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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 and 17-19 in the reply filed on 12/02/2025 is acknowledged.
Claims 14-16, 20 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/02/2025.
Claim Rejections - 35 USC § 112
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.
Claims 1-13 and 17-19 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “dispersed in a continuous aqueous phase”, and the claim also recites “preferably in the form of a gel” which is the narrower statement of the range/limitation.
claim 1 recites the broad recitation between 50° C and 100°C”, and the claim also recites “preferably between 60°C and 90°C” which is the narrower statement of the range/limitation
claim 1 recites the broad recitation “between 2 and 14N”, and the claim also recites “preferably between 2.5 and 12N, more preferably between 3 and 9 N, and most preferably between 4 and 6 N” which is the narrower statement of the range/limitation
claim 1 recites the broad recitation “equal to -2 N”, and the claim also recites “or better still, greater than or equal to -1 N, and in particular greater than or equal to -0.6 N” which is the narrower statement of the range/limitation
claim 2 recites the broad recitation “less than or equal to 40”, and the claim also recites “preferably less than or equal to 35, and better still, greater than or equal to 30” which is the narrower statement of the range/limitation;
claim 3 recites the broad recitation “between 1% and 60%’, and the claim also recites “preferably between 5% and 50%, in particular between 10% and 40%, more preferably between 15% and 35%, and in particular between 20% and 25%” which is the narrower statement of the range/limitation;
claim 4 recites the broad recitation “does not comprise a shell”, and the claim also recites “in particular a shell formed by a coacervate layer interposed between the dispersed fatty phase and the continuous aqueous phase” which is the narrower statement of the range/limitation;
claim 5 recites the broad recitation “greater than or equal to 70%”, and the claim also recites “preferably greater than or equal to 80%, and better still, greater than or equal to 90% of the total volume of the dispersed phase and/or at least 60%, or even at least 70%, preferably at least 80%, and better at least 90%” which is the narrower statement of the range/limitation;
claim 7 recites the broad recitation “0.5% to 30%”, and the claim also recites “preferably from 1% to 25%, in particular from 1.5% to 20%, better still from 2% to 15%, and most particularly from 5% to 12%” which is the narrower statement of the range/limitation;
claim 8 recites the broad recitation “at least one hydrophilic gelling agent”, and the claim also recites “preferably selected from the group consisting of natural gelling agents; semi-synthetic gelling agents; synthetic gelling agents; and mixtures thereof, and preferably is selected from carbomer, alkasealan, and mixtures thereof” which is the narrower statement of the range/limitation;
claim 9 recites the broad recitation “from 0.0001% to 15%”, and the claim also recites “in particular from 0.01% to 10%, and more preferably from 0.1 to 5%” which is the narrower statement of the range/limitation;
claim 10 recites the broad recitation “from 1% to 60%”, and the claim also recites “in particular from 5% to 50%, preferably from 10% to 40%, and more preferably from 15% to 30%” which is the narrower statement of the range/limitation;
claim 11 recites the broad recitation “intermediate drop”, and the claim also recites “preferably a single, inner drop of an inner phase disposed in the intermediate drop” which is the narrower statement of the range/limitation;
claim 13 recites the broad recitation “dextrin ester and fatty acid”, and the claim also recites “in particular dextrin palmitate, and/or optionally hydrophobically treated silica, e.g. fumed silica” which is the narrower statement of the range/limitation;
claim 18 recites the broad recitation “a composition”, and the claim also recites “in particular a cosmetic composition” which is the narrower statement of the range/limitation; and
claim 19 recites the broad recitation “a make-up composition”, and the claim also recites “in particular a foundation composition” which is the narrower statement of the range/limitation
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites the limitation "the core" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over De La Poterie et al. (US Patent Pub. 2004/0137020).
The reference disclose a composition comprising a wax having a tack of greater than or equal to 0.7 N.s and a hardness of less than or equal to 3.5 MPa. The reference disclose the composition is a make-up cosmetic composition (ABSTRACT). The reference disclose the wax has a melting point of about 55° C to about 120° C ([0028]). The reference disclose the composition comprises 0.01 to 30% of titanium dioxide and zinc oxide, which would meet the limitation of UV filter (([0166] and [0168]). The reference is silent in regard to a shell formed by a coacervate layer interposed between the dispersed fatty phase and the continuous aqueous phase. The reference disclose a wax dispersion having mean sized of less than 1 µm that are present from 0.5% to 60% by weight ([0041] and [0042]). The reference disclose “gelling agents” are present ranging from 0.01% to 60% by weight relative to the total weight of the composition ([0116]). The reference disclose examples that do not comprise surfactants, dextrin ester and fatty acids, acrylates/C10-30 alkyl acrylate crosspolymer, and/or cetyl ethyhexonoate.
Claim 17 is a product-by-process claim. If the product in the product-by-process claim is the same as or obvious from the product of the prior art, the claim is unpatentable even thought the prior product was made by a different process. See MPEP 2113.
It would have been obvious to one of ordinary skill in art before the effective filing date of the claimed invention to have, by routine optimization procedures, varied the amounts and proportions and wax selections with the dispersion/emulsion to achieve the desired results, including hardness, adhesiveness and cohesiveness. One would have been motivated to do so since the reference teaches providing the functions of being easily applicable, providing thick and non-tacky makeup and providing uniform deposit at taught by the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612