DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/13/2026 has been entered.
Response to Arguments
The Applicant's amendments and/or arguments filed 7/13/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. Applicant's arguments are moot in light of the new grounds of rejection necessitated by amendment.
The objections to claims 9 and 20 are withdrawn.
All rejections have been withdrawn and new rejections issued in view of the claims as amended.
Claim Objections
Claims 9-10, 13, and 16 are objected to because of the following informalities:
Claim 9 recites “includees” in parts (a) and (b) instead of “includes”.
Claim 10 recites surfactants using the acronym “PG” but does not define the acronym. Examiner suggests adding, for example, “polyglyercol (PG)” to claim 1 for clarity.
Claims 13 and 16 recite “water-based solvents selected from the group consisting of glycerin, pentylene glycol, and a combination thereof”. Examiner suggests amending “water-based” to “water-soluble” because glycerin and pentylene glycol are compounds, and not water-based.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite that the cosmetic cleansing composition is “free of polyglycerol esters other than polyglyceryl-3 caprylate, polyglyceryl-3 cocoate, polyglyceryl-4 caprate,polyglyceryl-5 laurate, or polyglyceryl-6 caprylate”. This limitation is not supported by the disclosure as originally filed. Applicant states in the Remarks filed 7/13/2026 that “[u]nder MPEP § 2173.05(i), the positive recitation of a class of elements and then the specific positive recitation of members of that class as alternative elements is sufficient basis to exclude members of that class which are not so positively identified.” To the contrary, MPEP 2173.05(i) states “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features.” In other words, positively recited alternative elements may be excluded in the claims. In the instant case, the originally filed specification recites a select few species of polyglycerol esters that are suitable alternatives for inclusion in the composition. The amendment 7/13/2026 attempts to exclude polyglycerol esters, as a class, except for the ones that are positively recited. Under MPEP 2173.05(i), if Applicant had wanted to exclude the positively recited alternative polyglycerol esters, this would have been supported. However, the originally filed disclosure does not positively recite polyglycerol esters, as a class, as suitable alternatives that may now be excluded, thus the amendment constitutes the addition of new matter.
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 the applicant regards as his invention.
Claims 1 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 10, viewed together, are indefinite. Claim 1 recites “wherein the cosmetic cleansing composition is essentially free of polyethylene glycol/polyoxyethylene (PEG/POE) surfactants and is free of polyglycerol esters other than polyglyceryl-3 caprylate, polyglyceryl-3 cocoate, polyglyceryl-4 caprate,polyglyceryl-5 laurate, or polyglyceryl-6 caprylate”. Claim 10 depends from claim 1 and recites, “wherein the cosmetic cleansing composition is essentially free of PEG/POE surfactants selected from the group consisting of PEG-20 glyceryl triisostearate, PEG-7 glyceryl cocoate, PEG-20 methylglucoside sesquistearate, PG-5 dioleate, PG-4 diisostearate, PG-10 isostearate, PEG-60 hydrogenated castor oil, PEG-8 stearate, PEG-8 isostearate, PEG-60 hydrogenated castor oil, PEG-150 Laurate, PEG-150 Distearate, PEG-150 pentaerythrityl tetrastearate, PEG-78 Glyceryl Cocoate, PEG-30 Glyceryl Cocoate, Ceteareth-20, Ceteth-10, Ceteth-20, Isoceteth-20, Laureth-4, Laureth-23, Oleth-10, Oleth-20, Steareth-10, Steareth-20, Steareth-100, and Steareth-21, PEG-20 glyceryl laurate, PEG-40 hydrogenated castor oil, poloxamer 184 (polyoxyethylene polyoxypropylene glycol), and combinations thereof”.
Claim 1, in view of claim 10, is rendered indefinite as it is unclear what species are embraced by the recitation of “essentially free of polyethylene glycol/polyoxyethylene (PEG/POE) surfactants” because claim 10 characterizes polyglycerol esters as species within the genus of PEG/POE surfactants, even though they are not PEGs/POEs. Additionally, claim 1 recites that the composition is free of (all) polyglycerol esters other than the specifically recited species. Claim 10 recites that the composition is free of PG-5 dioleate, PG-4 diisostearate, and PG-10 isostearate. This causes confusion because claim 1 already affirmatively recites the species of polyglycerol esters that are permitted in the composition, thus the recitation that the composition is essentially free of PG-5 dioleate, PG-4 diisostearate, PG-10 isostearate is redundant. Similarly, claim 10 recites species of PEG/POE surfactants that the composition is essentially free of, even though claim 1 already excludes PEG/POE surfactants as a class. Thus, the metes and bounds of claims 1 and 10 are unclear.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 depends from claim 1 and recites the limitation “wherein the cosmetic composition is essentially free of PEG/POE surfactants selected from the group consisting of” followed by a list of species and “combinations thereof”. Claim 1 recites that the composition is “essentially free of polyethylene glycol/polyoxyethylene (PEG/POE) surfactants”. Claim 1 already excludes the entire class of PEG/POE surfactants, thus claim 10 fails to further narrow the scope of claim 1, and in fact seemingly broadens the scope to exclude only certain species of PEG/POE surfactants.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8, 10-13, 15, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Stebbins et al. (US 2021/0128420 A1, published 5/6/2021) in view of Liu et al. (US 2022/0062150 A1, published 3/3/2022, cited in the O.A. dated 6/11/2026), as evidenced by Tamarkin et al. (US 2006/0233721 A1, published 10/19/2006).
Regarding claims 1-7, 10, 15, and 21 Stebbins teaches an aqueous micellar liquid composition comprising an amphoteric surfactant, an alkyl glucoside, and sodium benzoate [Abstract]. The amphoteric surfactant is present in the amount of about 0.2% to about 1.2% by weight of the composition [claim 1]. Stebbins teaches that the amphoteric surfactant may comprise of cocamidopropyl betaine or cocamidopropyl hydroxysultaine [0041] (reads on claims 2-3, 7, and 21). It would be obvious to include cocamidopropyl betaine or cocamidopropyl hydroxysultaine in the amounts that amphoteric surfactants are taught to be suitable in. The amounts taught in the prior art overlap with and make obvious the instantly claimed ranges of surfactant of claims 1-3 and 7. MPEP 2144.05. Inventive Example 1 of Stebbins comprises 0.45% coco-betaine , 0.3% caprylyl/capryl glucoside, 0.1% sodium benzoate, 5% propanediol, 0.12% citric acid (reads on claim 15), and a balance of water [Table 1]. Thus, Stebbins teaches a composition that is essentially free of polyethylene glycol/polyoxyethylene surfactants and is free of polyglycerol esters other than other than polyglyceryl-3 caprylate, polyglyceryl-3 cocoate, polyglyceryl-4 caprate,polyglyceryl-5 laurate, or polyglyceryl-6 caprylate (reads on claims 1 and 10). Stebbins does not explicitly state that the micellar liquid is monophasic. However, Stebbins states that the micellar liquid is a stable microemulsion [0031]. As evidenced by Tamarkin, microemulsions are monophasic, transparent (or slightly translucent) dispersions of oil and water [0005]. Thus, the composition of Stebbins reads on “monophasic”.
Stebbins does not explicitly teach at least one cationic polymer present in an amount that is greater than about 0.01% by weight of the composition. Liu teaches a water-based micellar makeup removal composition comprising a blend of at least two surfactants, the blend comprising at least one nonionic surfactant having an HLB that is in the range from about 8 to about 16, and at least one surfactant having an HLB that is greater than about 16, and one or more powdered polysaccharides [Abstract]. Liu teaches that a suitable surfactant having a high HLB that is greater than 16 includes cocamidopropyl betaine [0070], and a suitable surfactant with low HLB of from about 8 to about 16 is polyglyceryl-4 caprate [0069]. Liu teaches preferable amounts for each surfactant is from about 0.3% to about 5% by weight of the composition [0071]. Liu teaches that the suspended surfactants and powder polysaccharide particles associate with makeup, and the powder binds and coats the makeup [0059]. The partial crystallinity of the polysaccharide powder particles provides for a stable dispersion of the powder in the composition, which facilitates concomitant adherence of the polysaccharide powder to the surface of makeup and to the removal article (such as a pad or tissue), resulting in smudge-resistant makeup removal [0059]. Liu teaches the at least one powdered polysaccharide may be present in the composition in about 0.1% to about 30% by weight of the composition [0082], and further teaches chitosan (reads on cationic polymer) to be a suitable powdered polysaccharide [0078]. It would have been obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Stebbins with that of Liu, and add chitosan to the micellar composition of Stebbins in the amount of about 0.1% to about 30% to form a composition with anti-smudge properties conferred by the chitosan. It would be obvious to use chitosan, a powder polysaccharide, in the amount that powder polysaccharides are taught to be suitable in. The amount of chitosan taught by Liu overlaps and renders obvious the amounts recited for the cationic polymer in instant claims 1 and 4-7.
Regarding claims 8 and 13, Stebbins teaches that the composition may comprise of glycerin [0070], propylene glycol [0072], butylene glycol [0072], and caprylyl glycol [0073]. Stebbins does not explicitly teach amounts suitable for water-soluble solvents. Liu teaches that glycerin, propylene glycol, and butylene glycol also serve as suitable humectants in a micellar composition. Liu further teaches that humectants may be present in the composition in the range of about 0.5% to 5% by weight. It would be obvious to modify the teachings of Stebbins with that of Liu and include glycerin, propylene glycol, and butylene glycol in the amounts that humectants are taught to be suitable in, in order to moisturize the skin. Liu also teaches that caprylyl glycol may be used as a preservative, and that preservatives are suitable in the amount of about 0.01 to about 1% by weight. It would be obvious to modify of Stebbins with that of Liu and include caprylyl glycol in the amount that preservatives are taught to be suitable in, in order to improve the composition’s stability. The ranges taught by the prior art overlap with and make obvious the instantly claimed ranges. MPEP 2144.05. Even though Liu does not explicitly teach the instantly claimed compounds as solvents, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01.
Regarding claims 11-12, Stebbins teaches that the composition may comprise of 0.06% to 0.9% of an alkyl glucoside [0028] such as polyglyercyl-4 caprate [0056]. The range taught by the prior art overlaps with and makes obvious the instantly claimed range. MPEP 2144.05. Even though Stebbins does not explicitly teach polyglyceryl-4 caprate as a co-emulsifier, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Stebbins et al. (US 2021/0128420 A1, published 5/6/2021) in view of Liu et al. (US 2022/0062150 A1, published 3/3/2022, cited in the O.A. dated 6/11/2026), as evidenced by Tamarkin et al. (US 2006/0233721 A1, published 10/19/2006), as applied to claim 1 above, and further in view of INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020, cited in the O.A. dated 6/11/2026).
Regarding claim 9, claim 9 recites limitations that have previously been made obvious (said discussion will not be repeated herein) and further recites that the composition comprises pentylene glycol in the amount of about 3%. INCI Decoder teaches that pentylene glycol is a multi-functional, silky feeling humectant that can be used as an emulsion stabilizer, solvent, broad-spectrum antimicrobial, and a moisturizer [“Pentylene Glycol”]. INCI Decoder demonstrates its compatibility in a micellar water composition alongside the moisturizer/humectant glycerin (aka glycerol). It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to modify the teachings of Stebbins and Liu with that of INCI Decoder, and add pentylene glycol to the composition in order to harness the silky feeling, antimicrobial, and moisturizing qualities of the ingredient within the micellar makeup removing composition. Furthermore, combining or substituting equivalents known for the same purpose is prima facie obvious. Thus, it would have been obvious to substitute pentylene glycol for any of the humectants taught by Liu. As discussed above, Liu teaches that humectants maybe present in the composition in the range of about 0.5% to 5% by weight. It would be obvious to include pentylene glycol in an amount taught to be suitable for humectants.
Claims 14 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Stebbins et al. (US 2021/0128420 A1, published 5/6/2021) in view of Liu et al. (US 2022/0062150 A1, published 3/3/2022, cited in the O.A. dated 6/11/2026), as evidenced by Tamarkin et al. (US 2006/0233721A1, published 10/19/2006), as applied to claim 1 above, and further in view of Lukic et al. (2021).
Regarding claim 14, Stebbins teaches that the composition may comprise of citric acid as a pH adjuster [Table 1] but does not explicitly teach that the composition has a pH in the range of about 4.0 to about 8.0. Lukic teaches that the acidic pH of the skin surface is a regulating factor for the maintenance of stratum corneum homeostasis and barrier permeability [Abstract; 6. Importance of Acidic Skin pH]. Topically applied products, through their impact on skin pH, can thus impact skin health and maintenance [Abstract]. Lukic further teaches that topical skin products optimally have a pH in the range of 4 to 6 [Abstract]. Additionally, adjusting the pH of topical skin products using pH adjusting ingredients and buffers, such as lactic acid, citric acid, sodium acetate, and ammonia, is well-known and frequently used in the art [see e.g., pgs. 8, 10-11]. Thus, it would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Stebbins with that of Lukic and formulate the composition such that the pH is between 4 to 6. The range taught by the prior art overlaps with and makes obvious the instantly claimed range. MPEP 2144.05. A skilled artisan would be motivated to make this modification in order to avoid disrupting the skin barrier and maintain the functioning of skin lipids, which is known to play a role in skin disturbances and diseases [Abstract; 6. Important of Acidic Skin pH].
Regarding claims 16-17 and 19, these claims recite limitations that have been previously made obvious over Stebbins, Liu, and Lukic; said discussion will not be repeated herein.
Regarding claim 18, this claim recites limitations that have been previously made obvious over Stebbins, Liu, and Lukic; said discussion will not be repeated herein. Claim 18 further recites the limitation wherein the cosmetic composition demonstrates cleansing of long-wear foundation and lipstick when applied to a keratinous tissue. This limitation is a property of the composition made obvious by Stebbins and Liu. Per MPEP 2112.01, “where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). The claimed composition is substantially identical to the composition resulting from the combined teachings of Stebbins and Liu, and therefore these compositions are presumed to have the same inherent properties when used as a cleansing make-up remover on keratinous tissues.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Stebbins et al. (US 2021/0128420 A1, published 5/6/2021), Liu et al. (US 2022/0062150 A1, published 3/3/2022, cited in the O.A. dated 6/11/2026), and Lukic et al. (2021), as evidenced by Tamarkin et al. (US 2006/0233721A1, published 10/19/2006), as applied to claim 18 above, and further in view of INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020, cited in the O.A. dated 6/11/2026).
Regarding claim 20, this claim recites limitations that have been previously made obvious over Stebbins, Liu, Lukic, and INCI Decoder; said discussion will not be repeated herein.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Stebbins et al. (US 2021/0128420, published 5/6/2021) in view of Liu et al. (US 2022/0062150 A1, published 3/3/2022, cited in the O.A. dated 6/11/2026), as evidenced by Tamarkin et al. (US 2006/0233721A1, published 10/19/2006), as applied to claim 1 above, and further in view of Karagianni et al. (US 2019/0110979 A1, published 4/18/2019, cited in the O.A. dated 6/11/2026).
Regarding claim 22, Stebbins and Liu fail to explicitly teach the use of polylysine as a cationic polymer. Karagianni teaches a cosmetic cleansing composition [Abstract] and further teaches that the inclusion of cationic polymers may provide a conditioning effect [see 00153 et eq.] and enhance the softness of the skin [0156]. Karagianni further teaches that suitable cationic polymers include polylysine, guar hydroxypropyltrimonium chloride, and chitosan hydroxypropyltrimonium chloride [0184]. It would be obvious to one of ordinary skill, before the effective filing of the claimed invention, to modify the teachings of Stebbins and Liu with that of Karagianni, to modify the composition previously made obvious and include polylysine for its conditioning benefits. Furthermore, Karagianni teaches that the aforementioned cationic polymers and polylysine are functional equivalents. Combining or substituting equivalents known for the same purpose is prima facie obvious. Even though guar hydroxypropyltrimonium chloride and chitosan are not designated as conditioning agents by Stebbins or Liu, a composition and its chemical properties are inseparable. A skilled artisan could recognize, based on the teachings of Karagianni, that the cationic polymers in the composition of Stebbins and Liu would inherently have a conditioning effect on the skin, and logically add polylysine for additional conditioning benefits. See MPEP 2144.06.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/245,967 (reference application) in view of Liu et al. (US 2022/0062150 A1, published 3/3/2022, cited in the O.A. dated 6/11/2026); INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020, cited in the O.A. dated 6/11/2026); and Karagianni et al. (US 2019/0110979 A1, published 4/18/2019, cited in the O.A. dated 6/11/2026).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim a monophase micellar composition comprising at least one amphoteric surfactant and at least one co-emulsifier selected from the group consisting of polyglyceryl-3 caprylate, polyglyceryl-3 cocoate, polyglyceryl-4 caprate, polyglyceryl-5 laurate, polyglyceryl-6 caprylate, wherein the composition is essentially free of PEG/POE surfactants. The amphoteric surfactant may be cocamidopropyl betaine, sodium cocoamphoacetate, or disodium cocoamphodiacetate, present in the amount of 0.1% to about 5% by weight of the composition. The composition further comprises at least one solvent in the amount of 1% to 3%, wherein the solvent may be propylene glycol. The composition further comprises of glycerin and citric acid, and has a pH in the range of about 4.0 to about 8.0.
Reference Application ‘967 does not recite a composition comprising a cationic polymer such as chitosan as instantly claimed. Liu teaches a water-based micellar makeup removal composition comprising a blend of at least two surfactants, the blend comprising at least one nonionic surfactant having an HLB that is in the range from about 8 to about 16, and at least one surfactant having an HLB that is greater than about 16, and one or more powdered polysaccharides [Abstract]. Liu teaches that a suitable surfactant having a high HLB that is greater than 16 includes cocamidopropyl betaine [0070], and a suitable surfactant with low HLB of from about 8 to about 16 is polyglyceryl-4 caprate [0069]. Liu teaches preferable amounts for each surfactant is from about 0.3% to about 5% by weight of the composition [0071]. Liu teaches that the suspended surfactants and powder polysaccharide particles associate with makeup, and the powder binds and coats the makeup [0059]. The partial crystallinity of the polysaccharide powder particles provides for a stable dispersion of the powder in the composition, which facilitates concomitant adherence of the polysaccharide powder to the surface of makeup and to the removal article (such as a pad or tissue), resulting in smudge-resistant makeup removal [0059]. Liu teaches the at least one powdered polysaccharide may be present in the composition in about 0.1% to about 30% by weight of the composition [0082], and further teaches chitosan (reads on cationic polymer) to be a suitable powdered polysaccharide [0078]. It would have been obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Reference Application ‘967
with that of Liu, and add chitosan to the micellar composition of ‘967s in the amount of about 0.1% to about 30% to form a composition with anti-smudge properties conferred by the chitosan. It would be obvious to use chitosan, a powder polysaccharide, in the amount that powder polysaccharides are taught to be suitable in. The amount of chitosan taught by Liu overlaps and renders obvious the amounts recited for the cationic polymer in the instant claims.
Reference Application ‘967 does not recite a composition comprising a pentylene glycol as instantly claimed. INCI Decoder teaches that pentylene glycol is a multi-functional, silky feeling humectant that can be used as an emulsion stabilizer, solvent, broad-spectrum antimicrobial, and a moisturizer [“Pentylene Glycol”]. INCI Decoder demonstrates its compatibility in a micellar water composition alongside the moisturizer/humectant glycerin (aka glycerol). It would have been obvious, before the effective filing date of the claimed invention, for one of ordinary skill in the art to modify the teachings of Stebbins and Liu with that of INCI Decoder, and add pentylene glycol to the composition in order to harness the silky feeling, antimicrobial, and moisturizing qualities of the ingredient within the micellar makeup removing composition. Furthermore, combining or substituting equivalents known for the same purpose is prima facie obvious. Thus, it would have been obvious to substitute pentylene glycol for any of the humectants taught by Liu. As discussed above, Liu teaches that humectants maybe present in the composition in the range of about 0.5% to 5% by weight. It would be obvious to include pentylene glycol in an amount taught to be suitable for humectants.
Reference Application ‘967 does not recite a composition comprising a cationic polymer comprising polylysine as instantly claimed. Karagianni teaches a cosmetic cleansing composition [Abstract] and further teaches that the inclusion of cationic polymers may provide a conditioning effect [see 00153 et eq.] and enhance the softness of the skin [0156]. Karagianni further teaches that suitable cationic polymers include polylysine, guar hydroxypropyltrimonium chloride, and chitosan hydroxypropyltrimonium chloride [0184]. It would be obvious to one of ordinary skill to modify the teachings of Reference Application ‘967 with that of Karagianni, to modify the composition and include polylysine for its conditioning benefits. Furthermore, Karagianni teaches that chitosan (made obvious over Liu) and polylysine are functional equivalents. Combining or substituting equivalents known for the same purpose is prima facie obvious. See MPEP 2144.06.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-9 of U.S. Patent No. 11679072 B2 (cited in IDS 07/03/2024) in view of Liu et al. (US 2022/0062150 A1, published 03/03/2022, PGPub corresponding to issued patent, cited in the O.A. dated 6/11/2026).
US’072 claims a cosmetic composition for make-up removal, comprising: a water-based micellar cleansing system that comprises: (a) a blend of at least two surfactants, the blend comprising at least one nonionic surfactant having an HLB that is in the range from about 8 to about 16, and at least one surfactant having an HLB that is greater than about 16; (b) at least one powdered polysaccharide; and (c) water, wherein the at least one powdered polysaccharide comprises particles that are heterogenous in size [claim 8]. US’072 claims the at least one powdered polysaccharide is selected from starches, alginates, celluloses, chitosan, chitin, and combinations thereof [claim 9].
US’072 differs from the instantly claimed invention in that it fails to claim the at least one amphoteric surfactant and its specific amounts, as well as the cationic polymer and its specific amounts, and that the composition is PEG/POE free, as recited in instant claims 1-15 and 21-22. Additionally, US’072 fails to claim the co-emulsifier recited in instant claims 11-12, and the amounts associated therewith.
Liu teaches a cosmetic composition for make-up removal that provides aesthetically pleasing gliding application and is smudge resistant, the composition being provided in the form of a water-based micellar make-up removal composition that includes a blend of surfactants that includes one surfactant that has an HLB that is in the range from about 8 to about 16 and at least one surfactant that has an HLB that is greater than 16, and one or more powdered polysaccharides provided as essentially water-insoluble particles [Abstract]. Liu teaches surfactants suitable for use as a surfactant having a high HLB that is greater than 16 include amphoacetates, for example, amphoteric surfactants selected from a group including cocamidopropyl betaine [0070]. Liu teaches a suitable surfactant with low HLB in the range of from about 8 to about 16 is polyglyceryl-4 caprate [0069]. Liu teaches preferable amounts for each surfactant include from about 0.3% to about 5% by weight of the composition [0071].
Liu teaches that the suspended surfactants and powder particles associate with makeup, and the powder binds and coats the makeup to reduce and eliminate smudging [0059]. Liu teaches that the inventors have shown that make-up removed with the composition is coated with the powdered polysaccharide particles and, when subjected to smudge testing, there is minimal smudging observed relative to comparative compositions that lack polysaccharide powder particles [0058]. Liu teaches an example of powdered polysaccharide particle includes chitosan [0078]. Liu teaches the at least one powdered polysaccharide is present in the composition in a range of from about 0.1% to about 30% by weight of the composition [0082].
Liu teaches the composition consists of a water phase with suspended micellar aggregates of surfactant and further includes suspended polysaccharide powder particles, wherein the surfactant and particles of powder are easily suspended in the water phase by agitation and which rapidly separate/phase out when the composition is at rest; additionally, the composition does not include any significant oil content and thus does not include an oil phase. Pre-application agitation of the composition forms a suspension of sufficient uniformity and stability to allow a uniform application of the suspended polysaccharide particles to keratinous tissue for the removal of make-up, and the composition is light-weight, much like a toner, with a pleasing feel upon application [0055]. The composition does not leave the skin feeling oily [0057].
It would have been prima facie obvious, before the effective filing date of the claimed invention, to choose to use (1) the high-HLB amphoteric surfactant cocamidopropyl betaine, with its specific amounts taught by Liu, (2) the low-HLB surfactant polyglyceryl-4 caprate, with its specific amounts taught by Liu, and (3) chitosan in the specific amount range taught for the polysaccharide taught by Liu, in the micellar makeup remover of US’072, and arrive at the instantly claimed invention. Per MPEP 2143 I(A), it is prima facie obvious to combine prior art elements according to known methods to yield predictable results. US’072 claims the inclusion of the high-HLB surfactant, low-HLB surfactant, and polysaccharide chitosan in its micellar composition for removing makeup. US’072 doesn’t specifically claim the high-HLB surfactant to be cocamidopropyl betaine, nor the low-HLB surfactant to be polyglyceryl-4 caprate, nor the amounts for each surfactant or the amount for chitosan in the micellar makeup remover. However, Liu teaches the same micellar makeup cleansing remover, with these specific surfactants and their concentration ranges, as well as the concentration range for chitosan in the composition. One of ordinary skill in the art could have combined the claims of US’072 with the teachings of Liu and expected them to perform appropriately in the micellar makeup remover because Liu demonstrates the micellar makeup remover with these components, in their designated amounts, is an effective makeup remover which is light weight, demonstrates pleasant and non-oily feel upon application to keratinous tissues, and has the ability to remove makeup without smudging. The fact that the resulting composition would not comprise PEG/POE surfactants satisfies the limitations surrounding the composition being “essentially free of PEG/POE surfactants” recited in instant claims 1 and 10. The lower concentration for the amphoteric surfactant cocamidopropyl betaine taught by Liu (0.3% by weight) is so close to the instantly claimed amount range for cocamidopropyl betaine in instant claim 7 (about 0.1 to about 0.25% by weight) that one skilled in the art would have expected cocamidopropyl betaine to have the same surfactant properties in the composition at either concentration. Per MPEP 2144.05 (I), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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, Brian-Yong Kwon can be reached at 571-272-0581. 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://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.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.
/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
