DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. The applicant's submission filed on 16 June 2026 has been entered.
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 16 June 2026, in response to the Office Correspondence dated 17 March 2026, are acknowledged.
The listing of Claims filed 16 June 2026, have been examined. Claims 1, 3-7, and 9-18 are pending. Claims 1, 3, 12, 15, and 18 are amended, claims 2 and 8 are canceled, and no new claims have been added.
Response to Amendment
The applicant amended claim 1 to require specifically a C12-22 alkyl acrylate/hydroxyethylacrylate copolymer, rather than the previously recited broader alkyl acrylate polymer. Claim 3 was amended to specify allyl stearate/vinyl acetate copolymer. Claim 12 was amended to require a hydrocarbon-based resin having a number-average molecular weight of 250 g/mol to 10,000 g/mol and a softening point of 70°C to 130°C. Claim 15 was amended to employ the closed language “consists of” while expressly permitting less than 5% by weight of one or more additional materials. Claim 18 was amended to specify particular classes of fatty substances. The applicant states that support for claims 1 and 15 is found in previous claim 2 and that the limitations added to claims 12 and 18 are supported by the disclosure. The amendments have been entered.
The previous rejection of claims 12-15 and 18 under 35 U.S.C. §112(b), as set forth in the Final Office Action, is withdrawn in view of the present amendments. Regarding claim 12, the former uncertainty created by the permissive language “may range from” has been eliminated. Claim 12 now affirmatively requires the resin to have the specified number-average molecular-weight and softening-point ranges.
Regarding claim 15, the applicant has replaced the previously open formulation language with a closed formulation expressly identifying the permitted constituent categories and separately identifying the amount of any “additional materials.” The previous ambiguity concerning whether the less-than-5% limitation applied to materials independently permitted by an open “comprising” transition therefore is no longer maintained.
Regarding claim 18, the punctuation defect identified in the Final Office Action has been corrected, and the amended language now expressly recites that “the fatty substance comprises” one or more members of the recited list. Accordingly, the prior uncertainty concerning the relationship of the listed materials to the previously recited fatty substance has been removed.
The amendments introduce new rejections under 35 U.S.C. § 112(b) and 35 U.S.C. § 112(d), as detailed below.
The amendments presented materially narrow the previously examined subject matter, particularly by replacing the previously recited broader alkyl acrylate polymer limitation with the specifically recited C12-22 alkyl acrylate/hydroxyethylacrylate copolymer. Accordingly, the prior rejections under 35 U.S.C. § 103 are withdrawn and new rejections relying upon newly cited prior art sets forth new grounds of rejection under 35 U.S.C. § 103, as outlined below.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which Applicant regards as his invention.
Claims 15 and 18 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Amended claim 15 recites, in pertinent part, “wherein the cosmetic composition consists of [the enumerated ingredients] … and wherein the composition optionally contains one or more additional materials, the one or more additional materials being present in a total amount of less than 5% by weight of the cosmetic composition.” The amendment creates an internal uncertainty concerning the compositional boundary of the claim. The transitional phrase “consisting of” is conventionally closed and excludes ingredients not specified by the closed formulation (see MPEP §2111.03, wherein “consisting of” excludes an element, step, or ingredient not specified in the claim).
Claim 15, however, first states that the cosmetic composition “consists of” the enumerated ingredients and thereafter states that the same composition “optionally contains one or more additional materials.” It therefore is not sufficiently clear whether the composition is closed to only the ingredients appearing in the list following “consists of”; the subsequent “additional materials” clause constitutes an express exception to that closed transition, such that up to but less than 5 wt.% of any otherwise unrecited cosmetically acceptable material is permitted; or the term “additional materials” is intended to constitute another member of the closed ingredient list despite being recited outside the grammatical list governed by “consists of.”
The specification does not employ “consisting of” to define this formulation boundary. Rather, ¶[0157] states that the composition may include one or more additional materials, defines those materials broadly as any other cosmetically acceptable material, and expressly provides embodiments containing no more than 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, or 2% additional materials, as well as embodiments free or substantially free thereof. The original claim structure likewise used an open composition claim and original claim 15 recited that the composition “contains less than 5% by weight … all other materials,” rather than employing a closed “consisting of” transition.
Thus, amended claim 15 combines a conventional closed transition with a subsequent clause expressly permitting materials outside the preceding ingredient enumeration without clearly identifying the relationship between the two provisions. Claim 18 is included in this rejection because it depends from claim 15 and does not cure the ambiguity.
If the applicant intends to permit the specifically recited ingredients plus less than 5 wt.% of other cosmetically acceptable materials, the ambiguity may be removed by integrating the exception into the closed list itself, for example, “wherein the cosmetic composition consists of: [enumerated ingredients]; and, optionally, one or more additional materials present in a total amount of less than 5% by weight of the cosmetic composition.” Alternatively, the applicant may use an open transition while affirmatively limiting all materials other than the enumerated components, for example, “wherein materials other than the recited [component categories] are present in a total amount of less than 5% by weight of the cosmetic composition.” The latter formulation more closely tracks the substance of original claim 15.
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.
Claims 3-7, 9-15, and 18 are 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 3 expressly recites “The cosmetic composition of claim 2,” but claim 2 is canceled. Consequently, claim 3 does not presently incorporate an extant base claim containing the limitations that claim 3 purports to further limit. Claims 4-7 depend directly or indirectly from claim 3 and therefore inherit the same defect. Claims 9-15 likewise depend directly or indirectly from claim 3 through claim 5. Claim 18 depends from claim 15 and therefore also ultimately depends from canceled claim 2.
The applicant may overcome this rejection by amending the affected dependency. Based upon the language and prosecution history of the claims, it appears that claim 3 was intended to depend from claim 1. If so, applicant may amend claim 3 to recite, for example, “The cosmetic composition of claim 1, wherein the allylic polymer is an allyl stearate/vinyl acetate (VA) copolymer.” Correction of claim 3 in this manner would also correct the canceled-base-claim dependency of claims 4-7, 9-15, and 18, assuming no other substantive change to the dependency chain.
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.
For purposes of the §103 analysis below, claim 3 is treated as if the applicant intended it to depend from claim 1. Claim 3 presently depends from canceled claim 2, and claims 4-7, 9-15, and 18 consequently inherit that dependency defect. This treatment for purposes of compact prosecution does not waive the separate rejection under 35 U.S.C. §112(d).
The level of ordinary skill is reflected by the cited art and is that of a person familiar with cosmetic formulation, including preparation and stabilization of oil-rich emulsions and selection of emollients, rheology modifiers, film-forming polymers, emulsifiers, elastomers, pigments, resins, and other conventional cosmetic ingredients.
Claims 1, 3, 16, and 17 are rejected under 35 U.S.C. §103 as being unpatentable over Sandewicz et al. (US20070048238A1; published 01 March 2007, hereinafter “Sandewicz”), in view of Noor and Lemma (US20070264204A1; published 15 November 2007, hereinafter “Noor”), and further in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter “Caes”).
Sandewicz teaches the base cosmetic emulsion, fatty/oil phase, polar solvent, and emulsifier/stabilizer. Sandewicz is directed to color cosmetic compositions and expressly teaches anhydrous emulsions. Sandewicz states that the composition preferably is anhydrous and explains that the composition may be an “anhydrous emulsion” in which polar ingredients such as glycols and mono-, di-, or polyhydric alcohols are dispersed or solubilized in the oily phase (¶[0033]). Thus, Sandewicz expressly teaches both a cosmetic composition that is an emulsion, and a polar solvent dispersed or solubilized in the oily phase.
Sandewicz further teaches that the composition preferably contains one or more oils in amounts of about 0.1-95 wt.%, preferably about 0.5-85 wt.%, and more preferably about 1-75 wt.% of the total composition (¶[0035]). Sandewicz does not limit those oils to silicone materials, and expressly disclose organic oils, including mono-, di-, and triesters and paraffinic hydrocarbons (¶[0046]-[0060]). In particular Sandewicz discloses organic oils and straight or branched paraffinic hydrocarbons, including C18-C40 hydrocarbons, hydrogenated polyisobutene, mineral oil, squalene, and squalane (¶[0047]-[0053]); and discloses monoesters, diesters, and triesters, including esters of fatty acids and fatty alcohols (¶[0055]-[0060]).
These organic hydrocarbons and fatty esters are within the presently claimed “fatty substance” genus when that term is construed consistently with the applicant's specification, which itself identifies hydrocarbons and emollient esters as fatty substances. The specification likewise identifies fatty substances such as hydrocarbons, plant-derived oils, esters, dimer dilinoleates, and triglycerides.
Accordingly, Sandewicz teaches an oil/fatty phase in a range that encompasses the claimed at least 30 wt.%. Selection of, for example, about 30-75 wt.% of the expressly disclosed organic oils falls simultaneously within Sandewicz's preferred oil range and instant claim 1.
Sandewicz additionally teaches the claimed polar solvent more specifically, expressly identifies glycols and glycerin as suitable alcohols (¶[0084]), while the immediately preceding disclosure explains that the alcohol may function as a solvent, humectant, or dispersant. Regarding the “emulsifying agent or stabilizer,” Sandewicz teaches surfactants, including W/O and O/W surfactants, in cosmetic formulations (¶[0089]-[0091]). Sandewicz further teaches, that an anhydrous emulsion may contain one or more emulsion stabilizers, generally about 0.001-10 wt.%, including magnesium sulfate, sodium chloride, magnesium chloride, EDTA, and related materials (¶[0129]).
Sandewicz therefore teaches a cosmetic composition, an emulsion, an oil/fatty phase in a range encompassing ≥30 wt.%, polar solvents, including polyhydric alcohols and glycerin, and an emulsifying agent or stabilizer. Sandewicz however, does not expressly disclose C12-22 alkyl acrylate/hydroxyethylacrylate copolymer, or an allylic polymer as broadly required by amended instant claim 1. Noor and Caes, respectively, supply those limitations, as described below.
Noor teaches the exact C12-22 alkyl acrylate/hydroxyethylacrylate copolymer.
Noor teaches that C12-22 alkyl acrylates/hydroxyethylacrylate copolymer is an associative oil-phase thickener designed to thicken a wide variety of oils, including mineral oils, hydrogenated polyisobutylene, vegetable oils, oil esters, and triglycerides, and teaches that the polymer is particularly effective in polar oils ¶[0285]. Noor ¶[0286]-[0288], teach dissolving the exact C12-22 alkyl acrylate/hydroxyethylacrylate copolymer in oil and then preparing a water/oil emulsion using that polymer.
Noor also expressly teaches cosmetic W/O formulations and describes water-in-oil cosmetic emulsions containing oil, emulsifier, emollient, and functionalized polymers (¶[0096]-[0123]). Example 20 identifies a water-in-oil skin-care emulsion, with the corresponding modified formulation employing the exact C12-22 alkyl acrylate/hydroxyethylacrylate copolymer (¶[0247]).
Caes teaches allylic polymer and exact allyl stearate/VA species. Caes teaches use of the claimed allylic polymer in the same cosmetic-emulsion context. Caes claim 6 teaches a transfer-resistant cosmetic product comprising a water/oil emulsion foundation. Claim 7 teaches that the emulsion additionally contains another film former, and claim 8 expressly specifies that the additional film former is allyl stearate/VA copolymer. Caes claims 11-17 independently provide corresponding disclosure. Caes therefore expressly establishes use of allyl stearate/vinyl acetate copolymer in a cosmetic composition; use of that polymer specifically in a W/O emulsion, and its use as an additional film former in a transfer-resistant cosmetic.
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to modify Sandewicz's oil-rich cosmetic emulsion by incorporating Noor's C12-22 alkyl acrylate/hydroxyethylacrylate copolymer and Caes's allyl stearate/VA copolymer. Sandewicz provides the same type of formulation environment: an anhydrous, oil-containing cosmetic emulsion employing polar solvents, surfactants/stabilizers, and optional film-forming polymers.
Noor gives an express technical reason to select the exact amended polymer for that environment. Noor teaches that the polymer is an oil-phase associative thickener specifically suited for mineral oil, hydrogenated polyisobutylene, vegetable oils, fatty/oil esters, and triglycerides, the same general classes of organic oil/fatty materials contemplated by Sandewicz, and actually prepares W/O emulsions using the polymer. A skilled formulator seeking to control rheology or structure an oil-rich phase therefore would have had an express reason to select Noor's polymer.
Caes gives an independent express reason to add allyl stearate/VA copolymer. Caes employs it as an additional film former in a transfer-resistant W/O cosmetic foundation. A skilled formulator seeking improved film formation and transfer resistance in Sandewicz's color cosmetic would have had reason to employ the film former for the same purpose taught by Caes. The proposed modification therefore does not require the skilled artisan to infer an unknown mechanism from chemical similarity. Noor teaches the exact polymer for oil-rich cosmetic emulsions, and Caes teaches the exact allylic polymer for W/O cosmetic emulsions.
Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007), use of known components in a closely analogous cosmetic formulation to obtain their known rheological and film-forming functions constitutes a predictable application of known technology where the record supplies an articulated technical reason to make the combination (see also MPEP §2143). A person of ordinary skill would also have had a reasonable expectation of successfully preparing the resulting emulsion. That expectation rests on actual prior-art formulation evidence wherein Sandewicz teaches anhydrous oil-rich cosmetic emulsions; Noor actually prepares water/oil emulsions with the exact claimed C12-22 polymer; and Caes actually employs allyl stearate/VA copolymer in a W/O cosmetic foundation.
The rejection therefore does not depend on an assumption that an anionic aqueous thickener and a nonionic oil-phase associative thickener will necessarily behave identically. Rather, the exact nonionic polymer is independently demonstrated to function in the relevant emulsion environment. Obviousness does not require absolute predictability; a reasonable expectation of success is sufficient (see MPEP § 2143.02, § 2144).
Regarding the ≥30 wt.% fatty-substance limitation, Sandewicz's preferred oil range of about 1-75 wt.% encompasses the claimed region beginning at 30 wt.%. Sandewicz also specifically teaches organic fatty/oil species rather than merely silicone fluids. Where the prior art teaches a range overlapping or encompassing the claimed range, a prima facie case generally arises absent evidence of criticality or unexpected results tied to the claimed boundary (see In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003); MPEP § 2144.05). Likewise, where the general conditions of a claim are disclosed, discovering workable or optimum ranges by routine experimentation generally does not render the result patentable absent evidence that the parameter was not recognized as variable or that the claimed range produces unexpected results (see In re Aller, 220 F.2d 454, 456 (CCPA 1955).)
Here the amount of oil is expressly identified by Sandewicz as a formulation variable over a very broad range, and Noor independently teaches the exact claimed polymer for structuring substantial oil/emollient phases. Accordingly, selection of a fatty organic-oil content of at least 30 wt.% within the disclosed range would have been an ordinary formulation selection with a reasonable expectation of obtaining a workable cosmetic emulsion. For the foregoing reasons, instant claim 1 would have been obvious over Sandewicz in view of Noor and Caes.
Assuming correction of its dependency to instant claim 1, instant claim 3 requires that the allylic polymer be allyl stearate/vinyl acetate copolymer. Caes claim 8 expressly recites that exact polymer as the additional film former in the W/O emulsion foundation of claims 6 and 7. Caes similarly recites the same material in claims 13 and 17. Instant claim 3 therefore would have been obvious for the reasons stated for claim 1.
Instant claim 16 recites providing the composition of instant claim 1 and applying the composition to a lip or skin. Sandewicz is expressly concerned with color cosmetics such as foundation, blush, concealer, and lip color and teaches cosmetic compositions intended for application to the skin (¶[0156]-[0158]). The customary use of a foundation, blush, concealer, or lipcolor composition is application to skin or lips. Once the composition itself would have been obvious for the foregoing reasons, its disclosed intended cosmetic use would likewise have been obvious. Accordingly, instant claim 16 would have been obvious.
Instant claim 17 requires the fatty substance to be present at least 70 wt.%. Sandewicz teaches a preferred oil range extending to 75 wt.%. Thus, Sandewicz's disclosed 1-75 wt.% preferred oil range overlaps instant claim 17 when the disclosed organic oils are selected. As cited above, under In re Peterson, overlapping ranges support prima facie obviousness where the prior-art disclosure would have directed one of ordinary skill in the art to the overlapping region, subject to consideration of criticality and objective evidence. Here, no limitation of instant claim 17 identifies a critical transition at 70 wt.%. Sandewicz expressly treats oil amount as a formulation variable, and Noor teaches use of the exact C12-22 polymer to structure oil-rich phases. Accordingly, a composition containing 70-75 wt.% of Sandewicz's disclosed organic oils would have been within the ordinary formulation choices taught by the references. Therefore, instant claim 17 would have been obvious.
Claims 4-6, and 10-11 are rejected under 35 U.S.C. §103 as being unpatentable over Sandewicz et al. (US20070048238A1; published 01 March 2007, hereinafter “Sandewicz”), in view of Noor and Lemma (US20070264204A1; published 15 November 2007, hereinafter “Noor”), and further in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter “Caes”), and Von Der Fecht et al. (WO2013064432A2; published 10 May 2013, hereinafter “Von Der Fecht”).
Sandewicz, in view of Noor, in further view of Caes, teach the limitations of instant claim 1, as described above, from which instant claims 4-6, and 10-11 are examined to depend, however does not explicitly teach the specific limitations of instant claims 4-6, and 10-11. The preceding references render obvious the composition of claims 1 and 3 but do not expressly teach the specific emulsifying/stabilizing material of instant claim 4.
Von Der Fecht expressly teaches cosmetic and dermatological water-in-oil emulsions containing polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate. Von Der Fecht provides about 0.0001-15 wt.%, preferably about 0.01-10 wt.%, of polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate based on the total composition (claims 1-4).
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to employ Von Der Fecht's known W/O emulsifier/stabilizer in the W/O or oil-rich cosmetic emulsion resulting from Sandewicz, Noor, and Caes because Von Der Fecht teaches the same material for the same emulsification/stabilization function in the same cosmetic product form. The expectation of success would have been strong because Von Der Fecht does not merely identify the material as a generic surfactant; it expressly formulates W/O cosmetic emulsions with it. Thus, the modification amounts to use of a known cosmetic W/O emulsifier for its established emulsification/stabilization function. Accordingly, instant claim 4 would have been obvious.
Instant claim 5 requires the polar solvent to be a polyol. Sandewicz teaches polyhydric alcohols as polar ingredients of its anhydrous emulsions (¶[0033]), and identifies glycerin and glycols as suitable alcohols (¶[0084]). The polyol limitation therefore is taught by Sandewicz itself. Accordingly, instant claim 5 would have been obvious.
Instant claim 6 requires that the polyol be glycerin. Sandewicz identifies glycerin among suitable alcohols (¶[0084]). Selection of an disclosed species from the small group of disclosed polyhydric solvents for its conventional solvent/humectant function would have been an ordinary formulation choice. Accordingly, instant claim 6 would have been obvious.
Instant claim 10 further requires a polymeric elastomer. Sandewicz expressly teaches synthetic elastomers as preferred finish enhancers and explains that such elastomers improve finish/aesthetic properties (¶[0139]). Sandewicz discloses both organic polymeric elastomers and silicone elastomers, including acrylates/VA crosspolymer, allyl methacrylates crosspolymer, dimethicone crosspolymer, and dimethicone/vinyl dimethicone crosspolymer (¶[0142]-[0144]). One of ordinary skill in the art would have been motivated to include such an elastomer for Sandewicz's expressly disclosed purposes of improving spreadability, blendability, finish, and non-greasy sensory properties. The expected result is the very sensory effect Sandewicz attributes to the ingredient. Accordingly, instant claim 10 would have been obvious.
Instant claim 11 further requires a dispersing agent. Sandewicz teaches that the disclosed alcohol component may itself function as a dispersant for formulation ingredients (¶[0083]-[0084]). Independently, Caes provides direct evidence that a distinct dispersing agent was conventional in the very allyl-stearate/VA cosmetic systems relied upon in the rejection. Caes Example 7 expressly contains 2.50 wt.% “Pigment Dispersing agent” together with 2.21 wt.% allyl stearate/vinyl acetate copolymer, pigments, waxes, solvent, and preservatives; Example 8 similarly contains a pigment dispersing agent. Thus, a skilled formulator making a pigmented color cosmetic would have had an express reason to employ a dispersing agent to disperse the pigment phase. Caes demonstrates that such a dispersant was compatible with the same allyl stearate/VA film-forming system. Accordingly, instant claim 11 would have been obvious.
Claims 1, 3-5, and 7 are rejected under 35 U.S.C. §103 as being unpatentable over Sandewicz et al. (US20070048238A1; published 01 March 2007, hereinafter “Sandewicz”), in view of Noor and Lemma (US20070264204A1; published 15 November 2007, hereinafter “Noor”), and and further in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter “Caes”), Von Der Fecht et al. (WO2013064432A2; published 10 May 2013, hereinafter “Von Der Fecht”), and Meiring et al. (DE102007021480A1; published 06 November 2008; hereinafter “Meiring”).
Sandewicz, in view of Noor, in further view of Caes and Von Der Fecht, teach the limitations of instant claims 1, 3-5, as described above, from which instant claim 7 is examined to depend, however does not explicitly teach the specific limitations of instant claim 7.
Instant claim 7 requires the polyol to comprise glycerin and a glyceryl ether and/or glyceryl ester. Meiring example variant 7 expressly formulates a cosmetic preparation containing 7.5 wt.% glycerin; 1.5 wt.% glyceryl stearate; 2.5 wt.% glyceryl stearate citrate; additional oils and emollients; and conventional cosmetic additives. Thus, Meiring directly demonstrates co-formulation of glycerin with a glyceryl ester in a cosmetic emulsion. Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to include a glyceryl ester such as glyceryl stearate together with the already-disclosed glycerin because Meiring establishes the compatibility and ordinary use of that exact combination in cosmetic formulations. One of ordinary skill in the art would reasonably have expected the two conventional cosmetic ingredients to retain their respective solvent/humectant and emollient/emulsifying functions. Accordingly, instant claim 7 would have been obvious.
Claims 1, 3-5, and 9 are rejected under 35 U.S.C. §103 as being unpatentable over Sandewicz et al. (US20070048238A1; published 01 March 2007, hereinafter “Sandewicz”), in view of Noor and Lemma (US20070264204A1; published 15 November 2007, hereinafter “Noor”), and in further view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter “Caes”), Von Der Fecht et al. (WO2013064432A2; published 10 May 2013, hereinafter “Von Der Fecht”), and Koch et al. (WO2013120825A2; published 22 August 2013, hereinafter referred to as “Koch”).
Sandewicz, in view of Noor, in further view of Caes and Von Der Fecht, teach the limitations of instant claims 1, and 3-5, as described above, from which instant claim 9 is examined to depend, however does not explicitly teach the specific limitations of instant claim 9.
Instant claim 9 further requires that the fatty substance comprise diisostearoyl polyglyceryl-3 dimer dilinoleate. Koch is specifically directed to cosmetic/dermatological W/O emulsions and expressly requires diisostearoyl polyglyceryl-3 dimer dilinoleate together with polyglyceryl-3 diisostearate as W/O emulsifiers. Koch claim 1 provides direct disclosure of the exact material. Koch's working examples further establish compatibility of that compound with the same general fatty/polar formulation environment implicated by the claims. For example, Example 2 contains 1.9 wt.% diisostearoyl polyglyceryl-3 dimer dilinoleate, and Example 3 contains 1.5 wt.% of the material together with shea butter, isohexadecane, dibutyl adipate, mineral oil, sunflower oil, and 13.75 wt.% glycerin. Koch therefore demonstrates the exact ingredient in W/O cosmetic emulsions containing hydrocarbons, fatty materials, and glycerin.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to include Koch's known cosmetic fatty/emulsifying material in the W/O cosmetic formulation of the preceding references because Koch teaches its successful use in precisely that formulation environment. One of ordinary skill in the art would have reasonably expected compatibility and the W/O emulsification benefits expressly demonstrated by Koch. Accordingly, instant claim 9 would have been obvious.
Claims 1, 3-5, and 10-13 are rejected under 35 U.S.C. §103 as being unpatentable over Sandewicz et al. (US20070048238A1; published 01 March 2007, hereinafter “Sandewicz”), in view of Noor and Lemma (US20070264204A1; published 15 November 2007, hereinafter “Noor”), and in further view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter “Caes”), Von Der Fecht et al. (WO2013064432A2; published 10 May 2013, hereinafter “Von Der Fecht”), Blin et al. (US20070041920A1; published , hereinafter “Blin”), and Kappes et al. (WO2006041736A1; published , hereinafter “Kappes”).
Sandewicz, in view of Noor, in further view of Caes and Von Der Fecht, teach the limitations of instant claims 1, 3-5, 10 and 11 as described above, from which instant claims 12 and 13 are examined to depend, however does not explicitly teach the specific limitations of instant claims 12 and 13.
Instant claim 12 requires a hydrocarbon-based resin having a number-average molecular weight of 250-10,000 g/mol, and a softening point of 70-130°C. Blin is directed to cosmetic lip-makeup compositions containing tackifying resins. Blin teaches cosmetic lip compositions comprising resins chosen from rosin, rosin derivatives, and hydrocarbon-based resins having a number-average molecular mass no greater than 10,000 g/mol (¶[0007]).
Blin's resin teaches that the number-average molecular mass may range from 250 to 10,000 g/mol (claim 4), with successively narrower disclosed ranges. Blin identifies hydrocarbon-based resins and specifically teaches low-molecular-weight olefinic, indene, pentadiene, cyclopentadiene-dimer, and terpenic resins (¶[0050]-[0057]). Blin ¶[0057] identifies commercial REGALITE R1100, R1090, R7100, R1010, and R1125 hydrocarbon resins. Blin therefore directly establishes the claimed hydrocarbon-based resin, cosmetic use, and molecular mass range of 250-10,000 g/mol.
Kappes teaches hydrocarbon tackifying resins and expressly identifies commercially available REGALITE and REGALREZ aromatic and cycloaliphatic/aromatic resins (¶[0016]; i.e., the same commercial hydrocarbon-resin family expressly identified by Blin). Kappes teaches that these tackifiers generally have Ring-and-Ball softening points measured according to ASTM E-28 and identifies progressively preferred ranges, including specifically about 70°C to about 130°C (¶[0017]). Thus, the instant claimed softening-point interval is not inferred from the fact that a material happens to be a resin. It is an expressly disclosed preferred range for the same class of hydrocarbon tackifying resins.
Kappes concerns tackifier formulation rather than cosmetics and therefore is not relied upon as the primary cosmetic-formulation reference. Nevertheless, Kappes is reasonably pertinent to the particular problem for which it is applied, identifying and controlling the softening point of hydrocarbon tackifying resins. Blin characterizes its cosmetic hydrocarbon resins as tackifying resins and expressly identifies REGALITE grades, wherein Kappes likewise expressly identifies REGALITE/REGALREZ hydrocarbon tackifiers and teaches that control of tackifier softening point is important.
The analogous-art inquiry is not limited to whether the secondary reference has the same ultimate end use. Prior art is analogous when it is within the field of endeavor or is reasonably pertinent to the particular problem addressed (see MPEP §2141.01(a)). Kappes therefore is used narrowly as evidence of the physical-property range conventionally associated with the same hydrocarbon tackifier class, not as evidence of cosmetic efficacy.
A person of ordinary skill selecting Blin's low-Mn hydrocarbon tackifying resin for a cosmetic film would have had reason to select a resin having a conventional softening point appropriate to handling and film formation. Kappes expressly teaches that tackifier performance varies with softening point, that softening-point control is important, and that 70-130°C is a preferred range. The teachings are closely connected because both references identify REGALITE-family hydrocarbon resins.
Selection of a Blin cosmetic hydrocarbon resin within Blin's express 250-10,000 g/mol Mn range and within Kappes's expressly preferred 70-130°C softening range therefore would have represented selection of known physical parameters of a known resin class, not creation of a new resin chemistry. To the extent the ranges constitute optimization of recognized resin parameters, In re Aller supports routine optimization once the general conditions are disclosed and In re Peterson likewise supports obviousness where an expressly disclosed range encompasses or overlaps the claimed interval (as cited above). Accordingly, instant claim 12 would have been obvious.
Instant claim 13 further requires a polyolefin, a colorant, a preservative, a skin-care agent, and/or an antioxidant. Sandewicz independently teaches all of these conventional cosmetic additive classes and polyolefin. Sandewicz teaches synthetic polymers made from olefins including ethylene, propylene, butene, pentene, decene, and hexadecane (¶[0137]).
Regarding the colorant limitation, Sandewicz teaches pigments and powders and provides both organic and inorganic pigment classes, including iron oxides and conventional D&C/FD&C colorants (¶[0062]-[0065]). Regarding the skin-care agent limitation, Sandewicz teaches botanical ingredients derived from plants, flowers, and herbs, including aloe, ginkgo biloba, ginseng, camellia sinensis, and grape-seed extract (¶[0145]-[0147]). Regarding the antioxidant limitation, Sandewicz teaches vitamins and antioxidants, including vitamins A, C, E and derivatives thereof, sulfites, propyl gallate, BHT, and BHA (¶[0148]-[0150]). Regarding the preservative limitation, Sandewicz teaches preservatives such as methyl, ethyl, and propyl parabens and phenoxyethanol (¶[0152]).
These additives are disclosed by Sandewicz for their conventional formulation functions in the same cosmetic compositions. Their inclusion therefore would have required no change in principle of operation and would have been expected to provide their known coloration, preservation, skin-care, antioxidant, and film/texture functions. Accordingly, instant claim 13 would have been obvious.
Claims 1, 3-5, and 10-15, and 18 are rejected under 35 U.S.C. §103 as being unpatentable over Sandewicz et al. (US20070048238A1; published 01 March 2007, hereinafter “Sandewicz”), in view of Noor and Lemma (US20070264204A1; published 15 November 2007, hereinafter “Noor”), and in further view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter “Caes”), Von Der Fecht et al. (WO2013064432A2; published 10 May 2013, hereinafter “Von Der Fecht”), Blin et al. (US20070041920A1; published , hereinafter “Blin”), Kappes et al. (WO2006041736A1; published , hereinafter “Kappes”), and Mukherjee et al. (US20080193405A1; published 14 August 2008, hereinafter referred to as “Mukherjee”).
Sandewicz, in view of Noor, in further view of Caes, Von Der Fecht, Blin, and Kappes teach the limitations of instant claims 1, 3-5, and 10-13 as described above, from which instant claims 14, 15, and 18 are examined to depend, however does not explicitly teach the specific limitations of instant claims 14, 15, and 18.
Instant claim 14 requires that the cosmetic composition be substantially free of water. The applicant's specification defines “substantially free” to mean less than 1% of the identified ingredient. Sandewicz already strongly suggests this embodiment. Sandewicz defines its preferred composition as anhydrous, states that water is not intentionally added, and permits only small trace amounts from raw materials (¶[0033]). Sandewicz further expressly teaches an anhydrous emulsion.
Mukherjee provides explicit quantitative corroboration. Mukherjee teaches low-water or virtually anhydrous cosmetic preparations containing at most 1 wt.% water (¶[0176]). The prior-art range extending downward from 1 wt.% necessarily encompasses compositions below 1 wt.% and therefore substantially overlaps the applicant's construction of “substantially free.”
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to employ the anhydrous/very-low-water embodiment because Sandewicz affirmatively prefers anhydrous compositions and explains how polar components are dispersed in the oil phase of an anhydrous emulsion. Mukherjee confirms that cosmetic preparations having ≤1 wt.% water were conventional. Accordingly, instant claim 14 would have been obvious.
Instant claim 15 accumulates the previously recited fatty substance; C12-22 alkyl acrylate/hydroxyethylacrylate copolymer; allylic polymer; polar solvent; emulsifying agent/stabilizer; polymeric elastomer; dispersing agent; hydrocarbon-based resin; polyolefin and specified cosmetic-additive categories; and substantially-water-free condition. Each component is taught or rendered obvious for the reasons set forth above. The remaining issue is the limitation permitting less than 5 wt.% additional materials.
Sandewicz provides pertinent express evidence. Sandewicz teaches that a variety of “other ingredients,” such as fragrances, preservatives and hydroxy acids, may be used and states that the totality of such other ingredients is about 0.001-3 wt.% of the composition (¶[0152]). The 0.001-3 wt.% interval lies entirely within instant claim 15's “less than 5%” limitation. Moreover, Sandewicz describes the principal ingredient categories as optional selections. A skilled formulator selecting the previously discussed functional components would not have been required to add extraneous ingredients lacking a desired formulation function. The predictable result of omitting an unnecessary optional ingredient is simply its absence from the final formulation.
The rejection therefore is not based solely on the proposition that every individual cosmetic additive was separately known. Sandewicz expressly teaches keeping the aggregate quantity of residual “other ingredients” to no more than about 3 wt.% while providing the same general cosmetic ingredient architecture relied upon above. Accordingly, instant claim 15 would have been obvious.
Instant claim 18 is drafted in the alternative and requires the fatty substance to comprise at least one of the listed classes. It is unnecessary for a single reference to disclose every alternative because satisfaction of one claimed alternative reads on the claim. Sandewicz directly teaches straight or branched hydrocarbons having 18-40 carbon atoms, including n-octadecane, nonadecane, eicosane, higher hydrocarbons, hydrogenated polyisobutene, mineral oil, squalene, and squalane (¶[0053]).
That teaching directly satisfies instant claim 18's alternative, “a linear or branched hydrocarbon with more than 16 carbon atoms.” Sandewicz additionally teaches monoesters of fatty acids (¶[0056]) and numerous triesters (¶[0060]). Thus, the terminal fatty-substance limitation of instant claim 18 is expressly taught by the primary reference itself. Accordingly, instant claim 18 would have been obvious.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 16 June 2026, have been fully considered.
The applicant argues that Mukherjee’s C10-30 alkyl acrylate crosspolymer is not the presently claimed C12-22 alkyl acrylate/hydroxyethylacrylate copolymer. This point is acknowledged. The present rejection therefore does not assert that Mukherjee’s C10-30 alkyl acrylate crosspolymer is the same polymer as, or by itself reads upon, the amended C12-22 alkyl acrylate/hydroxyethylacrylate copolymer. Rather, Noor is now relied upon for the expressly claimed polymer. Noor expressly discloses C12-22 alkyl acrylate/hydroxyethylacrylate copolymer and repeatedly incorporates that polymer into cosmetic emulsion formulations. Noor identifies Examples 15b, 16b, 18b, 20a, 21b and numerous additional personal-care formulations using the exact polymer. Thus, the applicant’s distinction between the two chemical names does not overcome the presently stated rejection because the rejection no longer depends upon equating them.
The applicant argues that amended claim 1 is patentable because Mukherjee’s C10-30 alkyl acrylate crosspolymer is not C12-22 alkyl acrylate/hydroxyethylacrylate copolymer, and because the former is anionic while the latter is nonionic. The applicant further argues that substituting a nonionic thickener into Mukherjee’s anionic polymer system would produce unpredictable interactions. These arguments are not persuasive.
However, C12-22 alkyl acrylate/hydroxyethylacrylate copolymer is a known nonionic acrylate copolymer used in cosmetics. The fact that it is nonionic rather than anionic does not create unpredictability sufficient to overcome a prima facie case of obviousness. Nonionic acrylate thickeners and film-formers were well known and were used in cosmetic emulsions, including emulsions containing anionic polymers and surfactants. A person of ordinary skill would have had a reasonable expectation that substituting or adding a known nonionic acrylate copolymer would produce a stable cosmetic emulsion. Moreover, the claims are composition claims. They do not require a specific rheological mechanism, a particular stability profile, or any unexpected synergistic result. The applicant has not provided any comparative data or objective evidence showing that the claimed combination produces an unexpected result or fails to function.
Nevertheless, The argument is not persuasive against the presently stated combination. The rejection does not depend upon a conclusion, derived solely from structural similarity, that every anionic acrylate rheology modifier can automatically be exchanged for every nonionic associative rheology modifier. Rather, Noor provides affirmative empirical teaching that the exact claimed polymer is suitable for cosmetic formulations, including emulsions, and identifies it specifically as an associative oil-phase thickener for mineral oils, hydrogenated polyisobutylene, vegetable oils, esters and triglycerides. A person of ordinary skill was not required to predict the behavior of the claimed polymer solely from the behavior of Mukherjee’s anionic polymer. Noor already taught the skilled artisan that the claimed polymer functions successfully in the relevant cosmetic formulation environment.
Second, The applicant’s formulation of the KSR substitution standard as requiring the substitute component to act through the same molecular mechanism is too restrictive. MPEP 2143 obviousness guidance recognizes several rationales under KSR, including combination of known elements according to known methods and simple substitution of known elements where a predictable result and reasonable expectation of success are established. The inquiry is not limited to whether two ingredients operate through an identical molecular mechanism. Here, predictability is established not merely by generic similarity but by Noor’s express teaching of the claimed polymer in cosmetic emulsions and oil-rich systems.
The applicant correctly notes that obviousness requires a reasonable expectation of success. The examiner agrees with that legal proposition. However, the standard requires a reasonable, not absolute, expectation of success (see MPEP §§2143 and 2144 recognizing that absolute predictability or conclusive proof of efficacy is not required). Here, the expectation is particularly strong because Noor does not merely suggest the claimed polymer theoretically. Noor actually describes the polymer in multiple cosmetic formulations and expressly teaches its compatibility with oil esters, triglycerides, mineral oils, vegetable oils and other components characteristic of fatty cosmetic phases.
Accordingly, the applicant’s generalized assertion that anionic materials in Mukherjee could potentially enhance, suppress, or otherwise affect associative behavior does not outweigh the affirmative prior-art teaching that the claimed nonionic polymer was successfully used in the relevant formulation art.
Neither Mukherjee nor the newly applied Noor reference criticizes, discredits, or discourages use of C12-22 alkyl acrylate/hydroxyethylacrylate copolymer in cosmetic emulsions. Rather, Noor expressly recommends and exemplifies that polymer in such personal-care formulations. Accordingly, the prior art does not teach away from the claimed polymer.
The applicant’s assertion that the different thickening mechanisms “break” the KSR substitution rationale does not address the full basis of the rejection. The rejection rests upon the combined teachings that Mukherjee provides the cosmetic-emulsion framework, fatty phase, polar-solvent and emulsification teachings; Noor expressly provides the exact C12-22 alkyl acrylate/hydroxyethylacrylate copolymer, demonstrates its use in cosmetic emulsions, and teaches its suitability for oil-rich formulations; Caes provides the allyl stearate/vinyl acetate polymer and its cosmetic film-forming function; and the dependent-claim references provide the specific additional ingredients and properties for which they are respectively relied upon. The cited prior art therefore provides both a reason to make the combination and a factual basis for reasonably expecting the resulting cosmetic formulation to function successfully.
The applicant has not identified comparative evidence showing that use of the claimed C12-22 alkyl acrylate/hydroxyethylacrylate copolymer in the presently claimed combination produces an unexpected result relative to the cosmetic uses of that exact polymer already demonstrated by Noor. Nor has the applicant identified evidence establishing that the ≥30 wt.% fatty-substance threshold, the hydrocarbon-resin parameter ranges, or the other recited selections produce a result unexpected relative to the prior art. Absent persuasive evidence of criticality, unexpected results, teaching away, or lack of a reasonable expectation of success, the claimed selection and combination of known cosmetic formulation components remains prima facie obvious.
The applicant has not separately argued the patentability of dependent claims 3-7, 9-17, or 18. The additional limitations of those claims are taught by the cited references or are routine selections from known cosmetic ingredients.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at: http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights