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 .
Information Disclosure Statement
Foreign reference 4 in the information disclosure statement filed 6/9/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Status of the Claims
Claims 1-27 are pending and under current examination.
Claim Objections
Claims 2-27 are objected to because of the following informalities:
The dependent claims 2-27 lack the article “The” at the beginning of each claim. See MPEP 608.01(n)(IV).
Claim 24, line 3, contains a clear typographical error in the phrase “with a composition (B according to Claim 22…”. The claim should be amended to read “with a composition (B) according to Claim 22…”.
Appropriate correction is required.
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.
Claims 10, 14, and 25 are 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.
Claim 10 recites the limitation "the sugars obtained from fruits or vegetables" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitations “reactive hydroxyl groups” and “reactive functional groups” in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 contains the phrase “the mole ratio…ranges from 1/3 to 20”. This renders the claim indefinite because it is not clear if the mole ratio of reactive hydroxyl groups on the polyphenol to the reactive functional groups of compound Y ranges from 1:3-1:20 or 1:3-20:1.
Claim 25 contains the phrase “on the first” in line 5. There is insufficient antecedent basis for this limitation in the claim.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claims 1, 2, 4-7, 9, 10, 12-17, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Legland (WO20120127431, publication date: 6/25/2020), in view of Purdue Chemistry (available 5/16/2011), as evidenced by PubChem (Ferrous Gluconate, available 12/12/2007) and ChemicalBook (Tannic acid, available 6/3/2019).
Applicant’s Invention
Applicant’s claim 1 is drawn to a Cosmetic process for coating keratin materials comprising applying to said keratin materials: a) at least one composition (A) comprising, in a physiologically acceptable medium, at least one polyphenol X comprising at least two different phenol groups; and b) at least one composition (B) comprising, in a physiologically acceptable medium, at least one compound Y comprising at least two functional groups, which may be identical or different, which are capable of forming at least two hydrogen bonds with said phenol groups of the polyphenol X.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1 and 15, Legland discloses a cosmetic process for coloring or making up keratin fibers comprising the application to said keratin fibers a two-component composition for dyeing eyebrows in which component A is comprised of logwood extract, dimethyl isosorbide, carbomer, alkyl glucoside, soda, benzyl alcohol, sodium metabisulfite and water ([0010] and Example 4, [0295-0306]). Logwood extracts contain gallic tannins and neoflavanoid polyphenols [0034]. The developer composition B contains polyacrylate crosspolymer-6, sodium carbonate, benzyl alcohol, water, and iron gluconate [0227-0234]. PubChem teaches that ferrous gluconate contains ten hydroxyl groups (pg. 3, 2D Structure).
Regarding claim 2, Legland teaches that the natural colorants of the invention include catechol tannins [0030].
Regarding claim 4, Legland teaches that natural colorants of the invention include procyanidins [0030].
Regarding claim 5, Legland teaches that extracts of logwood and brasiletto contain gallic tannins (or gallotannins) [0034]. Chemical Book teaches that tannic acid is also known as gallotannin (pg. 1, Synonyms).
Regarding claims 6 and 7, Legland discloses a two-component composition for dyeing eyebrows in which component A contains 5% Logwood extract [0296]. Logwood extracts contain gallic tannins (or gallotannins) and flavonoids/neoflavonoids [0024].
Regarding claim 9, Legland discloses a cosmetic process for coloring or making up keratin fibers comprising the application to said keratin fibers a two-component composition for dyeing eyebrows in which component A is comprised of logwood extract, dimethyl isosorbide, carbomer, alkyl glucoside, soda, benzyl alcohol, sodium metabisulfite and water ([0010] and Example 4, [0295-0306]). Logwood extracts contain gallic tannins and neoflavanoid polyphenols [0034]. The developer composition B contains polyacrylate crosspolymer-6, sodium carbonate, benzyl alcohol, water, and iron gluconate [0227-0234]. PubChem teaches that ferrous gluconate contains hydroxyl groups (pg. 3, 2D Structure).
Regarding claim 10, Legland discloses a cosmetic process for coloring or making up keratin fibers comprising the application to said keratin fibers a two-component composition for dyeing eyebrows in which component A is comprised of logwood extract, dimethyl isosorbide, carbomer, alkyl glucoside, soda, benzyl alcohol, sodium metabisulfite and water ([0010] and Example 4, [0295-0306]). Logwood extracts contain gallic tannins and neoflavanoid polyphenols [0034]. The developer composition B contains polyacrylate crosspolymer-6, sodium carbonate, benzyl alcohol, water, and iron gluconate [0227-0234]. PubChem teaches that ferrous gluconate is not a sugar (pg. 3, 2D Structure).
Regarding claims 12 and 13, Legland discloses that composition B contains 3.6% of iron gluconate [0234].
Regarding claim 14, Legland discloses the relevant limitations of claim 1 as described above.
Regarding claim 16, Legland discloses that water is present at about 75% in composition A [0219]. The percentage is expressed as % by weight relative to the total weight of the composition [0206].
Regarding claim 17, Legland discloses that the pH of compound A is between 7 and 7.5 [0226].
Regarding claim 21, Legland discloses a kit for coloring or making up keratin fibers with separate compartments comprising the coloring composition A and the developer composition B [0015-0017].
Regarding claim 22, Legland discloses a cosmetic process for coloring or making up keratin fibers comprising the application to said keratin fibers a two-component composition for dyeing eyebrows in which component A is comprised of logwood extract, dimethyl isosorbide, carbomer, alkyl glucoside, soda, benzyl alcohol, sodium metabisulfite and water ([0010] and Example 4, [0295-0306]). Logwood extracts contain gallic tannins and neoflavanoid polyphenols [0034]. The polyphenol functions as a natural dye [0005].
Regarding claim 23, Legland discloses that the application of the composition is carried out by first applying composition A to the eyebrows followed by application of developer composition B [0240-0241].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 1 and 10, Legland does not teach that any component of composition B may form hydrogen bonds with the polyphenols of composition A. However, this deficiency is cured by Purdue Chemistry.
Purdue Chemistry teaches that hydrogen bonding is an attractive force between a hydrogen atom covalently bonded to a very electronegative atom, such as nitrogen, oxygen, or fluorine, and another very electronegative atom (pg. 1).
Regarding claims 2 and 4, Legland doesn’t teach a single embodiment or example meeting all limitation of the invention of claims 2 and 4.
Regarding claim 14, Legland does not teach the mole ratio of reactive hydroxyl groups of the polyphenols to the reactive functional groups of the compound Y.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 1 and 10, it would have been prima facie obvious to one of ordinary skill in the art of filing that the ferrous gluconate present in composition B is capable of forming hydrogen bonds with the polyphenols present in composition A. One would have understood in view of Purdue Chemistry that hydrogen bonding may occur between a hydrogen atom covalently bonded to a very electronegative atom such as oxygen and another very electronegative atom (pg. 1). The artisan of ordinary skill would have had reasonable expectation of success because both ferrous gluconate and polyphenols contain hydroxyl groups capable of forming hydrogen bonds. See MPEP 2144.07.
Regarding claims 2 and 4, within the broader scope of Legland all of the limitations of the invention of claims 2 and 4 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Legland and arrive at this conclusion because such was contemplated by Legland.
Regarding claim 14, the mole ratio of reactive hydroxyl groups of the polyphenol to the reactive functional groups of compound Y is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mole ratio in order to best achieve the desired results as such would provide advantageous formulation effect for coating keratin materials. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. 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. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Legland teaches that the iron gluconate present in composition B makes it possible to obtain sought-after dark shades ranging from brown to black and that these salts allow metallic complexation on the keratin fiber [0099] and that the polyphenol functions as a natural dye [0005]. The Examiner considers it prima facie obvious to optimize the mole ratio of iron gluconate and polyphenol, and consequently their reactive hydroxyl groups, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mole ratio of iron gluconate and polyphenol, and consequently their reactive hydroxyl groups, would affect the color and shade of the keratin fiber coated by the compositions and therefore be an optimizable variable.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Legland (WO20120127431, publication date: 6/25/2020), in view of Purdue Chemistry (available 5/16/2011), as applied to claims 1, 2, 4-7, 9, 10, 12-17, and 21-23 above, and further in view of Matravers (U.S. Patent No. 6,099,591, issue date: 8/8/2000).
Applicant’s Invention
Legland, in view of Purdue Chemistry, renders obvious the relevant limitations of claim 1 above. Applicant’s claim 3 further adds the limitation of a process according to claim 1, in which the polyphenol X is epigallocatechin.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Legland teaches that catechol tannins may be used as the natural colorant in the composition A [0030].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Legland does not teach that epigallocatechins may be used as the natural colorant in the composition. However, this deficiency is cured by Matravers.
Matravers teaches the uses of green tea polyphenols such as epigallocatechin in compositions for coloring of human hair (col. 3, line 48).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional natural polyphenols used in hair dye compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Claims 18-20 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Legland (WO20120127431, publication date: 6/25/2020), in view of Purdue Chemistry (available 5/16/2011), as applied to claims 1, 2, 4-7, 9, 10, 12-17, and 21-23 above, and further in view of DeGeorge (U.S. Patent No. 7,905,926, issue date: 3/15/2011), as evidenced by PubChem (Hydroxyethylcellulose, available 9/14/2005).
Applicant’s Invention
Legland, in view of Purdue Chemistry, renders obvious the relevant limitations of claim 1 above. Applicant’s claim 18 further adds the limitation of a process according to claim 1 in which composition (A) and/or composition (B) comprises an oily phase. Applicant’s claim 19 further adds the limitation of the process according to claim 1 in which composition (A) and/or composition (B) is anhydrous.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 18-20 and 27, Legland teaches the relevant limitations of claim 1 as described above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 18 and 19, Legland does not teach an oily phase present in the composition. However this deficiency is cured by DeGeorge.
DeGeorge teaches a method of coloring hair involving the steps of providing a color base composition and providing a developer composition to the hair (col. 2 lines 19-35). The color base composition and/or developer composition may contain polyphenols (col. 19 lines 58-62). Both the color base composition and developer may contain a rheological modifier such as hydroxyehtylcellulose (col. 13 line 18). The developer composition may be substantially or totally anhydrous (col. 11 line 62 and col. 12 line 2). When the developer composition is substantially anhydrous or totally anhydrous, it may contain an organic solvent such as a mineral oil or straight chain hydrocarbons (col. 12 lines 7-20). PubChem (Hydroxyethylcellulose) teaches that hydroxyethylcellulose contains several hydroxyl groups (pg. 3, Structure).
Regarding claim 20, Legland does not teach an oily phase present in the composition. However this deficiency is cured by DeGeorge.
DeGeorge teaches a method of coloring hair involving the steps of providing a color base composition and providing a developer composition to the hair (col. 2 lines 19-35). When the developer composition is substantially anhydrous or totally anhydrous, it may contain an organic solvent such as mineral oil or straight chain hydrocarbons (col. 12 lines 7-20). The solvent may present in an amount ranging from 0.5% to 70% by weight relative to the total weight of the developer composition (col. 12 line 21-24).
Regarding claim 27, Legland does not disclose that an anhydrous composition B containing at least one dyestuff may be applied to the keratin material followed by a second coat with an aqueous composition A. However, this deficiency is cured by DeGeorge.
DeGeorge teaches a method of coloring hair involving the steps of providing a color base composition and providing a developer composition to the hair (col. 2 lines 19-35). The color base composition and/or developer composition may contain polyphenols (col. 19 lines 58-62). Both the color base composition and developer may contain a rheological modifier such as hydroxyethylcellulose (col. 13 line 18). DeGeorge also teaches that the developer composition can contain water as a solvent (col. 12 line 5). The color base composition can comprise at least one organic solvent (col. 9 line 6). The color base composition is applied prior to application of the developer composition (col. 2 lines 19-35). PubChem (Hydroxyethylcellulose) teaches that hydroxyethylcellulose contains several hydroxyl groups (pg. 3, Structure).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 18-20, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition A or B disclosed by Legland may contain an oily phase. One would have understood in view of DeGeorge that that a two-component hair coloring composition may comprise polyphenols and hydrogen bond-forming compounds such as hydromethylcellulose and an anhydrous developer composition containing mineral oil. It would have been obvious to include the anhydrous developer composition comprising a mineral oil solvent disclosed by DeGeorge with the color composition disclosed by Legland. The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional developers used in hair coloring compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding claim 27, it would have been prima facie obvious to one of ordinary skill in the art of filing that anhydrous composition B containing a dyestuff could be applied prior to a top coat of an aqueous composition A. One would have understood in view of DeGeorge that a coloring composition and a developer may each contain a polyphenol and a compound capable of forming hydrogen bonds with the polyphenol and that the coloring composition may be anhydrous and the developer may be aqueous. It would have been obvious that the anhydrous coloring composition containing a compound capable of forming hydrogen bonds may be applied prior to the aqueous developer composition containing a polyphenol. The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional coloring compositions and developers used in hair cosmetic processes. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Claims 1-4, 8-11, 15, 18, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over M.AC. Stars of Skincare Kit (available 2019, cited in the IDS filed 6/9/2023), in view of Purdue Chemistry (available 5/16/2011), as evidenced by INCIDecoder (Camellia Sinensis Leaf Extract, available 4/18/2017), ChEBI (Polysorbate 80, available 8/4/2014), PubChem (Polyoxyl 40 Hydrogenated Castor Oil, available 2014), and Cosmetic Ingredient Review (Safety Assessment of Camellia Sinensis-Derived Ingredients as Used in Cosmetics, available 11/15/2013).
Applicant’s Invention
Applicant’s claim 1 is drawn to a Cosmetic process for coating keratin materials comprising applying to said keratin materials: a) at least one composition (A) comprising, in a physiologically acceptable medium, at least one polyphenol X comprising at least two different phenol groups; and b) at least one composition (B) comprising, in a physiologically acceptable medium, at least one compound Y comprising at least two functional groups, which may be identical or different, which are capable of forming at least two hydrogen bonds with said phenol groups of the polyphenol X.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1-4, M.A.C. Stars of Skincare kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). The Prep+Prime Fix+ contains camellia sinensis leaf extract (green tea leaf extract) and PEG-40 hydrogenated castor oil. The Strobe Cream also contains camellia sinensis leaf extract, as well as polysorbate 80 (Ingredients, Standard Form). INCI Decoder teaches that camellia sinensis leaf extract is a green tea extract that contains polyphenols, specifically catechins. The four major types present are epigallocatechin gallate, epicatechin gallate, gallocatechin gallate, and epigallocatechin (pg. 2, second paragraph). Cosmetic Ingredient Review teaches that procyanidins are present in green tea leaf extract (pg. 59, List of Constituents in C. sinensis). ChEBI teaches that polysorbate 80 contains hydroxyl functional groups (pg. 2, Chemical Structure). PubChem (Polyoxyl 40 Hydrogenated Castor Oil) teaches that PEG40 hydrogenated castor oil contains hydroxyl functional groups (pg. 3, Structure). M.A.C. Stars of Skincare kit teaches that Strobe Cream is a moisturizer said to boost the look of dull skin and luminize with iridescent particles and that the product is formulated with ingredients to refresh and moisten, to boost the look of dull, flat or tired looking skin, and to brighten and clarify (Product Description).
Regarding claims 8, 9, and 11, M.A.C. Stars of Skincare Kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). The Prep+Prime Fix+ contains camellia sinensis leaf extract (green tea leaf extract) and PEG-40 hydrogenated castor oil. The Strobe Cream also contains camellia sinensis leaf extract, as well as polysorbate 80 (Ingredients, Standard Form). ChEBI teaches that polysorbate 80 is nonionic and contains hydroxyl functional groups (pg. 2, Chemical Structure). PubChem (Polyoxyl 40 Hydrogenated Castor Oil) teaches that PEG40 hydrogenated castor oil is nonionic and contains hydroxyl functional groups (pg. 3, Structure).
Regarding claim 10, M.A.C. Stars of Skincare Kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). The Prep+Prime Fix+ contains camellia sinensis leaf extract (green tea leaf extract) and PEG-40 hydrogenated castor oil. The Strobe Cream also contains camellia sinensis leaf extract, as well as polysorbate 80 (Ingredients, Standard Form). ChEBI teaches that polysorbate 80 is not a sugar (pg. 2, Chemical Structure). PubChem (Polyoxyl 40 Hydrogenated Castor Oil) teaches that PEG40 hydrogenated castor oil is not a sugar (pg. 3, Structure).
Regarding claim 15, M.A.C. Stars of Skincare Kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). The Prep+Prime Fix+ contains camellia sinensis leaf extract (green tea leaf extract) and PEG-40 hydrogenated castor oil. The Strobe Cream also contains camellia sinensis leaf extract, as well as polysorbate 80. Both Prep+Prime Fix+ and Strobe Cream contain water (Ingredients, Standard Form).
Regarding claim 18, M.A.C. Stars of Skincare Kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). The Prep+Prime Fix+ contains camellia sinensis leaf extract (green tea leaf extract) and PEG-40 hydrogenated castor oil. The Strobe Cream also contains camellia sinensis leaf extract, as well as polysorbate 80, dimethicone, and Simmondisa Chinensis Seed oil. (Ingredients, Standard Form).
Regarding claim 21, M.A.C. Stars of Skincare Kit teaches that the Prep+Prime Fix+ and Strobe Cream are packaged separately (see photograph).
Regarding claim 22, M.A.C. Stars of Skincare Kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). Prep+Prime Fix+ contains titanium dioxide, carmine, ferric and ferric ferrocyanide (pg. 2 Ingredients on Pack). Strobe Cream contains mica, titanium dioxide and red 4 (pg. 2 Ingredients on Pack). Strobe Cream is included in the shade Pinklite, a pink pearl shade (Product Description). The present specification defines dyestuff to include pigments intended to color and/or opacify the resulting composition and/or deposit ([00130]-[00132] of the instant specification). The Examiner therefore interprets the pigments disclosed by M.A.C. Stars of Skincare Kit to read on the “dyestuff” limitation of the instant claim.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 1, 8, 9, and 11, M.A.C. Stars of Skincare kit does not does not teach that any component of either composition may form hydrogen bonds with the polyphenols of the other composition. However, this deficiency is cured by Purdue Chemistry.
Purdue Chemistry teaches that hydrogen bonding is an attractive force between a hydrogen atom covalently bonded to a very electronegative atom, such as nitrogen, oxygen, or fluorine, and another very electronegative atom (pg. 1).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1, 8, 9, and 11, it would have been prima facie obvious to one of ordinary skill in the art of filing that the PEG40 hydrogenated castor oil present in the Prep+Prime Fix+ cream and the polysorbate 80 present in the Strobe Cream is capable of forming hydrogen bonds with the polyphenols present in either cream. One would have understood in view of Purdue Chemistry that hydrogen bonding may occur between a hydrogen atom covalently bonded to a very electronegative atom such as oxygen and another very electronegative atom (pg. 1). The artisan of ordinary skill would have had reasonable expectation of success because PEG40 hydrogenated castor oil, polysorbate 80, and polyphenols contain hydroxyl groups capable of forming hydrogen bonds. See MPEP 2144.07.
Claims 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over M.AC. Stars of Skincare Kit (available 2019, cited in the IDS filed 6/9/2023), in view of Purdue Chemistry (available 5/16/2011), as applied to claims 1-4, 8-11, 15, 18, 21, and 22 above, and further in view of Makeup and Beauty Blog (MAC Makeup Ready Skin, available 1/9/2019).
Applicant’s Invention
M.A.C. Stars of Skincare Kit, in view of Purdue Chemistry, renders obvious the relevant limitations of claims 1 and 22 above. Applicant’s claim 23 further adds the limitation of a process for making up keratin materials according to Claim 22, in which the following are successively applied: a) a first coat of makeup on the keratin materials with a composition (A) (base coat) according to Claim 22, comprising at least one dyestuff, and then b) on the first coat of makeup a second coat with a composition (B) according to Claim 22. Applicant’s claim 24 adds the limitation of a process for making up keratin materials according to Claim 22 in which the following are successively applied: a) a first coat of makeup on the keratin material with a composition (B according to Claim 22 comprising at least one dyestuff, and then b) on the first coat of makeup a second coat (top coat) with a post-treatment with a composition (A) according to Claim 22. Applicant’s claim 25 further adds the limitation of a process for making up keratin materials according to Claim 22, in which the following are successively applied: a) a first coat on the keratin material for pretreatment of the keratin materials with a composition (A), and then b) on the first, a second coat for making up the keratin materials with a composition (B) according to Claim 22 comprising at least one dyestuff. Applicant’s claim 26 further adds the limitation of a process for making up keratin materials according to Claim 22, in which the following are successively applied: a) a first coat on the keratin material for pretreatment of the keratin materials with a composition (B), and then b) on the first coat, a second coat for making up the keratin materials with a composition (A) according to Claim 22 comprising at least one dyestuff.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 23-26, M.A.C. Stars of Skincare Kit teaches the relevant limitations of claims 23-26 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 23-26, M.A.C. Stars of Skincare Kit does not teach a sequence for applying Prime+Prep Fix+ and Strobe Cream. However, this deficiency is cured by Makeup and Beauty Blog.
Makeup and Beauty Blog teaches that Prime+Prep Fix+ may be used before the application of makeup to prime the skin and after makeup application the set the products (pg. 3-4, MAC Prep+Prime Fix+). Strobe Cream may be worn on bare skin or mixed with foundation during makeup application (pg. 5, Strobe Cream in Pinklite).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 23-26, it would have been prima facie obvious to one of ordinary skill in the art of filing that Prime+Prep Fix+ and Strobe Cream may be applied in any order. One would have understood in view of M.A.C. Stars of Skincare Kit and Purdue Chemistry that both Prime+Prep Fix+ and Strobe Cream contain polyphenols, a compound capable of forming hydrogen bonds with the polyphenol, and a pigment. One would have also understood in view of Makeup and Beauty Blog that Prime+Prep Fix+ may be applied both before and after the application of makeup. It would have been obvious that both Prime+Prep Fix+ and Strobe Cream meet the limitations of compositions A and B of the instant claims, including dyestuff, and that Prime+Prep Fix+ may be applied both before and after application of Strobe Cream. One of ordinary skill in the art of filing would have been motivated to apply Prime+Prep Fix+ before makeup application to prime the skin for makeup application or after makeup application in order to set the makeup on the skin. The artisan of ordinary skill would have had reasonable expectation of success because Makeup and Beauty Blog teaches that Prime+Prep Fix+ may be applied both before and after makeup application and that Strobe Cream may be applied with foundation makeup.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of copending Application No. 18/256,753.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘753 application embrace a process for making up keratin materials comprising successively applying to keratin materials, independently of the order a coat formed by applying on the keratin materials simultaneously or successively, irrespective of the order, at least one composition (A) comprising, in a physiologically acceptable medium, at least one polyphenol X comprising at least two different phenol groups and at least one composition (B) comprising, in a physiologically acceptable medium, at least one compound Y comprising at least two functional groups, identical or different, which are capable of forming at least two hydrogen bonds with the phenol groups of the polyphenol. Composition (A) and or/composition (B) comprises at least one aqueous phase, an oily phase, or may be anhydrous. The water may be present in a concentration of greater than 30% by weight and the oily phase concentration may be greater than 10% by weight. The polyphenol is chosen from catechin tannins, epigallocatechin, procyanidin or a mixture of procyanidins, and tannic acid. The polyphenol is present in a content equal or greater than 0.8% or 1-30% by weight relative to the total weight of the composition containing it. The compound Y does not contain any anionic group or is nonionic and contains at least two functional groups chosen from hydroxyl, acid anhydride, amine, amide, carbamate, urethane, carbamide, urea, thiol, glyceryl, acrylate, acrylamide, vinylpyrrolidone, vinyl alcohol, vinylamine, vinylformamide, and mixtures thereof. The compound Y is different from the sugars obtained from fruits or vegetables. The compound Y is present in a content equal or greater than 0.8% or 1-20% by weight relative to the total weight of the composition containing them. The pH of the composition (A) and/or of composition (B) is less than 8.0. The mole ratio of the reactive hydroxyl groups of the polyphenol to the reactive functional groups of compound Y ranges from 1/3 to 20. The claims of the ‘753 application also embrace a cosmetic kit for coating keratin materials comprising composition (A) and composition (B) packaged separately.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 22-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of copending Application No. 18/256,753, in view of M.AC. Stars of Skincare Kit (available 2019, cited in the IDS filed 6/9/2023), as evidenced by INCIDecoder (Camellia Sinensis Leaf Extract, available 4/18/2017), ChEBI (Polysorbate 80, available 8/4/2014), and PubChem (Polyoxyl 40 Hydrogenated Castor Oil, available 2014).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘753 application teach the relevant limitations as described above. The claims of the ‘753 application do not embrace a dyestuff present in composition (A) or (B). However, this deficiency is cured by M.A.C. Stars of Skincare Kit. M.A.C. Stars of Skincare kit contains Prep+Prime Fix+ and Strobe Cream (Product Description). The Prep+Prime Fix+ contains camellia sinensis leaf extract (green tea leaf extract) and PEG-40 hydrogenated castor oil. The Strobe Cream also contains camellia sinensis leaf extract, as well as polysorbate 80 (Ingredients, Standard Form). INCI Decoder teaches that camellia sinensis leaf extract is a green tea extract that contains polyphenols, specifically catechins. The four major types present are epigallocatechin gallate, epicatechin gallate, gallocatechin gallate, and epigallocatechin (pg. 2, second paragraph). Cosmetic Ingredient Review teaches that procyanidins are present in green tea leaf extract (pg. 59, List of Constituents in C. sinensis). ChEBI teaches that polysorbate 80 contains hydroxyl functional groups (pg. 2, Chemical Structure). PubChem (Polyoxyl 40 Hydrogenated Castor Oil) teaches that PEG40 hydrogenated castor oil contains hydroxyl functional groups (pg. 3, Structure). M.A.C. Stars of Skincare kit teaches that Strobe Cream is a moisturizer said to boost the look of dull skin and luminize with iridescent particles and that the product is formulated with ingredients to refresh and moisten, to boost the look of dull, flat or tired looking skin, and to brighten and clarify (Product Description).
It would have been prima facie obvious to include a dyestuff in the composition (A) or (B) embraced by the claims of the ‘753 application. One would have understood in view of M.A.C. Stars of Skincare Kit that a composition for coating keratin materials that contains both a polyphenol and a compound capable of forming hydrogen bonds with the polyphenol may also include a pigment. It would have been obvious that the compositions embraced by the claims of the ’753 application may also contain a pigment. One of ordinary skill in the art of filing would have been motivated to include a pigment in the composition (A) or (B) in order to provide additional color to the keratin material to which it is applied. The artisan of ordinary skill would have had reasonable expectation of success because M.A.C. Stars of Skincare Kit teaches that a composition that contains a polyphenol and a compound capable of forming hydrogen bonds with the polyphenol may also include a pigment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of copending Application No. 18/256,763.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘763 application embrace a process which comprises applying to keratin materials at least one composition (A) comprising at least one polyphenol comprising two different phenol groups and at least one composition (B) comprising at least one nonionic polysaccharide Y. The compositions (A) and (B) may be applied successively, irrespective of the order of application. The polyphenol has a hydrogen bonding interaction with the polysaccharide. The polyphenol is chosen from catechin tannins, epigallocatechin, procyanidin or a mixture of procyanidins, or tannic acid. The polyphenol is present in a content greater than 0.8% or 1-30% by weight. The nonionic polysaccharide is different from sugars obtained from fruits or vegetables and is present in a content equal or greater than 0.8% or 1-30% by weight. The mole ratio of the reactive hydroxyl groups of the polyphenol to the hydrogen bonding-acceptor groups of the nonionic polysaccharide ranges from 1/3 to 20. Compositions (A) and (B) may comprise an aqueous phase, an oily phase, or be anhydrous. Water may be present in composition (A) or (B) in a concentration of greater than 30% by weight. The oily phase concentration is greater than 10% by weight. The pH of composition (A) or (B) is less than 8.0. Composition (A) and/or (B) may comprise at least one dyestuff which is synthetic, natural, or of natural origin. The claims of the ‘763 application also embrace a cosmetic kit for coating keratin materials comprising composition (A) and composition (B) packaged separately.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-42 of copending Application No. 18/256,765.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘765 application embrace a process which comprises applying to keratin materials at least one composition (A) comprising at least one polyphenol comprising two different phenol groups and at least one composition (B) comprising at least one monoglycerolated and/or polyglycerolated polyoxyalkylenated nonionic compound Y. The compositions (A) and (B) may be applied successively, irrespective of the order of application. The polyphenol has a hydrogen bonding interaction with the compound Y. The polyphenol is chosen from catechin tannins, epigallocatechin, procyanidin or a mixture of procyanidins, or tannic acid. The polyphenol is present in a content greater than 0.8% or 1-30% by weight. The compound Y is present in a content equal or greater than 0.8% or 1-30% by weight. The mole ratio of the reactive hydroxyl groups of the polyphenol to the hydrogen bonding-acceptor groups of the nonionic polysaccharide ranges from 1/3 to 20. Compositions (A) and (B) may comprise an aqueous phase, an oily phase, or be anhydrous. Water may be present in composition (A) or (B) in a concentration of greater than 30% by weight. The oily phase concentration is greater than 10% by weight. The pH of composition (A) or (B) is less than 8.0. Composition (A) and/or (B) may comprise at least one dyestuff which is synthetic, natural, or of natural origin. The claims of the ‘765 application also embrace a cosmetic kit for coating keratin materials comprising composition (A) and composition (B) packaged separately.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of copending Application No. 18/256,772.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘772 application embrace a process which comprises applying to keratin materials at least one composition (A) comprising at least one polyphenol comprising two different phenol groups and at least one composition (B) comprising at least one compound Y comprising at least two functional groups capable of forming at least two hydrogen bonds with the polyphenol. The compositions (A) and (B) may be applied successively, irrespective of the order of application. The polyphenol is chosen from catechin tannins, epigallocatechin, procyanidin or a mixture of procyanidins, or tannic acid. The polyphenol is present in a content greater than 0.8% or 1-30% by weight. The compound Y is nonionic and different from the sugars obtained from fruits or vegetables. The compound Y is present in a content equal or greater than 0.8% or 1-30% by weight. The mole ratio of the reactive hydroxyl groups of the polyphenol to the hydrogen bonding-acceptor groups of the nonionic polysaccharide ranges from 1/3 to 20. Compositions (A) and (B) may comprise an aqueous phase, an oily phase, or be anhydrous. Water may be present in composition (A) or (B) in a concentration of greater than 30% by weight. The oily phase concentration is greater than 10% by weight. The pH of composition (A) or (B) is less than 8.0. Composition (A) and/or (B) may comprise at least one dyestuff which is synthetic, natural, or of natural origin. The claims of the ‘772 application also embrace a cosmetic kit for coating keratin materials comprising composition (A) and composition (B) packaged separately.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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