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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2026 has been entered.
Formal Matters
Receipt of Applicant’s response dated 07/01/2026 is acknowledged.
Claims 1 and 3-13 are pending.
Claim 2 is canceled.
Claim 13 is new.
Claims 1 and 9 are amended.
Claims 9-10 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 4 and 11 remain withdrawn from consideration as being drawn to nonelected species.
Claims 1, 3, 5-8 and 12-13 are under consideration in the instant Office action to the extent of the elected species, i.e., the at least one hydroxyl compound is glycerol, the fillers comprising the particulate solid phase is hydrophilic treated pigments, the at least one oil comprising the oily phase is an undecane-tridecane mixture, the suspending agents is hectorite, the cohesion agents is fatty esters, and the composition is in the form of a protective foundation powder.
REJECTIONS WITHDRAWN
The obviousness rejections of claims 1-3, 5-7, and 12 over Zamyatin et al in view of Dumousseaux et al and of claim 8 over Zamyatin et al in view of Dumousseaux et al and further in view of Yang et al set forth in the Office action dated 04/20/2026 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 3 is objected to because the word “of” appearing before “from 5%” in line 3 should be deleted for grammatical correctness.
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 3 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 3 recites “said at least one hydroxyl compound selected from polyols, glycol ethers and mixtures thereof” and depends on claim 1 which recites “at least one hydroxyl compound which is glycerol”. Because claim 1 limits the at least one hydroxyl compound to glycerol, but claim 3 recites the broader scope of at least one hydroxyl compound being selected from polyols, glycol ethers and mixtures thereof, claim 3 is rejected for failing to further limit the subject matter of claim 1 and for failing to include all of the limitations of claim 1.
The Examiner suggests amending “at least one hydroxyl compound selected from polyols, glycol ethers and mixtures thereof” in claim 3 to “glycerol” in order to overcome this rejection.
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, 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.
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 1, 3, 5-7, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Zamyatin et al (US 2007/0218024 A1, published 09/20/2007, cited in Notice of References Cited 11/25/2025) in view of Dumousseaux et al (FR 2952822 A1, published 05/27/2011, cited in Notice of References Cited 11/25/2025).
Zamyatin et al teach a powdered water cosmetic composition, wherein ‘powdered water composition’ refers to a composition that exists in the dry powder form yet contains appreciable amounts of water, suitable for use on keratin surfaces i.e. the skin, lips, or lashes as lipsticks, eye shadows, foundations, mascaras, eye liners, or powders (See entire document, e.g., Abstract, [0002], [0008]-[0009]).
The powdered water cosmetic composition may comprise a water phase, an oil phase, and a particulate phase (e.g., Abstract, [0010], [0035]).
The powdered water cosmetic composition generally contains from about 1-85%, preferably from about 2-60%, more preferably from about 5-55% by weight water (e.g., [0022]). The powdered water cosmetic composition may comprise one or more humectants or stabilizers in the water phase from about 0.01-30%, preferably 0.5-25%, more preferably 1-20% by weight of the total composition, wherein glycerin (i.e., glycerol) is exemplified in a powdered water cosmetic composition suitable as a face powder or foundation makeup (e.g., [0056], [0065]).
The powdered water cosmetic composition comprises activatable pigments which may be in the particulate phase, that may be treated with materials hydrophilic in character (e.g., [0029], [0035]). Particularly preferred is where the composition contains activatable water soluble iron oxide pigments, which are coated or treated with galactoarabinan, which is a polysaccharide obtained from the extraction of the larch tree Larix and such pigments are suspending in the particle phase of the dry water composition; such pigments are available from Color Techniques under the GA series, e.g., a suitable red iron oxide is GA-7293 hydrophilic red iron oxide sold by Color Techniques (e.g., [0041]).
The powdered water cosmetic composition may comprise non-activatable powders including hectorite, wherein ‘non-activatable’ refers to no color change occurring upon application to the keratinous surface (e.g., [0048], [0052]).
Zamyatin et al do not teach specific motivation for the inclusion of one or more humectants or stabilizers being glycerin in the composition, the composition being a hydrating composition, the composition being a compact powder, or the composition being a protective foundation powder.
These deficiencies are made up for in the teachings of Dumousseaux et al.
Dumousseaux et al teach an anhydrous powdery cosmetic composition for making up and/or caring for a keratin material, capable of providing improved application and hydration properties, that may be in the form of a foundation, a blush, an eyeshadow, a concealer, or an eyeliner and may be in the form of a “compact” powder or a “free” powder (See entire document, e.g., Par. 1 and 10 of Description on Page 2 of English translation). Dumousseaux et al teach that a well-known approach in the art to making powders more comfortable and less drying to the skin include introduction into the powders liquid moisturizing compounds, such as glycerine (i.e., glycerol) or glycols, either alone or in emulsion, with oils (e.g., Par. 1 of Description on Page 2 of English translation).
The composition, which comprises hydrophilic treated pigments (See Page 4 of English translation), comprises a physiologically acceptable medium, meaning a medium which is particularly suitable for the application of a composition of the invention to keratinous substances, and may comprise any additive usually used in the field, e.g., UV protective agents (e.g., Par “IV. Physiologically acceptable medium” on Page 6 and “III. Additives” on Page 7 of English translation).
The composition will preferably be an oil-in-water emulsion, an aqueous gel, or an emulsified gel, and the presence of such an aqueous composition is advantageous in that it promotes comfort and hydration of the composition and provides a moisturizing effect (e.g., Bottom of Page 7 of English translation). An aqueous composition of the instant invention may comprise, as hydrating agent, polyols such as glycerine (i.e., glycerol) (e.g., Bottom of Page 7 of English translation).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Zamyatin et al and Dumousseaux et al, to provide a hydrating powdered water cosmetic composition suitable for use on keratin surfaces i.e. the skin, lips, or lashes as lipsticks, eye shadows, foundations, mascaras, eye liners, or powders, specifically “compact” powder or “free” powder, comprising a water phase, an oil phase, and a particulate phase, wherein the composition comprises water from about 1-85%, preferably from about 2-60%, more preferably from about 5-55% by weight of the total composition, glycerol from about 0.01-30%, preferably 0.5-25%, more preferably 1-20% by weight of the total composition present in the water phase, activatable pigments present in the particulate phase treated with hydrophilic materials, e.g., a suitable red iron oxide is GA-7293 hydrophilic red iron oxide sold by Color Techniques, hectorite, and UV protective agents, all being present in a physiologically acceptable medium.
One of ordinary skill in the art would have been motivated to incorporate glycerol specifically as the one or more humectants or stabilizers in the water phase in the powdered water cosmetic composition of Zamyatin et al, and there would have been a reasonable expectation of success, because not only is glycerol exemplified in a powdered water cosmetic composition suitable as a face powder or foundation makeup in the teaching of Zamyatin et al, but also because Dumousseaux et al teach that the introduction of liquid moisturizing compounds such as glycerol into powder compositions, either alone or in an emulsion with oils, leads to more comfortability to the skin and less drying of the skin and Dumousseaux et al teach a cosmetic composition for making up and/or caring for a keratin material as an aqueous composition providing comfort, hydration, and a moisturizing effect comprising glycerol as hydrating agent.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Claim 1 is a product-by-process claim and therefore the product is given patentable weight, not the process by which the product is made. “[Elven 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 Thorne, 777 F.2d 695, 698, 227 USPQ S64, 966 (Fed. Cir. 1985).
Therefore, claim 1 is being examined to the extent of the resultant solid composition i.e., “A cosmetic composition for caring for and/or making up keratin materials in the form of a solid composition comprising, in a physiologically acceptable medium, at least: water in an amount of from 5% to 50% by weight relative to the total weight of the composition, at least one hydroxyl compound which is glycerol, a particulate solid phase comprising at least fillers, and optionally an oily phase comprising at least one oil, wherein said solid composition is in the form of a compact powder” and to the extent of the elected species, rather than to the extent of the method for obtaining the solid composition, i.e., “said composition being obtained by a method comprising the following steps: (i) mixing the particulate solid phase, the at least one hydroxyl compound, the water and the optional oily phase constituting a liquid phase to form a paste; and (ii) shaping the paste by compacting and partial removal of the liquid phase to give the composition in the form of a solid composition”.
The requirements that the composition be in the form of a compact powder (instant claim 1) and in the form of a protective foundation powder (the elected species of form of instant claim 12), the hydrating powdered water cosmetic composition of Zamyatin et al in view of Dumousseaux et al being a “compact” or “free” powder foundation comprising UV protective agents meets the limitations of a ‘compact powder’ and a ‘protective foundation powder’.
Thus, the hydrating powdered water cosmetic composition of Zamyatin et al in view of Dumousseaux et al renders obvious instant claims 1, 3, 5-7, and 12-13.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zamyatin et al (US 2007/0218024 A1, published 09/20/2007, cited in Notice of References Cited 11/25/2025) in view of Dumousseaux et al (FR 2952822 A1, published 05/27/2011, cited in Notice of References Cited 11/25/2025) as applied to claims 1, 3, 5-7, and 12-13 above, and further in view of Yang et al (CN 104691004 A, published 06/10/2015, cited in Notice of References Cited 11/25/2025).
The hydrating powdered water cosmetic composition of Zamyatin et al in view of Dumousseaux et al has been discussed supra.
Neither Zamyatin et al nor Dumousseaux et al teach the composition having 3D relief patterns of the surface of the composition.
This deficiency is made up for in the teaching of Yang et al.
Yang et al teach a preparation method and preparation device for make-up pressed powder with a surface three-dimensional printed pattern with ‘relief style’ (See entire document, e.g., Abstract, Top of Page 3 of English translation). Yang et al teach that relief patterns in make-up products are attractive in appearance to consumers (e.g., Par. 1 of Background Technology on Page 2 of English translation).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to prepare the hydrating powdered water cosmetic composition of Zamyatin et al in view of Dumousseaux et al comprising surface three-dimensional ‘relief style’ printed patterns because Yang et al teach that relief patterns in make-up products is attractive in appearance to consumers. There would have been a reasonable expectation of success because Yang et al teach a preparation method and preparation device for make-up products in the form of pressed powder bearing surface three-dimensional ‘relief style’ printed patterns.
Thus, the hydrating powdered water cosmetic composition of Zamyatin et al, Dumousseaux et al, and Yang et al comprising surface three-dimensional ‘relief style’ printed patterns renders obvious instant claim 8.
Response to Applicant’s Arguments
Applicant’s arguments filed on 07/01/2026 have been considered.
Applicant argues that the composition of amended claim 1, which now specifies that the hydroxyl compound is glycerol, differs from the teaching of Zamyatin in that the composition is in the form of a compact powder and comprises glycerol, preferably present in a content ranging from 8 to 15% by weight. Applicant argues that a person skilled in the art would have found no motivation or reason in Zamyatin when considered in view of Dumousseaux to prepare Zamyatin’s composition in the form of a compact powder and to add glycerol to it particularly at a content of 8 to 15% by weight and that it would not have been considered possible to compact the Zamyatin composition given the need to keep the water droplets sequestered by the non-wetting particles in the Zamyatin composition until application to skin. Applicant argues that Zamyatin does not suggest including 8 to 15% glycerol in the composition. Applicant argues that Dumousseaux would have dissuaded a person skilled in the art from adding glycerol in a compact powder as Dumousseaux reminds the skilled person that adding liquid moisturizing compounds such as glycerol to improve the comfort of these powders makes them stickier, less easy to apply to the skin, and prone to agglomeration. Applicant argues that Dumousseaux proposes using glycerol in an aqueous composition which is distinct from the powder and applied separately. Applicant argues that a skilled person would not have found in the Zamyatin and Dumousseaux documents any incentive or reasonable expectation of success for adding glycerol, in particular 8 to 15% glycerol, to a compact powder.
The above arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the amendment to claim 1 that the at least one hydroxyl compound is glycerol in the claim set dated 07/01/2026 does not change the extent to which claim 1 is being examined because the instant claims have been and continue to be examined to the extent of the species elected in the response to the Restriction/Election requirement dated 10/10/2025 which includes that the at least one hydroxyl compound is glycerol. Further regarding amended claim 1, the Examiner notes that the argument that the composition of amended claim 1 comprises glycerol preferably present in a content ranging from 8 to 15% by weight is not applicable to base claim 1 as this limitation is recited in newly added claim 13 not in claim 1. Further, the limitations of claim 1 of the composition being in the form of a compact powder and comprising glycerol are met by the hydrating powdered water cosmetic composition of Zamyatin et al in view of Dumousseaux et al, discussed supra, which is in the form of a “compact” powder or “free” powder and comprises glycerol from about 0.01-30%, preferably 0.5-25%, more preferably 1-20% by weight. The Examiner agrees that Zamyatin does not teach or suggest including 8 to 15% glycerol, however, the hydrating powdered water cosmetic composition based on the teachings of Zamyatin et al and Dumousseaux et al comprises glycerol from about 0.01-30%, preferably 0.5-25%, more preferably 1-20% by weight, and because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists. The above arguments alleging a person skilled in the art would have found no motivation or reason in Zamyatin when considered in view of Dumousseaux to prepare Zamyatin’s composition in the form of a compact powder and to add glycerol to it particularly at a content of 8 to 15% by weight have been fully considered by the Examiner but are not found persuasive because one of ordinary skill in the art would have been motivated to incorporate glycerol specifically as the one or more humectants or stabilizers in the water phase in the powdered water cosmetic composition of Zamyatin et al, and there would have been a reasonable expectation of success, because not only is glycerol exemplified in a powdered water cosmetic composition suitable as a face powder or foundation makeup in the teaching of Zamyatin et al, but also because Dumousseaux et al teach that the introduction of liquid moisturizing compounds such as glycerol into powder compositions, either alone or in an emulsion with oils, leads to more comfortability to the skin and less drying of the skin and Dumousseaux et al teach a cosmetic composition for making up and/or caring for a keratin material as an aqueous composition providing comfort, hydration, and a moisturizing effect comprising glycerol as hydrating agent. The above argument that Dumousseaux reminds the skilled person that adding liquid moisturizing compounds such as glycerol to improve the comfort of these powders makes them stickier, less easy to apply to the skin, and prone to agglomeration has been fully considered by the Examiner but is not found persuasive because the Examiner interprets this teaching (See End of Par. 1 of Description on Page 2 of English translation of Dumousseaux et al) as a caution to a potential disadvantage that is brought up in the introduction of the teaching rather than a teaching away of a disadvantage that necessarily results from introducing liquid moisturizing compounds such as glycerol into cosmetic powders. Applicant is reminded that the above rejections under 35 USC 103 are based on the combined teachings of Zamyatin et al and Dumousseaux et al and on the combined teachings of Zamyatin et al, Dumousseaux et al, and Yang et al, respectively, and not their individual teachings. Applicant is also reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)).
Conclusion
No claims are allowable.
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 KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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