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 .
Status of claims
Applicant’s claim amendments and arguments in the response filed 27 April 2026 are acknowledged.
Claims 1-11 & 13-22 are pending.
Claim 22 is new.
Claims 1 & 9 are amended.
Claim 12 is cancelled.
Claims 10, 11 & 13-21 are withdrawn.
Claims 1-9 & 22 are under consideration.
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.
Improper Pointing to the US Publication
Applicant’s representative points to paragraphs numbers in the specification for support. However, the as-filed specification does not contain paragraph numbers. Applicant’s representative appears to be pointing to the US Publication for support for the claim amendments. This is improper. The US Publication is not the original disclosure in that it is not Applicant’s immediate work as filed and there is potential for errors to be inadvertently introduced by the printers/typesetters. MPEP 608 is quite clear. “All amendments and claims must find descriptive basis in the original disclosure. No new matter may be introduced into an application after its filing date. Applicant may for disclosure upon the specification with original claims and drawings, as filed. See also 37 CFR 1.121(f) and MPEP § 608.04.” (emphasis added; MPEP 608). Applicant’s future responses should point to support in the as-filed specification either by page and line number or paragraph number.
New & Maintained Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 & 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 1 recites the cosmetic preparation has a dynamic viscosity of between 100 and 900 Pa* s when subjected to a shear rate of about 0.1 s-1, and wherein the viscosity decreases by at least 90% relative to the viscosity at about 0.1 s-1 when the cosmetic preparation is subjected to an increased shear rate of about 100 s-1. Claim 22 recites wherein the viscosity returns to at least 50% of its value at 0.1 s-1 within 30 seconds after the shear rate is reduced back to about 0.1 s-¹. Applicant states that support for the specification is found at “Paras. [0023], [0057], [0085] and FIGs. 2 and 3 of the Specification” (reply, pg. 1). This is not persuasive. A search of the specification shows there is no disclosure of the composition having the property of the “viscosity decreases by at least 90% relative to the viscosity at about 0.1 s-1 when the cosmetic preparation is subjected to an increased shear rate of about 100 s-1” or that the “viscosity returns to at least 50% of its value at 0.1 s-1 within 30 seconds after the shear rate is reduced back to about 0.1 s-¹”. With regard to Applicant’s statement that support is found in Figs. 2 and 3, the data generated in Figs. 2 and 3 is generated with “different masses with varying ratios of two film former dispersions A to B”. Example 2 states “different ratios of the film former in the aqueous phase (B) to the film former of the oil phase (A)” but fails to state what the film formers are. Claim 1 recites the film former in the lipid phase is a poly(acrylate-co-siloxane)-based film former. Claim 1 recites the film former for the aqueous phase is “at least one water-soluble or water-dispersible film former based on acrylate or polyurethane”. Claim 1 also recites ratios of “the at least one film former in the lipid phase and the at least one film former in the aqueous phase” with value as low as 1:3 however Figs. 2 and 3 only examined ratios as low as 1:1. Further, claim 1 recites the preparation comprises additional reagents not present in compositions of Figures 2 and 3 (e.g. at least one water-soluble or water-dispersible film former based on acrylate or polyurethane, at least one emulsifier based on polyglyceryl fatty acid ester; and at least one pigment). Figures 2 and 3 are not commensurate with the scope of claim 1 and does not provide support for claims 1 and 22. Claims 1 and 22 change the scope of the disclosure; thereby constituting new matter.
Claims 2-9 are rejected under 35 USC 112(a)-New Matter because they depend from rejected claim 1 and do not rectify the issues.
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 & 22 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; previously cited); and as evidenced by Pratley (WO 2005/070374; Published: 08/04/2005)].
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). With regard to claims 1 & 22, 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. With regard to claims 1, 9 & 22, “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).
With regard to the claims 1 & 22 recitation pertaining to the dynamic viscosity of the composition, the combined teachings of Lahousse, Iwama, Changoer, Bui (as evidenced by Jacquier) and Finkenaur (as evidenced by Pratley) teach the recited reagents in the recited amounts and ratios. The composition suggested by the combined teachings necessarily has a dynamic viscosity of between 100 and 900 Pa· s when subjected to a shear rate of about 0.1 s-1, and wherein the viscosity decreases by at least 90% relative to the viscosity at about 0.1 s-1 when the cosmetic preparation is subjected to an increased shear rate of about 100 s-1 because "[p]roducts of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is supported by evidentiary reference Pratley who discloses that it is the choice of a structurant that provides dynamic viscosity and that a suitable structurant is disteardimonium hectorite (pg. 10, ll. 5-10 & 20-30). Notably, Lahousse’s Examples 1-2 contain disteardimonium hectorite (pg. 61).
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 & 22 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 & 22 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; previously cited); and as evidenced by Pratley (WO 2005/070374; Published: 08/04/2005)].
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).
With regard to the claims 1 & 22 recitation pertaining to the dynamic viscosity of the composition, the combined teachings of Lahousse, Iwama, Changoer, Bui (as evidenced by Jacquier) and Hart (as evidenced by Pratley) teach the recited reagents in the recited amounts and ratios. The composition suggested by the combined teachings necessarily has a dynamic viscosity of between 100 and 900 Pa· s when subjected to a shear rate of about 0.1 s-1, and wherein the viscosity decreases by at least 90% relative to the viscosity at about 0.1 s-1 when the cosmetic preparation is subjected to an increased shear rate of about 100 s-1 because "[p]roducts of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is supported by evidentiary reference Pratley who discloses that it is the choice of a structurant that provides dynamic viscosity and that a suitable structurant is disteardimonium hectorite (pg. 10, ll. 5-10 & 20-30). Notably, Lahousse’s Examples 1-2 contain disteardimonium hectorite (pg. 61).
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, 9 & 22 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 over Lahousse, lwama, Changoer, Bui and Finkenaur; claim 7 under 35 U.S.C. § 103 over Lahousse, Iwama, Changoer, Bui, and Finkenauer, and further in view of Iron Oxide Black; claims 1-6, 8, and 9 under 35 U.S.C. § 103 as obvious over Lahousse, Iwama, Changoer, Bui, and Hart, Applicant argues the recited dynamic viscosities, stating their compositions is a gel that thins/liquifies during the low shear that occurs during application and then rapidly re-gels once applied (reply, pg. 6-7). Applicant argues the Lahousse, Iwama, Changeover, and Hart references individually (reply, pg. 7-8).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Lahousse teaches that their lip composition is a gel in that it compromises hydrophilic gelling polymers and water (pg. 53, ll. 15-35). Iwama teaches cosmetic external skin preparations including lipsticks and lipstick products, lip glosses, and lip liner which are in the form of emulsions and also gels ([0158] & [0166]). 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). These references are all gels and it is obvious to look to these references as the basis of knowledge of the ordinary skilled artisan before the effective filing date.
With regard to Applicant’s arguments pertaining to the dynamic viscosity parameters of their inventive composition as recited by claim 1 and 22, the compositions suggested by the combined teachings of a) Lahousse, Iwama, Changoer, Bui (as evidenced by Jacquier) and Finkenaur (as evidenced by Pratley) or b) Lahousse, Iwama, Changoer, Bui (as evidenced by Jacquier) and Hart (as evidenced by Pratley) teach the recited reagents in the recited amounts and ratios. The compositions suggested by the combined teachings necessarily has a dynamic viscosity of between 100 and 900 Pa· s when subjected to a shear rate of about 0.1 s-1, and wherein the viscosity decreases by at least 90% relative to the viscosity at about 0.1 s-1 when the cosmetic preparation is subjected to an increased shear rate of about 100 s-1 because "[p]roducts of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is supported by evidentiary reference Pratley who discloses that it is the choice of a structurant that provides dynamic viscosity and that a suitable structurant is disteardimonium hectorite (pg. 10, ll. 5-10 & 20-30). Notably, Lahousse’s Examples 1-2 contain disteardimonium hectorite (pg. 61).
Applicant argues Bui, Jacquier, Finkenaur, and Iron Oxide Black, do not remedy the above-described deficiencies of Lahousse, Iwama, Changoer, or Hart (reply, pg. 9).
This is not persuasive. The teachings of the prior art with regard to the structure of a preparation in gel form that is emulsion based is addressed in the rejections under 35 USC 103(a) and traverse above. The teachings of the prior art with regard to the reagents, amounts and ratios are addressed in the rejections under 35 USC 103(a) and traverse above. Lahousse’s Examples 1-2 comprises disteardimonium hectorite and this is a structurant that has the property of providing dynamic viscosity to compositions as evidenced by Pratley.
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).
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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