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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 31, 2026 has been entered.
Status of Claims
Claims 1-2, 4-9 and 15-32 are pending in this application. Claims 3 and 10-14 are canceled. Claims 2 and 22 are amended. Claims 31-32 are newly added.
Claims 23-25 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-2, 4-9, 15-22 and 26-32 are examined.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Claim Rejections - 35 USC §103
In light of the amendments to the claims the rejection of claims 2 and 22 under 35 U.S.C. 103 as being unpatentable over Farren et al. US 2021/0196586 (7/1/2021) in view of Faig et al. FR 3113835 (3/11/2022) in view of RD 540002 (4/10/2009) as evidenced by the specification and Silica-Beads-LEAF-MiyoshiEurope.pdf is withdrawn.
In light of the amendments to the claims the rejection of claims 6-9 under 35 U.S.C. 103 as being unpatentable over Faig et al. FR 3113835 (3/11/2022) in view of RD 540002 (4/10/2009) as evidenced by the specification and Silica-Beads-LEAF-MiyoshiEurope.pdf as applied to claims 1-5, 15-21 and 26-30 above and further in view of Jones et al US 2011/0223218 (9/15/2011) [Jones] is withdrawn.
In light of the amendments to the claims the rejection of claim 22 under 35 U.S.C. 103 as being unpatentable over Faig et al. FR 3113835 (3/11/2022) in view of RD 540002 (4/10/2009) as evidenced by the specification and Silica-Beads-LEAF-MiyoshiEurope.pdf is withdrawn.
New Rejections/Rejections Maintained
Claim Rejections - 35 USC §112(b)
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 2 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 2 is rejected under 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 applicant regards as the invention.
Claim 2 is rejected for the recitation of “and wherein the plant oil and/or the fermented plant oil, if present, is made from Simmonsiaceae, Asteraceae, Arecacae, Lauracaea, Oleaceae, Saptoaceae, and mixtures thereof.” This phrasing is confusing and it is contradicted by the language of the Markush group which recites “the at least one natural oil” and whose only members are plant oil, fermented plant oil and mixtures thereof. This phrase is vague and confusing, and it is not clear whether the plant oil or fermented plant oil are required to be present.
This phrase is not defined nor explained in the specification and cannot be determined by reference to any other claims. As a result, one of ordinary skill in the art would not be reasonably apprised of how to determine what this phrase means.
It is suggested that the phrase “if present” be deleted from line 3 of claim 2.
For purposes of this office action claim 2 will be interpreted to require at least one of the recited plant families to be present.
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 of this title, 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 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 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.
The rejection of claims 1, 4-5, 15-21 and 26-30 and newly applied to claim 32 under 35 U.S.C. 103 as being unpatentable over Farren et al. US 2021/0196586 (7/1/2021) in view of Faig et al. FR 3113835 (3/11/2022) in view of RD 540002 (4/10/2009) as evidenced by the specification and Silica-Beads-LEAF-MiyoshiEurope.pdf is maintained.
Farren et al. (Farren) teaches a cosmetic composition that tightens skin that can typically be in the form of a water-in-oil emulsion. (See Abstract, [0018] and [0030]). Farren expressly teaches that its compositions can be free or substantially free of silicones. (See [0041]). A cosmetic composition that is a water-in-oil composition is called for in instant claim 1. A cosmetic composition that is a water-in-oil composition is called for in instant claim 1.
The composition can contain soft-focus powders which provide a blurring effect. Examples of these include titanated mica (which is also known as titanium dioxide coated mica) and composite talc/titanium dioxide/alumina/silica powders. (See [180-181]). Farren teaches that soft-focus powders have high diffuse reflectance, low specular reflectance. (See [0180]). Farren teaches that soft-focus powders are typically present in an amount of about 0.1 to about 20 wt% can be present. (See [0182]). The soft-focus powders can be present in an amount of from about 0.1% to about 20 wt% by weight which overlaps with the from 0% to about 10% called for in instant claim 18. 0.1% to about 20 wt% overlaps with the from about 0.01 to about 8% called for in instant claim 30.
The water phase can comprise from about 5 to about 60 wt% of water. (See [0038]). The oil phase can be present in an amount of 20% to 80% . (See [0149]). The emulsion can comprise one or more surfactants. (See [0152]). The surfactant can be ethoxylated oils from plant origin. (See [0153]).
Farren teaches composite talc/titanium dioxide/alumina/silica powders but does not explicitly teach silica microbeads enclosing titanium dioxide particles or plant oils. These deficiencies are made up for with the teachings of Faig et al and RD 540002.
Faig et al. (Faig) teaches a cosmetic composition that improves the health and visual appearance of the skin as well as providing a good tactile sensation that comprises about 0.1 to about 10% nonionic emulsifier including polyglyceryl-3 methylglucose distearate, about 0.1 to about 10% sodium polyacrylate, about 0.1 to about 15% matting agents and about 0.1 to about 20% of a fat phase with one or more fatty compounds and water. (See Abstract and page 5).
Faig expressly teaches that its compositions can be free or substantially free of silicones. (See first paragraph on page 45). Faig also teaches a preference for plant based or vegetable based oils and a preference for an exclusion or minimization of synthetic oils. (See Oils Section). The fat phase can comprise plant oils in an amount of from about 0.1 to about 10%. (See first paragraph on page 17). Plant oil is a natural oil as called for in instant claim 1. 0.1 to about 10% overlaps with the about 0.5% to about 20% called for in instant claim 4. 0.1 to about 10% overlaps with the about 1% to about 15% called for in instant claim 32.
The composition comprises oil-in-water and water-in-oil emulsions. (See page 7 and second paragraph of page 10). Water-in-oil emulsifiers are taught which have an HLB of less than 5 which overlaps with the from about 2 to about 8 range called for in instant claim 19. (See second paragraph of page 10 or paragraph 5 of Nonionic Emulsifiers Section on page 10). The emulsifier can be present in an amount of from 0.1 to about 10%. Plant oils are natural oils that would be in the external phase of the water-in-oil emulsion because they would be in the oil phase as called for in instant claim 20.
The mattifying agents provide an artistic blur effect. Suitable mattifying agents include Sunspheres. (See 1st paragraph of page 13 in Mattifying Section), which are necessarily hollow sphere particles wherein a styrene/acrylates copolymer is the outer shell of the hollow sphere particle, as evidenced by the specification (see page 13, paragraph 39). Sunspheres are necessarily a polymeric material that can be a blurring agent as called for in instant claim 15, wherein the polymeric material comprises styrene/acrylates copolymer as called for in instant claim 16. The styrene/acrylates copolymer is in the form of hollow sphere particles as called for in instant claim 17. The mattifying agents can be present in an amount of from about 0.1% to about 15% by weight.
Other mattifying agents include silica/TiO2 which is silica and titanium dioxide composites. These are silica based mattifying agents as called for in instant claim 26. Additional suitable mattifying agents that Faig teaches are porous silica microspheres sold under the name Silica Beads CB700. These are porous spheric silica microspheres as called for in instant claim 27. The average particle size of these particles is 5-10 micrometers, as evidenced by Silica-Beads-LEAF-MiyoshiEurope. 5-10 micrometers is less than 50 micrometers as called for in instant claim 5.
RD 540002 (RD) is directed to an anhydrous or powdery cosmetic composition that comprises at least a copolyamide powder, an inorganic filler and a composite filler. (Abstract and [001-003]). SH219 is a preferred composite filler that is formed by porous silica microbeads enclosing titanium dioxide particles. (See [0003-4]. A porous silica powder encapsulating titanium dioxide is called for in instant claim 28. RD teaches that the composition has a soft-focus effect to blur skin irregularities or imperfections. (See [0003]). RD 540002 teaches that the silica microbeads and titanium dioxide particles are results-effective variables in that they have a soft-focus effect. Therefore, it would be no more than routine experimentation to experiment to arrive at a ratio called for in instant claim 29.
It would have been prima facie obvious to one of ordinary skill before the effective filing date of the claimed invention making the Farren water-in-oil emulsion cosmetic that is free of silicone with 0.1 to 20 wt% soft-focus powders to produce a cosmetic composition comprising a water-in-oil emulsion comprising 0.1% to 20 wt% Sunsphere powder with 0.1 to 20 wt% Silica Beads CB700 in about 20 to about 70 wt% volatile hydrocarbon of which 0.01% to 10 wt% is plant oil in order to have mattifying agents that provide transparency and a veiled effect while providing skin with a desirable non shiny and non-greasy appearance with 0.1 to 10% of a water-in-oil emulsifier with an HLB of less than 5 in the water-in-oil emulsion as taught by Faig and to add the SH219 composite powder taught by RD in order to utilize a suitable powder for a soft-focus composition that can blur skin imperfections as taught by RD. The 0.01% to 10 wt% plant oil would provide a natural oil that is not synthetic and provides for a certain fraction of the product that is natural product and plant derived.
With respect to the diffuse reflectance values in claim 1 and the specular reflectance in claim 1, the references are silent on the values of diffuse reflectance and specular reflectance. However, Farren in view of Faig and RD teach a water-in-oil silicone-free emulsion cosmetic composition with the same components as those claimed in the same amounts (at the overlaps of the ranges) as those claimed. Namely, the combined teachings of Farren in view of Faig and RD teach a water-in-oil silicone-free emulsion containing 0.1 to 5% Sunsphere powder, 0.01% to 10% plant oil, and 0.1 to 10% water-in-oil emulsifier and 0.1 to 20% SH219 composite powder. A composition comprising these components would necessarily have a diffuse reflectance value of at least 2.5 as evidenced by Table 1 of the instant specification in Example 2. A composition comprising these components would necessarily have a specular reflectance value of at least 3.4 as evidenced by Table 2 of the instant specification in Example 2 at paragraph [0094].
The prior art composition with the same components as those claimed in the same amounts (at the overlaps of the ranges) would necessarily have the same properties as those of the claimed composition. See, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements.
The rejection of claims 6-9 under 35 U.S.C. 103 as being unpatentable over Farren et al. US 2021/0196586 (7/1/2021) in view of Faig et al. FR 3113835 (3/11/2022) and RD 540002 (4/10/2009) as evidenced by the specification and 1, 4-5, 15-21, 26-30 and 32 above and further in view of Jones et al US 2011/0223218 (9/15/2011) [Jones] is maintained.
The teachings of Farren in view of Faig and RD are described above. Farren in view of Faig and RD teach titanated mica but do not expressly teach titanium dioxide coated onto a transparent synthetic mica substrate. This deficiency is made up for with the teachings of Jones.
Jones teaches a combination pigment having a metal oxide-coated mica substrate. (See Abstract). Example 16 of Jones is a cosmetic formulation for a cream foundation that comprises 3% Snowfall White D130D. (See Example 16). Jones teaches that Snowfall White is a suitable pigment for a cosmetic foundation. Snowfall White is a titanium dioxide coated transparent synthetic mica as called for in instant claims 7-8, as evidenced by the instant specification on page 11, [0033]. Snowfall White is also an effect pigment as called for in instant claim 6. 3% falls within the from 0% to 10% called for in instant claim 9.
Jones teaches that its combination pigments can be used in any application where effect pigments have been used before. (See [0026]). Jones teaches that Snowfall White can be used in cosmetics and is preferably useful to color cosmetic formulations and can provide the look and feel of effect pigments without the irritation that is possible with some effect pigments. (See [0026]).
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 produce a Farren in view of Faig and RD cosmetic composition comprising a water-in-oil silicone free emulsion comprising 0.1% to 20% Sunsphere powder, 0.1 to 20% Silica Beads CB700, about 20 to about 70 wt% volatile hydrocarbon of which 0.01% to 10 wt% is plant oil, and 0.1 to 10% water-in-oil emulsifier with an HLB of less than 5 to replace SH219 composite powder with Snowfall White D130D in light of Jones’ teaching that Snowfall White can provide the look and feel of effect pigments without the irritation that is possible with some effect pigments.
There would be a reasonable expectation of success because Farren teaches that titanated mica (titanium dioxide covered mica) is a suitable pigment for use in its water-in-oil emulsion cosmetic.
Claims 2, 22 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Faig et al. FR 3113835 (3/11/2022) in view of RD 540002 (4/10/2009) and Petkoska et al. WO 2016176485 (11/3/2016) as evidenced by the specification and Silica-Beads-LEAF-MiyoshiEurope.pdf.
Faig et al. (Faig) teaches a cosmetic composition that improves the health and visual appearance of the skin as well as providing a good tactile sensation that comprises about 0.1 to about 10% nonionic emulsifier including polyglyceryl-3 methylglucose distearate, about 0.1 to about 10% sodium polyacrylate, about 0.1 to about 15% matting agents and about 0.1 to about 20% of a fat phase with one or more fatty compounds and water. (See Abstract and page 5).
Faig expressly teaches that its compositions can be free or substantially free of silicones. (See first paragraph on page 45). Faig expressly teaches that its compositions can be free or substantially free of silicones. (See first paragraph on page 45). Faig also teaches a preference for plant based or vegetable based oils and a preference for an exclusion or minimization of synthetic oils. (See Oils Section). The fat phase can comprise plant oils in an amount of from about 0.1 to about 10%. (See first paragraph on page 17). Plant oil is a natural oil as called for in instant claim 22. 0.1 to 10% plant oil overlaps with the about 0.5% to about 20% called for in instant claim 22.
The composition comprises oil-in-water and water-in-oil emulsions. (See page 7 and second paragraph of page 10). Water-in-oil emulsifiers are taught which have an HLB of less than 5. (See second paragraph of page 10 or paragraph 5 of Nonionic Emulsifiers Section on page 10). The emulsifier can be present in an amount of from 0.1 to about 10% which overlaps with the 0.01 to about 20% called for in instant claim 22. (See final paragraph of page 9).
The mattifying agents provide an artistic blur effect. Suitable mattifying agents include Sunspheres. (See 1st paragraph of page 13 in Mattifying Section), which are necessarily hollow sphere particles wherein a styrene/acrylates copolymer is the outer shell of the hollow sphere particle, as evidenced by the specification (see page 13, paragraph 39). The mattifying agents can be present in an amount of from about 0.1% to about 15% by weight which overlaps with the from 0.01% to about 20% called for in instant claim 22. Other mattifying agents include silica/TiO2 which is silica and titanium dioxide composites. Additional suitable mattifying agents that Faig teaches are porous silica microspheres sold under the name Silica Beads CB700.
Faig teaches silica and titanium dioxide composites but does not teach silica particles encapsulating titanium dioxide. Faig teaches plant oils but does not expressly teach a mixture of jojoba seed oil, coconut oil, avocado oil, argan oil, olive oil and sunflower oil. These deficiencies are made up for with the teachings of RD 540002 and Petkoska et al.
RD 540002 (RD) is directed to an anhydrous or powdery cosmetic composition that comprises at least a copolyamide powder, an inorganic filler and a composite filler. (Abstract and [001-003]). SH219 is a preferred composite filler that is formed by porous silica microbeads enclosing titanium dioxide particles. (See [0003-4]. RD teaches that the composition has a soft-focus effect to blur skin irregularities or imperfections. (See [0003]). RD 540002 teaches that the silica microbeads and titanium dioxide particles are results-effective variables in that they have a soft-focus effect.
Petkoska et al (Petkoska) teaches an antioxidant composition and methods of using them for protecting skin, hair and nails against high energy blue-violet light. The composition can be in the form of a water-in-oil emulsion. (See [0338]). The composition comprises at least one natural oil or extract present in an effective amount of UV protection to an area of skin to which the composition has been topically applied. (See Abstract and claim 1).
The plant oils include jojoba seed oil, coconut oil, avocado oil, argan nut oil, olive oil and sunflower oil and mixtures of these oils may be used too. (See [0316], [0323], [0328], [0327], [0129] and claims 2, 6, 8 and 47). Petkoska teaches mixtures in which at least four different kinds of plant oils are used in its claim 2. A mixture of jojoba seed oil, coconut oil, avocado oil, argan nut oil, olive oil and sunflower oil is called for in instant claims 22 and 31.
Olive oil is a plant oil that is from the olive family Oleaceae as evidenced by the specification at [0023]. A plant oil from the family Oleaceae is called for in instant claim 2.
It would have been prima facie obvious to one of ordinary skill before the effective filing date of the claimed invention to produce a cosmetic composition comprising a water-in-oil emulsion comprising 0.1% to 15% Sunsphere powder with 0.1 to 15% Silica Beads CB700 in 0.1 to 10% plant oil in order to have mattifying agents that provide transparency and a veiled effect while providing skin with a desirable non shiny and non-greasy appearance with 0.1 to 10% of a water-in-oil emulsifier with an HLB of less than 5 in an emulsion as taught by Faig and to add the SH219 composite powder taught by RD in order to utilize a suitable powder for a soft-focus composition that can blur skin imperfections as taught by RD.
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 produce a Farren in view of Faig and RD cosmetic composition comprising a water-in-oil silicone free emulsion comprising 0.1% to 20% Sunsphere powder, 0.1 to 20% Silica Beads CB700 and 0.1 to 10% water-in-oil emulsifier with an HLB of less than 5 to use 0.1 to 10% of a mixture of jojoba seed oil, coconut oil, avocado oil, argan nut oil, olive oil and sunflower oil as the plant oil as taught by Petkoska because it would have been obvious at the time of the invention to combine several known plant oils based on a common function. (See MPEP 2144.06). “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
There would be a reasonable expectation of success because Faig teaches that plant oil mixtures are a desirable component of its water-in-oil emulsion cosmetic.
With respect to the diffuse reflectance values in claim 22 and the specular reflectance in claim 22, the references are silent on the values of diffuse reflectance and specular reflectance. However, Faig in view of RD and Petkoska teach a composition with the same components as those claimed in the same amounts (at the overlaps of the ranges) as those claimed. Namely, the combined teachings of Faig in view of RD and Petkoska teach an emulsion containing 0.1 to 5% Sunsphere powder, 0.01% to 10% mixture of jojoba seed oil, coconut oil, avocado oil, argan nut oil, olive oil and sunflower oil, and 0.1 to 10% water-in-oil emulsifier and 0.1 to 10% SH219 composite powder. A composition comprising these components would necessarily have a diffuse reflectance value of at least 2.5 as evidenced by Table 1 of the instant specification in Example 2. A composition comprising these components would necessarily have a specular reflectance value of at least 3.4 as evidenced by Table 2 of the instant specification in Example 2 at paragraph [0094].
A composition having the same components as those claimed will necessarily have the same properties as those claimed, See MPEP 2112.01[R-3]: “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.” In re Spada, 911 F2d 705, 709, 15 USQPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
Applicants comments of August 31, 2026 have been considered carefully and have been found to be partly persuasive and partly unpersuasive.
Applicants note the amendments to the claims and where support for the amendments can be found.
Applicants argue that the cited art does not establish the claimed reflectance values. Applicants take issue with the proposed combination of prior art having the same ingredients in the same amounts as the claimed composition. Applicants assert that the existence of overlapping ranges in the prior art does not establish that any particular composition within those ranges necessarily possesses both claimed reflectance values. Applicants assert hat a scientific rationale is missing for combining the water-in-oil embodiment and soft-focus powder from Farra, plant oil and emulsifier teachings from Faig and a composite powder from RD in order to arrive at a composition with the specific reflectance values.
Applicants acknowledge that Farran describes soft-focus powders generally as having high diffuse reflectance and low specular reflectance but assert that Farra does not teach that an overall cosmetic composition has those properties. Applicants examples also do not establish inherency for the broad set of compositions as assembled based on the cited art in the Office Action but instead the examples only report results for Applicants selected tested systems. Applicants also assert that routine optimization does not supply the missing limitations of properties because they are not results to be achieved.
Applicants argue that Farran is directed to a film-forming system and Farran does not suggest replacing its volatile-hydrocarbon vehicle with natural oils and also does not suggest that such as replacement would be able to obtain the claimed diffuse and specular reflectance values.
Applicants argue that the Office Action does more than substitute one known cosmetic ingredient for another. It changes the oil system used with Farran’s hydrophobic film former, while offering no teaching or suggestion that the modified system would retain Farran’s intended film characteristics or achieve the claimed optical properties.
Faig does not supply the missing reason to modify Farran. Faig lists numerous plant oils that may be used in its composition but this does not explain why a skilled artisan would use those oils to replace or modify Farran’s volatile-hydrocarbon film-forming vehicle.
Applicants argue that RD teaches a composite powder comprising porous silica microbeads enclosing titanium dioxide particles. RD does not disclose the claimed water-in-oil composition with natural oils, the claimed reflectance values or a reason to combine its powder with a modified system of Farran and Faig.
Applicants assert that the rejection uses the claimed invention as a roadmap. The selections of Farran’s skin tightening film-forming compositions, Faig’s sensory oil-in-water emulsion broad plant oil disclosure and RD’s powder technology do not provide a reasoned path for making these selections.
Applicants’ arguments have been carefully considered and are not found to be persuasive.
Applicants argument that there is no motivation or rationale to combine the teachings of the prior art is not found to be persuasive because Applicants’ arguments do not acknowledge the motivation as laid out in the rejection. As described in the rejection above, it would have been prima facie obvious to one of ordinary skill before the effective filing date of the claimed invention making the Farren water-in-oil emulsion cosmetic that is free of silicone with 0.1 to 20 wt% soft-focus powders to produce a cosmetic composition comprising a water-in-oil emulsion comprising 0.1% to 20 wt% Sunsphere powder with 0.1 to 20 wt% Silica Beads CB700 in 20% to 70% hydrocarbon to have 0.1 to 10% plant oil in that hydrocarbon in order to have a hydrocarbon portion that has some plant derived and natural oils and in order to have mattifying agents that provide transparency and a veiled effect while providing skin with a desirable non shiny and non-greasy appearance with 0.1 to 10% of a water-in-oil emulsifier with an HLB of less than 5 in the water-in-oil emulsion as taught by Faig and to add the SH219 composite powder taught by RD in order to utilize a suitable powder for a soft-focus composition that can blur skin imperfections as taught by RD. The 0.01% to 10 wt% plant oil would provide a natural oil that is not synthetic and provides for a certain fraction of the product that is natural product and plant derived.
Respectfully, Applicants arguments regarding inherency are not found to be persuasive because the existence of overlapping ranges in the prior art established the identity of the same composition with the same components in the same amounts at the overlap of the ranges. Applicants assertion that a scientific rationale is missing for combining the water-in-oil embodiment and soft-focus powder from Farra, plant oil and emulsifier teachings from Faig and a composite powder from RD is respectfully not found to be persuasive because such a rationale and motivation to make such a combination are laid out in the rejection but largely overlooked by Applicants.
Respectfully, Applicants’ arguments that Applicants’ own experiments are only reflective of the tested embodiments seems to be suggesting that Applicants’ own claims are not enabled over their entire breadth. Applicants are claiming the same broad scope of compositions as are taught in the prior art at the overlaps of the ranges, so if the prior art which teaches the same composition as that claimed cannot be said to have the claimed spectral reflectance values, than neither can Applicants’ composition.
The exact same substance or compound cannot have different properties – if it is the same substance, than it has the same properties. Applicants are respectfully reminded that “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
As described in the rejection above, with respect to the diffuse reflectance values in claim 1 and the specular reflectance in claim 1, the references are silent on the values of diffuse reflectance and specular reflectance. However, Farren in view of Faig and RD teach a water-in-oil silicone-free emulsion cosmetic composition with the same components as those claimed in the same amounts (at the overlaps of the ranges) as those claimed. Namely, the combined teachings of Farren in view of Faig and RD teach a water-in-oil silicone-free emulsion containing 0.1 to 5% Sunsphere powder, about 20 to about 70 wt% hydrocarbon of which 0.01% to 10 wt% is plant oil, 0.1 to 10% water-in-oil emulsifier and 0.1 to 20% SH219 composite powder. A composition comprising these components would necessarily have a diffuse reflectance value of at least 2.5 as evidenced by Table 1 of the instant specification in Example 2. A composition comprising these components would necessarily have a specular reflectance value of at least 3.4 as evidenced by Table 2 of the instant specification in Example 2 at paragraph [0094].
The prior art composition with the same components as those claimed in the same amounts (at the overlaps of the ranges) would necessarily have the same properties as those of the claimed composition. See, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements.
Applicant is also reminded that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to Applicants’ argument that the rejection uses the claimed invention as a roadmap, this argument is not found to be persuasive because the teachings of the claimed elements is found in the references themselves as is the motivation to combine these teachings. For example, the use of the 0.1 to 10 wt% plant oil taught by Faig in the hydrocarbon phase of Farren is motivated by Faig’s teaching of the desirability for the use of natural oils and plant oils and the minimization of synthetic oils. Similarly, the adding of the SH219 composite powder taught by RD is in order to utilize a suitable powder for a soft-focus composition that can blur skin imperfections as taught by RD.
The remainder of Applicants’ arguments are moot in view of the new rejections applied above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
