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 .
Applicant’s arguments, filed 10/03/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Status
Claims 1-10 are pending.
Claims 8-10 are withdrawn.
Claim Rejections - 35 USC § 112(b) or pre-AIA 2nd ¶
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 and 4 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.
Claims 3 and 4 recite the limitation "the surfactant assembly" in line 2 of each claim. There is insufficient antecedent basis for this limitation in the claim. Applicants have amended claim 1 to remove “assembly,” and did not update claims 3 and 4 to reflect the change. For purposes of examination, “the surfactant assembly” will be interpreted as “the non-ionic hydrophilic surfactant,” which is consistent with claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Salvert et al (US 20060217283 A1, hereinafter “Salvert”), in view of Lorant (US 6210692 B1), as evidenced by HLB Calculator (HLB Calculator, Formulator’s Notebook, retrieved 2026).
Salvert teaches foaming cosmetic compositions in the form of an oil-in-water emulsion comprising more than 30 wt% of an oily phase, and a foaming surfactant comprising at least one non-ionic surfactant chosen from alkylpolyglucosides (abs, ¶¶ 2, 16-18). The compositions may also contain thickeners (¶ 87). The oily phase may comprise oils, gums, etc. (¶ 22). The composition may comprise an emulsifying system with an HLB balance ranging from 8-18 (¶ 16). The at least one alkylpolyglucoside is chosen from decyl glucoside, caprylyl/capryl glucoside, lauryl glucoside, coco glucoside, etc. (¶ 39, claim 5). As evidenced by HLB Calculator, decyl glucoside has an HLB balance of 13.50, caprylyl/capryl glucoside has an HLB balance of 13.40, lauryl glucoside has an HLB balance of 12.00, coco glucoside has an HLB balance of 13.00 (see emulsifiers). The amount of alkylpolyglucoside preferably ranges from 0.5 to 15 wt% of the composition, preferably 1 to 10 wt% (¶ 40). The amount of water is less than or equal to 45 wt% (abs, ¶ 16, claim 1). The compositions can be used as a makeup remover (¶¶ 99, 100, 109, claim 17).
Salvert does not teach the inclusion of at least one clay and/or at least one polysaccharide gum of claims 1 and 2, nor a single disclosed embodiment comprising the HLB balance as instantly claimed, the wt% of the surfactant as instantly claimed, the weight ratio of oil/water as instantly claimed, nor wherein the total weight of the lipophilic phase of claim 6.
Lorant teaches oil-in-water emulsions for cosmetic applications, such as foams for caring for or cleansing the skin, makeup removers, etc., where it was known to include at least one hydrophilic thickening compound (abs, col 8 ln 55-64). The hydrophilic thickening compounds were selected from polysaccharide biopolymers, such as xanthan gum, etc., inorganic thickeners such as smectite or hectorite (i.e., clay), and mixtures thereof (col 3 ln 33-43). The hydrophilic thickening compound is present in a concentration of 0.05 to 10 wt%, preferably 0.5 to 4 wt% (col 6 ln 6-10).
Regarding the wt% of lipophilic phase of claims 1 and 6, it would have been obvious to formulate the compositions of Salvert with an oily phase (lipophilic phase) of greater than 30 wt%, overlapping the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the non-ionic surfactant of claim 1, it would have been obvious to include at least one alkylpolyglucoside, a non-ionic surfactant, as taught by Salvert.
Regarding the gelling agent of claims 1 and 2, it would have been obvious to modify Salvert by including known thickening agents suitable for foaming oil-in-water emulsion compositions that can be used as a makeup remover, such as polysaccharide polymers including xanthan gum, etc., inorganic thickeners such as smectite or hectorite (clay), and mixtures thereof, where Salvert teaches thickeners may be included, in order to adjust the viscosity of the formulation to achieve desired properties. Where the inclusion of polysaccharide gums and clays are made obvious above, which are evidenced by claim 1 as being gelling agents, the limitations are met.
Regarding the amount of gelling agent of claim 1, it would have been to formulate the composition of Salvert with amounts of gelling agents that were known to be used in oil-in-water emulsion compositions that can be used as makeup removers, such as from 0.05 to 10 wt%, preferably from 0.5 to 4 wt%, as taught by Lorant.
Regarding the limitation of wherein the composition does not comprise the crosslinked polymers newly amended into claim 1, it does not appear that the composition made obvious above by Salvert and Lorant comprise the crosslinked polymers of the newly amended negative proviso, and appears to be no teachings in Salvert of its inclusion.
Regarding claim 3, while the reference does not specifically teach the HLB balance of the alkylpolyglucoside, where the inclusion of the alkylpolyglucosides made obvious above have an HLB balance falling within the claimed ranges, as evidenced above, the limitation is met.
Regarding claim 4, it would have been obvious to include the non-ionic surfactant of Salvert in an amount from 0.5 to 15 wt%, as taught by the reference. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 5, where the oily phase of Salvert is taught to be greater than 30 wt%, and the water phase is taught to be less than or equal to 45 wt%, the weight ratio of oil/water appears to overlap the instantly claimed range of between 0.5 and 1.5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 7, where the composition made obvious above can be used as a makeup remover, as taught by Salvert, the intended use limitation is met.
Claims 1-3, 5, and 7, are rejected under 35 U.S.C. 103 as being unpatentable over Khayat et al (US 5665687 A, hereinafter “Khayat”), in view of Lorant (US 6210692 B1).
Khayat teaches skin cleansing compositions in the form of water-in-oil emulsions comprising an oil phase comprising cetearyl glucoside at 4.25%, cetyl alcohol at 0.75%, apricot oil at 25.00%, an aqueous phase comprising xanthan gum (gelling agent) at 0.20%, water at 64.80% and lipid grains at 5% (ex 1). The oil phase may be from 10-40 wt% of the composition (col 4 last paragraph). Clays may be included to adjust the consistency or the viscosity of the lipid grains, and may be included as a cleansing agent (col 3 ln 41-50). The HLB value of the emulsifying agent is below about 12.5 (col 2 ln 15-17). In one embodiment, the composition is a make-up removing composition with make-up removing action (col 1 ln 50-54)
Khayat does not teach an embodiment with the lipophilic phase content as instantly claimed, the amount of gelling agent as instantly claimed, clay in the amounts instantly claimed, nor a specific embodiment as instantly claimed comprising an HLB balance of claim 3.
Lorant is discussed above.
Regarding the wt% of the lipid phase of claim 1, it would have been obvious to formulate the compositions of Khayat with an oil phase from 10-40 wt%, overlapping the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the non-ionic surfactant of claim 1, the composition made obvious above comprises cetearyl glucoside, an alkylpolyglucoside, thereby meeting the claimed limitation.
Regarding the amount of gelling agent of claim 1, it would have been obvious to modify the composition of Khayat by including known amounts for xanthan gum that can be used in oil-in-water emulsions as a makeup remover, such as from 0.05-10 wt%, preferably from 0.5 to 4 wt%, as taught by Lorant. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the limitation of wherein the composition does not comprise the crosslinked polymers newly amended into claim 1, it does not appear that the composition made obvious above comprises the crosslinked polymers of the newly amended negative proviso.
Regarding the clay of claim 2, where Khayat teaches clays can be included both as to adjust the viscosity and as a cleansing agent, it would have been obvious to include known amounts of clay suitable for oil-in-water emulsions that can be used as a makeup remover, such as from 0.05-10 wt%, preferably from 0.5 to 4 wt%, as taught by Lorant. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). The examiner notes that while clay is not specifically referred to as a "gelling agent" in Khayat, claim 1 evidences clays are gelling agents. Further, it would have been well within the relative skills of the skilled artisan to routinely optimize the amount of clay in order to achieve desired physical properties. See MPEP 2144.05(II).
Regarding the HLB of claim 3, it would have been obvious to modify the composition of Khayat by including the emulsifier comprising an alkylpolyglucoside with an HLB balance up to 12.5, as taught by Khayat. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 5, where the oil phase of Khayat can range from 10-40 wt%, upon adjust the amount of oil, it would have been obvious for the skilled artisan to adjust the water content accordingly. Upon adjusting the content of the oil and water, it would be expected that the oil/water weight ratio would overlap those instantly claimed. Further, it would have been well within the relative skills of the skilled artisan to routinely optimize the oil/water weight ratio, in order to achieve desired physical properties. See MPEP 2144.05(II).
Regarding claim 7, where Khayat teaches the compositions can be a makeup remover with makeup remover action, it would have been obvious to formulate the composition made obvious above as a makeup remover, thereby meeting the intended use limitation.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Khayat et al (US 5665687 A, hereinafter “Khayat”) and Lorant (US 6210692 B1), as applied to claims 1-3, 5, and 7 above, and further in view of Salvert et al (US 20060217283 A1, hereinafter “Salvert”).
Khayat and Lorant are discussed above but do not teach the amount of alkylpolyglucoside of claim 4, nor amount of oil phase of claim 6.
Salvert is discussed above.
Regarding claim 4, it would have been obvious to adjust the amount of the alkylpolyglucoside of Khayat to known amounts suitable for oil-in-water emulsions that can be used as a makeup remover, such as from 0.5 to 15 wt%, as taught by Salvert. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 6, it would have been obvious to adjust the amount of the oil phase to those that were known to be suitable for oil-in-water emulsions that can be used as a makeup remover, such as in an amount greater than 30 wt%, as taught by Salvert, overlapping the claimed range.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612