DETAILED ACTION
RESPONSE TO AMENDMENT
1. Receipt of Applicants’ amendments/remarks filed 1/28/2026 are acknowledged.
INFORMATION DISCLOSURE STATEMENT
2. No new Information Disclosure Statement has been submitted for review.
WITHDRAWN REJECTIONS
3. Rejections not reiterated from previous Office Actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112-New Matter
4. The following is a quotation of the first paragraph of 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
Claims 1-18 are 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.
These claims recite the cosmetic composition is “in the form of a homogenous single phase”.
There is no teaching in the specification that would reasonably convey to the skilled artisan that the inventors considered the homogenous and single phase as part of the invention. Additionally, the specification does not recite these terms.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yontz et al. (US 20110300083) in view of Nagamatsu et al. (US 20140302102), Auguste (US 20010006665), and Croda “specialty ingredients for personal care”.
Yontz et al. (US 20110300083) (hereinafter Yonz et al.) disclose a single phase composition that comprises 1.02 bis-diglyceryl adipate (part b), 1.80 ozokerite wax (part a), 1.13 microcrystalline wax, 30.5 castor seed oil (oil component part c), (see para 0165-0166 tables). Yontz et al. teach polymeric film forming agents. Yonz et al. teach Ingredients (q) include inorganic particulates such as clays, magnesium aluminum silicate, magnesium trisilicate, attapulgite, bentonite, hectorite, lithium magnesium silicate, lithium magnesium sodium silicate, montmorillonite, bentonite, smectite clay, boron nitride, silicon nitride, titanium carbide, boron carbide, mullite, coreiderite, and the like (para 0124). Bis-diglyceryl adipate is a known pasty compound and of ordinary skill in the art would optimize for this desired paste in the lipstick .
Yontz et al. does not teach component c of “fatty acid complex ester oil inclusive of diisostearyl maleate.
Nagamatsu et al. (US 20140302102) (hereinafter Nagamatsu et al. disclose lipsticks including emollients (abstract and para 0013). The emollient is selected from diisostearyl maleate (para 0015). The reference diisostearyl malate discloses this ingredient is used to reduce feathering and bleeding in lipsticks.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to further include a fatty acid complex of ester oil such as diisostearyl malate. One would have been motivated to do so for its emollient property and reduce feathering and bleeding in the lipstick of Yontz.
Yontz et al. discloses film forming agents (e.g., polyethylene) but does not disclose the film forming agents of claim 6. Auguste (US 20010006665) (hereinafter Auguste teaches cosmetic products such as lipsticks and use of polymers providing glossy properties (paras 0078 and 0109). Auguste teaches fat-soluble film forming polymers include polybutene and VP/hexadecane copolymers (para 0078). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute one film-forming polymer (e.g., polybutene) of Blin for another such as the VP/hexadecene copolymers. Simple substitution of one known element for another would obtain predictable results as both are art recognized film forming polymers for use in cosmetics such as lipsticks.
The modified Yontz et al. has been discussed supra. but does not disclose the dispersants as disclosed in claim 10 such as sorbitan isostearate. Croda “specialty ingredients for personal care” discloses that sorbitan isostearate is a dispersing agent for sunscreens and decorative cosmetics and is not prone to changes in color or odor. The usage levels are typically 0.5-5 wt % (page 16 under Nonionic surfactants). The reference also discloses dispersant sorbitan oleate which is used as dispersants for pigments in color cosmetics. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute one dispersant for another. One would have been motivated to use sorbitan isostearate or oleate for because it is a suitable dispersant for pigments for use in color cosmetics which are particularly useful for lipsticks.
6. Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over
Yontz et al. (US 20110300083) in view of Nagamatsu et al. (US 20140302102), Auguste (US 20010006665), Croda “specialty ingredients for personal care” as applied to claims 1 -14 and 17 above, and further in view of Ohashi et al. (US Patent 11160736).
The modified Yontz has been discussed supra. The reference does not disclose UV blockers such as ethylhexyl methoxycinnamate.
Ohashi et al. (US Patent 11160736) (hereinafter Ohashi et al.) disclose it is important to protect the lips from external stimuli such as UV. The UV absorbers include those such as ethylhexyl methoxycinammate. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include UV absorbers such as ethylhexyl methoxycinnamate in the lip compositions of Yontz. One would have been motivated to do so in order to protect the lip from external stimuli such as UV.
7. Claims 1 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over
Yontz et al. (US 20110300083) in view of Nagamatsu et al. (US 20140302102), Auguste (US 20010006665), Croda “specialty ingredients for personal care” as applied to claims 1 -14 and 17 above, and further in view of Bui et al. (WO 2015193415) and Barone et al. (US Patent 20040028641).
The modified Yontz et al. has been discussed supra and does not disclose the hardness or melting point as recited in claim 16.
Bui et al. (WO 2015193415) (hereinafter Bui et al.) disclose lipsticks with hardness of at least 40 gf and it is preferably such that the compositions are self-supporting and can easily disintegrate to form satisfactory deposit on the lips. This hardness imparts good impact strength which may be molded in stick form (para 0029-0031). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have a hardness of the lipstick of 40 gf. One would have been motivated to do so because it provides good impact strength and good deposit on the lips.
Barone et al. (US Patent 20040028641) (hereinafter Barone et al.) disclose that conventional approaches for increasing the melting point of lipsticks generally involves producing formulations with a greater proportion of high melting waxes but they have undesirable harsh feel when applied to lips (para 0003). The goal is for heat resistant so the lipstick doesn’t melt (paras 0003, 0017, and 0019). The melting point is from 68-73˚C. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the melting point of the lipstick formulation such that it heat resistant to melting when in a closed car or direct sunlight as taught by Barone et al.
RESPONSE TO ARGUMENTS
8. Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
OBJECTION
9. Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
CONCLUSION
10. 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.
CORRESPONDENCE
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danah Al-awadi whose telephone number is (571) 270-7668. The examiner can normally be reached on 9:00 am - 6:00 pm; M-F (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANAH AL-AWADI/
Primary Examiner, Art Unit 1615
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