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 Claims
The amendment filed 03/31/2026 is acknowledged.
Claims 1-12 and 16 remain cancelled.
Claims 14, 19-20, 23 and 28 are amended.
Claims 13-15 and 17-28 are pending and being examined on the merits herein.
Priority
The instant application, filed on 06/17/2022, is a 371 of PCT/FR2020/052539, filed on 12/18/2020, which claims foreign priority to FR1914850, filed on 12/19/2019.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 11/26/2025, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 10/01/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 03/31/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 28 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 28 recites “extreme conditions” in line 2. The term “extreme” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no definition about what degrees of temperature and/or humidity levels of the atmospheric conditions are considered as “extreme conditions”.
Remained 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 (i.e., changing from AIA to pre-AIA ) 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, 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.
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 13-15 and 17-28 are rejected under 35 U.S.C. 103 as being unpatentable over Kergosien et al. US20110150805 (06/23/2011, IDS of 08/21/2023) and in view of Ferrari et al. (WO2013190112, 12/27/2013, in record of 01/07/2025), Farran et al. (US20190201314, 07/04/2019), and Yan et al. (JP2017538746, 12/28/2017, translation replied upon, in record of 10/01/2025).
Kergosien teaches compositions comprising aqueous dispersions of polyurethanes to be used in cosmetic, makeup, in addition to care applications for eyelashes or eyebrows [0105], and the compositions comprising an aqueous dispersion of polyurethane present greater than or equal to 5% of total weight in an emulsifying system comprising triethanolamine (Abstract). Kergosien indicates that the composition may comprise a fatty phase comprising at least one oil and/or at least one wax, and/or at least one lipophilic (or hydrophobic) film-forming polymer and/or a fatty phase rheological agent [0349]. Kergosien specifies that the oil can be hydrocarbon-based volatile oil [0355] (corresponding to instant claim 13a, 13b, 13c). Kergosien recites a polymeric organic lipophilic gelling agent can be included in the composition, such as polyamide, silicone powder, or crosslinked organopolysiloxane powder [0562-0563] (corresponding to absorbent fillers in instant claim 13d). Kergosien describes that additive such as dyestuff like pigments and pearlescent agents can be added to the composition [0600-0604] (corresponding to instant claim 13 e). Kergosien points out that in order to obtain an oil-in-water emulsion, a suitable emulsifying surfactant is chosen for the composition with an HLB balance, within the meaning of Griffin, of greater than or equal to 8 [0224], and crosslinked anionic copolymers of acrylamide can be in the form of a water-in-oil emulsion [0308]. Therefore, Kergosien teaches a make-up composition suitable for skin which would be obviously in physiologically acceptable medium, in a form of oil-in-water or water-in-oil form (corresponding to instant claim 13).
Kergosien teaches that hydrocarbon-based volatile oils are preferably chosen from isododecane, sodecane, isohexadecane, and mixtures thereof [0358] (corresponding to instant claim 26), with its amount ranging from 0.1% to 90% by weight present in the composition, preferably ranging from 1 % to 70% by weight and preferentially ranging from 5% to 70% by weight, or even 5% to 50% by weight, relative to the total weight of the composition [0356] (corresponding to instant claim 14 with overlapping amount ranges) and the volatile linear alkane may comprise 7 to 14 carbon atoms, preferably 8 to 14, or 9 to 14, or 10 to 14, or 11 to 14 carbon atoms [0380-0385] (overlapping with 9 to 13 carbon numbers in instant claim 26). Kergosien also indicates that the composition may comprise at least one non-volatile oil that may be selected from hydrocarbon-based, fluoro and/or silicone oils [0424-0425], ranging from 0.1 to 70% by weight, preferably ranging from 0.5% to 60% by weight and preferentially ranging from 1 % to 50% by weight, relative to the total weight of the composition [0428] (corresponding to instant claim 15 with overlapping amount ranges). Kergosien points out that the lipophilic gelling agents may be used in an amount ranging from 1 to 60% by weight, in particular from 2 to 50%, and more particularly from 5 to 40% by weight relative to the total weight of the composition [0599] (corresponding to instant claim 18 with overlapping amount ranges).
Kergosien presents the aqueous dispersion of polyurethane comprises the reaction products of the following ([0079]-[0090]) (corresponding to instant claim 19):
A) a prepolymer according to the formula:
PNG
media_image1.png
104
612
media_image1.png
Greyscale
wherein
R1 represents a hydrocarbon-based radical derived from a polyester polyol, and in particular from a polyester diol,
R2 represents a hydrocarbon-based radical derived from an aliphatic or cycloaliphatic polyisocyanate,
R3 represents a hydrocarbon-based radical derived from a diol, optionally of low molecular weight, optionally substituted by ionic groups,
n is equal to 0 to 5, and
m is >1;
B) at least one chain extender according to the formula:
H2N-R4-NH2
wherein
R4 represents an alkylene or alkylene oxide radical that is not substituted by ionic or potentially ionic groups; and
C) at least one chain extender according to the formula:
H2N-R5-NH2
wherein
R5 represents an alkylene radical substituted by ionic or potentially ionic groups.
Kergosien specifies that the polyester polyol, preferably polyester diol, radical R1 in the formula above, is preferably dihydroxyl radical [0122], and may advantageously be obtained by polycondensation of dicarboxylic acids, such as adipic acid, with polyols, especially diols [0132]. Kergosien discloses suitable polyisocyanates for providing the hydrocarbon-based radical R2 in the formula above including a divalent aliphatic hydrocarbon group comprising 4 to 18 carbon atoms, a divalent cycloaliphatic hydrocarbon group comprising 5 to 15 carbon atoms [0134-0135] (overlapping carbon numbers as in instant claims 19 and 23), radical R3 preferably is derived from neopentyl glycol [0137], the chain extender according to formula in B) above is preferably chosen from ethylenediamine, diethanolamine and mixtures thereof [0145], and the chain extender according to formula in C) above are specific compounds include diaminosulphonates [0147]. Kergosien addresses further that the radical R1 can be obtained by polycondensation of an adipic acid with diols, such as hexanediol, neopentyl glycol, and the mixtures thereof [0132], the radical R2 is derived from a suitable diisocyanate including tetramethylene diisocyanate, 1,6-hexamethylene diisocyanate, dodecamethylene diisocyanate, cyclohexane-1,3-diisocyanate and cyclohexane-1,4-diisocyanate, 1-isocyanato-3-isocyanatomethyl-3,5,5-trimethylcyclohexane (isophorone diisocyanate or IPDI), bis(4-isocyanatocyclohexyl)-methane, 1,3-bis(isocyanatomethyl)cyclohexane and 1,4-bis(isocyanatomethyl)cyclohexane and bis( 4-isocyanato-3-methylcyclohexyl)methane [0135], and the chain extender according to formula in C) above can be sodium salt of N-(2-aminoethyl)-2-aminoethanesulphonic acid (AAS) or the sodium salt of N-(2-aminoethyl)-2-aminopropionic acid [0147] (corresponding to instant claims 19 -21).
Kergosien specifies the polyurethane amount greater than or equal to 5% by weight relative to the total weight in the composition (Abstract) (corresponding to instant claim 22 with overlapping amount range). Kergosien specifies that the hydrophobic film-forming silicone resins can be made of trimethylsiloxysilicate [0473-0477] (corresponding to instant claims 23 and 24), and the hydrophobic film-forming polymer may represent from 0.1% to 15%, preferably from 0.5% to 10% by weight in the composition [0493] (corresponding to instant claim 25 with overlapping amount ranges).
Kergosien indicates that the makeup composition aims to solve problem of makeup composition generally not sufficiently resistant to water, for example when bathing or taking showers, to tears or to sweat or else to sebum [0005], and specifies the composition with polyurethane dispersions provides compatibility with water, water resistance and excellent ability to form films that have good hold while being easily removable [0006, 0011]. Kergosien points out this type of composition thus, in general, makes it possible to obtain a film that has good non-transfer properties, good properties of resistance over time, in particular to water and to rubbing, and that forms a comfortable deposit not only possible on the eyelashes or the nails, but also on the skin and the lips [0008]. Therefore, the description implies that the composition is applied to skin subject, to oily skin, to hot and/or humid atmospheric conditions, and/or sweating conditions (corresponding to instant claims 27-28).
Kergosien does not explicitly teach the composition is a water-in-oil (W/O) emulsion, and it does not teach polyurethane-35 is used in the aqueous dispersion as recited in instant claim 13. It does not teach absorbent filler species as recited in instant claims 13 and 17, and does not teach the oil uptake of absorbent fillers in the composition is between 55 ml/100 g and 250 ml/100 g as recited in claim 13, and the filler amount as 1 to 10 wt% in the composition as recited in instant claim 18.
Ferrari teaches a cosmetic skin makeup composition comprising, in a physiologically acceptable medium, at least: a) one continuous oil phase, b) one sebum-pump filler and pulverulent dyestuffs, c) one hydrophobic film-forming polymer, and d) one lipophilic gelling agent (Abstract), and the composition is a water-in-oil (W/O) emulsion, in particular a W/O foundation (Pg. 4, lines 27-28) (corresponding to make up composition in form of W/O emulsion in instant claim 13). Ferrari teaches that one of the forms of hydrophobic film-forming polymers in the composition can be in the form of aqueous dispersions of polymer particles, which means that the polymer forms an insoluble phase in water, the polymer remaining stable and/or compatible once incorporated into the water, the polymer particles possibly being stabilized at their surface with at least one stabilizer (Page 16, Lines 14-19). Ferrari further indicates the film-forming polymers for the composition can be a polymer chosen from silicone or hydrocarbon-based film-forming polymers, in particular homopolymers and copolymers of a compound bearing an ethylenic unit, acrylic polymers and copolymers, polyurethanes (present in the form of aqueous polyurethane dispersion in instant invention), polyesters, polyureas, cellulose-based polymers such as nitrocellulose, silicone polymers such as silicone resins, silicone polyamides, polymers with a non-silicone organic backbone grafted with monomers containing a polysiloxane, polyamide polymers and copolymers, polyisoprenes, and polyalkene-based (i.e., polyolefin-based) supramolecular polymers, and mixtures thereof (Page 16, Lines 20-27), indicating the composition of Ferrari shares common major ingredients as that in Kergosien.
Ferrari teaches that the filler in the composition has an oil absorption capacity of greater than or equal to 1 ml/g, especially greater than or equal to 1.5 ml/g, especially ranging from 1.5 ml/g to 20 ml/g, or even ranging from 1.5 ml/g to 15 ml/g, preferably greater than or equal to 2 ml/g, especially ranging from 2 ml/g to 20 ml/g, or even ranging from 2 ml/g to 15 ml/g (Page 4, Lines 21-25). Ferrari indicates that the filler(s) with an oil uptake of greater than or equal to 1 ml/g and in particular greater than or equal to 1.5 ml/g, otherwise known as sebum-pump fillers according to the invention, may be present in a composition according to the invention in a content ranging from 0.5% to 20% by weight, preferably from 1% to 10% by weight and better still from 1% to 6% by weight, relative to the total weight of the composition (Page 7, Lines 29-34) (corresponding to instant claim 18 with overlapping amount ranges). One in ordinary skill of art knows that unit amount 1ml/g in mathematical calculation can be shown equally in variable formats, e.g., 10 ml/10 g, 100 ml/100 g, 200 ml/200 g, …or even 1000 ml/1000 g, thus Ferrari teaches oil absorption capacity of the filler as discussed above can be within range of 100 ml/100 g to 2000 ml/100 g, which overlaps with the range 55 ml/100g to 250 ml/100g in instant claim 13. In particular, Ferrari indicates that the composition comprises a sebum-pump filler chosen from silicas, silica silylates (in particular hydrophobic silica aerogels), polyamide powders (in particular Nylon-6), acrylic polymer powders, especially polymethyl methacrylate, polymethyl methacrylate/ethylene glycol dimethacrylate, polyallyl methacrylate/ethylene glycol dimethacrylate or ethylene glycol dimethacrylate /lauryl methacrylate copolymer powders; perlites; magnesium carbonate, silicone filler and mixtures thereof (Page 5, Lines 13-19). The “acrylic polymer powders, especially polymethyl methacrylate”, present the same ingredient as poly(methyl methacrylate) powders as in instant claim 13. Ferrari further describes that advantageously the oil-absorbing powder may be a powder coated with hydrophobic treatment agent, such as, fatty acids, metal soaps, amino acids, N-acylamino acids or salts thereof, lecithin, isopropyl triisostearyl titanate, mineral waxes, and mixtures thereof (Page 5, Lines 31-36). Therefore, Ferrari implies that the oil-absorbing powder such as silica powder or silicone coated with amino acids resulting in silicone with amino acid powders (as one example out of many possible powders with coating agent’s combinations) can be advantageous, corresponding to instant claim 17.
Ferrari specifies that the composition is particularly suited to skin with increased secretion of sebum in the course of the day (combination skin to greasy skin, in particular greasy skin) and to skin that is subject to extreme temperature and/or humidity conditions, as is the case especially in Latin American and Asian countries, or to hot temperature conditions, as is the case in Southern European and North African countries (Page 1, Lines 5-9). Thus, Ferrari bears same intended use of Kergosien and instant composition. Both Kergosien and Ferrari do not specifically teach using polyurethane-35 in the composition.
Farran teaches skin perfecting cosmetic compositions comprising at least one water-dispersible primary film forming polyurethane polymer having a Young’s modulus of 0.1 to 50 MPa, and elongation at break >50% and a glass transition temperature of < 0 C (e.g. Abstract), such as, polyurethane-34 (with Young’s modulus of 0.1 to 10 MPa, [0086]) and polyurethane-35 (with Young’s modulus of greater than polyurethane-34 at 10 to 50 MPa, [0087]), polyurethane-32, polyurethane -48, and mixtures thereof (e.g., [0018]; [0074]; Claim 6), providing skin an instantaneous and dramatic improvement to the appearance of wrinkles, eye bags, pores, and skin imperfections such as scarring, dark spots (and uneven skin tone), dark circles, and roughness [0002]. Farran points out that common make-up products are often visible, offer minimal texture benefits, and have no long-term lasting effect on the skin, and after removal of the make-up, the skin looks the same as before the make-up was applied, and that common skin care products can have chronic, acute or both effects on the skin while hydration and optical effects are common acute benefits, but these benefits quickly wear-off over time [0005], the Farran specifies that the composition comprising polyurethane polymers, e.g., polyurethane-34 and polyurethane-35, are made to develop new categories of products to improve the appearance of skin without the drawbacks of existing products and procedures, and one such family of products can be generally classified as "adhesive, contractile film formers", and these film formers are chemical compositions that when applied to skin, leave a pliable, cohesive and continuous covering [0006].
Yan teaches a skin tightening composition to tighten the skin or hide skin imperfections by forming a film on the skin (e.g., Overview), comprising at least one thermoplastic elastomer, at least one adhesive polymer, and at least one filler (e.g., Claim 1), and the thermoplastic elastomers can be chosen from agents including polyurethanes (e.g., [0031], so as fillers, that can be chosen from agents including polyurethane (e.g., [0074]). Yan teaches that human skin has a Young’s Modulus in the range of 10kPa-100kPa, when the composition forms a film that is stiffer than human skin with Young’s Modulus greater than 100 kPa, the membrane tightens the skin [0111], while also burring skin imperfections [0112]. Yan indicates that the formulation needs to be a gel to make good film properties, and if the formulation is too fluid, the film is too thin and the performance is not good. Even though Example 1C-1 shows good high consistency G value, unlike comparative Examples 1C-2 and 1C-3 with low G values resulting thin films, the low Young’s Modulus value of Example 1C-1 at 7.4 MPa, resulting in less favorable film performance than Example 1. Yan indicates that Examples 1 has the best Young’s Modulus value at 32.7 MPa and best consistency, producing a film with the best skin tightening properties, and demonstrates the excellent performance of the association of thermoplastic elastomer, adhesive polymer, and filler (Table 1, [0146]-[0148]).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective
filing date to incorporate proper fillers taught by Ferrari, choose polyurethane-35 based on teachings from Farran and Yan about influence of Young’s Modulus in cosmetic formulations, and combine with agents suitable for the composition taught by Kergosien to arrive at the claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to incorporate the known “sebum-pump filler” into the formulation because of the expectation of success for its desirable capacity for absorbing and/or absorbing an oil or a liquid fatty substance, for instance sebum from the skin. Since prior art uses silicon and amino acid powders or polymethyl methacrylate powders in the cosmetic composition. The claimed properties using these compounds as absorption fillers would naturally flow from the combination which is rendered obvious by combined prior art, because these properties would be result effective of making/forming the claimed formulation. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
As Kergosien points out a person skilled in the art will be sure to choose the optional additional additives and/or amount thereof so that the advantageous properties of the composition according to the invention are not, or are not substantially, impaired by the intended addition [0622]. Kergosien exemplifies polyurethane dispersed in water as BAYCUSAN C 1001 (e.g., [0684]; [0695]; [0714]; [0728]), which is known as polyurethane-34, and does not exemplify polyurethane-35 in specific embodiments. MPEP 2123.I states, “[T]he 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), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). For this instance, because Kergosien specifies that the makeup composition with polyurethane dispersions provides compatibility with water, water resistance and excellent ability to form films that have good hold while being easily removable [0006, 0011] and this type of composition thus, in general, makes it possible to obtain a film that has good non-transfer properties, good properties of resistance over time, in particular to water and to rubbing, and that forms a comfortable deposit not only possible on the eyelashes or the nails, but also on the skin and the lips [0008], artisans in the field would have motivation to experiment different polyurethane species upon Kergosien’s teaching, as Kergosien suggests that a person skilled in the art will be sure to choose the optional additional additives and/or amount [0622]. Furthermore, Farran teaches that the composition comprising polyurethane polymers can develop new categories of products to improve the appearance of skin without the drawbacks of existing products and procedures, leaving a pliable, cohesive and continuous covering when applied to skin [0006], and both polyurethane-34 and polyurethane-35 are proper with similar general features for long-lasting skin cosmetic care compositions, while Yan demonstrates that relatively higher Young’s Modulus, such as 32.7 MPa (when compared to e.g., 7.4 MPa), provides the best skin tightening properties with the best consistency and demonstrates excellent performance of the association of thermoplastic elastomer, e.g., polyurethane. Since Farran teaches that polyurethane-35 constitutes higher Young’s Modulus (10-50 MPa) than polyurethane-34 (Lower than 10 MPa), a person with ordinary skills in the art would have motivation and reasonable expectation of success to select polyurethane-35 instead of polyurethane-34 to take advantage of better characteristics of higher Young’s Modulus on skin cosmetic effects. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Although weight ranges differ from prior art, it would have been prima facie obvious for one of ordinary skill in the art to optimize solvents, amounts, and concentrations through nothing more than “routine experimentation,” with abundant solvent or weight combinations available taught in prior art, to have a reasonable expectation of success resulting from the optimization. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant’s arguments filed on 03/31/2026 have been fully considered but are not persuasive.
35 U.S.C. 112 (b) Rejections
Applicant’s amended claims should have overcome the rejection.
Previous 35 U.S.C. 112(b) rejections have been withdrawn in light of claim amendments filed on 03/31/2026. However, new 112(b) rejection of amended term “extreme conditions” in claim 28 has
Art Rejections
Applicant asserts that the skilled in the art could not have reasonably predict the instant composition using polyurethane-35 instead of polyurethane-34 or a mixture of polyurethane-35 and polyurethane -34 can obtain the good non-transfer properties; and the invention as claimed is not obvious over the cited references, as a result, the art rejections should be withdrawn.
In response, it is noted that the features upon which applicant relies (i.e., good non-transfer properties) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Combined teachings of Kergosien, Ferrari, Farran, and Yan provide good motivation and reasoning for the skills in the art to choose polyurethane-35 instead of polyurethane-34. The most relevant paragraph is copied below for reference.
As Kergosien points out a person skilled in the art will be sure to choose the optional additional additives and/or amount thereof so that the advantageous properties of the composition according to the invention are not, or are not substantially, impaired by the intended addition [0622]. Kergosien exemplifies polyurethane dispersed in water as BAYCUSAN C 1001 (e.g., [0684]; [0695]; [0714]; [0728]), which is known as polyurethane-34, and does not exemplify polyurethane-35 in specific embodiments. MPEP 2123.I states, “[T]he 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), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). For this instance, because Kergosien specifies that the makeup composition with polyurethane dispersions provides compatibility with water, water resistance and excellent ability to form films that have good hold while being easily removable [0006, 0011] and this type of composition thus, in general, makes it possible to obtain a film that has good non-transfer properties, good properties of resistance over time, in particular to water and to rubbing, and that forms a comfortable deposit not only possible on the eyelashes or the nails, but also on the skin and the lips [0008], artisans in the field would have motivation to experiment different polyurethane species upon Kergosien’s teaching, as Kergosien suggests that a person skilled in the art will be sure to choose the optional additional additives and/or amount [0622]. Furthermore, Farran teaches that the composition comprising polyurethane polymers can develop new categories of products to improve the appearance of skin without the drawbacks of existing products and procedures, leaving a pliable, cohesive and continuous covering when applied to skin [0006], and both polyurethane-34 and polyurethane-35 are proper with similar general features for long-lasting skin cosmetic care compositions, while Yan demonstrates that relatively higher Young’s Modulus, such as 32.7 MPa (when compared to e.g., 7.4 MPa), provides the best skin tightening properties with the best consistency and demonstrates excellent performance of the association of thermoplastic elastomer, e.g., polyurethane. Since Farran teaches that polyurethane-35 constitutes higher Young’s Modulus (10-50 MPa) than polyurethane-34 (Lower than 10 MPa), a person with ordinary skills in the art would have motivation and reasonable expectation of success to select polyurethane-35 instead of polyurethane-34 to take advantage of better characteristics of higher Young’s Modulus on skin cosmetic effects. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
The arguments are not persuasive, and art rejections remain. Please refer to the office action presented above as a complete response to the arguments.
Declarations Under 37 CFR 1.132
Valerie Alard, provided a declaration under 1.132, filed 03/31/2026.
The declaration meets the formal requirements. A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following criteria:
1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)),
2) whether the Declaration presents a comparison to the closest art,
3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)),
4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and
5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
Examiner has fully considered the declaration and acknowledges that the declaration presents a single variable comparison of polyurethane species, polyurethane-34 and polyurethane-35, e.g., Comparative 1 with 10% PU-34 (4% active matter), Comparative 2, 5% PU-35 + 5% PU-34 with each at 2% active matter, compared to 10% PU-35 (4% active matter) as current invention related to the closest art presented in office action, satisfying the criteria 1) and 2) as shown above.
The tested concentration points, e.g., polyurethane-34 and polyurethane-35 at 10% each, or with 5% mixture of both, are not commensurate with the instantly claimed ranges. That is, instant claim 1 does not indicate polyurethane-35 concentration, and therefore, any amount is considered suitable in the composition, while the Declaration only tests one data point, and that is unable to cover the claimed scope. In instant claim 22 (directly or indirectly depending on claims 19 and 1) recites polyurethane amount range from 0.2 to 20 wt% of dry matter relative to the total weight of the composition. The data point at 10% single PU-34 or -35, or 5%+5% mixed PU-34 and PU-35 is not commensurate with the claimed broad range 0.2 to 20 wt%. Moreover, it is unclear how active matter percentage in Declaration test would be translated into the dry matter in instant claim 22. Thus, the Declaration test does not satisfy the criteria 3) as indicated above.
Affiant concludes that testing results show significant improvement of in vitro and in vivo non-transfer seen in the invention with PU-35 alone at 4% active matter compared to comparative data. However, in the figure, the images supposed to show transfer result are hard to tell the significant difference, especially figure legend does not explain how the conclusion of transfer significance is drawn based the figure. The results indicating “very slight transfer”, “medium transfer”, and “medium transfer” regarding invention, comparative 1 and comparative 2, respectively, are qualitative measures, which convey difference in degree, not difference in kind. Further, there is no statistical analysis or experimental replicates and therefore the conclusion drawn from such experiments as significant is premature and not convincing. The testing results do not satisfy the criteria 4).
Further, because prior art presented in office action teaches the current invention, with strong reasoning to choose polyurethane-35 over polyurethane-34, the good non-transfer property of using polyurethane-35 alone in the composition, or any other property of such a composition, would present in prior art composition, or would be capable of being achieved. Accordingly, prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness.
Therefore, the declaration under 37 CFR 1.132 is insufficient to overcome the art rejections as set forth in this Office action. Please refer to the office action presented above as a full response to the Declaration.
Conclusion
No claim is allowed.
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.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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