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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 16, 2026 has been entered.
Claims 11, 12, 17, 19, 20, 23 and 24 are pending.
Claims 1-10, 13-15, 18, 21 and 22 are cancelled.
Claim 11 is currently amended.
Claim 24 is new.
Claim 23 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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, 17, 19, 20 and 24 as filed on July 16, 2026 are under consideration.
Terminal Disclaimer
The Terminal Disclaimer filed July 16, 2026 over Application No. 18/005,809 is acknowledged.
Withdrawn Objections / Rejections
In view of the amendment of the abstract, all previous objections to the specification are withdrawn.
In view of the amendment of the claims, all previous claim rejections under 35 USC 112(d) are withdrawn and all previous claim rejections under 35 USC 103 are withdrawn.
In view of the Terminal Disclaimer and the approval thereof, the double patenting rejection over Application No. 18/005,809 is withdrawn.
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Objections
Claims 11, 19 and 24 are objected to because of the following informalities:
Claim 11, first clause under 2nd (new) wherein and claim 24, first clause: “a first oil” should recite “the first oil” to reference the antecedent.
Claim 11, first clause under 2nd (new) wherein and claim 24, first clause: “1 % to 10%” should presumably recite “1% to 10%” and “2 % to 7%” should recite “2% to 7%”.
Claim 11, second clause under 2nd (new) wherein and claim 24, second clause: “0.5 to 10%” should presumably recite “0.5% to 10%” consistent with the formatting style of the claims and “1 to 5%” should recite “1% to 5%”.
Claim 11, third clause under 2nd (new) wherein, claim 19, and claim 24, third clause: “non-polar oil” should presumably recite “the non-polar oil” to reference the antecedent.
Claim 11, last clause and claim 24, penultimate clause: “wax(es)” should presumably recite “wax” and the comma after the range should presumably be deleted consistent with the formatting style of the claim.
Claim 24: the preamble should recite “The cosmetic composition according to claim” consistent with the other dependent claims, or vice versa.
Appropriate correction is required.
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.
Claim 17 is 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 17 recites the total content of wax is greater than or equal to 5 wt%, however, claim 11 as currently amended and from which claim 17 depends recites a total wax(es) content from 2 to 15 wt%. Because greater than or equal to 5 wt% encompasses values in excess of 15 wt%, claim 17 fails to include all of the limitations of claim 11.
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.
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, 17, 19, 20 and 24 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 in view of Arditty et al. (US 2015/0110884, published April 23, 2015, of record).
Chou teaches solid, substantially anhydrous compositions comprising (title; abstract; claims, paragraph [0148]), as required by instant claim 12:
about 25 to 70 wt% of at least one oil (paragraphs [0091]-[0107], in particular [0107]; claims 2, 5), as required by instant claims 19, 24,
about 0.1 to 25 wt% of at least one silicone elastomer (paragraphs [0033]-[0090], in particular [0090]; claim 10),
about 0.5 to 50 wt%, most preferably about 10 to 20 wt% of at least one wax (paragraphs [0108]-[0111], in particular [0111]; claims 8, 9), as required by instant claims 17, 24,
about 0.5 to 50 wt% of at least one filler (paragraphs [0118]-[0121], in particular [0121]), and
up to 40 wt% such as from 2 to 20 wt% of at least one coloring agent (paragraphs [0112]-[0117], in particular [0117]), as required by instant claims 20, 24.
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. The compositions are lipsticks (paragraphs [0002], [0006]).
Chou exemplifies an embodiment of an anhydrous lip mousse pot (lipstick) composition comprising inter alia (paragraph [0168]):
6.30 wt% dimethicone – dimethicone elastomer (DC9041 (a mixture of silicone elastomers in dimethicone (first (non-polar) oil) as evidenced by Prospector®)),
1.82 wt% 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 claims 17, 24,
3.60 wt% ozokerite wax (non-polar as evidenced by page 10, lines 10-14 of the instant specification), as required by instant claim 17, 24, and
13 wt% pigments and pearls, as required by instant claim 20, 24.
Chou further teaches suitable waxes include candelilla wax and polyethylene waxes (paragraph [0110]).
Chou further exemplifies an embodiment comprising 15.4 wt% hydrogenated polyisobutene (paragraph [0170], Example C).
Chou does not teach or exemplify an embodiment comprising 0.5 to 10 wt% polar wax that is candelilla wax, 0.5 to 10 wt% non-polar wax that is polyethylene wax, and 15 to 45 wt% non-polar oil that is hydrogenated polydecene as required by claim 11.
Chou does not teach 1 to 5 wt% polar wax that is candelilla wax, 2 to 8 wt% non-polar wax that is polyethylene wax, and 20 to 40 wt% non-polar oil that is hydrogenated polydecene as required by claim 24.
These deficiencies are made up for in the teachings of Arditty.
Arditty teaches anhydrous cosmetic compositions for the lips comprising at least one fatty phase comprising 0.5 to 20 wt% of at least one organopolysiloxane elastomer powder, 0.5 to 20 wt% of at least one organopolysiloxane elastomer conveyed in a first oil, at least one wax and at least one second oil (title; abstract; claims, in particular 1, 4, 7). Waxes include non-polar waxes inclusive of ozokerite and polyethylene waxes (paragraphs [0122]-[0136], in particular [0127], [0130]; claim 12). The compositions comprise 0.5 to 10 wt% non-polar wax (paragraph [0135]). Waxes include polar waxes inclusive of beeswax and candelilla wax (paragraphs [0137]-[0170], in particular [0162]-[0163]). The compositions comprise 0.5 to 10 wt% polar wax (paragraph [0167]). The at least one second oil is preferably chosen from non-volatile hydrocarbon oils inclusive of hydrogenated polydecenes or hydrogenated polyisobutenes (paragraphs [0171]-[0280], in particular [0176], [0206], [0214]-[0216]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the at least one wax of the compositions of Chou to comprise non-polar waxes inclusive of polyethylene waxes in amounts from 0.5 to 10 wt% and polar waxes inclusive of candelilla wax in amounts from 0.5 to 10 wt% as taught by Arditty because Chou embraces mixtures of waxes and because Chou exemplifies an embodiment comprising a combination of the polar wax beeswax and the non-polar wax ozokerite. Additionally or/and alternatively, it would have been obvious to one of ordinary skill in the art to substitute candelilla wax as taught by Arditty for the beeswax in the exemplary embodiment of Chou and to substitute polyethylene wax as taught by Arditty for the ozokerite wax in the exemplary embodiment of Chou because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Chou embraces compositions comprising candelilla wax and polyethylene waxes in a total amount ranging from about 0.5 to 50 wt%.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the at least one oil of the compositions of Chou to comprise oils as taught by Arditty inclusive of non-volatile hydrocarbon oils inclusive of hydrogenated polydecenes because such oils are suitable for including within compositions comprising elastomers and waxes intended to be applied to the lips. Additionally or/and alternatively, it would have been obvious to one of ordinary skill in the art to substitute hydrogenated polydecenes as taught by Arditty for the hydrogenated polyisobutene in the exemplary embodiments of Chou because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. It would have been obvious to one of ordinary skill in the art to modify the exemplary embodiments of Chou in view of Arditty to comprise about 25 to 70 wt% of the at least one oil because the broader teachings of Chou expressly teach such.
Claims 11, 12, 17, 19, 20 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Dop et al. (US 2017/0079902, published March 23, 2017, of record) in view of Arditty et al. (US 2015/0110884, published April 23, 2015, of record).
Dop teaches an anhydrous composition comprising (title; abstract; claims), as required by instant claim 12:
30 to 65 wt% of solid particles inclusive of colored solid particles wherein the content of colored particles is 5 to 25 wt% (claims 6, 7; paragraph [0130]), as required by instant claims 20, 24,
10 to 40 wt% of a mixture comprising at least one organopolysiloxane elastomer conveyed in at least a first non-volatile oil, wherein the elastomer comprises 2 to 10 wt% (dry matter) (paragraph [0099]), as required by instant claim 24,
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 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 19, 24.
See MPEP 2144.05. The composition is in powder or paste form and is intended to be applied to the lips (lipstick) (abstract; paragraph [0003]). The composition may further comprise 10 to 40 wt% 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]). Example 2 comprises 2 wt% vinyl dimethicone/methicone silsesquioxane crosspolymer (filler, organopolysiloxane elastomer powder) (paragraph [0433]), as required by instant claim 24.
The content of the second non-volatile oil ranges from 5 to 40 wt% (paragraph [0313]), as required by instant claims 19, 24.
The at least one wax may comprise an apolar wax such as polyethylene waxes or/and a polar wax such as candelilla wax; according to a preferred embodiment, the composition comprises candelilla wax (paragraphs [0358]-[0402], in particular [0358], [0367], [0370], [0371], [0397], [0398]). The content of wax does not exceed 5 wt% (abstract; paragraph [0402]), as required by instant claims 17, 24.
Dop further teaches lipsticks in a dish (paragraphs [0003], [0431], [0437]).
Dop does not specifically teach or exemplify an embodiment comprising 0.5 to 10 wt% polar wax that is candelilla wax and 0.5 to 10 wt% non-polar wax that is polyethylene wax as required by claim 11.
Dop does not specifically teach or exemplify an embodiment comprising 1 to 5 wt% polar wax that is candelilla wax and 2 to 8 wt% non-polar wax that is polyethylene wax as required by claim 24.
These deficiencies are made up for in the teachings of Arditty.
Arditty teaches anhydrous cosmetic compositions for the lips comprising at least one fatty phase comprising 0.5 to 20 wt% of at least one organopolysiloxane elastomer powder, 0.5 to 20 wt% of at least one organopolysiloxane elastomer conveyed in a first oil, at least one wax and at least one second oil (title; abstract; claims, in particular 1, 4, 7). Waxes include non-polar waxes inclusive of polyethylene waxes (paragraphs [0122]-[0136], in particular [0127], [0130]; claim 12). The compositions comprise 0.5 to 10 wt% non-polar wax (paragraph [0135]). Waxes include polar waxes and candelilla wax (paragraphs [0137]-[0170], in particular [0162]-[0163]). The compositions comprise 0.5 to 10 wt% polar wax (paragraph [0167]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the at least one wax of the compositions of Dop to comprise non-polar waxes inclusive of polyethylene waxes in amounts from 0.5 to 10 wt% and polar waxes inclusive of candelilla wax in amounts from 0.5 to 10 wt% as taught by Arditty because Dop embraces mixtures of waxes inclusive of apolar and polar. Additionally or/and alternatively, it would have been obvious to one of ordinary skill in the art modify the apolar waxes of the compositions of Dop to comprise 0.5 to 10 wt% of the compositions as taught by Arditty and to modify the polar waxes of the compositions of Dop to comprise 0.5 to 10 wt% as taught by Arditty because such is suitable for suitable for including within compositions comprising elastomers and oils intended to be applied to the lips
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant at page 9 of the Remarks refers to the Declaration and asserts jojoba esters as employed in Example B (paragraph [0169]) of Chou and as employed in modified example 1 of the instant specification are in fact waxes. This line of argument remains unpersuasive for at least the following reasons. The waxes of Chou are defined as solids at room temperature, having a melting point greater than 40 ºC (paragraph [0109]). Chou exemplifies candelilla wax (paragraph [0110]). As evidenced by Wikipedia (copy provided), candelilla wax is hard and brittle with a melting point of 68.5 to 72.5 ºC. In contrast, jojoba esters per se and jojoba esters sold under the name Floraester™ as employed in the Declaration encompass materials of variable viscosity inclusive of liquids as evidenced by Wikipedia (of record) and by Cargill (copy provided). That is, the term “jojoba ester” is understood to those skilled in the art as encompassing a genus. There is no basis in Chou for concluding the jojoba esters as employed in Example B fall within the scope of waxes as defined by Chou. However, this entire tangent is moot because all the Declaration shows is that the instant Application fails to comply with 35 USC 112 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. That the Declarant was surprised to discover jojoba waxes could not in fac be substituted for candelilla wax when the specification expressly states the contrary is problematic. However, the Declaration does not provide a comparison to Chou and does not evidence an unexpected result within the meaning of MPEP 716.02.
Therefore, the rejections of record are properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamanoi (JP 2020-147502 A, as evidenced by the Google translation) teaches an oily lip cosmetic comprising (A) an uncoated elastomer, (B) a coated elastomer, (C) a wax and (D) an oil agent (title; abstract; claims).
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.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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