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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/15/2025 has been entered.
Election/Restrictions
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/12/2023.
Response to Arguments
All of Applicant’s arguments filed 9/15/2025 have been fully considered and are not persuasive.
Applicant remarks that examples 1-4 of Table 6 in the specification show that the claimed combination of ingredients provide good sebum resistance and good ease of removal properties. In contrast examples 8-11 in table 6 have poor sebum resistance and poor removal properties. One of skill in the art would not have known which combination of ingredients in Zoltowski would be expected to obtain the properties of ease of removal and sebum resistance.
This is not persuasive. The fact that the inventor has recognized another advantage (good sebum resistance and ease of removal) which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant have not provided any evidence that shows this property to be unexpected or superior in any way. Applicant has also provided no evidence that the differences shown in Table 6 were statistically significant. Applicants are directed to pages 8-9 of the Board Decision rendered on 7/15/2025.
Applicant argues that Zoltowski does not provide any specific motivation to combine the ingredients in a specific way to achieve a composition having Zoltowski’s desired properties.
This is not persuasive, Zoltowski teaches that water, oil, low hlb surfactant, ammonium acrylates copolymer, trimethylsiloxysilicate resin, dimethiconol, quaternium-18 hectorite, waxes with melting points above for 65°C, colorant, etc. are all suitable for use in a water-in-oil mascara or other topical skin applications, therefore, its prima facie obvious to combine these components to arrive at compositions “yielding no more than one would expect from such an arrangement.” Furthermore, Applicant does not identify any evidence, as opposed to mere attorney argument, that combinations of the optional compositions disclosed in Zoltowski would not have a reasonable expectation of success in achieving the goals of Zoltowski. The requirement is not an absolute expectation of success, but
rather a reasonable expectation of success based on the teachings of the prior art. See In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). Accordingly, to establish a prima facie case of obviousness, the Examiner need not demonstrate that the proposed compositions would have or be expected to have such properties. Applicants are directed to page 10 of the Board Decision rendered on 7/15/2025.
Applicant argues that Zoltowski does not provide a finite number of compounds to choose from, to the contrary innumerable compounds can be considered and such a disclosure without guidance cannot render obvious the claimed invention.
This is not persuasive as the instant claims recites a combination of elements that were all well known in the prior art, and all that was required to obtain that combination was to substitute one well known agent for another. Example 3 of Zoltowski teaches a water in oil mascara emulsion composition that includes (a) water, (b) an oil, (c) a surfactant, (d) an ammonium acrylates copolymer and (e) an organosiloxane film formed of simethicone, the same components which are recited by claim 1 which results in a much more limited set of composition in the prior art that suggests the obviousness of claim 1 and Zoltowski teaches each of the component that maybe used in claim 1 and suggests how these components maybe incorporated into cosmetic composition. Zoltowski is a prior art publication and is presumed to be enabling absent evidence to the contrary from Applicant. Applicant has provided no evidenced that a skilled artisan would not have been able to select ingredients for Zoltolwski’s composition that would result in the asserted properties. Applicants are directed to pages 7-8 of the Board Decision rendered on 7/15/2025.
Applicant remarks that the secondary references do not cure the deficiencies of Zoltowski.
This is not persuasive for the same reasons discussed above.
Maintained/Modified 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 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.
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.
Claim(s) 1-6, 8-15, 17-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zoltowski (US 2003/0026816) and Khaiat (US 2003/0180339), as evidenced by L’Alloret (US 2002/0187173) and Lu (US 2006/0110346).
Zoltowski teaches cosmetic compositions having improved application benefits to keratinous tissue and fibers, the compositions allow for smooth application of a long wearing film-forming cosmetic product (Abs).
Regarding claims 1(d), 2, 4 and 13: Zoltowski teaches the cosmetic composition to comprise 0.1-30% of a resin, the resin is typically available in the form of a water insoluble latex and in a preferred embodiment, the latex comprises an ammonium acrylate copolymer [0057 and 0059] or syntran 5130 (acrylate copolymer formulated with added ammonia) and is free of styrene [0059].
Regarding claims 8 and 15: Zoltowski teaches that waxes can be incorporated in amounts of 1-20% and have melting points between 50°C and 100°C [0061-0062].
Regarding claim 9: Zoltowski teaches that pigments can be added and the amount used depends on the color and the intensity of the color that it is intended to produce [0071].
Regarding claims 1(e), 3 and 6: Zoltowski teaches that hydrophobic conditioning agents can be added and this includes trimethylsiloxysilicate resin [0087] and dimethiconol ( as evidenced by L’Alloret, dimethiconol is a silicone gum [0164]).
Regarding claim 1(c): Zoltowski teaches that the cosmetic can include cosmetic agents that are coacervate-forming and these comprise a cationic polymer, an anionic surfactant and a dermatologically acceptable carrier [0097].
Regarding claim 1(c) and 5: Zoltowski teaches that fats are added in amounts ranging from 5-50%, preferably 10-20% [0065]. Preferred fats for use include glyceryl monostearate [0066], a low hlb surfactants as demonstrated by table 1 of the instant specification. While Zoltowski teaches glyceryl monostearate to be a fat and not a surfactants, it is noted that a compounds and its properties are inseparable, thus glycerol monostearate is also inherently a surfactant.
Regarding claims 1(a), 1(b) and 12: Zoltowski teaches the cosmetic composition to be a water-in-oil emulsion and teaches the composition to be formulated as a mascara (Zoltowski – claims 16 and 18), along with forms that can be applied to the skin such as lipsticks, eyeliners, etc. As the composition is taught to be an water-in-oil composition it necessarily comprises water and at least one oil. Furthermore, Zoltowski teaches that mineral oil can be added [0091].
Regarding claims 10 and 14: Zoltowski teaches that quaternium-18 hectorite can be used and this can affect the viscosity of the composition [0142 and 0144]. As evidenced by Lu quaternium-18 hectorite is a well-known inorganic thickening agent which is hydrophobic [0058], reading on hydrophobic silicate clay.
Example 3 of Zoltowski teaches a composition comprising a water (component (a) as claimed), C18-36 acid triglyceride (component (b) as claimed, glyceryl monostearate (component c as claimed), an ammonium acrylate copolymer (component (d) as claimed) and simethicone (an organosiloxane film former)
However the reference does not teach this specific combination of water, oil, low hlb surfactant, ammonium acrylates copolymer, trimethylsiloxysilicate resin, dimethiconol, quaternium-18 hectorite, waxes with melting points above for 65°C, colorant, etc. for use in a water-in-oil mascara or other topical skin applications.
That being said, however, it must be remembered that “[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. AG. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is... a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of various disclosed ingredients including water, oil, low hlb surfactant, ammonium acrylates copolymer, trimethylsiloxysilicate resin, dimethiconol, quaternium-18 hectorite, wax with melting points above for 65°C, colorant, etc. for use in a water-in-oil mascara or other topical skin formulations from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
However, Zoltowski does not teach the amounts in which the trimethylsiloxysilicate resin is used.
Khaiat teaches compositions for application to the skin and teaches that skin conditioners such as trimethylsiloxysilicate resin can be used in amounts ranging from 1-4% [0041].
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Zoltowski with those of Khaiat and use the trimethylsiloxysilicate resin in the composition of Zoltowski in amounts of 1-4% as taught by Khaiat as Khaiat teaches that this is a well-known concentration range to use this specific conditioning agents and its prima facie obvious for a skilled artisan to pursue to known options within his or her own technical grasp to achieve the predictable result of formulating a cosmetic having a well-known conditioning agent.
Regarding claims 17-18 and 20: The prior art makes obvious the use of an organosiloxane film former in amounts of 1-4% and the ammonium salt of acrylic polymer in amounts of 0.1-30% which provides a weight ratio that overlaps with the claimed ranges.
New Claim Rejections - 35 USC § 103
Claim(s) 1-6, 8-15, 17-18, 20 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zoltowski (US 2003/0026816) and Khaiat (US 2003/0180339), as evidenced by L’Alloret (US 2002/0187173) and Lu (US 2006/0110346), as applied to claims 1-6, 8-15, 17-18 and 20 above, further in view of Giagnorio (US 2010/0047295).
As discussed above, Zoltowski makes obvious the limitations of claims 1-6, 8-15, 17-18 and 20, however, Zoltowski does not teach the amounts in which the oil is present as recited by instant claims 21-22.
Zoltowski does teach that hydrophobic conditioning agents such as mineral oil can be added [0083].
Giagnorio teaches skin care emulsions comprising auxiliary skin conditioning agents such as mineral oil. This agents can be used in amounts ranging from 1-10% and the amounts used can be readily determined by a skilled artisan based on the effective amount for achieving the desired tactile effect on the skin without adversely affecting the physical stability of the composition or its physical acceptability (Abs and [0031-0032]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zoltowski with those of Giagnorio. One of skill in the art would have been motivated to use the mineral oil of Zoltowski in amounts ranging from 1-10% as this is taught to be amounts suitable for use in cosmetics for application to the skin. One of skill in the art would have also been motivated to optimize the amounts of conditioning agent used based on the desired tactile effect. One of skill in the art would have a reasonable expectation of success as both Zoltowski and Giagnorio are directed to cosmetic compositions comprising mineral oils as conditioning agents.
Conclusion
No claims are allowable.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613