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 .
Status of the Claims
Amendments to the specification and claims and Arguments/Remarks filed 29 December 2025, in response to the Office Correspondence dated 30 September 2025, are acknowledged.
The listing of Claims filed 29 December 2025, have been examined. Claims 1-7 and 9-18 are pending. Claims 1, 9, 10, 12 and 15 are amended and are supported by the originally-filed disclosure. Claim 8 is canceled and no new claims 17 and 18 been added.
Response to Amendment
The applicant’s amendments and arguments filed 29 December 2025 in response to the previous Office Action dated 30 September 2025 have been fully considered.
The applicant has amended the title consistent with the examiner’s suggestion. The revised title is sufficiently descriptive of the claimed subject matter. Accordingly, the prior objection to the title under 37 CFR 1.72(a) is withdrawn.
The applicant amended claim 15 to recite “one or more additional materials… present in a total amount of less than 5% by weight of the cosmetic composition.” This amendment overcomes the antecedent ambiguity previously identified. The claim now clearly identifies the category of components to which the quantitative limitation applies. Accordingly, the rejection of claim 15 under 35 U.S.C. §112(b) based on the phrase “all other materials” is withdrawn.
The applicant amended claim 12 to define the resin as “a resin having a number-average molecular weight from 250 g/mol to 10,000 g/mol and a softening point of 70°C to 130°C.” The amendment provides objective structural parameters sufficient to inform a person of ordinary skill in the art of the scope of the claimed genus. Therefore, the rejection of claims 12-15 under 35 U.S.C. §112(b) based on the phrase “hydrocarbon-based resin” is withdrawn.
Claims 1-7, 9-16 remain rejected under 35 U.S.C. §103. The applicant’s arguments are not persuasive for the reasons set forth below in the Response to Arguments section. The 35 U.S.C. §103 rejection of claim 1 has been updated based on the new fatty-substance limitation introduced by the amendment to claim 1. Dependent claims 2-7 and 9-16 remain obvious for the reasons previously stated in the prior Office Correspondence and as modified herein. The cited references teach or render obvious specific acrylate polymer subclasses, specific fatty ingredients, polymeric elastomers, dispersing agents, cosmetic additives, substantially anhydrous compositions, and cosmetic methods of use.
New claims 17 and 18 are rejected under 35 U.S.C. §103, as set forth below. New grounds of rejection under 35 U.S.C. § 112(b) have also been made in view of amendments to the claims.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 30 September 2025, since the art which was previously cited continues to read on the amended/newly cited limitations.
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-AlA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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, 5-7 and 10-16 are rejected under 35 U.S.C. §103 as being unpatentable over Mukherjee et al. (US20080193405A1; published 14 August 2008, hereinafter referred to as “Mukherjee”), in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter referred to as “Caes”) and in further view of Kim et al. (US20100135918A1; published 03 June 2010, hereinafter referred to as “Kim”).
Regarding instant claim 1, Mukherjee teaches personal care compositions that are cosmetic emulsions containing functionalized polymers, including alkyl acrylate copolymers, and further discloses the use of high levels of fatty substances.
Specifically, Mukherjee teaches cosmetic compositions comprising significant fatty phases, including oils, waxes, triglycerides, and esters (¶[0253]-[0259]). Example 40 (¶[1215]) discloses an anhydrous stick composition wherein approximately 93.8% by weight of the composition comprises fatty substances (waxes, oils, esters, and derivatives; fatty substance ≥30% by weight), with the remaining approximately 6.2% consisting of pigments, bisabolol, polymer, and preservative. Thus, Mukherjee explicitly teaches a fatty substance content well in excess of the 30% threshold recited in amended claim 1. One of ordinary skill would recognize that the principle of formulating with a high oil phase is transferable to emulsion compositions, as Mukherjee extensively teaches emulsions in other examples (e.g., Examples 1-19, 21-39).
Mukherjee also teaches forming cosmetic emulsions that employ C10-30 alkyl acrylate crosspolymer (Example 21, ¶[0868]; Example 32, ¶[1054]; Example 52, ¶[1277]; Example 54, ¶[1281]; Example 57, ¶[1287]; Example 60, ¶[1293]; Example 61, ¶[1295]), which falls within the C10-C40 alkyl acrylate polymer species of instant claim 1. Mukherjee teaches the use of polar polyol solvents including glycerol/glycerin (¶[0178]-[0181]; Examples 7-13, 15, 21, 26, 29, 32, 34, 35, 38, 52-66, 73, 75, and 78) and "polyhydric alcohols such as glycerol, diethylene glycol, triethylene glycol, polyalkylene glycols, such as polyethylene glycol, alkyl ethers of these polyhydric alcohols" (¶[0178]). Mukherjee's invention also encompasses the use of polymers that act as stabilizers for emulsions, and common cosmetic emulsifiers that can be used in compositions are detailed at length (¶[0364]-[0385]).
Regarding the allylic polymer limitation of claim 1, Mukherjee does not explicitly disclose an allylic polymer such as allyl stearate/vinyl acetate copolymer. However, Caes discloses the use of allyl stearate/vinyl acetate polymers as a flexible film-forming agent in cosmetic emulsion compositions (claims 7 and 8), thus disclosing an "allylic polymer" that is suitable for cosmetics. Caes further teaches that these film-forming polymers may be combined with additional film formers, explicitly listing "Acrylates Copolymer" as a preferred additional film former (page 6, paragraph 4 to page 7, paragraph 2). This teaching directly suggests combining the allylic polymer of Caes with the acrylate polymers of Mukherjee.
Kim reinforces the motivation to combine such polymers, teaching copolymer systems for cosmetic applications comprising vinyl-type polymerizable monomers such as vinyl acetate and acrylates (¶[0230] and ¶[0237]). Kim further discloses that polymers can be mixed with conventional polymers to set specific properties such as improving feel, spreading behavior, and water resistance (¶[0543]-[0544]).
A person of ordinary skill in cosmetic formulation would have been motivated to combine the teachings of Mukherjee, Caes, and Kim for several predictable technical reasons. First, high fatty phase emulsions are known. Mukherjee establishes that high levels of fatty substances (≥30%) are achievable and desirable in cosmetic compositions (Example 40; ¶[0253]-[0259]). One of ordinary skill seeking to formulate a stable, high-oil-content emulsion would look to Mukherjee's teachings on fatty phases and emulsion systems. Second, given polymer compatibility in film-forming cosmetic systems. Caes explicitly teaches that allyl stearate/vinyl acetate copolymers (allylic polymers) can be advantageously combined with acrylate copolymers to improve film properties such as smoothness, spreadability, water-resistance, and transfer resistance (page 6). The combination of these two polymer types to achieve enhanced film properties would have been an obvious formulation choice. Third, for optimization of emulsion stability and rheology. Mukherjee teaches acrylate polymers as rheology modifiers and stabilizers. Incorporating the specific allylic film-former of Caes would have been a predictable means to enhance film strength, flexibility, and wear resistance, properties routinely optimized in cosmetic emulsion formulation. Fourth, because of routine formulation practice. Cosmetic formulators routinely combine rheology-modifying polymers, film-forming polymers, emulsifiers, and high levels of fatty emollients to achieve balanced sensory and performance characteristics. The desire to create stable, long-wear cosmetic emulsions with a rich, emollient feel would have provided ample motivation to combine these known elements.
Under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), combining familiar elements according to known methods to yield predictable results renders the claimed composition obvious. The prior art establishes each element of instant claim 1 as well-known in the cosmetic arts, and the combination would have been obvious to one of ordinary skill seeking to formulate an improved cosmetic emulsion.
Regarding the limitations of dependent instant claim 2, Mukherjee specifically details polymerization of monomers such as "(meth)acrylic esters of monohydric C1-C22-alcohols" as possible comonomers (¶[0041]), in which C12-22 alkyl acrylate and hydroxyethylacrylate copolymers fall under this description as suitable embodiments of the acrylate family. Further, C12-22 alkyl acrylate/hydroxyethylacrylate copolymer is a known and commercially available subclass of acrylate polymers used for their temperature-sensitive gelling properties in emulsions. The use of C12-22 alkyl acrylate/hydroxyethylacrylate copolymers is an obvious substitute for other acrylate polymers taught by Mukherjee.
Regarding the limitations of dependent instant claim 3, Caes explicitly discloses allyl stearate/vinyl acetate copolymer as the film-forming agent in cosmetic emulsions (claims 7-8), mapping directly to the allylic polymer limitation of claim 3.
Regarding the limitations of dependent instant claim 5, Mukherjee teaches the use of polyols as polar solvents, including glycerol, glycols, and other polyhydric alcohols (¶[0178]-[0181]). The selection of a polyol as the polar solvent is a routine choice from among the polar solvents disclosed by Mukherjee.
Regarding the limitations of dependent instant claims 6 and 7, Mukherjee specifically teaches glycerin as a polyol solvent (¶[0178]-[0181]; numerous examples). Regarding claim 7, Mukherjee discloses glyceryl ethers as alkyl ethers of glycerol (¶[0178]) and glyceryl esters as triglycerides, coconut fatty acid glycerides, glyceryl stearate, glyceryl isostearate, and glyceryl ricinoleate (¶[0253]; Example 3, ¶[0680]; Example 16, ¶[0751]; Example 40, ¶[1229]). The use of glycerin in combination with glyceryl ethers and/or glyceryl esters as a polyol solvent system is an obvious alternative with known humectant and solubility properties. A formulator would have a reasonable expectation of success in using such combinations. Therefore, claims 1-3 and 5-7 would have been obvious to one of ordinary skill in the art at the time of the invention over Mukherjee in view of Caes and Kim.
Regarding instant claim 10, Mukherjee discloses inclusion of silicone polymeric elastomers polyalkylsiloxanes, polyarylsiloxanes, and polyarylalkylsiloxanes in emulsions (¶[0194]). Adding a polymeric elastomer (e.g., silicone elastomers) to cosmetic compositions as an additive is common and their inclusion is known to provide specific expected properties (e.g., slip, silky texture), rendering the use as an additive obvious.
Regarding instant claim 11, Mukherjee teaches the inclusion of dispersants as additives used to disperse insoluble active ingredients, such as magnesium aluminum silicates and hydrocolloids like xanthan gum (¶[0326]-[0327]). Adding a dispersing agent to cosmetic compositions is conventional. Their inclusion is well-known to provide specific expected properties (e.g., pigment dispersion, stability), rendering the use as an additive obvious.
Regarding instant claim 12, Mukherjee teaches the inclusion of various oil and wax components in cosmetic compositions, including hydrocarbons. Specifically, Mukherjee discloses that "one or more oil components can be chosen advantageously from the group of branched and unbranched hydrocarbons and hydrocarbon waxes" (¶[0254]-[0255]). Mukherjee further teaches that "[o]f the hydrocarbons, paraffin oil, squalane, squalene and in particular polyisobutenes, which may also be hydrogenated, are to be used for the purposes of the present invention" (¶[0259]). While Mukherjee does not explicitly teach the addition of hydrocarbon-based resins having the specific molecular weight and softening point ranges recited in claim 12, the reference establishes that hydrocarbon-based materials are desirable components in cosmetic formulations.
Caes provides the missing teaching regarding hydrocarbon-based resins with the recited property ranges. Caes is specifically directed to cosmetic compositions containing hydrocarbon-based block copolymer resins as film-forming agents. Caes teaches that these resins provide films with "very good adherence to the substrate, flexibility, wearability, good dry time, non-tacky, good retention, non-transfer, and low migration overtime" (page 2, paragraph 2). Caes discloses specific examples of hydrocarbon-based resins, including styrene-ethylene/propylene-styrene copolymers, styrene-ethylene/butylene-styrene copolymers, and hydrogenated versions thereof (page 3, paragraph 3 to page 5, paragraph 2).
Critically, the hydrocarbon-based resins taught by Caes inherently possess molecular weights and softening points within the ranges recited in amended claim 12. For example, the Kraton® and Versagel® resins identified by Caes are well-known in the art to have number-average molecular weights and softening points that fall within the claimed ranges. One of ordinary skill would recognize that resins of the type disclosed by Caes—specifically, block copolymer resins used as film-forming agents in cosmetics—typically exhibit molecular weights between 250 g/mol and 10,000 g/mol and softening points between 70°C and 130°C. These are conventional property ranges for cosmetic-grade hydrocarbon-based resins.
Kim reinforces the motivation to combine such components, teaching that polymers can be mixed with conventional polymers to set specific properties such as improving feel, spreading behavior, and water resistance (¶[0543]-[0544]).
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Mukherjee, Caes, and Kim. A person of ordinary skill in cosmetic formulation would have been motivated to combine the teachings of these references for several predictable technical reasons. First, for the known benefits of hydrocarbon-based resins. Caes explicitly teaches that hydrocarbon-based resins provide desirable film properties including adherence, flexibility, wearability, and transfer resistance. One of ordinary skill seeking to improve the film properties of Mukherjee's cosmetic emulsions would naturally look to incorporate such resins.
Second, as a matter of routine selection of known material properties. The specific molecular weight range (250-10,000 g/mol) and softening point range (70-130°C) recited in instant claim 12 are conventional and expected properties for hydrocarbon-based resins used in cosmetic film-forming applications. Caes discloses the class of resins, and one of ordinary skill would recognize that resins within this class inherently possess properties within these ranges. Selecting a resin having such properties would be a routine optimization, not an inventive step. Third, for compatibility with existing formulations. Mukherjee already teaches the use of hydrocarbon-based materials (oils, waxes, polyisobutenes) in cosmetic compositions. Adding a hydrocarbon-based resin of the type taught by Caes would be a straightforward extension of Mukherjee's teachings, as both references deal with compatible hydrocarbon-based materials suitable for cosmetic use.
The combination would be expected to yield predictable result as a matter of routine formulation practice. The addition of film-forming resins to cosmetic emulsions to improve wear, transfer resistance, and film integrity was well-established in the art at the time of the invention, as evidenced by Caes. The outcome of such addition of enhanced film properties would have been entirely predictable to one of ordinary skill.
Under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the combination of familiar elements according to known methods to yield predictable results renders the claimed composition obvious. Here, Mukherjee provides the base cosmetic emulsion with hydrocarbon components, Caes provides the specific class of hydrocarbon-based resins with known film-forming benefits, and the recited molecular weight and softening point ranges are inherent properties of such resins that would be recognized and selected by one of ordinary skill as a matter of routine optimization. Therefore, instant claim 12 would have been obvious to one of ordinary skill in the art at the time of the invention.
Regarding instant claim 13, Mukherjee teaches the inclusion of polyolefins polyisobutene and polydecenes suitable for use in the invention (¶[0282]), colorants, preservatives, cosmetic active ingredients (¶[0248]) and antioxidants (¶[0315]-[0318]). Adding polyolefins, colorants, preservatives, skin care agents, and/or antioxidants are all well-known and conventional additives in cosmetic compositions. Their inclusion to provide specific expected properties (e.g., film-forming/thickener, aesthetic appeal/enhancement, stability/safety, specific functional benefits, free radical protection, respectively), rendering use as an additive obvious.
Regarding instant claim 14, Mukherjee teaches, “Another embodiment of the invention is alcoholic compositions comprising at least one W/W polymer and…in particular at most 1% by weight of water. Such low-water or virtually anhydrous preparations can be thickened by the W/W polymers.” (¶[0176]), disclosing compositions “substantially free” of water [contains less than 1%], as per the limitation of instant claim 14.
Regarding instant claim 15, the claim recites a cosmetic composition that includes the combination of: a fatty substance; a C10-C40 alkyl acrylate polymer; an allylic polymer; a polar solvent; an emulsifying agent or stabilizer; a polymeric elastomer; a dispersing agent; a hydrocarbon-based resin; a polyolefin, a colorant, a preservative, a skin care agent, and/or an antioxidant; wherein the composition is substantially free of water; and wherein the composition optionally contains one or more additional materials in a total amount of less than 5% by weight.
As established in the rejections of base claim 1 and intervening claims 10-14, the combination of a fatty substance, C10-C40 alkyl acrylate polymer, allylic polymer, polar solvent, and emulsifying agent or stabilizer in an emulsion that is substantially free of water is taught or rendered obvious by Mukherjee in view of Caes and Kim. Mukherjee teaches cosmetic emulsions containing acrylate polymers, polar solvents, emulsifiers, and fatty substances, and further teaches compositions that are "substantially free" of water, i.e., containing less than 1% water (¶[0176]). Caes teaches the allylic polymer component (allyl stearate/vinyl acetate copolymer) and its combination with acrylate polymers. Kim reinforces the routine nature of combining such polymer systems.
Regarding the additional elements recited in instant claim 15 of a polymeric elastomer, Mukherjee explicitly teaches the inclusion of polymeric elastomers in cosmetic compositions, including silicone elastomers such as polyalkylsiloxanes, polyarylsiloxanes, and polyarylalkylsiloxanes (¶[0194]). The addition of elastomers to cosmetic formulations to provide desirable sensory properties (slip, silky texture) was conventional and well-known.
Regarding the dispersing agent, Mukherjee teaches the inclusion of dispersants as additives used to disperse insoluble active ingredients, such as magnesium aluminum silicates and hydrocolloids like xanthan gum (¶[0326]-[0327]). Adding a dispersing agent to cosmetic compositions to improve pigment dispersion and stability was routine.
Regarding the hydrocarbon-based resin, as established in the rejection of claim 12, Caes teaches hydrocarbon-based resins (e.g., styrene-ethylene/butylene-styrene copolymers) as film-forming agents that provide adherence, flexibility, and transfer resistance. The combination of such resins with Mukherjee's base composition would have been obvious to optimize film properties.
Regarding the polyolefin, colorant, preservative, skin care agent, and/or antioxidant, Mukherjee teaches the inclusion of each of these additive types. Polyolefins such as polyisobutene and polydecenes are disclosed as suitable for use (¶[0282]). Colorants, including pigments and dyes, are standard components in cosmetic compositions. Preservatives are routinely included to ensure microbial stability (¶[0248]). Skin care agents, including phytantriol, panthenol, and various active ingredients, are disclosed throughout Mukherjee's examples (e.g., Example 1, ¶[0675]; Example 5, ¶[0675]; Example 26, ¶[0960]-[0974]). Antioxidants are taught as optional components (¶[0315]-[0318]). The selection of these additives would have been a matter of routine formulation choice depending on the desired product characteristics.
Regarding the limitation that the composition is substantially free of water, Mukherjee expressly teaches "virtually anhydrous preparations" containing "at most 1% by weight of water" (¶[0176]), which meets the definition of "substantially free" as provided in Applicant's specification (¶[0016], defining "substantially free" as less than 1%).
Regarding the limitation that 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", Mukherjee teaches numerous compositions wherein the total amount of materials not falling within the recited categories is less than 5% by weight. For example, Example 1 (¶[0675]) contains phytantriol and panthenol (skin care agents). The perfume and preservative are used in "q.s." (quantum satis) amounts, which one of ordinary skill would recognize as very small quantities—collectively well below 5% by weight. Thus, the total of any materials beyond the primary active components is less than 5%. Example 5 (¶[0675]) contains Luviskol polymer (which functions as an emulsifying/stabilizing agent) and panthenol (skin care agent). The perfume and preservative (q.s.) are the only ingredients not explicitly categorized in claim 15, and their total is well below 5%. In Example 10 (¶[0699]), all solvents (water, sorbitol, glycerol, PEG 400, ethanol) are polar solvents. The perfume and preservative (q.s.) are the only "other" ingredients, totaling below 5%. Example 26 (¶[0960]-[0974]) contains the key polymer, emulsifier, solvents, and skin care agents, all of which fall within the categories recited in instant claim 15. The only unspecified ingredient is hydroxyethyl cetyldimonium phosphate at 1%, which can be considered an emulsifying agent. The perfume and preservative (q.s.) are below 5%, and therefore the total of any "other" materials is less than 5%. Examples 44-45 (¶[1250]-[1251]) contain polymer, panthenol, and benzophenone (which can be considered a skin care agent or preservative). Water is a polar solvent. The q.s. materials (preservative and perfume) are the only "other" ingredients and are present in a total quantity of less than 5%. Examples 48-51 (¶[1254]-[1274]) contain polymers and panthenol in listed categories, water as a polar solvent, and q.s. materials (perfume, preservative) as the only "other" ingredients, all below 5%.
Thus, Mukherjee repeatedly demonstrates cosmetic compositions wherein the total amount of materials beyond the primary functional components is maintained at less than 5% by weight. This reflects standard formulation practice: once the active and functional components are selected, the remaining "other materials" (typically preservatives, fragrances, and minor excipients) are kept to minimal effective amounts.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Mukherjee, Caes, and Kim for several predictable technical reasons. A person of ordinary skill in cosmetic formulation would have been motivated to combine the reference because each element of claim 15 is individually taught by one or more of the references. Mukherjee teaches the base emulsion components, fatty substances, polymeric elastomers, dispersing agents, polyolefins, colorants, preservatives, skin care agents, antioxidants, and anhydrous formulations. Caes teaches the hydrocarbon-based resin and reinforces the allylic polymer. Kim teaches the routine combination of polymer systems.
In addition, this is a predictable combination of known additives. The additives recited in instant claim 15 of polymeric elastomers, dispersing agents, hydrocarbon-based resins, polyolefins, colorants, preservatives, skin care agents, and antioxidants, are all conventional cosmetic ingredients with well-understood functions. One of ordinary skill seeking to formulate a cosmetic emulsion with improved sensory properties, stability, and film formation would routinely select from among these known additives based on the desired product characteristics.
Furthermore, the combination represents routine optimization of minor ingredients. The limitation that "optional" additional materials are present in a total amount of less than 5% represents nothing more than routine formulation optimization. Cosmetic formulators typically minimize the amount of inert or minor ingredients (preservatives, fragrances, etc.) to maximize the concentration of active and functional components. Mukherjee's examples consistently demonstrate this practice, with minor ingredients (q.s. materials) present in amounts well below 5%. The applicant has not demonstrated that the specific combination of these conventional ingredients, all used for their known purposes, produces any unexpected or synergistic result. The combination of known elements to produce a predictable product (i.e., a stable, anhydrous or low-water cosmetic emulsion with improved film properties and sensory characteristics), does not render the claim non-obvious.
Under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the combination of familiar elements according to known methods to yield predictable results renders the claimed composition obvious. Here, each element of instant claim 15 is disclosed in the prior art for its conventional purpose, the combination would have been obvious to one of ordinary skill seeking to formulate an improved cosmetic emulsion, and the limitation on "additional materials" to less than 5% reflects routine formulation optimization rather than inventive effort. Therefore, instant claim 15 would have been obvious to one of ordinary skill in the art at the time of the invention.
Regarding instant claim 16, Mukherjee teaches “Further advantageous skin cosmetic preparations are face tonics, face masks, deodorants and other cosmetic lotions and preparations for decorative cosmetics, for example concealing sticks, stage make-up, mascara, eye shadows, lipsticks, kohl pencils, eyeliners, makeup, foundations, blushers, powder and eyebrow pencils.” (¶[0245]). The method of applying these cosmetic composition embodiments to the skin or lips is itself a conventional and obvious use. Since the composition product of instant claim 1 is obvious, then is also the customary use/method of applying it.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to include the specific use of allyl stearate/vinyl acetate polymers, as taught by Caes, in the cosmetic emulsion compositions of Mukherjee. Given the overlap in purpose of the two inventions in establishing stable cosmetic emulsions, and the routine nature of combining film-formers, solvents and emulsifiers in cosmetic formulation, a skilled artisan would have been motivated to incorporate the allylic polymer taught by Caes into the emulsion systems of Mukherjee with a reasonable expectation of success. All other limitations of the claims are explicitly taught by Mukherjee or rendered obvious optimizations through routine experimentation by the combined teachings of Mukherjee and general knowledge of one of ordinary skill in the art. The specific claim limitations represent routine selections of known alternatives, the combination of which would yield predictable properties in cosmetic formulations.
Claims 1-4 are rejected under 35 U.S.C. §103 as being unpatentable over Mukherjee et al. (US20080193405A1; published 14 August 2008, hereinafter referred to as “Mukherjee”), in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter referred to as “Caes”) and Kim et al. (US20100135918A1; published 03 June 2010, hereinafter referred to as “Kim”), and in further view of Von Der Fecht et al. (WO2013064432A2; published 10 May 2013, hereinafter referred to as “Von Der Fecht.”).
Mukherjee, in view of Caes and Kim, teaches the limitations of instant claims 1-3 (as described above), from which instant claim 4 depends, however does not teach specific limitations of instant claim 4.
Regarding instant claim 4, neither Mukherjee, Caes nor Kim explicitly teach wherein polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate is used as an emulsifying agent or stabilizer in the composition.
Von Der Fecht is specifically directed to cosmetic water-in-oil emulsions containing polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate as emulsifiers/stabilizers (claim 1), and thus provides direct disclosure of the claimed emulsifier. Selecting one specific known emulsifier and substituting it for any one of the many disclosed emulsifiers for the invention is a matter of routine optimization.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to substitute emulsifiers/stabilizers listed in the invention of Mukherjee for the specific emulsifier polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate taught by Von Der Fecht, since it was known at the time of the invention to be a cosmetic emulsifier/stabilizer used in emulsion compositions. It would have been routine to substitute or include this established emulsifier in the emulsion systems of Mukherjee to achieve the known stabilization benefits with a reasonable expectation of success in making the change. The specific claim limitations represent routine selections of known alternatives, the combination of which would yield predictable properties in cosmetic formulations. A person of ordinary skill seeking to formulate an improved cosmetic composition would have been motivated to combine the teachings of these references to formulate stable emulsions with desirable properties to meet marketing demands.
Claims 1-5, and 9 are rejected under 35 U.S.C. §103 as being unpatentable over Mukherjee et al. (US20080193405A1; published 14 August 2008, hereinafter referred to as “Mukherjee”), in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter referred to as “Caes”) and Kim et al. (US20100135918A1; published 03 June 2010, hereinafter referred to as “Kim”), and in further view of Koch et al. (WO2013120825A2; published 22 August 2013, hereinafter referred to as “Koch”).
Mukherjee, in view of Caes and Kim, teaches the limitations of instant claims 1-5 (as described above), from which instant claim 9 depends, however does not teach specific limitations of instant claim 9.
Regarding instant claim 9, neither Mukherjee, Caes nor Kim explicitly teach wherein the fatty substance used in the composition specifically comprises diisostearoyl polyglyceryl-3 dimer dilinoleatein.
Koch explicitly teaches the use of diisostearoyl polyglyceryl-3 dimer dilinoleate in water-in-oil emulsions for cosmetic compositions (claim 1), suppling the specific fatty component recited as a limitation of instant claim 9. The specific fatty substance diisostearoyl polyglyceryl-3 dimer dilinoleate (e.g., Lusplan™ DD-DIS) is a known emollient and solvent and selecting this specific known ingredient as a substitute for the vast array of fatty substances disclosed by Mukherjee is a matter routine optimization.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to substitute fatty substances in the invention of Mukherjee and use the specific diisostearoyl polyglyceryl-3 dimer dilinoleate fatty substance taught by Koch, since it was known at the time of the invention to be a fatty substance used in cosmetic emulsion compositions. It would have been routine to substitute or include this established fatty substance in the emulsion compositions taught by Mukherjee to provide improved skin feel and long-wear benefits diisostearoyl polyglyceryl-3 dimer dilinoleate, with a reasonable expectation of success in making the change. The specific claim limitations represent routine selections of known alternatives, the combination of which would yield predictable properties in cosmetic formulations. A person of ordinary skill seeking to formulate an improved cosmetic composition would have been motivated to combine the teachings of these references to formulate stable emulsions with desirable properties to meet marketing demands.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 30 September 2025, as the Applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which Applicant regards as his invention.
Claims 12-15 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.
The applicant has amended claim 12 to recite "a resin having a number-average molecular weight may range from 250 g/mol to 10,000 g/mol, and a softening point of 70°C to 130°C". While this adds specificity, the transitional phrase "may range from" renders the claim indefinite. The use of "may" makes the range permissive rather than definitive, leaving it unclear whether the resin must fall within these parameters or merely has the potential to do so. This creates ambiguity regarding the precise metes and bounds of the claimed invention. For a parameter to provide a clear structural boundary, it must be recited in definitive terms, e.g., "a number-average molecular weight ranging from 250 g/mol to 10,000 g/mol" or "a number-average molecular weight in the range of 250 g/mol to 10,000 g/mol." To overcome this rejection, the applicant must amend the claim to recite the ranges definitively (e.g., "a number-average molecular weight ranging from 250 g/mol to 10,000 g/mol" or "a number-average molecular weight in the range of 250 g/mol to 10,000 g/mol."). Dependent claims 13-15 and 18 are included in this rejection because they do not cure the defect noted above.
Claim 15 is rejected as being indefinite for reciting, "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 phrase "optionally contains" creates an internal inconsistency within the claim. Claim 15 uses the open-ended transitional phrase "comprising" by virtue of its dependency from claim 1 (which uses "comprising"). The "comprising" transition already permits the inclusion of additional, unrecited materials. The subsequent attempt to limit "optional" materials to less than 5% creates confusion as to whether the 5% limitation applies only to materials that are "optionally" added, and if so, how these "optional" materials are distinguished from other unrecited materials that are permitted by the "comprising" transition. This renders the scope of the claim unascertainable.
In addition, the phrase "one or more additional materials" is vague and lacks objective definition. The specification does not provide guidance on what constitutes an "additional material" as opposed to a material that falls within the previously recited categories. For example, if a composition includes an unrecited type of fatty substance beyond those listed, would this be considered an "additional material" subject to the 5% limitation, or would it be encompassed by the broader "fatty substance" element? The claim provides no basis for making this distinction.
To overcome this rejection, the applicant may remove the "optionally contains" language and either rely on the "comprising" transition to permit additional materials or rewrite the claim using a closed transition such as "consisting essentially of" with a clear definition of what does not materially affect the basic and novel properties; and define "additional materials" with reference to the previously recited elements (e.g., "materials other than those recited in claims 1-14."). Dependent claim 18 is included in this rejection because it does not cure the defect noted above.
Claim 18 is rejected as being indefinite. Claim 18 recites, “The cosmetic composition of claim 15, wherein the fatty substance comprises a fatty acid ester of glycerol and/or polyglycerol, a dilinoleate ester dimer, a triester containing at least 35 carbon atoms. a linear or branched hydrocarbon with more than 16 carbon atoms, a triglyceride of a saturated or unsaturated C8-C20 fatty acid, a plant-derived oil, a monoester of a monoalcohol, a pentaerythritol ester, an alkylene carbonate, or a combination thereof."
The claim uses inconsistent punctuation. A period (".") appears after "carbon atoms" before "a linear or branched hydrocarbon," suggesting an incomplete sentence or break in the claim language. The also claim recites a lengthy list of alternative fatty substance types without clarifying whether these are in addition to or in substitution for the fatty substance previously recited in claim 15. Claim 15 already includes "the fatty substance" as an element.
To overcome this rejection, the applicant must correct the punctuation and clarify whether the listed fatty substance types are in addition to or in place of the fatty substance previously recited.
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-AlA) 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 1-5, 10-15, 17 and 18 are rejected under 35 U.S.C. §103 as being unpatentable over Mukherjee et al. (US20080193405A1; published 14 August 2008, hereinafter referred to as “Mukherjee”), in view of Caes et al. (WO2000049997A1; published 31 August 2000, hereinafter referred to as “Caes”) and in further view of Kim et al. (US20100135918A1; published 03 June 2010, hereinafter referred to as “Kim”).
Mukherjee, in view of Caes and Kim, teaches the limitations of instant claims 1-5, 10-15 (as described above, and given evidentiary references Von Der Fecht and Koch), from which instant claims 17 and/or 18 depend. The reliance of rejections incorporating Von Der Fecht and Koch are not included in this rejection for procedural simplicity, as the prior art combination of Mukherjee, Caes, and Kim is sufficient to render the pending claims obvious. However, the teachings of Von Der Fecht and Koch remain of record as evidentiary references to show the state of the art.
Instant claim 17 recites the use of the fatty substance ≥70 wt% of the cosmetic composition. Mukherjee Example 40 discloses fatty phases exceeding 90 wt%, thus teaching the claimed range. Accordingly, claim 17 is obvious over Mukherjee.
Instant claim 18 recites a broad list of fatty materials including glycerol fatty esters, dilinoleate esters, triglycerides, hydrocarbons, plant oils, and pentaerythritol esters. Mukherjee discloses numerous members of these classes including triglycerides, plant oils, hydrocarbons, and fatty esters (¶[0253]-[0259]). Specifically, Mukherjee teaches plant-derived oils (¶[0225]), triglycerides (¶[0253]), linear or branched hydrocarbons (¶[0254]-[0259]), and monoesters of monoalcohols (¶[0264]). Thus, claim 18 represents routine selection from known fatty materials used in cosmetic emulsions and is obvious.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to utilize the fatty substance ≥70 wt% because it is directly taught as such by Mukherjee. The specific selection of the various fatty acid substance is also directly taught by Mukherjee and is a matter of routine selection of known materials.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 29 December 2025, have been fully considered.
Amended claim 1 recites a cosmetic emulsion comprising fatty substance ≥30 wt%, C10–C40 alkyl acrylate polymer, allylic polymer, polar solvent, and emulsifying agent or stabilizer. The combined references teach these elements. The fatty substance ≥30% is taught by Mukherjee fatty oil/wax phases (Example 40; ¶[0253]-[0259]), the C10-C40 alkyl acrylate polymer is taught by Mukherjee C10-30 alkyl acrylate crosspolymers, the allylic polymer are taught by Caes allyl stearate/vinyl acetate copolymers, the polar solvent is taught by Mukherjee polyols including glycerin, and the emulsifier/stabilizer is taught by Mukherjee as emulsifiers in cosmetic emulsions.
A person of ordinary skill in cosmetic formulation would have been motivated to combine the teachings for several predictable technical reasons. Including polymer compatibility in film-forming cosmetic systems, wherein Caes explicitly teaches combining multiple film-forming polymers to improve durability, flexibility, and wear; optimization of emulsion stability and rheology, wherein Mukherjee teaches acrylate polymers as rheology modifiers and incorporating additional film-forming polymers such as those of Caes predictably improves film strength and wear resistance; and routine formulation practice, wherein cosmetic formulators routinely combine rheology-modifying polymers, film-forming polymers, emulsifiers, and fatty emollients to achieve balanced sensory and performance characteristics. Combining familiar elements according to known methods to yield predictable results renders the claimed composition obvious.
The applicant argues that Mukherjee's polymer cannot be both the emulsifying agent and the allylic polymer, and that Mukherjee's focus is on rheology modification, not stabilization. The examiner disagrees. The rejection is not based on a single polymer performing two functions. The rejection is based on the combined teachings of three references.
Mukherjee teaches the base cosmetic emulsion comprising a C10-C40 alkyl acrylate polymer (e.g., C10-30 alkyl acrylate crosspolymer), a polar solvent (e.g., glycerin), and a high amount of fatty substance (e.g., >30% in Example 40, which is a relevant composition irrespective of its specific form, as it demonstrates the concept of a high fatty phase). Mukherjee further teaches that his compositions can include additional emulsifying agents (¶[0364]-[0385]). Even if Mukherjee’s primary focus is rheology modification, the reference still teaches cosmetic emulsions containing the claimed ingredients. Caes teaches the missing element: an allylic polymer (allyl stearate/vinyl acetate copolymer) and explicitly teaches combining it with other film-formers like acrylates copolymers (page 6-7). Kim teaches the routine nature of combining vinyl acrylate and vinyl acetate polymers to achieve desired properties (¶[0230] and ¶[0237]).
The rejection, grounded in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), is that a skilled artisan, seeking to create a stable, long-wear cosmetic emulsion with a high fatty content, would have been motivated to start with the emulsion base of Mukherjee, incorporate the specific allylic film-former of Caes to enhance wear and water-resistance, and use a conventional emulsifying agent from Mukherjee's extensive list or from general knowledge to ensure the stability of the resulting emulsion. The examiner argues that the combination is not an improper attempt to make one reference teach two things, it is a proper application of obviousness by combining the teachings of multiple references to arrive at the claimed invention.
The applicant argues that Example 40 of Mukherjee is an anhydrous stick, not an emulsion, and thus not applicable. This argument is not persuasive. Example 40 is cited to teach the concept of a composition with a high concentration of fatty substances (≥30%) and increasing fatty-phase concentration to ≥30% represents a result-effective variable commonly adjusted to modify product texture, occlusivity, or film formation. One of ordinary skill would recognize that the principle of formulating with a high oil phase is transferable. Furthermore, Mukherjee extensively teaches emulsions in other examples.
A person of ordinary skill would recognize that fatty-phase levels can be varied across formulation formats depending on the intended product type (e.g., stick, cream, balm). Optimization of fatty content is therefore routine formulation work. The motivation to combine this high fatty substance content with an emulsion form represents combining known features from the same reference to achieve a predictable result (i.e., a high-oil emulsion).
Regarding the dependent claims, Mukherjee discloses a vast array of fatty substances. The specific selection of diisostearoyl polyglyceryl-3 dimer dilinoleate is an obvious choice from a known class of ester compounds used as emollients. It is a routine optimization to select a specific ester to achieve a desired skin feel. Mukherjee explicitly teaches the inclusion of polymeric elastomers (e.g., silicone elastomers, ¶[0194]) and dispersing agents ([¶0326]-[0327]). Their inclusion is conventional. As previously argued, Caes explicitly teaches the use of hydrocarbon-based block copolymer resins (e.g., styrene-ethylene/butylene-styrene in Versagel) to optimize film properties (adherence, flexibility, transfer resistance). Combining these with Mukherjee's base is an obvious means to improve the film. Polyolefins, colorants, preservatives, etc. additive are all standard, well-known components in cosmetic formulations, as evidenced by Mukherjee's own disclosures. Mukherjee explicitly teaches "virtually anhydrous" compositions with "at most 1% by weight of water" (¶[0176]).
Amended claim 15 recites a combination of all the obvious elements discussed above. The combination of known elements to produce a predictable product does not render the claim non-obvious. Newly added claim 17 recites a fatty substance amount of "at least 70%" is a further optimization of the high fatty content already taught by Mukherjee (e.g., Example 40's ~93% fatty phase). There is no unexpected result in increasing the amount of a known component. Newly added claim 18 lists a series of known fatty substances, all of which fall within the broad genus of fatty substances already disclosed by Mukherjee. For example, Mukherjee teaches plant-derived oils (¶[0225]), triglycerides (¶[0253]), linear or branched hydrocarbons (¶[0254]-[0259]), and monoesters of monoalcohols (¶[0264]). The recitation of specific species from within Mukherjee's disclosed genus is a routine selection and does not impart patentability.
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 (87 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.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615