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 .
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
In light of the claim amendments, the claim objection to claim 16 is withdrawn.
In light of the claim amendments, the previously issued 112(b) rejections of claim 7, 9, and 20 are withdrawn. New/modified 112(b) rejections of claims 1, 9, and 20 are issued.
In light of the claim amendments, the 112(d) rejection of claim 20 is withdrawn.
In light of the claim amendments, modified/new 103 rejections of claims 2-3, 7, 16, 19, and 21-22 are issued. The 103 rejections of claims 1, 4-6, 8-15, 17-18, and 20 are maintained.
In light of the claim amendments, the non-statutory double patenting rejections are maintained/modified.
103 rejections over Schuch and Liu
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Applicant argues that the combination of references would change the purpose and principle of operation of Schuch by removing the oils from Schuch’s compositions. However, this is not persuasive as Table 42 of Schuch provides an exemplary micellar water composition containing the inventive polyglycerol partial ester wherein no oil is present. Applicant also remarks that Example 47b is not a monophasic micellar water. This is not persuasive as Schuch teaches examples of micellar waters and thus it would be obvious to formulate a composition taught by Schuch in a formulation taught by Schuch. Furthermore, the inventive Product Example 2 in the composition of Schuch is shown to completely solubilize oil in an aqueous solution, i.e. produce a monophasic composition, in contrast to non-inventive products wherein the experiments demonstrated phase separation [0076-0077]. Liu also teaches that its monophasic makeup remover may comprise of essential oils and fragrances in the amounts taught by Schuch, wherein the properties of the composition are unaffected [0106, 0108]. Finally, Liu provides the motivation to include a polysaccharide powder such as chitosan in the composition of Schuch, because the inclusion of the polysaccharide powder provides smudge-resistant properties to makeup removal [0058-59]. Thus, a skilled artisan could modify the composition of Schuch using Liu’s teachings to arrive at the instantly claimed invention with a reasonable expectation of success.
Finally, Applicant remarks that Typology teaches a micellar water that contains a POE surfactant, this is immaterial as Typology is relied on only for the teaching that glycerin and glycerol are the same compound.
103 rejections over Schuch and Liu, and further in view of Typology
Applicant argues that Typology teaches a micellar water that contains a POE surfactant, which is excluded from the instant claims. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the primary reference already teaches a composition excluding POE/PEG surfactants and Typology is relied on for its teachings regarding pentylene glycol as a suitable humectant.
Non-statutory double patenting rejections
Regarding the non-statutory double patenting rejections, as applicant has not addressed the merits of the rejections, the double patenting rejections are maintained or modified in light of amendment for reasons of record.
New Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 recites, “wherein (a) at least one cationic polymer is selected from chitosan, guar hydroxypropyltrimonium chloride, and a combination thereof, the cosmetic cleansing composition including a blend of water soluble solvents”. The lack of a conjunction before “the cosmetic cleansing composition” renders the phrasing awkward. The same applies to the language after “or (b)”.
Claim 20 is objected to because of the following informalities: Claim 20 recites “further comprising at least one co-emulsifier is selected from polyglyceryl-4 caprate…”.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites, “essentially free of polyethylene glycol/polyoxyethylene (PEG/POE) surfactants.”For purposes of compact prosecution, claim 1 is interpreted to read “PEG and/or POE surfactants.”
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.
Maintained Claim Rejections - 35 USC § 103
Claims 1, 4-6, 10-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Schuch et al. (US 2017/0137366 A1, published 5/18/2017), in view of Liu et al. (US 2022/0062150, published 3/3/2022), as evidenced by as evidenced by INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020).
Schuch teaches Exemplary composition 47d in Table 47, comprising inventive polyglycerol partial ester Product Example 2, 5.5% coco-betaine (reads on amphoteric surfactant of claims 1 and 18), 0.2% guar hydroxypropyltrimonium chloride (reads on cationic polymer of claims 1 and 4-5), and water. The composition further comprises 0.5% polyglyceryl-4 caprate (reads on co-emulsifier of claims 11-12), 0.5% glycerol (reads on glycerin of claim 13, see INCI decoder), and citric acid (reads on claim 15). The composition has a pH of 5.2 (reads on claim 14 and 18). It is noted that claim 18 recites “a pH of about 5,” which is interpreted to include values within 10% of 5, i.e. a range of 4.5 through 5.5; thus, Schuch’s formulation pH of 5.2 satisfies this range. The composition of Schuch is free of polyethylene glycol and polyoxyethylene surfactants (reads on claims 1,10, and 18). Where ranges in the prior art overlap or are close to the instantly claimed ranges, a prima facie case of obviousness exists. MPEP 2144.05. Schuch does not explicitly state that composition 47d is a micellar water. However, Schuch discloses micellar water compositions comprising Product Example 2 in Tables 42, 43, and 45. Schuch differs from the instantly claimed invention in that it fails to explicitly teach that its formulation is a monophasic micellar water, as recited in instant claims 1 and 18. Schuch also differs from the instant invention by failing to teach the at least one cationic polymer is either chitosan or guar hydroxypropyltrimonium chloride present in the amount of about 0.05% to about 0.15% by weight of the composition, as recited in instant claims 6 and 17. And finally, Schuch fails to address that the cosmetic cleansing composition, when applied to keratinous tissue, demonstrates cleansing of long-wear foundation and lipstick, as recited in instant claim 18.
Liu teaches a micellar cosmetic composition for make-up removal comprising a blend of surfactants and one or more powdered polysaccharides [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 coco-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 [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 to be a suitable powder polysaccharide [0078]. It would have been obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify Schuch with the teachings of Liu, by removing the minor amount of oil from the formulation and add chitosan in about 0.1% to about 30%, in order to form a micellar make-up removing 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 6 and 17.
Regarding claim 18, this claim recites limitations previous made obvious (discussion of which will not be repeated herein) and further recites the limitation wherein the cosmetic composition demonstrates cleansing of long-wear foundation and lipstick when applied to a keratinous tissue. This limitation recites a property of the composition made obvious by Schuch 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 Schuch 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.
Claims 8-9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Schuch et al. (US 2017/0137366 A1, published 5/18/2017), in view of Liu et al. (US 2022/0062150, published 3/3/2022), as applied to claims 1 and 18 above, and further in view of INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020).
The combined teachings of Schuch and Liu, as they pertain to instant claims 1 and 18, are addressed supra. Additionally, Liu teaches one or more humectants may be present in the micellar makeup removing composition, with exemplary humectants being glycerol or glycerin [0091]. It is reiterated that glycerol is synonymous with glycerin, as evidenced by INCI Decoder [“Glycerin”]. Liu teaches a suitable amount range for each humectant to be between about 0.5% to about 5% by weight of the composition [0093].
Schuch fails to teach a combination of glycerin and an additional solvent, such as pentylene glycol, wherein each is present in an amount between 1% and 10% by weight of the composition, as recited in claim 8. More specifically, Schuch fails to teach glycerin present at about 1% by weight in combination with pentylene glycol at about 3% by weight of the composition, as recited in instant claims 9 and 20. 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) [“Ingredients overview”; “Glycerin”]. It would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to modify the micellar make-up removing composition rendered obvious by the combined teachings of Schuch and Liu, and add pentylene glycol. The ordinarily skilled artisan would have been motivated to 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. Additionally, "[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Furthermore, it would have been prima facie obvious for the ordinarily skilled artisan to perform routine optimization on the amounts of each humectant present in the resulting micellar makeup removing composition with the goal of optimizing the moisturizing abilities of the composition. It is established by Liu and INCI Decoder that the purpose of the humectant in cosmetic compositions is to moisturize; thus, the amount of humectant in a skin composition is considered a results-effective variable wherein the result of changing the amount of humectant is an observable change in moisturizing ability. Additionally, Liu teaches a finite range of amounts for humectants (about 0.5% to about 5%) with which the ordinarily skilled artisan can perform routine optimization in order to optimize the moisturizing qualities of the resulting composition. The ordinarily skilled artisan would have pursued this routine optimization with a reasonable expectation of success because Liu teaches these amounts to be suitable in a micellar make-up removing composition. Per MPEP 2144.05 (I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). The instantly claimed amounts for glycerin and pentylene glycol lie inside the amount range for humectants disclosed by Liu, and thus, the instantly claimed amounts are rendered obvious by Liu.
New/Modified Claim Rejections - 35 USC § 103
Claims 2-3, 7, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Schuch et al. (US 2017/0137366 A1, published 5/18/2017), in view of Liu et al. (US 2022/0062150, published 3/3/2022), as evidenced by INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020) as applied to claim 1 above.
Regarding claims 2-3, these claims depend from claim 1 (said discussion above being incorporated herein in its entirety). Schuch does not explicitly teach the amphoteric surfactants recited in claims 2 or 3, in the claimed amounts. Liu teaches a water-based micellar make-up removal composition comprising a blend of surfactants and a powdered polysaccharide [0038]. Liu further teaches that coco betaine and cocamidopropyl betaine are equivalent amphoteric surfactants that are suitable for use in a micellar cleansing composition [0070]. Substituting equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. Thus, it would be obvious to substitute out coco betaine for cocamidopropyl betaine in the composition taught by Schuch. As discussed, Schuch teaches an amphoteric surfactant (coco betaine) in the amount of 5.5%, which overlaps with the instantly claimed range of claims 2 and 3 of about 0.05% to about 10%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 7, Liu teaches that the surfactant may be present in the amount of about 0.3% to about 5% [claim 11]. The inclusion of cocoamidopropyl betaine in the composition of Schuch has been made obvious in the above rejections of claims 2-3. It would be obvious to use cocamidopropyl betaine, a surfactant, in the amount that surfactants are taught to be suitable in. 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 (Fed. Cir. 1985). Claim 7 also recites the limitation wherein the at least one cationic polymer is present in the amount of about 0.05% to about 2.5%. Schuch teaches 0.2% guar hydroxypropyltrimonium chloride. The instantly claimed ranges overlap with the range taught in the prior art and are prima facie obvious.
Regarding claim 16, claim 16 recites limitations previously made obvious (discussion of which will not be repeated herein), and has been amended to include cocamidopropyl betaine instead of coco betaine in the amount of about 0.05% to about 10%. As discussed above, Liu teaches that coco betaine and cocamidopropyl betaine are equivalent amphoteric surfactants that are suitable for use in a micellar cleansing composition [0070]. Substituting equivalents known for the same purpose is prima facie obvious. MPEP 2144.06.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Schuch et al. (US 2017/0137366 A1, published 5/18/2017), in view of Liu et al. (US 2022/0062150, published 3/3/2022), as applied to claim 18 above, and further in view of INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020).
Regarding claim 19, claim 19 recites limitations previously made obvious (discussion of which will not be repeated herein), and has been amended to include cocamidopropyl betaine instead of coco betaine in the amount of about 0.05% to about 10%. Liu further teaches that coco betaine and cocamidopropyl betaine are equivalent amphoteric surfactants that are suitable for use in a micellar cleansing composition [0070]. Substituting equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. Thus, it would be obvious to substitute out coco betaine for cocamidopropyl betaine in the composition.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Schuch et al. (US 2017/0137366 A1, published 5/18/2017), in view of Liu et al. (US 2022/0062150, published 3/3/2022), as evidenced by INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020), as applied to claim 1, and further in view of Robbins et al. (WO 2020/176376 A1, published 9/3/2020).
Schuch and Liu fail to explicitly teach the use of cocamidopropyl hydroxysultaine as an amphoteric surfactant. Robbins teaches a cosmetic cleansing composition comprising at least one amphoteric surfactant, and further teaches that cocamidopropyl betaine, coco betaine, and cocamidopropyl hydroxysultaine are functionally equivalent amphoteric surfactants [0062-0063]. Substituting equivalents known for the same purpose is prima facie obvious. MPEP 2144.06
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Schuch et al. (US 2017/0137366 A1, published 5/18/2017), in view of Liu et al. (US 2022/0062150, published 3/3/2022), as evidenced by INCI Decoder, “Typology 7-Ingredient Micellar Water” (2020), as applied to claim 1, and further in view of Karagianni et al (US 2019/0110979 A1, published 4/18/2019).
Schuch 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 Schuch 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 Schuch 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 Schuch 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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7-8 of copending Application No. 19/245,967 in view of US 2022/0062150 A1 (Liu et al.) published 03/03/2022 (cited in PTO-892; corresponds to US 11679072 cited in IDS 07/03/2024) and “Typology 7-Ingredient Micellar Water.” INCI Decoder, 5 Dec. 2020, incidecoder.com/products/typology-7-ingredient-micellar-water (cited in PTO-892).
App’967 claims a monophase micellar cosmetic cleansing composition comprising: (a) at least one amphoteric surfactant selected from the group consisting of coco-betaine, cocamidopropyl betaine, sodium cocoamphoacetate, disodium cocoamphodiacetate, and combinations thereof present in an amount from about 0.1% to about 5% based on the total weight of the composition; (b) 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, and combinations thereof present in an amount from about 0.1% to about 2% based on the total weight of the composition; (c) at least one solvent selected from the group consisting of propylene glycol, propanediol, and combinations thereof present in an amount from about 0.1% to about 5% based on the total weight of the composition; (d) a chelating agent; and (e) at least one preservative selected from the group consisting of hydroxyacetophenone, sodium benzoate, and combinations thereof, wherein the composition is essentially free of PEG/POE surfactants, hexylene glycol, myrtrimonium bromide, cationic polymers, disodium EDTA, and fragrance oil [claim 1]. It is noted here that the instant specification of App’967 defines the term “essentially free” to mean that the excluded material can be present in the cosmetic cleansing composition at an amount of less than 5%, or less than 4%, or less than 3%, or less than 2%, or less than 1%, or less than 0.1% by weight, based on the total weight of the cosmetic cleansing composition [App’967 specification para 0016]. Thus, the presence of these excluded components within the specified amount range of less than 5% is still encompassed by the claimed invention of App’967. The coco-betaine and its amounts read on the “at least one amphoteric surfactant” limitations of instant claims 1 and 18. In light of the amendments to claims 2, 3, 7, 16, and 19, as discussed above, Liu teaches that coco betaine and cocamidopropyl betaine are equivalent amphoteric surfactants that are suitable for use in a micellar cleansing composition [0070]. Substituting equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. Thus, the claims in the instant application and reference application are still obvious over one another. The presence of hydroxyacetophenone reads on instant claim 15. App’967 claims the at least one co-emulsifier is polyglyceryl-4 caprate [claim 2]. The polyglyceryl-4 caprate and its amount range reads on the “co-emulsifier” limitation of instant claims 11-12, 16 and 19-20. App’967 claims the composition has a pH in the range from about 4.0 to about 8.0 (claim 7). This range reads on, and renders obvious, the claim limitations surrounding pH in instant claims 14, 16, and 18. App’967 claims the monophase micellar cosmetic cleansing composition according to claim 1, 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 8). This reads on the limitations of the composition being essentially free of, or excluding, PEG/POE surfactants, as recited in instant claims 1, 10, 16, and 18.
App’967 differs from the instantly claimed invention in that it fails to claim the composition is a monophasic micellar water comprising at least one cationic polymer present in an amount greater than 0.01% by weight of the composition and an aqueous carrier comprising at least water, as recited in instant claims 1, 16 and 18. App’967 also fails to claim the narrower limitations for the at least one cationic polymer recited in instant claims 4-7, 9, and 16-20. Additionally, App’967 fails to claim the non-water solvents and their specific amounts recited in instant claims 8-9, 13, 16, and 20.
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 coco-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 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; the composition is light-weight, much like a toner, with a pleasing feel upon application [0055].
Liu teaches one or more humectants may be present in the micellar makeup removing composition, with an exemplary humectant being glycerin [0091]. Liu teaches a suitable amount range for each humectant to be between about 0.5% to about 5% by weight on the composition [0093].
INCI Decoder teaches that pentylene glycol is a multi-functional, silky feeling moisturizer/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 [“Ingredients overview”; “Glycerin”].
Regarding the composition being a micellar water cleansing composition with the at least one cationic polymer limitations, it would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to modify App’967’s micellar cosmetic cleansing composition by making its base water and adding the powdered polysaccharide chitosan, in Liu’s and App’967’s combined taught amount ranges from about 0.1% (taught by Liu) to less than 5% (defined by App’967, since chitosan is a cationic polymer and App’967 claims the composition is “essentially free” of cationic polymer), in order to form a micellar make-up removing composition demonstrating similar properties to the micellar makeup removing composition taught by Liu. In doing so, the amount range for chitosan added to the formulation would overlap, and thus render obvious, the amount range limitations for the cationic polymer recited in instant claims 1, 4-7, 9, and 16-20. The ordinarily skilled artisan would have been motivated to make the cleansing composition water-based and add the powdered polysaccharide chitosan in order to make the composition of App’967 into one which mimics Liu’s micellar make-up remover’s desirable properties, including its light weight, its pleasant feel upon application to keratinous tissues, and its ability to remove makeup without smudging. The ordinarily skilled artisan would have a reasonable expectation of success in performing these modifications because Liu’s composition comprises the same high- and low-HLB surfactants (coco-betaine and polyglyceryl-4 caprate) as App’967; thus, the ordinarily skilled artisan would expect to form a micellar water-based formulation similar to that of Liu, wherein the combined surfactants form micelles can be suspended in the water.
Because it would have been obvious for the ordinarily skilled artisan to perform these modifications and arrive at the instantly claimed composition, instant claim 18’s recited properties of the resulting composition (the cosmetic cleansing composition when applied to a keratinous tissue demonstrates cleansing of long-wear foundation and lipstick) are presumed to be inherent properties when applying the composition to keratinous tissue to remove makeup, as is the intended use of the composition. 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 App’967 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.
Regarding the combinations of solvents in instant claims 8-9, 13, 16, and 20, it would have been prima facie obvious, before the effective filing date of the claimed invention, for a person having ordinary skill in the art to modify the micellar composition rendered obvious by the combined teachings of App’967 and Liu, and add pentylene glycol (taught by INCI Decoder) and glycerin (taught by both ICNI Decoder and Liu) in the appropriate amount ranges for humectants taught by Liu. The ordinarily skilled artisan would have been motivated to add pentylene glycol and glycerin to the composition of App’967 in order to harness humectant qualities of the ingredients within the micellar composition. The ordinarily skilled artisan would have a reasonable expectation of success adding pentylene glycol and glycerin to the micellar composition in these amounts based on the fact that they are suitable in micellar compositions such as the one demonstrated by INCI Decoder and Liu.
This is a provisional nonstatutory double patenting rejection.
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 US 2022/0062150 A1 (Liu et al.) published 03/03/2022 (cited in PTO-892; PGPub that corresponds to the patent).
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 1-7. Therefore, US’072 doesn’t further limit the PEG/POE surfactants which the composition is essentially free of, recited in instant claim 10. 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 coco-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 coco-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 coco-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 coco-betaine taught by Liu (0.3% by weight) is so close to the instantly claimed amount range for coco-betaine in instant claim 7 (about 0.1 to about 0.25% by weight) that prima facie one skilled in the art would have expected coco-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. In light of the amendment to instant claim 7, as discussed above, Liu teaches that coco betaine and cocamidopropyl betaine are equivalent amphoteric surfactants that are suitable for use in a micellar cleansing composition [0070]. Substituting equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. Thus, the claims in the instant application and reference patent are still obvious over one another.
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 (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
Prosecution Insights