DETAILED ACTION
This office action is in response to applicants’ amendment dated 4/29/26.
Claim Rejections - 35 USC § 112
Claims 1 to 8, 10, 11 and 13 to 22 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.
In claim 1 and the claims that depend thereon, it is unclear what is encompassed
and/or embraced by the language “is configured to invert…”. This raises the question as to how it was “configured” and what such a configuration entails. Comparably, it raise the question as to how such an emulsion differs from one that is not “configured”.
Also in claim 1, the reference to “an additional emulsifier” is confusing since no original emulsifier is found in the claims.
In claim 16, the process is directed to a process of using, but no specific process steps or limitations are found such that it is unclear what the process actually is. This claim refers to the affects of the process but not the process per se.
In claims 21 and 22, reference to the “process of claim 17” lacks antecedent basis as claim 17 is directed to a cosmetic product. For prior art purposes this claim will be interpreted as being dependent on the “cosmetic product of claim 17”.
Claim Interpretation
For claim interpretation purposes the Examiner notes the following. While claim 1 has been amended to include a mixed volume ratio of 1:20 to 20:1, note that formula-tion (ii) in claim 1 only requires an oil, as that is all that is required in the emulsified or non-emulsified oil based formulation. Also note that the components of (i) and (ii) are mixed in this claim. As such, the cosmetic product per se can contain only the O/W emulsion (which is open to an undisclosed amount of oil due to the comprising term) and oil. Given the fact that the O/W emulsion can contain oil as well, this limitation does not appear to provide any useful claim limitation. For instance, the formulation (ii) can be solely oil and the formulation (i) can contain any amount of oil as well (not limited to the oil in the O/W emulsion). Conversely, the formulation (ii) can contain an infinitesimal amount of oil and the remainder can be water such that the combination of (i) and (ii) contains an infinitesimal amount of oil. As can be seen from this analysis, this language allows for any amount of oil and the volume ratio does not provide much, if any, further limitation. This will be discussed further in the prior art rejections below.
Claim Rejections - 35 USC § 102 and 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4 to 8, 10, 11, 13 to 17 and 19 to 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Czech et al. 6,207,782
This rejection embraces the rationale noted in the previous office action, with the
additional rejection rationale below.
Applicants’ traversal of this rejection relies on presence of the newly added language “formulation (i) and (ii) are mixed in a volume ratio of 1:20 to 20:1”. As noted supra, this language reinforces the fact that the cosmetic product is a mixture of (i) and (ii) such that, once in the final product, there is no clear distinction as to what ingredient came from which formulation.
With this in mind, note that supra regarding the extremely large range of oil and O/W emulsion that is embraced by claim 1. Note too that Example 2 includes 5 weight percent of the silicone latex. While this is not disclosed in terms of volume present or a ratio, given the language “comprising” found in “cosmetic product comprising”, in “form-ulation (i)” and “formulation (ii)”, combined with the fact that components in formulation (ii) are extremely broad and not defined, the amount in Czech et al. will fall within the breadth of this claim.
In this manner the newly added claim language does not distinguish the claimed cosmetic product from that in the prior art. As this is the only traversal presented by applicants for this particular rejection, the rejection is maintained.
Note that the claims requiring the presence of the organohydrogenpolysiloxane (e.g. claim 3) are no longer rejected as being anticipated over Czech et al.
Claims 1, 2, 4 to 8, 10, 11, 13 to 17 and 19 to 22 are rejected under 35 U.S.C. 103 as being unpatentable over Czech et al. 6,207,782.
While the Examiner is of the belief that the anticipation rejection above is valid
and appropriately applied, with the expectation that applicants will traverse that rejection or amend the claims to overcome that rejection, the following obviousness rejection applies as well.
Czech et al. do not make any mention of mixing components or the presence of components in a volume amount. This reference teaches amounts in terms of weight parts and percentages.
Czech et al. provide various instances that would motivate the skilled artisan to adjust the amount of O/W emulsion in the cosmetic product therein. See for instance column 4, lines 15 and 16, which refers to the amount of emulsion that is applied to the substrate. See column 3, lines 45 to 50, which refers to the amount of copolymer and aqueous phase in the emulsion. See also column 3, line 60, which refers to a higher silicone content having a softer film. Note that the composition to which the emulsion in Czech et al. is added (as found in the bottom of column 3 through column 4) teaches various products having improved wear, tactile properties and improved ease of appli-cation.
From this, one having ordinary skill in the art would have found it obvious to adjust the amount of O/W emulsion in the final cosmetic product of Czech et al. in an effort to optimize the properties associated with the O/W emulsion while emphasizing the improvement and benefits and the resulting product. In this manner the skilled artisan would have found it obvious to adjust the weight amount, and correspondingly the volume amount, of each component meeting formulations (i) and (ii). Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
With regard to any arguments regarding the phase inversion product in the form of a W/O emulsion, this is not a claimed feature in claim 1. Noting that claim 8 is direct-ed to a phase inversion emulsion, see column 3, lines 34 and on, which refers to a W/O emulsion. There is nothing on the record that shows that the process by which the W/O emulsion is prepared renders a final cosmetic product which is different and unobvious over the prior art W/O emulsion. Furthermore, given the extreme breadth of the claims, there is nothing to establish that the extremely limited results in the specification are representative of the entire breadth of claims 1 and 8. These claims allow for different amounts of all components, different types of oil, different types of crosslinked silicone, different emulsifiers or additives and so on.
Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Czech et al. 6,207,782 in view of Xing et al. 2017/0348220.
Applicants’ response (page 13, section IV) refers to claims 1-7 and 9-19 as being
rejected over Czech in view of Xing. As a point of clarification, paragraph 10 rejects only claims 2 and 17 over this combination.
To this extent, applicants’ traversal has been considered but is not persuasive.
Applicants refer to the volume ratio of 1:20 to 20:1, as discussed above. This language does not provide any patentable distinction to claim 1 such that reliance on this language does not overcome the rejection.
Applicants’ remarks seem to imply that the formulation (ii) is the oil that will invert the emulsion to a W/O emulsion but this is not clear from the claim language. Claim 1 does not specify that the oil based formulation is the same as “an oil phase”, nor does it specify that the cosmetic product is a W/O emulsion. This is not a feature in claim 1. Note that claim 8 is directed to an embodiment in which the O/W emulsion is phase inverted to a W/O emulsion.
Finally note that the applicants have not actually addressed the obvious rationale behind this combination rejection, which is drawn to the type of siloxane (I) found in claims 2 and 17.
Claims 1 to 7, 10, 11 and 13 to 22 are rejected under 35 U.S.C. 103 as being unpatentable over Xing et al. 2017/0348220 in view of Czech et al. 6,207,782.
This rejection is maintained from the previous office action. See paragraph 10 of
the office action dated 12/29/25. To the extent that it is applicable (since applicants present the traversal as a rejection over Czech in view of Xing rather than Xing in view of Czech), applicants’ traversal has been considered but is not deemed persuasive.
Again it appears that applicants interpret claim 1 as being drawn to an inverted emulsion such that the cosmetic product is the W/O emulsion. This is not consistent with the claimed language. Note, for instance, that this rejection does not apply to claim 8 which requires the phase inversion to have occurred.
Applicants provide additional arguments regarding the volume ratio of formulation (i) and (ii) but, as noted above, this does not provide any specific limitation to claim 1 that would render the claims unobvious.
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
5/16/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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