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 .
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 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.
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/17/2026 was filed after the mailing date of the non-final rejection on 02/23/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
The amendment filed on 07/23/2026 is acknowledged. Claim 12 has been canceled and claims 1-6 have been withdrawn. Claims 7-11 and 13 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 07/23/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. The rejections are modified based on the amendments.
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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 7-11 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Satonaka et al. (US 2007/0104662 A1).
Satonaka et al. teach an oil-based cake foundation (example 9) comprising, by weight:
5.3% methicone treated talc and 15% composite powder Ex. 5 (the claimed powder in the instant claim 10);
8% methicone treated titanium dioxide, 28.2% methicone treated sericite, 0.5% methicone treated iron oxide red, 1.8% methicone treated iron oxide yellow, and 0.2% methicone treated iron oxide black (the claimed particulate pigments in the instant claim 7, the claimed solid particulates in the instant claims 8 and 9, and surface treated in the instant claim 11 and a total of 38.7% methicone treated particles in the instant claims 7-9);
1% candelilla wax and 1% carnauba wax (the instant claim 7);
1.5% ceresin (also a wax, moisturizer, the instant claims 7 and 9);
14% cyclopentasiloxane and balance of isononyl isononanate (17.5% isononyl isononanoate, total of 31.5% oil as main carrier in the instant claim 7 and very close to 35% and as same as 31.5%, approximately 35% → 31.5% given ±10% deviation, in the instant claim 8);
2% polyglyceryl-2 diisostearate (a dispersing/wetting agent);
1% dextrin palmitate (a film former).
The total weight percentage of the particulates in example 9 is calculated to be 59% by weight (5.3%+15%+38.7%=59%).
Satonaka et al. do not specify polyglyceryl-2 diisostearate in example 9 (the instant claim 7).
This deficiency is cured by Satonaka et al.’s teaching of fatty acid esters of polyglycerin (polyglyceryl-n) including polyglyceryl-4 caprate, polyglyceryl-2 isostearate, etc., (paragraph 38) and fatty acid and polyglycerol ester including polyglyceryl-3-diisostearates (paragraph 49), or alternatively, the rationale that chemical compounds having “very close” structural similarities and similar utilities.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 9 and paragraph 38 and 49 in Satonaka et al. to replace polyglyceryl-2 isostearate in example 9 with polyglyceryl-3 isostearate (the instant claim 7), i.e., 2% polyglyceryl-3 isostearate (the instant claims 8 and 9). Both polyglyceryl-2 isostearate and polyglyceryl-3 isostearate being suitable tatty acid esters of polyglycerin was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing polyglyceryl-2 isostearate in example 9 with polyglyceryl-3 isostearate flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose. Alternatively, it would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace the n=2 (glycerin repeating units) in the fatty acid esters of polyglyceryl-n in example 9 with n=3. Chemical compounds having “very close” structural similarities and similar utilities, without more a prima facie case may be made. According to MPEP 2144.09 II.:
Compounds which are … homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Satonaka et al. do not teach, in example 9, the same film former as claimed in the instant claim 7 (dextrin palmitate (C16) vs the claimed dextrin isostearate (C18)).
This deficiency is cured by the rationale that chemical compounds having “very close” structural similarities and similar utilities, without more a prima facie case may be made.
It would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace the palmitate (C16 fatty acid ester) in dextrin palmitate taught by Satonaka et al. with isostearate (C18 fatty acid ester). Please refer to MPEP 2144.09 II discussed above.
Although Satonaka et al. are silent about provides ultra-saturated color deposition when applied to a user in the instant claim 13, wherein the ultra-saturated color deposition provides at least 70% opacity; as a result of the composition having substantially the same components as claimed in the instant claim 7 (obvious to replace polyglyceryl-2 isostearate in example 9 with polyglyceryl-3 isostearate and to replace dextrin palmitate with dextrin isostearate), the composition would necessarily be reasonably expected to have substantially the claimed properties, whether expressly recognized by Satonaka et al. or not.
Satonaka et al. do not specify the weight percentage of solid particulate (59% by weight in example 9 vs the claimed approximately 35-50% in the instant claim 8).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
The claimed range of solid particulate is approximately 35-50% (31.5-55% given ±10% deviation) by weight and the range of solid particulate taught in the prior art is 59% by weight and therefor, very close to 55%. Furthermore, ≥35% is claimed in the instant claim 9, thus, the criticality of approximately 50% (55% given ±10% deviation) is not established. MPEP 2144.05.II.A:
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.
Satonaka et al. do not specify the weight percentage of wax (3.5% by weight in example 9: 1% candelilla wax + 1% carnauba wax +1.5% ceresin vs the claimed ≥5% in the instant claim 9).
This deficiency is cured by Satonaka et al.’s teaching of a stick type foundation in example 10 comprising 6% candelilla wax; or alternatively, the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 9 and example 10 in Satonaka et al. to increase the 3.5% by weight of wax in example 9 to 6%. 6% by weight of candelilla wax being incorporated in a foundation was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for increase the 3.5% by weight of wax in example 9 to 6% flows from both amounts having been used in the prior art, and from both amounts being recognized in the prior art as useful for the same purpose. Alternative, the claimed range of wax is ≥5% by weight and the range of wax taught in the prior art is 3.5% by weight and therefor, very close to 5%. MPEP 2144.05.II.A.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejection above (newly underlined).
Applicants argue that dextrin palmitate taught by Satonaka et al. is not natural and dextrin palmitate (C16) the claimed dextrin isostearate (C18) are not equivalents.
However, this argument is not deemed persuasive. First, dextrin palmitate is naturally derived while the claimed “natural film former” is not defined in the instant specification and thus does not exclude naturally derived film former.
Second, as stated in the rejection above and in the previous office action, it would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace the palmitate (C16 fatty acid ester) in dextrin palmitate taught by Satonaka et al. with isostearate (C18 fatty acid ester) according to MPEP 2144.09 II.
Applicant’s arguments based on the affidavit are addressed in the Response to applicants’ declaration below.
Response to applicant’s declaration:
The declaration filed 07/23/2026 is insufficient to overcome the rejection of pending claims as set forth in the last Office action because:
First, the declaration is not specified as under 37 CFR 1.132 and the statement of “I hereby acknowledge that all statements made herein of my own knowledge are true, and further that these statements were made with the knowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.” Thus, the declaration is not treated as Affidavits or Declarations Under 37 CFR 1.132. Please refer to MPEP 716 37 CFR 1.132:
The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
Second, applicants merely argues that dextrin isostearate providing a smoother, less tacky, more “elegant” after-feel, may exhibit wetting and color-intensifying propertied and nothing has been shown otherwise. From MPEP 716.01(c) II: The arguments of counsel cannot take the place of evidence in the record.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 7-11 and 13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 7, 8, and 20 of U.S. Patent No. 8,344,024 B2; claims 1, 5, 7, 9, and 10 of U.S. Patent No. 8,840,929 B2; claims 1, 2, 4, 5 and 7 of U.S. Patent No. 8,852,616 B2; and claims 1, 6, 8, and 19 of U.S. Patent No. 9,408,790 B2 in view of Satonaka et al. (US 2007/0104662 A1).
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The instant application claims 7-11, and 13 recite a cosmetic composition comprising: one or more solid particulates; at least one of a dispersing agent, a wetting agent, or a mixture thereof, at least one film former; and at least one main carrier.
The US 8,344,024 B2 patent claims 1-5, 7, 8, and 20 recite an anhydrous color cosmetic composition comprising at least one resveratrol derivative dispersed (dispersing agent) or solubilized in the oil phase; particulates; and at least one film forming polymer.
The US 8,840,929 B2 claims 1, 5, 7, 8, and 10 recite anhydrous cosmetic or dermatological composition comprising particles, oils, surfactants, film formers, pigments, powders, etc.
The US 8,852,616 B2 claims 1, 2, 4, 5 and 7 recite anhydrous cosmetic or dermatological composition comprising particles, oils, surfactants, film formers, pigments, powders, etc.
The US 9,408,790 B2 claims 1, 6, 8, and 19 recite anhydrous cosmetic or dermatological composition comprising particles, oils, surfactants, film formers, pigments, powders, etc.
US 8,344,024 B2 patent claims 1-5, 7, 8, and 20; the US 8,840,929 B2 claims 1, 57, 9, and 10; the US 8,852,616 B2 claims 1, 2, 4, 5 and 7; and the US 9,408,790 B2 claims 1, 6, 8, and 19 do not recite all of the limitations of claims 7-11 and 13 including components and their weight percentages.
These deficiencies are cured by the teachings of Satonaka et al. which are discussed above and applied in the same manner.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine recitations in US 8,344,024 B2 patent claims 1-5, 7, 8, and 20; the US 8,840,929 B2 claims 1, 57, 9, and 10; the US 8,852,616 B2 claims 1, 2, 4, 5 and 7; and the US 9,408,790 B2 claims 1, 6, 8, and 19 and the teachings in Satonaka et al. to specify the cosmetic compositions recited in US 8,344,024 B2 patent claims 1-5, 7, 8, and 20; the US 8,840,929 B2 claims 1, 57, 9, and 10; the US 8,852,616 B2 claims 1, 2, 4, 5 and 7; and the US 9,408,790 B2 claims 1, 6, 8, and 19 including all of the components and their weight percentages and to replace the palmitate (C16 fatty acid ester) in dextrin palmitate taught by Satonaka et al. with isostearate (C18 fatty acid ester). Cosmetic composition comprising all of the components and their weight percentages and dextrin palmitate and dextrin isostearate being homologs were well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying these flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
Although the US 8,344,024 B2 patent claims 1-5, 7, 8, and 20; the US 8,840,929 B2 claims 1, 57, 9, and 10; the US 8,852,616 B2 claims 1, 2, 4, 5 and 7; and the US 9,408,790 B2 claims 1, 6, 8, and 19 in view of Satonaka et al. are silent about provides ultra-saturated color deposition when applied to a user in the instant claim 13, wherein the ultra-saturated color deposition provides at least 70% opacity; as a result of the composition having the same components as claimed, the composition would necessarily have the claimed properties, whether expressly recognized by the US 8,344,024 B2 patent claims 1-5, 7, 8, and 20; the US 8,840,929 B2 claims 1, 57, 9, and 10; the US 8,852,616 B2 claims 1, 2, 4, 5 and 7; the US 9,408,790 B2 claims 1, 6, 8, and 19; and the US 10,092,494 B2 claims 1 and 7 or not. MPEP 2112.01.II:
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same compositions.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejections above based on the teachings of Satonaka et al. in the 103 rejection above.
Conclusion
No claims are 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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
