DETAILED ACTION
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 .
Claim Status
A non-final office action was mailed 13 August 2025.
Applicant’s response to that action was received on 13 November 2025.
Applicant’s 13 November 2025 response contained an Amendment to the claims, which was received and entered. As a result of that amendment: claims 1 and 19 were amended and claims 2-3, 5-10, 13-18, and 20-22 were previously presented. Therefore, claims 1-3, 5-10, and 13-22 remain pending and currently under consideration.
Withdrawn Claim Rejections
Previous claim objection over claim 1: Applicant’s amendment to claim 1 was sufficient to overcome the objection over claim 1. Therefore, the objection is moot and hereby withdrawn.
Previous 35 USC 101 claim rejections of claims 1, 3, 5-10, and 13-22: Applicant’s arguments with respect to this rejection have been fully considered and are persuasive. The 35 USC 101 rejection of claims 1, 3, 5-10, and 13-22 has been withdrawn. The instant claims are directed to a composition of matter. Claim 1, under its broadest reasonable interpretation, comprises a combination of five components that could each be naturally occurring and found separately in nature. However, together, these components take on entirely different properties than what would be expected of each individual component in nature (e.g., beeswax in nature is hydrophobic and not removable by water, but wax within the composition of claim 1 is removable by water).
Previous 35 USC 103 claim rejections of claims 19-22: Applicant’s arguments with respect to the rejection of claims 19-22 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Douezan (cited below) and Swanzy (previously cited)
New Claim Rejections
The following claim rejections are new and not necessitated by amendment.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19-20 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 recites the following: “an eyelash composition comprising…a removability from eyelashes increasing component…” Claim 20 also recites this limitation. This claim language is indefinite because it is unclear what constitutes a “removability from eyelashes increasing component” because the claim does not define the baseline composition against which removability is increased. Furthermore, the claim does not specify how “increasing” removability is measured (e.g., increased by what amount and under what conditions?). Therefore, one of ordinary skill could not identify the metes and bounds of the claim to determine infringement. Claim 22 is included in this rejection because of its dependency upon claim 1.
Because the basic and novel characteristics of the claimed invention as currently claimed in claims 19-20 and 22 is unclear, the transitional phrase ‘consisting essentially of’ will be interpreted as ‘comprising’ for purposes of searching and applying prior art under 35 U.S.C. 103. Use of the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. See MPEP 2111.03(III). There is no clear indication in the specification or the claims what the basic and novel characteristics of the invention are, and therefore, one of ordinary skill could not determine which ingredients do or do not materially affect the invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-10, and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Douezan (WO 2016/096628 A1; published: 23 June 2016), and further in view of Swanzy (cited in previous Office Action as: PGPub No. 2012/0225105 A1; published: 06 September 2012).
Douezan discloses a process for removing makeup from and/or for cleansing keratin materials, preferably keratin fibers, especially the eyelashes, comprising application of a makeup composition to said keratin materials (abstract).
Regarding the components of instant claim 1 – Douezan discloses embodiments of a makeup-removing composition comprising the following:
A coloring agent: the makeup-removing composition comprises at least one dyestuff (p. 4, lines 1-2; p. 35, lines 3-4).
Wax: the makeup-removing composition may comprise a fatty phase with at least one wax (p. 27, lines 6-14).
Film-forming agent: the makeup-removing composition comprises at one liposoluble or water-soluble film-forming polymer (p. 35, lines 5-7).
Sugar: the makeup-removing composition may comprise an aqueous phase ranging from 10 to 60 wt% relative to the total weight of the makeup-removing composition (p. 32, lines 14-17) where the aqueous phase may contain water and at least one water-soluble solvent (p. 32, line 21). Among the water-soluble solvents available for embodiments of the makeup-removing composition, Douezan discloses polyols and sugars such as glucose, fructose, maltose, lactose, and sucrose are useful (p. 32, lines 35-38).
Sugar wt% is greater than 5 wt% of total eyelash composition: the amount of polyol ranges from 0.1 to 20 wt% relative to the total weight of the aqueous phase (p. 32, lines 35-38; and p. 33, lines 1-2).
Oil component that contains one volatile hydrocarbon oil: the makeup-removing composition contains hydrocarbon-based oils that may be volatile or non-volatile and at a proportion greater than 15 wt%, or preferably from 60 to 90 wt%, relative to the total weight of the makeup-removing composition (p. 27, lines 15-36).
Low water content (defined by Applicant as less than 6 wt% at [0023] of the Specification): preferably, the makeup-removing composition is an anhydrous composition (p. 27, line 5) where the term ‘anhydrous composition’ is defined as a composition of mascara which contains less than 5 wt% water (p. 5, lines 1-11).
Oil wt% is greater than the sugar wt%: Douezan discloses a preferable range of volatile hydrocarbon-based oils ranging from 60 to 90 wt%, which exceeds the preferable range for polyols from 1 to 15 wt%.
In addition, Douezan further discloses that after the makeup-removing composition has been used, the keratin materials may be rinsed with running water without the addition of soap (p. 35, lines 20-21).
The limitation that “wherein application of water to the eyelash composition after it has been applied to eyelashes and allowed to dry and form a dried composition on eyelashes results in the dried composition breaking down” is considered future intended use of the composition and is given little patentable weight to the composition.
Regarding specific limitations of instant claim 1:
Applicant has defined sugars as: “solid, water-soluble, and oil-insoluble compounds…examples of sugars which can be used according to the invention are sugars belonging to the groups consisting of the oses or monosaccharides and their derivatives such as the polyols, and/or the groups consisting of the holosides, in particular the diholosides. Suitable sugars include, for example, sucrose, glucose, galactose…” (Specification, [0030]). Douezan’s disclosure of polyols and sugars at p. 32, lines 35-38 as optional components in the makeup-removing composition meets Applicant’s definition of sugars.
Applicant has defined low-water content as: “the compositions contain less than 6% water (by weight)” (Specification, [0023]). Douezan’s disclosure of the anhydrous nature of the makeup-removing composition at p. 32, lines 18-20 meets Applicant’s definition of low water content. Of note: as defined above, Applicant defines sugar as a “solid, water-soluble, and oil insoluble compound” indicating the need for at least some form of an aqueous phase during composition preparation.
In this aspect, Douezan’s disclosure of the sugar component dissolved in the aqueous phase differs from the sugar and low-water content limitation of instant claim 1 in that:
Douezan discloses the makeup-removing composition comprises an aqueous phase of less than 80% by weight of the total composition. Douezan further discloses the aqueous phase may comprise a sugar present in a range of 0.1% to 20% by weight relative to the total weight of the aqueous phase.
To meet the limitation of sugar in an amount greater than 5% by weight of the composition, as required by instant claim 1, the aqueous phase in Douezan would comprise greater than 20 wt% of the total makeup-removing composition assuming no other ingredients are added to the aqueous phase.
Furthermore, to meet the limitation of sugar in an amount of at least: 10 wt% (instant claim 8); 15 wt% (instant claim 9); or 20 wt% (instant claim 10), the aqueous phase would comprise at least: 40 wt%; 60 wt%; and 80 wt%, respectively, of the total makeup-removing composition assuming no other ingredients are added to the aqueous phase. This differs from the instant invention, requiring a composition with less than 6% wt% water.
However, the aforementioned wt% of sugar and aqueous phase does not take into consideration other water-soluble components with which Douezan discloses as being contained within the aqueous phase such as solvents in an amount of 0.005% to 5% by weight relative to the total weight of the aqueous phase (p. 32, lines 28-34) and adjuvants such as surfactant(s) in an amount of 1% to 5% by weight relative to the total weight of the makeup-removing composition or other adjuvants such as fragrances, dyestuffs, antioxidants, preserving agents, etc. (p. 33, lines 11-15). Although Douezan doesn’t disclose amounts of solvents, adjuvants, water, and sugar with particularity, the addition of other components in the aqueous phase would conceivably reduce the total amount of water in the makeup-removing solution.
Swanzy discloses anhydrous dispersion comprising dispersed sugar and oil as a composition to moisturize or exfoliate skin or as a cosmetic cleanser (abstract, [0003], and [0074]). Regarding instant claim 1, Swanzy discloses embodiments of a cosmetic cleanser comprising:
Coloring agent ([0008]: “the additional cosmetic ingredient can be a dye…”);
Wax ([0048]: “Other examples include…beeswax…candelilla wax….carnauba wax…”);
A film-forming agent ([0043]: “the CFTA Handbook describes a wide variety of the non-limiting cosmetic ingredients that can be used in the context of the present invention. Examples of these ingredient classes include…film formers.”);
Sugar in an amount greater than 5 wt% of the total composition ([0008]: A combination of granulated and powdered sugar in a range between 20 to 85 wt% of the total weight of the dispersion);
Oils including volatile oils such as rosemary and lavender oils in a range between 5 to 50 wt% or more of the total weight of the dispersion ([0008], [0038]). Both rosemary and lavender oils are volatile, contain high proportions of terpene hydrocarbons, and meet the structural definition of a volatile hydrocarbon oil disclosed by Applicant (Specification, [0051]); and
Low-water content ([0008]: “the dispersion is anhydrous i.e., includes no or an insubstantial amount of water…”).
The dispersion disclosed by Swanzy can be rinsed with water ([0011], [0087]).
Therefore, Swanzy discloses embodiments of a cosmetic composition used as a cleanser comprising a coloring agent, wax, a film-forming agent, sugar in an amount greater than 5 wt%, and a volatile hydrocarbon oil. In addition, Swanzy shows these ingredients are capable of combining in a negligible amount of water (e.g., less than 1 wt%) or no water at all. Swanzy evidences that those components disclosed by Douezan, to include a coloring agent, wax, a film-forming agent, sugar, and a volatile hydrocarbon oil, are capable of combination with little to no water. Therefore, although Douezan does not disclose the exact amount of water present in the aqueous phase or in the makeup-removing composition as a whole, the components of Douezan are capable of combination with a water content of less than 1 wt% of the total composition as evidenced by Swanzy.
Regarding instant claim 2, Douezan discloses the volatile hydrocarbon oil is isododecane (p. 31, lines 1-3).
Regarding instant claim 3, Douezan discloses the term ‘wax’ as it relates to the invention is defined as a lipophilic compound that is solid at room temperature (25°C), with a reversible solid/liquid change in state, having a melting point of greater than or equal to 30°C (p. 13, lines 3-5). Douezan further contemplates examples of waxes suitable for use, some of which include synthetic waxes (p. 14, lines 6-45).
Regarding instant claim 5, Douezan discloses the makeup-removing composition can be applied with a twisted or injection-molded mascara application brush (p. 35, lines 12-15). Of note: Applicant has defined mascara compositions as those comprising at least one coloring agent ([0061]), therefore this composition meets the limitations of a mascara composition as defined by the applicant.
Regarding instant claim 6, Douezan discloses a preferable range of volatile hydrocarbon-based oils ranging from 60 to 90 wt% of the total composition and a preferable range for polyols from 1 to 15 wt% of the aqueous phase. Although Douezan does not disclose, with particularity, the %wt of sugars in the total composition, Swanzy successfully formulates a cosmetic cleaning composition comprising sugars ranging from 20 to 85 wt% of the total composition and oils ranging from 5 to 50 wt% of the total composition. These disclosed ranges would produce ratios which overlap with the claimed ratio ranges. See MPEP 2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of “50 to 100 Angstroms” considered prima facie obvious in view of prior art reference teaching that “for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms].” The court stated that “by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range.”). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Regarding instant claim 7, Douezan discloses an embodiment of the makeup-removal composition contains sucrose (p. 32, lines 35-38).
Regarding instant claims 8-10, Douezan discloses the amount of polyol ranges from 0.1 to 20 wt%, or preferably from 1 to 15%, relative to the total weight of the aqueous phase (p. 32, lines 35-38; and p. 33, lines 1-2). Although Douezan does not disclose, with particularity, the %wt of sugars in the total composition, Swanzy successfully formulates a cosmetic cleaning composition comprising sugars ranging from 20 to 85 wt% of the total composition. These disclosed ranges would produce ranges which overlap with the claimed ranges. See MPEP 2144.05.
Regarding instant claims 13-18, Douezan discloses the following embodiments of the makeup-removing composition to meet the limitations of the instantly claimed invention:
Instant Limitations
Douezan Disclosure
At least one volatile hydrocarbon oil in an amount of from 35 to 60 wt%
The makeup-removing composition contains hydrocarbon-based oils that may be volatile or non-volatile and at a proportion greater than 15 wt%, or preferably from 60 to 90 wt%, relative to the total weight of the makeup-removing composition (p. 27, lines 15-36).
At least one wax in an amount of from 10 to 25 wt%
The makeup-removing composition contains other lipophilic constituents that may be present in the fatty phase such as wax (p. 27, lines 11-14).
At least one clay in an amount of from 3 to 10 wt%
The makeup-removing composition contains an adjuvant that can be a thickener (p. 33, lines 5-8; p. 4, lines 1-3). Further, Douezan discloses suitable thickeners can be clays such as organomodified bentonites or hectorites (p. 23, lines 37-40; p. 24, lines 1-3) present in a range of 0.1 to 10% wt% (p. 24, lines 5-7).
At least one film-forming agent in an amount of from 5 to 15 wt%
The makeup-removing composition contains at least one liposoluble or water-soluble film-forming polymer (p. 35, lines 5-7) in a preferred range of 10 to 30 wt% (p. 5, lines 34-38).
At least one cosmetically acceptable ingredient in an amount of 1 to 10 wt%
The makeup-removing composition contains a surfactant ranging from 1 to 5 wt% (p. 33, lines 10-15).
Optionally, at least one filler wherein the combined amount of filler, if present, and the coloring agent is from 5 to 20 wt%
Optional limitation, but at least one filler is disclosed at p. 4, lines 103 and p. 35, lines 1-2 in an amount ranging from 0.1 to 15 wt%.
In addition, at least one dye is disclosed at p. 4, lines 1-3 and p. 35, lines 3-4 in an amount ranging from 0.1 to 25 wt% (p. 21, lines 32-34).
Regarding instant claim 21, Douezan discloses the amount of polyol in the makeup-removing composition ranges from 0.1 to 20 wt%, or preferably from 1 to 15%, relative to the total weight of the aqueous phase (p. 32, lines 35-38; and p. 33, lines 1-2). See MPEP 2144.05.
Regarding the components of instant claim 19 – Douezan discloses embodiments of a makeup-removing composition comprising the following:
A coloring agent: the makeup-removing composition comprises at least one dyestuff (p. 4, lines 1-2; p. 35, lines 3-4).
Oil component that contains one volatile hydrocarbon oil: the makeup-removing composition contains hydrocarbon-based oils that may be volatile or non-volatile and at a proportion greater than 15 wt%, or preferably from 60 to 90 wt%, relative to the total weight of the makeup-removing composition (p. 27, lines 15-36).
Sugar: the makeup-removing composition may comprise an aqueous phase ranging from 10 to 60 wt% relative to the total weight of the makeup-removing composition (p. 32, lines 14-17) where the aqueous phase may contain water and at least one water-soluble solvent (p. 32, line 21). Among the water-soluble solvents available for embodiments of the makeup-removing composition, Douezan discloses polyols and sugars such as glucose, fructose, maltose, lactose, and sucrose are useful (p. 32, lines 35-38).
Sugar wt% is greater than 5 wt% of total eyelash composition: the amount of polyol ranges from 0.1 to 20 wt%, or preferably from 1 to 15%, relative to the total weight of the aqueous phase (p. 32, lines 35-38; and p. 33, lines 1-2).
Low water content (defined by Applicant as less than 6 wt% at [0023] of the Specification): preferably, the makeup-removing composition is an anhydrous composition (p. 27, line 5) where the term ‘anhydrous composition’ is defined as a composition of mascara which contains less than 5 wt% water (p. 5, lines 1-11).
Oil wt% is greater than the sugar wt%: Douezan discloses a preferable range of volatile hydrocarbon-based oils ranging from 60 to 90 wt%, which exceeds the preferable range for polyols from 1 to 15 wt%.
Regarding instant claims 20 and 22, Douezan discloses the amount of polyol ranges from 0.1 to 20 wt%, or preferably from 1 to 15%, relative to the total weight of the aqueous phase (p. 32, lines 35-38; and p. 33, lines 1-2). Although Douezan does not disclose, with particularity, the %wt of sugars in the total composition, Swanzy successfully formulates a cosmetic cleaning composition comprising sugars ranging from 20 to 85 wt% of the total composition. These disclosed ranges would produce ranges which overlap with the claimed ranges. See MPEP 2144.05.
The specific combination of components currently claimed is disclosed by both Douezan and Swanzy. Both prior art references teach a cleansing composition comprising a coloring agent, wax, a film-forming agent, a volatile hydrocarbon oil, and sugar. While Douezan does not explicitly disclose the composition as having low-water content or describe sugar content in the claimed ranges with particularity, these features are made obvious by Swanzy. Swanzy teaches the aforementioned components are capable of dissolution in an anhydrous dispersion with little to no added water. In addition, Swanzy teaches the dispersion contains a combination of sugar in ranges from 20 to 85 wt% of the total weight of the composition.
While Douezan does not necessarily disclose the composition with particularity to indicate a low-water content, this feature is made obvious by Swanzy, showing the components are capable of combination in little to no water. One of ordinary skill would be motivated to produce the components in an anhydrous formulation because Douezan discloses mascaras with low water content are waterproof and have long-lasting properties highly desired by consumers (substitute sheet, lines 16-21 and p. 2, lines 4-7). In addition, while Douezan does not necessarily disclose the composition with particularity to indicate an amount of sugar as required by the instant claims, this feature is made obvious by Swanzy, disclosing embodiments of a cosmetic cleanser whereby sugar is present in a range that overlaps with the instantly claimed ranges. One of ordinary skill would be motivated to increase sugar content in the cosmetic cleanser because Swanzy teaches the composition is stabilized by a higher sugar content.
Consistent with this reasoning, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to improve upon the base cosmetic composition taught by Douezan with the water and sugar content disclosed by Swanzy to arrive at the instantly claimed invention yielding no more than one of ordinary skill would expect from such an arrangement.
Conclusion
Claims 1-3, 5-10, and 13-22 are rejected. No claim is allowed.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A Rossi whose telephone number is (571)272-0138. The examiner can normally be reached Mon-Thurs 7:30a-5:30p (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571)272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA A ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615