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 .
Response to Amendment
The Amendment filed 06/05/2026 has been entered. Applicant’s amendments are in response to in the Non-Final Office Action mailed 02/06/2026. Applicant’s claims have been amended in the following manner: independent claim 18 has been modified by inclusion of “and wherein a flowable cream or ointment as well as a solid stick can be produced with one and the same recipe, depending solely on a production process” that is supported by Applicant’s Specification on pg 5, bottom paragraph. Therefore, rejection has been modified according to the new language, to address the new language. Furthermore, new claims 38-41 have been entered to draw a new ground of rejection. Notably, new references Clermont and Evonik address new claims 40-41.
The following objections/rejections are withdrawn: none.
The Examiner further acknowledges the following:
Claims 18-33, and 38-41 are pending.
Claims 33 is withdrawn from consideration as directed to non-elected inventions.
Claims 18-32 and 38-41 are presented for examination and rejected as set forth below.
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.
Claims 18-24, 26-32, and 38-41 are rejected under 35 U.S.C. 103 as being unpatentable over Von Der Fecht (US20150011654A1; cited on the IDS filed 1/13/2023), and in further view of Banowski (DE102008028822A1 – machine translation provided; cited on the IDS filed 1/13/2023), Lorant (US20110020258A1; same patent family as WO 2009/080657 A2 which is directly discussed by Von Der Fecht), Clermont (EP2921159B1), and Evonik (2019).
Applicant’s independent claim 18 is directed to a cosmetic water-in-oil emulsion (W/O emulsion) containing a) a first emulsifier from the group of the compounds diisostearoyl polyglyceryl-3 dimer dilinoleate and/or polyglyceryl-3 polyricinoleate b) a second emulsifier from the group of the compounds polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate and/or polyglyceryl-2 sesquioleate c) sunflower wax, wherein the preparation is free from a list of specific ingredients, including mineral oil. Further note that the “free from” negative limitations are addressed by ingredients of the Art that are taught as optionally included; thus, it would be obvious to preclude these ingredients from a composition. The additional dependent claims further narrow the composition. New claim 40 is an independent claims. The newly added language provides limitation regarding compositional structure (i.e., flowable, cream, ointment, solid stick, etc.)
Finally, with respect to composition claims 18 and 38-39, it must be remembered: "[E]ven 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 Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Thus, secondary considerations are necessary to demonstrate non-obviousness of a composition through a product-by-process approach. Further note that independent claim 18 provides no description of a specific production process, but only an intended result.
Von Der Fecht teaches stable water-in-oil emulsions (W/O emulsion) for cosmetics intended for the skin [0009-0013].
Regarding claims 18-21 and 23: Von Der Fecht teaches a composition comprising diisostearoyl polyglyceryl-3 dimer dilinoleate in 0.1-3 wt% (reads on 18a and 19) and polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate in 0.1-2.5 wt% (reads on 18b and 19) (Von Der Fecht – claims 21 and 25). Von Der Fecht teaches stable water-in-oil emulsions (W/O emulsion) for cosmetics intended for the skin [0009-0013] that produces desirable highly spreadable, flowable emulsions [0006, 0065] formed by problem-free upscaling process [0036, 0041], whereby common formulations include stick [0018] and cream formulations [0057] (reads on “and wherein a flowable cream or ointment as well as a solid stick can be produced with one and the same recipe, depending solely on a production process”).
Note that Von Der Fecht does not require the instantly excluded ingredients of the “wherein” clause (i.e., mineral oil, waxes, copolymers, UV absorbers, preservatives, or PEG ethers/esters, etc.) (Von Der Fecht – claims 18, 21 and 25), whereby Von Der Fecht teaches a list of generally optional ingredients such as oils, waxes, etc. [0068].
With regard to the amounts of instant claim 23, Von Der Fecht teaches a water phase of 40-80 wt% and an oil phase of 0.1-40 wt% [0062], where natural oils are included for selection such as argan oil, etc. [0063]. For the instant ranges (compared to disclosures of the Art), a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (see 2144.05(I)). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”).
Regarding claim 27: Von Der Fecht teaches cosmetic auxiliaries and further active ingredients, but does not require salts in the preparation (Von Der Fecht – claim 18, [0068]).
Regarding claim 28: Von Der Fecht teaches incorporation of glycerol (reads on glycerin) in 7-15 wt% [0034].
Regarding claim 29: Von Der Fecht teaches incorporation of plant extracts [0068].
In summary, Von Der Fecht teaches the elements of the instant water-in-oil emulsion, comprising at least two W/O emulsifiers which differ in their HLB value by at most 1, wherein Von Der Fecht presents an advantage of producing a flowable emulsion composition [0065]. Von der Fecht also generally teaches the inclusion of cosmetic auxiliaries such as waxes and oils [0068], esters of fatty acids [0023], and stick [0018] and cream formulations [0057], for application to skin [0035, 0041, 0057], as obvious for application to water-in-oil emulsions (title, abstract). However, Von Der Fecht does not teach the sunflower wax and amount (instant claims 18, 22, and 30), C14-C62 esters (instant claim 24), beeswax (instant claim 26), a lipstick formulation (instant claim 31), and a lip cream formulation (instant claim 32), and the emulsifiers of polyglyceryl-3-polyricinoleate and polyglyceryl-2-sesquioleate and amounts (instant claims 40-41).
Banowski (who is referenced by the disclosure of Von Der Fecht [0018] for information on emulsifiers and oils within cosmetic emulsion formulations, which applies to stick cosmetics [0018]), teaches application of stick [0111] and cream [0002, 0037, 0351] formulations to the lips [0111]. Additionally, Banowski teaches sunflower wax [0047] and beeswax [0047], where the wax component is 2.5-20 wt% [0056]. Note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). Finally, Banowski generally teaches long-chain (including C16-C24) esters in cosmetics [0048].
Lorant (who is referenced by the disclosure of Von Der Fecht [0022] by way of WO 2009/080657 A2 on W/O emulsions [0022]), also teaches that W/O emulsion compositions can be formulated for application to the lips (abstract).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Von Der Fecht with the waxes, esters, and amounts of Banowski (specifically, the sunflower wax, esters, and beeswax) because Von Der Fecht cites Banowski for information on emulsifiers and oils that applies to stick cosmetics [0018], and Von Der Fecht also generally teaches the inclusion of cosmetic auxiliaries such as waxes and oils [0068]. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Furthermore, emulsified waxes impart a soft, light skin feel [0003], as taught by Banowski.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Von Der Fecht to incorporate lipstick and lip cream formulations because Von Der Fecht generally teaches stick [0018] and cream formulations [0057], for application to skin [0035, 0041, 0057], as obvious, and references cited within Von Der Fecht (i.e., Banowski and Lorant) clarify that application of sticks and creams to the lips are obvious applications of the W/O emulsion compositions taught by Von Der Fecht.
Regarding the obviousness of the combined amounts and ingredients of claim 30: Von Der Fecht teaches a composition comprising diisostearoyl polyglyceryl-3 dimer dilinoleate in 0.1-3 wt% (reads on “(a)”) and polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate in 0.1-2.5 wt% (reads on “(b)”) (Von Der Fecht – claims 21 and 25). Banowski (referenced by Von Der Fecht) teaches sunflower wax [0047] (reads on “(c)”), where the wax component is 2.5-20 wt% [0056]. Because the amounts encompass the instant amounts, the instant amounts are obvious: Note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Regarding the obviousness of the emulsions of claim 38-39: Von Der Fecht teaches stable water-in-oil emulsions (W/O emulsion) for cosmetics intended for the skin [0009-0013] that produces desirable highly spreadable, flowable emulsions [0006, 0065] formed by problem-free upscaling process, due to the selection of the particular emulsifiers [0036, 0041], whereby common formulations include stick [0018] and cream formulations [0057]. Thus, the structural aspects that determine the patentability of the compositions claims 38-39 (e.g., flowable emulsion in a cream or stick form, as previously discussed in terms of product-by-process above) are obvious. Von der Fecht does appear to place any particular requirements on the process of making the composition in order to achieve the product and its benefits. The Examiner will address any purported secondary factors (as related to the method of production) in the “response to amendment” section below.
Finally, with regard to the specified emulsifiers of instant claims 40-41 (new), as previously discussed Von Der Fecht teaches compositions incorporation at least two W/O emulsifiers with similar HLBs, that have an overall HLB value <8 in order to retain the advantages of the invention [0041]. Thus, it would be reasonably obvious to a PHOSITA to add or substitute Polyglyceryl-3 polyricinoleate or polyglyceryl-2-sequiolate in the amounts recited by Von Der Fecht, based on HLB value, and reasonably expect the benefit of Von Der Fecht’s disclosure:
Clermont teaches W/O emulsions, whereby Polyglyceryl-3 polyricinoleate is characterized by an HLB value of 4 (i.e., listed alongside diisostearoyl polyglyceryl-3 dimer dilinoleate, as discussed by Von der Fecht) [0063].
Evonik teaches polyglyceryl-2-sequiolate is a W/O emulsifier defined to have an HLB value of ~4 (i.e., listed alongside polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate, as discussed by Von der Fecht) (pg 50).
Claims 18-32 and 38-41 are rejected under 35 U.S.C. 103 as being unpatentable over Von Der Fecht (US20150011654A1), Banowski (DE102008028822A1), Lorant (US20110020258A1), Clermont (EP2921159B1), and Evonik (2019), as applied to claims 18-24, 26-32, and 38-41 above, and in further view of Phoenix Chemical (Advances in Green Chemistry, 2019), as evidenced by Cosmetic Ingredient Review (2013).
As described above, the combined Prior Art teach almost the entirety of the instant composition. Also, Von Der Fecht generally teaches the inclusion of cosmetic auxiliaries and further active ingredients such as waxes and oils [0068], and Banowski generally teaches long-chain (including C16-C24) esters in cosmetics [0048]. However, they do not teach specifically behenyl behenate (instant claim 25).
Phoenix Chemical teaches behenyl behenate (i.e., Pelemol BB) among a number of other related ingredients useful for lipsticks to help stabilize emulsions (pg 3). As evidenced by Cosmetic Ingredient Review, behenyl behenate is a C21 alkyl ester (pg 13, #36).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the combined Prior Art with behenyl behenate (i.e., a C21 alkyl ester) taught by Phoenix Chemical because Von Der Fecht generally teaches the inclusion of cosmetic auxiliaries and further active ingredients such as waxes and oils [0068], and Banowski generally teaches long-chain (including C16-C24) esters in cosmetics [0048]. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Furthermore, a PHOSITA would be motivated to incorporate behenyl behenate because it helps stabilize emulsions (pg 3) as taught by Phoenix Chemical, in which Von Der Fecht teaches W/O emulsions (abstract) for stick cosmetic formulations [0018].
Response to Arguments
Applicants arguments, see pg 7-13, filed 06/05/2026, with respect to the 103 rejection of claims 18-32 under rejection have been fully considered but they are not persuasive. The 103 rejection has been modified with respect to amendments made to the claim set and new added claims. Clermont and Evonik address new claims 40-41.
On page 7-8, Applicant summarizes the status of the Application.
On page 8, Applicant argues that Banowski and Lorant fail to cure specific deficiencies of Von der Fecht without providing a specific argument. Thus, there is no argument to respond to in this section of the remarks.
On page 8-9, Applicant argues that none of the documents teach or suggest a flowable cream or ointment or solid stick W/O emulsion. In response, the Examiner points to Von der Fecht at [0065]: “The cosmetic and/or dermatological preparation according to the invention is a water-in-oil emulsion that is flowable at room temperature…” Thus, Von der Fecht teaches the obviousness of flowable W/O compositions, including sticks [0018] and creams [0057] (meeting the limitations of instant claim 18).
On page 9, Applicant argues that Von der Fecht recommends the presence of substances that are covered under negative limitations of instant claim 18, because they are present in all embodiments. Note that specific embodiments do not define the teachings: “Applicants erroneously point to specific embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” With regard to Von der Fecht, the ingredients under negative limitation are not required by Von der Fecht (i.e., they are optionally included ingredients, because the base/broadest invention is described by Von der Fecht – claim 18, which does not require the instant ingredients under negative limitation), and therefore, it would be obvious for a PHOSITA to exclude them from a composition.
On page 9, Applicant argues that Von der Fecht teaches preferred solid or semisolid lipid components. Thus, Applicant argues Von der Fecht preferably selects non-natural waxes, because Von der Fecht examples do not contain natural wax. . Note that specific/preferred embodiments do not define the teachings: “Applicants erroneously point to specific embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” With regard to Von der Fecht, the lipid components obvious for inclusion are taught very generally where physical form is not specified, nor is the “natural” element specified (i.e., the type of oil being “one or more lipids” that can be incorporated into the compositions in Von der Fecht – claim 29). Therefore, lipid components regardless of physical form are obvious for incorporation (i.e., it should be also noted that the physical form of an ingredient is an inherent property of that ingredient; thus, if the instant ingredients are taught by the Art, then the corresponding physical form of that ingredient is expected). Furthermore, it’s obvious to choose a natural wax such as sunflower wax, because the combined Prior Art establishes them as suitable alternatives to the exemplified embodiments.
On page 10-12, Applicant argues that Von der Fecht and Banowski relate to distinct topical formulations, by providing detailed descriptions of each references and their embodiments. Note, it is the combined Prior Art that demonstrates obviousness: The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. At 420, 82 USPQ2d 1397. Thus, proper rationale has been provided in combining Von der Fecht and Banowski. . Furthermore, when more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. V. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023). However, Von der Fecht and Banowski are both analogous to the claims, and are even analogous to each other, because they all relate to topical cosmetic compositions, wherein analogous art is considered broadly: Applicant is reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. July 22, 2010). Art is analogous if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).
Furthermore, Banowski is directly referenced by the disclosure of Von Der Fecht at [0018] for information on emulsifiers and oils within cosmetic emulsion formulations, which applies to stick cosmetics [0018]. Thus, sufficient rationale is provided for combination of Von der Fecht and Banowski. Applicant’s claim that Banowski only “discloses an extensive reference work on emulsifiers and oils” is a semantic based argument, and the oils used by Banowski are applicable to Von Der Fecht, owing to the fact that Von der Fecht does not limit the type of oil (i.e., “one or more lipids”) that can be incorporated into the compositions (Von der Fecht – claim 29). . Furthermore, as stated before, Von der Fecht and Banowski are both related to topical cosmetic compositions, as analogous art, where it is the teachings of the combined Prior Art that demonstrate obviousness of the claim scope. Note that Von der Fecht discusses a wide range of emulsion types [0002-0003], and Applicant has provided no objective evidence why an oil/wax used in O/W emulsions would not be suitable in a W/O formulation, when Von der Fecht explicitly teaches general incorporation of waxes [0068] in W/O formulations (abstract).
Furthermore, Banowski is analogous to the instant claims: Applicant is reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. July 22, 2010). Art is analogous if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). Against the backdrop of Applicant’s arguments, Banowski teaches emulsifiers and stick compositions for cosmetic use (for example), whereby Applicant’s disclosure relates to emulsifiers (instant claim 18) and stick formulations (instant claim 18).
On page 12-13, Applicant argues that behenyl behenate’s proposed benefit (i.e., richness and/or stabilization effect) is not desirable to Von der Fecht. The Examiner notes that Von der Fecht teaches cosmetic compositions that have good skin feel [0012-0013] and are preferably stable (title) that also correspond to emulsions (abstract). Thus, according to the benefits disclosed by Phoenix Chemical, behenyl behenate (i.e., a C21 alkyl ester) would provide improvement on Von der Fecht’s composition with better richness in skin feel and improved stability, further helping to achieve the outcomes stated by the art as desirable. Furthermore, Applicant has not provided objective evidence in support of their argument against the motivation of incorporating Phoenix Chemical. We note that “picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness.” In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972). In this case, there is no evidence of picking and choosing occurring, as proper rationale has been provided for the combination of references, and proper rationale is provided to combine Phoenix Chemical. . Finally, Von Der Fecht generally teaches the inclusion of cosmetic auxiliaries and further active ingredients such as waxes and oils [0068], and Banowski generally teaches long-chain (including C16-C24) esters in cosmetics [0048].
On page 13, Applicant concludes. The Examiner notes no specific argument related to the product-by-process claim structure of claims 38-39 (as discussed in the 103 rejection).
Correspondence
Applicant's amendment necessitated the new ground 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 extension fee 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 date of this final action.
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/R.P./Examiner, Art Unit 1614 7/13/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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