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
Applicant’s claim amendments and arguments in the response filed 12 December 2025 are acknowledged.
Claims 1-8 & 11-20 are pending.
Claims 9 & 10 are cancelled.
Claims 1, 2, 4, 7, 11, 12 & 19 are amended.
Claims 5, 16 & 17 are withdrawn.
Claims 1-4, 6-8, 11-15 & 18-20 are under consideration.
Examination is to the extent of the following species:
One or more hydrophobic film forming polymer-hydrogenated styrene/methyl styrene/indene copolymer; -and-
One or more Aminosilicones- Bis cetearyl amodimethicone
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
It is noted that a translation of the foreign document and a statement that the translation of the certified copy is accurate has been filed.
Withdrawn Objections/Rejections
The objection to claim 2 is withdrawn due to amendments which maintain editing consistency.
The objection to claim 12 is withdrawn due to amendments which add the missing word “other”
The rejection of claims 4, 19 & 20 under 35 USC 112(b)-insufficient antecedent basis is withdrawn due to deletion of the term “the” from the various introduced compounds.
The rejection of claims 1-4, 6-15 & 18-20 under 35 U.S.C. 103 over Bui [as evidenced by Atis] and Schrott is withdrawn due to the claim 1 amendment to require from 80 to 95% by weight of one or more organic solvent chosen from hydrocarbon-based oils.
New Rejections
Claim Rejections - 35 USC § 112
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 3 & 18 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 3 is unclear because it is impossible for the upper limit for the hydrophobic film forming polymer to be 20%. Claim 3 depends from claim 1 and the combined amount for the lower limits of reagents (b) and (c) are 80.25 %. As such, the upper limit for reagent (a) can only be 19.75%.
Claim 18 is unclear because it is impossible for the upper limit for the hydrophobic film forming polymer to be 20%. Claim 18 depends from claim 1 and the combined amount for the lower limits of reagents (b) and (c) are 80.25 %. As such, the upper limit for reagent (a) can only be 19.75%.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 depends from claim 1. Claim 1 recites “(b) from 0.25% …” The lower limit is 0.25%. However, claim 7 fails to further the lower limit by expanding it to an amount of 0.2%. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-3, 7, 8, 11-15 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Pays (US 2012/0301417; Published: 11/29/2012).
*Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. aminosilicone which is a genera to which the elected species of bis-cetearyl amodimethicone belongs) and in an effort to expedite prosecution, this art has been applied.
Pays teaches a composition for making up the eyelashes or eyebrows (title). With respect to claims 1 (a)-3 & 18, Pays teaches inclusion of indene hydrocarbon resins, in particular Regalite R 1100, Regalite R 1090, Regalite R-7100, Regalite R1010 Hydrocarbon Resin and Regalite R1125 Hydrocarbon Resin in an amount of at least 5 to 100 % ( [0132] & [0253]). With regard to claims 1 ( b), Pays teaches inclusion of noncyclic silicone oil of the formula
PNG
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156
464
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Greyscale
in which R1 is identical or different, representing: i) a linear or branched (C1 -C20)alkyl group, n is inclusively between 1 and 300, m is an integer preferably 20 to 100 ([0266], [0267], [0274] & [0275]). R2 is “i) a linear or branched (C-C)alkyl group which is optionally interrupted and/or terminated by a heteroatom, Such as O, S or N; in particular)” (i.e. an aminosilicone; [0265] & [0270]). With regard to claims 1 ( b) & 7, the noncyclic silicone oil is present in an amount from particularly from 0.5 to 35% by weight, for example from 2 to 25% by weight [0284]. With regard to claims 1 ( c), Pays teaches use of volatile alkanes in an amount from 0.1-90% by weight ([0470] & [0508]). With regard to claim 8, the ratio of the hydrophobic film forming polymers (a) to the total content of aminosilicones (b) is greater than 1 when the ordinary skilled artisan selects for inclusion 5% of the film former and 0.5% of the noncyclic silicone oil. With regard to claims 11 & 12, Pays teaches preferable inclusion of a phenylated silicone oil in a content ranging from 0.1 to 40% by weight, particularly from 0.5 to 35% by weight, for example from 2 to 25% by weight ([0370] & [0390]). With regard to claim 13, the ratio of the hydrophobic film forming polymers (a) to the total content of the silicones other than aminosilicones (b) is greater than 1 when the ordinary skilled artisan selects for inclusion 5% of the film former and 0.5 % of the phenylated silicone oil. With regard to claim 14, Pays teaches an embodiment in which the composition is anhydrous [0398]. With regard to claim 15, Pays teaches iron oxides and pigments of D & C types and lakes ([0598] & [0599]).
While there is not a single example comprising each of the claimed components, the one or more hydrophobic film-forming resins, one or more aminosilicones, one or more organic solvents chosen from hydrocarbon based oils, phenylated silicone oils, and dyestuffs are included among short lists of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the recited amounts of hydrophobic film-forming polymers/ hydrogenated styrene/ methyl styrene/ indene copolymer, aminosilicone; amount of the one or more silicones “other than the one or more aminosilicones…:/phenylated silicone oils, the weight ratio of between the hydrophobic film forming polymers(a) and aminosilicones(b), the weight ratio between “the total content of said one or more hydrophobic film forming polymers…and the total content of the silicone(s) other than the one or more aminosilicones (b)…”/phenylated silicone oil, Pays’ teachings suggest these parameters with values fall within or overlap with the claimed ranges. 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).
Claims 1-4, 6-8, 11-15 & 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Pays (US 2012/0301417; Published: 11/29/2012) in view of Silsoft_AX (https://www.essentialingredients.com/pdf/Silsoft_AX.pdf; Published: 02/11).
*This rejection addresses the elected species of bis-cetearyl amodimethone.
The teachings of Pays are described above. Pays teaches inclusion of silicones which may contain nitrogen (aminosilicones) in an amount of particularly from 0.5 to 35% by weight, for example from 2 to 25% by weight [0284]. Pays also teaches use of cosmetic active principles which include emollients and moisturizing agents [0612]. The ordinary skilled artisan, before the effective filing date, knew that eyelashes and eyebrows are hair.
Pays does not teach inclusion of one or more aminosilicones or that the aminosilicone is Formula XII.
In the same field of invention of hair, with regard to claims 4, 6, 19, and 20, Silsoft_AX teaches Silsoft AX is bis-cetearyl amodimethicone (pg. 1). Silsoft_AX teaches bis-cetearyl amodimethicone is not sticky or greasy, provides superior conditioning and color retention (pg. 1). Silsoft_AX teaches is also applied to skin in the form of body washes and soaps (pg. 1). With regard to claims, Silsoft_AX teaches performance data in which bis-cetearyl amodimethicone was formulated in amounts from 0.5-7.4% and applied to hair (pg. 3 & 10).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (F) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have substituted Pays aminosilicone with about 0.5 to about 7.4% of bis-cetearyl amodimethicone as suggested by Silsoft_AX because Pays teaches inclusion of aminosilicones as noncyclic silicones for use in their invention, and teaches inclusion of emollients and moisturizing agent and bis-cetearyl amodimethicone is an aminosilicone that supplies superior conditioning and color retention, isn’t sticky or greasy, and can be applied to hair or skin. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide conditioning/moisturizing of the hair while ensuring the colorants present in Pays formulation are retained on the hair through use of bis-cetearyl amodimethicone.
Response to Arguments
In the traverse of the rejection of claims 1-4, 6-15, and 18-20 under 35 USC 103 over Bui and Schrott, Applicant argues Bui teaches the combination of hydrocarbon oils and silicone oils cannot exceed 80% (reply, pg. 23).
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619