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 .
Status of Application
Receipt of Applicant’s remarks and amended claims filed on April 30, 2026 is acknowledged.
Claims 20-29, 31-38, and 42 are pending in this application.
Claim 22 has been amended.
Claims 1-19, 30, and 39-41 have been cancelled.
Claims 34-38 remain withdrawn from consideration as drawn to non-elected Groups II and III.
Claims 20-29, 31-33, and 42 are under examination in this application.
Withdrawn Objection/Rejections
Claim Objections
The objection to claim 39 under 37 CFR 1.75 as being a substantial duplicate of claim 22 has been withdrawn in view of the cancelation of the claim.
Maintained 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 20-29, 32-33, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Gombart et al. (KR 2015/0031238) in view of Parissaux et al. (WO 2014155015).
Gombart discloses a cosmetic composition comprising at least one polymer which can include starch, at least one polyol, and an elastic mixture of water. The mixture imparts a resilience to the cosmetic product applied to the surface of the skin that naturally undergoes such changes as changes in facial expression, pressure of the fingers by contact, or contact of the clothes (abstract).
Example 3 discloses the use of xanthan gum (hydrophilic gelling agent), starch, and glycerol (a polyol).
The starch can be a starch hydrolysate, corn starch, pea starch (leguminous starch), tapioca starch, potato starch, and wheat starch (claim 2).
Regarding claim 23, as noted above, the starch can be pea starch.
Regarding claim 24, as noted above, the starch can be a hydrolysate starch.
Regarding claim 25, the starch is present in the amount of 10-30% by weight of the mixture (claim 1).
Regarding claim 26, as noted above, glycerol is disclosed in Example 3. Additional polyols include sorbitol and glycol (claim 4).
Regarding claim 27, the polyol is present in the amount of 20-60% by weight of the mixture (claim 1).
Regarding claim 28, the components of Example 3 equal 42.66%. The example discloses the composition is then qs to 100 with purified water. Therefore, the water would be present in the amount of 57.34%.
Regarding claim 29, as noted above, Example 3 utilizes xanthan gum.
Regarding claim 32, Example 4 discloses ethanol.
Regarding claim 33, the composition additionally comprises pigments.
Gombert does not disclose the amylose percentage of the starch.
Parissaux discloses a film forming composition comprising a hydroxypropyl starch and sorbitol (abstract).
When the starch is a pea starch, the amylose content is between 25 and 45%.
Regarding claim 21, a viscosity measured at 25 ° C. of less than or equal to 500 mPa.s.
Regarding claims 22 and 39, as noted above, the amylose content is between 25 and 45%.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have to use the high amylose starch disclosed by Parissaux as the starch of Gombart since it is disclosed to be an ideal film forming polymer to make an elastic and cohesive film.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues:
*The purpose of a hydrophilic gelling agent as an essential component of the sweat- and sebum-resistant film of the instant claims. In contrast, Gombart discloses a cosmetic composition comprising a mixture that forms an elastic film. In Gombart, the film formation lies in the presence of starch, a polymer, and a polyol only. While xanthan gum is disclosed in Example 3, the gum is not critical and indispensable in the formation of Gombart's film. The gum is merely a component like any other component in the day cream exemplified in Example 3. The non-critical nature of xanthan gum is demonstrated by the fact that other cosmetic compositions of Examples 2A, 2B, and 4, form an elastic film in the absence of xanthan gum. Therefore, one of ordinary skill in the art would have understood that only the three ingredients previously discussed (i.e., starch, a polyol, and a polymer) are mandatory for forming the elastic film in Gombart's cosmetic composition.
The arguments regarding the inclusion of xanthan gum in Example 3 as being non-critical and indispensable to the formation of Gumbert’s film are immaterial to the rejection over the instant claims. Gombart discloses, in an example, xanthan gum, glycerol, starch, and water are present in a single formulation. Applicant’s attention is directed to MPEP 2123 which recites "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
*Gombart's elastic film and the resistant film formed in the present invention have different purposes.
The intended use of a composition is not given patentable weight. The fact Applicant is utilizing their composition for a different purpose does not change the fact the composition is disclosed in the prior art.
*The amylose content of leguminous starch is not disclosed in Gombart
The Examiner has conceded Gombart does not disclose the amylose content of the starch. This teaching is remedied by Parissaux.
*There is no motivation to combine Gombart with Parissaux
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant application, it would have been obvious to the skilled artisan to select a starch with an amylose content recited in the instant claims because Parissaux teaches the starch to be an ideal film forming polymer to make an elastic and cohesive films.
Allowable Subject Matter
Claims 31 and 42 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 MELISSA S MERCIER whose telephone number is (571)272-9039. The examiner can normally be reached M-F 6:30 am to 4 pm EST.
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, Robert A Wax can be reached on 571-272-0623. 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.
/MELISSA S MERCIER/ Primary Examiner, Art Unit 1615
Prosecution Insights