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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated November 26, 2025 is acknowledged.
Claims 11, 12 and 16-23 are pending.
Claims 1-10 and 13-15 are cancelled.
Claims 11 and 17-20 are currently amended.
Claim 23 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 11, 12 and 16-22 as filed on November 26, 2025 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the substitute abstract, all previous objections to the specification are withdrawn.
In view of the amendment of the claims, all previous claim objections are withdrawn and all previous claim rejections under 35 USC 102 are withdrawn.
Applicant’s arguments and the 132 Declaration of Marine Fabris 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on September 10, 2025 and November 28, 2025 were considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it employs legal phraseology, e.g., “said”, in the 2nd to last line. Correction is required. See MPEP § 608.01(b).
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 21 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 21 recites a make-up product for the lips, however, claim 11 as currently amended and from which claim 21 depends recites a lipstick. Because a lipstick is understood as a make-up product for the lips, claim 21 does not further limit claim 11. Claim 22 is included in this rejection because it depends from claim 21.
Claim 22 recites a lipstick, a lip contour pencil or a lip balm, however, claim 11 as currently amended and from which claim 22 depends recites a lipstick. The embodiment of claim 22 drawn to a lipstick is not further limiting of claim 11 and the embodiments of claim 22 drawn to a pencil or a balm appear to omit the limitation of claim 11 of a lipstick.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 11, 12 and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Chou et al. (US 2009/0092567, published April 9, 2009, IDS reference filed July 20, 2023) as evidenced by Prospector® “DOWSIL™ 9041 Silicone Elastomer Blend” and “DOWSIL™ 9506 Powder,” printed 2025, of record, and further in view of Ravni et al. (WO 2018/142076, published August 9, 2018, as evidenced by US 2019/0388306, of record).
Chou teaches compositions comprising at least one oil, at least one silicone elastomer, at least one wax, at least one filler, and at least one coloring agent and exemplifies an embodiment of an anhydrous lip mousse pot (lipstick, lipbalm) composition comprising inter alia (title; abstract; claims; paragraph [0168], Example A):
dimethicone – dimethicone elastomer (DC9041 (a mixture of silicone elastomers in dimethicone (first (non-polar) oil) as evidenced by Prospector®)),
dimethicone – vinyl dimethicone elastomer (DC9506 (elastomer powder as evidenced by Prospector®)),
6.46 wt% hydrogenated polyisobutene (non-polar oil distinct from the first oil),
3.00 wt% beeswax (polar wax), as required by instant claim 17,
3.60 wt% ozokerite wax (non-polar as evidenced by page 10, lines 10-14 of the instant specification), as required by instant claims 16, 17, and
13 wt% pigments and pearls, as required by instant claims 12, 20-22.
Chou teaches candelilla wax is an alternative wax of natural origin to beeswax (paragraph [0110]), rendering obvious the substitution thereof. See MPEP 2144.06.
Chou further teaches the compositions comprise at least 30 wt% oil, and comprise more non-silicone oil than silicone oil (claims 1, 2; paragraphs [0012], [0107]), as required by instant claim 19. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Chou further exemplifies an embodiment comprising 15.4 wt% hydrogenated polyisobutene (paragraph [0170], Example C).
Chou further teaches the compositions comprise 5 to 30 wt% wax (claims 8, 9).
Chou, as a whole, is drawn to lipsticks (e.g., paragraph [0006]).
Chou does not teach the non-polar oil is selected from the group consisting of polybutylene, hydrogenated polyisobutylene, decene / butene copolymers, polybutene / polyisobutene copolymers, polydecene or/and hydrogenated polydecene as required by claim 1.
Chou does not teach the non-polar oil is selected from hydrogenated polydecene as required by claim 18.
These deficiencies are made up for in the teachings of Ravni.
Ravni teaches cosmetics for care of the lips (title; abstract; claims). Hydrogenated polyisobutene is a glossy hydrocarbon oil; alternatives include hydrogenated polydecene (paragraphs [0092], [0093]), as required by instant claim 18.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute hydrogenated polydecene as taught by Ravni for the hydrogenated polyisobutene in the compositions of Chou inclusive of compositions in accordance with Example A because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. The combined teachings of Chou and Ravni therefore render obvious compositions comprising at least 30 wt% of at least one oil inclusive of hydrogenated polydecene. Additionally, the combined teachings of Chou and Ravni motivate the optimization of the hydrogenated polydecene content in order to reap the expected benefit of gloss. It is prima facie obvious to optimize such result-effective variables within prior art conditions or through routine experimentation. See MPEP 2144.05.
Claims 11, 12 and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Dop et al. (US 2017/0079902, published March 23, 2017, of record).
Dop teaches an anhydrous composition comprising (title; abstract; claims):
30 to 65 wt% of solid particles inclusive of colored solid particles wherein the content of colored particles is 5 to 25 wt% (claim 6, 7; paragraph [0130]), as required by instant claim 20,
a mixture comprising at least one organopolysiloxane elastomer conveyed in at least a first non-volatile oil,
10 to 45 wt% of a binder phase comprising at least a second non-volatile oil identical to or preferably different from the first chosen from inter alia apolar oils chosen from inter alia decene / butene copolymers or/and hydrogenated polydecene, at least one pasty compound, and optionally at least one wax (claims 10, 11; paragraphs [0143], [0308], [0309]), as required by instant claims 12, 18.
The composition is in powder or paste form (lipstick, lipbalm) and is intended to be applied to the lips (abstract), as required by instant claims 21, 22. The composition may further comprise fillers inclusive of organopolysiloxane powders other than the at least one organopolysiloxane elastomer conveyed in the at least first non-volatile oil (paragraphs [0131], [0140], [0141]).
The content of the second non-volatile oil ranges from 5 to 40 wt% (paragraph [0313]), as required by instant claim 19.
The at least one wax may comprise an apolar wax or/and a polar wax; according to a preferred embodiment, the composition comprises candelilla wax (paragraphs [0358]-[0402], in particular [0358], [0367], [0371], [0398]), as required by instant claim 16. The content of wax does not exceed 5 wt% (abstract; paragraph [0402]), as required by instant claim 17.
Dop further teaches lipsticks in a dish (paragraphs [0003], [0431], [0437]).
Dop fails to specifically teach or exemplify an embodiment of composition falling entirely within the scope of those instantly claimed and therefore anticipation cannot be found. However, a reference is analyzed using its broadest teachings (MPEP § 2123) and “[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).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare anhydrous compositions intended for application to the lips according to Dop inclusive of lipsticks comprising 5 to 25 wt% colored particles, a mixture comprising at least one organopolysiloxane elastomer conveyed in a least a first non-volatile oil, 5 to 40 wt% of a second non-volatile oil preferably different from the first and chosen from inter alia decene / butene copolymers or/and hydrogenated polydecene, up to 5 wt% of at least one wax comprising an apolar wax and comprising candelilla wax, and optionally fillers inclusive of organopolysiloxane powders other than the at least one organopolysiloxane elastomer conveyed in a least a first non-volatile oil because such are embodiments of composition possessed by Dop. Such embodiments render obvious those instantly claimed because [i]n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Response to Arguments and 132 Declaration: Claim Rejections - 35 USC § 103
Applicant’s arguments and the Declaration have been fully considered but they are not persuasive.
Applicant at pages 9-10 of the Remarks submits that Example B of Chou comprising jojoba esters is a closer example to the claims as amended, cites to page 1, lines 21-24 of the instant specification in support of an allegation of unexpected stability, and cites to Example 1 of the instant specification and to the Declaration drawn to the modification of Example 1 to comprise various grades of jojoba wax in lieu of candelilla wax. Applicant and the Declarant conclude the results of the substitution were not predictable. This is not found persuasive at least because it is not entirely clear that the jojoba esters of the mouse lip stick of Example B of Chou are in fact a wax, e.g., a solid at room temperature. As evidenced by Wikipedia, “jojoba esters” can be liquids or waxes. The comparative data within the Declaration employ various grades of Floraester® as the jojoba wax. The failure of the substitution in Applicant’s Example 1 is interesting because the instant specification at pages 9-10 embraces jojoba wax as the polar wax, and expressly teaches jojoba wax as one of five alternatives to candelilla wax. However, the issue is not whether the modification of Example 1 of the instant specification results in slightly different properties but rather whether the differences between the instantly claimed compositions and the compositions of the prior art are unexpected. See MPEP 716.02. Example 1 is not considered to be commensurate with the genus of compositions claimed which embrace inter alia any amount of any elastomer, any amount of candelilla wax, waxes in addition to candelilla, and oils in addition to those within the circumscribed group of hydrocarbons. Based on the evidence of record, the genus of compositions claimed are an obvious variant of those of the prior art. See MPEP 716.01 (d).
At page 10 Applicant notes that Dop does not teach lipsticks. This is not found persuasive because Dop teaches lipsticks (paragraphs [0003], [0431], [0437]).
At page 10 Applicant cites to paragraph [0397] of Dop and again alleges unexpected improved results associated with candelilla wax. This is not found persuasive because paragraph [0398] of Dop discloses candelilla wax as the preferred polar wax. This is also not found persuasive because Dop is in possession of compositions as instantly claimed and there is no evidence of record that, for example, the embodiments of Dop comprising candelilla wax are drawn to a different invention than the broader genus.
Therefore, the rejections of record are properly maintained in modified form as necessitated by Applicant’s amendments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11, 12 and 16-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 16, 18-20, 22, 23 and 25 of copending Application No. 18/005,809 in view of Dop et al. (US 2017/0079902, published March 23, 2017, of record).
The instant claims are drawn to a lipstick composition comprising, in a physiologically acceptable medium, at least (a) an organopolysiloxane elastomer conveyed in a first oil and an organopolysiloxane elastomer powder distinct from the organopolysiloxane elastomer conveyed in the first oil, (b) 15 to 45 wt% of a non-polar oil distinct from the first oil selected from inter alia hydrogenated polydecene, (c) a polar wax that is candelilla wax, and (d) pigments with a total content of greater than or equal to 10 wt%, 10 to 20 wt%. The composition may be anhydrous or may further comprise at least one non-polar wax. The total content of wax may be greater than or equal to 5 wt%. The non-polar oil may range from 20 to 40 wt%. The composition may be a product for lips or a lipstick.
The copending claims are drawn to a solid anhydrous composition comprising, in a cosmetically acceptable medium, at least (a) an organopolysiloxane elastomer conveyed in a first oil and an organopolysiloxane elastomer powder distinct from the organopolysiloxane elastomer conveyed in the first oil, (b) a non-polar oil distinct from the first oil, and (c) one or more polar waxes, wherein the total content of wax is greater than or equal to 5 wt%. The polar wax may be candelilla or the composition may further comprise a non-polar wax or the composition may further comprise coloring materials or the composition may be a lipstick.
The compositions of the conflicting, copending claims differ from the instantly claimed compositions with respect to the amount of pigments and with respect to the amount and species of non-polar oil distinct from the first oil. However, these differences are bridged by the teachings of Dop as elaborated supra. In view of Dop it would have been obvious to modify the compositions of the copending claims to comprise 5 to 25 wt% of the coloring materials and to comprise 5 to 40 wt% of the non-polar oils chosen from inter alia decene / butene copolymers or/and hydrogenated polydecene because such amounts and species are suitable for anhydrous compositions comprising organopolysiloxane elastomers intended to be applied to the lips.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments: Double Patenting
Applicant’s request for reconsideration of the double patenting rejection is acknowledged, however, the rejection is properly maintained in modified form as necessitated by Applicant’s amendments.
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 ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner , Art Unit 1600