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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 January 2025 has been entered.
Status of claims
Applicant’s claim amendments and arguments in the response filed 23 January 2025 are acknowledged.
Claims 1-11 & 13-21 are pending in the application.
Claims 1 & 9 are amended.
Claim 12 is cancelled.
Claims 10, 11 & 13-21 are withdrawn.
Claims 1-9 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 and constitute the complete set presently being applied to the instant application.
Examination is to the extent of the following species:
poly(acrylate-co-siloxane)-based film former- acrylates/polytrimethylsiloxymethacrylate copolymer;
polyglyceryl fatty acid ester- polyglyceryl-6 distearate; -and-
water soluble polymer or water dispersible polymer based on acrylate or water dispersible polymer based on polyurethane- styrene/acrylates/ammonium methacrylate copolymer.
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 of SN 16/470,159.
Objections/Rejections
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 1-6, 8 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lahousse (WO 2016/046399; IDS-2/22/22; previously cited), Iwama (US 2012/0258059; IDS-2/25/22; previously cited), Changoer (US 2016/0235661; IDS-2/25/22; previously cited), Bui [(US 2014/0105845; IDS-2/25/22; previously cited), as evidenced by Jacquier (US 2012/0042894; previously cited)] and Finkenaur (US 4,935,228; Published: 1990-06-19).
With regard to claims 1, 3 & 5, and the elected species, Lahousse at pg. 1, ll. 5-10 teaches cosmetic preparation in the form of an emulsion comprising the claimed aqueous phase comprising water and in examples 1-2 exemplify the claimed “acrylate/polytrimethyl siloxymethacrylate copolymer” (claim 5) in isododecane (claim 3 drawn to volatile hydrocarbon) and having pigment ( pg. 2, ll. 25-30; pg. 39, ll. 30-35; pg. 61). With regard to claims 1 & 8, the examples have preserving agent (claim 8 drawn to one of preservative) and the examples have water. With regard to claim 6, Lahousse at page 18 teaches the amount of vinyl polymer bearing at least one carbosiloxane dendrimer-based unit and the amount is 0.5-20% (acrylate/polytrimethyl siloxymethacrylate copolymer) which is the species drawn to the above copolymer). With regard to claim 6, Examples 1-2 uses 10% acrylate/polytrimethyl siloxymethacrylate copolymer (pg. 65). With regard to claim 1, Lahousse teaches inclusion of hydrophilic gelling polymers (pg. 53, ll. 15-35). Lahousse claims their composition is for lips (Lahousse’s claim 1).
Lahousse does not teach the composition is in gel form, the water-soluble or water-dispersible film former based on acrylate, at least one emulsifier based on polyglyceryl fatty acid ester, the ratio of the film former in the lipid phase to the film former in the aqueous phase or the dynamic viscosity of the composition.
With regard to claim 1, Iwama teaches cosmetic external skin preparations and at ¶ [0166] teaches the cosmetic preparations can be in the form of emulsions and also gels. Iwama teaches lipsticks and lipstick products, lip glosses, and lip liner are examples of makeup products of their invention [0158].
With regard to claims 1 & 2, Changoer teaches cosmetic and topical compositions and at ¶ [0063] teaches, viscosity controlling agents and emulsifiers are necessary to bind the water phase ingredients and oil phase ingredients and teaches claimed polyglyceryl-6 distearate, jojoba esters, polyglyceryl-3 beeswax, and cetyl alcohol [0063]. Changoer teaches compositions which are applied to the lips ([0078] & [0080]).
With regard to claim 4 & 6, Bui teaches cosmetic compositions comprising wax dispersions comprising at least one film former and at ¶ [0025] teaches claimed “‘styrene/acrylates/ammonium methacrylate copolymer” and at ¶ [0030] teaches the amount which is from about 5% to about 50%. Bui teaches the composition of their invention are for application to the lips [0197]. Bui teaches the styrene/acrylates/ammonium methacrylate copolymer for use in their invention is sold under the tradename Syntran 5760 [0025]. As evidenced by Jacquier, Syntran 5760 is an aqueous emulsion of styrene acrylic copolymers comprising water/butylene glycol/sodium lauryl ether sulfate (i.e. an aqueous phase comprising at least one water dispersible film former; Example 5-[0351]).
In the same field of invention of cosmetic for lips, Finkenaur teaches a lip gloss comprising a mineral oil gel in which a gel is formed after packaging as taught by Example 1 (abstract; col. 5, ll. 1-10). Finkenaur teaches viscosity to be a parameter which is optimizable. “The compositions of the present invention must possess certain required flow characteristics. The composition must have sufficient viscosity to prevent its leakage from the container and must be able to retain the color and other ingredients of the system in uniform suspension or dispersion. It must be readily spreadable on lips and must be retained on the lips for a reasonable length of time” (col. 2, ll. 1-15). Finkenaur teaches the viscosity range required for the lip gloss will range in accordance with the type and design of the container from which it is dispensed. “One suitable package is a co-extruded low density polyethylene tube with stiff shoulder wall construction…a lip gloss composition for use in a container having these specifications may have a viscosity within the range of 95,000 to 300,000 c.p.s… The optimum range of viscosity is 200,000 to 300,000 c.p.s.” (i.e. 95-300 Pa*s; 200-300 Pa*s; col. 2, ll. 25-45).
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.
With regard to the form of the composition, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lahousse’s emulsion composition by preparing the emulsion in the form of gel as taught by Iwama because Lahousse and Iwama are both drawn to compositions with application to the lips, Lahousse teaches inclusion of hydrophilic gelling agents and Iwama teaches emulsions and gels are both suitable forms for cosmetic preparations which may be lip products. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a composition with a gelled hydrophilic phase as taught by Lahousse.
With regard to composition’s reagents, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lahousse’s emulsion composition by adding polyglyceryl-6 distearate, jojoba esters, polyglyceryl-3 beeswax and cetyl alcohol as suggested by Changoer and from about 5% to about 50% styrene/acrylates/ammonium methacrylate copolymer/Syntran 5760 as suggested by Bui [yielding a ratio of acrylate/polytrimethyl siloxymethacrylate copolymer film former to styrene/acrylates/ammonium methacrylate copolymer from 1:500-4:1, including 1:2 when the acrylate/polytrimethyl siloxymethacrylate copolymer film former is present in an amount of 10% and the styrene/acrylates/ammonium methacrylate copolymer is present in an amount of 5% as suggested by the combined teachings of Lahousse and Bui] because Lahousse, Changoer and Bui are all drawn to topical compositions which are applied to the lips and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to bind the water phase ingredients and oil phase ingredients and control viscosity as suggested by Changoer and provide a film on the lips through inclusion of “‘styrene/acrylates/-ammonium methacrylate copolymer”/Syntran 5760 as taught by Bui.
With regard to the recited dynamic viscosity, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lahousse’s emulsion by adjusting the viscosity of the composition to be 200-300 Pa*s as suggested by Finkenaur because Lahousse, Iwama, Changoer, Bui and Finkenaur are all directed to lip compositions and it is obvious to modify similar compositions in the same way. The ordinarily skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a lip composition that is readily spreadable on lips but retains the color and other ingredients uniformly suspended or dispersed.
With regard to the recited ratio of the at least one film former in the lipid phase to the at least one film former in the aqueous phase, amount of poly(acrylate-co-siloxane)-based film former and the amount of the at least one water-soluble or water-dispersible film former, and the recited dynamic viscosity, the combined teachings of Lahousse, Iwama, Changoer, Bui and Finkenaur suggest these parameters with values that falls within or overlap with the recited range. 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).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lahousse, Iwama, Changoer, Bui and Finkenaur as applied to claims 1-6, 8 & 9 above, and further in view of Iron Oxide Black (Published: 08/13/2016; previously cited).
The teachings of Lahousse, Iwama, Changoer, Bui and Finkenaur are described above. In brief, the combined teachings of Lahousse, Iwama, Changoer, Bui and Finkenaur suggest a lip composition. Lahousse teaches inclusion of black nacres with gold tints and iron oxides for inclusion in the composition (pg. 49, ll. 30-35; pg. 52, ll. 10-15).
Neither Lahousse, Iwama, Changoer, Bui nor Finkenaur teach inclusion of black iron oxide.
With regard to claim 7 and in the same field of invention, Iron Oxide Black teaches black iron oxide is recommend for use in face make-up, including lipstick and reiterates the suitability of black iron oxide for the lips by inclusion of the
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icon (pg. 1). Iron Oxide Black teaches black iron oxide is black (see picture) and provides “non-bleeding color” and moisture resistance (pg. 1 & 2).
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the composition suggested by the combined teachings of Lahousse, Iwama, Changoer, Bui and Finkenaur by substituting the Lahousse’s generically taught iron oxide with black iron oxide as taught by Iron Oxide Black to obtain predictable result of a darkly tinted lip composition. The ordinarily skilled artisan would have been motivated to do so, with an expectation of success, in order to provide the composition with non-bleeding color and moisture resistance as taught by Iron Oxide Black.
Claims 1-6, 8 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lahousse (WO 2016/046399; IDS-2/22/22; previously cited), Iwama (US 2012/0258059; IDS-2/25/22; previously cited), Changoer (US 2016/0235661; IDS-2/25/22; previously cited), Bui [(US 2014/0105845; IDS-2/25/22; previously cited), as evidenced by Jacquier (US 2012/0042894; previously cited)] and Hart (WO 2012/158627).
The teachings of Lahousse are described above.
Lahousse does not teach the composition is in gel form, the water-soluble or water-dispersible film former based on acrylate, at least one emulsifier based on polyglyceryl fatty acid ester, the ratio of the film former in the lipid phase to the film former in the aqueous phase or the dynamic viscosity of the composition.
The teachings of Iwama are described above. Iwama teaches lipsticks and lipstick products, lip glosses, and lip liner are examples of makeup products of their invention [0158].
The teachings of Changoer are described above. Changoer teaches compositions which are applied to the lips ([0078] & [0080]).
The teachings of Bui are described above. Bui teaches the composition of their invention are for application to the lips [0197].
Hart teaches a lipstick and teaches the viscosity of the lip stick compositions can be selected to achieve a desired result (e.g., depending on the type of composition desired, the viscosity of such composition can be from about 1 cps to well over 1 million cps or any range or integer derivable therein (e.g., 2 cps, 3, 4, 5, 6, 7, 8, 9, 10, 20, 30, 40, 50, 60, 70, 80, 90, 100, 200, 300, 400, 500, 600, 700, 800, 900, 1000, 2000, 3000, 4000, 5000, 6000, 7000, 8000, 9000, 10000, 20000, 30000, 40000, 50000, 60000, 70000, 80000, 90000, 100000, 200000, 300000, 400000, 500000, 600000, 700000, 800000, 900000, 1000000, cps, etc., as measured on a Brookfield Viscometer using a TC spindle at 2.5 rpm at 25°C; i.e. 0.001-1,000 Pa*s, including 100, 200, 300, 400, 500, 600, 700, 800 Pa*s; [0007] & title). More broadly, Hart teaches the containers for housing lip stick compositions of their invention is one that may be squeezed or the composition can be dispensed as a spray , a liquid a fluid or a semi-solid [0045].
With regard to the form of the composition, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lahousse’s emulsion composition by preparing the emulsion in the form of gel as taught by Iwama because Lahousse and Iwama are both drawn to compositions with application to the lips, Lahousse teaches inclusion of hydrophilic gelling agents and Iwama teaches emulsions and gels are both suitable forms for cosmetic preparations which may be lip products. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a composition with a gelled hydrophilic phase as taught by Lahousse.
With regard to composition’s reagents, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lahousse’s emulsion composition by adding polyglyceryl-6 distearate, jojoba esters, polyglyceryl-3 beeswax and cetyl alcohol as suggested by Changoer and from about 5% to about 50% styrene/acrylates/ammonium methacrylate copolymer/Syntran 5760 as suggested by Bui [yielding a ratio of acrylate/polytrimethyl siloxymethacrylate copolymer film former to styrene/acrylates/ammonium methacrylate copolymer from 1:500-4:1, including 1:2 when the acrylate/polytrimethyl siloxymethacrylate copolymer film former is present in an amount of 10% and the styrene/acrylates/ammonium methacrylate copolymer is present in an amount of 5% as suggested by the combined teachings of Lahousse and Bui] because Lahousse, Changoer and Bui are all drawn to topical compositions which are applied to the lips and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to bind the water phase ingredients and oil phase ingredients and control viscosity as suggested by Changoer and provide a film on the lips through inclusion of “‘styrene/acrylates/-ammonium methacrylate copolymer”/Syntran 5760 as taught by Bui.
With regard to the recited dynamic viscosity, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lahousse’s emulsion by adjusting the viscosity of the composition to be any one of 100, 200, 300, 400, 500, 600, 700, 800 Pa*s as suggested by Hart because Lahousse, Iwama, Changoer, Bui and Hart are all directed to lip compositions and it is obvious to modify similar compositions in the same way. The ordinarily skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a lip composition with a viscosity appropriate for application to the lips as taught by Hart.
With regard to the recited ratio of the at least one film former in the lipid phase to the at least one film former in the aqueous phase, amount of poly(acrylate-co-siloxane)-based film former and the amount of the at least one water-soluble or water-dispersible film former, and the recited dynamic viscosity, the combined teachings of Lahousse, Iwama, Changoer, Bui and Hart suggest these parameters with values that falls within or overlap with the recited range. 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).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lahousse, Iwama, Changoer, Bui and Hart as applied to claims 1-6 & 8 above, and further in view of Iron Oxide Black (Published: 08/13/2016; previously cited).
The teachings of Lahousse, Iwama, Changoer, Bui and Hart are described above. In brief, the combined teachings of Lahousse, Iwama, Changoer, Bui and Hart suggest a lip composition. Lahousse teaches inclusion of black nacres with gold tints and iron oxides for inclusion in the composition (pg. 49, ll. 30-35; pg. 52, ll. 10-15).
Neither Lahousse, Iwama, Changoer, Bui nor Hart teach inclusion of black iron oxide.
With regard to claim 7 and in the same field of invention, the teachings of Iron Oxide Black are described above,
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the composition suggested by the combined teachings of Lahousse, Iwama, Changoer, Bui and Hart by substituting the Lahousse’s generically taught iron oxide with black iron oxide as taught by Iron Oxide Black to obtain predictable result of a darkly tinted lip composition. The ordinarily skilled artisan would have been motivated to do so, with an expectation of success, in order to provide the composition with non-bleeding color and moisture resistance as taught by Iron Oxide Black.
Response to Arguments
In the traverse of the rejection of claims 1-6 and 8 under 35 U.S.C. § 103 as obvious over Lahousse in view of Iwama, Changoer, Bui, and Kiko, Applicant argues Kiko does not teach a viscosity of 150-850 Pa*s (reply, pg. 7). Applicant argues Kiko’s taught viscosity is too low (reply, pg. 7).
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.
In the traverse of the rejection of claims 1-6 and 8 under 35 U.S.C. § 103 as obvious over Lahousse, Iwama, Changoer, Bui (as evidenced by Jacquier) and Hart, Applicant agues the viscosity range taught by Hart is so broad that it does not render the claimed range of 150-850 Pa*s obvious (reply, pg. 8). Applicant argues the range taught by Hart is seven orders of magnitude (reply, pg. 8). Applicant argues Kiko teaches that cosmetic preparations that have greater 100 Pa*s of the range taught by Hart have unevenness and cannot have a thin feeling and thus are not easy or comfortable to apply (reply, pg. 8).
This is not persuasive. First, Hart teaches the viscosity of the lipstick are optimizable and are selected to achieve the desired result depending on the composition desired. Each value taught by Hart for the viscosity is equally obvious as the other values. It is noted that Applicant does not disclose in their as-filed specification that the recited viscosity range is critical. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916). In the instant case, Applicant has not provided such a showing.
With regard to Applicant’s argument that Kiko’s teachings would suggest that Hart’s viscosities are not easy or comfortable to apply, Hart explicitly teaches their “lipsticks can have a cosmetically or pharmaceutically elegant feel such a non-oily, non-greasy, non-sticky, non-tacky, and/or silky feel after being applied to skin such as hand skin” [0008]. Prior art is presumed to be operable/enabling (MPEP 2121).
Conclusion
No claims are allowed.
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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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619