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 . Claims included in prosecution are claims 1-8 and 10.
Applicants' arguments in the Request for Continued Examination, filed February 20, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112 (New Rejection)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claims 1-8 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 10 recite “wherein the makeup base cosmetic composition is a primer formulation”. This limitation does not appear to be supported by the instant specification. In fact, the term “primer” does not appear in the specification at all. Therefore, the limitation is considered “New Matter”.
Maintained Rejections
Claim Rejections - 35 USC § 103 (Modified)
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.
1. Claims 1-6, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Jun et al. (WO 2017150950, Sep. 8, 2017) (hereinafter Jun) in view of Simonnet et al. (US 2014/0044660, Feb. 13, 2014) (hereinafter Simonnet) and Holstien (How to Apply Your Face Makeup Like a Pro, Jan 11, 2016) (hereinafter Holstien).
Jun teaches of a networked dispersion of biocellulose microfibrils in water wherein the biocellulose microfibrils have carboxylic groups substituted for alcohol groups (i.e., claimed substitution), are 30-60 nm in number average diameter with a maximum diameter of 60-100 nm (i.e., claimed diameter), and are dispersed in an aqueous phase while forming a network (i.e., claimed dispersion). The networked dispersion of biocellulose microfibrils in water exhibits excellent skin compatibility and has the effect of allowing the skin to increase in water absorption, elasticity, and smoothness. In addition, the networked dispersion of biocellulose microfibrils in water form micro-networks on the skin to prevent microdust from being brought into direct contact with the skin (Abstract). The term "network" refers to a three-dimensional network structure between cellulose microfibers (i.e., claimed network structure) (¶ [26]). A “water-dispersible composition" refers to a composition in which a water-dispersible biocellulose microfiber network dispersion is dispersed in water as a composition comprising water as a solvent. The composition may be made with water alone, or may be a water-in-oil, oil-in-water, or multiple emulsions (i.e., claimed emulsion form) (¶ [51]). The cosmetic composition may include: a fatty substance, an organic solvent, a solvent, a thickener, a gelling agent, an emollient, an antioxidant, a suspending agent, a stabilizing agent, a foaming agent, a fragrance, a surfactant, water, an ionic or nonionic emulsifier, a filler, a sequestering agent, a chelating agent, a preservative, a vitamin, a blocker, a wetting agent, an essential oil, a dye, a pigment, a hydrophilic or lipophilic activator, a lipid vesicle, or any other components commonly used in cosmetics (¶ [74]). The cosmetic composition may be prepared in any formulation commonly prepared in the art, such as: a solution, suspension, emulsion, paste, gel, cream, lotion, powder, soap, surfactant-containing cleansing, oil, powder foundation, emulsion foundation, wax foundation, or spray (¶ [75]). The dispersion of the water-dispersible cellulose microfiber network may include biocellulose microfibrils in an amount of 0.0001 to 10% based on the total weight of the cosmetic composition (¶ [76]). In Experimental Example 7, the applied cellulose microfibers formed a film (i.e., physical film, meeting claim 9) (¶ [154]). In Experimental Example 12, when the fine dust is directly attached to the skin, cleaning efficiency is reduced. The applied biocellulose microfibril aqueous dispersion network composition formed a finer net on the skin, thereby reducing the direct adsorption of fine dust onto the skin which resulted in the fine dust being easily removed during cleaning (¶ [186]).
Jun differs from the instantly recited claims insofar as not explicitly disclosing wherein the composition comprises polyvinyl alcohol.
However, Simonnet teaches a makeup or cosmetic composition in the form of a compact powder (Abstract). The composition comprises fillers (¶ [0063]). Suitable fillers include polyurethane powders (i.e., claimed film-forming polymer) (¶ [0070]). The composition further comprises one or more hydrophilic gelling agents (¶ [0130]). Suitable gelling agents include polyvinyl alcohol (¶ [0200 & 0202]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Jun discloses wherein the composition may comprise fillers and gelling agents. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated polyurethane and polyvinyl alcohol into Jun’s composition since they are known filers and gelling agents for use in cosmetics as taught by Simonnet.
In regards to claims 1 and 10 reciting a primer formulation, a primer formulation is the intended use. Jun teaches the disclosed cosmetic compositions may be formulated into any formulation commonly prepared in the art. Formulations include sprays, solutions and emulsions (paragraph 0075). This would encompass a primer formulation as recited by the instant claims because the cosmetic products of Jun in view of Simonnet comprise substantially the same components, biocellulose microfibrils and a gelling agent, such as polyvinyl alcohol, as recited in the instant claims. Therefore, the compositions of the combined teachings of Jun and Simonnet would encompass a primer formulation.
The teachings of Jun and Simonnet are discussed above.
The combined teachings of Jun and Simonnet do not explicitly disclose the step wherein a color cosmetic is applied after the cellulose microfiber network.
However, Holstein teaches that color cosmetic powders such as bronzer or blush are applied after liquid foundation (Step 3-Step 7).
As discussed above, Jun discloses wherein the cellulose microfiber network may be in the form of an emulsion foundation. Accordingly, it would have been obvious for one ordinary skill in the art to have applied color cosmetic powders after applying Jun’s cellulose microfiber network emulsion foundation since this is a known and effective method of applying make-up as taught by Holstein.
In regards to claims 1 and 10 reciting improving the removal efficacy and facilitating color cosmetic removal, the composition of Jun inhibits fine powders from absorbing into the skin making the powders easier to remove. Therefore one of ordinary skill in the art would reasonably conclude that a powder blush would easier to remove when applied over the compositions of Jun.
Regarding claims 1 and 10 reciting wherein the physical film of the biocellulose microfibrils is desorbed upon contact with water, desorption in response to water is descriptive and thus would be a property of the claimed composition. Jun in view of Simonnet discloses substantially the same composition comprising biocellulose microfibrils, polyvinyl alcohol, and film-forming polymer. Jun in view of Simonnet further discloses substantially the same form of composition (i.e., oil-in-water emulsion). Therefore, when Jun’s ingredients are used to form an oil-in-water emulsion/networked dispersion, it would have been reasonable for one of ordinary skill in the art to conclude that the composition of Jun in view of Simonnet would have substantially the same properties, desorption upon contact with water, as the composition of the instant claims.
Response to Arguments
Regarding Applicant’s arguments that Jun does not recite primer formulations and does not provide motivation for one of ordinary skill in the art to use their composition as a primer, the recitation of “primer formulation” recited in instant claims 1 and 10, is merely a recitation of the intended use of the claimed cosmetic composition. Jun teaches the disclosed cosmetic compositions may be formulated into any formulation commonly prepared in the art. This would include cosmetic primers, which may be a solution, spray or a powder. Therefore, since the composition of Jun in view of Simonnet is substantially the same as the composition of the instant claims where it comprises biocellulose microfibrils, polyvinyl alcohol, and film-forming polymer, the composition of Jun in view of Simonnet would be useable as a primer formulation, whether the prior art discloses such use or not.
Regarding Applicant’s arguments that Jun does not provide motivation for one of ordinary skill in the art to use their composition as a primer, as discussed above, the recitation of “primer formulation” recited in instant claims 1 and 10, is merely a recitation of the intended use of the claimed cosmetic composition. However, Jun discloses wherein the composition may be in the form of foundation. It is well known in the art that makeup (i.e., color powder cosmetics) is applied over foundation. Furthermore, as noted by Applicant’s response, fine dust encompasses color powder cosmetics (i.e., makeup). As such, it would be reasonable for one of ordinary skill in the art to conclude that the composition of Jun allows for the application of color powder cosmetics after applying the biocellulose composition and would result in a well applied and expressed application.
Regarding Applicant’s claim that ease of film detachment is not predictable from Jun. As discussed above, in Jun’s Example 12 when the fine dust is directly attached to the skin, cleaning efficiency is reduced. When the composition of Jun is used, dust was easily removed at cleansing since the direct adsorption of fine dust onto the skin was reduced. One of ordinary skill in the art would reasonably conclude that fine dust would encompass color powder cosmetics, such as blush. It would further be reasonable for one of ordinary skill in the art to conclude that the physical film formed by Jun’s composition and the color cosmetic applied thereafter would be easily removed since the purpose of Jun’s composition is increasing cleaning efficiency. Having a base composition that is not easily removed would not increase cleaning efficiency and would render Jun’s composition not suitable for its intended use.
Regarding allegations of unexpected results (page 8 of Applicant’s response), Applicant has the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. MPEP § 716.02(b)(II).
While Applicant’s response attempted to explain terms such as “applicability and expressiveness” and how these attributes were measured, Applicant’s response failed to highlight the significance of these findings.
Moreover, any differences between the claimed invention and the prior art may be expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The burden is on applicant to establish that the results are in fact really unexpected and of statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992). See also MPEP § 716.02. Applicant does not appear to have discussed same with respect to objective data.
Additionally, no quantitative analysis of the claimed results has been submitted and the relied upon figures do not appear to be clear. It cannot be ascertained from the disclosed figures the differences between the samples being tested. Absence of such analysis makes it difficult to assess whether the alleged unexpected results are indeed unexpected.
Further, from the figure shown the alleged expressiveness of the applied color cosmetic is difficult to ascertain. The comparison does not appear to be different based on the figure provided.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive.
2. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jun et al. (WO 2017150950, Sep. 8, 2017) (hereinafter Jun) in view of Simonnet et al. (US 2014/0044660, Feb. 13, 2014) (hereinafter Simonnet) and Holstien (How to Apply Your Face Makeup Like a Pro, Jan 11, 2016) (hereinafter Holstien) and in further view of Wakefield et al. (US 2007/0269466, Nov. 22, 2007) (hereinafter Wakefield).
The teachings of Jun, Simonnet, and Holstein are discussed above.
The combined teachings of Jun, Simonnet, and Holstein do not explicitly disclose wherein the composition comprises methylcellulose and paraffin wax.
However, Wakefield teaches of a cosmetic sunscreen composition (Abstract). Wakefield’s composition includes fatty substances and thickeners, among other components (¶ [0046]). Suitable fatty substances include paraffin wax (i.e., claimed film-forming wax) (¶ [0049]). Suitable thickeners include methylcellulose (i.e., claimed temperature sensitive polymer) (¶ [0053]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Jun discloses wherein the composition may comprise fatty substances and thickeners. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated paraffin wax and methylcellulose into Jun’s composition since they are known fatty substances and thickeners for use in cosmetics as taught by Wakefield.
Response to Arguments
The Examiner's response above is repeated herein.
Further, the Examiner submits that Wakefield cures any alleged deficiencies of Jun where Wakefield teaches that paraffin wax and methylcellulose are suitable fatty substances and thickeners for cosmetics, respectively.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive.
Conclusion
Claims 1-8 and 10 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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, Frederick Krass can be reached on (571) 272-0580. 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.
/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612