DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims included in the prosecution are claims 1-20.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/02/2026 has been entered.
Applicants' arguments, filed 07/02/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Rejections - 35 USC § 103
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.
1. Claims 1-6, 9-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2017/0135938, May 18, 2017) in view of Omura et al. (JP 2004307353 A, Nov. 4, 2004) (hereinafter Omura) and Sortino et al. (US 2017/0354588, Dec. 14, 2017) (hereinafter Sortino), as evidenced by Nanopol (PVP K-30 Polymer Product Data Sheet, 2026).
Lee discloses a mascara formulation comprising 3 wt. % dimethicone PEG-8 polyacrylate, 0.8 wt. % polyvinylpyrrolidone (i.e., polyvinylpyrrolidone component), 7 wt. % water/acrylates copolymer (i.e., acrylate copolymer component), 1.5 wt. % vinylpyrrolidone/eicosane copolymer (i.e., eicosane copolymer component), 7.35 wt. % carnauba (i.e., structurant component), and 2 wt. % treated fibers (i.e., fiber component) (Example 14 ¶ [0186]). Suitable polyvinylpyrrolidones include PVP- K-30. Polyvinylpyrrolidone is used as a film forming polymer, which is useful for encapsulating cationically coated particulates (¶ [0018]). The composition may comprise one or more aqueous phase structuring agents that thickens the aqueous phase of the composition. Suitable ranges of aqueous phase structuring agents are from about 0.01 to 30% (¶ [0040]). The fibers may be made of nylon (i.e., polyamide) (¶ [0025]). The fibers may have a length in the range of from about 1 micrometer to about 4 millimeters (¶ [0026]). The composition may contain one or more surfactants (i.e., emulsifier), if in the emulsion form. The surfactants will aid in the formation of stable emulsions (¶ [0098]). The composition may contain about 0.01-75% pigment (¶ [0131]). Suitable pigments include iron oxides (¶ [0133]). The composition may also contain 0.001-10% vitamins. Suitable vitamins include Vitamin E (i.e., conditioning agent) (¶ [0135]).
Lee differs from the instant claims insofar as not disclosing wherein the composition comprises a mixture of sodium polyacrylate and acrylic acid.
However, Omura discloses an oil-in-water emulsion composition (abstract). Cosmetics using the oil-in-water emulsion composition includes mascaras (¶ [0056]). The composition may comprise thickeners such as sodium polyacrylate and sodium acrylate/acrylic acid (¶ [0037]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Lee discloses wherein the composition comprises one or more thickening agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated sodium polyacrylate and acrylic acid into the composition of Lee since these are known and effective thickening agents for cosmetics as taught by Omura.
The combined teachings of Lee and Omura do not teach wherein the composition comprises an acrylic acid copolymer component comprising an ethylene/acrylic acid copolymer having an amorphous functional acrylic polymer section grafted onto a crystalline polyethylene backbone; and sodium laureth-12 sulfate.
However, Sortino discloses an oil-in-water mascara formulation (abstract). The combination of two non-wax grafted and wax grafted polymers at a combined concentration of 0.1 % - 50 % aid to form a durable, flexible, and volumizing film that provides additional structure to the formulation as well. Examples of such polymers are formulations that include ethylene/acrylate acid copolymer and styrene/acrylates copolymer and water and phenoxyethanol and caprylyl glycol and sodium laureth-12 sulfate and C(11-15) pareth-7 and C(11-5) pareth-40, with a formulation of ammonium acrylates copolymer, water, alcohol denatured, disodium deceth-6 sulfosuccinate, laureth-30 and sodium dehyroacetate (¶ [0032]). The formulation that includes ethylene/acrylate acid copolymer and styrene/acrylates copolymer and water and phenoxyethanol and caprylyl glycol and sodium laureth-12 sulfate and C(11-15) pareth-7 and C(11-5) pareth-40 , is manufactured by Interpolymer under the name, Syntran PC 5288, and is formed by grafting an amorphous functional acrylic polymer section onto a crystalline polyethylene backbone (¶ [0034]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated 0.1 % - 50 % Syntran PC 5288 with a formulation of ammonium acrylates copolymer, water, alcohol denatured, disodium deceth-6 sulfosuccinate, laureth-30 and sodium dehyroacetate into the composition of Lee motivated by the desire to form a durable, flexible, and volumizing film that provides additional structure to the formulation as taught by Sortino.
In regards to instant claim 1 reciting about 1.5 wt. % to about 7 wt. % polyvinylpyrrolidone, as discussed above, Lee discloses wherein polyvinylpyrrolidone is a film forming polymer useful for encapsulating cationically coated particulates. Therefore, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount of polyvinylpyrrolidone based on the amount of cationically coated particulates in need of encapsulation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
In regards to instant claim 1 reciting a PVP K-30 polymer having a molecular weight in a range of from about 40,000 g/mol to about 80,000 g/mol, as evidenced by Nanopol, PVP K30 has a molecular weight of 40,000 and 80,000 g/mol. As such, since Lee teaches PVP K-30, Lee teaches a PVP K-30 polymer having a molecular weight in a range of from about 40,000 g/mol to about 80,000 g/mol.
In regards to the properties recited in instant claims 9-12, the composition of the prior art comprises substantially the same ingredients (i.e., a polyacrylate component, a polyvinylpyrrolidone component, an acrylate copolymer component, an acrylic acid copolymer component, an eicosane copolymer component, a structurant component, and a fiber component) as the claimed invention. Therefore, one of ordinary skill in the art would reasonably expect the composition of the prior art to have substantially the same properties as the claimed invention.
2. Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2017/0135938, May 18, 2017) in view of Omura et al. (JP 2004307353 A, Nov. 4, 2004) (hereinafter Omura), Sortino et al. (US 2017/0354588, Dec. 14, 2017) (hereinafter Sortino), and further in view of Garofano et al. (US 2007/0193600, Aug. 23, 2007) (hereinafter Garofano).
The teachings of Lee, Omura, and Sortino are discussed above. Lee, Omura and Sortino do not teach wherein the mascara dries in about 1 minute to about 10 minutes.
However, Garofano discloses a mascara composition having at least one substantive film forming polymer and at least one vaporization agent present in an amount sufficient to cause the composition to dry in a period of time ranging from 1 second to five minutes after application to the lashes (abstract).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the mascara of Lee to dry in a period of time ranging from 1 second to five minutes after application to the lashes since Lee does not disclose how long the mascara takes to dry and this is a known and effective drying time for mascaras as taught by Garofano. One of ordinary skill in the art would have had a reasonable expectation of success since Garofano discloses wherein a vaporization agent causes the composition to dry in a period of time ranging from 1 second to five minutes after application to the lashes.
3. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2017/0135938, May 18, 2017) in view of Omura et al. (JP 2004307353 A, Nov. 4, 2004) (hereinafter Omura), Sortino et al. (US 2017/0354588, Dec. 14, 2017) (hereinafter Sortino), and further in view Hodgetts et al. (WO 2013/163502 A1, Oct. 31, 2013) (hereinafter Hodgetts).
The teachings of Lee, Omura, and Sortino are discussed above. Lee, Omura, and Sortino do not teach the viscosity of the composition.
However, Hodgetts discloses a two-step mascara product that includes a first mascara composition, that is intended to be used as a base coat, and a second mascara composition, that is intended to be used as a topcoat (page 5, fifth paragraph). The primary and, optionally, secondary particles in the base coat help provide a desirable volume and/or length increasing benefit when applied to the eyelashes of user, but the addition of these particles may result in a thicker mascara composition. The base coat may have a viscosity in the range of 350,000-1,000,000 centipoise at 25°C (page 9, third paragraph).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the mascara of Lee to have a viscosity in the range of 350,000-1,000,000 centipoise at 25°C motivated by the desire to formulate a mascara that provides a desirable volume and/or length increasing benefit through the inclusion of particles as taught by Hodgetts.
Response to Arguments
Applicant argues that although Lee lists PVP K-30 as an example of a PVP, the K-value is a macroscopic rheological parameter and does not describe or define the molecular weight of the polyvinylpyrrolidone.
The Examiner does not find Applicant’s argument to be persuasive. As evidenced by Nanopol, PVP has a molecular weight of 40,000-80,000 g/mol. As such, since Lee teaches PVP K-30, Lee teaches a PVP K-30 polymer having a molecular weight in a range of from about 40,000 g/mol to about 80,000 g/mol. Thus, Applicant’s argument is unpersuasive.
Applicant argues that paragraph [0017] of the present application states that it was found that PVP K-30 yielded unexpected results even over polyvinylpyrrolidone components such as PVP K-90, which yielded an extremely thick, goopy, tacky mascara formulation.
The Examiner does not find Applicant’s argument to be persuasive. Mere conclusory statements in the specification, unsupported by objective evidence, are entitled to little weight when the PTO questions the efficacy of those statements. In re Greenfield, 571 F.2d 1185, 197 U.S.P.Q. 227, 229 (C.C.P.A. 1978). Thus, Applicant’s argument is unpersuasive since there are no objective evidence supporting Applicant’s allegation. Also, even if there were objective evidence, Applicant’s argument would still be unpersuasive. As evidenced by Braveds (PVP K90 Polyvinylpyrrolidone Luvitec K90, 2026), compared to PVP K-30, PVP K-90 has higher molecular weight (about 1,000,000), stronger film formation and greater viscosity, and is suitable for slow release systems requiring high mechanical strength. K-30 (molecular weight about 40,000) is more focused on dispersion and solubilization. Thus, one of ordinary skill in the art would reasonably expect PVP K90 to yield a composition that is thick, goopy and tacky since it has a high molecular weight, which affects viscosity. As such, Applicant’s argument is unpersuasive.
Applicant argues that Omura, Sortino, Garofano, and Hodgetts do not cure the deficiencies of Lee.
The Examiner submits that arguments regarding Lee has been addressed above and are unpersuasive. Therefore, the rejections are maintained.
Conclusion
Claims 1-20 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
