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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/31/25 has been entered.
Claims 1-11 and 16-24 are pending. Claims 3 and 16 are withdrawn. Claims 1 and 4 have been amended. Claims 22-24 are new. Claims 1, 2, 4-11 and 17-24 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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 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.
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.
Claims 1, 2, 4-11, and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Alwattari et al. (WO 02/15875) in view of Mary Kay et al. (US 2016/0199286; cited in IDS).
Alwattari et al. teach skin care compositions containing an oil-soluble film-forming polymer and an oil-soluble adhesive elastomeric polymer and to methods of using such compositions to regulate the appearance of skin and/or hair (e.g. abstract). Alwattari et al. teach that the oil-soluble adhesive elastomeric polymer comprises styrene-butylene/ethylene-styrene triblock copolymer (e.g. page 8; Claims 6 and 7). Alwattari et al. teach the elastomer is present at 0.1-70 wt%, or preferably 2-40 wt% (e.g. page 7). Alwattari et al. teach that the composition comprises colorants, and exemplify a foundation comprising red iron oxide, yellow iron oxide, and titanium dioxide; a mascara comprising 10 wt% black iron oxide; and a lip color comprising 10% red iron oxide (i.e. at least one coloring agent present in an amount sufficient to provide color to the keratinous material upon application) (e.g. Examples 14-15, 17, and 22). Alwattari et al. teach that the composition may be anhydrous and comprises a volatile oil, which is preferably isododecane (e.g. page 9; Examples).
Alwattari et al. do not teach the inclusion of an acid-functional silicone elastomer as claimed. This is made up for by the disclosure of Mary Kay et al.
Mary Kay et al. teach a cosmetic composition that includes an elastomer and at least one cosmetic component optionally in a cosmetically acceptable medium, wherein the elastomer is according to the general formula: A-B-A or B-A-B, wherein each A independently comprises a polysiloxane moiety having at least two siloxy (Si—O) groups and wherein each B independently comprises a moiety, or a precursor thereof, having at least two carboxyl groups and wherein B is bonded to a silicon atom in A (e.g. abstract). Mary Kay et al. teach that the silicone elastomer is preferably present at 0.5% to 25% (e.g. paragraph 0022). Mary Kay et al. teach that the cosmetic compositions provide film forming, substantivity, durability, pigment/particle suspension and/or modification, long lasting/wear, additional chemistry, actives (e.g. drug) or inactives (e.g. fragrance) delivery/release, and combinations thereof (e.g. paragraph 0008). Mary Kay et al. teach that the composition may be anhydrous, and comprises a volatile oil and colorants (e.g. paragraphs 0314, 0244, 0344, 0260). Mary Kay et al. teach that the composition may be a foundation, mascara, or a lipstick (e.g. paragraph 0304; Claims 18 and 26; Examples).
Regarding Claims 1, 2, 4-9 and 22-24, it would have been obvious to one of ordinary skill in the art at the time of filing to include the acid-functional silicone elastomer of Mary Kay et al. in the cosmetic compositions of Alwattari et al. It would have been obvious to one of ordinary skill in the art 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. One of ordinary skill in the art would have predicted success as both of the compositions are useful as cosmetic compositions comprising similar ingredients, and one of ordinary skill would have been motivated in order to provide the benefits of film forming, substantivity, durability, pigment/particle suspension and/or modification, and long lasting/wear, as taught by Mary Kay et al. In addition, or in the alternative, it would have been obvious to combine the compositions of Alwattari and Mary Kay as a whole. Both Alwattari and Mary Kay teach cosmetic compositions including foundation, mascara, or a lipstick. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding the claimed concentrations, Alwattari et al et al. teach the block copolymer is present at 0.1-70 wt% and Mary Kay et al. teach that the silicone elastomer is preferably present at 0.5% to 25% (e.g. paragraph 0022), which 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) (MPEP 2144.05.I).
Regarding Claims 1 and 19, neither Alwattari et al. nor Mary Kay teach the inclusion of a hydrocarbon resin.
Regarding Claims 1 and 20, Alwattari et al. and Mary Kay teach the inclusion of a volatile silicone oil as optional but do not exemplify, and therefore also teach embodiments which exclude them.
Regarding Claims 1 and 21, Alwattari et al. and Mary Kay teach the inclusion of a non-polar hydrocarbon oil as optional but do not exemplify, and therefore also teach embodiments which exclude them.
Regarding Claims 10 and 11, Alwattari et al. teach the block copolymer is present at 0.1-70 wt% (e.g. page 7), and Mary Kay et al. teach that the silicone elastomer is preferably present at 0.5% to 25% (e.g. paragraph 0022), which overlap with the claimed ranges. This results in a ratio of block copolymer to silicone elastomer of 0.004:1 to 140:1. 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.I).
Regarding Claims 17 and 18, the claims are directed to an intended use and outcome of a claimed product and do not recite any additional ingredients or structure. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case Alwattari et al. teach the block copolymer is present at 0.1-70 wt% (e.g. page 7), and Mary Kay et al. teach that the silicone elastomer is preferably present at 0.5% to 25% (e.g. paragraph 0022), which overlap with the claimed and preferred ranges of the instant Specification which increase strain sweep (e.g. paragraphs 0066 and 0067), therefore the claim has been met.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 4-11 ad 17-24 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 claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/Primary Examiner, Art Unit 1619