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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/275,814, filed on 3/12/2021.
Status of the Claims
Claims 1-15 are pending and under current examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 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.
Claim 1 contains the limitation “60% by mass or more of the oil phase components”. This renders the claim indefinite because the mass percentage range of the oil phase components in the water-in-oil emulsified cosmetic is not clear. Because a water-in-oil emulsified cosmetic must necessarily contain a water phase, it is impossible to discern the metes and bounds of the instant claim.
Claim 3 contains the limitation “the molecular weight controlled polymer constitutes 0.005% to 0.2%”. This renders the claim indefinite because the percentage range does not specify to which measure it refers (i.e. weight or volume).
Claim 4 recites the limitation "synthesized polymer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "synthesized polymer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "polymerization inhibitor" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "charge transfer agent" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "synthesized polymer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "synthesized polymer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "polymerization inhibitor" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "synthesized polymer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 contains the limitation “the molecular weight controlled polymer constitutes 0.005% to 0.2%”. This renders the claim indefinite because the percentage range does not specify to which measure it refers (i.e. weight or volume).
Regarding claims 2, 11, 13, and 15, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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, 3-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over De Lemos (U.S. Patent Application No. 2017/0189297, publication date: 7/6/2017), in view of Sogabe (U.S. Patent Application No. 2016/0250131, publication date: 9/1/2016; cited in the IDS filed 6/30/2023) and ICI Americas (The HLB System, publication year: 1980).
Applicant’s Invention
Applicant’s claim 1 is drawn to a method of preparing a water-in-oil emulsified cosmetic composition comprising:(a) synthesizing using a living polymerization a molecular weight controlled polymer selected from the group consisting of polyacrylic acid, a salt of polyacrylic acid, poly(2-acrylamido-2-methylpropanesulfonic acid), and a salt of poly(2-acrylamido-2-methylpropanesulfonic acid) and having a weight average molecular weight of 1 million to 4 million, and having only 10% by mass or less of a molecular species having a molecular weight of 10 million or more; (b) mixing and heating oil phase components;(c) mixing and heating aqueous phase components, wherein the aqueous phase components comprise the molecular weight controlled polymer of (a); (d) gradually adding the mixed and heated aqueous phase components to the mixed and heated oil phase components while stirring and emulsifying the product during said gradually adding; and (e) cooling the product to form a water-in-oil emulsified cosmetic, wherein the water-in-oil emulsified cosmetic comprises 60% by mass or more of the oil phase components and wherein the water-in-oil emulsified cosmetic further comprises an emulsifier having an HLB of 5 or less.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, De Lemos teaches a method of making a cosmetic composition comprising the formation of a fatty phase and the formation of a separate aqueous phase, both phases are heated and combined while warm [0102]. After combining the fatty phase and the aqueous phase to form an emulsion, the composition is typically allowed to cool [0104]. The emulsion may be a water-in-oil emulsion [0015]. One or more emulsifiers and one or more thickeners are also combined in the fatty phase. Water soluble thickeners may be added to the aqueous phase [0103]. Water soluble thickeners suitable for inclusion in the cosmetic composition include sodium polyacrylate [0090-0091]. The overall oily phase may represent 5-95 wt.% of the cosmetic composition [0056]. The Examiner considers the phrase “both phrases are heated and combined while warm” to encompass the gradual addition of the aqueous phase to the oil phase limitation of the instant claim.
Regarding claim 3, De Lemos teaches that the thickener may be present from 0.1 to 20 wt. % [0021].
Regarding claims 4-12 and 15, De Lemos teaches the relevant limitations of claim 1 as described above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1 and 15, De Lemos does not embrace a living polymerization synthesis of a molecular weight controlled polymer or an emulsifier with an HLB of 5 or less. However, these deficiencies are cured by Sogabe and ICI Americas.
Sogabe discloses a method of preparing an emulsified cosmetic comprising first synthesizing sodium polyacrylate with an average molecular weight of 3.26 million and a molecular weight distribution of 1.7 [0038] or sodium poly(2-acrylamido-2methylpropanesulfonic acid) (PAMPS) with an average molecular weight of 2.24million and a molecular weight distribution of 1.2 [0043]. The sodium polyacrylate and sodium PAMPS is synthesized using a RAFT living polymerization method [0035]. The content of the compound having the molecular weight of 10 million or higher is 10 mass % or less [0015]. The synthesized sodium polyacrylate or sodium PAMPS is used as a substitution for commercial polyacrylic acid or PAMPS salts in order to improve unpleasant usability such as a stringy feeling, sliminess, stickiness, and poor spreadability [0029]. ICI Americas teaches that water-in-oil emulsifiers typically have an HLB range of 4-6 in order to employ an oil-soluble emulsifier that facilitates the formation of a non-aqueous emulsion system (pg. 4, HLB Related to Solubility and Table 1).
Regarding claims 4 and 5, De Lemos does not teach the inclusion or synthesis of a molecular weight controlled sodium polyacrylic acid or PAMPS. However, this deficiency is cured by Sogabe.
Sogabe discloses a method of preparing an emulsified cosmetic comprising first synthesizing sodium polyacrylate with an average molecular weight of 3.26 million and a molecular weight distribution of 1.7 [0038] or sodium poly(2-acrylamido-2methylpropanesulfonic acid) (PAMPS) with an average molecular weight of 2.24million and a molecular weight distribution of 1.2 [0043].
Regarding claims 6 and 10, De Lemos does not teach the inclusion or synthesis of a molecular weight controlled sodium polyacrylic acid or PAMPS. However, this deficiency is cured by Sogabe.
Sogabe teaches that 4.4'-azobis-(4-cyanovaleric acid) is the polymerization initiator for the synthesis of the polymer [0035].
Regarding claims 7 and 10, De Lemos does not teach the inclusion or synthesis of a molecular weight controlled sodium polyacrylic acid or PAMPS. However, this deficiency is cured by Sogabe.
Sogabe teaches that 4-cyanopentanoic acid dithiobenzoate is used as the chain transfer agent [0035].
Regarding claims 8, 9, and 12, De Lemos does not teach the inclusion or synthesis of a molecular weight controlled sodium polyacrylic acid or PAMPS. However, this deficiency is cured by Sogabe.
Sogabe discloses a method of preparing an emulsified cosmetic comprising first synthesizing sodium polyacrylate with an average molecular weight of 3.26 million and a molecular weight distribution of 1.7 [0038].
Regarding claim 11, De Lemos does not teach the inclusion or synthesis of a molecular weight controlled sodium polyacrylic acid or PAMPS. However, this deficiency is cured by Sogabe.
Sogabe teaches that the sodium polyacrylate may be synthesized by dissolving acrylic acid, methylenebisacrylamide, and 4.4-azobis-(4-cyanovaleric acid) in water then adding a methanol solution of 4-cyanopentanoic acid dithiobenzoate [0037].
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1, 4-12, and 15, it would have been prima facie obvious to one of ordinary skill in the art of filing to include the molecular weight controlled sodium polyacrylate synthesize by the method embraced by Sogabe as the thickener present in the emulsified cosmetic taught by De Lemos. One would have understood in view of Sogabe that the synthesized sodium polyacrylates may be used as a substitute for commercial sodium polyacrylates as thickeners in cosmetic formulations. It would have been obvious to substitute the synthesized molecular weight controlled sodium polyacrylate taught by Sogabe for the sodium polyacrylate thickener embraced by De Lemos. One of ordinary skill in the art of filing would have been motivated to include molecular weight controlled sodium polyacrylate in the emulsified cosmetic of De Lemos in order to improve unpleasant usability of the composition rendered by commercial sodium polyacrylate. The artisan of ordinary skill would have had reasonable expectation of success because Sogabe teaches that synthesized molecular weight controlled sodium polyacrylate may be used as a substitute for commercial sodium polyacrylate thickeners [0029]. See MPEP 2144.07.
The HLB of the emulsifier is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal HLB in order to best achieve the desired results as such would provide advantageous emulsion effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, ICI America teaches that water-in-oil emulsifiers typically have an HLB range of 4-6 in order to employ an oil-soluble emulsifier that facilitates the formation of a non-aqueous emulsion system (pg. 4, HLB Related to Solubility and Table 1). The Examiner considers it prima facie obvious to optimize the HLB of the emulsifier, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the HLB of the emulsifier would have a direct effect on the formation of the water-in-oil emulsion and therefore be an optimizable variable.
With regards to the “charge transfer agent” limitations of instant claims 7 and 10, the prior art teaches the same 4-cyanopentanoic acid dithiobenzoate as a chain transfer agent [0035] as claimed and therefore, the charge transfer agent properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.”
Claims 2, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over De Lemos (U.S. Patent Application No. 2017/0189297, publication date: 7/6/2017), in view of Sogabe (U.S. Patent Application No. 2016/0250131, publication date: 9/1/2016; cited in the IDS filed 6/30/2023) and ICI Americas (The HLB System, publication year: 1980), as applied to claims 1, 3-12, and 15 above, and further in view of Ogawa (U.S. Application No. 2008/0145332, publication date: 6/19/2008) and Vervier et. al. (Cosmetics and Toiletries Magazine, pg. 65-74, publication year: 2006).
Applicant’s Invention
De Lemos, in view of Sogabe and ICI Americas, renders obvious the relevant limitations of claims 1 and 12 above. Applicant’s claim 2 further adds the limitation of the method of claim 1, wherein the oil phase components comprise elastomer treated talc and wherein said (b) mixing and heating the oil phase components comprises first mixing and heating the oil phase components other than the elastomer treated talc and then adding the elastomer treated talc. Applicant’s claim 13 further adds the limitation of the method of claim 12, wherein the oil phase components comprise elastomer treated talc and wherein said mixing and heating the oil phase components comprises first mixing and heating the oil phase components other than the elastomer treated talc and then adding the elastomer treated talc.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 2 and 13, De Lemos teaches that the disclosed cosmetics treat skin dryness, help repair skin damage, and eliminate the appearance of wrinkles, dark spots, and uneven skin texture [0001].
Regarding claim 14, De Lemos teaches that the thickener may be present from 0.1 to 20 wt. % [0021].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 2 and 13, De Lemos does not teach the inclusion of an elastomer treated talc in the emulsified cosmetic. However, this deficiency is cured by Ogawa and Vervier.
Ogawa teaches talc treated with silicone elastomer powder [0078] that may be used in W/O emulsion cosmetics [0075]. The talc/silicone elastomer powder may be added to provide a cosmetic with good feeling during use without sticking feeling while increasing lubricity and spreadability [0022]. Ogawa teaches that the powder components may be dispersed in the oil components of an emulsified cosmetic [0113]. Vervier teaches that silicone elastomer powder provides wrinkle-masking benefits and imparts recognized silicone aesthetics (pg. 65-66, A Next-Generation Silicone Elastomer).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 2 and 13, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (the cosmetic emulsion embraced by De Lemos and the silicone elastomer treated talc of Ogawa for the purpose of forming a cosmetic composition to mask wrinkles), in order to form a third composition to be used for the very same purpose. See MPEP 2144.06 (I).
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, 3-12, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,439,582 in view of De Lemos (U.S. Patent Application No. 2017/0189297, publication date: 7/6/2017), Sogabe (U.S. Patent Application No. 2016/0250131, publication date: 9/1/2016; cited in the IDS filed 6/30/2023) and ICI Americas (The HLB System, publication year: 1980).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘582 patent embrace a method of increasing the viscosity of a cosmetic by adding an effective amount of polyacrylic acid salt. The polymer is a RAFT polymer with an average molecular weight between 500 thousand and 8 million and not more than 10% by mass of the RAFT polymer consists of molecules having a molecular weight of 10 million or higher.
The claims of the ‘582 patent do not embrace a method of preparing a water-in-oil emulsified cosmetic, an emulsifier, a polymerization initiator, a charge transfer agent, a sodium polyacrylate, a method of synthesizing the molecular weight controlled polymer, or a weight percentage range of the molecular weight controlled polymer in the cosmetic. However, these deficiencies are cured by De Lemos, Sogabe, and ICI Americas.
De Lemos teaches a method of making a cosmetic composition comprising the formation of a fatty phase and the formation of a separate aqueous phase, both phases are heated and combined while warm [0102]. After combining the fatty phase and the aqueous phase to form an emulsion, the composition is typically allowed to cool [0104]. The emulsion may be a water-in-oil emulsion [0015]. One or more emulsifiers and one or more thickeners are also combined in the fatty phase. Water soluble thickeners may be added to the aqueous phase [0103]. Water soluble thickeners suitable for inclusion in the cosmetic composition include sodium polyacrylate [0090-0091]. The overall oily phase may represent 5-95 wt.% of the cosmetic composition [0056]. The Examiner considers the phrase “both phrases are heated and combined while warm” to encompass the gradual addition of the aqueous phase to the oil phase limitation of the instant claim. De Lemos also teaches that the thickener may be present from 0.1 to 20 wt. % [0021].
Sogabe discloses a method of preparing an emulsified cosmetic comprising first synthesizing sodium polyacrylate with an average molecular weight of 3.26 million and a molecular weight distribution of 1.7 [0038] or sodium poly(2-acrylamido-2methylpropanesulfonic acid) (PAMPS) with an average molecular weight of 2.24million and a molecular weight distribution of 1.2 [0043]. The sodium polyacrylate and sodium PAMPS is synthesized using a RAFT living polymerization method [0035]. The content of the compound having the molecular weight of 10 million or higher is 10 mass % or less [0015]. The synthesized sodium polyacrylate or sodium PAMPS is used as a substitution for commercial polyacrylic acid or PAMPS salts in order to improve unpleasant usability such as a stringy feeling, sliminess, stickiness, and poor spreadability [0029]. Sogabe also teaches that the sodium polyacrylate may be synthesized by dissolving acrylic acid, methylenebisacrylamide, and 4.4-azobis-(4-cyanovaleric acid) in water then adding a methanol solution of 4-cyanopentanoic acid dithiobenzoate [0037]. ICI Americas teaches that water-in-oil emulsifiers typically have an HLB range of 4-6 in order to employ an oil-soluble emulsifier that facilitates the formation of a non-aqueous emulsion system (pg. 4, HLB Related to Solubility and Table 1).
It would have been prima facie obvious to one of ordinary skill in the art of filing to include the molecular weight controlled sodium polyacrylate embraced by the claims of the ‘ 582 patent and synthesize by the method embraced by Sogabe as the thickener present in the emulsified cosmetic taught by De Lemos. One would have understood in view of Sogabe that the synthesized sodium polyacrylates may be used as a substitute for commercial sodium polyacrylates as thickeners in cosmetic formulations. It would have been obvious to substitute the synthesized molecular weight controlled sodium polyacrylate taught by the claims of the ‘582 patent for the sodium polyacrylate thickener embraced by De Lemos. One of ordinary skill in the art of filing would have been motivated to include molecular weight controlled sodium polyacrylate in the emulsified cosmetic of De Lemos in order to improve unpleasant usability of the composition rendered by commercial sodium polyacrylate. The artisan of ordinary skill would have had reasonable expectation of success because Sogabe teaches that synthesized molecular weight controlled sodium polyacrylate may be used as a substitute for commercial sodium polyacrylate thickeners [0029]. See MPEP 2144.07.
The HLB of the emulsifier is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal HLB in order to best achieve the desired results as such would provide advantageous emulsion effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, ICI America teaches that water-in-oil emulsifiers typically have an HLB range of 4-6 in order to employ an oil-soluble emulsifier that facilitates the formation of a non-aqueous emulsion system (pg. 4, HLB Related to Solubility and Table 1). The Examiner considers it prima facie obvious to optimize the HLB of the emulsifier, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the HLB of the emulsifier would have a direct effect on the formation of the water-in-oil emulsion and therefore be an optimizable variable.
With regards to the “charge transfer agent” limitations of instant claims 7 and 10, the prior art teaches the same 4-cyanopentanoic acid dithiobenzoate as a chain transfer agent [0035] as claimed and therefore, the charge transfer agent properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.”
Claims 2, 13, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,439,582 in view of De Lemos (U.S. Patent Application No. 2017/0189297, publication date: 7/6/2017), Sogabe (U.S. Patent Application No. 2016/0250131, publication date: 9/1/2016; cited in the IDS filed 6/30/2023) and ICI Americas (The HLB System, publication year: 1980), as applied to claims 1, 3-12, and 15 above, and further in view of Ogawa (U.S. Application No. 2008/0145332, publication date: 6/19/2008) and Vervier et. al. (Cosmetics and Toiletries Magazine, pg. 65-74, publication year: 2006).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘582 patent embrace the relevant limitations as described above. The claims of the ‘582 patent does not teach the inclusion of an elastomer treated talc in an emulsified cosmetic. However, this deficiency is cured by De Lemos, Ogawa, and Vervier.
De Lemos teaches that the thickener may be present in the cosmetic composition from 0.1 to 20 wt. % [0021]. Ogawa teaches talc treated with silicone elastomer powder [0078] that may be used in W/O emulsion cosmetics [0075]. The talc/silicone elastomer powder may be added to provide a cosmetic with good feeling during use without sticking feeling while increasing lubricity and spreadability [0022]. Ogawa teaches that the powder components may be dispersed in the oil components of an emulsified cosmetic [0113]. Vervier teaches that silicone elastomer powder provides wrinkle-masking benefits and imparts recognized silicone aesthetics (pg. 65-66, A Next-Generation Silicone Elastomer).
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (the cosmetic emulsion embraced by De Lemos containing the thickener embraced by the claims of the ‘582 patent and the silicone elastomer treated talc of Ogawa for the purpose of forming a cosmetic composition to mask wrinkles), in order to form a third composition to be used for the very same purpose. See MPEP 2144.06 (I).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-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, Ali Soroush can be reached at 571-272-9925. 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.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614