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
Applicants’ amendments and arguments filed 11/05/2025 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claims 2, 5, and 11-15 are canceled.
Claim 9 remains withdrawn.
Claims 1, 3-4, 6-8, 10, and 16-18 are being examined on the merits.
Claim Interpretation
Claim 1 states “component (A) is present in an amount of from 5 to 30 parts by mass with respect to 100 parts by mass of component (B)”, examiner interprets this to mean a ratio range of component (A) to component (B) that is from 5:100 to 30:100.
Claim 1 recites “the aqueous dispersion composition is substantially free of an oil agent”. Applicant’s instant specification defines “substantially free” as being “preferably an amount such that the component is not intentionally added in the composition, and is particularly preferably in the range of less than 5% by mass, less than 1% by mass, or 0.1% by mass or less of the total composition to less than the detection limit” (instant specification, pages 5-6, lines 32 and 1-4 respectively). Examiner broadly interprets this to mean anything less than 5% satisfies this limitation.
Maintained Rejections
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3, 6-8, 10, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kanaya et al. (US2017035681A1, published 02/09/2017, hereafter Kanaya) in view of Lahanas et al. (US6290941B1, published 09/18/2001, hereafter Lahanas)
Kanaya teaches a cosmetic material composition comprising (A) hydrophobic powder, (B) a carboxylic acid modified silicone, (C) a basic compound, and (D) water (abstract; according to the claim limitations of the instant claims 1, 8, and 10). Kanaya teaches the carboxylic acid-modified silicone to have the following structure in Claim 4:
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Kanaya than describes the R and R’ components to be alkyl groups from 1 to 22 carbons (description; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches a+b to be a number within a range of 0 to 1000 (paragraph 0024; according to the claim limitations of the instant claim 1). Kanaya teaches Rc to be represented by the following formula: —R1—(OR2)p—(O)w—R3—COOH. Kanaya teaches the p and w components to be a number from 0 to 200 and 0-1 respectively (paragraph 0021; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches R1 to be a alkylene group from 2 to 22 carbons and R3 to be a bond of a straight chain or branched alkene group with 1 to 22 carbons (paragraph 0021; according to the claim limitations of the instant claim 1). Therefore, as mentioned above Kanaya teaches R1 is an alkylene group of 10, R3 is a bond, p is 0, and w is 0, thus Rc would have the following formula: —(C10H20)—COOH. Furthermore, as mentioned above, Kanaya teaches R and R’ to be an alkyl group of 1 and a+b =6 or a=3 and b = 3. Therefore, when applied, Kanaya teaches the following formula:
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Kanaya further teaches the composition as an aqueous dispersion (according to the claim limitations of the instant claims 1, 8, and 10). Claim 8 of Kanaya teaches the composition further comprising a polyhydric alcohol (according to the claim limitations of the instant claim 1). The description of Kanaya outlines that the addition of alcohol, specifically polyhydric alcohol, as a thickener and teaches the concentration of thickener to be from 0.01-3% (description; according to the claim limitations of the instant claim 1). Kanaya teaches the hydrophobic powder in a concentration of 1-40% mass (description; according to the claim limitations of the instant claim 1). Kanaya teaches the basic substance at a concentration range of 0.01-5% (description-basic compound; according to the claim limitations of the instant claim 1). Kanaya teaches the dispersion stored at a constant temperature of 50 degrees C (description; according to claim limitations of the instant claim 1). Furthermore, Kanaya teaches the carboxylic acid modified silicone within a range of 0.01 to 20 mass parts with regard to 10 mass parts of the hydrophobic powder (description; according to the claim limitations of the instant claim 1). Kanaya teaches the concentration of water to be a range of 20 to 95% (claim 6; according to the claim limitations of the instant claim 3). Kanaya further teaches the preferable viscosity of the silicone to be at temperature 25 degrees C (description; according to the claim limitations of the instant claim 6). Claim 7 of Kanaya teaches the cosmetic material at a pH range of 7.1-9.5 (according to the claim limitations of the instant claim 7). Lastly, Kanaya teaches the basic substance to be aminomethyl propanol (description-basic compound; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches that the hydrophobic powder can be an inorganic powder, specifically titanium oxide or zinc oxide, in a particle size that is preferably 1 to 200nm or more preferably 10-80nm (paragraph 0066; according to the claim limitations of the instant claims 16-18).
Kanaya fails to explicitly teach the total concentration of the composition as in instant claim 1. Furthermore, Kanaya fails to explicitly teach the composition is substantially free or completely free of oil as in instant claims 1 and 4.
Lahanas teaches a cosmetic powder to liquid composition comprising water, a water soluble polymer, and a hydrophobic powder- specifically silica that has substantially no oil (claim 1; according to the claim limitations of the instant claims 1 and 4). Lahanas further teaches the composition to be an aqueous phase in which the silica powder is incorporated into the polymer and water (summary of invention; according to the claim limitations of the instant claim 1). Lahanas teaches the presence of oil counteracts the desired effect of the oil absorption, thereby defeating the purpose of the cosmetic product (background of invention; according to the claim limitations of the instant claims 1 and 4). Furthermore, Lahanas teaches the composition and its lack of oil to have the ability to delivery valuable water soluble actives and providing a burst of cool moisture to the skin (detailed description; according to the claim limitations of the instant claims 1 and 4). Lastly, Lahanas teaches the composition is not only substantially oil-free (i.e. contain less than about 1%), but also that is preferably oil-free (column 4, lines 31-35; according to the instant claims 1 and 4).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim an aqueous dispersion composition comprising a carboxylic acid-modified silicone, a hydrophobic powder, a basic substance, water, and one or more alcohols at a temperature of 50 degrees Celsius at the desired concentration of hydrophobic powder and desired ratio of carboxylic acid-modified silicone to hydrophobic powder as in Kanaya with the predictable solution having a concentration of the combined hydrophobic powder, carboxylic acid-modified silicone, a basic substance, water, and alcohol from approximately 21-100%. Kanaya teaches the formula for the carboxylic acid-modified silicone disclosed in claim 1 of the instant application. Although Kanaya does not explicitly claim a concentration of all the components together, it does claim concentration ranges of each component, which when added together provides a range of total concentration range that overlaps and lies within the range disclosed by claim 1 of the instant application thus making it obvious to rearrange the disclosed amounts in order to obtain the claimed ratio. Rearrangement of known components in overlapping amounts is within the purview of the skilled artisan and would yield predictable results. A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). Furthermore, Kanaya claims ranges for each component, specifically the hydrophobic powder, and water, that overlap and lie within the claimed ranges of the instant claims 1 and 3 thus making them obvious to optimize . One of ordinary skill in the art would know how to optimize the ranges of Kanaya, as the MPEP 2144.05 states “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Additionally Kanaya claims a ratio range of hydrophobic powder to carboxylic acid-modified silicone that overlaps and lies within the range disclosed by claim 1 of the instant application thus making it obvious. Furthermore, in regards to instant claim 6, Kanaya teaches the preferable viscosity to be at temperature of 25 degrees Celsius. Kanaya teaches a pH range that lies within the pH range of the instant claim 7 thus making it obvious to claim. In regards to instant claim 8, Kanaya teaches the composition to be a cosmetic material and in regards to instant claim 10 Kanaya teaches the composition to be an aqueous dispersion composition. Lastly, in regards to claim 1, Kanaya teaches the basic substance to be aminomethyl propanol. Furthermore, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would modify would modify the aqueous dispersion composition comprising a carboxylic acid-modified silicone, a hydrophobic powder, a basic substance, water, and one or more alcohols at a temperature of 50 degrees Celsius at the desired concentration of hydrophobic powder and desired ratio of carboxylic acid-modified silicone to hydrophobic powder as in Kanaya with the addition of the composition being substantially free of oil, or preferably oil-free as outlined by Lahanas under TSM, see MPEP 2143(G). The combination of the known aqueous dispersion solution with the added limitation of the composition substantially free of an oil would advantageously increase the ability of the composition to deliver water soluble actives and provide a burst of cool moisture to the skin as disclosed by Lahanas. Thus the skilled artisan would have a reasonable expectation of success with the combination as in instant claims 1 and 4.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, and 16-18 are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US12453694B2 in view of Kanaya et al. (US2017035681A1, published 02/09/2017, hereafter Kanaya) and in view of Lahanas et al. (US6290941B1, published 09/18/2001, hereafter Lahanas). Although the claims at issue are not identical, they are not patentably distinct from each other.
US12453694B2 claims a cosmetic composition comprising a carboxylic acid modified silicone that is a liquid at room temperature (claim 1). Claim 1 of US12453694B2 claims a formula for the silicone that is as follows:
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Furthermore, US12453694B2 claims the composition to include a basic compound, a hydrophobic particulate, and a thickening agent (claim 1). US12453694B2 claims the hydrophobic particulate is dispersed in an aqueous phase (claim 1). Furthermore, claim 1 of US12453694B2 claims hydrophobized particle to be titanium oxide or zinc oxide with an average particle diameter within a range of 1 to 200 nm (according to the claim limitations of the instant claims 16-18).
US12453694B2 fails to claim the concentrations claimed by instant claim 1. Lastly, 17604821 fails to explicitly teach the addition of water and the use of aminomethylpropanol as the basic substance as in instant claim 1. Although US12453694B2 claim 1 does not include the addition of an oil, Lahanas is cited to further demonstrate motivation for US12453694B2 to be oil free.
Kanaya teaches a cosmetic material composition comprising (A) hydrophobic powder, (B) a carboxylic acid modified silicone, (C) a basic compound, and (D) water (abstract; according to the claim limitations of the instant claims 1, 8, and 10). Kanaya teaches the carboxylic acid-modified silicone to have the following structure in Claim 4:
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Kanaya than describes the R and R’ components to be alkyl groups from 1 to 22 carbons (description; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches a+b to be a number within a range of 0 to 1000 (paragraph 0024; according to the claim limitations of the instant claim 1). Kanaya teaches Rc to be represented by the following formula: —R1—(OR2)p—(O)w—R3—COOH. Kanaya teaches the p and w components to be a number from 0 to 200 and 0-1 respectively (paragraph 0021; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches R1 to be a alkylene group from 2 to 22 carbons and R3 to be a bond of a straight chain or branched alkene group with 1 to 22 carbons (paragraph 0021; according to the claim limitations of the instant claim 1). Therefore, as mentioned above Kanaya teaches R1 is an alkylene group of 10, R3 is a bond, p is 0, and w is 0, thus Rc would have the following formula: —(C10H20)—COOH. Furthermore, as mentioned above, Kanaya teaches R and R’ to be an alkyl group of 1 and a+b =6 or a=3 and b = 3. Therefore, when applied, Kanaya teaches the following formula:
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Kanaya further teaches the composition as an aqueous dispersion (according to the claim limitations of the instant claims 1, 8, and 10). Claim 8 of Kanaya teaches the composition further comprising a polyhydric alcohol (according to the claim limitations of the instant claim 1). The description of Kanaya outlines that the addition of alcohol, specifically polyhydric alcohols, as a thickener and teaches the concentration of thickener to be from 0.01-3% (description; according to the claim limitations of the instant claim 1). Kanaya teaches the hydrophobic powder in a concentration of 1-40% mass (description; according to the claim limitations of the instant claim 1). Kanaya teaches the basic substance at a concentration range of 0.01-5% (description-basic compound; according to the claim limitations of the instant claim 1). Kanaya teaches the dispersion stored at a constant temperature of 50 degrees C (description; according to claim limitations of the instant claim 1). Furthermore, Kanaya teaches the carboxylic acid modified silicone within a range of 0.01 to 20 mass parts with regard to 10 mass parts of the hydrophobic powder (description; according to the claim limitations of the instant claim 1). Lastly, Kanaya teaches the basic substance to be aminomethyl propanol (description-basic compound; according to the claim limitations of the instant claim 1).
Lahanas teaches a cosmetic powder to liquid composition comprising water, a water soluble polymer, and a hydrophobic powder- specifically silica that has substantially no oil (claim 1; according to the claim limitations of the instant claims 1 and 4). Lahanas further teaches the composition to be an aqueous phase in which the silica powder is incorporated into the polymer and water (summary of invention; according to the claim limitations of the instant claim 1). Lahanas teaches the presence of oil counteracts the desired effect of the oil absorption, thereby defeating the purpose of the cosmetic product (background of invention; according to the claim limitations of the instant claims 1 and 4). Furthermore, Lahanas teaches the composition and its lack of oil to have the ability to delivery valuable water soluble actives and providing a burst of cool moisture to the skin (detailed description; according to the claim limitations of the instant claims 1 and 4). Lastly, Lahanas teaches the composition is not only substantially oil-free (i.e. contain less than about 1%), but also that is preferably oil-free (column 4, lines 31-35; according to the instant claims 1 and 4).
One skilled in the art before the effective filing date of the claimed invention would claim a cosmetic composition comprising a carboxylic acid modified silicone, a basic compound, a thickening agent, and a hydrophobic particle as claimed by 17604821 with the ready for improvement concentrations of all components and ratios that overlap and lie within the concentrations of the instant claim 1 as outlined by Kanaya. Thus, using the composition claimed by 17604821 with the ready improvement of the concentrations and temperature disclosed by Kanaya would yield predictable results, thereby making the concentrations and temperature of the instant claim 1 of obviousness. Lastly, Kanaya teaches the use of aminomethyl propanol as the basic substance in combination with the claimed carboxylic acid-modified silicone therefore, utilizing aminomethyl propanol as the basic substance would yield known and predictable results. Further, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would modify would modify the aqueous dispersion composition comprising a carboxylic acid-modified silicone, a hydrophobic powder, a basic substance, water, and one or more alcohols at a temperature of 50 degrees Celsius at the desired concentration of hydrophobic powder and desired ratio of carboxylic acid-modified silicone to hydrophobic powder as in US12453694B2 in view of Kanaya with the addition of the composition being substantially free of oil, or preferably oil-free as outlined by Lahanas under TSM, see MPEP 2143(G). The combination of the known aqueous dispersion solution with the added limitation of the composition substantially free of an oil would advantageously increase the ability of the composition to deliver water soluble actives and provide a burst of cool moisture to the skin as disclosed by Lahanas. Thus the skilled artisan would have a reasonable expectation of success with the combination as in instant claims 1 and 4.
Claims 1, 3-4, 7-8, and 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5-7 of U.S. Patent No. 10130579. Although the claims at issue are not identical, they are not patentably distinct from each other.
US10130579 claims a dispersion cosmetic material composition comprising a hydrophobic powder, a carboxylic acid-modified silicone, a basic substance, and water (claim 1; according to the claim limitations of the instant claims 1, 8, and 10). Furthermore, claim 1 of US10130579 claims the following formula for the carboxylic acid-modified silicone:
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As demonstrated above, US10130579 claims the R and R’ components of the composition to be alkyl groups with 1 to 22 carbons, thus including an alkyl with 1 carbon. Furthermore, US10130579 claims the a+b to be a range of 0 to 1000, thus including both a and b being 3 making a+b=6. Lastly, US10130579 claims Rc to be -R1-(OR2)p-(O)w-R3-COOH, in which both p and w can be zero thus including Rc equaling -R1-R3-COOH. Lastly, R1 can be an alkylene group with 2 to 22 carbons and R3 can be a single bond, thus including R1 equaling C10H20 and R3 being a single bond. Overall, US10130579 claims the following formula with the above mentioned parameters:
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US10130579 claims the composition further comprising a polyhydric alcohol (claim 7; according to the claim limitations of the instant claim 1). The concentration of water in the composition to be 20-95% is claimed by claim 5 of US10130579 (according to the claim limitations of the instant claim 3). Claim 2 of US10130579 claims the concentration of hydrophobic powder to be 1-40% of the composition (according to the claim limitations of the instant claim 1). Furthermore, US10130579 claims the ratio of carboxylic acid-modified silicone to be 0.01 to 20 mass parts to 10 mass parts of hydrophobic powder (claim 3; according to the claim limitations of the instant claim 1). Lastly, claim 6 of US10130579 claims the pH range of the composition to be a range of 7.1-9.5 (according to the claim limitations of the instant claim 8).
US10130579 fails to claim the carboxylic acid-modified silicone at the temperature of 50 degrees Celsius. US10130579 fails to explicitly claim a concentration of the total composition and its components. Lastly, US10130579 fails to teach aminomethylpropanol as the basic substance. Although US10130579 claims 1, 3, and 5-7 does not include the addition of an oil, Lahanas is cited to further demonstrate motivation for US12453694B2 to be oil free.
Kanaya teaches a cosmetic material composition comprising (A) hydrophobic powder, (B) a carboxylic acid modified silicone, (C) a basic compound, and (D) water (abstract; according to the claim limitations of the instant claims 1, 8, and 10). Kanaya teaches the carboxylic acid-modified silicone to have the following structure in Claim 4:
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Kanaya than describes the R and R’ components to be alkyl groups from 1 to 22 carbons (description; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches a+b to be a number within a range of 0 to 1000 (paragraph 0024; according to the claim limitations of the instant claim 1). Kanaya teaches Rc to be represented by the following formula: —R1—(OR2)p—(O)w—R3—COOH. Kanaya teaches the p and w components to be a number from 0 to 200 and 0-1 respectively (paragraph 0021; according to the claim limitations of the instant claim 1). Furthermore, Kanaya teaches R1 to be a alkylene group from 2 to 22 carbons and R3 to be a bond of a straight chain or branched alkene group with 1 to 22 carbons (paragraph 0021; according to the claim limitations of the instant claim 1). Therefore, as mentioned above Kanaya teaches R1 is an alkylene group of 10, R3 is a bond, p is 0, and w is 0, thus Rc would have the following formula: —(C10H20)—COOH. Furthermore, as mentioned above, Kanaya teaches R and R’ to be an alkyl group of 1 and a+b =6 or a=3 and b = 3. Therefore, when applied, Kanaya teaches the following formula:
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Furthermore, Kanaya teaches the dispersion stored at a constant temperature of 50 degrees C (description; according to claim limitations of the instant claim 1). Lastly, Kanaya teaches the basic substance to be aminomethyl propanol (description-basic compound; according to the claim limitations of the instant claim 1).
Lahanas teaches a cosmetic powder to liquid composition comprising water, a water soluble polymer, and a hydrophobic powder- specifically silica that has substantially no oil (claim 1; according to the claim limitations of the instant claims 1 and 4). Lahanas further teaches the composition to be an aqueous phase in which the silica powder is incorporated into the polymer and water (summary of invention; according to the claim limitations of the instant claim 1). Lahanas teaches the presence of oil counteracts the desired effect of the oil absorption, thereby defeating the purpose of the cosmetic product (background of invention; according to the claim limitations of the instant claims 1 and 4). Furthermore, Lahanas teaches the composition and its lack of oil to have the ability to delivery valuable water soluble actives and providing a burst of cool moisture to the skin (detailed description; according to the claim limitations of the instant claims 1 and 4). Lastly, Lahanas teaches the composition is not only substantially oil-free (i.e. contain less than about 1%), but also that is preferably oil-free (column 4, lines 31-35; according to the instant claims 1 and 4).
One skilled in the art before the effective filing date of the claimed invention would claim a cosmetic composition comprising a carboxylic acid modified silicone, a basic compound, a hydrophobic powder, polyhydric alcohol, and water as claimed by US10130579 with the ready improvement of claiming the carboxylic acid-modified silicone being a liquid at 50 degrees Celsius and utilizing aminomethyl propanol as the basic substance as outlined by Kanaya. Kanaya teaches the carboxylic acid-modified silicone of both the instant application and US10130579 therefore, the carboxylic acid-modified silicone at 50 degrees Celsius would yield the predictable result of the silicone being a liquid. Furthermore, Kanaya teaches the use of aminomethyl propanol as the basic substance in combination with the claimed carboxylic acid-modified silicone therefore, utilizing aminomethyl propanol as the basic substance would yield predictable results. Although US10130579 does not explicitly claim a concentration of all the components together, it does claim concentration ranges of each component, which when added together provides a range of total concentration range that overlaps and lies within the range disclosed by claim 1 of the instant application thus making it obvious to rearrange the disclosed amounts in order to obtain the claimed ratio. One of ordinary skill in the art would know how to optimize the ranges of pH, concentration of water, ratio of carboxylic acid-modified silicone to hydrophobic powder, concentration of hydrophobic powder of US10130579, as the MPEP 2144.05 states “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In regards to claims 8 and 10, US10130579 teaches the composition as both a cosmetic and a cosmetic material. Further, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would modify would modify the aqueous dispersion composition comprising a carboxylic acid-modified silicone, a hydrophobic powder, a basic substance, water, and one or more alcohols at a temperature of 50 degrees Celsius at the desired concentration of hydrophobic powder and desired ratio of carboxylic acid-modified silicone to hydrophobic powder as in US10130579 in view of Kanaya with the addition of the composition being substantially free of oil, or preferably oil-free as outlined by Lahanas under TSM, see MPEP 2143(G). The combination of the known aqueous dispersion solution with the added limitation of the composition substantially free of an oil would advantageously increase the ability of the composition to deliver water soluble actives and provide a burst of cool moisture to the skin as disclosed by Lahanas. Thus the skilled artisan would have a reasonable expectation of success with the combination as in instant claims 1 and 4.
Response to Applicant’s Arguments
Applicants’ arguments and Declaration filed 04/17/2026 have been fully considered.
In regards to the U.S.C. 103 rejections, Applicant argues that US12,569,428 and US12,453,694 are similar to the present Application and that both cases have been allowed. Further, Applicant argues that the Declaration confirms that the instant application exhibits unexpected results, specifically a cosmetic with superior water and sebum resistance. Further, Applicant argues that Kanaya does not teach the composition is oil free as required by the claims.
In regards to Applicant’s argument that US12,569,428 and US12,453,694 are similar and have been allowed. Applicant is reminded that each application must stand on its own and the allowance of one family member does not guarantee that pending claims will also be granted. It is first noted that Applicant’s Declaration and data are directed towards the composition as a skin application, while the instant claims are directed towards a composition generically. The instant claims make no mention of hair or skin care or cosmetics. Since the advantages discussed in the Declaration are not related to a composition generically, but in turn relate to its ‘use’ as a skin product, the claims fail to be commensurate. Additionally, in regards to Applicant’s argument that Kanaya does not teach the composition is oil free, it is first noted that Applicant’s independent claim 1 does not include this limitation. Further it is noted, 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). Applicant is again reminded that Lahanas teaches the benefit of disincluding oil as “the presence of oil counteracts the desired effect of the oil absorption, thereby defeating the purpose of the cosmetic product (background of invention) and lack of oil to have the ability to delivery valuable water soluble actives and providing a burst of cool moisture to the skin (detailed description) which as outlined above would motivate someone to create a composition free of oil.
In summary, the examiner is not persuaded by Applicant’s arguments and the rejections of record are maintained.
In regards to the Double Patenting Rejection, other than acknowledging that both US12,569,428 and US12,453,694 are similar to the present Application, Applicant has failed to provide any reasoning as to why the double patenting rejections should be withdrawn. Therefore, the rejections are maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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, 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.
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.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611
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