DETAILED ACTION
Notice of Pre-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 the Claims
The amendments filed 12/01/2025 have been entered.
Response to Arguments
Applicant’s arguments, filed 12/01/2025, have been fully considered.
The claims have been amended to further require the presence of at least one wax in the composition.
In view of the Applicant’s amendments to the claims, claims 5-6 are REJOINED, and the rejection of claims has been modified to address the new limitation.
Applicant’s arguments are moot in view of the modified basis of rejection.
Claim Objections
Claims 5-6 have been rejoined in view of Applicant’s amendments to the claims. However, claims 5 and 6 each depend from claim 4 which has not been rejoined since the entirety of claim 4 has been incorporated into claim 1 by Applicant’s amendment.
Accordingly, Applicant should cancel claim 4 and amend claims 5-6 to properly depend from claim 1.
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.
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 1-3, 7-9, 11-12 and 23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Rando et al (US 7,534,446; of record) as evidenced by SpecialChem (available online at https://www.specialchem.com/cosmetics/inci-ingredients/triisostearin, accessed 3/3/2026).
As amended, claim 1 is drawn to a solid cosmetic composition comprising:
(a) at least 2% by weight (more specifically, between 2% and 16% (claim 3)) of alkylcellulose (more specifically, ethylcellulose (claim 2));
(b) at least one non-volatile polar hydrocarbon first oil (more specifically, octyldodecanol (claim 7) wherein “a content of non-volatile polar hydrocarbon first oil(s) is from 20% to 55%” (claims 8-9));
(c) at least 20% by weight of at least one second oil incompatible with the first oil(s) (more specifically, non-volatile non-phenylated silicone oils and/or non-volatile phenylated silicone oils comprising at least one dimethicone fragment (claim 11) - e.g., polydimethylsiloxane aka dimethicone (Specification Page 20, Lines 28-29) - in an amount ranging from 20% to 50% (claim 12));
(d) less than 2% by weight of water (more specifically, wherein the composition is anhydrous (claim 23)); and
(e) at least one wax in an amount sufficient to enable the composition to be solid such that it can be molded into stick form during preparation (more specifically, a non-polar wax (claim 5) in an amount ranging from 0.5% to 20% by weight (claim 6));
wherein a ratio of (alkylcellulose by weight/(alkylcellulose by weight + first oil(s) by weight)) * 100 is from 10% to 60% with all weights being relative to the total weight of the composition.
As thus summarized, the elected invention reads on claims 1-3, 5-9, 11-12 and 23.
Rando et al teach (at Column 4, Example No. 5) an anhydrous cosmetic composition which “becomes solid after being poured into special molds and cooled at room temperature” (Column 4, Lines 38-39) comprising 3.5% of the alkyl ether ethyl cellulose and 85.9% of the following non-polar organic liquids: octyl dodecanol (48.9%) + octyldodecyl lactate (30.0%) + diisostearyl malate (4.0%) + triisostearin (3.0%), all of which are non-volatile polar hydrocarbon oils.
As such, Rando et al teach a solid composition comprising:
(a) 3.5% by weight ethylcellulose (i.e., wherein a content of alkylcellulose is between 2% and 16% by weight);
(b) 48.9% by weight of at least one non-volatile polar hydrocarbon first oil which is octyldodecanol (i.e., wherein “a content of non-volatile polar hydrocarbon first oil(s) is from 20% to 55%”) and further comprising the non-volatile polar hydrocarbon oils octyldodecyl lactate (30.0%), diisostearyl malate (4.0%), and triisostearin (3.0%);
(c) -
(d) less than 2% by weight of water (i.e., the composition is anhydrous); and \
(e) 1.4% triisostearin (which, as evidenced by SpecialChem, is a lipophilic compound having “[t]he chemical formula of C57H110O6”, which “appears as a waxy solid”, and which has a melting point between 57oC and 62oC - and, thus, entails a polar wax1).
Furthermore, Example No. 5 taught by Rando et al entails a composition having a ratio of (alkylcellulose by weight/(alkylcellulose by weight + first oil(s) by weight)) * 100 from 10% to 60% as follows:
[3.5 ethylcellulose/(3.5 ethylcellulose + 4.0 diisostearyl malate)] * 100 = 46.7%
As such, the anhydrous cosmetic composition Example No. 5 taught by Rando et al differs from the instantly claimed anhydrous cosmetic composition in that Example No. 5 does not comprise element (c) at least 20% (and, more specifically, 20% to 50%) of polydimethylsiloxane aka dimethicone.
Yet, as further taught by Rando et al, the non-polar organic liquids can include – in addition to and/or in place of the octyl dodecanol (Column 2, Lines 21-22), octyldodecyl lactate (Column 2, Lines 15-16), diisostearyl malate (Column 2, Line 16), and/or triisostearin aka glyceryl triisostearate (Column 2, Lines 26-27) included in Example No. 5 – “silicones… selected from among dimethicones, cyclopentasiloxane, polydiphenyldimethicone, polycetyldimethicone, acryldimethicone copolymer” (Column 2, Lines 32-35).
Accordingly, it would have been prima facie obvious to substitute one non-polar organic liquid (e.g., octyldodecyl lactate (30.0%)) in the anhydrous cosmetic composition of Example No. 5 with another useable non-polar organic liquid (e.g., the silicones described by Rando et al in the same amount). The simple substitution of one known non-polar organic liquid suitable for use in the disclosed anhydrous cosmetic compositions for another known non-polar organic liquid suitable for use the disclosed anhydrous cosmetic compositions is prima facie obvious.
In view of all of the foregoing, instant claims 1-3, 7-9, 11-12 and 23 are rejected as prima facie obvious.
Conclusion
Any new ground(s) of rejection presented in this Office action are necessitated by Applicant’s amendments to the claims. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611
1 As defined by the instant Specification, the term “’Wax’ is understood to mean, within the meaning of the present invention, a lipophilic compound which is solid at ambient temperature (25oC), which exhibits a reversible solid/liquid change in state and which has a melting point of greater than or equal to 30oC which can range up to 120oC” (Page 23, Lines 36-39), and the term “’Polar wax’ is understood to mean, within the meaning of the present invention, a wax for which the solubility parameter δa at 25oC is other than 0 (J/cm3)½” (Page 24, Lines 33-34) and which “is formed essentially of... carbon and hydrogen atoms, and comprising at least one highly electronegative heteroatom, such as oxygen” (Page 24, Lines 35-36).