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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/10/2026 has been entered.
Formal Matters
Receipt of Applicant’s response dated 06/10/2026 is acknowledged.
Claims 1-5, 7-13, and 15-18 are pending.
Claims 6 and 14 are canceled.
Claims 3 and 8-9 are amended.
Claims 12-13 and 15-18 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 7 and 10 remain withdrawn from consideration as being drawn to nonelected species.
Claim 8 was previously withdrawn from consideration as being drawn to a nonelected species, however with the amendments to claim 8 it is now under consideration in the instant Office action.
Claims 1-5, 8-9, and 11 are under consideration in the instant Office action to the extent of the elected species, i.e., the one or more emollient liquids and wetting agents are non-volatile silicones such as straight-chain polydimethylsiloxane with viscosity ranging from 5 cSt to 1000000 cSt and capric/caprylic triglyceride, the polyols with wetting activity is 1,2-hexanediol, the cosmetic product form is highlighter, the cosmetic product finish is pearly, and the volatile solvent is hydrocarbons.
Manner of Making Amendments, 37 C.F.R. 1.121
Claim 8 has been amended in the claim set dated 06/10/2026, however not all of the modified text relative to the immediate prior version carries the proper markings, i.e., not all of the newly added text is underlined. Applicant is reminded to include proper claim status identifiers moving forward to avoid delays. See MPEP 714.
REJECTIONS WITHDRAWN
Claim Rejections - 35 USC § 112(a)
The rejection of claim 8 set forth in the Office action dated 12/11/2025 has been withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The rejection of claims 3-4 and 8-9 set forth in the Office action dated 12/11/2025 has been withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The rejection of claims 1-5, 9, and 11 set forth in the Office action dated 12/11/2025 has been withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTION/REJECTION
Drawings
The drawings are objected to because each of Figures 1 and 2 are illegible and should be replaced with more legible copies. The Examiner suggests increasing figure size as a strategy for increasing legibility.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2, 5, and 8 are objected to because of the following:
In each of claims 2 and 5, “by weight of the total weight of the product” should be amended to “by weight, on the basis of the total weight of the product” in order to improve claim readability and consistency (See claim 1); and
In line 6 of claim 8, “activity, one” should be amended to “activity and one” for grammatical correctness.
Appropriate correction is required.
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.
Claims 3-4, 9, and 11 are 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.
(a) Each of claims 3, 9, and 11 recite “including” (six occurrences in claim 3, two occurrences in claim 9, and one occurrence in claim 11), which renders each of the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. For example, in claim 3, the recitation “silicone powders including elastomers” makes it unclear whether the claim is limited to elastomers or can include any silicone powders. Claim 4 is also rejected for depending from claim 3.
(b) Claim 3 is indefinite because it is unclear which components of the recited list are required by the claim. Does the claim require one or more of mica, fluorphlogopite, silica, metal stearates, boron nitride, silicone powders including elastomers, one or more resins including trimethylsiloxysilicate, polymethylsilsesquioxane and one or more hybrid powders, sodium aluminium sulphosilicate complexes, zeolite, hectorite, lauroyl lysine, or mixtures thereof and one or more pigments including iron oxides, ferric ferrocyanide, ultramarine blue, ultramarine pink, manganese violet, titanium dioxide, cochineal, lakes, pearl dyes and synthetic azo dyes including yellow 5 lake-IC 19140, triphenylmethane dyes including blue 1 lake-IC 42090, and xanthenes including yellow 8-CI45350 (i.e., two components being one or more of the first idented list and one or more of the second indented list)? Does the claim require one or more of mica, fluorphlogopite, silica, metal stearates, boron nitride, and silicone powders including elastomers, and one or more resins including trimethylsiloxysilicate and polymethylsilsesquioxane and one or more hybrid powders, and sodium aluminium sulphosilicate complexes, and zeolite, and hectorite, and lauroyl lysine, or mixtures thereof and one or more pigments including iron oxides, ferric ferrocyanide, ultramarine blue, ultramarine pink, manganese violet, titanium dioxide, cochineal, lakes, and pearl dyes and synthetic azo dyes including yellow 5 lake-IC 19140, and triphenylmethane dyes including blue 1 lake-IC 42090, and xanthenes including yellow 8-CI45350? Is something else meant by the claim? As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim. Claim 4 is also rejected for depending from claim 3.
(c) Claim 9 is indefinite because it is unclear which components of the recited list are required by the claim. Does the claim require that all of a plurality of preservatives, a plurality of organic salts, a plurality of sunscreens, a plurality of extracts, and a plurality of active ingredients be further contained in the product? Does the claim require that all of a preservative, an organic salt, a sunscreen, an extract, and an active ingredient be further contained in the product? Does the claim require that all of at least one preservative, at least one organic salt, at least one sunscreen, at least one extract, and at least one active ingredient be further contained in the product? Does the claim require that one of a plurality of preservatives, a plurality of organic salts, a plurality of sunscreens, a plurality of extracts, and a plurality of active ingredients be further contained in the product? Does the claim require that one of a preservative, an organic salt, a sunscreen, an extract, and an active ingredient be further contained in the product? Does the claim require that one of at least one preservative, at least one organic salt, at least one sunscreen, at least one extract, and at least one active ingredient be further contained in the product? Does the claim require that at least one of a plurality of preservatives, a plurality of organic salts, a plurality of sunscreens, a plurality of extracts, and a plurality of active ingredients be further contained in the product? Does the claim require that at least one of a preservative, an organic salt, a sunscreen, an extract, and an active ingredient be further contained in the product? Does the claim require that at least one of at least one preservative, at least one organic salt, at least one sunscreen, at least one extract, and at least one active ingredient be further contained in the product? Is something else meant by the claim? As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “the powder phase consists of mica, fluorphlogopite, silicone powders, silica, metal stearates, zeolite, hectorite, lauroyl lysine, boron nitride, trimethylsiloxysilicate or mixtures thereof” and depends on claim 3 which recites “the powder phase consists of one or more mica, fluorphlogopite, silica, metal stearates, boron nitride, silicone powders including elastomers, one or more resins including trimethylsiloxysilicate, polymethylsilsesquioxane and one or more hybrid powders, sodium aluminium sulphosilicate complexes, zeolite, hectorite, lauroyl lysine, and mixtures thereof, and one or more pigments including iron oxides, ferric ferrocyanide, ultramarine blue, ultramarine pink, manganese violet, titanium dioxide, cochineal, lakes, pearl dyes and synthetic azo dyes including yellow 5 lake-IC 19140, triphenylmethane dyes including blue 1 lake-IC 42090, and xanthenes including yellow 8-CI45350”. Because claim 4 fails to include components of the powder phase that are required by claim 3, claim 4 is rejected for failing to include all the limitations of claim 3 and for failing to further limit the subject matter of claim 3.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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, 8-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dermott et al (WO 2014/086710 A2, published 06/12/2014, cited in IDS dated 08/24/2022) in view of Myskinrecipes (“Comparison and Combined Use of 1,3-Propanediol and 1,2-Hexanediol”, published 05/20/2019).
Dermott et al teach a solid cosmetic composition in the form of a preferably pressed powder comprising at least an oily phase greater than or equal to 20% by weight relative to the total weight of the composition and a pulverulent phase greater than or equal to 40% by weight relative to the total weight of the composition (See entire document, e.g., Abstract).
The oily phase of Dermott et al preferably comprises at least one hydrocarbon-based oil, preferably non-volatile hydrocarbon-based oil, and at least one silicone oil, preferably non-volatile silicone oil (e.g., Page 33 Lines 5-7). Suitable non-volatile hydrocarbon-based oils include caprylic/capric acid triglycerides and suitable non-volatile silicone oils include silicone oils with a viscosity at 25 °C of greater than or equal to 8 cSt and less than 800 000 cSt including non-volatile linear silicone oils such as polydimethylsiloxanes (e.g., Page 34 Lines 1-3, Page 37 Lines 4-6, Page 37 Lines 12-13).
The pulverulent phase of the composition of Dermott et al comprises at least one spherical filler and at least one lamellar filler (e.g., Page 13 Lines 3-4). Suitable spherical fillers include silica powder, polymethylsilsesquioxane powder, silicone powders, and perlite powders (e.g., Page 17 Lines 10-11,20-22, and 24, Page 18 Lines 10-15, Page 21 Lines 9-26). Suitable lamellar fillers include mica, silica, trimethyl siloxysilicate, boron nitride, and fluorphlogopite (e.g., Page 25 Lines 23-27). The pulverulent phase may further comprise pigments, where suitable pigments include titanium dioxide, iron oxides, manganese violet, ultramarine blue, ferric blue, cochineal carmine, organic pigments of azo dyes, and xanthene dyes (e.g., Page 27 Lines 25-29, Page 27 Line 30 – Page 28 Line 2).
The spherical fillers in the pulverulent phase of the composition of Dermott et al may be coated with fatty acids including stearic acid, amino acid, N-acylamino acids and salts thereof (e.g., Page 17 Lines 25-28). Dermott et al teach that the composition may comprise other ingredients commonly used in cosmetics, such as preserving agents, cosmetic active agents, moisturizers, UV-screening agents, thickeners, and fragrances (e.g., Page 107 Lines 20-22).
Dermott et al teach that the pulverulent phase may comprise reflective particles, which reflect incident light having an intensity sufficient to create highlight points visible to the naked eye, that is to say more luminous points which contrast with their surroundings by appearing to sparkle (e.g., Page 30 Lines 24-30). Dermott et al also teach that perlite is a pigment that can be used in the pulverulent phase, which is in the form of small particles resembling pearl (e.g., Page 23 Lines 11-14).
Dermott et al teach that the composition may comprise a polyol that is water-miscible at ambient temperature, wherein such polyols may promote the moisturization of the surface of the skin on which the composition is applied (e.g., Page 107 Lines 9-11).
The composition of Dermott et al was evaluated by a panel of experienced individuals on criteria including creaminess, for which the panel gave favorable results (e.g., Page 113 Line 23 - Page 114 Line 14).
Dermott et al do not teach using specifically 1,2-hexanediol as the polyol.
This deficiency is made up for in the teaching of Myskinrecipes.
Myskinrecipes teaches that 1,2-hexanediol is a versatile ingredient commonly used in cosmetic formulations offering benefits including acting as an effective solvent for dissolving other ingredients in a formulation, helping attract and retain moisture in the skin contributing to hydration, acting as a strong preservative booster and effectively controlling microbial growth, and functioning as a penetration enhancer helping other active ingredients absorb better into the skin (See entire document).
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 provide a solid cosmetic composition in the form of a pressed powder having favorable creaminess comprising an oily phase greater than or equal to 20% by weight relative to the total weight of the composition and a pulverulent phase greater than or equal to 40% by weight relative to the total weight of the composition, wherein the oily phase comprises (a) caprylic/capric acid triglycerides as non-volatile hydrocarbon-based oil and (b) polydimethylsiloxanes with a viscosity at 25 °C of greater than or equal to 8 cSt and less than 800 000 cSt as non-volatile silicone oil, wherein the pulverulent phase comprises (a) silica powder, polymethylsilsesquioxane powder, silicone powders, and/or perlite powders as spherical fillers, (b) mica, silica, trimethyl siloxysilicate, boron nitride, and/or fluorphlogopite as lamellar fillers, (c) titanium dioxide, iron oxides, manganese violet, ultramarine blue, ferric blue, cochineal carmine, organic pigments of azo dyes, and/or xanthene dyes as pigments, and (d) reflective particles, wherein the spherical fillers may be coated with fatty acids including stearic acid, amino acid, N-acylamino acids and salts thereof, and wherein the composition further comprises 1,2-hexanediol as polyol that is water-miscible at ambient temperature and further comprises a preserving agent, cosmetic active agent, moisturizer, UV-screening agent, thickener, and/or fragrance.
One of ordinary skill in the art would have been motivated to include the reflective particles in the pulverulent phase because Dermott et al teach that they reflect incident light having an intensity sufficient to create highlight points visible to the naked eye giving the composition a sparkle appearance. One of ordinary skill in the art would have been motivated to include a polyol that is water-miscible at ambient temperature because Dermott et al teach that such polyols promote the moisturization of the surface of the skin on which the composition is applied. One of ordinary skill in the art would have been motivated to include specifically 1,2-hexanediol as said polyol because Myskinrecipes teaches that it is commonly used in cosmetic formulations and offers benefits to cosmetic formulations including acting as an effective solvent for dissolving other ingredients in a formulation, helping attract and retain moisture in the skin contributing to hydration, acting as a strong preservative booster and effectively controlling microbial growth, and functioning as a penetration enhancer helping other active ingredients absorb better into the skin. There would have been a reasonable expectation of success in including 1,2-hexanediol in the composition of Dermott et al because Dermott et al teach compatibility of the composition with a polyol that is water-miscible at ambient temperature, wherein such polyols may promote the moisturization of the surface of the skin on which the composition is applied.
Each of claims 1 and 8 is a product-by-process claim and therefore the product is given patentable weight, not the process by which the product is made. “[Elven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (In re Thorne, 777 F.2d 695, 698, 227 USPQ S64, 966 (Fed. Cir. 1985)). Therefore, each of claims 1 and 8 are being examined to the extent of the resultant cosmetic product rather than the process for obtaining the cosmetic product.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Thus, the composition of Dermott et al in view of Myskinrecipes renders obvious instant claims 1-5, 8-9, and 11 to the extent of the elected species.
Response to Applicant’s Arguments
Applicant’s arguments and the declaration under 37 CFR 1.132 dated 06/10/2026 have been considered.
Applicant argues that the bulk saturation and stabilization made under vacuum according to the instant invention affects the properties of the final product, i.e. density, viscosity and drop test, thereby influencing fall-out and colour stroke, resulting in a product that is substantially different from the product described by Dermott et al. Applicant argues that the particles of the formulation processed without vacuum exhibit a more irregular surface and are less compact compared to those of the formulation processed under vacuum. Applicant argues that the processing assisted by air removal followed by compressing allows the production of a product with lower porosity and thus more compact ad with higher apparent density, where conversely, processing without vacuum followed by compressing results in a more porous microstructure. Applicant argues that the use of vacuum removes air in favor of the liquid thereby increasing the contact area with the powder particles resulting in a more homogeneous product with enhanced final colour saturation. Applicant argues that the claimed cosmetic product is structurally distinct from and possesses unexpected properties compared to the product described by Dermott et al, specifically higher density, higher viscosity, higher mechanical resistance, lower porosity, reduced fall-out, and enhanced colour saturation.
The above arguments have been fully considered by the Examiner but are not found persuasive because, in both remarks dated 06/10/2026 and in the declaration dated 06/10/2026, the constituents of the product being argued as the claimed cosmetic product and the product being argued as that of the prior art obtained by a method involving different process steps than those claimed are not stated, and rather all that is stated is that “Prior art” is compared to “Invention”, and therefore the Examiner cannot tell which compositions the results correspond to and whether the product being argued as the claimed cosmetic product is even commensurate in scope with the presently claimed cosmetic product of claim 1 and of claim 8.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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