DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 10 August 2026, in response to the Office Correspondence dated 08 April 2026, are acknowledged.
The listing of Claims filed 10 August 2026, have been examined. Claims 1, 3-15, and 17-22 are pending. Claims 1 and 15 are amended, claims 2 and 16 are canceled, and new claims 21 and 22 have been added.
Response to Amendment
The amendments are supported by the originally‑filed disclosure and have been entered. The newly recited volatile-oil range of about 0.5% to about 10% is supported by the specification, which expressly states that volatile oil may be present from about 0.5%, 1%, 2%, 3%, or 4% to about 4%, 5%, 6%, 8%, or 10% by weight.
The applicant argues that deletion of the platy-mineral/mica-to-oil-system ratio renders the previously stated indefiniteness rejection moot. This argument is persuasive. The previous rejection of claims 3, 15, and 17-20 under 35 U.S.C. §112(b) was predicated on the interaction between the absolute mica concentration, the oil-system concentration, and the previously recited mica/platy-mineral-to-oil-system ratio. Because claims 1 and 15 no longer contain that ratio limitation, the particular alleged inconsistency on which that rejection depended no longer exists. Accordingly, the previous rejection of claims 3, 15, and 17-20 under 35 U.S.C. §112(b) is withdrawn.
The rejection under 35 U.S.C. §103 of claims 1, 3-7, 9-11, 13, and 14 over Rosario-Meléndez (US20190262257A1) is maintained, as modified below to reflect the present claim language and the examiner’s consideration of the applicant’s alleged unexpected-results evidence.
Under further review, based on the applicant’s arguments, the examiner finds that under the broadest reasonable interpretation, Nylon-611/Dimethicone Copolymer, should not be considered a silicon elastomer and the rejection of claim 12 over Rosario-Meléndez (US20190262257A1) is withdrawn and rejected as being unpatentable over Rosario-Meléndez, in view of Arditty (US20190038536A1). However, the applicant’s argument overstates the lexicography point, wherein the applicant’s specification does not contain an express special definition required for strict lexicographer status.
The specification language provided in the applicant’s original disclosure regarding a silicon elastomer is more descriptive than an exhaustive lexicographic definition by using language such as, “one class,” “particularly useful,” and “non-limiting examples.” Thus, the claim should not necessarily be limited only to the specifically identified dimethicone crosspolymers. However, the broadest reasonable interpretation still requires something that a person of ordinary skill in the art would reasonably recognize as a silicone elastomer, rather than merely any silicone-containing polymer. After further review, this condition is not reasonably met, as detailed further below in the Response to Argument section. Thus, the rejection of claim 12 is rejected under 35 U.S.C. §103 over Rosario-Meléndez, relying on Rosario-Meléndez for the silicone elastomer limitation is withdrawn and the claim is now rejected over Rosario-Meléndez in view of Arditty, supplying the silicone elastomer limitation.
The rejection of claims 1, 8, 15, and 17-20 under 35 U.S.C. § 103 as being unpatentable over Rosario-Meléndez, in view of Arditty, is maintained and new claims 21 and 22 are also rejected under 35 U.S.C. § 103 as being unpatentable over Rosario-Meléndez, in view of Arditty. Arditty supplying the silica-aerogel limitation and its overlapping 0.2%-2% mineral-thickener range. Rosario-Meléndez is relied upon for, inter alia, the matte liquid lip formulation, silicone film-former, volatile and nonvolatile oil teachings, colorant/mica teachings and homogeneous liquid preparation, and Arditty relied upon for the expressly disclosed silica aerogel and crosslinked organopolysiloxane elastomer. Rosario-Meléndez specifically reports stirring its formulation until a homogeneous liquid composition was obtained.
The applicant’s evidence of improved performance has been considered. The evidence is accorded probative weight but, for the reasons outlined in the Response to Arguments section below, is not sufficiently commensurate with the scope of the pending claims and does not establish criticality throughout the presently claimed ranges sufficient to outweigh the prima facie case. Accordingly, the applicant’s request for withdrawal of all rejections and issuance of a Notice of Allowance is therefore denied.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 08 April 2026, since the art which was previously cited continues to read on the amended/newly cited limitations.
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-AlA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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 underlying obviousness under 35 U.S.C. § 103 are those set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and 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.
The analysis must consider the claim as a whole and provide an articulated reason with a rational underpinning for the proposed modification or combination (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418-22 (2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
A person of ordinary skill in the art at the relevant time would have possessed a bachelor's degree in chemistry, chemical engineering, cosmetic science, or a closely related field, combined with approximately two to four years of experience in the formulation and development of cosmetic or personal care compositions. Alternatively, an individual with an advanced degree (e.g., M.S. or Ph.D.) in a relevant discipline and at least one to two years of similar experience would also qualify.
A person of ordinary skill in the art would have a working knowledge of the physicochemical properties of cosmetic ingredients, including volatile and nonvolatile oils, silicone-based film-formers, platy minerals (such as mica), and mattifying agents like silica aerogels. They would be capable of understanding and applying principles of colloid and interface science, rheology, and emulsion chemistry to design anhydrous liquid compositions with targeted performance attributes, such as dry-down time, tactile comfort, and optical effects. Additionally, they would be familiar with standard industry practices for optimizing ingredient ratios and concentrations to achieve desired consumer benefits, and would routinely consult the scientific literature, patents, and formulation handbooks in the field of cosmetic chemistry.
Claims 1, 3-7, 9-11, 13, and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Rosario-Meléndez et al. (US20190262257A1; published 29 August 2019, hereinafter referred to as “Rosario-Meléndez”).
The effective filing date of instant application presently being applied is 27 February 2023. The cited references qualify as prior art because they are published prior to the instant effective filing date, and therefore predate the instant claimed invention.
Rosario-Meléndez teaches matte lip compositions and methods of applying such compositions to the lips (¶[0001], ¶[0018], ¶[0105]). Rosario-Meléndez teaches a siloxysilicate resin film-former, including trimethylsiloxysilicate (¶[0032]-[0036]). Rosario-Meléndez teaches a lipophilic silica mattifying component, including silica silylate, generally at about 0.5-1.5 wt.% (¶[0050]-[0055]). Rosario-Meléndez teaches non-lipophilic fillers having lamellar or non-lamellar form and expressly identifies mica among suitable fillers (¶[0056]-[0064]).
Rosario-Meléndez teaches volatile hydrocarbon oils/solvents, including C8-C16 hydrocarbon materials such as isododecane, isodecane, isohexadecane, Isopar L, and Isopar H, and teaches a volatile-solvent concentration from about 5% to about 70 wt.%, preferably about 15-65 wt.% and about 30-60 wt.% (¶[0078]-[0084]). Rosario-Meléndez teaches nonvolatile silicone oils, including polydimethylsiloxanes/dimethicones, generally at about 2-30 wt.%, preferably about 4-25 wt.% and about 5-20 wt.% (¶[0086]-[0090]). Rosario-Meléndez teaches colorants, including pearlescent mica-containing pigments, at about 0.1-20 wt.%, preferably about 0.25-15 wt.% and about 0.5-10 wt.% (¶[0091]-[0096]). Rosario-Meléndez further teaches preparation of the lip composition by mixing until a “homogeneous liquid composition” is obtained (¶[0118]).
Accordingly, Rosario-Meléndez teaches or suggests the claimed lip-application method, film-former, colorant, platy mineral, mattifying agent, nonvolatile silicone oil, volatile oil, and homogeneous composition. Rosario-Meléndez does not explicitly state that its nonvolatile silicone oil and volatile oil must satisfy the presently claimed 4:1-10:1 weight ratio, although its individual concentration ranges mathematically permit ratios falling within the claim, thus selecting endpoints within the ranges taught by Rosario-Meléndez would be obvious. Further, evidentiary reference Martinez et al. (US20220040054A1; published 10 February 2022, hereinafter “Martinez”) provides additional express teaching regarding the relative amount of volatile and nonvolatile oils in lip-cosmetic formulations.
Martinez concerns a long-wear lip cosmetic system and expressly teaches lip compositions employing silicone film-former and large amounts of nonvolatile silicone oil (¶[0008]-[0011], ¶[0123], ¶[0129]-[0132]; claims 7-14). Martinez teaches a topcoat containing about 15-30 wt.% silicone film-former and about 60-85 wt.% nonvolatile silicone oil (¶[0123]; claims 7 and 14), including polydimethylsiloxane/dimethicone as the nonvolatile silicone oil (¶[0098]-[0102]; claims 9-10). Critically, Martinez expressly teaches that the nonvolatile-oil carrier can contain a relatively small amount of volatile oil, with the concentration of volatile oil being less than the concentration of nonvolatile oil. Martinez teaches volatile-oil concentrations in the nonvolatile-oil carrier of “up to 40%, up to 30%, up to 20%, up to 10%, up to 5%, [or] up to 1%,” measured by weight relative to the total oils in the carrier (¶[0097]; claim 11).
Thus, Martinez expressly recognizes and controls the relative proportion of volatile oil to nonvolatile oil as a formulation variable. For example, selecting 60 wt.% nonvolatile silicone oil, expressly disclosed by Martinez at the lower endpoint of its 60-85 wt.% range, and selecting volatile oil to constitute 10% of the combined oil carrier, expressly contemplated by Martinez (¶[0097]), produces: V/(60 + V) = 0.10, or V = approximately 6.67 wt.%. The resulting nonvolatile-silicone-oil:volatile-oil ratio is approximately 60:6.67 = 9:1, within the claimed approximately 4:1-10:1 range, and the resulting volatile-oil concentration of approximately 6.67 wt.% is within the claimed approximately 0.5-10 wt.% range. The calculation is not relied upon as an express Martinez example. Rather, it demonstrates that ordinary selection of values within Martinez’s expressly disclosed compositional ranges and expressly recognized relative-oil parameter yields a composition within the presently claimed ranges.
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to use the oil phase ranges taught by Rosario-Meléndez’s lip composition, specifically according to Martinez’s teaching of a predominantly nonvolatile-silicone-oil carrier containing a smaller amount of volatile oil, because Martinez provides additional evidence that it is was known in the art at the time of the instant invention to do so in silicone-containing, film-forming lip cosmetics intended to obtain commercially conventional lip-product characteristics such as wear, transfer resistance, application properties, comfort, and appearance.
Martinez expressly explains that volatile components evaporate relatively quickly to permit the film-former to set, while nonvolatile silicone oil plasticizes the film-forming material and contributes durable gloss (¶[0132]). A skilled cosmetic formulator therefore would have had a reason to adjust the ranges taught by Rosario-Meléndez to the specific relative amounts of these known oil components to balance drying/set time against residual film flexibility, feel, and appearance. This constitutes optimization of a variable expressly recognized in the art as a formulation parameter rather than an unsupported assertion that any arbitrary concentration could have been optimized (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); and MPEP §2144.05).
A person of ordinary skill would also have had a reasonable expectation of success. Rosario-Meléndez and Martinez employ the same general class of lip-compatible silicone oils, volatile hydrocarbons, silicone film-formers, pigments/fillers and conventional cosmetic manufacturing techniques. The proposed modification does not require a new chemical reaction or unknown mechanism, rather it merely adjusts relative amounts of known mutually compatible lip-cosmetic ingredients. Martinez itself provides working lip formulations employing high concentrations of nonvolatile silicone oil and teaches that small amounts of volatile oil may be included in that carrier. Under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-18 (2007), combining familiar elements according to known methods to obtain predictable formulation results is ordinarily obvious. Accordingly, claim 1 is prima facie obvious over Rosario-Meléndez, supported by the evidentiary Martinez reference.
Regarding instant claim 3, Rosario-Meléndez already teaches mica both as a suitable filler and as a component of pearlescent pigments (¶[0056]-[0064], ¶[0091]-[0096]) and teaches its colorant system at concentrations up to 20 wt.%. To the extent Rosario-Meléndez does not explicitly identify a natural-versus-synthetic mica species together with the presently claimed approximately 6.5-10 wt.% concentration, evidentiary reference Ganguly et al. (US20050142084A1; published 30 June 2005, hereinafter “Ganguly”) explicitly teaches lip compositions containing 8 wt.% mica-based nacreous pigment and expressly distinguishes natural and synthetic mica variants by evaluating variants using large-particle synthetic mica, small-particle synthetic mica, and large-particle natural mica (Example 4), squarely within the instant claimed approximately 6.5-10 wt.% range. Thus, Ganguly provides additional evidence that natural-versus-synthetic mica species were successfully used in such inventions in that art prior to the instant invention and the distinction does not add patentable weight.
Because Rosario-Meléndez already directs the skilled artisan to mica in lip cosmetics, and Ganguly demonstrates both natural and synthetic mica species at an 8 wt.% loading in a lip composition, a person of ordinary skill would have had reason to select either natural or synthetic mica at that known loading to obtain the conventional optical/pearlescent effects associated with such mica pigments. This is a predictable selection among known materials expressly taught for the same cosmetic use (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-18 (2007)). Further, selection of 8 wt.% within the broader mica/colorant concentrations already taught by Rosario-Meléndez constitutes routine selection of a known workable concentration (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Instant claim 4 further requires the nonvolatile silicone oil and volatile oil to total approximately 40-80 wt.% of the composition. Rosario-Meléndez teaches nonvolatile silicone oil preferably about 2-30 wt.% (¶[0090]), or 1.7-34.5 wt.%, and volatile oil present at about 5-70 wt.% (¶[0084]), or 4.25-80.5 wt.%, equaling 5.95-100 wt. % total nonvolatile silicone oil plus volatile oil, overlapping with the instant claimed range from 40-80% oil system, which represents routine selection of mid-range values.
Rosario-Meléndez discloses nonvolatile silicone-oil concentration is “preferably present” in an amount ranging from “about” 2-30 wt.% (¶[0090]), wherein “about” is defined as meaning within 10-15 wt.% of the indicated number (¶[0015]), rendering the preferable range taught by Rosario-Meléndez for the nonvolatile silicone-oil concentration as 1.7-34.5 wt.%. When this range is combined with maintaining a nonvolatile silicone oil to volatile oil from about 4:1 to about 10:1 (wherein the modifier “about” means 10-15 wt.% more or less as defined as in the applicant’s specification at ¶[0010]), or 3.4:1 to 11.5:1, approximately 0.15-10.15 wt.% volatile oil is permitted, or 1.85-44.65 wt.% combined claimed oils. The instant claim 4 about 40-80 wt.%, or rather 34-92 wt.% range of at least one nonvolatile silicone oil and the at least one volatile oil, overlaps with the range taught by Rosario-Meléndez from 34-44.65 wt.%.
Adjusting the ratio of nonvolatile to volatile oil to control dry-down time, transfer resistance, and feel is a matter of routine optimization (see MPEP § 2144.05, wherein selection within an overlapping range is obvious). One of ordinary skill would be motivated to increase the nonvolatile oil content relative to volatile oil to enhance shine, smooth feel, and moisturization because it is a predictable outcome. The mere fact that Rosario-Meléndez identifies a lower preferred ranges does not remove its express lower range or constitute teaching away absent criticism, discrediting, or discouragement of the lower values (see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Evidentiary reference Martinez, cited above, further supports increasing the nonvolatile silicone oil range from that taught by Rosario-Meléndez in similar formulations. Martinez specifically teaches about 60-85 wt.% nonvolatile silicone oil (¶[0123]; claims 7 and 14) and additionally teaches the presence of smaller amounts of volatile oil in the nonvolatile-oil carrier (¶[0097]; claim 11). Using the disclosed 60 wt.% nonvolatile-silicone endpoint and 10%-of-total-oils volatile fraction described above gives approximately 6.67 wt.% volatile oil and approximately 66.67 wt.% total oil system, squarely within the about 40-80 wt.% range of instant claim 4.
For the reasons stated for instant claim 1, selection of these disclosed amounts would have constituted routine optimization of recognized formulation variables with a reasonable expectation of success. Therefore, instant claim 4 is obvious over Rosario-Meléndez as higher ranges are further supported by the evidentiary reference Martinez.
Instant claim 5 requires approximately 4-10 wt.% volatile oil. Rosario-Meléndez’s approximately 5-70 wt.% range expressly overlaps the instant claimed range from approximately 5-10 wt.% (¶[0084]). Further evidentiary reference Martinez independently teaches relatively small volatile-oil proportions (¶[0097]), and the foregoing 60 wt.%/10%-of-oil-carrier selection yields approximately 6.67 wt.% volatile oil. An overlapping prior-art range ordinarily establishes a prima facie case (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)). The mere fact that Rosario-Meléndez separately identifies higher preferred ranges does not remove its express lower range or constitute teaching away absent criticism, discrediting, or discouragement of the lower values (see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004), therefore instant claim 5 is obvious.
Instant claim 6 narrows the nonvolatile-silicone:volatile-oil ratio to about 4:1-8:1. Rosario-Meléndez teaches nonvolatile silicone oil preferably about 2-30 wt.% (¶[0090]), or 1.7-34.5 wt.%, and volatile oil present at about 5-70 wt.% (¶[0084]), or 4.25-80.5 wt.%, yielding a full ratio range of approximately 0.02:1 to 8.12:1 ratio. Thus, the instant claimed ratio range is encompassed by the teachings of Rosario-Meléndez. For example, selecting 20-30% nonvolatile and 5-7.5% volatile yields a ratio of 4:1 to 6:1, squarely within the instant claimed range. Adjusting the ratio of nonvolatile to volatile oil to control dry-down time, transfer resistance, and feel is a matter of routine optimization (see MPEP § 2144.05, wherein selection within an overlapping range is obvious). One of ordinary skill would be motivated to increase the nonvolatile oil content relative to volatile oil to enhance shine, smooth feel, and moisturization because it is a predictable outcome.
Further, evidentiary reference Martinez expressly permits volatile oil in amounts up to 20% of the total oil carrier and therefore encompasses intermediate relative oil proportions (¶[0097]). For example, selection of a 12.5% volatile fraction, within Martinez’s disclosed continuum up to 20%, together with 60 wt.% nonvolatile silicone oil produces approximately 8.57 wt.% volatile oil, or a nonvolatile:volatile ratio of approximately 7:1, with approximately 68.57 wt.% total claimed oil. Although 12.5% is not separately enumerated by Martinez as a preferred endpoint, selection of an intermediate value within a disclosed range of a recognized formulation parameter ordinarily constitutes routine optimization (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980)), thus, instant claim 6 is obvious.
Regarding instant claim 7, Rosario-Meléndez teaches C8-C16 volatile hydrocarbon oils, including isododecane, isodecane and isohexadecane (¶[0078]-[0084]). Accordingly, instant claim 7 is obvious for the reasons applicable to claim 1. Regarding instant claim 9, Rosario-Meléndez teaches colorants at approximately 0.1-20 wt.%, preferably approximately 0.25-15 wt.% and approximately 0.5-10 wt.% (¶[0091]-[0096]). Instant claim 9’s approximately 0.6-3.5 wt.% range is entirely within Rosario-Meléndez’s preferred approximately 0.5-10 wt.% range. Selection of that narrower range is prima facie obvious (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)).
Regarding instant claim 10, Rosario-Meléndez expressly teaches that the lip composition may be in liquid form (¶[0029]) and reports preparation of a homogeneous liquid composition (¶[0118]), therefore instant claim 10 is obvious. Regarding instant claim 11, Rosario-Meléndez teaches optional wax-containing additives (¶[0098]-[0101]) and exemplifies approximately 0.5 wt.% silicone resin wax (Examples 3-4, ¶[0121]-[0122]). The exemplified 0.5 wt.% wax concentration is less than the approximately 4 wt.% maximum recited by instant claim 11, therefore instant claim 11 is obvious.
Regarding instant claim 13, Rosario-Meléndez eteaches siloxysilicate resin, including trimethylsiloxysilicate, as a film-forming component (¶[0032]-[0036]). Because instant claim 13 is written in Markush form and is satisfied by at least one member of the recited group, Rosario-Meléndez’s siloxysilicate-resin teaching satisfies the instant claim, and instant claim 13 is therefore obvious. Regarding instant claim 14, Rosario-Meléndez teaches C8-C16 volatile hydrocarbon oils (¶[0078]-[0084]) and expressly teaches liquid lip compositions (¶[0029]; ¶[0118]), thus, instant claim 14 is therefore obvious.
Claims 1, 8, 15, and 17-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Rosario-Meléndez et al. (US20190262257A1; published 29 August 2019, hereinafter referred to as “Rosario-Meléndez”), in view of Arditty (US20190038536A1; published 07 February 2019).
The effective filing date of instant application presently being applied is 27 February 2023. The cited references qualify as prior art because they are published prior to the instant effective filing date, and therefore predate the instant claimed invention. Instant claim 1 is rejected over the teachings of Rosario-Meléndez, as described above, from which instant claim 8 depends, however Rosario-Meléndez does not explicitly the further limitations of instant claim 8.
Instant claim 8 requires the mattifying agent to comprise silica aerogel at approximately 0.6-2 wt.%. Rosario-Meléndez teaches fumed silica as a lipophilic silica mattifying agent (¶[0050]-[0055]) but does not explicitly disclose silica aerogels. Arditty teaches liquid cosmetic compositions for the lips comprising at least one non-volatile oil, at least one volatile hydrocarbon-based oil, at least one mineral thickener, and at least one colorant (Abstract). Arditty explicitly teaches that the mineral thickener can be a silica aerogel (¶[0160]), which is a known alternative to fumed silica. Arditty further teaches that the silica aerogel content ranges from 0.2-2% by weight, preferably 0.3-1.5% (¶[0185]), which fully encompasses the claimed range of 0.6-2%. Selecting a sub-range (0.6-2%) from an overlapping prior art range is routine optimization (see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003), wherein selection of a sub-range from a prior art range is prima facie obvious absent evidence of criticality).
Further, evidentiary reference Martinez et al. (US20220040054A1; published 10 February 2022, hereinafter “Martinez”) provides additional express teaching regarding silica aerogel particles in lip cosmetics at about 0.1-8 wt.%, preferably about 0.25-6 wt.% and more preferably about 0.5-4 wt.% (¶[0079]-[0083]). The claimed approximately 0.6-2 wt.% range lies entirely within Martinez’s approximately 0.5-4 wt.% preferred range.
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to employ Arditty’s (or Martinez’s) known silica-aerogel particulate in place of or in addition to Rosario-Meléndez’s silica particulate in order to obtain the known particulate/filler and texture-modifying functions in a silicone-containing lip composition. Both are silica-based cosmetic particulates used in closely related lip formulations. Selection of the narrower 0.6-2 wt.% concentration is prima facie obvious (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)), therefore instant claim 8 is obvious.
Regarding instant claim 15, Rosario-Meléndez teaches a liquid lip cosmetic architecture containing silicone film-former, mica-containing colorant/filler, silica particulate, volatile oil, nonvolatile silicone oil and optional wax, and teaches mixing until a homogeneous liquid composition is obtained (¶[0029], ¶[0032]-[0036], ¶[0050]-[0064], ¶[0078]-[0096], ¶[0098]-[0101], ¶[0118]). Rosario-Meléndez teaches mica-containing pearlescent colorants within approximately 0.1-20 wt.%, preferably approximately 0.5-10 wt.% (¶[0091]-[0096]). Thus, selection of approximately 6.5-10 wt.% mica falls within its disclosed range.
Rosario-Meléndez does not, however, expressly teach silica aerogel, does not provide an adequate express teaching that its Nylon-611/dimethicone polyorganosiloxane copolymer is the presently claimed silicone elastomer, and does not expressly teach the combination of 40-80 wt.% claimed oil system with the 4:1-10:1 nonvolatile-silicone:volatile ratio. Arditty supplies the aerogel and silicone-elastomer teachings.
Arditty expressly concerns liquid cosmetic compositions for the lips (¶[0001], ¶[0012]-[0021]). Arditty teaches silica aerogel as a mineral thickener, expressly selecting the mineral thickener from hydrophobic fumed silica, hydrophobic silica aerogel and mixtures thereof (¶[0160]). Arditty teaches approximately 0.2-2 wt.% mineral thickener, preferably approximately 0.3-1.5 wt.% (¶[0185]). Arditty also teaches platelet-shaped solid particles and expressly identifies mica as a preferred platelet-shaped mineral filler (¶[0214]-[0215], ¶[0247], ¶[0250], ¶[0254]). Arditty’s nacre disclosure expressly includes mica-containing nacre particles (¶[0237]) and teaches such colored/pearlescent particles in amounts extending to approximately 10 wt.% (¶[0243]).
Arditty expressly identifies powders of crosslinked organopolysiloxane elastomer, including commercially available KSP-100 through KSP-105, KSP-200 and KSP-300 materials (¶[0252]-[0253]). Thus, Arditty supplies an express structural teaching of a silicone elastomer without any need to characterize Rosario-Meléndez’s polyorganosiloxane copolymer as an elastomer. Arditty additionally teaches volatile hydrocarbon oils including C8-C16 hydrocarbons such as isododecane, isodecane and isohexadecane (¶[0258], ¶[0263]-[0265]) and expressly teaches volatile oil at no more than approximately 10 wt.%, more particularly no more than approximately 8 wt.%, and advantageously approximately 1-8 wt.% (¶[0267]).
Arditty therefore independently establishes that relatively low volatile-oil concentrations were known and workable in liquid lip compositions before the instant effective filing date. Arditty further states that, when volatile and nonvolatile oils are combined, the oil mixture forms a single phase after homogenization without macroscopic phase separation after 24 hours at 25°C (¶[0268]). Evidentiary reference Martinez further strengthens the teaching concerning the high nonvolatile-silicone oil system and relative volatile/nonvolatile proportions.
Martinez teaches approximately 60-85 wt.% nonvolatile silicone oil together with silicone film-former in a lip cosmetic topcoat (¶[0123]; claims 7-10 and 14). Martinez further expressly teaches that volatile oil may be incorporated into that nonvolatile-oil carrier at a concentration lower than the nonvolatile oil, including up to 40%, 30%, 20%, 10%, 5%, or 1% of the total oils (¶[0097]; claim 11). As explained above, selecting 60 wt.% nonvolatile silicone oil and a 10%-of-total-oils volatile fraction produces approximately 6.67 wt.% volatile oil, approximately 66.67 wt.% combined oil system, and a nonvolatile-silicone:volatile ratio of approximately 9:1. Those values simultaneously satisfy instant claim 15’s approximately 40-80 wt.% oil system, approximately 0.5-10 wt.% volatile oil, and approximately 4:1-10:1 nonvolatile-silicone-oil:volatile-oil ratio.
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to modify Rosario-Meléndez’s liquid lip composition according to the complementary teachings of Arditty and futher supported by the teachings of Martinez. All three references concern lip cosmetic formulations employing overlapping classes of oils, pigments/fillers and silicone ingredients. Rosario-Meléndez teaches the matte film-forming lip architecture. Arditty teaches that silica aerogel, crosslinked silicone-elastomer particles, platelet-shaped mica and low amounts of C8-C16 volatile oil are suitable ingredients for liquid lip compositions. Martinez further highlights a nonvolatile-silicone-dominant oil carrier and expressly controls the relative amount of volatile oil in such an oil carrier. The combined teachings would have suggested arriving at the instant invention to one of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)).
A person of ordinary skill would have had reason to employ Arditty’s known silica-aerogel and silicone-elastomer particulate system in a Rosario-Meléndez-type liquid lip formulation because Arditty expressly demonstrates those ingredients as lip-compatible cosmetic fillers/thickeners. The artisan likewise would have had reason to incroporate Martinez’s nonvolatile-silicone-dominant oil proportions because Martinez teaches that the volatile component assists rapid setting whereas the nonvolatile silicone contributes plasticization and durable cosmetic film properties (¶[0132]).
There also would have been a reasonable expectation of success. The proposed combination merely uses known cosmetic ingredients for their known functions in closely analogous lip formulations, using conventional mixing/homogenization. Arditty expressly teaches homogenization and single-phase volatile/nonvolatile oil mixtures (¶[0268]); Rosario-Meléndez expressly reports a homogeneous liquid product (¶[0118]); and Martinez provides actual lip formulations employing high nonvolatile silicone-oil concentrations. Accordingly, the combination represents the predictable use of familiar formulation components and routine optimization of expressly recognized quantitative variables (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-18 (2007)) and instant claim 15 is therefore prima facie obvious.
Regarding instant claim 17, Rosario-Meléndez teaches C8-C16 volatile hydrocarbons including isododecane and isohexadecane (¶[0078]-[0084]). Arditty independently teaches C8-C16 volatile hydrocarbon oils including isododecane, isodecane and isohexadecane (¶[0263]-[0265]), therefore instant claim 17 adds no patentable distinction. Regarding instant claim 18, Arditty expressly teaches approximately 1-8 wt.% volatile oil (¶[0267]), overlapping claim 18’s approximately 4-10 wt.% range over approximately 4-8 wt.%. Further evidentiary reference Martinez discloses oil proportions that likewise yield, for example, approximately 6.67 wt.% volatile oil as explained above. Thus, instant claim 18 is prima facie obvious (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)).
Regarding instant claim 19, Rosario-Meléndez teaches optional wax/additives and exemplifies approximately 0.5 wt.% silicone resin wax (¶[0098]-[0101], ¶ [0121]-[0122]). Arditty additionally identifies synthetic and natural micronized wax materials among suitable particulate ingredients (¶[0251]) and provides filler concentrations extending below 4 wt.% (¶[0255]). The instant claimed less than approximately 4 wt.% wax limitation is therefore encompasses taught workable amounts.
Regarding instant claim 20, Arditty teaches approximately 0.2-2 wt.% mineral thickener including silica aerogel (¶[0160], ¶[0185]). Instant claim 20’s approximately 0.6-2 wt.% silica-aerogel range is contained within the prior-art range and shares its 2 wt.% upper endpoint. Further evidentiary reference Martinez independently teaches silica aerogel at approximately 0.1-8 wt.%, preferably approximately 0.25-6 wt.% and approximately 0.5-4 wt.% (¶[0079]-[0083]). Instant claim 20 is therefore prima facie obvious (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)).
New Rejections
The following new rejections are made from the previous Office Correspondence dated 08 April 2026, as the applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
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-AlA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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 underlying obviousness under 35 U.S.C. § 103 are those set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and 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.
The analysis must consider the claim as a whole and provide an articulated reason with a rational underpinning for the proposed modification or combination (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418-22 (2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
A person of ordinary skill in the art at the relevant time would have possessed a bachelor's degree in chemistry, chemical engineering, cosmetic science, or a closely related field, combined with approximately two to four years of experience in the formulation and development of cosmetic or personal care compositions. Alternatively, an individual with an advanced degree (e.g., M.S. or Ph.D.) in a relevant discipline and at least one to two years of similar experience would also qualify.
A person of ordinary skill in the art would have a working knowledge of the physicochemical properties of cosmetic ingredients, including volatile and nonvolatile oils, silicone-based film-formers, platy minerals (such as mica), and mattifying agents like silica aerogels. They would be capable of understanding and applying principles of colloid and interface science, rheology, and emulsion chemistry to design anhydrous liquid compositions with targeted performance attributes, such as dry-down time, tactile comfort, and optical effects. Additionally, they would be familiar with standard industry practices for optimizing ingredient ratios and concentrations to achieve desired consumer benefits, and would routinely consult the scientific literature, patents, and formulation handbooks in the field of cosmetic chemistry.
Claims 1 and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Rosario-Meléndez et al. (US20190262257A1; published 29 August 2019, hereinafter referred to as “Rosario-Meléndez”), in view of Arditty (US20190038536A1; published 07 February 2019).
The effective filing date of instant application presently being applied is 27 February 2023. The cited references qualify as prior art because they are published prior to the instant effective filing date, and therefore predate the instant claimed invention. Rosario-Meléndez teaches the limitations of instant claim 1, as described above, from which instant claims 12 depends, however the basis that Rosario-Meléndez’s Nylon-611/Dimethicone Copolymer itself establishes the claimed “silicone elastomer” is not maintained for instant claim 12.
Although, Arditty, cited in the previous Office Correspondence, explicitly discloses a crosslinked organopolysiloxane elastomer powder coated with a silicone resin as possible filler components, which are silicon elastomers (¶[0252]-[0253]). Further, the evidentiary reference Martinez et al. (US20220040054A1; published 10 February 2022, hereinafter “Martinez”) provides additional express teaching regarding non-emulsifying organopolysiloxane elastomers, including dimethicone crosspolymer materials and commercially available organopolysiloxane elastomer gels, for lip cosmetic compositions (¶[0062]-[0071]). Martinez teaches such elastomer materials at about 1-30 wt.%, preferably about 2-10 wt.% (¶[0071]). Martinez further teaches that these materials provide thickening, cushion, improved application and soft/mattifying feel (¶[0070]).
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to include the known optional silicone elastomer taught by Arditty, and also by Martinez, in the composition of Rosario-Meléndez to provide these conventional texture, application and mattifying benefits, as explicitly identified by the teachings of Martinez. The materials are expressly demonstrated for the same field of use, and their incorporation would have been a predictable use of a known cosmetic ingredient according to its established function (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-18 (2007)). Thus, instant claim 12 is therefore obvious over Rosario-Meléndez in view of Arditty, and further supported by Martinez.
Claims 1, 5, 15, 18, 21 and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Rosario-Meléndez et al. (US20190262257A1; published 29 August 2019, hereinafter referred to as “Rosario-Meléndez”), in view of Arditty (US20190038536A1; published 07 February 2019), and in further view of Martinez et al. (US20220040054A1; published 10 February 2022, hereinafter “Martinez”).
The effective filing date of instant application presently being applied is 27 February 2023. The cited references qualify as prior art because they are published prior to the instant effective filing date, and therefore predate the instant claimed invention. Rosario-Meléndez or Rosario-Meléndez in view of Arditty teach the limitations of instant claims 1, 5, 15, and 18, as described above, from which instant claims 21 and 22 depend. Newly added claims 21 and 22 are also rejected over the same prior art, Rosario-Meléndez in view of Arditty, and in further view of Martinez, as outlined below.
Instant claim 21 depends from instant claim 5 and additionally requires silica aerogel at approximately 0.6-2 wt.%. The approximately 4-10 wt.% volatile-oil limitation is obvious for the reasons set forth for instant claim 5. Martinez teaches silica aerogel particles in lip compositions at approximately 0.1-8 wt.%, preferably approximately 0.25-6 wt.% and approximately 0.5-4 wt.% (¶[0079]-[0083]). Therefore, instant claim 21’s approximately 0.6-2 wt.% range is within the preferred prior-art range.
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to employ the known silica aerogel in Rosario-Meléndez’s silica-containing matte lip composition, with a reasonable expectation of obtaining the conventional particulate/texture function, for the reasons stated for instant claim 8 above, therefore instant claim 21 is obvious.
Instant claim 22 depends from instant claim 18 and additionally requires approximately 0.6-2 wt.% silica aerogel. The volatile-oil limitation is obvious for the reasons stated for instant claim 18, and the silica-aerogel limitation is obvious for the reasons stated for instant claim 20. Thus, instant claim 22 is obvious over Rosario-Meléndez in view of Arditty and in further view of Martinez.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 08 August 2026, have been fully considered, but are persuasive only in part.
The applicant argues that Rosario-Meléndez would have led one of ordinary skill toward relatively high amounts of volatile oil, rather than toward the presently claimed range of about 0.5% to about 10%, because Rosario-Meléndez discloses about 5%-70% volatile solvent, with preferred ranges of about 15%-65% and about 30%-60%. Applicant further argues that most of Rosario-Meléndez’s broad range lies above 10%. The argument is not persuasive.
Rosario-Meléndez discloses volatile solvent in an amount from about 5% to about 70% by weight, including all ranges and subranges therebetween. The presently claimed range of about 0.5% to about 10% therefore overlaps Rosario-Meléndez’s express disclosure over at least the approximately 5%-10% portion of the claimed range. A prima facie case of obviousness ordinarily exists where a claimed numerical range overlaps a prior-art range (see In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); see also MPEP § 2144.05). The Federal Circuit has explained that even a relatively small overlap may suffice and that selecting a narrower range from a disclosed broader range ordinarily presents a prima facie case absent persuasive evidence of criticality or unexpected results.
The applicant’s mathematical observation that a majority of Rosario-Meléndez’s 5%-70% range lies above 10% does not remove the expressly disclosed 5%-10% portion from the reference. Obviousness is not determined according to the percentage of a prior-art range that overlaps the claim. Rosario-Meléndez’s preferred 15%-65% and 30%-60% ranges do not amount to a teaching away from its expressly disclosed lower amounts. A reference does not teach away merely because it identifies another embodiment as preferred (see In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004)). Disclosure of alternatives does not constitute teaching away unless the reference criticizes, discredits, or otherwise discourages the claimed alternative (see also In re Gurley, 27 F.3d 551, 553-54, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994); MPEP § 2123, § 2145). Rosario-Meléndez does not criticize or discourage the approximately 5%-10% portion of its disclosed range.
Moreover, the proposition that a person of ordinary skill in the lip-cosmetic art would have understood low volatile-oil concentrations to be technically viable is independently corroborated by Arditty. Arditty teaches liquid lip cosmetic compositions in which volatile hydrocarbon and/or volatile silicone oils may be present at no more than 10 wt.%, more particularly no more than 8 wt.%, and advantageously 1%-8 wt.%. Arditty further describes its liquid lip compositions as producing a uniform, glossy, comfortable, non-tacky film. Thus, the relevant prior art as a whole does not establish that formulators were directed away from low concentrations of volatile oil. Accordingly, the amendment requiring about 0.5%-10% volatile oil does not overcome the prima facie case.
The applicant further relies on the specification’s teaching that tactile discomfort was observed when the dimethicone:isododecane ratio fell below about 4:1. This argument is not persuasive. Rosario-Meléndez discloses both constituent variables from which the claimed ratio is derived: nonvolatile silicone oil from about 2% to about 30% and volatile solvent from about 5% to about 70%. Selection of values expressly within those ranges yields ratios falling within the claim. For example, 20% nonvolatile silicone oil and 5% volatile oil provide a 4:1 ratio, and 30% nonvolatile silicone oil and 5% volatile oil provide a 6:1 ratio. The claimed ratio is therefore not a new chemical species or different component arrangement, but a numerical relationship obtained from concentrations of two ingredients that Rosario-Meléndez expressly teaches may be used in the same class of lip compositions. Under In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003), and MPEP § 2144.05, routine selection and optimization within disclosed compositional ranges ordinarily establishes prima facie obviousness. This conclusion is subject, however, to consideration of the applicant’s evidence of alleged criticality, which is discussed below.
The applicant argues that Rosario-Meléndez teaches only very small concentrations of mica because its disclosure concerning non-lipophilic filler generally specifies greater than 0% to about 3.5%, preferably about 1%-2%. This argument is not persuasive. The argument does not consider Rosario-Meléndez’s complete disclosure. Rosario-Meléndez does disclose mica as a possible non-lipophilic filler. But it also separately identifies mica-containing pearlescent pigments as colorants, including titanium-oxide-coated mica and other coated mica pigments. Rosario-Meléndez teaches colorant amounts from about 0.1%-20%, preferably about 0.25%-15%, and preferably about 0.5%-10%.
Thus, the reference is not limited to 0%-3.5% mica. Where mica is employed as the pearlescent/colorant material expressly contemplated by Rosario-Meléndez, its disclosed 0.1%-20% range encompasses the approximately 6.5%-10% mica range recited in claims 3 and 15. Further, the coating of Rosario-Meléndez’s exemplified pearlescent mica does not remove that material from the presently claimed “natural mica” or “synthetic mica” absent a claim limitation excluding coated mica. The present specification itself contemplates surface-treated/coated platy mineral. Accordingly, the applicant has not established that the mica disclosed by Rosario-Meléndez falls outside the broadest reasonable interpretation of the claimed mica/platy-mineral limitation. The overlap therefore supports a prima facie case, subject to the applicant’s unexpected-results evidence.
The applicant relies upon inventive Examples E1 and E2 and Comparative Examples C1-C11 and argues that the claimed low volatile-oil content, in conjunction with mica and the other claimed ingredients, produces unexpectedly improved drying time, tactile comfort, blurring, and mattity. The examiner has thoroughly considered that evidence, wherein evidence contained in the specification must be considered in the obviousness determination. The evidence, however, is insufficient on the present record to overcome the prima facie case.
The specification reports that E1/E2 contain 46% dimethicone, 6.3% isododecane, 8.5% mica, 1.0% silica silylate, and a dimethicone:isododecane ratio of 7.3:1. The evaluation was performed by having a user apply the compositions to her lips, followed by visual and tactile assessments of blurring, mattity, comfort, wear, and a kiss test for drying. The examiner does not question that the reported E1/E2 formulation performed as reported. Rather, the probative deficiency concerns what proposition the data establish across the scope now claimed.
Claim 1 is substantially broader than E1/E2. Claim 1 encompasses, among other things volatile-oil concentrations ranging from about 0.5% through about 10%, whereas E1/E2 test 6.3%; nonvolatile:volatile ratios throughout about 4:1 to about 10:1, whereas E1/E2 test 7.3:1; any qualifying nonvolatile silicone oil and any qualifying volatile oil, rather than the specific dimethicone/isododecane pair; any platy mineral, without requiring the 6.5%-10% mica amount of E1/E2; any mattifying agent, without requiring the exemplified silica silylate; and no mandatory silicone elastomer.
Thus, E1/E2 constitute a narrow formulation point within a considerably broader genus. The Federal Circuit and its predecessor have repeatedly required unexpected-results evidence to be commensurate in scope with the claimed invention. In re Lindner, 457 F.2d 506, 508-09, 173 USPQ 356, 358-59 (CCPA 1972), found evidence from a single composition insufficient where there was no adequate basis for concluding that the numerous compositions encompassed by the claim would behave similarly. In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289, 296 (CCPA 1980), likewise requires a sufficient relationship between the demonstrated result and the breadth claimed (see also MPEP §716.02(d)).
A showing need not test every conceivable point in a claim if the data establish a trend that a skilled artisan could reasonably extrapolate. But no such trend has been shown here for volatile-oil concentrations extending down to about 0.5%, for the full approximately 4:1-10:1 ratio, for the full range of claimed oils, platy minerals, and mattifying agents, or for compositions lacking a silicone elastomer. Accordingly, the examples are not commensurate in scope with claim 1.
Regarding claim 15, the evidence is more pertinent to claim 15 because claim 15 requires mica, silica aerogel, a silicone film-former, a silicone elastomer, and a 40%-80% oil system. Nevertheless, the showing remains materially narrower than the claim. E1/E2 test essentially one oil ratio and one mica concentration: 46% dimethicone, 6.3% isododecane, 8.5% mica, and 1% silica silylate. The tables further aggregate “Other Silicones” into a single 35% entry that encompasses silicone resin, silicone elastomer, silicone wax, and polyorganosiloxane copolymer, rather than independently identifying their amounts.
Claim 15, by contrast, encompasses a broad 40%-80% oil-system range, about 0.5%-10% volatile oil, about 4:1-10:1 nonvolatile-silicone:volatile ratio, 6.5%-10% mica, and multiple possible silicone film-formers, silicone elastomers, and oils. The comparative formulations also change multiple formulation parameters simultaneously. For example, the E1/E2 formulation differs from several comparative compositions in volatile-oil concentration, relative silicone amounts, colorant concentration, mica amount or presence, and other ingredients. Consequently, the evidence does not sufficiently isolate the claimed volatile-oil range or ratio as the cause of the asserted total improvement.
The record must provide a sufficient factual basis from which the asserted improvement can reasonably be attributed to the claimed distinction and extrapolated to the breadth claimed. That showing has not been made here. The examiner therefore accords the examples probative weight, but finds that their weight is insufficient to overcome the prima facie case when the evidence and prior art are considered together. The examiner further notes that applicant’s characterization that C1-C10 contain “more than 12%” volatile oil is not literally accurate for every listed comparative example. For example, C1 and C4 contain 12% isododecane, whereas E1/E2 contain 6.3%. This does not negate the applicant’s data, but it narrows the proposition that may properly be drawn from them.
The applicant argues that the previous Office Coorespondance incorrectly treated Rosario-Meléndez’s polyorganosiloxane copolymer, particularly Nylon-611/Dimethicone Copolymer, as the claimed silicone elastomer. Ther applicant’s argument is persuasive as to that particular factual finding. Under the broadest reasonable interpretation standard, claim terminology must be interpreted consistently with the specification, wherein the broadest reasonable interpretation is not the broadest possible interpretation.
The present specification separately describes polyorganosiloxane-containing polymers as silicone film-formers and identifies Nylon-611/Dimethicone Copolymer as a preferred example. It then separately describes “silicone elastomer,” “organopolysiloxane elastomer,” and “silicone crosspolymer,” and expressly states that silicone elastomers particularly useful in the invention generally do not qualify as silicone film-formers because they tend to form soft particulates rather than films. Rosario-Meléndez, in contrast, describes Nylon-611/Dimethicone as a polyorganosiloxane copolymer, the cited passages do not establish that this material is a crosslinked silicone elastomer of the type contemplated by the present specification. The previous characterization of Rosario-Meléndez’s Nylon-611/Dimethicone Copolymer as itself satisfying the silicone elastomer limitation is therefore withdrawn.
The applicant’s invocation of the “own lexicographer” doctrine need not be accepted in its broadest formulation. An applicant acts as its own lexicographer only by defining a term with sufficient clarity, deliberateness, and precision (see In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994)). Here, the specification language is more descriptive than an exhaustive lexicographic definition (i.e., “one class,” “particularly useful,” and “non-limiting examples”). Thus, the claim should not necessarily be limited only to the specifically identified dimethicone crosspolymers. The broadest reasonable interpretation still requires something that a person of ordinary skill in the art would reasonably recognize as a silicone elastomer, rather than merely any silicone-containing polymer (see MPEP § 2111). Under the broadest reasonable interpretation consistent with this specification, silicone elastomer should be construed substantially more broadly than just the specifically named Dow/Shin-Etsu products or even just dimethicone crosspolymers.
From the applicant’s specification, one of ordinary skill in the art would reasonably construe silicone elastomer to encompass a crosslinked or networked silicone/polyorganosiloxane material having elastomeric properties, including non-emulsifying silicone elastomers, vinyl-modified silicone elastomers, dimethicone crosspolymer, dimethicone/vinyl dimethicone crosspolymer, crosslinked polysiloxane/silicone networks other than the specifically named dimethicone crosspolymers, and silicone elastomers supplied as powders, gels, or oil blends/dispersed phase in a carrier or solvent (such as dimethicone, e.g., EL-9140 DM and EL-9240, isododecane, another volatile silicone oil, hydrocarbon oil) or silicone elastomer having film-forming capability. Non-emulsifying silicone elastomers are identified as a preferred subset, rather than defining all silicone elastomers as necessarily non-emulsifying.
Specifically, the specification recites, “In a preferred embodiment, the composition comprises a silicone elastomer and, in particular, a non-emulsifying silicon[e] elastomer.” That wording indicates a genus and preferred species. It does not appear to redefine “silicone elastomer” as “non-emulsifying silicone elastomer.” The specification states, “One class of non-emulsifying silicone elastomers ... include vinyl modified silicone elastomers such as vinyl dimethicone crosspolymers....”. “One class” and “such as” strongly indicate that vinyl-modified dimethicone crosspolymers are exemplary rather than definitional. Likewise, the passage repeatedly uses terminology such as, “particularly useful”; “may be”; “such as”; “not limited examples”; and “specific but not limiting examples”, which weigh heavily against limiting the broadest reasonable interpertation to the enumerated commercial products or INCI names.
The specification states that silicone elastomers “generally do not qualify as ‘silicone film-formers,’ as they tend to form soft particulates that do not themselves form films”, but this does not constitute an absolute exclusion. That language provides a useful functional characterization of the contemplated materials, but “generally” and “tend to” are not categorical. Thus, the contemplated silicone elastomer is considered to encompass a crosslinked, elastomeric, particulate/network-forming. Any silicone material capable of forming any film is necessarily excluded from silicone elastomer, absent stronger definitional or disclaimer language elsewhere in the specification. However, being a gel is not enough. The material must itself contain an elastomeric silicone/polyorganosiloxane component.
In summary, the broadest reasonable interpretation of silicone elastomer, consistent with the specification, encompasses an elastomeric crosslinked silicone or polyorganosiloxane material, including but not limited to dimethicone crosspolymers and dimethicone/vinyl dimethicone crosspolymers, whether provided as a powder, gel, or blend or dispersion in a silicone oil, hydrocarbon oil, or other solvent. The term is not reasonably limited to the specifically identified commercial products, to vinyl-modified elastomers, to the disclosed viscosity ranges, or, absent an express claim limitation, to non-emulsifying silicone elastomers. Therefore, any prior art ingredient that can reasonably be established as a crosslinked elastomeric silicone network would satisfy the silicone elastomer limitation even if its INCI designation is not one of the examples in the specification.
This correction, however, does not result in allowance of claims requiring a silicone elastomer. The prior art Arditty, cited in the previous Office Correspondence, expressly teaches, as organic fillers for its liquid cosmetic compositions, powders of crosslinked organopolysiloxane coated with silicone resin and expressly identifies commercially available crosslinked organopolysiloxane elastomer powders, including KSP-100 through KSP-105, KSP-200, and KSP-300 (¶[0252]-[0253]). These materials fall squarely within the present specification’s treatment of silicone elastomers as organopolysiloxane elastomers/crosspolymers, including elastomer particles or powders. Further, Martinez ¶[0062]-[0071] provide express silicone-elastomer teachings.
Arditty and Rosario-Meléndez (and Martinez) are closely analogous references. Both concern liquid cosmetic compositions intended for application to the lips and both address oil phases, particulate/filler materials, silicone ingredients, and cosmetic properties. Rosario-Meléndez teaches the matte lip formulation containing the siloxysilicate film-former, silica, colorant/mica, volatile oil and nonvolatile silicone-oil components and Arditty teaches silicone-elastomer powder as a known filler suitable in liquid lip compositions. Thus, it would have been obvious to one of ordinary skill to employ one of Arditty’s expressly identified silicone-elastomer fillers in the Rosario-Meléndez lip formulation as a known cosmetic particulate/filler option, with a reasonable expectation that it would perform its conventional filler/texture function. This represents the predictable use of a known ingredient according to its established function (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-18 (2007)). Accordingly, the silicone-elastomer limitation remains obvious over Rosario-Meléndez in view of Arditty, although the prior finding that Rosario-Meléndez itself supplied that limitation is withdrawn.
Rosario-Meléndez does not teach silica aerogel, it teaches lipophilic/fumed-type silica, however Arditty (¶[0160]) and further Martinez (¶[0079]-[0083]) expressly teach silica aerogel. Arditty contemplates particulate sedimentation followed by redispersion in some embodiments, however, teaches a single-phase volatile/nonvolatile oil mixture after homogenization (¶[0268]). Rosario-Meléndez further supplies the stronger explicit teaching of a homogeneous liquid composition (¶[0118]).
For clarity, the previous reliance on the present specification itself as “admitted prior art” for the polyorganosiloxane film-former limitation is unnecessary and is withdrawn for claim 13. MPEP §2129 permits reliance on an applicant’s admission where the applicant identifies work of another as “prior art.” Merely describing an ingredient as suitable in the applicant’s own specification does not, without more, convert that disclosure into admitted prior art.
No such reliance is required here because claim 13 is satisfied by another member of its Markush group. Claim 13 requires that the silicone film-former comprise at least one material selected from siloxysilicate resin, polyorganosiloxane copolymer, or mixtures thereof. Rosario-Meléndez expressly teaches siloxysilicate resin, including trimethylsiloxysilicate, as a principal component of its matte lip composition. Accordingly, it is unnecessary to establish that Rosario-Meléndez’s Nylon-611/Dimethicone Copolymer performs as a film-former in order to meet claim 13.
The applicant argues that Arditty was cited merely for silica and cannot compensate for Rosario-Meléndez’s asserted deficiencies. The argument is not persuasive. First, Arditty expressly teaches silica aerogels, not merely fumed silica. Arditty states that its mineral thickener may be selected from hydrophobic fumed silicas, silica aerogels, and mixtures thereof. Arditty further teaches a mineral-thickener concentration from 0.2%-2%, preferably 0.3%-1.5%, which overlaps and substantially encompasses the 0.6%-2% range of claims 8, 20, 21, and 22.
Second, as explained above, Arditty expressly teaches crosslinked organopolysiloxane elastomer powders. Third, Arditty independently demonstrates that low concentrations of volatile oil were a recognized formulation option for liquid lip cosmetics, expressly teaching volatile-oil amounts at or below 10%, and advantageously 1%-8%. This further undermines the applicant’s contention that the prior-art direction uniformly favored high volatile-oil concentrations. Thus, Arditty is pertinent not only to silica aerogel but also to silicone elastomer and to the state of the art concerning low-volatile-oil liquid lip formulations.
The examiner has considered the claimed invention as a whole. The rejection is not based merely on the proposition that every compositional parameter is inherently optimizable. Rather, the record establishes express prior-art recognition of the pertinent ingredients, overlapping concentrations, and, significantly, evidentiary reference Martinez’s express control of the volatile-oil proportion relative to the nonvolatile-oil carrier. This provides the factual predicate for a result-effective variable.
Conclusion
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 (87 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 REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at: http:/Awww.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’ s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent- center for more information about Patent Center and https:/Awww.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights