DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-16 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 04/11/2025 has been entered.
Claims 1-3 and 7-12 were amended and claims 13-16 were added. No new material has been added.
Applicant’s amendments to the claims, abstract, and specification have overcome all objections and rejections under 35 U.S.C. 112, 102, and 103 and on the ground of nonstatutory double patenting previously raised in the Non-Final Office Action mailed 01/13/2025.
Claims 1-16 are rejected under 35 U.S.C. 103 to address the claim amendments.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claims 1-16 are considered to have an effective filing date of 02/19/2021.
Response to Arguments
Applicant’s arguments, see Remarks (pages 10-12), filed 04/11/2025, with respect to the rejections of claims 1-5 and 7-11 under 35 U.S.C. 102 and claims 6 and 12 under 35 U.S.C. 103 have been fully considered and are persuasive due to the amendment. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fraiche, as discussed below. Fraiche was previously cited by the Examiner in the Non-Final Office Action mailed 01/13/2025.
Applicant’s arguments, see Remarks (page 12), filed 04/11/2025, with respect to the provisional rejection of claims 1-5 and 7-11 on the ground of nonstatutory double patenting have been fully considered and are persuasive due to the amendment. Therefore, the provisional rejection has been withdrawn.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fraiche (FR 3031672 A1), as evidenced by American Elements.
Regarding claim 1, Fraiche teaches an oil-in-oil emulsion for lip makeup (i.e., cosmetic) comprising a first oily phase comprising a nonvolatile silicone oil (i.e., “b”; Fraiche, claim 6) in 2-40% by weight (Fraiche, claim 8) which lies within the claimed range; a third oily phase comprising a nonvolatile hydrocarbon oil (i.e., “a”; Fraiche, claim 10) in 5-60% by weight (Fraiche, claim 11) which lies within the claimed range; and a solid microparticle which is preferably a silica with an average particle size of 5-15 microns (Fraiche, page 81, line 3681) in 0.01-5% (Fraiche, claim 5). The average particle size of 5-15 microns overlaps the claimed powder particle size of 1-10 microns and the amount of 0.01-5% of the powder overlaps the claimed range of 3-13% by mass. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I). Fraiche further teaches the oily phases are immiscible (i.e., separate) at room temperature (Fraiche, abstract), suggesting the phases would separate when mixed at 25 °C.
Fraiche is considered to be analogous to the claimed invention, because both Fraiche and the instant invention are in the same field of oil-in-oil cosmetic compositions comprising nonvolatile hydrocarbon oils, silicone oils, and silica powder. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Fraiche under the meaning of 35 U.S.C. 103.
Regarding claim 2, Fraiche teaches all the elements of the current invention as applied to claim 1. As above, Fraiche teaches a first oily phase comprising a nonvolatile silicone oil (i.e., “b”; Fraiche, claim 6) in 2-40% by weight (Fraiche, claim 8) and a third oily phase comprising a nonvolatile hydrocarbon oil (i.e., “a”; Fraiche, claim 10) in 5-60% by weight (Fraiche, claim 11), which results in a possible ratio of (a)/[(a)+(b)] of 0.11-0.96, encompassing the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 3, Fraiche teaches all the elements of the current invention as applied to claim 1. Fraiche further teaches a volatile hydrocarbon can be used (Fraiche, page 49, line 2198).
Regarding claim 4, Fraiche teaches all the elements of the current invention as applied to claim 1. Fraiche further teaches the composition may comprise a coloring matter (i.e., material; Fraiche, page 83, line 3733).
Regarding claim 5, Fraiche teaches all the elements of the current invention as applied to claim 1. Fraiche teaches the composition can optionally comprise modified silicas such as pyrogenic silica with a nanometric particle size (i.e., silicic anhydride as evidenced by American Elements, “synonyms”; Fraiche, page 86, paragraph 0087).
Regarding claim 6, Fraiche teaches all the elements of the current invention as applied to claim 1. Fraiche further teaches the composition is stored in a transparent container (Fraiche, page 3, line 95).
Regarding claim 7, Fraiche teaches all the elements of the current invention as applied to claim 1. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 8, Fraiche teaches all the elements of the current invention as applied to claim 2. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 9, Fraiche teaches all the elements of the current invention as applied to claim 3. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 10, Fraiche teaches all the elements of the current invention as applied to claim 4. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 11, Fraiche teaches all the elements of the current invention as applied to claim 5. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 12, Fraiche teaches all the elements of the current invention as applied to claim 6. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 13, Fraiche teaches all the elements of the current invention as applied to claim 1. As above, Fraiche teaches a third oily phase comprising a nonvolatile hydrocarbon oil (i.e., “a”; Fraiche, claim 10) and further teaches the nonvolatile hydrocarbon oil(s) in the third phase can be an ester such as Hailucent ISDA (i.e., polyglyceryl-2 isostearate/dimer dilinoleic acid as defined by the instant specification, page 6, paragraph 0016; Fraiche, page 55, paragraph 0050). The use of the term “oil(s)” suggests a possible embodiment wherein Hailucent ISDA is the only nonvolatile hydrocarbon oil in the phase.
Regarding claim 14, Fraiche teaches all the elements of the current invention as applied to claim 13. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Regarding claim 15, Fraiche teaches all the elements of the current invention as applied to claim 1. Fraiche exemplifies a composition without a dextrin fatty acid ester (Fraiche, page 107, paragraph 0108).
Regarding claim 16, Fraiche teaches all the elements of the current invention as applied to claim 15. Fraiche teaches the emulsion composition is for lip makeup such as lipstick (i.e., formulated as a lip cosmetic; Fraiche, abstract).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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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/C.P.J./Examiner, Art Unit 1613
/BRIAN-YONG S KWON/Supervisory Patent Examiner, Art Unit 1613