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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/02/2025 has been entered.
Applicants' arguments, filed 12/02/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 112
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 the applicant regards as his invention.
Claim 17 is 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 17, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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).
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]). 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 composition may comprise an acrylic copolymer containing acrylic acid as one of the monomers (i.e., acrylic acid copolymer) as a thickening agent (¶ [0042]). 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.
In regards to instant claim 1 reciting about 1 wt. % to about 5 wt. % polyvinylpyrrolidone, Lee discloses 0.8 wt. % polyvinylpyrrolidone, which is within the range of about 1 wt. %.
In regards to the properties recited in instant claims 9-12, the composition of Lee 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 Lee 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), and further in view of Garofano et al. (US 2007/0193600, Aug. 23, 2007) (hereinafter Garofano).
The teachings of Lee and Omura are discussed above. Lee and Omura 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), and further in view Hodgetts et al. (WO 2013/163502 A1, Oct. 31, 2013) (hereinafter Hodgetts).
The teachings of Lee and Omura are discussed above. Lee and Omura 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 the 0.8 wt. % of PVP in the mascara composition of Lee is outside the recited range of amended claim 1.
The Examiner does not find Applicant’s argument to be persuasive. Instant claim 1 recites a polyvinylpyrrolidone component in the range of from about 1 wt. % to about 5 wt. %. The term “about 1 wt. %” means that the amount of polyvinylpyrrolidone may be slightly less than or slightly more than 1 wt. %. Lee’s teaching of 0.8 wt. % is an amount slightly less than 1 wt. %. Thus, Lee’s teaching of 0.8 wt. % is within the recited range of about 1 wt. % to about 5 wt. % and Applicant’s argument is unpersuasive.
Applicant argues that Omura, Garofano, and Hodgetts do not cure the deficiencies of Lee.
The Examiner submits that Applicant’s argument with regards to Lee has been addressed above and is 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