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 .
Election/Restrictions
Applicant’s election of Group I (claims 18-32) in the reply filed on 12/01/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Specifically, Applicant has not clarified whether the restriction is made with or without traverse. Claims 33-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Note this second restriction requirement occurred because the first restriction (filed 8/12/2025) led to Applicant rewriting and refining the claims (filed 8/29/2025), leading to a different numbering system, where the initial restriction numbering designation no longer applied. Applicant then requested a new written restriction requirement, as discussed by telephone, which was sent in agreement.
Priority
The present application is a National Stage entry of International application PCT/EP2021/061399 filed 04/30/2021, which claims the benefit of Foreign application DE10 2020 003 169.2 filed 05/27/2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55, although it is noted that no English translation was provided.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 05/25/2023, in the matter of Application N° 17/999,244. Said documents have been entered on the record. The Examiner further acknowledges the following:
Claims 18-37 are pending.
Claims 33-37 are withdrawn from consideration as directed to non-elected inventions.
Claims 18-32 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 and 26-32 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) and Lorant (US20110020258A1; same patent family as WO 2009/080657 A2 which is directly discussed by Von Der Fecht).
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 (with emphasis understood on “mineral oil-free” from the Application title.
Further note that the “free from” negative limitations do not apply if the Art teaches the ingredients as optionally included; thus, it would be obvious to preclude these ingredients from a composition. The additional dependent claims further narrow the composition.
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].
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).
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, 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).
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)).
Claims 18-32 are rejected under 35 U.S.C. 103 as being unpatentable over Von Der Fecht (US20150011654A1), Banowski (DE102008028822A1), and Lorant (US20110020258A1), as applied to claims 18-24 and 26-32 above, and in further view of Phoenix Chemical (Advances in Green Chemistry, 2019), as evidenced by Cosmetic Ingredient Review (2013).
As described above, Von Der Fecht, Banowski, and Lorant teach almost the entirety of the instant composition. 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 Von Der Fecht and Banowski 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].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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/R.P./Examiner, Art Unit 1614 1/22/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614