DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/27/2026 has been entered.
Applicants' arguments, filed 02/27/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant application claims domestic priority to PRO 63/088,088 filed 10/06/2020 and PRO 63/157,247 filed 03/05/2021. The instant application is 371 of PCT/US2021/048529.
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.
A) Claims 1-7, 9-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Pistorio et al (US Patent Application Publication 20140105944A1).
Pistorio recites an aqueous dispersion comprising: (a) at least one solid wax particle having a particle size ranging from equal to or greater than 1 micron to about 100 microns and comprising at least one wax having a melting point of greater than 35° C.; (b) a surfactant mixture comprising: (i) at least one nonionic surfactant; and (ii) at least one ionic surfactant; (c) at least one volatile solvent; and (d) water (Pistorio at claim 1). Pistorio recites the use of Cetyl PEG/PPG-10/1 Dimethicone (Pistorio at claim 12). Pistorio recites wherein the at least one wax is present in an amount of from about 10% to about 80% by weight, based on the total weight of the aqueous dispersion (Pistorio at claim 4). Pistorio recites wherein (b) is present in an amount of from about 1% to about 5% by weight, based on the total weight of the aqueous dispersion (Pistorio at claim 20).
Pistorio teaches the aqueous dispersions of the present disclosure may be in the form of an aqueous system, a simple or complex emulsion (oil-in-water (o/w), water-in-oil (w/o), silicone-in-water and/or water-in-silicone emulsion types) such as a cream or a milk, in the form of a gel or a cream-gel, or in the form of a lotion, a powder or a solid tube, and may optionally be packaged as an aerosol and may be in the form of a mousse or a spray (Pistorio at [0304]). Pistorio teaches the aqueous dispersion and compositions are useful in cosmetic applications for skin, lips, nails, and eyelashes such as makeup, skin care and sun care products, particularly, in allowing beneficial ingredients in these products to remain longer on these substrates as a result of the film or coating formed on the substrates (Pistorio at [0047]). Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches particularly preferred nonionic surfactants are silicone- or siloxane-based emulsifying polymers having alkoxylated groups and/or side chains such as Cetyl PEG/PPG-10/1 Dimethicone (tradename Abil® EM 90) (Pistorio at [0182]). Pistorio teaches nonionic surfactant will typically be employed in an amount of from about 60% to about 95% by weight, or from about 65% to about 90% by weight, or from about 70% to about 90% by weight, based on the total weight of the surfactant mixture of the present disclosure (Pistorio at [0183]). Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated. The coated pigments are pigments that have undergone one or more surface treatments of chemical, electronic, mechanochemical and/or mechanical nature with compounds such as amino acids, beeswax, fatty acids, fatty alcohols, anionic surfactants, lecithins, sodium potassium, zinc, iron or aluminum salts of fatty acids, metal alkoxides (of titanium or of aluminum), polyethylene, silicones, proteins (collagen, elastin), alkanolamines, silicon oxides, metal oxides or sodium hexametaphosphate (Pistorio at [0117-0119]). Pistorio teaches the surface coated metal oxide may be employed in an amount of from about 0.1% to about 40% by weight, such as from about 0.5% to about 30% by weight, such as from about 1% to about 25% by weight, based on the total weight of the solid wax particle comprising the aqueous dispersion (Pistorio at [0121]). Pistorio teaches the use of glycerol (Pistorio at [0268]). Pistorio teaches the use of solvents like glycerol as greater than 0 to about 99% (Pistorio at [0274]). Pistorio teaches by using different speeds of mixing, different particle sizes can be achieved such as those ranging from 0.5-100 microns, 1-50 microns, 2-25 microns, 8-20 microns, 2-10 microns, and even less than 1 micron (Pistorio at [0259]). Pistorio teaches silica, talc, and/or clays may be present in an amount of from about 0.01% to about 10% by weight, (Pistorio at [0136]).
Pistorio differs from the instant claims in this rejection insofar as it does not teach the combination of the instantly recited components with sufficient specificity for anticipation. Pistorio teaches the components of the instant recited composition and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment or a preferred composition. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Pistorio to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
Regarding instant claim 1, Pistorio teaches an aqueous dispersion may be a water-in-oil emulsion (Pistorio at [0304]). Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated (Pistorio at [0117-0119]). Pistorio teaches the use of glycerol (Pistorio at [0268]). Pistorio teaches the use of water (Pistorio at claim 1). Pistorio teaches the use of salts may be made especially of the salts, in particular the alkali metal salts such as the sodium salts, the ammonium salts, the amine salts, the amino alcohol salts or the salts of alkaline-earth metals (Pistorio at [0185]). Pistorio does not require the use of cyclopentasiloxane.
Regarding instant claim 2, Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches nonionic surfactant will typically be employed in an amount of from about 60% to about 95% by weight, or from about 65% to about 90% by weight, or from about 70% to about 90% by weight, based on the total weight of the surfactant mixture of the present disclosure (Pistorio at [0183]), which overlaps the instantly claimed range of 10wt% to 70 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 3, Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches particularly preferred nonionic surfactants are silicone- or siloxane-based emulsifying polymers having alkoxylated groups and/or side chains such as Cetyl PEG/PPG-10/1 Dimethicone (tradename Abil® EM 90) (Pistorio at [0182]).
Regarding instant claim 4, Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches particularly preferred nonionic surfactants are silicone- or siloxane-based emulsifying polymers having alkoxylated groups and/or side chains such as Cetyl PEG/PPG-10/1 Dimethicone (tradename Abil® EM 90) (Pistorio at [0182]). Pistorio teaches nonionic surfactant will typically be employed in an amount of from about 60% to about 95% by weight, or from about 65% to about 90% by weight, or from about 70% to about 90% by weight, based on the total weight of the surfactant mixture of the present disclosure (Pistorio at [0183]), which overlaps the instantly claimed range of 10wt% to 90 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 5, Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches particularly preferred nonionic surfactants are silicone- or siloxane-based emulsifying polymers having alkoxylated groups and/or side chains such as Cetyl PEG/PPG-10/1 Dimethicone (tradename Abil® EM 90) (Pistorio at [0182]).
Regarding instant claim 6, Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated. Pistorio teaches the surface coated metal oxide may be employed in an amount of from about 0.1% to about 40% by weight, such as from about 0.5% to about 30% by weight, such as from about 1% to about 25% by weight, based on the total weight of the solid wax particle comprising the aqueous dispersion (Pistorio at [0121]), which overlaps the instantly claimed range of about 1% to about 25%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 7, Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated.
Regarding instant claim 9, Pistorio teaches the use of glycerol (Pistorio at [0268]).
Regarding instant claim 10, Pistorio teaches the use of solvents like glycerol as greater than 0 to about 99% (Pistorio at [0274]), which overlaps the instantly claimed range of about 0.5% to about 80%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 11, Pistorio recites wherein (b) (the surfactant mixture) is present in an amount of from about 1% to about 5% by weight, based on the total weight of the aqueous dispersion (Pistorio at claim 20), which overlaps the instantly claimed range of about 1% to about 6%.
Regarding instant claim 12, Pistorio teaches the use of preserving agents (Pistorio at [0303],[0322]).
Regarding instant claim 13, Pistorio recites an aqueous dispersion comprising: (a) at least one solid wax particle having a particle size ranging from equal to or greater than 1 micron to about 100 microns and comprising at least one wax having a melting point of greater than 35° C.; (b) a surfactant mixture comprising: (i) at least one nonionic surfactant; and (ii) at least one ionic surfactant; (c) at least one volatile solvent; and (d) water (Pistorio at claim 1). Pistorio recites wherein the at least one wax is present in an amount of from about 10% to about 80% by weight, based on the total weight of the aqueous dispersion (Pistorio at claim 4), which overlaps the instantly claimed range of about 1% to about 40wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 17, Pistorio teaches silica, talc, and/or clays may be present in an amount of from about 0.01% to about 10% by weight, (Pistorio at [0136]).
Regarding instant claim 18, Pistorio teaches by using different speeds of mixing, different particle sizes can be achieved such as those ranging from 0.5-100 microns, 1-50 microns, 2-25 microns, 8-20 microns, 2-10 microns, and even less than 1 micron (Pistorio at [0259]), which overlaps the instantly claimed range of 0.1nm to 15 microns. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 19, Pistorio teaches the aqueous dispersion and compositions are useful in cosmetic applications for skin, lips, nails, and eyelashes such as makeup, skin care and sun care products, particularly, in allowing beneficial ingredients in these products to remain longer on these substrates as a result of the film or coating formed on the substrates (Pistorio at [0047]).
B) Claims 8, 14-16, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Pistorio et al (US Patent Application Publication 20140105944A1) as applied to claims 1-7, 9-13 and 17-19 above, and further in view of Bchir et al (WO2017063821A1).
The teachings of Pistorio are discussed above.
The teachings of Pistorio differ from instant claims 8, 14-16 and 26 insofar as they do not teach the surface coated pigment is stearoyl glutamic acid -coated titanium dioxide. The teachings of Bchir cure this deficit.
Bchir recites Comparative Examples 1-3, 5, and 11. Bchir teaches the use of conventional cosmetic ingredients in a range of 0.01% to 20%, which includes polyglycerol isostearate, glycerol, and Cetyl PEG/PPG 10/1 Dimethicone (Bchir at pages 21-25). Bchir teaches the use of conventional cosmetic which includes glycerol and modified dimethicones (Bchir at pages 21-25). Bchir further teaches the use of glycerol as a moisturizer (Bchir at page 26). Bchir recites the use of silica particles, starch powders, and talc (Bchir at claim 8). Bchir recites the use of talc with an average size of less than or equal to 3 microns (Bchir at claim 8). Bchir teaches that the composition may be a foundation (Bchir at page 27).
Bchir differ from the instant claims in this rejection insofar as it does not teach the use of triglycerol diisostearate. The teachings of Pistorio cure this deficit.
It would have been prima facie obvious to have used the titanium oxide coated with aluminum stearoyl glutamate as the pigment of Pistorio as Bchir teaches it to be a pigment useful in water-in-oil cosmetics. One would have a reasonable expectation of success because the pigment is used as a surface coated metal oxide pigment and Pistorio and Bchir teach similar water-in-oil compositions comprising water, nonionic surfactants like Cetyl PEG/PPG 10/1 Dimethicone, glycerol, preservatives, and talc. See MPEP 2144.06(I).See MPEP 2144.07.
Regarding instant claim 1, Pistorio teaches an aqueous dispersion may be a water-in-oil emulsion (Pistorio at [0304]). Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated (Pistorio at [0117-0119]). Pistorio teaches the use of glycerol (Pistorio at [0268]). Pistorio teaches the use of water (Pistorio at claim 1). Pistorio teaches the use of salts may be made especially of the salts, in particular the alkali metal salts such as the sodium salts, the ammonium salts, the amine salts, the amino alcohol salts or the salts of alkaline-earth metals (Pistorio at [0185]). Pistorio does not require the use of cyclopentasiloxane. Bchir teaches that the composition may be a water in oil composition (Bchir at page 18). Bchir teaches the use of conventional cosmetic ingredients which includes Cetyl PEG/PPG 10/1 Dimethicone (Bchir at pages 21-25). Bchir teaches the use of titanium oxide coated with aluminum stearoyl glutamate (Bchir at page 28). Bchir teaches the use of conventional cosmetic which includes glycerol and modified dimethicones (Bchir at pages 21-25). Bchir further teaches the use of glycerol as a moisturizer (Bchir at page 26). Bchir teaches an aqueous phase with solvents (Bchir at page 18). Bchir does not require the use of cyclopentasiloxane. Bchir further teaches cosmetic ingredients used in an amount of 0.01% to 10% (Bchir at page 25), which overlaps the instantly claimed range of less than 1%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by
Regarding instant claim 2-3, Bchir teaches the use of conventional cosmetic ingredients in a range of 0.01% to 20%, which includes Cetyl PEG/PPG 10/1 Dimethicone (Bchir at pages 21-25), which overlaps with the instantly claimed range of about 10% to about 75%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches particularly preferred nonionic surfactants are silicone- or siloxane-based emulsifying polymers having alkoxylated groups and/or side chains such as Cetyl PEG/PPG-10/1 Dimethicone (tradename Abil® EM 90) (Pistorio at [0182]). Pistorio teaches nonionic surfactant will typically be employed in an amount of from about 60% to about 95% by weight, or from about 65% to about 90% by weight, or from about 70% to about 90% by weight, based on the total weight of the surfactant mixture of the present disclosure (Pistorio at [0183]), which overlaps the instantly claimed range of 10wt% to 75 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 4-5, Bchir teaches the use of conventional cosmetic ingredients in a range of 0.01% to 20%, which includes polyglycerol isostearate, glycerol, and Cetyl PEG/PPG 10/1 Dimethicone (Bchir at pages 21-25), which overlaps with the instantly claimed range of about 10% to about 90%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches particularly preferred nonionic surfactants are silicone- or siloxane-based emulsifying polymers having alkoxylated groups and/or side chains such as Cetyl PEG/PPG-10/1 Dimethicone (tradename Abil® EM 90) (Pistorio at [0182]). Pistorio teaches nonionic surfactant will typically be employed in an amount of from about 60% to about 95% by weight, or from about 65% to about 90% by weight, or from about 70% to about 90% by weight, based on the total weight of the surfactant mixture of the present disclosure (Pistorio at [0183]), which overlaps the instantly claimed range of 10wt% to 90 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claims 6-8, Bchir teaches the use of titanium oxide coated with aluminum stearoyl glutamate in an amount of 8.63% (Bchir at page 28). Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated.
Regarding instant claim 9, Bchir teaches the use of conventional cosmetic which includes glycerol and modified dimethicones (Bchir at pages 21-25). Bchir further teaches the use of glycerol as a moisturizer (Bchir at page 26). Pistorio teaches the use of glycerol (Pistorio at [0268]).
Regarding instant claim 10, Bchir further teaches the use of glycerol as a moisturizer (Bchir at page 26) in a range of 0.1% to 15%, which overlaps the instantly claimed range of about 0.5 to about 80%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Pistorio teaches the use of solvents like glycerol as greater than 0 to about 99% (Pistorio at [0274]), which overlaps the instantly claimed range of about 0.5% to about 80%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 11, Bchir further teaches the use of glycerol as a moisturizer (Bchir at page 26) in a range of 1% to 6%, which overlaps the instantly claimed range of about 1% to about 6%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Pistorio recites wherein (b) (the surfactant mixture) is present in an amount of from about 1% to about 5% by weight, based on the total weight of the aqueous dispersion (Pistorio at claim 20), which overlaps the instantly claimed range of about 1% to about 6%.
Regarding instant claim 12, Bchir teaches the use of preservatives (Bchir at page 25). Pistorio teaches the use of preserving agents (Pistorio at [0303],[0322]).
Regarding instant claim 13, Bchir recites that the soft-focus filler(s) is (are) present in concentrations ranging from 2% to 35% by weight, in particular from 3% to 30% by weight and more particularly from 4% to 25% by weight of soft-focus filler(s) relative to the total weight of said composition; the composite pigment is present in concentrations ranging from 0.01 % to 80% by weight and more preferentially from 1 .5% to 70% by weight relative to the total weight of the composition, which overlaps the instantly claimed range of about 1% to about 40%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Pistorio recites an aqueous dispersion comprising: (a) at least one solid wax particle having a particle size ranging from equal to or greater than 1 micron to about 100 microns and comprising at least one wax having a melting point of greater than 35° C.; (b) a surfactant mixture comprising: (i) at least one nonionic surfactant; and (ii) at least one ionic surfactant; (c) at least one volatile solvent; and (d) water (Pistorio at claim 1). Pistorio recites wherein the at least one wax is present in an amount of from about 10% to about 80% by weight, based on the total weight of the aqueous dispersion (Pistorio at claim 4), which overlaps the instantly claimed range of about 1% to about 40wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 14-16, Bchir teaches a substantially identical composition to the instantly claimed invention and would therefore that the same properties including surface tension. Products of identical chemical composition can not have mutually exclusive properties. See MPEP 2112.01 (II). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP 2112(I). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. See MPEP 2112(II).
Regarding instant claim 17, Bchir recites the use of silica particles, starch powders, and talc (Bchir at claim 8). Pistorio teaches silica, talc, and/or clays may be present in an amount of from about 0.01% to about 10% by weight, (Pistorio at [0136]).
Regarding instant claim 18, Bchir recites the use of talc with an average size of less than or equal to 3 microns (Bchir at claim 8), which overlaps with the instantly claimed range of 0.1nm to 15 microns. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Pistorio teaches by using different speeds of mixing, different particle sizes can be achieved such as those ranging from 0.5-100 microns, 1-50 microns, 2-25 microns, 8-20 microns, 2-10 microns, and even less than 1 micron (Pistorio at [0259]), which overlaps the instantly claimed range of 0.1nm to 15 microns. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 19, Bchir teaches that the composition may be a foundation (Bchir at page 27). Pistorio teaches the aqueous dispersion and compositions are useful in cosmetic applications for skin, lips, nails, and eyelashes such as makeup, skin care and sun care products, particularly, in allowing beneficial ingredients in these products to remain longer on these substrates as a result of the film or coating formed on the substrates (Pistorio at [0047]).
Regarding instant claim 26, Pistorio teaches an aqueous dispersion may be a water-in-oil emulsion (Pistorio at [0304]). Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Pistorio teaches the use of metal oxide pigments which may be chosen from zinc oxide, titanium oxide, iron oxide, zirconium oxide, cerium oxide, and mixtures thereof; which may be coated or uncoated (Pistorio at [0117-0119]). Pistorio teaches the use of glycerol (Pistorio at [0268]). Pistorio teaches the use of water (Pistorio at claim 1). Pistorio teaches the use of salts may be made especially of the salts, in particular the alkali metal salts such as the sodium salts, the ammonium salts, the amine salts, the amino alcohol salts or the salts of alkaline-earth metals (Pistorio at [0185]). Pistorio does not require the use of cyclopentasiloxane. Bchir teaches that the composition may be a water in oil composition (Bchir at page 18). Bchir teaches the use of conventional cosmetic ingredients which includes Cetyl PEG/PPG 10/1 Dimethicone (Bchir at pages 21-25). Bchir teaches the use of titanium oxide coated with aluminum stearoyl glutamate (Bchir at page 28). Bchir teaches the use of conventional cosmetic which includes glycerol and modified dimethicones (Bchir at pages 21-25). Bchir further teaches the use of glycerol as a moisturizer (Bchir at page 26). Bchir teaches an aqueous phase with solvents (Bchir at page 18). Bchir does not require the use of cyclopentasiloxane. Bchir further teaches cosmetic ingredients used in an amount of 0.01% to 10% (Bchir at page 25), which overlaps the instantly claimed range of less than 1%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Response to Arguments
Applicant’s arguments, see remarks, filed 02/27/2026, with respect to the rejection of claims under Bchir have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Pistorio and Pistorio in view of Bchir.
Double Patenting Non-Statutory
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
I) Claims 1-19 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, 9-14,17-19 and 26 of copending Application No. 18/248,046 in view of Pistorio et al (US Patent Application Publication 20140105944A1) and Bchir et al (WO2017063821A1). The instant application recites a water-in-oil emulsion composition comprising: a continuous oil phase comprising: an oleochemical component; a surface-treated pigment component; and a surfactant component; and a dispersed water phase comprising of water and at least one solubilized material. The statutory rejection is detailed above. The instant application differs from the reference application insofar as the reference application requires the use of dicaprylyl carbonate, dicaprylyl ether, triethoxycaprlylysilane-coated titatinium dioxide, and siliane coated particles.
The teachings of Pistorio and Bchir are discussed above.
Pistorio teaches the use of triglyceryl diisostearate as a nonionic sufractant (Pistorio at [0177]). Bchir teaches the use triethoxycaprlylysilane-coated titatinium dioxide (Bchir at Examples), dicaprylyl ether, and dicaprylyl carbonate (Bchir at page 21).
This is a provisional nonstatutory double patenting rejection.
Reference claims and prior art combine to produce a prima facie case of obviousness type non-statutory double patenting.
Response to Arguments
Applicant requests that the double patenting rejection be held in abeyance until claims are found to be allowable.
Since terminal disclaimers have not yet been filed, the non-statutory double patenting rejections are maintained.
Conclusion
No claims are presently allowable.
Correspondence
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/AMANDA MICHELLE PETRITSCH/ Examiner, Art Unit 1612
/SAHANA S KAUP/ Supervisory Primary Examiner, Art Unit 1612
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