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
The amendments and arguments filed on 03/23/2026 are acknowledged and have been fully considered. Claim 15 has been canceled; claims 18-19 are new. Claims 13-14 have been withdrawn. Applicants’ amendments are supported by the originally filed disclosure. The claims 18 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention.
No new matter has been added.
Thus, claims 1-12 and 16-17 will be examined on the merits herein.
Election/Restrictions
Applicant's election without traverse of Group I, in the reply filed on 07/13/2023, is acknowledged. In response, for election of one species Applicant elects the following: 1) polyoxyethylenated alkylglycerides, in particular PEG-6 Caprylic/Capric Glycerides (nonionic compound Y) and (2) compositions without colorant for further prosecution on the merits.
The claims 18 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/23/2026 is being considered by the examiner. The submission is in compliance with the provisions of 37 CFR 1.97.
Rejections Maintained and Made Again
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 1-12 and 16- 17 are rejected under 35 U.S.C. 103 as being unpatentable over Dussaud et al (A1) and FAIG et al (US 20210401702 A1).
Regarding instant claims 1, 3-8 and 16, Dussaud discloses aqueous compositions for hair treatment, comprising polyorganosiloxanes A) having di- and trihydroxy-substituted aromatic groups and at least one surfactant B) selected from cationic surfactants B1) and anionic surfactants B2) in a certain weight ratio of the surfactant B) to the polyorganosiloxane A), and said aqueous compositions having a certain pH (see entire document, for instance abstract). Dussaud teaches the aqueous composition for hair treatment according to the invention comprises water, preferably in an amount of at least 1 weight-%, more preferably at least 5 weight-%, more preferably at least 10 weight-%, more preferably at least 15 weight-%, more preferably at least 20 weight-%, and preferably up to 95 weight-%, more preferably up to 90 weight-%, more preferably up to 85 weight-%, more preferably up to 80 weight-%, more preferably up to 75 weight-%, more preferably up to 70 weight-%, based on the total weight of the aqueous compositions ([0012]). Dussaud teaches the term “organic diluents or solvents” refers to substances that may be used in particular to dilute/solvatize the at least one polyorganosiloxane in addition to water in the aqueous compositions ([0191]). Suitable organic solvents are e.g., 2-methyl-1,3-propanediol, mono and dialcohols or the ethers and esters thereof, in particular mono-C1-C3-alkyl ether, ethanol ([0191]). Generally, the addition of certain amounts of short chained alcohols improves the homogeneity of the formulations and the penetration of the formulations into the hair ([0191]). Dussaud discloses an “emollient” is a material that protects the skin against wetness or irritation, softens, smoothes, supples, coats, lubricates, moisturizes, protects and/or cleanses the skin ([0193]). Emollients include for example: a (cone compound, i.e. dimethicones, cyclomethicones, preferred D5 and D6 cyclosiloxanes, dimethicone copolyols or mixtures of cyclomethicones and dimethicone/vinyldimethicone cross polymer, polyols such as sorbitol, glycerin, propylene glycol, ethylene glycol, polyethylene glycol, caprylyl glycol, polypropylene glycol, 1,3-butane diol, hexylene glycol, isoprene glycol, xylitol, ethylhexyl palmitate, a triglyceride such as caprylic/capric triglyceride ([0193]). Dussaud teaches one or more tannins, specifically gallotannins, ellagitannins, complex tannins, condensed tannins, i.e., tannic acid and its other forms quercitannic acid and gallotannic acid may be used (see entire document, for instance, [0207]; Examples). The most preferred tannin is tannic acid ([0212]). Dussaud discloses formulations may also comprise one or more additional auxiliaries, i.e., pH adjusting agents as described below, such acids, bases and buffers to adjust the pH value, gelling agents ([0218]). Dussaud teaches the aqueous optionally comprise at least one or more additional additive, selected from: C) organic diluents or solvents (also referred to as non-aqueous diluent C), D)proteins, preferably keratin, E) emollients or fatty substances, F) preservatives, G) skin protecting ingredients, H) conditioning agents, I) oxidizing agents, J) reducing agents, K) tannins, L) metal salts, M) further auxiliaries selected from pH adjusting agents, thickeners, lipids, amino acids, sugars, fragrances, sunscreen agents, vitamins, pearlescent agents, gelling agents ([0178]- [0189]) . Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). Dussaud teaches additional auxiliaries such as, fumed silica, cellulose (a non-mineral filler per instant spec 00185), cellulose derivatives ([0218]). Dussaud et al does not indicate the presence of more than 1% monovalent or divalent metal compounds. Dussaud does not expressly disclose including silica silylate or polyamide (a surface-treated non-mineral filler). FAIG remedies this deficiency.
FAIG discloses a cosmetic composition providing a unique tactile sensation (abstract). Suitable nonionic emulsifiers (compound Y) include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof and water (claims 1, 6, [0016]). FAIG teaches one or more nonionic emulsifier having an HLB of 10 ([0046]). FAIG teaches the water-soluble solvent is a monoalcohol ([0118]). Non-limiting examples of monoalcohols include ethanol ([0118]). FAIG discloses the active agent may be an antioxidant selected from the group of flavonoids ([0164]). The antioxidant may be a tannin ([0171]).
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents ([0011]). FAIG discloses that the cosmetic compositions of the instant disclosure typically include: (a) about 0.1 to about 10 wt. % of a nonionic emulsifier ([0008]- [0009]). FAIG teaches suitable nonionic emulsifiers include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof (claims 1, 6, [0016]).
Dussaud discloses a gel composition comprising at least one polyphenol X comprising at least two different phenol groups; at least one nonionic compound Y which is a surfactant having a hydrophilic-lipophilic balance (HLB) greater than or equal to 7, has at least one carbon chain having at least 8 carbon atoms, and has at least one (poly)glycerolated chain and/or polyoxyalkylenated chain; and a solvent system comprising (water in an amount of at least about 10% by weight with respect to the total weight of the composition; and at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). FAIG teaches cosmetic compositions comprising compound X and compound Y as well as “soft focusing” effect of silica silylate, chelating agent, antioxidants, flavonoids, and sulfur-based antioxidants. Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the composition as described by Dussaud et al with the composition of FAIG et al. One would be motivated to do so with a reasonable expectation of success combining prior art elements according to known methods to yield predictable results to form a product with excellent staying power notably the color of the makeup on keratin materials (skin, lips, nails, hair, eyelashes, eyebrows) which may extend the duration of the cosmetic composition on keratin materials.
It would be within the purview of the skilled artisan to manipulate amounts of components within said ranges by routine experimentation, with a reasonable expectation of success. It is noted that MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). In this case, it would be within the purview of the ordinarily skilled artisan to select amounts of each component from within the disclosed ranges, including amounts instantly claimed, by routine experimentation, with a reasonable expectation of success.
Regarding Claims 2 and 11, Dussaud teaches the composition may be a gel and the inclusion of gelling agents (see entire document, for instance 0178, 0218 and 0247).
Regarding instant claim 7, Dussaud discloses that the aqueous compositions at 20°C have a pH of less than 7, preferably less than 6, more preferably less than 5, and preferably more than 2 (claim 1, [0010]).
Regarding instant claims 9 and 12, Dussaud teaches hair treatment formulations may also comprise one or more additional auxiliaries, fillers, nacres, colorants and in particular pigments and dyes, including hair dyeing agents, all kinds of bioactive phytochemicals, and also mixtures thereof ([0218]). Dussaud teaches and suggest colorings/colorants to be an optional component. Thus, it is well within the purview of the skilled artisan to form compositions that are color-free. One would be motivated to do so with a reasonable expectation of success of preventing from altering the visual color characteristics of a color cosmetic composition.
Regarding instant claim 9, FAIG teaches additional components may be added during the time of emulsification or after ([0194]). For example, certain fragrances, colorings, exfoliants, active ingredients, etc., may be added to the aqueous phase, the fatty phase, or after emulsification ([0194]). FAIG discloses all components and elements positively set forth in this disclosure can be negatively excluded from the claims ([0233]). In other words, the cosmetic compositions of the instant disclosure can be free or essentially free of all components and elements positively recited throughout the instant disclosure ([0233]). FAIG teaches and suggest colorings/colorants to be an optional component. Thus, it’s in the purview of the skilled artisan to form compositions that are color-free.
Regarding instant claim 17, FAIG teaches suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0057]).
Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). Dussaud teaches additional auxiliaries such as, fumed silica, cellulose (a non-mineral filler per instant spec 00185), cellulose derivatives ([0218]). Dussaud et al does not indicate the presence of more than 1% monovalent or divalent metal compounds. Dussaud does not expressly disclose including silica silylate or polyamide (a surface-treated non-mineral filler). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to rearrange the disclosed elements and embodiments of Dussaud et al., to include a silica silylate or polyamide, filler to prepare the claimed composition. Such a rearrangement by a person of ordinary skill in the art who is not an automaton to yield the instantly claimed compositions and methods is within the purview of the ordinary skilled artisan upon reading Dussaud et al., as cited above, and would yield predictable results.
Regarding instant claim 10, Dussaud teach tannic acid from about 0.5 to about 15% by weight ([0233]). Dussaud disclose a nonionic surfactant (i.e. at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y which does not comprise groups for disallowing formation of hydrogen bonding) in amount of from about 0% to about 15% (e.g. paragraphs 0147-0162). Dussaud teach the term “organic diluents or solvents” refers to substances that may be used in particular to dilute/solvatize the at least one polyorganosiloxane (0287). Suitable organic solvents include ethanol (0287). Dussaud disclose the organic diluents/solvents C) in a concentration range from 0 to 98%, preferably 0.1 to 95%, preferred 10 to 95%, more preferred 20 to 95%, even more preferred 20 to 50% and 50 to 95%, wherein each percentage is per weight based on the total weight of the aqueous composition (0225). Dussaud teaches that in a preferred embodiment water/ethanol mixtures are used in the aqueous compositions of the invention which improves the homogeneity of the formulations and the penetration of the formulations into the hair, in a most preferred total amount of 50 to 95% (e.g. paragraphs 0191 and 0225). As evidenced by the instant Specification, “an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition” is between 5-75 wt.%, which overlaps with the range of Dussaud et al. Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). Dussaud teaches additional auxiliaries such as, fumed silica ([0218]). (a) tannic acid (i.e. at least one polyphenol X comprising at least two different phenol groups) and tannins in a preferred concentration range from 0 to1 5% ([0233]), (see entire document, for instance 0207-0212; Examples). However, they do not expressly disclose including silica silylate and amount of filler and FAIG remedy this deficiency. FAIG discloses a cosmetic composition providing a unique tactile sensation (abstract). Suitable nonionic emulsifiers (compound Y) include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof and water (claims 1, 6, [0016]). FAIG teaches one or more nonionic emulsifier having an HLB of 10 ([0046]). FAIG teaches the water-soluble solvent is a monoalcohol ([0118]). Non-limiting examples of monoalcohols include ethanol ([0118]). FAIG discloses the active agent may be an antioxidant selected from the group of flavonoids ([0164]). The antioxidant may be a tannin ([0171]).
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents (([0011]).
Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the composition as described by Dussaud et al with the composition of FAIG. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the ethanol concentration through routine experimentation to arrive at the concentration of an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition in order to optimize the resulting product. One would be motivated to do so with a reasonable expectation of success in combining prior art elements according to known methods to yield predictable results. In the instant case additional presence of a specific particulate filler for guaranteeing the required stabilization of a composition.
It would be within the purview of the skilled artisan to manipulate amounts of components within said ranges by routine experimentation, with a reasonable expectation of success. It is noted that MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). In this case, it would be within the purview of the ordinarily skilled artisan to select amounts of each component from within the disclosed ranges, including amounts instantly claimed, by routine experimentation, with a reasonable expectation of success.
Claims 1-12 and 16- 17 are rejected under 35 U.S.C. 103 as being unpatentable over Dussaud et al (US 20180346653 A1) and Arnaud et al (US 20160296436 A1).
Regarding instant claims 1, 3-8 and 16, Dussaud discloses aqueous compositions for hair treatment, comprising polyorganosiloxanes A) having di- and trihydroxy-substituted aromatic groups and at least one surfactant B) selected from cationic surfactants B1) and anionic surfactants B2) in a certain weight ratio of the surfactant B) to the polyorganosiloxane A), and said aqueous compositions having a certain pH (see entire document, for instance abstract). Dussaud teaches the aqueous composition for hair treatment according to the invention comprises water, preferably in an amount of at least 1 weight-%, more preferably at least 5 weight-%, more preferably at least 10 weight-%, more preferably at least 15 weight-%, more preferably at least 20 weight-%, and preferably up to 95 weight-%, more preferably up to 90 weight-%, more preferably up to 85 weight-%, more preferably up to 80 weight-%, more preferably up to 75 weight-%, more preferably up to 70 weight-%, based on the total weight of the aqueous compositions ([0012]). Dussaud teaches the term “organic diluents or solvents” refers to substances that may be used in particular to dilute/solvatize the at least one polyorganosiloxane in addition to water in the aqueous compositions ([0191]). Suitable organic solvents are e.g., 2-methyl-1,3-propanediol, mono and dialcohols or the ethers and esters thereof, in particular mono-C1-C3-alkyl ether, ethanol ([0191]). Generally, the addition of certain amounts of short chained alcohols improves the homogeneity of the formulations and the penetration of the formulations into the hair ([0191]). Dussaud discloses an “emollient” is a material that protects the skin against wetness or irritation, softens, smoothes, supples, coats, lubricates, moisturizes, protects and/or cleanses the skin ([0193]). Emollients include for example: a (cone compound, i.e. dimethicones, cyclomethicones, preferred D5 and D6 cyclosiloxanes, dimethicone copolyols or mixtures of cyclomethicones and dimethicone/vinyldimethicone cross polymer, polyols such as sorbitol, glycerin, propylene glycol, ethylene glycol, polyethylene glycol, caprylyl glycol, polypropylene glycol, 1,3-butane diol, hexylene glycol, isoprene glycol, xylitol, ethylhexyl palmitate, a triglyceride such as caprylic/capric triglyceride ([0193]). Dussaud teaches one or more tannins, specifically gallotannins, ellagitannins, complex tannins, condensed tannins, i.e., tannic acid and its other forms quercitannic acid and gallotannic acid may be used (see entire document, for instance, [0207]; Examples). The most preferred tannin is tannic acid ([0212]). Dussaud discloses formulations may also comprise one or more additional auxiliaries, i.e., pH adjusting agents as described below, such acids, bases and buffers to adjust the pH value, gelling agents ([0218]). Dussaud teaches the aqueous optionally comprise at least one or more additional additive, selected from: C) organic diluents or solvents (also referred to as non-aqueous diluent C), D)proteins, preferably keratin, E) emollients or fatty substances, F) preservatives, G) skin protecting ingredients, H) conditioning agents, I) oxidizing agents, J) reducing agents, K) tannins, L) metal salts, M) further auxiliaries selected from pH adjusting agents, thickeners, lipids, amino acids, sugars, fragrances, sunscreen agents, vitamins, pearlescent agents, gelling agents ([0178]- [0189]) . Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). Dussaud teaches additional auxiliaries such as, fumed silica, cellulose (a non-mineral filler per instant spec 00185), cellulose derivatives ([0218]). Dussaud et al does not indicate the presence of more than 1% monovalent or divalent metal compounds. Dussaud does not expressly disclose including silica silylate or polyamide (a surface-treated non-mineral filler). Arnaud remedies this deficiency.
Arnaud discloses a cosmetic composition with a satisfactory stability over time, while maintaining satisfactory application comfort ([0008]). Arnaud teaches a cosmetic composition giving a mattifying effect to the skin, with a good stability over time of said mattifying effect (for at least 1 hour, preferably at least 2 hours, advantageously at least 4 hours, for example at least 8 hours) ([0009]). Arnaud discloses ethanol (see entire document, for instance, claim 12). Arnaud teaches filler absorbing and/or adsorbing sebum capable of absorbing and/or adsorbing an oil or a liquid fat such as sebum (from skin) ([0069]). Arnaud discloses filler absorbing and/or adsorbing sebum is chosen from the group consisting of silicas, silica silylates, polyamide powders (see entire document, for instance, claim 6). Arnaud teaches that depending on the fluidity of the composition sought, one or a plurality of thickeners or gelling agents may be incorporated into a composition according to the invention ([0131)]. Arnaud discloses celluloses such as microcrystalline cellulose ([0133]). Arnaud teaches thickeners in an active substance content of 0.01% to 40% by weight ([0138]). Arnaud teaches filler content may range from 2% to 20% by weight ([0175]).
Dussaud discloses a gel composition comprising at least one polyphenol X comprising at least two different phenol groups; at least one nonionic compound Y which is a surfactant having a hydrophilic-lipophilic balance (HLB) greater than or equal to 7, has at least one carbon chain having at least 8 carbon atoms, and has at least one (poly)glycerolated chain and/or polyoxyalkylenated chain; and a solvent system comprising (water in an amount of at least about 10% by weight with respect to the total weight of the composition; and at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). Arnaud discloses filler absorbing and/or adsorbing sebum is chosen from the group consisting of silicas, silica silylates, polyamide powders (see entire document, for instance, claim 6). Arnaud teaches that depending on the fluidity of the composition sought, one or a plurality of thickeners or gelling agents may be incorporated into a composition according to the invention ([0131)]. Arnaud discloses celluloses such as microcrystalline cellulose ([0133]). Arnaud teaches thickeners in an active substance content of 0.01% to 40% by weight ([0138]). Arnaud teaches filler content may range from 2% to 20% by weight ([0175]).
Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the composition as described by Dussaud et al with the composition of Arnaud et al. One would be motivated to do so with a reasonable expectation of success combining prior art elements according to known methods to yield predictable results to form a cosmetic composition with a satisfactory stability over time, while maintaining satisfactory application comfort.
It would be within the purview of the skilled artisan to manipulate amounts of components within said ranges by routine experimentation, with a reasonable expectation of success. It is noted that MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). In this case, it would be within the purview of the ordinarily skilled artisan to select amounts of each component from within the disclosed ranges, including amounts instantly claimed, by routine experimentation, with a reasonable expectation of success.
Regarding Claims 2 and 11, Dussaud teaches the composition may be a gel and the inclusion of gelling agents (see entire document, for instance 0178, 0218 and 0247).
Regarding instant claim 7, Dussaud discloses that the aqueous compositions at 20°C have a pH of less than 7, preferably less than 6, more preferably less than 5, and preferably more than 2 (claim 1, [0010]).
Regarding instant claims 9 and 12, Dussaud teaches hair treatment formulations may also comprise one or more additional auxiliaries, fillers, nacres, colorants and in particular pigments and dyes, including hair dyeing agents, all kinds of bioactive phytochemicals, and also mixtures thereof ([0218]). Dussaud teaches and suggest colorings/colorants to be an optional component. Thus, it is well within the purview of the skilled artisan to form compositions that are color-free. One would be motivated to do so with a reasonable expectation of success of preventing from altering the visual color characteristics of a color cosmetic composition.
Regarding instant claim 10, Dussaud teach tannic acid from about 0.5 to about 15% by weight ([0233]). Dussaud disclose a nonionic surfactant (i.e. at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y which does not comprise groups for disallowing formation of hydrogen bonding) in amount of from about 0% to about 15% (e.g. paragraphs 0147-0162). Dussaud teach the term “organic diluents or solvents” refers to substances that may be used in particular to dilute/solvatize the at least one polyorganosiloxane (0287). Suitable organic solvents include ethanol (0287). Dussaud disclose the organic diluents/solvents C) in a concentration range from 0 to 98%, preferably 0.1 to 95%, preferred 10 to 95%, more preferred 20 to 95%, even more preferred 20 to 50% and 50 to 95%, wherein each percentage is per weight based on the total weight of the aqueous composition (0225). Dussaud teaches that in a preferred embodiment water/ethanol mixtures are used in the aqueous compositions of the invention which improves the homogeneity of the formulations and the penetration of the formulations into the hair, in a most preferred total amount of 50 to 95% (e.g. paragraphs 0191 and 0225). As evidenced by the instant Specification, “an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition” is between 5-75 wt.%, which overlaps with the range of Dussaud et al. Dussaud discloses compositions may comprise, fillers [0178], [0218], claim 17). Dussaud teaches additional auxiliaries such as, fumed silica ([0218]). (a) tannic acid (i.e. at least one polyphenol X comprising at least two different phenol groups) and tannins in a preferred concentration range from 0 to1 5% ([0233]), (see entire document, for instance 0207-0212; Examples). However, they do not expressly disclose including silica silylate and amount of filler and Arnaud remedy this deficiency. Arnaud discloses filler absorbing and/or adsorbing sebum is chosen from the group consisting of silicas, silica silylates, polyamide powders (see entire document, for instance, claim 6). Arnaud teaches that depending on the fluidity of the composition sought, one or a plurality of thickeners or gelling agents may be incorporated into a composition according to the invention ([0131)]. Arnaud discloses celluloses such as microcrystalline cellulose ([0133]). Arnaud teaches thickeners in an active substance content of 0.01% to 40% by weight ([0138]). Arnaud teaches filler content may range from 2% to 20% by weight ([0175]).
Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the composition as described by Dussaud et al with the composition of Arnaud. One would be motivated to do so with a reasonable expectation of success in combining prior art elements according to known methods to yield predictable results. In the instant case additional presence of a specific particulate filler for guaranteeing the required stabilization of a composition.
It would be within the purview of the skilled artisan to manipulate amounts of components within said ranges by routine experimentation, with a reasonable expectation of success. It is noted that MPEP 2144.05 states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). In this case, it would be within the purview of the ordinarily skilled artisan to select amounts of each component from within the disclosed ranges, including amounts instantly claimed, by routine experimentation, with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive. Applicant argues the prior art does not teach or suggest any difference in functionality between mineral and non-mineral fillers nor improved color properties. In response to applicant's argument that the prior art does not teach or suggest any difference in functionality between mineral and non-mineral fillers nor improved color properties, the fact that the inventor has recognized another advantage 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).
With regard to the rejection over Dussaud and FAIG, Dussaud teaches additional auxiliaries such as, fumed silica, cellulose (a non-mineral filler per instant spec 00185), cellulose derivatives ([0218]). Dussaud does not expressly disclose including silica silylate or polyamide (a surface-treated non-mineral filler). FAIG remedies this deficiency. FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the composition as described by Dussaud et al with the composition of FAIG et al. One would be motivated to do so with a reasonable expectation of success combining prior art elements according to known methods to yield predictable results to form a product with excellent staying power notably the color of the makeup on keratin materials (skin, lips, nails, hair, eyelashes, eyebrows) which may extend the duration of the cosmetic composition on keratin materials.
With regard to the rejection over Dussaud and Arnaud, Dussaud teaches additional auxiliaries such as, fumed silica, cellulose (a non-mineral filler per instant spec 00185), cellulose derivatives ([0218]). Dussaud does not expressly disclose including silica silylate or polyamide (a surface-treated non-mineral filler). FAIG remedies this deficiency. FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). Arnaud discloses a cosmetic composition with a satisfactory stability over time, while maintaining satisfactory application comfort ([0008]). Arnaud teaches a cosmetic composition giving a mattifying effect to the skin, with a good stability over time of said mattifying effect (for at least 1 hour, preferably at least 2 hours, advantageously at least 4 hours, for example at least 8 hours) ([0009]). Arnaud teaches filler absorbing and/or adsorbing sebum capable of absorbing and/or adsorbing an oil or a liquid fat such as sebum (from skin) ([0069]). Arnaud discloses filler absorbing and/or adsorbing sebum is chosen from the group consisting of silicas, silica silylates, polyamide powders (see entire document, for instance, claim 6). Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the composition as described by Dussaud et al with the composition of Arnaud et al. One would be motivated to do so with a reasonable expectation of success combining prior art elements according to known methods to yield predictable results to form a cosmetic composition
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9 of copending Application No. 17/731,759 in view of FAIG et al (US 20210401702 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (1) at least one polyphenol X comprising at least two different phenol groups; (2) at least one nonionic compound Y which is a surfactant having a hydrophilic-lipophilic balance (HLB) greater than or equal to 7, has at least one carbon chain having at least 8 carbon atoms, and has at least one (poly)glycerolated chain and/or polyoxyalkylenated chain; and (3) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. The copending claims disclose composition in the form of a gel. The (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The copending claims disclose the composition is substantially free of coloring agents. The polyphenol compound X is tannic acid. The C2-C5 monoalcohol is ethanol as well as the pH is less than 7. The composition is substantially free of coloring agents.
However, the copending claims do not explicitly teach component (d) at least one non-mineral filler.
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents ([0011]). FAIG discloses that the cosmetic compositions of the instant disclosure typically include: (a) about 0.1 to about 10 wt. % of a nonionic emulsifier ([0008]- [0009]). FAIG teaches suitable nonionic emulsifiers include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof (claims 1, 6, [0016]).
Thus, the scope of the copending claims anticipates the scope of the instant claims.
Claims 1-5 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8 and 10 of copending Application No. 17/731,791 in view of FAIG et al (US 20210401702 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one polyphenol X comprising at least two different phenol groups; (b) at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y with a molar mass greater than 200 g/mol; (c) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. The copending claims disclose composition in the form of a gel. The polyphenol compound X is tannic acid. The copending claims disclose at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The composition is substantially free of coloring agents. The C2-C5 monoalcohol is ethanol as well as the pH is less than 7.
However, the copending claims do not explicitly teach component (d) at least one non-mineral filler.
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents ([0011]). FAIG discloses that the cosmetic compositions of the instant disclosure typically include: (a) about 0.1 to about 10 wt. % of a nonionic emulsifier ([0008]- [0009]). FAIG teaches suitable nonionic emulsifiers include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof (claims 1, 6, [0016]).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention was made to apply the copending claims’ composition with a non-mineral filler. One would have been motivated with a reasonable expectation of success to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP §2144.07). Thus, the scope of the copending claims anticipates the scope of the instant claims.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 ,7, and 10-11 of copending Application No. 17/731,816 in view of FAIG et al (US 20210401702 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one polyphenol X comprising at least two different phenol groups; (b) at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y; (c) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. The copending claims disclose composition in the form of a gel. The at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The copending claims disclose the polyphenol compound X is tannic acid. The at least one C2-C5 monoalcohol is ethanol as well as the pH is less than 7. The copending claims disclose the at least one polyphenol compound X is tannic acid, the at least one C2-C5 monoalcohol is ethanol, wherein the pH is less than 7 and wherein the composition is in the form of a gel composition. The copending claims disclose the composition is substantially free of coloring agents.
However, the copending claims do not explicitly teach component (d) at least one non-mineral filler.
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents ([0011]). FAIG discloses that the cosmetic compositions of the instant disclosure typically include: (a) about 0.1 to about 10 wt. % of a nonionic emulsifier ([0008]- [0009]). FAIG teaches suitable nonionic emulsifiers include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof (claims 1, 6, [0016]).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention was made to apply the copending claims’ composition with a non-mineral filler. One would have been motivated with a reasonable expectation of success to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP §2144.07). Thus, the scope of the copending claims anticipates the scope of the instant claims.
Claims 1, 3, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3 of copending Application No. 17/731,809 in view FAIG et al (US 20210401702 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising: (a) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in a concentration by weight in the composition that is about 55% or less and wherein at least one C2-C5 monoalcohol is present in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application; (b) at least one polyphenol X comprising at least two different phenol groups (c) at least one glycerolated nonionic compound Y. The copending claims disclose the at least one polyphenol compound X is tannic acid. The at least one C2-C5 monoalcohol is ethanol.
However, the copending claims do not explicitly teach component (d) at least one non-mineral filler has a lipophilic surface treatment and/or is selected from the group consisting of polyamide, cellulose particles, microcrystalline cellulose particles, and mixtures thereof.
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents ([0011]). FAIG discloses that the cosmetic compositions of the instant disclosure typically include: (a) about 0.1 to about 10 wt. % of a nonionic emulsifier ([0008]- [0009]). FAIG teaches suitable nonionic emulsifiers include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof (claims 1, 6, [0016]).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention was made to apply the copending claims’ composition with a non-mineral filler. One would have been motivated with a reasonable expectation of success to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP §2144.07). Thus, the scope of the copending claims anticipates the scope of the instant claims.
Claims 1, 3-7, and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3-6 and 8 of copending Application No. 17/731,863 in view of Dussaud et al (US 20180346653 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (1) at least one polyphenol X comprising at least two different phenol groups; (2) at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y; (3) a solvent system comprising at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application; and optionally (4) at least one agent selected from the group consisting of (i) at least one chelating agent; (ii) at least one gelling agent; (iii) at least one antioxidant selected from the group consisting of ascorbic acid compounds, sulfur-containing antioxidants, and mixtures thereof, (iv) at least one non-mineral filler, and (v) mixtures thereof. The at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The copending claims disclose the at least one polyphenol compound X is tannic acid. The C2-C5 monoalcohol is ethanol. The composition comprises at least one non-mineral filler which is silica silylate as well as the pH is less than 7.
However, the copending claims do not explicitly teach water in an amount of at least about 10% by weight with respect to the total weight of the composition.
Dussaud et al disclose an aqueous compositions for hair treatment, comprising polyorganosiloxanes A) having di- and trihydroxy-substituted aromatic groups and at least one surfactant B) selected from cationic surfactants B1) and anionic surfactants B2) in a certain weight ratio of the surfactant B) to the polyorganosiloxane A), and said aqueous compositions having a certain pH (abstract). Dussaud et al teaches the aqueous composition for hair treatment according to the invention comprises water, preferably in an amount of at least 1 weight-%, more preferably at least 5 weight-%, more preferably at least 10 weight-%, more preferably at least 15 weight-%, more preferably at least 20 weight-%, and preferably up to 95 weight-%, more preferably up to 90 weight-%, more preferably up to 85 weight-%, more preferably up to 80 weight-%, more preferably up to 75 weight-%, more preferably up to 70 weight-%, based on the total weight of the aqueous compositions ([0012] ). Dussaud et al teach the term “organic diluents or solvents” refers to substances that may be used in particular to dilute/solvatize the at least one polyorganosiloxane A) according to the invention and the other optional other ingredients as mentioned before in addition to water in the aqueous compositions ([0191]). Suitable organic solvents are e.g., 2-methyl-1,3-propanediol, mono and dialcohols or the ethers and esters thereof, in particular mono-C1-C3-alkyl ether, ethanol ([0191]). Generally, the addition of certain amounts of short chained alcohols improves the homogeneity of the formulations and the penetration of the formulations into the hair ([0191]). Dussaud et al disclose an “emollient” is a material that protects the skin against wetness or irritation, softens, smoothes, supples, coats, lubricates, moisturizes, protects and/or cleanses the skin ([0193]). Emollients include for example: a : a silicone compound, i.e. dimethicones, cyclomethicones, preferred D.sub.5 and D.sub.6 cyclosiloxanes, dimethicone copolyols or mixtures of cyclomethicones and dimethicone/vinyldimethicone cross polymer), polyols such as sorbitol, glycerin, propylene glycol, ethylene glycol, polyethylene glycol, caprylyl glycol, polypropylene glycol, 1,3-butane diol, hexylene glycol, isoprene glycol, xylitol, ethylhexyl palmitate, a triglyceride such as caprylic/capric triglyceride ([0193] ). Dussaud et al teaches one or more tannins, specifically gallotannins, ellagitannins, complex tannins, condensed tannins, i.e., tannic acid and its other forms quercitannic acid and gallotannic acid may be used ([0207]). The most preferred tannin is tannic acid ([0212]). Dussaud et al disclose formulations may also comprise one or more additional auxiliaries, i.e., pH adjusting agents as described below, such acids, bases and buffers to adjust the pH value, gelling agents ([0218]). Dussaud et al teaches the aqueous optionally comprise at least one or more additional additive, selected from: C) organic diluents or solvents (also referred to as non-aqueous diluent C)proteins, preferably keratin, E) emollients or fatty substances, F) preservatives, G) skin protecting ingredients, H) conditioning agents, I) oxidizing agents, J) reducing agents, K) tannins, L) metal salts, M) further auxiliaries selected from pH adjusting agents, thickeners, lipids, amino acids, sugars, fragrances, sunscreen agents, vitamins, pearlescent agents, gelling agents, trace elements, sequestering agents, antioxidants, humectants, anti-hair loss agents, antidandruff agents, propellants, ceramides, polymers, in particular film-forming polymers, fillers, nacres, colorants, in particular pigments and dyes, and mixtures thereof ([0178]- [0189]) .
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention was made to apply the copending claims’ composition with water in an amount of at least about 10% by weight. One would have been motivated with a reasonable expectation of success to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP §2144.07). Thus, the scope of the copending claims anticipates the scope of the instant claims.
Claims 1-8 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, and 4-11. of copending Application No. 19/338,274 in view FAIG et al (US 20210401702 A1). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a method of making up keratinous material comprising applying a color coat composition and a composition comprising (a) at least one polyphenol X comprising at least two different phenol groups; (b) at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y; (c) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application; (d) at least one chelating agent; and (e) at least one ascorbic acid compound to the keratinous material. The composition is in the form of a gel composition. The at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mo. The at least one polyphenol compound X is tannic acid. The at least one C2- C5 monoalcohol is ethanol. The at least one ascorbic acid compound is ascorbyl glucoside. The at least one ascorbic acid compound is ascorbic acid. The composition has a pH which is less than 7. The at least one polyphenol compound X is tannic acid, the at least one C2-C5 monoalcohol is ethanol, the at least one ascorbic acid compound is ascorbyl glucoside, wherein the composition has a pH which is less than 7 and wherein the composition is in the form of a gel composition. The composition is substantially free of coloring agents.
However, the copending claims do not explicitly teach component (d) at least one non-mineral filler has a lipophilic surface treatment and/or is selected from the group consisting of polyamide, cellulose particles, microcrystalline cellulose particles, and mixtures thereof.
FAIG teaches that suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, and silica silylate ([0016]). FAIG discloses mattifying agents (also referred to as “mattifying fillers”) refer to material that gives the complexion more transparency and a hazy effect and provides skin with a natural and desirable appearance, without conferring on it a greasy, gleaming and shiny appearance ([0055]). To do this, these materials are often absorbent fillers such as talc, silica, kaolin or fillers having light scattering optical properties, which properties are known under the name “soft focus” effect ([0055]). In addition to reducing the shine or oiliness, mattifying agents can contribute to the overall texture and thickness of a cosmetic composition. Mattifying agents are often (but not always) particulate material or powders ([0055]). Suitable mattifying agents include but are not limited to the following: aluminum starch octenylsuccinate, methyl methacrylate crosspolymers, polymethylsilsesquioxane, cellulose, polyamide (Nylon®) powders, and silica silylate ([0057]). FAIG teaches about 0.1 to about 15 wt. %, preferably about 0.1 to about 5 wt. % of mattifying agents ([0011]). FAIG discloses that the cosmetic compositions of the instant disclosure typically include: (a) about 0.1 to about 10 wt. % of a nonionic emulsifier ([0008]- [0009]). FAIG teaches suitable nonionic emulsifiers include those chosen from polyglyceryl 10-stearate, polyglyceryl-3-caprate, polyglyceryl-3-diisostearate, polysorbate 20, or a mixture thereof (claims 1, 6, [0016]).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention was made to apply the copending claims’ composition with a non-mineral filler. One would have been motivated with a reasonable expectation of success to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP §2144.07). Thus, the scope of the copending claims anticipates the scope of the instant claims.
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive. Applicant argues “For the same reasons as discussed above in connection with the obviousness rejections, in particular the deficiencies of Faig and Dussaud, Applicant respectfully requests that the applied secondary references cannot supplement disclosure/information which is lacking in the asserted claims of the other pending applications. Accordingly, Applicant respectfully requests reconsideration and withdrawal of the pending double patenting rejection as well.” Applicant's argument is not found persuasive. In response to applicant's argument that the prior art does not teach or suggest any difference in functionality between mineral and non-mineral fillers nor improved color properties, the fact that the inventor has recognized another advantage 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).
Conclusion
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/JANET JOSEPH/Patent Examiner, Art Unit 1611
/TREVOR LOVE/Primary Examiner, Art Unit 1611
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