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
Receipt of Applicant’s response, dated 09/05/2025, is acknowledged.
Claims 1-5, 7-13, and 15-18 are pending.
Claims 6 and 14 are canceled.
Claims 1, 3, 8-9, and 11 are amended.
Claims 12-13 and 15-18 remain withdrawn as being drawn to a nonelected invention.
Claims 7 and 10 remain withdrawn as being drawn to a nonelected species.
Claim 8, as currently amended, is now withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (i.e., Applicant has elected the one or more emollient liquids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), there being no allowable generic or linking claim.
Claims 1-5, 9, and 11 are being examined 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, the species of volatile solvent is hydrocarbons.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 1, 3, 8, and 11 set forth in the Office action dated 04/07/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejections of claims 3-4, 8, and 11 set forth in the Office action dated 04/07/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-5, 8-9, and 11 over Dermott et al set forth in the Office action dated 04/07/2025 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendment to the claims.
NEW GROUNDS OF REJECTION
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 is amended to recite “the wetting agent further comprises percentages of polyols with wetting activity”. No support is pointed to for this amendment. Although the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and 2163.06 (“Applicant should therefore specifically point out the support for any amendments made to the disclosure”). The examiner reviewed the specification for support, however, the specification does not contain written support for ‘polyols with wetting activity’ being a ‘wetting agent’ but instead discloses that the liquid binder phase can also include polyols with wetting activity (See Page 3 Lines 15-17 of the Specification). Therefore, claim 8 is rejected for containing subject matter not described in the Specification.
Amended claim 8 now recites limitations, which were not clearly disclosed in the specification as filed, and now change the scope of the instant disclosure as filed. Such limitations recited in amended claim 8, which did not appear in the specification, as filed, introduces new concepts and violates the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in instant claim 8 in the specification or claims, as-filed, or remove these limitations from the claims in response to this Office Action.
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 and 8 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) Claim 3 is indefinite because it is unclear what limitations are required by the claim, i.e., does each recitation of “one or more” provide the starting point of a new list of required elements? Rather, are all members recited in claim 3 in the alternative? As written, it is unclear whether the claim recites one list of required elements, one list of alternatives, or a combination thereof, and, specifically following “and mixtures thereof” it is unclear whether what follows is in addition or in the alternative to what precedes “and mixtures thereof”. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims. Claim 4 is also rejected as depending from claim 3.
(b) Claim 8 is indefinite in the recitation of “the wetting agent further comprises percentages of polyols with wetting activity” because claim 8 depends on claim 1 and claim 1 recites a liquid binder phase consisting of one or more emollient liquids and wetting agents selected from the recited list. Because “consisting of” is closed language which excludes any element, step or ingredient not specified in the claim, claim 1 is limited to the recited emollient liquids and wetting agents, however, claim 8 adds an additional wetting agent rendering the claim indefinite since it is unclear whether the claim is open or closed consistent with claim 1. Therefore, the skilled artisan would not be reasonable apprised of the metes and bounds of the claim.
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 9 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 9 remains rejected because the phrase “like” renders the claim indefinite because it is unclear whether the limitations following “like” are part of the claimed invention. See MPEP 2173.05(d).
Response to Applicant’s Arguments - 35 USC § 112(b)
The reply filed 09/05/2025 states that claims 3, 8-9, and 11 have been amended rendering the rejections set forth in the Office action dated 04/07/2025 moot. This has been fully considered by the Examiner but is not found persuasive for the rejection of claim 9 as instant claim 9 still recites “like” and it remains unclear whether dehydroacetic acid or sorbic acid are required by the claims or if the claim encompasses organic acids that are merely “like” dehydroacetic acid or sorbic acid with respect to structure or function. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim. Therefore, the rejection is 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, 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, 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).
Note: The instant claims are being examined 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.
Note: Claim 1 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)).
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 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). These teachings of Dermott et al render obvious instant claims 1, 2, and 5. Regarding the ranges of instant claims 1, 2, and 5, 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)).
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 pulverulent phase of the composition of Dermott et al comprising the aforementioned spherical fillers, lamellar fillers, and pigments render obvious instant claims 3 and 4.
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). These teachings render obvious instant claim 9.
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). These teachings render obvious instant claim 11.
The specific combination of features claimed is disclosed within the broad generic
ranges taught by Dermott et al but such “picking and choosing” within several variables does
not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251,
1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed elements of a cosmetic product from
within the prior art disclosure of Dermott et al, to arrive at a cosmetic product “yielding
no more than one would expect from such an arrangement.”
Response to Applicant’s Arguments
Applicant’s arguments filed on 09/05/2025 have been considered.
Applicant argues that the method of production of the composition according to Dermott et al is completely different from the claimed process. Applicant argues that thanks to the process presently claimed, the cosmetic product according to the instant invention is not only new but has improved properties compared to the known products in terms of reduced fallout and glazing and increased color stroke and creaminess. Applicant argues that the selected elements (e.g., a specific combination from the separate lists) are not suggested nor indicated as preferred nor even specifically advantageous in Dermott, hence no hint nor a motivation nor even a pointer would have been provided to the person skilled in the art, specifically toward the particular combination, the selected elements belong to several different lists, each list containing numerous items, and the specific selection brings technical effects and advantages, as demonstrated in the application as filed, which should be considered as an improvement which is more than the predictable use of prior art elements according to their established functions.
The argument regarding the method of production of the composition according to Dermott et al differing from the claimed process has been fully considered by the Examiner but is not found persuasive because the instant claims regard a cosmetic product, not a method of producing a cosmetic product. Instant claim 1 is a product-by-process claim, for which it is the product that 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)). Further, Applicant has not presented any evidence that the argued increased creaminess of the claimed invention is different from the favorable creaminess of the composition of Dermott et al (See maintained rejection under 35 USC 103 above) or that the argued reduced fallout and glazing and increased color stroke are different from the attributes of the composition of Dermott et al (See Pages 113-114 of Dermott et al). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). The arguments regarding picking elements from within the disclosure of Dermott et al have been fully considered by the Examiner but are not found persuasive because it is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands (Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)). The argument regarding the technical effects and advantages of the claimed cosmetic product has been fully considered by the Examiner but is not found persuasive because it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). 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).
Conclusion
No claims are allowable.
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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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619