be used according to the invention, mention may also be made of homopolymers or copolymers of acrylic or methacrylic acids or salts thereof and esters thereof, such as sodium polymethacrylate sold under the name Darvan No. 7.RTM. by the company Vanderbilt ([0080] - [0081]). Blin teaches mineral pigments such as iron oxides and/or titanium dioxides (see entire document, for instance, [0170]- [0171]). Blin discloses fillers, of mineral or organic, natural or synthetic nature, give the composition softness and give the makeup result a matt effect and uniformity ([0257]).
Thus, 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 incorporate the composition as described by WEINLING with the composition of Blin et al. One would be motivated to do so with a reasonable expectation of success in combining prior art elements according to known methods to yield predictable results. In the instant case a stable formulation with good sensory properties in terms of freshness is the expected result which is obvious.
Regarding instant claim 2, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize from 0.1 to 25% by weight of fillers as taught by WEINLING l (page 11, lines 495-497). 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 the instant case the from 0.1% to 25% by weight of fillers overlap on the instantly claimed amounts.
Regarding instant claims 5 and 10, WEINLING discloses the composition comprises at least 0.5%, preferably at least 1%, better still at least 2% and even better at least 3% by weight of dry matter of film-forming polymer (page 6, lines 266-268). 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 the instant case the from 0.5% to 3 % by weight of fillers overlap on the instantly claimed amounts.
Regarding instant claims 11- 12, WEINLING discloses the composition according to the invention may comprise a water-soluble gelling agent (thickener) (see entire document, for instance, page 8-9). The watersoluble gelling agents which can be used in the compositions according to the invention can be chosen from: homo- or copolymers of acrylic or methacrylic acids or their salts and esters and in particular the SYNTHALEN K type, PEMULEN type (see entire document, for instance, page 8-9). The watersoluble gelling polymer may be present in the composition according to the invention in a dry matter content ranging from 0.01% to 60% by weight (see entire document, for instance, page 8-9). it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize the gelling polymer in a total active material content ranging from 00.01% to 60% by weight relative to the total weight of the composition as taught by WEINLING et al. in the composition (see entire document, for instance, page 9 lines 392-397).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 the instant case from 0.01% to 60% by weight overlaps with the instantly claimed range.
Regarding instant claim 13- 15, WEINLING teaches interference pigments (dyestuff, nacres) (see entire document, for instance, page 1 line 29 and 37, page 2 lines 38-101). WEINLING discloses dyestuff from 10 to 40% by weight (page 2 lines 38-41).
Regarding instant claim 16- 18, WEINLING discloses Aqueous phase The aqueous phase comprises water and/or at least one water-soluble solvent (page 9, lines 396-397). By “water-soluble solvent” is meant in the present invention a compound that is liquid at room temperature and miscible with water (miscibility in water greater than 50% by weight at 25°C and atmospheric pressure), such as for example monoalcohols. in C2-C6 such as ethanol, isopropanol, n-propanol (page 9, lines 397-400, claim18). The aqueous phase (water and optionally the solvent miscible with water) is generally present in the composition according to the present application in a content ranging from 5% to 95% by weight, relative to the total weight of the composition, preferably ranging from 5% to 70% by weight, and preferably ranging from 5% to 60% by weight (page 9, lines 400-424). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to select the optional additional ingredients and/or the amount thereof such that the advantageous properties of the composition according to the invention are not, or are not substantially, adversely affected by the envisaged addition (Instant Specification page 31, lines 19-22).
Response to Arguments
Applicant's arguments filed 07/10/2025 have been fully considered but they are not persuasive. Applicant argue, “Weinling discloses a shiny eye shadow composition… The pending claims have been amended to reflect that the claimed compositions provide a matt effect, not a shiny effect.” According to instant specification, the term matt-effect or “soft-focus” filler means a filler which gives the complexion greater transparency and a hazy effect (page 3, lines 5-8). The term “matt-effect power” especially means that the composition produces a negative sheen value measured using a polarimetric camera, after application of a composition according to the invention to said keratin material ( page 3, lines 10-12). The term “fillers” should be understood as meaning colourless or white, mineral or synthetic particles of any shape, which are insoluble and dispersed in the aqueous phase of the composition (page 2 lines 45-47, page 3 lines 1-4). Instant specification discloses these matt-effect fillers may be chosen from silica powders ( page 3, lines 45-48). Claim 1 recites that the composition provides a matt-effect after application Looking to Applicants’ instant specification, the limitation appears to be a property that is tethered to and definitive of the instantly encompassed composition limitation discussed therein, and since the composition has the same components, the composition would necessarily have the instantly claimed matt-effect.
New Grounds of Rejection — Necessitated by Amendment
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over WEINLING (machine translation of FR 2923390 A1) and BALESTAN et al (FR 3028760 A1).
Regarding instant claim 1,3-4, 6-9 and 19-20 WEINLING discloses a cosmetic composition of eyeshadow (see entire document, for instance, page 1, line 15 and claims 1-9). WEINLING teaches eye shadow comprises at least one film forming polymer in the form of solid particles in aqueous dispersion and a coloring agent comprising diffracting pigments, interference pigments (dyestuff) and/or reflective particles, in an aqueous medium (see entire document, for instance, abstract). WEINLING teaches the use of particles of film-forming polymer in aqueous dispersion and dyestuffs makes it possible to obtain a composition capable of forming on the keratin materials a glossy film having an intense color effect, moreover, the resulting composition film is smooth and homogeneous and has good durability over time (page 1, lines 22-26). WEINLING discloses fillers which may be selected from those well known to those skilled in the art and commonly used in cosmetic compositions (page 11, lines 491-492). The fillers can be mineral or organic, lamellar or spherical (page 11, lines 492-495). They may represent from 0.1 to 25% (page 11, lines 495-497). As filler, it is possible to use: kaolin which is a hydrated aluminum silicate ...silica (page 11, lines 515-522). The composition according to the invention may comprise a water-soluble gelling agent (thickener) (see entire document, for instance, page 7-8). WEINLING discloses the film-forming polymers may in particular be vinyl polymers, or copolymers, in particular acrylic polymers (see entire document, for instance, page 6 lines 275-280). The vinyl film-forming polymers may result from the polymerization of ethylenically unsaturated monomers having at least one acid group and/or esters of these acid monomers and/or amides of these acid monomers (see entire document, for instance, page 6 lines 279-282). As monomer carrying an acid group, it is possible to use unsaturated α, |3-ethylenic carboxylic acids such as acrylic acid, methacrylic acid, crotonic acid, maleic acid, itaconic acid (see entire document, for instance, page 6 lines 282-284). (Meth)acrylic acid and crotonic acid are preferably used, and more preferably (meth)acrylic acid (see entire document, for instance, page 6 lines 284-286). However, they do not expressly disclose including the ionic polymeric dispersant is in the form of a salt. BALESTAN et al remedies this deficiency.
BALESTAN discloses cosmetic compositions for care and / or make-up of the skin and / or mucous membranes, preferably in the form of a dispersion in particular the field of eyeshadow (see entire document, for instance, Abstract). BALESTAN teaches the composition is stable and allows a homogeneous distribution. It may also make it possible to obtain variations in color tones as a function of the light on the make-up, in particular by means of a matt effect (page 4). BALESTAN discloses by “fillers” we mean colorless or white, solid particles of all shapes, which are insoluble and dispersed in the medium of the composition (page 7). Mineral or organic in nature, they help to give the composition softness, matteness and uniformity to the makeup (page 7). Among the mineral fillers that can be used in the compositions include silica, Silica Beads (page 7). BALESTAN hydrophilic acrylic polymers that may be used according to the invention, mention may also be made of homopolymers or copolymers of acrylic or methacrylic acids or salts thereof and esters thereof and in particular the products sold under the names sodium polymethacrylate sold under the name "DARVAN N°7" by the company VANDERBILT (page 13). BALESTAN discloses INCI name Acrylates/C10-30 Alkyl acrylate Crosspolymer) such as the products marketed by the company Lubrizol under the trade names PEMULEN TR1, PEMULEN TR2, CARBOPOL 3028760 17 1382, CARBOPOL ETD 2020 (page 13). BALESTAN teaches the composition is therefore suitable for makeup and/or eyelid care (page 36). It is stable and allows for easy, quick and even makeup application, without any discomfort on the eyelids (page 36). It offers particularly good hold throughout the day, even in adverse conditions such as sport, heat or rain (page 36).
Thus, 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 incorporate the composition as described by WEINLING with the composition of BALESTAN et al. One would be motivated to do so with a reasonable expectation of success in combining prior art elements according to known methods to yield predictable results. In the instant case, a stable formulation with good sensory properties in terms of freshness as well as matteness and uniformity to the makeup is the expected result.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANET JOSEPH whose telephone number is (571)270-1372. The examiner can normally be reached Monday and Thursday 0730-1730 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham, can be reached at (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANET JOSEPH/Patent Examiner, Art Unit 1611
/TREVOR LOVE/Primary Examiner, Art Unit 1611