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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 20, 2025 has been entered.
Claims 15, 16, 20-28 and 30-37 are pending.
Claims 1-14, 17-19 and 29 are cancelled.
Claims 15, 25, 27 and 30-32 are currently amended.
Claims 36 and 37 are new.
Claim 28 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim 15, 16, 20-27 and 30-37 as filed on January 27, 2025 are under consideration.
Withdrawn Objections / Rejections
In view of the amendment of the claims and upon further search and consideration, all previous claim objections are withdrawn, all previous claim rejections under 35 USC 112(b) are withdrawn, and all previous claim rejections under 35 USC 103 over Chantal are withdrawn.
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Objections
Claims 27 and 31 are objected to because of the following informalities:
Claim 27: “of at least one wax” should recite “of the at least one wax”.
Claim 31: “the sucrose is” should recite “the sucrose polyester is”.
Appropriate correction is required.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 15, 16, 20, 22-26 and 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Snabre et al. (FR 2,990,347 A1, published November 15, 2013, IDS reference filed August 26, 2021, as evidenced by the Google translation, of record) in view of Ser et al. (US 5,437,859, published August 1, 1995).
Snabre teaches solid anhydrous cosmetic compositions comprising wax and/or pasty compound and nanometric particles (title; abstract; claims), as required by instant claims 22, 26. The compositions may be lipsticks (page 2, 1st full paragraph; page 5, 2nd & 4th full paragraphs).
The wax may be chosen from inter alia synthetic wax or/and jojoba esters (vegetable ester wax) (claims 4-6). Waxes include inter alia hydrocarbon based waxes inclusive of polyethylene (hydrocarbon apolar wax); polyethene wax has a melting point of 83 to 91 ºC (page 3, 2nd full paragraph; page 5, 4th full paragraph). The exemplary lipstick compositions comprise 3.65 wt% polyethylene wax (page 5, 4th full paragraph). Waxes also include hydrogenated coconut oil (page 3, 2nd full paragraph), as required by instant claims 32, 35. Waxes also include polyesters of sucrose including sucrose tetrastearate triacetate having a melting point of between 20 and 60 ºC, between 44 and 55 ºC (page 3, 2nd full paragraph; page 5, 4th full paragraph), as required by instant claims 16, 31, 34. The compositions comprise 1 to 40 wt% total wax and may comprise 0.1 to 25 wt% wax having a melting point between 20 and 60 ºC (claims 7, 8), as required by instant claim 27. The exemplary lipstick compositions comprise 7.71 wt% sucrose tetrastearate triacetate (page 5, 4th full paragraph). 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). MPEP 2144.05.
The compositions comprise 1 to 40 wt% pasty compound and may comprise 1 to 40 wt% pasty compound having a melting point between 20 and 60 ºC (claims 11, 12), as required by instant claim 23.
The compositions may (optionally) comprise 0.5 to 30 wt% of at least one structuring agent other than waxes and/or pasty compounds chosen from lipophilic gelling agents (claim 13), as required by instant claims 25, 30. Regarding the exclusion of lipophilic gelling agents other than the sucrose polyester as required by instant claim 25, optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123. Additionally, Snabre further teaches silicone resins as alternatives to lipophilic gelling agents (paragraph bridging pages 3 and 4).
The compositions may comprise 0.01 to 50 wt% of at least one dyestuff (colorant) inclusive of pigments (claim 14), as required by instant claims 24, 27.
The exemplary lipstick compositions further comprise meadowfoam seed oil (page 5, 4th full paragraph).
Snabre, as a whole, is silent toward and does not require volatile oils, as required by instant claims 20, 33.
Snabre does not specifically teach the waxes inclusive of hydrogenated coconut oil have a melting point between 25 and 55 ºC as required claims 15, 32.
This deficiency is made up for in the teachings of Ser.
Ser teaches anhydrous solid cosmetics in stick form comprising at least one wax having a melting point greater than 55 ºC inclusive of polyethylene (title; abstract; claims; column 3, lines 28-40). The compositions may further comprise waxes having a melting point lower than 55 ºC inclusive of hydrogenated oils solid at 25 ºC such as hydrogenated coconut oil (column 3, lines 41-50).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that waxes inclusive of hydrogenated coconut oil as taught by Snabre have a melting point between 25 and 55 ºC because Ser teaches such and it would have been obvious to modify the compositions of Snabre to comprise waxes inclusive of hydrogenated coconut oil in amounts ranging from 0.1 to 25 wt% because Snabre teaches this range is suitable for waxes having a melting point between 20 and 60 ºC.
Claims 21, 27, 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Snabre et al. (FR 2,990,347 A1, published November 15, 2013, IDS reference filed August 26, 2021, as evidenced by the Google translation, of record) in view of Ser et al. (US 5,437,859, published August 1, 1995) as applied to claims 15, 16, 20, 22-26 and 30-33 above, and further in view of Jacques et al. (US 2008/0171005, published July 17, 2008, of record).
The teachings of Snabre and Ser have been described supra.
Snabre teaches sucrose tetrastearate triacetate (page 3, 2nd full paragraph; page 5, 4th full paragraph), as required by instant claim 34.
Snabre teaches hydrogenated coconut oil (page 3, 2nd full paragraph) and Ser teaches hydrogenated coconut oil has melting point between 25 and 55 ºC (column 3, lines 41-50), as required by instant claim 35.
They do not specifically teach 30 to 70 wt% oil as required by claims 21, 27.
This deficiency is made up for in the teachings of Jacques.
Jacques teaches cosmetic compositions inclusive of lipsticks comprising a fatty phase comprising at least one fatty substance whose melting point is greater than 25 ºC chosen from waxes and pasty fatty substances; the compositions are anhydrous (title; abstract; claims, in particular 1, 2, 5; paragraphs [0003]-[0005], [0013], [0249]). The compositions further comprise 10 to 90 wt% of at least one nonvolatile oil (claims 22, 23). The compositions comprise no volatile oil; volatile oils can have the disadvantage of leaving on the lips a film which can deter certain people from using the product (claim 37; paragraph [0005]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the anhydrous compositions of Snabre in view of Ser inclusive of lipsticks to comprise a balance of oil or 10 to 90 wt% nonvolatile oil as taught by Jacques because this amount of oil is suitable for anhydrous lipsticks. There would be a reasonable expectation of success because the exemplary lipstick of Snabre comprises oils.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Snabre et al. (FR 2,990,347 A1, published November 15, 2013, IDS reference filed August 26, 2021, as evidenced by the Google translation, of record) in view of Ser et al. (US 5,437,859, published August 1, 1995) as applied to claims 15, 16, 20, 22-26 and 30-33 above, and further in view of Kosaka et al. (JP 2015-101581, published June 4, 2015, as evidenced by the Google translation).
The teachings of Snabre and Ser have been described supra.
They do not teach the waxes as required by claim 36.
This deficiency is made up for in the teachings of Kosaka.
Kosaka teaches an oily solid cosmetic comprising solid oils inclusive of polyethylene wax or/and ethylene / propylene copolymer (title; abstract; claims). Exemplary solid oils include LIPWAX PZ80-20 (mixture of a high molecular weight linear polyethylene and ethylene / propylene copolymer as evidenced by paragraph [69] of the instant specification).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute waxes as taught by Kosaka inclusive of LIPWAX PZ80-20 for the wax of Snabre because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claims 37 is rejected under 35 U.S.C. 103 as being unpatentable over Snabre et al. (FR 2,990,347 A1, published November 15, 2013, IDS reference filed August 26, 2021, as evidenced by the Google translation, of record) in view of Ser et al. (US 5,437,859, published August 1, 1995) as applied to claims 15, 16, 20, 22-26 and 30-33 above, and further in view of Jacques et al. (US 2008/0171005, published July 17, 2008, of record) as applied to claims 21, 27, 34 and 35 above, and further in view of Kosaka et al. (JP 2015-101581, published June 4, 2015, as evidenced by the Google translation).
The teachings of Snabre, Ser and Jacques have been described supra.
They do not teach the waxes as required by claim 37.
This deficiency is made up for in the teachings of Kosaka.
Kosaka teaches an oily solid cosmetic comprising solid oils inclusive of polyethylene wax or/and ethylene / propylene copolymer (title; abstract; claims). Exemplary solid oils include LIPWAX PZ80-20 (mixture of a high molecular weight linear polyethylene and ethylene / propylene copolymer as evidenced by paragraph [69] of the instant specification).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute waxes as taught by Kosaka inclusive of LIPWAX PZ80-20 for the wax of Snabre because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant's arguments have been considered but are substantially moot in light of the new grounds of rejection necessitated by amendment.
Applicant’s statement at page 8 of the Remarks that the claims have been amended to describe a composition more commensurate in scope with Example 1 of Table 1 of the specification is noted. However, the disclosure of a singular example is not commensurate with the genus claimed and it is not seen where Applicant has either demonstrated via comparative data that the properties of Example 1 are not possessed by the prior art or articulated a rationale for extrapolating the properties of the singular composition to the genus. See generally MPEP 716.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Roux et al. (WO 2018/115373) teaches cosmetics comprising waxes inclusive of a mixture having the INCI name jojoba esters (and) Helianthus annus (sunflower) seed wax (and) polyglycerin-3 (and) Acacia decurrens flower wax (title; abstract; claims; page 39, lines 4-8; Example 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600