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
Claims 1-9 and 15-30 are pending in this application. Claims 1, 21 and 23-24 are amended.
Claims 23-25 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-9, 15-22 and 26-30 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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Rejections Withdrawn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 1-5, 15-21 and 26-30 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 is withdrawn.
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applied to claims 1-5, 15-21 and 26-30 above and further in view of Jones et al US 2011/0223218 (9/15/2011) [Jones] is withdrawn.
New Rejections/Rejections Maintained
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.
Claims 1-5, 15-21 and 26-30 are rejected 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.
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). 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 called for in instant claims 2 and 3. 0.1 to about 10% overlaps with the about 0.5% to about 20% called for in instant claim 4.
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 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 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.
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.
Claims 6-9 are rejected 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), 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].
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, 0.1 to 10% 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.
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 maintained.
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). The fat phase can comprise plant oils in an amount of from about 0.1 to about 10%. (See first paragraph on page 17).
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.
Tachon teaches silica and titanium dioxide composites but does not teach silica particles encapsulating titanium dioxide. These deficiencies are made up for with the teachings of RD 540002.
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.
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.
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 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 teach an 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 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 February 11, 2026 have been considered carefully.
Applicants note that Faig and RD does not teach a soft-focus cosmetic composition comprising all of the elements in the claims as they have been amended. Applicants acknowledge that Faig teaches cosmetics that have been formulated to have a hydrophilic phase emulsified in the oil phase and that one or more non-ionic emulsifiers having an HLB of 10 or more and one or more non-ionic emulsifiers having an HLB of 5 or less may be used together, but Applicants assert that these teachings should not be read in isolation. Rather, they should be read in light of the Examples which show an oil-in-water emulsifier and oil-in-water emulsions. Applicants assert that Faig does not disclose or suggest replacing, or reducing the required high-HLB emulsifier in a way that would allow formation of a true W/O emulsion.
Applicants further argue that modifying Faig to arrive at the W/O emulsion composition in claim 1 would fundamentally alter the principle of operation of Faig’s cosmetic compositions.
Applicants question the inherency assertion of the obviousness rejection, saying that inherency must be established bv demonstrating that the missing property is necessarily present. Applicants believe that the prior art composition is not an identical composition.
Applicants further argue that RD does not resolve the deficiencies of Faig and is directed to an anhydrous or powdery cosmetic composition. Combining elements of the anhydrous cosmetic compositions of RD with the O/W emulsion of Faig would create an unpredictable system with different phases and rheology. Applicants also argue that RD does not suggest or provide motivation for adding the DH219 composite powder to a hydrous emulsion.
Applicants further argue that Jones does not resolve the deficiencies of Faig and RD and is only cited as teaching “a combination pigment having a metal-oxide coated mica substrate”.
Applicants’ arguments have been carefully considered and are largely moot in view of the new rejections applied above. Those arguments that are not moot are not found to be persuasive. It should be noted that Farren teaches a water-in-oil emulsion cosmetic that is free of silicone as called for in the amendments to the claims.
With respect to claim 22, Applicants’ argument that Faig does not disclose or suggest replacing, or reducing the required high-HLB emulsifier in a way that would allow formation of a true W/O emulsion is not found to be persuasive. Applicants themselves acknowledge that Faig teaches cosmetics that have been formulated to have a hydrophilic phase emulsified in the oil phase. Respectfully, Applicants’ focus on the Examples does not take into consideration the entire disclosure of Faig, which is much broader than the Examples. Faig teaches multiple emulsifiers including sorbitan monopalmitate which is a water-in-oil emulsifier, so clearly water-in-oil emulsions were suggested in Faig. While the polyglyceryl-3-methylglucose distearate is an oil-in-water emulsifier, the Faig reference is not limited to that emulsifier or to oil-in-water emulsions, since water-in-oil emulsifiers are expressly taught in Faig.
Applicants’ argument that modifying Faig to arrive at the W/O emulsion composition in claim 1 would fundamentally alter the principle of operation of Faig’s cosmetic compositions is not found to be persuasive because claim 22 does not require a water-in-oil emulsion, it only requires the presence of a water-in-oil emulsifier which the prior art teaches.
With respect to the new rejections over claim 1 and its dependent claims, Applicants’ arguments that combining elements of the anhydrous cosmetic compositions of RD with the emulsion of Faig would create an unpredictable system with different phases and rheology is also unpersuasive because as Applicants noted, RD is only being cited for the DH219 composite powder and Farren expressly teaches that powder additives are suitable for use in its composition. Indeed, part of its composition expressly includes from about 0.01 to about 20 wt% of at least one inorganic pigment which can be selected from titanium dioxide. (See Farren claim 14 and [174-175]). Furthermore, there is motivation for adding the DH219 composite powder to the Farren cosmetic composition because Farren teaches that part of its composition includes a wide variety of possible inorganic powder pigments and inorganic particles (some of which are composite powders, see [0181] which indicates titanated mica is suitable for use in the Farren composition.) There is thus motivation and a reasonable expectation of success in adding the DH219 composite powder to the Farren cosmetic composition, since Farren itself teaches that such composite powders are suitable.
The remainder of Applicants’ arguments are moot in view of the new rejections applied above.
Conclusion
No claims are allowed.
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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/SARAH CHICKOS/
Examiner, Art Unit 1619
/SARAH ALAWADI/ Primary Examiner, Art Unit 1619