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
Claims 1-3, 5-10, and 13-22 were previously pending.
A non-final rejection office action was mailed 18 March 2026.
In response to that office action, Applicant filed an Amendment/Request for Reconsideration recited 18 June 2026.
In their Amendment/Request for Reconsideration, Applicant amended claims 1 and 19-20; added claims 23; and did not cancel any claims.
Therefore, claims 1-3, 5-10, and 13-23 are now pending and currently under examination.
Withdrawn Claim Rejections
I. Claims 19-20 and 22 were previously rejected under 35 USC 112(b) as being indefinite. Applicant’s amendment to claim 19 was sufficient to overcome this rejection and the previously held rejection is hereby withdrawn.
Maintained Claim Rejections
The following rejections are maintained, amended only to incorporate Applicant’s claim amendments.
Claims 1-3, 5-10, and 13-18, and 21 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.
Response to Applicant’s Arguments
Applicant’s arguments have been fully considered and are not persuasive for the reasons stated below.
Regarding the previous 35 USC 103 rejection of record:
Applicant argues that amended independent claims 1 and 19 are patentable because Douezan does not relate in any way to the claimed compositions nor could Douezan lead to such compositions (Remarks, p. 9). To support this argument, Applicant asserts Douezan does not teach or suggest using sugars to render its compositions water-removable and then use water to remove such compositions as Douezan relates to using specific oils to effect removability of its compositions from eyelashes (Remarks, p. 9).
Claim 1 is directed to a composition rather than to a method of removal. The recited application of water therefore describes a condition under which the claimed composition exhibits a functional property. The amendment to claim 1 does not require a particular amount of water, water temperature, duration of exposure, manner of application, or degree of mechanical action. Rather, “sufficient water” encompasses any quantity of water for any time period adequate to produce the recited result. Even mascaras described as ‘waterproof’ would be removeable with sufficient water application.
As discussed in the previous rejection, Douezan teaches a low water content eyelash composition comprising a coloring agent, wax, film-forming agent, and volatile hydrocarbon oil. Douezan specifically identifies low water content or anhydrous mascaras as waterproof mascaras formed from dispersions of waxes in organic solvents. Swanzy teaches incorporating sugar into an anhydrous continuous oil phase and further teaches that the sugar-containing dispersion may be incorporated into cosmetic products, including mascaras. Swanzy also teaches that its sugar-containing compositions are rinsed with water and that components of the composition dissolve upon exposure to water.
The composition resulting from the expressly proposed combination would reasonably be expected to possess the property because the water-soluble sugar is dispersed within the dried matrix and its dissolution upon application of sufficient water would disrupt that matrix. A skilled artisan would have motivation to modify Douezan’s low-water mascara with Swanzy’s sugar-in-oil dispersion to provide a water-responsive, more readily removable cosmetic film while preserving an anhydrous or low-water formulation that is long-lasting.
Applicant’s disclosure describes the amount of water ‘sufficient to facilitate the removal of the applied composition’ as preferably between 5 and 20 grams of water ([0080]), but fails to set forth a required amount. Applicant describes only two removing solutions used in the working examples as commercially available eyelash composition removers whereby commercial remover 1 contains 60% water and commercial remover 2 contains 85% water ([0098]). Nothing further is disclosed regarding the identity of the removers or remaining ingredients. So, while Douezan teaches oil-based removal of waterproof mascara compositions, one of ordinary skill would also understand makeup removal compositions often comprise oil-in-water emulsions especially useful for removing waterproof mascara. Therefore, Applicant’s claim to novelty hinges on a limitation previously contemplated in the art.
New Claim Rejections
The following claim rejections are necessitated by Applicant’s claim amendments.
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 1-3, 5-10, 13-18, 20-21, and 23 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 1 is rejected under 35 USC 112(b) as indefinite because the limitation ‘application of sufficient water’ fails to provide objective boundaries for determining the scope of the claim. The claim does not specify the protocol for removability including temperature of water, duration, manner of application, degree of agitation, or other test conditions. The specification is also silent on these matters. Moreover, neither ‘breaking down’ nor ‘removability’ identifies an objectively measurable endpoint with which to guide the determination of ‘sufficient water.’ Consequently, a person of ordinary skill could not reasonably determine whether a particular composition satisfies the limitation of claim 1 because the result may depend upon an unspecified quantity of water and unspecified removal conditions.
Claims 2-3, 5-10, 13-18, and 21 are included in this rejection for their dependence on, requiring every limitation of, and failing to cure the defect of claim 1.
Claims 20 and 23 are rejected under 35 USC 112(b) as indefinite because the limitation “wherein the at least one sugar in an amount greater than 5% by weight of the eyelash composition is sufficient to facilitate removal of the eyelash composition after the eyelash composition has been applied to eyelashes and allowed to dry to form a dried composition on eyelashes using a water-containing composition…” is unclear. If ‘using a water-containing composition’ is meant to limit ‘removal,’ it should immediately proceed ‘removal.’ As currently written, using the water-containing composition limits the forming of a dried composition on eyelashes. Therefore, the claimed steps with which applicant intends are ambiguous and one of ordinary skill could not reasonably determine the metes and bounds of the claims as written.
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 19-20 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Douezan (WO 2016/096628 A1; published: 23 June 2016), in further view of Swanzy (cited in previous Office Action as: PGPub No. 2012/0225105 A1; published: 06 September 2012) and Pavel (WO 2016/099892; published: 23 June 2016).
The teachings of Douezan and Swanzy are discussed above. Regarding claims 19-20 and 22-23:
Douezan teaches cosmetic compositions for keratin materials, particularly eyelashes, and expressly identifies the compositions as mascaras (abstract). Douezan teaches that mascara formulations include water-based cream mascaras and anhydrous, or low-water-content, waterproof mascaras comprising waxes dispersed in organic solvents (p. 1). Douezan specifically discloses the need for a waterproof mascara composition which can be efficiently removed while being gentile to the skin (p. 1). Accordingly, Douezan teaches an eyelash composition that is low-water-content, as presently claimed.
Douezan further teaches the mascara composition comprises: at least one coloring agent, including pigments such as black iron oxide (p. 21); at least one wax (p. 9); at least one film-forming agent (p. 24); and at least one volatile hydrocarbon oil (p. 15).
Douzan does not expressly teach selecting relative amounts of sugar and oil such that total oil exceeds total sugar or applying a water-containing composition comprising at least 50% water to the dried mascara is sufficient to facilitate removal. However, this limitation is made obvious in view of Swanzy and Pavel.
Swanzy teaches stable anhydrous cosmetic dispersions comprising a solid sugar phase dispersed in a continuous oil phase (abstract). Swanzy teaches granulated and powdered sugars, which are solid, water-soluble, and oil-insoluble compounds containing multiple alcohol functional groups and at least four carbon atoms ([0036]-[0037]). These sugars therefore fall within Applicant’s express definition of sugar (see Specification, [0030]).
Swanzy teaches total sugar amounts in the composition from 20 to 85 wt% ([0008]). Accordingly, Swanzy teaches an amount of sugar greater than 5 wt% as currently claimed.
Swanzy teaches a continuous oil phase comprising mineral oil, triglycerides, plant oils, synthetic oils, silicone oils, or mixtures thereof ([0038]). Swanzy teaches the dispersion may contain 5-50 wt% or more oil ([0008]).
Swanzy also teaches: 1) the sugar can be stably dispersed within an anhydrous oil phase ([0008]); 2) the dispersion may include dyes, iron oxides, thickeners, film formers, emulsifiers, structuring agents, and other cosmetic ingredients ([0041]-[0069]); the dispersion may be incorporated into cosmetic products, expressly including mascaras ([0074]); and the sugar-containing dispersions may be rinsed with water and may contain components that dissolve upon contact with water or moisture ([0009]).
It would have been obvious to a person of ordinary skill, before the effective filing date of the claimed invention, to incorporate Swanzy’s solid, water-soluble, oil-insoluble sugar into Douezan’s anhydrous, oil-based mascaras. The skilled artisan would be motivated to make such modification because Swanzy expressly teaches its anhydrous sugar-in-oil dispersion may be incorporated into mascara and provides a stable means for dispersing solid sugar in an oil-based cosmetic vehicle. The modification would have predictably provided Douezan’s mascara with a water-soluble dispersed phase while maintaining its low-water or anhydrous form.
A person of ordinary skill would have reasonably expected success in making such modification because: Douezan’s mascara and Swanzy’s dispersion both use cosmetically acceptable oil-based or anhydrous vehicles; Swanzy expressly identifies mascara as a contemplated end product; Swanzy teaches its sugar phase remains suspended in the oil phase; and both references contemplate conventional cosmetic additives such as pigments, oils, thickeners, structuring agents, and film formers.
A person of ordinary skill would have selected the relative amounts of sugar and oil, as recited in claims 19-20 and 22-23 according to the desired viscosity, stability, application characteristics, film integrity, waterproofness, and removability-ease of the mascara. It was previously known in the art that the amounts of oil and dispersed water-responsive material affect these recognized formulation properties, and therefore, their relative proportions would have been result-effective variables subject to routine optimization. Selection of an oil amount greater than the sugar amount would have retained the character of Douezan’s composition as an oil-based, waterproof mascara and would have provided a sufficient liquid vehicle to disperse the pigment, wax, film-former, and solid sugar while permitting application with a mascara brush.
Nevertheless, Douezan and Swanzy do not expressly demonstrate that this modification would produce a dried waterproof mascara that is removable upon application of a water-based removal composition. However, this limitation is made obvious by Pavel.
Pavel teaches a substantially water-free waterproof mascara containing at least one oxyalkylenated ether of a sugar fatty acid ester to improve the water-removable properties of the mascara composition (p. 4). Pavel teaches the oxyalkylenated ether of a sugar fatty acid ester in an amount of at least 3 wt%, preferably at least 5 wt%, relative to the total weight of the mascara composition (p. 1).
Pavel provides comparative waterproof mascara formulations applied to artificial eyelashes and dried (p. 17). All formulations remained waterproof after exposure to running water after 1, 6, and 24 hours (p. 18). Pavel then tested removal by tightly holding each dried eyelash sample between a folded cotton pad containing 1 mL water for 10 seconds and gently withdrawing the eyelash from the pad resulting in:
The formulation containing 0 wt% PEG-20 methyl glucose sesquistearate was not removable with water;
The formulation containing 3 wt% PEG-20 methyl glucose sesquistearate was partially removable with water; and
The formulation containing 5 wt% PEG-20 methyl glucose sesquistearate was completely removable with water (p. 18).
Pavel concludes that incorporating at least 5 wt% of the PEG-20 methyl glucose sesquistearate provides a waterproof mascara having improved water-removal properties (p. 18).
Therefore, regarding claims 19-20 and 22-23, Pavel teaches 100% water-containing compositions are sufficient to remove a low-water content waterproof mascara formulation containing oil and at least 5 wt% sugar.
It would have been obvious to further apply Pavel’s teachings when incorporating Swanzy’s water-soluble sugar into Douezan’s waterproof mascara. A person of ordinary skill would have been motivated to introduce Swanzy’s water-soluble dispersed sugar phase into Douezan’s mascara in order to facilitate the breakdown and removal of the dried mascara during washing with water. Pavel expressly identifies improved water removability as a desirable property of low-water content waterproof mascara and experimentally demonstrates that incorporating a water-responsive, glucose-containing material at approximately 5 wt% or more can provide complete water removability without sacrificing waterproof performance.
Pavel supplies a mascara-specific reason to modify Douezan’s composition in view of Swanzy and expressly identifies pure water removal formulations as capable of breaking down and completely removing an oil-based, waterproof mascara composition containing sugar. Therefore, Pavel provides rationale that allows one of ordinary skill to reasonably expect a water-responsive sugar component could be incorporated into Douezan’s mascara to facilitate removal by sufficient water. A person of ordinary skill would therefore have reason to combine Douezan, Swanzy, and Pavel with a reasonable expectation of obtaining the claimed composition and its water-removal properties as recited in claims 19-20 and 22-23.
Conclusion
Claims 1-3, 5-10, and 13-23 are rejected. No claim is allowed.
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.
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 M-Th 7:30-5:30 (MST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA A. ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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