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, 3, 4 and 6-16.
Applicants' arguments, filed 07/07/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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
Claim 16 is objected to because of the following informalities: “am alcoholic hydroxyl group-containing compound” should be recited as --- an alcoholic hydroxyl group-containing compound. Appropriate correction is required.
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 1, 3, 4 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shibano (JP 2018188411 A, Nov. 29, 2018) (IDS reference) in view of Pays (US 2012/0301417, Nov. 29, 2012) (hereinafter Pays), as evidenced TCI Chemicals (Hexamethylcyclotrisiloxane, 2026).
Shibano discloses a method for producing a water-in-oil emulsion cosmetic in which a slurry dispersion liquid, obtained by mixing (A) a hydrophobic coloring pigment and (B) volatile silicone oil, is mixed with an oil phase component containing (C) quaternary ammonium ion-substituted cationically modified clay mineral (i.e., organically modified clay mineral) of 0.01-5 mass % and (D) organic silicone resin of 0.03-4 mass %, and an aqueous phase component is further mixed therewith (abstract). The content of component (A) is preferably 1 to 30% by mass in the water-in-oil emulsified cosmetic (page 3, second paragraph). Component D is a compound having a cross-linked structure with a siloxane structure as a main skeleton, [(CH3)3 SiO1/2]a[SiO2]]b (a is 1 to 3, b is 0.5 to 8) (page 4, penultimate paragraph). Suitable component (D) includes trimethylsiloxysilicate (page 4, penultimate paragraph), such as SS4267 (35% dimethylpolysiloxane solution) (page 5, second paragraph). The water-in-oil emulsified cosmetic can further contain oil phase components other than the components (B), (C) and (D) (page 6, sixth paragraph). Such an oil phase component may be an oil component that is liquid at 25°C (page 6, penultimate paragraph). Examples of oil components that are liquid at 25°C include linear or branched hydrocarbon oils (page 6, last paragraph) and isotridecyl isononanoate (i.e., ester) (page 7, first paragraph). The oil components liquid at 25°C may be present from 10-60% by mass in the water-in-oil emulsion cosmetic (page 7, second paragraph). The water-in-oil emulsified cosmetic can further contain a nonionic surfactant (page 7, fourth paragraph).
Shibano differs from the instant claims insofar as not disclosing wherein the (B) volatile silicone oil is not liquid at 25°C.
However, Pays discloses a composition for making up keratinous fibers (abstract). The composition can comprise at least one volatile silicone oil (¶ [0533]). Suitable volatile silicone oils include hexamethylcyclotrisiloxane (¶ [0535]).
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. Shibano discloses wherein the composition comprises a volatile silicone oil. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated hexamethylcyclotrisiloxane into the composition of Shibano since it is a known and effective volatile silicone oil for cosmetics as taught by Pays.
In regards to instant claim 1 reciting wherein component (C) consists of non-silicone components, component (C) is an oil that is liquid at 25°C. Thus, the claim limits an oil that is liquid at 25°C to non-silicone components. The inclusion of hexamethylcyclotrisiloxane does not teach away since as evidenced by TCI chemicals, hexamethylcyclotrisiloxane is solid at room temperature.
In regards to the instant claims reciting 0.1 to 10% by weight component (A), 33.4 to 89.9% by weight component (B), and 10 to 40% by weight component (C), Shibano discloses 0.03-4% trimethylsiloxysilicate (Component (A)), 1 to 30% hydrophobic coloring pigment (Component (B)), and 10-60% oil component that is liquid at 25°C (Component (C)).
These ranges overlap with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A. For example, the composition may comprise 1% trimethylsiloxysilicate (Component (A)), 19% hydrophobic coloring pigment (Component B), 10% oil component that is liquid at 25°C (Component (C)) for a total amount of 30%. Since a slurry dispersion comprises components (A)-(C), the amount of component (A) may be 3.3% by weight of the slurry dispersion, the amount of component (B) may be 63.3% by weight of the slurry dispersion, and the amount of component (C) may be 33.3% by weight of the slurry dispersion.
In regards to instant claim 1 reciting a cosmetic comprising from 1 to 30% by weight of the slurry dispersion, since a slurry dispersion comprises components (A), (B), and (C), and Shibano discloses a water-in-oil emulsion cosmetic comprising 0.03-4% trimethylsiloxysilicate (Component (A)), 1 to 30% hydrophobic coloring pigment (Component (B)), and 10-60% oil component that is liquid at 25°C (Component (C)), the claimed amount of slurry dispersion (i.e., components (A), (B), and (C)) would have been obvious from these ranges as shown above.
In regards to instant claim 8 reciting components (A), (B), and (C) together, mixing an oil phase component with an aqueous phase component, and then mixing the mixture with (A), (B), and (C) therein, Shibano discloses mixing a hydrophobic coloring pigment (B) and volatile silicone oil (oil-phase component), then mixing in trimethylsiloxysilicate (A) and hydrocarbon oils (C), and then mixing an aqueous phase component therein. Although Shibano does not disclose the exact order of mixing, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04(IV)(C).
Response to Arguments
Applicant argues that Comparative Example 3 has the same composition as Example 2. However, a component (A) (trimethylsiloxysilicate) dissolved product is blended into slurry dispersion as component 10 in Example 2, whereas it is blended into the oil phase as component 8 in Comparative Example 3. Comparative Example 3 has an inferior pigment dispersibility in comparison to Example 2.
The Examiner submits that this argument does not apply to claims 1, 3, 4, 6, 7 and 12-16 since they are composition claims and Applicant’s argument is regarding order of method steps. With regards to the instant method claims, as discussed previously, the instant methods claims are not commensurate in scope with the showing. It is unclear whether a specific oil-phase component and a specific aqueous-phase component is required to obtain the results from the showing, Also, the method claims do not recite amounts of each ingredient. One of ordinary skill in the art would not expect a slurry dispersion comprising minimal amounts of the pigment and carrier components to display an improvement in pigment dispersion. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1, 3, 4 and 6-16 are rejected.
No claims are allowed.
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 TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 pm.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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