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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/28/26 has been entered.
Claims 1-8 and 12-15 are pending. Claims 9-11 are cancelled. Claims 12-15 are new. Claims 7 and 8 are withdrawn. Claims 1 and 5 have been amended. Claims 1-6 and 12-15 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 and constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 6/25/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Rejections - 35 USC § 112
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 and 4 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 recites “wherein the component (B) has an aspect ratio (average fiber length/average fiber diameter) of 25 or more and 300 or less”, however, claim 1 has been amended to recite “an aspect ratio (average fiber length/average fiber diameter) of 27 or more and 250 or less”. Claim 3 broadens claim 1 by allowing for the aspect ratio to be below 27 and above 250.
Claim 4 recites “wherein a content of the component (A) relative to the whole film-forming composition is 0.5 mass% or more and 98 mass% or less”, however, claim 1 has been amended to recite an amount of (C) of 15-90 mass%. The upper limit of 98 mass% for (A) recited in claim 4 is not attainable given the amounts of (B) and (C) required in claim 1, which total a minimum of 15.1 mass%. Claim 4 broadens claim 1 by allowing the amounts of claim 1 to be less than those claimed.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Collin (US 2002/0192251).
Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract).
Collin teaches the compositions comprise:
(A) 0.01-50 wt% a powder, which may be a pigment (e.g. paragraphs 0135-0137; Examples);
(B) 0.01-10% of a fiber (e.g. paragraph 0032) having an average fiber diameter of 2nm to 500 μm, an average fiber length of 100 μm to 10 mm (e.g. paragraph 0026), and an aspect ratio (average fiber length/average fiber diameter) of preferably 5-500 (e.g. paragraph 0024); and
(C) a liquid material comprising (C1) 1-95% of water (e.g. paragraph 0063-0064), and (C2) 0.1-80% of a nonvolatile oil that is liquid at 20°C (e.g. paragraphs 0052-0062) relative to the total weight of the composition.
Regarding Claims 1, 3, 4, 6, 12, and 13, this results in fiber diameters, fiber lengths, aspect ratios, ingredient concentrations, and ratio (B)/(A) which overlap the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I). In addition, Example 1 comprises (A) 7 wt% powder (Black iron oxide); and (B) 1 wt% Polyamide 0.9 Dtex fibers, which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4.
While there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claim 2, Collin teaches that the fiber may be polyamide (e.g. paragraphs 0027-0031; Examples) and as evidenced by the instant Specification, polyamide is a water-insoluble fiber material (e.g. Specification [0029]).
Regarding Claim 5, Collin teaches that the nonvolatile oil may be an ester oil, an ether oil, a hydrocarbon, a fatty alcohol, a silicone oil, or a fluorine oil (e.g. paragraphs 0052-0062).
Regarding Claims 14 and 15, Collin teaches the inclusion of a volatile component which has a vapor pressure at 20°C of 0.01 kPa or more and 106.66 kPa or less, which may be a volatile silicone oil or volatile hydrocarbon (e.g. paragraphs 0048-0049).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 and 12-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of US 12,636,236 in view of Collin (US 2002/0192251).
Both the instant and patented claims recite a film-forming composition for skin, comprising (B) a fiber having an average fiber diameter of 0.1 µm or more and 7 µm or less and an aspect ratio (average fiber length/average fiber diameter) of 20 or more and 300 or less in overlapping amounts relative to the whole film-forming composition; and (C) a liquid material comprising water and a nonvolatile oil which is liquid at 20 °C,
Regarding Claim 1, ‘236 includes (A) powder in claim 4, but does not claim wherein a mass ratio of the component (B) to the component (A), (B/A), is 0.02 or more and 0.4 or less. This is made up for by the teachings of Collin.
Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract).
Collin exemplifies a composition (mascara) (e.g. Example 1 [0143]) comprising:
7 wt% powders (Black iron oxide); and
1 wt% Polyamide 0.9 Dtex fibers, 0.3 mm long and 6 µm diameter (calculated to have an aspect ratio of 50); and
Around 62.25 wt% water;
which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4;
Regarding Claims 1, 3-6, 12 and 13, it would have been obvious to one of ordinary skill in the art at the time of filing to include the (A) powder of Collin for use in the compositions of ‘236. One of ordinary skill in the art would predicted success as both compositions are film-forming compositions for skin comprising fibers, and would have been motivated to obtain the benefits of coloring the composition with the addition of pigments (e.g. paragraphs 0056-0059). In addition, it would have been obvious to have combined the compositions of ‘236 and Collin. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claim 2 is met by patented Claim 2.
Claims 14 and 15 are met by Collin (e.g. paragraphs 0048-0049).
Claims 1-6 and 12-15 are directed to an invention not patentably distinct from claims 1-10 of commonly assigned 12,636,236. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 12,636,236, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-6 and 12-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 17-20 of US 12,280,127 in view of Collin (US 2002/0192251).
Both the instant and patented claims recite a film-forming composition for skin, comprising (B) a fiber having an average fiber diameter of 0.1 µm or more and 7 µm or less and an aspect ratio (average fiber length/average fiber diameter) of 20 or more and 300 or less in overlapping amounts relative to the whole film-forming composition (claims 1 and 4); and (C) water and oils.
Regarding Claim 1, patent ‘127 does not include (A) powder, wherein a mass ratio of the component (B) to the component (A), (B/A), is 0.02 or more and 0.4 or less. This is made up for by the teachings of Collin.
Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract).
Collin exemplifies a composition (mascara) (e.g. Example 1 [0143]) comprising:
7 wt% powders (Black iron oxide); and
1 wt% Polyamide 0.9 Dtex fibers, 0.3 mm long and 6 µm diameter (calculated to have an aspect ratio of 50); and
Around 62.25 wt% water;
which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4;
Regarding Claims 1, 3- 6, 12 and 13, it would have been obvious to one of ordinary skill in the art at the time of filing to include the (A) powder of Collin for use in the compositions of ‘127. One of ordinary skill in the art would predicted success as both compositions are film-forming compositions for skin comprising fibers, and would have been motivated to obtain the benefits of coloring the composition with the addition of pigments (e.g. paragraphs 0056-0059). In addition, it would have been obvious to have combined the compositions of ‘895 and Collin. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claim 2 is met by patented Claim 11.
Claims 14 and 15 are met by patented claims 2 and 3.
Claims 1-6 and 12-15 are directed to an invention not patentably distinct from claims 1-15 and 17-20 of commonly assigned 12,280,127. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 12,280,127, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments
Applicant's arguments filed 8/28/26 have been fully considered but they are not persuasive.
Applicant argues that Collin’s Example 1 uses fibers with a length of 0.3 mm and a diameter of 6 µm, which is outside of the claimed ranges.
This is not found persuasive. While Example 1 includes values outside of the claimed range, more broadly Collin teaches (B) 0.01-10% of a fiber (e.g. paragraph 0032) having an average fiber diameter of 2nm to 500 μm, an average fiber length of 100 μm to 10 mm (e.g. paragraph 0026), and an aspect ratio (average fiber length/average fiber diameter) of preferably 5-500 (e.g. paragraph 0024), which overlaps with the claimed ranges.
Applicant further argues that Collin does not have a nonvolatile oil which is liquid at 20 °C in Example 1, which is now required in claim 1.
This is not found persuasive. Collin more broadly teach (C) a liquid material comprising 1-95% of water (e.g. paragraph 0063-0064), and 0.1-80% of a nonvolatile oil that is liquid at 20°C (e.g. paragraphs 0052-0062) relative to the total weight of the composition.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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