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.
Applicants' arguments, filed 04/23/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection.
Claim 1 recites an ethylene/acrylic acid copolymer having a functional acrylic polymer section grafted onto a polyethylene backbone. The claim fails to comply with the written description requirement since the specification does not have support for any functional acrylic polymer section grafted onto any polyethylene backbone. Pages 8 and 14 of the specification limits the functional acrylic polymer to be amorphous and the polyethylene backbone to be crystalline.
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).
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 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 a functional acrylic polymer section grafted onto a 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 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 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’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Conclusion
Claims 1-20 are rejected.
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 (37 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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/TRACY LIU/ Primary Examiner, Art Unit 1614
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