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 .
Election/Restrictions
Newly submitted claims 21-23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The Examiner respectfully notes the original invention, hereafter refer to as group (I), directed to c
However, newly submitted claims 21-23, hereafter referred to as group (II), is drawn to a method of reducing the rancidity of a vegetable oil comprising adding an ester of a fatty acid and dextrin and/or a mixture of branched and linear saturated C15-C19 alkanes into a vegetable oil.
The Examiner respectfully notes groups (I) and (II) are independent and distinct because these groups relate to different compositions for the following reasons:
(A) Group (I) is a composition requiring an ester of a fatty acid and dextrin, a mixture of branched and linear saturated C15-C19 alkanes and vegetable oil; Group (II) is a composition requiring either an ester of a fatty acid and dextrin or a mixture of branched and linear saturated C15-C19 alkanes in a vegetable oil;
(B) Group (I) requires the vegetable oil have an amount of unsaturated fatty acids of more than 35% by weight in its triglycerides, however, Group (II) does not; and
(C) Group (I) requires an amount of more than 80% branched saturated C15-C19 alkanes within the mixture of linear and branched C15-C19 alkanes, however, Group (II) does not.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Status
The claim set and Applicant’s remarks filed December 17, 2025 have been entered. Claims 12-14 are canceled. Claims 15-23 are new. Claims 21-23 are withdrawn from further consideration as being drawn to a non-elected invention as discussed in greater detail within the Election/Restrictions section above.
Thus, claims 1-11 and 15-20 as amended are examined on the merits herein.
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the non-final office action on October 07, 2025:
(I) All objections to the specification discussed within the non-final rejection above are withdrawn in view of the substituted specification filed December 17, 2025.
(II) The objections of claims 3-11 are all withdrawn in view of Applicant’s amendments to claims 3-11.
(III) The rejection of claims 12-14 under 35 U.S.C. 101 is withdrawn in view of Applicant canceling claims 12-14 as discussed in the Claim Status section above.
(IV) The rejection of claims 1-14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is within in view of Applicant’s amendments to claims 1-11 and the canceling of claims 12-14 as discussed above.
Response to Arguments
The rejection of claims 1-11 under 35 U.S.C. 103 is maintained.
Applicant argues:
(A) The cosmetic composition of claim 1 is an emulsion, see Applicant’s remarks, pg. 11, 4.2. Applicant’s Comments in Response, paragraph 1.
(B) Valverde seeks to offer a new galenic form that is not an emulsion and does not require the presence of a surfactant/emulsifier, see Applicant’s remarks, pg. 12, paragraph 2.
(C) Accordingly, Valverde’s compositions are specifically designed not to be emulsions and not to require the presence of a surfactant/emulsifier. Therefore, a person of ordinary skill in the art would not have sought to change the galenic form of these compositions. See Applicant’s remarks, pg. 12, paragraph 5.
(D) One of ordinary skill in the art would not have considered modifying Valverde’s compositions in light of Swoboda, when considering Swoboda’s example 7, which is an anhydrous composition devoid of any aqueous phase, whereas Valverde specifically aims to prepare compositions with an aqueous and oil phase. Additionally, example 7 of Swoboda is not an emulsion. See Applicant’s remarks, pg. 12, paragraph 6.
(E) Example 7 of Swoboda is the only example in Swoboda that describes the use of Emogreen L19. Therefore, even if Swoboda’s teachings were combined with Valverde’s, there is no reason to add Emogreen L19 to Valverde’s compositions and to replace the compositions of Valverde by emulsions. See Applicant’s remarks, pg. 12, second paragraph from the bottom of the page.
(F) Applicant argues test results presented in Table 1 of the specification on pg. 21 and Table 2 of the specification on pg. 22, clearly show the combined and synergistic effect of the ester of fatty acid and dextrin and the C15-C19 alkanes mixture of the invention on the reduction of rancidity of the vegetable oil, the effect being observed regardless of the nature of the vegetable oil used in the composition as shown in Table 2. See Applicant’s arguments, pg. 12, last paragraph of the page.
(G) Since Valverde’s compositions always comprise an aqueous phase, it is not possible to find compatible embodiments between those of Valverde and example 7 of Swoboda (that discloses an anhydrous composition) for calculating a ratio of ester of fatty acid and dextrin relative to the weight of the C15-C19 alkanes mixture, see Applicant’s arguments, pg. 13, third paragraph from the bottom of the page.
With respect to Applicant’s arguments (A)-(D), the Examiner respectfully notes the 103 rejections have been modified to replace Valverde et al. with Malle et al. as the primary reference and is discussed in greater detail within the modified 103 rejections below.
The Examiner respectfully notes Malle teaches a makeup composition for keratin materials comprising at least one non-cationic oxidized polysaccharide; wherein the keratin material in particular includes eyelashes; where the cosmetic composition can be in various forms, depending on its purpose, and exemplifies an oily or aqueous gel, an oil-in-water emulsion, water in oil, a multiple emulsion or anhydrous.
Malle teaches the physiochemical properties of non-cationic oxidized polysaccharides have surfactant properties making it possible to use them as emulsifiers for oils.
The Examiner respectfully notes Swoboda teaches the cosmetic composition may be an anhydrous composition, an emulsion such as a water-in-oil (W/O) emulsion, an oil-in-water (O/W) emulsion, or a multiple emulsion (in particular W/O/W or O/W/O).
With particular respect to Applicant’s argument (E), the Examiner respectfully notes both Malle and Swoboda teach cosmetic compositions which may be an emulsion, particularly water-in-oil, oil-in-water, a multiple emulsion or anhydrous, wherein said cosmetic composition of both Malle and Swoboda teach can be applied to eyelashes as discussed in greater detail within the 103 rejections below.
Moreover, Malle teaches their composition may comprise volatile oils, exemplified as hydrocarbon-based oils, further exemplifying branched alkanes having from 8 to 16 carbons; and where the Examiner respectfully notes Swoboda teaches C15-C19 alkanes (e.g. Emogreen L19) are present within their cosmetic composition by exemplification of the anhydrous composition as taught by Swoboda above and discussed in greater detail within the 103 rejections below.
With particular respect to Applicant’s argument (F), the Examiner respectfully notes this argument is not found persuasive by the Examiner for the following reasons:
(i) the reduction of rancidity of the vegetable oil within the composition as argued by Applicant is not a required limitation within claim 1.
(ii) Both Table 1 (see specification, pg. 21) and Table 2 disclose cosmetic compositions exemplifies:
(a) Emogreen L19 as the mixture of C15-C19 alkanes, more particularly it recites specific weight percentages of Emogreen L19 with each formulation. The Examiner reasonably interprets Emogreen L19 is narrower in scope than the mixture of C15-C19 alkanes as recited in claim 1, line 3 and lines 6-8.
Additionally, the Examiner respectfully notes claim 1 does not require any specific percentage by weight of the mixture of C15-C19 alkanes within the composition.
(b) Dextrin palmitate as the ester of a fatty acid and dextrin, more particularly it recites specific weight percentages of the dextrin palmitate in addition to different formulations of the dextrin palmitate for example Rheopearl® KL2, Chiba Flour Milling or a dextrin palmitate with a molecular weight restricted between 11,300-11,500 Da.
Additionally, the Examiner respectfully notes claim 1 only recites an ester of a fatty acid and dextrin per se and does not require any specific form or percentage by weight of the ester of a fatty acid and dextrin within the composition.
(c) The vegetable oil comprised within the compositions listed in Table 1 and Table 2 above contains one type of oil; the Examiner respectfully notes the oil is selected from the group consisting of as recited within claim 10.
Although, the Examiner also respectfully notes claim 1 only requires a vegetable oil having an amount of unsaturated fatty acids of more than 35% by weight in its triglycerides.
Therefore, the Examiner further reasonably interprets the vegetable oil recited within the composition of claim 1 is broader in scope than the seven different vegetable oils tested within the compositions recited in Table 1 and Table 2 of the specification.
Thus, the Examiner respectfully notes in view of the foregoing reasons above, Applicant’s evidence presented within the specification is insufficient in supporting their argument of an unexpected effect of the reduction of rancidity of the vegetable oil as argued above; as the Examiner respectfully notes said evidence provided by Applicant within their disclosure as a whole is not commensurate in scope with the composition as recited within claim 1. The Examiner again respectfully reiterates the unexpected effect of the reduction of rancidity of vegetable oil is not a recited claim limitation within claim 1.
With particular respect to Applicant’s argument (G), the Examiner respectfully notes Malle teaches the cosmetic composition can be in various forms, depending on its purpose, and exemplifies an oily or aqueous gel as discussed above, which the Examiner also respectfully notes corresponds to the forms of the cosmetic composition of Valverde, wherein Valverde teaches the weight percentage of dextrin palmitate within their cosmetic composition.
Moreover, the Examiner respectfully notes the teachings of Malle also teach the cosmetic composition as an oil-in-water emulsion, water in oil, a multiple emulsion or anhydrous, which the Examiner also respectfully notes corresponds to the forms of the cosmetic composition of Swoboda, wherein Swoboda teaches the weight percentage of the mixture of C15-C19 alkanes (e.g. Emogreen L19) within their cosmetic composition.
Therefore, in view of the foregoing reasons above the Examiner reasonably interprets the cosmetic composition as taught by Malle above is a compatible embodiment for both the cosmetic composition taught by Valverde and the cosmetic composition as taught by Swoboda in calculating a weight percentage of the ester of fatty acid and dextrin relative to the weight percentage of the mixture of C15-C19 branched and linear saturated alkanes within the cosmetic composition as taught by Malle above.
Thus, Applicant’s arguments (A)-(G) have been fully considered but are not found persuasive.
New Claim Rejections
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on December 17, 2025, where the limitations in pending claims 1-11 as amended now have been changed and claims 15-20 have been newly added. Therefore, rejections from the previous Office Action, dated October 07, 2025, have been modified and are listed below.
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.
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.
(I) Claims 1-4, 8-11 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Malle et al. (Published 24 June 2010, WO-2010070235-A2, PTO-892; English Machine Translation, PTO-892) in view of Valverde et al. (Published 07 January 2016, US-20160000663-A1, PTO-892 mailed 10/07/2025), and Swoboda (Filed 10 January 2020, US-20220110840-A1, PTO-892 mailed 10/07/2025) as evidenced by Akhtar et al. (Published Year 2006, Gomal University Journal of Research, Vol. 22, pp. 21-27, PTO-892 mailed 10/07/2025).
Regarding claims 1-4, 8-11 and 16-20, Malle teaches a makeup composition for keratin materials comprising at least one non-cationic oxidized polysaccharide (e.g. a cosmetic composition, required in claim 1, line 1; and claim 20, line 1), see pg. 6, document description, paragraph 1.
Malle defines “keratin materials to mean the skin and its integuments, and in particular including the eyelashes, see paragraph 2.
Malle teaches the cosmetic composition can be in various forms, depending on its purpose and exemplifies an oily or aqueous gel, an oil-in-water emulsion, water in oil, and a multiple emulsion (e.g. an emulsion, required in claim 1, last line of the claim; and claim 20, pg. 6, line 4), see pg. 9, paragraph 4.
Malle teaches the cosmetic composition may be anhydrous, see pg. 9, fourth paragraph from the bottom of the page.
Malle teaches the composition may be a mascara, see pg. 9, paragraph 5.
Malle teaches the physiochemical properties of non-cationic oxidized polysaccharides have surfactant properties making it possible to use them as emulsifiers for oils (e.g. an emulsifier, required in claim 20, line 6), see pg. 6, paragraph 6. Malle teaches the composition may incorporate one or more gelling agents, see pg. 14, thickening agents, paragraph 1.
Malle exemplifies the gelling agent used in the cosmetic composition as esters of dextrin fatty acid, such as dextrin palmitates (e.g. the ester of fatty acid and dextrin, required in claims 1, 4, 17-18 and 20), see pg. 15, paragraph 2.
Malle teaches the cosmetic composition may comprise at least one liquid fatty phase, especially an oil, see pg. 9, last line of the page; the oils can be volatile or non-volatile, see pg. 10, paragraph 4; where non-volatile hydrocarbon oils may be especially mentioned including hydrocarbon oils of plant origin, in particular macadamia oil, sweet almond oil, argan oil, shea butter and olive oil (e.g. the oil, required in claim 1, lines 4-5; claim 10; claim 11; and claim 20, lines 4-5), see pg. 4, last two paragraphs of the page.
Malle exemplifies volatile oils include hydrocarbon-based oils having 8 to 16 carbon atoms, especially branched C8-C16 alkanes, see pg. 10, paragraphs 10-11.
Although, Malle does not teach (a) the mixture of branched and linear saturated C15-C19 alkanes, required in claim 1, lines 3 and 6-8; claims 2-11; and claims 16-19; and (b) the ratio of ester of fatty acid and dextrin to mixture of branched and linear saturated C15-C19 alkanes, required in claim 8.
However, in the same field of endeavor of cosmetic compositions, with respect to limitations (a)-(b), Valverde teaches a cosmetic composition for making up and/or caring for keratin materials, see abstract. Valverde teaches the term “keratin materials” especially means the eyelashes, see paragraph [0002]. Valverde exemplifies the composition as a product for the eyelashes, in particular a mascara, see paragraph [0581].
Valverde teaches the composition comprises at least one aqueous phase gelled with at least one synthetic polymeric hydrophilic gelling agent and at least one oily phase gelled with at least one lipophilic gelling agent, wherein the lipophilic gelling agent is chosen from and includes dextrin esters, see abstract; wherein the lipophilic gelling agent is exemplified as a dextrin ester; see paragraph [0430]; wherein the dextrin ester is an ester of dextrin C14-C18 fatty acid, see paragraph [0432], preferably chosen from and including dextrin palmitate, see paragraph [0435].
Valverde teaches the composition may preferably comprise between 0.1% and 10% by weight of dextrin palmitate relative to the total weight of the oily phase, see paragraph [0437].
Valverde exemplifies an aqueous phase/oily phase weight ratio of 95/5 to 5/95, see pg. 30, left column, claim #10. The Examiner reasonably interprets the weight ratio of the phases taught by Valverde above includes wherein the oily phase represents between 5%-95% of the weight of the composition and given the oily phase comprises between 0.1% and 10% by weight of dextrin palmitate, the composition taught by Valverde comprises between 0.005% and 9.5% by weight of dextrin palmitate within the composition taught by Valverde above.
Valverde teaches an oily phase that is suitable for preparing the cosmetic compositions may comprise hydrocarbon-based oils, see paragraph [0494]; wherein the term “hydrocarbon-based oil” is defined as an oil mainly containing hydrogen and carbon atoms, see paragraph [0500].
Valverde teaches the hydrocarbon-based oils may be volatile or non-volatile oils, see paragraph [0495]; wherein the volatile oil may be made especially of branched C8-C16 alkanes, especially isohexadecane (e.g. a branched saturated C16 alkane), see paragraph [0505]. Valverde teaches the volatile oil may be made of volatile linear C8-C16 alkanes (e.g. include hexadecane, a linear saturated C16 alkane), see paragraph [0506].
Additionally, Swoboda teaches a cosmetic composition comprising at least one fatty substance selected from among and including plant oils and hydrocarbon oils and alkanes, see paragraph [0036].
Swoboda teaches the cosmetic composition may be an anhydrous composition, an emulsion such as a water-in-oil (W/O) emulsion, an oil-in-water (O/W) emulsion or a multiple emulsion (in particular W/O/W or O/W/O), see paragraph [0193].
Swoboda exemplifies plant oils including particular oils of: macadamia, sweet almond, shea and olive (e.g. the oils, required in claims 10-11), see paragraph [0184].
Swoboda teaches a make-up product in Example 7, see pg. 14, right column, where the compositions in Table 9 exemplify the alkane as a C15-C19 alkane known by the trade name Emogreen L19 which is a component of the composition in the amount of 8% by weight of the composition as recited in Examples 7.1-7.3, see paragraph [0273], Table 9, Emogreen L19. The Examiner notes the C15-C19 alkane known by the trade name Emogreen L19 is a mixture of branched and linear saturated C15-C19 alkanes as evidenced by the Specification which discloses it is preferred that the mixture of C15-C19 alkanes is the mixture of C15-C19 alkanes as commercialized as EMOGREENTM L19 (pg. 8, lines 15-20).
Swoboda teaches the physiochemical properties of the hydrocarbon oil used in the examples, see paragraph [0208]; wherein Table 1 teaches C16 (iso) is 1.58%, C17 (iso) is 14.17%, C18 (iso) is 79.69% and C19 (iso) is 0.12%; and when added together the mixture of said branched saturated C16-C19 alkanes within said hydrocarbon oil is 95.56% of the hydrocarbon oil, see paragraph pg. 11, Table 11.
Swoboda teaches the compositions of Examples 7.4, 7.5 and 7.6 were applied on the eyelashes of each volunteer, see paragraph [0277].
The Examiner notes the physiochemical properties of the hydrocarbon oil taught by Swoboda above corresponds to the amount of branched saturated C15-C19 alkane in said mixture is more than 80% by weight, required in claim 1, lines 6-8; and wherein the amount of branched saturated C18 alkane is more than 50% by weight, as required in claim 3; and wherein the amount of branched saturated C18 alkane is more than 70% by weight, as required in claim 16.
The Examiner also notes based on the teachings of the hydrocarbon oil of Swoboda above which teaches the physiochemical properties of the hydrocarbon oil has 95.56% branched saturated C16-C19 alkanes would then logically require the amount of linear saturated C15-C19 alkanes to be less than 10% by weight of the hydrocarbon oil, as required in claim 2.
Moreover, as evidenced by Akhtar, Akhtar discloses macadamia nut oil comprises 84% monounsaturated fats compared to 4% polyunsaturated fats and 16% saturated fats (e.g. the weight of mono-unsaturated fatty acids relative to the weight of unsaturated fatty acids in its triglycerides, required in claim 9), see pg. 22, left column, Table 1, macadamia oil.
With respect to claims 8 and 19, the Examiner notes the composition taught by Valverde above comprises between 0.005% and 9.5% by weight of dextrin palmitate and the composition taught by Swoboda comprises 8% of the mixture of branched and linear saturated C15-C19 alkanes. Thus, the teachings of Valverde and Swoboda correspond to claim 8 and claim 19 when the amount of dextrin palmitate is 5% by weight and the mixture of branched and linear saturated C15-C19 alkanes is 8% by weight.
Therefore, as a result of these percentages the weight of the dextrin palmitate relative to the weight of the mixture of branched and linear saturated C15-C19 alkanes is 62.5% and thus meets the structural limitations as required in claim 8 and claim 19.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have included limitations (a)-(b) as taught by the combination of Valverde and Swoboda above into the cosmetic composition as taught by Malle as discussed above as within the scope of the artisan as combining prior art elements according to known compositions to yield predictable results. One of ordinary skill in the art would have been motivated to make a cosmetic composition as taught by Malle above, particularly for eyelashes which is taught by Malle, Valverde and Swoboda as discussed above. One of ordinary skill in the art would have had a reasonable expectation of success to have included limitations (a)-(b) as taught by Valverde and Swoboda above into the composition of Malle, as Malle, Valverde and Swoboda are all drawn to oil-comprising cosmetic compositions as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(II) Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Malle et al. (Published 24 June 2010, WO-2010070235-A2, PTO-892; English Machine Translation, PTO-892), Valverde et al. (Published 07 January 2016, US-20160000663-A1, PTO-892 mailed 10/07/2025) and Swoboda (Filed 10 January 2020, US-20220110840-A1, PTO-892 mailed 10/07/2025) as evidenced by Akhtar et al. (Published Year 2006, Gomal University Journal of Research, Vol. 22, pp. 21-27, PTO-892 mailed 10/07/2025) as applied to claims 1-4, 8-11 and 16-20 above, and further in view of Togashi (Published 29 October 2020, US-20200337952-A1, PTO-892 mailed 10/07/2025).
Malle, Valverde and Swoboda as evidenced by Akhtar address claims 1-4, 8-11 and 16-20 as written above. Although Malle, Valverde and Swoboda do not teach (a) the average degree of glycopolymerization, required in claim 5; and (b) wherein said fatty acid and dextrin has an average number of esterified hydroxy groups of more than 3, required in claim 6.
However, in the same field of endeavor of oil-comprising cosmetic compositions, Togashi teaches an oil-based gel cosmetic containing (A) a dextrin in fatty acid ester having a degree of acylation of 2.0 or larger (may occasionally be referred to as (A) ingredient, hereafter), see paragraph [0016];
where the upper limit of the degree of acylation is not specifically limited (e.g. an average number of esterified hydroxy groups of more than 3, required in claim 6), see paragraph [0021];
wherein the dextrin fatty acid ester having a degree of acylation of 2.0 or larger is exemplified by those having a structure represented by formula (I), see paragraph [0019] and pg. 2, left column, formula (1);
where n in formula (1) represents the degree of polymerization, see paragraph [0020]; and
n preferably represents 3 to 150 (e.g. the average degree of polymerization, required in claim 5), see paragraph [022].
Togashi teaches the dextrin fatty acid ester is exemplified by dextrin palmitate, see paragraph [0023].
The Examiner respectfully notes the dextrin in a fatty acid ester wherein n is 3 as discussed in formula (I) of Togashi above also contains a terminal D-glucose monomer on each end of the polymer as evidenced by Applicant’s disclosure which depicts the structure of dextrin (see pg. 5, line 1). Therefore, the dextrin of Togashi would also contain two additional terminal D-glucose monomers within the dextrin polymer recited in formula (I) of Togashi as discussed above.
Additionally, the Examiner also respectfully notes with a degree of acylation of 2.0 or greater and wherein the upper limit of acylation is not specifically limited as taught by Togashi above, when n is 3 for the dextrin polymer as taught by Togashi, and wherein the dextrin polymer of Togashi also contains two terminal D-glucose monomers within the dextrin polymer as evidenced by Applicant as discussed above, the polymer of Togashi would contain a degree of glycopolymerization of 5 and comprise 17 hydroxyl groups (e.g. a total of 9 hydroxyl groups within the interior D-glucose monomers represented by n of Togashi and a total of 8 hydroxyl groups at the two terminal D-glucose monomers as evidenced and disclosed by Applicant in the Specification on pg. 5, line 1).
Therefore, if all hydroxyl groups of this dextrin polymer which contains five D-glucose monomers as discussed above were acylated by Togashi, wherein Togashi teaches the upper limit of acylation is not specifically limited as discussed above, then the Examiner respectfully notes the resulting acylated dextrin of Togashi containing five D-glucose monomers would result in an average number of acylated hydroxyl groups of 3.4 per glucose unit and correspond to instant claim 6.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have substituted the dextrin fatty acid ester taught by Malle for the dextrin fatty acid ester taught by Togashi as within the scope of the artisan as a simple substitution of one known element for another according to known compositions to yield predictable results. One of ordinary skill in the art would have been motivated to make this substitution in order to use dextrin palmitate as exemplified by Togashi as the dextrin ester of Malle; which the Examiner respectfully notes Malle also exemplifies their dextrin ester as dextrin palmitate as discussed above. One of ordinary skill in the art would have had a reasonable expectation of success to have made the substitution as discussed above as both Malle and Togashi exemplify the dextrin fatty acid ester as dextrin palmitate within oil-comprising cosmetic compositions as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(III) Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Malle et al. (Published 24 June 2010, WO-2010070235-A2, PTO-892; English Machine Translation, PTO-892), Valverde et al. (Published 07 January 2016, US-20160000663-A1, PTO-892 mailed 10/07/2025) and Swoboda (Filed 10 January 2020, US-20220110840-A1, PTO-892 mailed 10/07/2025) as evidenced by Akhtar et al. (Published Year 2006, Gomal University Journal of Research, Vol. 22, pp. 21-27, PTO-892 mailed 10/07/2025) as applied to claims 1-4, 8-11 and 16-20 above, and further in view of Tournilhac (Published 04 February 2004, EP-1386600-A1, PTO-892 mailed 10/07/2025).
Malle, Valverde and Swoboda as evidenced by Akhtar address claims 1-4, 8-11 and 16-20 as written above. Although Malle, Valverde and Swoboda do not teach wherein said ester of the fatty acid and dextrin has a molecular weight of between 8,000 and 16,000 g/mol.
However, in the same field of endeavor of cosmetic compositions comprising dextrin esters, Tournilhac teaches the use of at least one acid ester of dextrin with a degree of substitution of less than 2 on the basis of one repeating unit, for example glucose unit, and at least one fatty acid ester of dextrin with a degree of substitution of greater than 2 on the basis of one repeating unit, for example one glucose unit, in a cosmetic composition containing a continuous liquid fatty phase to thicken or gel the composition, see paragraph [0123].
Tournilhac teaches the use of the composition to obtain a deposit, in particular makeup, which is uniform and/or comfortable on keratin materials, see paragraph [0124]. Tournilhac teaches the composition may be in the form of a mascara, see paragraph [0087].
Tournilhac teaches the molecular weight of the dextrin ester with a degree of substitution of less than 2 or greater than 2 is preferably between 10,000 and 30,000 wherein the weight-average molecular weight is determined by gas chromatography, with a polystyrene standard, see paragraph [0038] and paragraph [0046]. Although, the Examiner respectfully notes Tournhilac does not recite the unit of the weight-average molecular weight is in g/mol, however, the Examiner reasonably interprets the weight-average molecular weight is determined in g/mol, as evidenced by the specification which discloses the molecular weight (Mn) is determined in Dalton (Da) particularly by SEC/GPC using polystyrene as standard (see pg. 5, last two lines of the page).
Tournhilac exemplifies the one acid ester of dextrin as dextrin palmitate, see paragraph [0037].
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have included the molecular weight of dextrin as taught by Tournhilac above into the dextrin ester as taught by Malle as discussed above as within the scope of the artisan as combining prior art elements according to known compositions to yield predictable results. One of ordinary skill in the art would have been motivated to include the limitation discussed above in order to create a cosmetic composition comprising a dextrin ester, wherein said composition is in particular a mascara as taught by both Malle and Tournilhac above. One of ordinary skill in the art would have had a reasonable expectation of success to have included the limitation as discussed above into the composition of Malle, as both Malle and Tournilhac are drawn to cosmetic compositions, particularly mascaras, wherein said composition comprises a dextrin ester, wherein said dextrin ester is exemplified as dextrin palmitate as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(IV) Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Malle et al. (Published 24 June 2010, WO-2010070235-A2, PTO-892; English Machine Translation, PTO-892), Valverde et al. (Published 07 January 2016, US-20160000663-A1, PTO-892 mailed 10/07/2025), and Swoboda (Filed 10 January 2020, US-20220110840-A1, PTO-892 mailed 10/07/2025) as evidenced by Akhtar et al. (Published Year 2006, Gomal University Journal of Research, Vol. 22, pp. 21-27, PTO-892 mailed 10/07/2025) as applied to claims 1-4, 8-11 and 16-20 above, and further in view of Bernoud et al. (Published 02 February 2012, US-20120027702-A1, PTO-892).
Malle, Valverde and Swoboda as evidenced by Akhtar address claims 1-4, 8-11 and 16-20 as written above.
Although Malle, Valverde and Swoboda do not teach the amount of linear saturated C15-C19 alkanes in the mixture of branched and linear alkanes is more than 5% by weight as required in claim 15. As the Examiner respectfully notes the maximum amount of linear saturated C15-C19 alkanes within the hydrocarbon oil as exemplified by Swoboda is 4.44%.
However, in the same filed of endeavor of cosmetic compositions, Bernoud teaches a volatile oily composition comprising a mixture of paraffins and optionally at least one non-volatile oil, wherein said oily composition is contained within a cosmetic composition, and the cosmetic uses of said composition is particularly for makeup for eyelashes, see paragraph [0002].
Bernoud teaches the cosmetic composition may particularly be a mascara, see paragraph [0040]; and where the oily composition may particularly be used to improve the wear of mascara, see paragraph [0041].
Bernoud teaches the volatile oily composition comprising 1 to 30% by weight of at least one C14-C24 linear paraffin, see paragraph [0010].
It would have been prima facie obvious to one of ordinary skill in the art at the invention’s effective filing date to have modified the cosmetic composition as taught by the combination of Malle and Swoboda, particularly the mixture of branched and linear saturated C15-C19 alkanes as taught by Swoboda above, with the teaching of percentage ranges of linear paraffins as taught by Bernoud above, and therefore arrived at a percentage of linear saturated C15-C19 alkanes is more than 5% by weight as required in claim 15 as within the scope of the artisan as combining prior art elements according to known compositions to yield predictable results.
One of ordinary skill in the art would have been motivated to modify the cosmetic composition of Malle and Swoboda, particularly the mascara as taught by Malle above, in order to improve the wear of mascara as taught by Bernoud as discussed above. One of ordinary skill in the art would have had a reasonable expectation of success to have modified the composition as taught by the combination of Malle and Swoboda as discussed above, as Bernoud teaches it is known in the art to vary the percentage of linear saturated C15-C19 alkanes within cosmetic compositions, particularly within a mascara as discussed above.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have modified the percentage by weight of the linear saturated C15-C19 alkanes within the composition as taught by the combination of Malle and Swoboda above by using the teachings of Bernoud as discussed above as within the scope of the artisan through routine experimentation and optimization. One of ordinary skill in the art would have been particularly motivated to experiment and optimize the percentage of linear saturated C15-C19 alkanes within the cosmetic composition as taught by the combination of Malle and Swoboda above, particularly the mascara of Malle, in order to improve the wear of the mascara as taught by Bernoud as discussed above. One of ordinary skill in the art would have had a reasonable expectation of success to have made said modification as discussed above, as both Malle and Bernoud are both drawn to oil-comprising cosmetic compositions, particularly mascaras as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
Conclusion
No claims are allowed in this action.
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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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691