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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 17 March 2026 has been entered.
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 05 March 2026, in response to the Office Correspondence dated 05 December 2025, are acknowledged.
The listing of Claims filed 05 March 2026, have been examined. Claims 1, 3-15, and 17-20 are pending. Claims 1, 13 and 15 are amended and are supported by the originally-filed disclosure. Claims 2 and 16 are canceled and no new claims have been added.
Response to Amendment
The amendments filed 05 March 2026, have been entered. The amendments are accompanied by Applicant Arguments/Remarks. The arguments presented by Applicant have been fully considered and are found unpersuasive. The rejections under 35 U.S.C. § 103 for claims 1, 3-12, 14, and 17-20 are maintained. The Applicant's amendments to claims 13 and 15 necessitate new grounds of rejection under 35 U.S.C. § 103 and the amendments to claims 1 and 15 new grounds of rejection under 35 USC § 112(b), as set forth below, based on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 3, 15 and 17-20 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, regards as the invention.
Claim 3 is rejected as being indefinite. Claim 3 depends from the amened claim 1, wherein claim 1 already requires a weight ratio of platy mineral to oil system of 1:10 to 1:5. The additional concentration range in claim 3 may conflict with that ratio depending on the total oil system concentration. For example, if the oil system is 80% by weight, a platy mineral concentration of 10% would yield a ratio of 1:8, which falls within the 1:10 to 1:5 range. However, if the oil system is 40% by weight, a platy mineral concentration of 10% would yield a ratio of 1:4, which falls outside the claimed range of claim 1. The claims do not specify which limitation controls, rendering the scope ambiguous.
Additionally, the specification at ¶[0059] states that the platy mineral concentration "ranges from about 6.5% ... to about 10% by weight, such as, in particular from about 6.5% by weight to about 10% by weight." However, no guidance is provided on how to reconcile this absolute concentration range with the ratio requirement of claim 1 when the oil system concentration varies. This creates uncertainty as to whether a composition with 10% mica and 40% oil system (ratio 1:4) is intended to be within or outside the scope of the claim. To overcome this rejection, the applicant may amend claim 3 to clarify the interplay between the concentration and ratio limitations, or to delete one of the conflicting limitations.
Claim 15 is also rejected as being indefinite because the relationship between the concentration of mica (6.5% to 10% by weight) and the weight ratio of mica to oil system (1:10 to 1:5) is mathematically inconsistent for certain values within the claimed ranges. Claim 15 recites, in relevant part, "from about 40% by weight to about 80% by weight of an oil system", "from about 6.5% to about 10% mica by weight", and "the mica is present in a weight ratio of mica to oil system from about 1:10 to about 1:5". As a matter of mathematics, for a given mica concentration (M) and oil system concentration (O), the ratio of mica to oil system is M:O. For the ratio to be 1:10, O must equal 10M. For the ratio to be 1:5, O must equal 5M. If M = 10% and the ratio is 1:5, then O must be 50%. That is permissible (50% is within 40-80%). If M = 10% and the ratio is 1:10, then O must be 100%, which falls outside the claimed oil system range of 40-80%. Thus, for a mica concentration of 10%, the ratio of 1:10 is mathematically impossible while also satisfying the oil system concentration limitation. Similarly, if M = 6.5% and the ratio is 1:10, then O must be 65% (permissible). If M = 6.5% and the ratio is 1:5, then O must be 32.5%, which falls below the claimed 40% oil system minimum.
The claim therefore recites inconsistent limitations that cannot be simultaneously satisfied across the full breadth of each range. This renders the claim indefinite because one of ordinary skill would not know which combination of limitations is intended to control (see In re Dembiczak, 175 F.3d 999, 1003 (Fed. Cir. 1999), wherein “A claim is indefinite when the claims, read in light of the specification, still fail to inform a person of ordinary skill in the art of the scope of the invention with reasonable certainty.”).
Dependent claims 17-20 are included in this rejection because they do not cure the defect noted above. To overcome this rejection, the applicant may amend claim 15 to reconcile the mica concentration, oil system concentration, and mica-to-oil ratio limitations (e.g., by deleting one of the conflicting limitations or by providing a mathematical relationship that is consistent across the claimed ranges).
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.
Claims 1, 3-7, and 9-14 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”).
Rosario-Meléndez discloses anhydrous lip compositions and methods of applying them (¶[0001], ¶[0018], ¶[0105]). The compositions may be liquid (¶[0029]) and are homogeneous as cosmetic compositions intended for uniform application (¶[0118]). Rosario-Meléndez teaches nonvolatile silicone oil at 2-30% by weight (¶[0086]-[0090]); volatile hydrocarbon oil (including isododecane, isohexadecane, C11–C13 alkanes) at 5-70% by weight (¶[0078]-[0084]); siloxysilicate resin film-former (claim 1; ¶[0016], ¶[0032]-[0036]); colorant (including mica pearlescent pigments) at 0.1–20% by weight (¶[0091]–[0096]); non-lipophilic filler (including mica) at >0% to 3.5% by weight (¶[0056]-[0064]); lipophilic silica mattifying agent (fumed silica) at 0.5-1.5% by weight (¶[0050]-[0055]); polyorganosiloxane copolymer (silicone elastomer) (¶[0037]-[0049]); and, optionally wax at 0-99% additive proportion, wherein it is used at 0.5% in the examples (¶[0098]-[0101], ¶[0121]-[0122]). Rosario-Meléndez explicitly teaches that the composition may be in liquid form (¶[0029]). This limitation is therefore fully obvious from the reference.
Rosario-Meléndez explicitly teaches siloxysilicate resin as a film-former (¶[0016], ¶[0032]-[0036]). Rosario-Meléndez also teaches polyorganosiloxane copolymers (¶[0037]-[0049]), albeit as “silicone elastomers.” However, the distinction between “film-former” and “elastomer” is not structurally defining in Rosario-Meléndez. One of ordinary skill would recognize that polyorganosiloxane copolymers can function as film-formers depending on the formulation context. Moreover, the claimed Markush group recites two known classes of silicone film-formers, both of which are taught by Rosario-Meléndez. Selecting between known film-formers is a matter of routine optimization.
To the extent Rosario-Meléndez does not explicitly label polyorganosiloxane copolymers as “film-formers,” the applicant’s own specification (¶[0030]-[0039]) admits that polyorganosiloxane-containing polymers (including Nylon-611/Dimethicone Copolymer) are suitable silicone film-formers. The applicant’s admissions in the specification constitute prior art against the applicant’s own claims (see MPEP § 2129, wherein the applicant’s admissions in the specification can be used as prior art). One of ordinary skill would have been motivated to use a polyorganosiloxane copolymer as a film-former based on the applicant’s own disclosure, further rendering instant claim 13 obvious.
The differences between the instant claimed subject matter and Rosario-Meléndez are the recitation of a weight ratio of nonvolatile silicone oil to volatile oil of 4:1 to 10:1 and a weight ratio of platy mineral to oil system of 1:10 to 1:5 (claim 1); a narrower concentration range for total oil system (40-80%), volatile oil (4-10%), mica (6.5-10%), colorant (0.6-3.5%), and wax (<4%) (claims 3-5, 9, and 11); C8-C16 alkanes as the volatile oil (claim 7); and a nonvolatile:volatile oil ratio of 4:1 to 8:1 (claim 6). However, as set forth below, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to arrive at the limitations of the instant claims via routine optimization of ranges expressly or inherently disclosed in Rosario-Meléndez.
Regarding the oil ratio of 4:1 to 10:1, Rosario-Meléndez teaches nonvolatile silicone oil up to 30% and volatile oil down to 5%. Selecting 20-30% nonvolatile and 5-7.5% volatile yields a ratio of 4:1 to 6:1, squarely within the 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.
Regarding the platy mineral to oil system ratio of 1:10 to 1:5, Rosario-Meléndez discloses mica as both a pearlescent pigment, ranging from 0.1-20% (¶[0091]-[0096]) and as a non-lipophilic filler, ranging from >0-3.5% (¶[0056]-[0064]). The claimed range of 6.5-10% is squarely within the broader 0.1-20% range. Selecting a mid-range value for mica to achieve desired optical effects (e.g., blurring, pearlescence) is routine. The reference also discloses nonvolatile silicone oil from 2-30% and volatile oil from 5-70%, as discussed above. Selecting, for example, 20-30% nonvolatile oil and 5-7.5% volatile oil totals 25-37.5% oil system and using 3.75-5.0% mica from the 0.1-20% range results in a mica:oil ratio of 1:10 to 1:5. The ratio is therefore an obvious optimization of overlapping ranges. Adjusting the amount of mica relative to the oil phase to control viscosity, texture, and optical effects (e.g., blurring) is routine.
Rosario-Meléndez discloses the following broader ranges, from which the claimed narrower ranges are directly selected:
Nonvolatile oil from 2-30% and volatile oil from 5-70%, equaling 7-100% total oil, overlapping with the instant claimed range from 40-80% oil system, which represents routine selection of mid-range values;
Volatile oil from 5-70%, with “about” permitting 3.75% lower bound, overlapping with the instant claimed range from 4-10% volatile oil, in which it is obvious to adjust the volatile oil content to balance dry time and comfort;
Mica from 0.1-20% (pearlescent) plus >0-3.5% filler, overlapping with the instant claimed range from 6.5-10% mica, in which it is obvious to increase mica for enhanced pearlescence or blurring;
Colorant from 0.1-20%, overlapping with the instant claimed range from 0.6-3.5% colorant, in which it is routine to adjust the colorant selection for desired color intensity; and
Wax from 0-99% additive proportion and 0.5% in examples, overlapping with the instant claimed range from <4% wax, in which it is obvious to minimize wax to maintain liquid consistency.
One of ordinary skill would have been motivated to optimize these ranges to achieve standard cosmetic goals (e.g., improved wear, texture, finish) with a reasonable expectation of success. No unexpected results have been demonstrated.
Regarding the C8-C16 alkanes of instant claim 7, Rosario-Meléndez teaches volatile hydrocarbon oils including isododecane (C12), isohexadecane (C16), Isopar L (C11-C13), and Isopar H (C11-C12) (¶[0078]-[0084]). Claim 7 merely recites a genus that encompasses these specific examples. No unexpected properties are associated with this selection.
Regarding the ratio 4:1 to 8:1 of instant claim 6, this narrower ratio is entirely encompassed by the 4:1 to 10:1 ratio of claim 1, which is itself obvious. The sub-range is a routine optimization and is therefore obvious (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.
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).
Rosario-Meléndez teaches the limitations of instant claim 1, as described above, from which instant claim 8 depends, however Rosario-Meléndez does not explicitly disclose the use of non-fumed silica aerogels as in instant claim 8. Rosario-Meléndez also does not teach the specific silica aerogel limitation of the composition of claims 15-20, however all of the other limitations of the claims are rendered obvious by the teachings of Rosario-Meléndez as described above for the claims above.
Rosario-Meléndez teaches fumed silica as a lipophilic silica mattifying agent 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).
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to substation the missing limitation of the silica aerogel to the invention of Rosario-Meléndez. Rosario-Meléndez teaches all other limitations of instant claim 15 (i.e., oil system, nonvolatile:volatile ratio, silicone film-former, silicone elastomer, mica, optional wax, homogeneity). Arditty supplies the missing silica aerogel limitation by teaching silica aerogels as direct substitutes for fumed silica in lip compositions for the same purpose of mattifying and thickening. One of ordinary skill would have been motivated to substitute fumed silica with silica aerogel to achieve a lighter, smoother feel with a reasonable expectation of success (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), wherein it is obvious to try when finite number of predictable solutions). The combination is proper because both references are directed to anhydrous or liquid lip compositions, and the substitution is predictable.
When considered as a whole, instant claim 15 merely combines known elements (i.e., oil system, film-former, elastomer, mica, silica aerogel, and wax) in a predictable manner, with all concentration ranges and ratios derived directly from Rosario-Meléndez or Arditty. No synergy or unexpected result has been demonstrated (see In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986), in which it is obvious to combine known ingredients in predictable amounts to achieve expected results). The claim limitations of instant claims 17-20 claims that depend from claim 15 add limitations already taught by Rosario-Meléndez (i.e., C8-C16 alkanes, volatile oil concentration 4-10%, and wax <4%) or Arditty (i.e., silica aerogel 0.6-2%). No new patentable weight is added.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 06 March 2026, have been fully considered.
The applicant argues that the rejection of Claims 12 and 15-20 is erroneous because the Office Action allegedly “incorrectly” asserted that polyorganosiloxane copolymers satisfy the silicone elastomer element. The applicant contends that such copolymers are film-formers, not elastomers.
The Examiner respectfully disagrees. Rosario-Meléndez teaches siloxysilicate resin as a film-former (¶[0016], and ¶[0032]-[0036]) and Rosario-Meléndez also teaches the use of at least one polyorganosiloxane copolymer, albeit as a silicone elastomer (¶[0037]-[0049]). The reference does not limit elastomers to crosslinked silicone networks; rather, it expressly identifies polyorganosiloxane copolymers as functional elastomers suitable for lip compositions. The applicant’s attempt to reclassify these materials as exclusively “film-formers” is a semantic distinction without structural or functional difference in the context of the prior art. Moreover, the applicant has not provided any evidence, such as comparative data or definitional support from the specification, that the polyorganosiloxane copolymers of Rosario-Meléndez are structurally distinct from the silicone film-formers now recited in amended claim 13. Absent such evidence, the examiner maintains that Rosario-Meléndez teaches the silicone elastomer limitation of claims 12 and 15-20. Accordingly, the rejection of these claims is maintained.
Further in regards to the amended claim 13, to the extent Rosario-Meléndez does not explicitly label polyorganosiloxane copolymers as “film-formers,” the applicant’s own specification (¶[0030]-[0039]) admits that polyorganosiloxane-containing polymers (including Nylon-611/Dimethicone Copolymer) are suitable silicone film-formers. Thus, the prior art teaches each member of the Markush group. Selecting between known film-formers is a matter of routine optimization. One of ordinary skill would have been motivated to use a polyorganosiloxane copolymer as a film-former based on the applicant’s own disclosure, further rendering instant claim 13 obvious.
The applicant argues that the combination of (i) the nonvolatile silicone oil to volatile oil weight ratio of 4:1 to 10:1 and (ii) the platy mineral to oil system weight ratio of 1:10 to 1:5 yields “surprisingly good performance” including improved blurring, tactile properties, and drying time. The applicant contends that Rosario-Meléndez would not have taught or suggested these ratios working together. The Examiner finds this argument unpersuasive.
Rosario-Meléndez discloses overlapping ranges, as noted in the prior Office Correspondence, of 2-30% by weight nonvolatile silicone oil, 5-70% by weight volatile hydrocarbon oil, and 0.1-20% by weight mica as pearlescent pigment or non-lipophilic filler. From these ranges, one of ordinary skill could readily select combinations that yield anonvolatile:volatile oil ratio of 4:1 to 10:1 (e.g., 20% nonvolatile, 5% volatile = 4:1; 30% nonvolatile, 5% volatile = 6:1; 25% nonvolatile, 4% volatile = 6.25:1) and platy mineral:oil system ratio of 1:10 to 1:5 (e.g., 3.75% mica in 37.5% oil system = 1:10; 5% mica in 25% oil system = 1:5). The mere recitation of narrower ranges selected from broader prior art ranges is prima facie obvious under MPEP §2144.05, absent evidence of unexpected results.
The applicant cites ¶[0121] and comparative examples 4, 6, 9, 10, and 11. However, the applicant has not provided a direct side-by-side comparison showing that compositions falling outside the claimed ratio ranges but otherwise identical fail to achieve the claimed properties, while compositions inside the ranges succeed. The examples cited (e.g., comparative examples 9 and 10) vary multiple parameters simultaneously, including the presence or absence of volatile oil, the identity of oils, and the platy mineral concentration. Such multifactor variations do not isolate the criticality of the claimed ratios. Moreover, the applicant has not submitted any objective evidence of unexpected results, such as comparative testing against the closest prior art compositions of Rosario-Meléndez. Attorney argument alone cannot overcome a prima facie case of obviousness (see In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
The applicant asserts that the two ratios “work together” to yield improved properties but provides no statistical or comparative analysis demonstrating synergy (i.e., that the combination achieves an effect greater than the sum of the individual effects). Without such evidence, the examiner is not persuaded that the claimed combination is anything other than the routine optimization of two independent formulation parameters.
The applicant argues that Arditty cannot compensate for Rosario-Meléndez’s deficiencies. However, the applicant has not identified any deficiency in Rosario-Meléndez with respect to the silica aerogel limitation. Rosario-Meléndez teaches fumed silica mattifying agents. Arditty teaches that silica aerogels are direct substitutes for fumed silica in lip compositions, for the same purpose of thickening and mattifying, and in overlapping concentration ranges of 0.2-2% by weight. One of ordinary skill would have been motivated to substitute silica aerogel for fumed silica to achieve a lighter, smoother feel as a predictable result (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), wherein it is obvious to try when there are a finite number of identified, predictable solutions).
Conclusion
No claims are allowed.
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://www.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.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615