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.
Previous Rejections
Applicants' arguments, filed 10/27/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Rejections - 35 USC § 103 (Maintained)
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) as evidenced by Maybelline (Foundation vs. Concealer: What’s the difference?) (hereinafter Maybelline).
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]). The gelling agent may be present in the composition in an amount that is sufficient to adjust the stiffness
of the composition (¶ [0133]). Suitable gelling agents include polyvinyl alcohol (¶ [0200 & 0202]). Suitable gelling agents also include xanthan gum (¶ [0240]).
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.
Regarding the amount of polyvinyl alcohol recited in instant claim 1, 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. See MPEP 2144.05(II)(A). As discussed above, polyvinyl alcohol is a gelling agent, which makes amounts thereof a result effective variable, since amounts directly impact the stiffness of a composition as taught by Simonnet. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amounts of polyvinyl alcohol to yield the desired gelling/stiffness profile. Therefore, the combined teachings of Jun and Simonnet meet instantly recited requirement of “0.01-5 parts by weight of polyvinyl alcohol”.
Alternatively, xanthan gum is included by Jun in Example 5/Table 2 in an amount of 4 wt.%. As discussed above, Simonnet discloses that polyvinyl alcohol and xanthan gum are suitable gelling agents. It is obvious to replace one component for another equivalent component if it is recognized in the art that the two components are equivalent and is not based on the Applicant disclosure. See MPEP 2144.06. As such, it would have been obvious to one of ordinary skill in the art to have used polyvinyl alcohol in place of xanthan gum in the compositions of Jun in an amount of 4 wt.%, because they are taught as equivalents by Simonnet. Therefore, the combined teachings of Jun and Simonnet meet the instantly recited requirement of “0.01-5 parts by weight of polyvinyl alcohol”.
In regards to claims 1 and 10 reciting a makeup base formulation, this is merely a recitation of intended use. Jun teaches the disclosed cosmetic compositions may be formulated into any formulation commonly prepared in the art. Formulations include foundations, sprays, solutions and emulsions (paragraph 0075). This would encompass a makeup base 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. Furthermore, as evidenced by Maybelline, a foundation is used as a base for the rest of the makeup (Page 1). As such, Jun’s teaching of a foundation meets the instantly recited limitation of “makeup base 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. As such, the combined teachings of Jun, Simonnet, and Holstein meet the instantly recited requirement of “applying a color cosmetic”.
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 interpreting makeup base to be a "primer", the instant claims do not recite a primer. Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. See MPEP § 2111. Additionally, although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See MPEP § 2173.05(q). Upon examination of the instant application, one would find that not only do the instant claims not recite a primer, but the instant specification also makes no mention of a primer whatsoever. As such, one of ordinary skill in the art would not reasonably interpret limitations explicitly recited in the instant claims (i.e., makeup base) to be a primer as this is not a limitation of the instant specification. Therefore, reference to a primer does not contribute meaningfully to the point at issue. Given that the term primer is not recited in the specification, the new matter rejection was made to the use of this term in the previous office action mailed on 6/25/25.
Regarding Applicant’s arguments about a makeup base composition being characterized by low viscosity, neither the instant claims nor the instant specification make any mention of such viscosity.
Regarding Applicant’s arguments that Jun does not recite a makeup base formulation and does not provide motivation for one of ordinary skill in the art to use their composition as such, the recitation of “makeup base 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 a cosmetic makeup base formulation whether the prior art recognizes such use or not. 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 makeup base formulation, whether the prior art discloses such use or not. Furthermore, assuming, purely arguendo, that the “makeup base” recitation is not a recitation of intended use, as discussed above, Maybelline discloses that a foundation is a base for the rest of the makeup. 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. As such, one of ordinary skill in the art would reasonably conclude that the foundation disclosed by Jun is encompassed by the makeup base composition recited by the instant claims. It would also 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 since Jun discloses a foundation composition.
Regarding Applicant’s argument that Jun uses 12 wt.% carbomer as the film forming polymer while the instant claims recite 0.01-5 parts by weight of polyvinyl alcohol, the Examiner submits that Jun does not disclose that carbomer is the only or the preferred the film forming polymer or gelling agent used. In fact, the Examiner has not found anywhere in the Jun disclosure where Jun discloses a specific use for said carbomer. Furthermore, while Jun does use 12 wt.% carbomer in Example 5/Table 2, there are several other components included in that example that one of ordinary skill in the art would conclude affect viscosity. As such, one of ordinary skill in the art would not reasonably single out the recitation of carbomer to be representative of the amount of gelling agent used by Jun. On the other hand, Jun in view of Simonnet do disclose that polyvinyl alcohol is a suitable gelling agent for use in cosmetic compositions and recognize its amount to be a result effective variable where Simonnet discloses that the gelling agent is included in an amount that affects the composition stiffness. Furthermore, assuming, purely arguendo, that this did not provide enough motivation for one of ordinary skill in the art, Simonnet discloses that polyvinyl alcohol and xanthan gum are suitable gelling agents for cosmetic compositions and Jun utilizes xanthan gum in an amount of 4 wt.%. As discussed above, it would have been obvious to one of ordinary skill in the art to have used polyvinyl alcohol in place of xanthan gum in the compositions of Jun in an amount of 4 wt.%, because they are taught as equivalents by Simonnet. As such, one of ordinary skill in the art would have had enough motivation to modify Jun’s composition to comprise polyvinyl alcohol and would have had a reasonable expectation of success when adjusting the amount of polyvinyl alcohol to amounts encompassed by the instant claims.
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).
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.
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 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, Sahana Kaup can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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