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 . Claims included in the prosecution are claims 1, 5, 7 and 9-11.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/17/2025 has been entered.
Applicants' arguments, filed 11/17/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection.
Claim 10 recites wherein the sorbitan sesquiisostearate is in the amount of about 0.25%. The claim fails to comply with the written description requirement since there is no support for this limitation. The specification does not disclose wherein the amount of sorbitan sesquiisostearate may be slightly less than 0.25% or slightly more than 0.25%. The specification discloses wherein sorbitan sesquiisostearate may be exactly 0.25% in Table 1.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is 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.
Claim 9 recites the limitation "the at least one coloring pigment" in the first line. There is insufficient antecedent basis for this limitation in the claim. Claim 9 depends from claim 1 and claim 1 does not recite at least one coloring pigment. Therefore, the scope of the at least one coloring pigment in claim 9 is unclear.
Response to Arguments
The rejection is maintained since claim 1 does not recite at least one coloring pigment. It is unclear whether the at least one coloring pigment is referring to the at least two kinds of pigments in claim 1 or is referring to another pigment in addition to the at least two kinds of pigments.
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.
1. Claims 1, 5, 7, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Camus et al. (US 2005/0036964, Feb. 17, 2005) (hereinafter Camus) in view of Wei et al. (US 2012/0276031, Nov. 1, 2012) (hereinafter Wei), Blin et al. (US 2005/0106197, May 19, 2005) (hereinafter Blin), and Russ et al. (US 2006/0067960, Mar. 30, 2006) (hereinafter Russ).
Camus discloses a composition capable of lightening a dark skin while at the same time giving a natural makeup result (¶ [0007]). The composition is of foundation type comprising, in a physiologically acceptable medium, at least one coloring agent (¶ [0029]). The composition has a lightness L* of between 30 and 40 (¶ [0030]). Measurement of L* is in the CIE 1976 Space (¶ [0081]). The coloring agent(s) may be present in the composition of foundation type in a content ranging from 0.5% to 30% by weight (¶ [0136]). The coloring agents may be treated in order to make them hydrophobic (¶ [0150]). Suitable coloring agents include yellow iron oxide coated with perfluoroalkyl phosphate, titanium oxide treated with alumina, and mixtures thereof (¶ [0154]). The composition of foundation type may be a water-in-oil emulsion (¶ [0295]). The fatty phase may comprise at least one volatile or non-volatile oil or a mixture thereof (¶ [0196]). These volatile or non-volatile oils may be hydrocarbon-based oils, silicone oils, or mixtures thereof (¶ [0199]). Volatile oils that may be used include volatile linear silicone oils (¶ [0201]). The volatile oil may be present in a composition in a content ranging from 0.1% to 98% by weight (¶ [0202]). The non-volatile oils may be present in a composition in a content ranging from 0.01% to 90% by weight (¶ [0213]). The composition of foundation type may also contain emulsifying surfactants present especially in a proportion ranging from 0.1 to 30% by weight (¶ [0226]). These surfactants may be nonionic surfactants (¶ [0227]). The composition may comprise polyvinylpyrrolidones (¶ [0260]).
Camus differs from the instant claims insofar as not disclosing wherein the coloring agents have different particle diameters.
However, Wei discloses that a cosmetic composition comprising a mixture of metal oxide pigments (e.g., titanium dioxide) of various sizes and shapes may simultaneously provide high coverage on the skin and achieve a natural look characterized by high diffuse transmittance (¶ [0009]). Such a cosmetic may be a foundation (¶ [0012]). Fig. 1 is a schematic representation of the light bending effect of traditional high refractive pigments and a mixture of metal oxide particles of various sizes and shapes (¶ [0014]). Suitable pigments include yellow iron oxide and titanium oxides (¶ [0022]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the coloring agents of Camus to have different particle diameters motivated by the desire to have the composition simultaneously provide high coverage on the skin and achieve a natural look characterized by high diffuse transmittance as taught by Wei.
The combined teachings of Camus and Wei do not teach wherein the composition comprises behenic acid.
However, Blin discloses a cosmetic composition for making up skin (abstract). The non-volatile liquid fatty phase of the composition comprises at least one non-silicone non-volatile oil, such as a non-volatile hydrocarbon-based oil (¶ [0250]). Suitable non-silicone non-volatile oils include behenic acid (¶ [0254]). The composition may be in the form of a water-in-oil emulsion (¶ [0287]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Camus discloses wherein the composition comprises non-volatile oils. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated behenic acid into the composition of Camus since it is a known and effective non-volatile oil for water-in-oil emulsions as taught by Blin.
The combined teachings of Camus, Wei, and Blin do not teach wherein the composition comprises sorbitan sesquiisostearate.
However, Russ discloses a cosmetic composition (abstract). The composition may be in the form of an emulsion (¶ [0033]). The composition may comprise surfactants such as sorbitan sesquiisostearate (¶ [0083]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Camus discloses wherein the composition comprises a surfactant. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated sorbitan sesquiisostearate into the composition of Camus since it is a known and effective surfactant for cosmetic emulsions as taught by Russ.
2. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Camus et al. (US 2005/0036964, Feb. 17, 2005) (hereinafter Camus) in view of Wei et al. (US 2012/0276031, Nov. 1, 2012) (hereinafter Wei), Blin et al. (US 2005/0106197, May 19, 2005) (hereinafter Blin), Russ et al. (US 2006/0067960, Mar. 30, 2006) (hereinafter Russ), and further in view of Ogawa et al. (JP 2007223976-A, Sep. 6, 2007) (hereinafter Ogawa).
The teachings of Camus, Wei, Blin, and Russ are discussed above. Camus, Wei, Blin, and Russ do not teach wherein the composition has a lightness L* of 24 or less.
However, Ogawa discloses a correcting method for covering leukoderma parts of pigmentary skin diseases using color tones within a specific range. The correcting method comprises applying a composition having a color tone with an L* value of ≤ 45, and a* value of ≤ 10, and a b* value of ≤ 25 (abstract). The method corrects a color difference between a healthy skin site and a disease site using a composition having hue and brightness (Technical Feature). The composition contains a coloring material and a coating agent (page 6 of translation, sixth paragraph). Suitable coloring materials include inorganic pigments such as iron oxide and titanium oxide (page 6 of translation, seventh paragraph). Suitable coating agents include polyvinylpyrrlidone (page 6, penultimate paragraph).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have modified the composition of Camus to have a lightness L* of ≤ 45 motivated by the desire to correct a color difference between a healthy skin site and a disease site as taught by Ogawa. One of ordinary skill in the art would have modified the composition to have a lightness less than 30 depending on the severity of the color difference. One of ordinary skill in the art would have had a reasonable expectation of success since Ogawa discloses wherein coloring materials and coating agents are needed and Camus discloses these components.
Response to Arguments
Applicant argues that the claimed invention has surprising and unexpected results as shown in Table 1 of the specification as filed.
The Examiner submits that although Applicant’s showing appears to be probative of unexpected results, the independent claim is not commensurate in scope with Applicant’s showing. Instant claim 1 does not recite an amount of sorbitan sesquiisostearate. One of ordinary skill in the art would not reasonably expect all amounts of sorbitan sesquiisostearate to be reasonably representative of 0.25% since according to page 5 of the instant specification, surfactants are included for improving dispersibility and a negligible amount of sorbitan sesquiisostearate would not reasonably improve dispersibility, which would affect color streak. This is shown in Comparative Ex. 1 which does not comprise sorbitan sesquiisostearate and has a color streak grade of D.
Moreover, instant claim 1 does not recite wherein the composition comprises a volatile silicone oil and an amount thereof. One of ordinary skill in the art would not reasonably expect the same results as the showing without a volatile silicone oil since unexpected results with absence of syneresis requires oil because one would expect a composition without oil to have an absence of syneresis. Also, the amount of volatile silicone oil should be recited in instant claim 1 since one would reasonably expect a composition with negligible amount of oil to have an absence of syneresis. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1, 5, 7 and 9-11 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614