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 .
Specification – Abstract
The abstract of the disclosure is objected to because it is 311 words and three paragraphs. The abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). The abstract is objected to because it should be in narrative form. The abstract as currently filed is in the form of a 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.
Previous
1) Claims 1-8, 10-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lahousse (WO 2013/102570 A2, publication date 07/11/2013).
Regarding instant claims 1, 2, 4, 6, 7 and 12, Lahousse “is directed towards proposing cosmetic compositions comprising alkylcellulose, which are intended in particular for making up and/or caring for the lips or the skin, especially the lips, which are capable of producing a deposit, especially a makeup deposit, which shows good cosmetic properties, especially in terms of comfort, absence of tack and gloss” [p. 1, lines 1-8]. Lahousse discloses cosmetic compositions comprising a water-in-oil emulsion of at least alkyl cellulose, at least one first hydrocarbon-based non-volatile oil, chosen from C 1-C26 alcohols, at least one second non-volatile oil chosen from silicone oils and/or fluoro oils or hydrocarbon-based oils other than the said first oil and at least one emulsifying surfactant [title & abstract]. The C10-C26 alcohols are fatty alcohols first oil [p. 11, lines 2-3] includes octyldodecanol (i.e., instant claim 4) [p. 11, line 21]. The second oil chosen from hydrocarbon-based oil may be castor oil (i.e., non-hydroxylated vegetable oil according to instant claims 6 and 7) [p. 25 line 3]. The “emulsifying surfactant is chosen from fatty acid esters of polyols such as sorbitan” [p. 40, lines 19-20]. Lahousse further discloses that the composition may comprise an active agent chosen from polyhydric alcohols, such as glycerol (i.e., a C3 polyol comprising at least 2 hydroxyl groups; instant claim 12) [p. 58, lines 10-11]. Finally, the alkyl cellulose comprises at least 4% by weight of the composition and may be ethyl cellulose [p. 7, lines 7-10].
Lahousse teaches the components of the instantly recited emulsion and uses each component for their established function in the art, but does not anticipate the claims because the instantly claimed components are not explicitly combined together into a single embodiment or example. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art, at the time of filling, to have combined the known components for their established functions with predictable results. One would have been motivated to combine the components in order to formulate the cosmetic composition taught by Lahousse. One would have had a reasonable expectation of success because Lahousse discloses each component is useful in the cosmetic composition. Lastly, in combining these components one would have expected nothing more than predictable results because, when combined, each component would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Furthermore, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the range disclosed in the prior art for the amount of ethyl cellulose present in composition (at least 4% w/w) overlaps with the instantly claimed ranges (at least 8% w/w and 8-17% w/w; instant claims 1 and 2) and a prima facie case of obviousness exists for each claimed range.
Finally, instant claim 1 recites product by process language, namely; “wherein the ethylcellulose is added in pulverulent form during preparation of the oily phase and forms a homogenous mixture in the oily phase.” "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113.). In the present case, the compositions of the instant claims and the compositions of the prior art are the same and provide the same effect, e.g., glossy, low tack composition for making up lips (see Instant Specification at [0010] and Lahousse at page 1, lines 1-8). Therefore, even though the composition of prior art and the composition of the instant claims are made by different methods, the final products are the same and so the composition of the prior art reads on the composition of the instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a water-in-oil emulsion comprising at least 8% w/w ethyl cellulose, at least one C10-C26 fatty alcohol (octyldodecanol), at least one non-hydroxylated vegetable oil (castor oil) and at least one sorbitan ester.
Regarding instant claims 3, 5, 8, 10, 15 and 19, Lahousse discloses the composition comprises at least 5% by weight water [abstract]. Lahousse also discloses “the invention comprises one or more first non-volatile hydrocarbon-based oil(s) [octyldodecanol] in a content ranging from 5% to 75%” [p. 10, lines 15-16] and “the non-volatile oil(s) chosen from silicone oils and/or fluoro oils or hydrocarbon-based oil other than the said first oil [castor oil] are present in a total content ranging from 5% to 75% by weight” [p. 12, lines 13-15]. The emulsifying surfactants (i.e., sorbitan esters) may be present in amounts from 0.1% to 20% by weight of the composition [p. 42, lines 18-19].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the ranges in the prior art for the aqueous phase (at least 5% w/w), first oil (i.e., octyldodecanol; 5-75%w/w), second oil (i.e., castor oil; 5-75% w/w) and sorbitan esters (0.1-20% w/w) overlap with the corresponding instantly claimed amounts of aqueous phase (less than 40% w/w and 5-40% w/w; instant claims 3 and 15), first oil (20-60% w/w; instant claim 5), second oil (1-32% w/w; instant claim 8) and sorbitan esters (1-7% w/w; instant claim 10). Therefore, a prima facie case of obviousness exists for each. Furthermore, because the first oil (octyldodecanol) and the second oil (castor oil) are disclosed to be present in the same amounts (e.g., 5-75% w/w and 5-75% w/w), the ratio of first oil to second oil in the prior art (50/50) overlaps with the instantly claimed ratio (50/50 to 90/10; instant claims 19 and 17). Therefore, a prima facie case of obviousness also exists for the ratio of first oil to second oil.
Regarding instant claims 11, Lahousse discloses ethylcellulose was provided as an aqueous dispersion which comprises 1.3% w/w sodium lauryl sulfate and 26.2% w/w ethylcellulose [p. 8, lines 13-15 and p. 66, table at row 1].
A final composition comprising ethylcellulose in amounts greater than 8% w/w (i.e., instant claim 1) would require at least about 31% w/w of the aqueous dispersion desired by Lahousse. Such a composition would therefore comprise about 0.4% w/w sodium lauryl sulfate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range of anionic surfactants (i.e., less than 1% w/w) overlaps with the range of the prior art, and so a prima facie case of obviousness exists.
Regarding instant claim 13, Lahousse discloses “[t]he composition in accordance with the invention may comprise, besides water, at least one water-soluble solvent” [p. 39, lines 8-9] which includes lower monoalcohols containing from 1 – 5 carbon atoms [p. 39, lines 25-26].
Regarding instant claims 14 and 20, Lahousse discloses the composition may further comprise an additional oil which is not the non-volatile hydrocarbon-based first oil or the non-volatile second oil chosen hydrocarbon-based oils [p. 25, 7-10]. According to Lahousse, the additional oil may be a hydrocarbon based volatile oil [p. 27, line 13] and may be present in amounts from 0.1% to 30% by weight of the composition [p. 27, lines 24-25].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the preset case, the range of volatile oils overlaps with the instantly claimed range (less than or equal to 10% w/w; instant claim 20) and a prima facie case of obviousness exists.
Regarding instant claim 16, Lahousse discloses the composition “may also comprise any additional component usually used in cosmetics, such as dyestuffs” (i.e., colorant) [p. 58, lines 24-25].
Regarding instant claim 18, Lahousse discloses the compositions “are intended in particular for making up and/or caring for the lips or the skin, especially the lips” [p. 1, lines 5-6]. Lahousse also discloses the “process for making up and/or caring for the lips and/or the skin, in particular the lips, comprising at least one step that consists in applying to the lips” [p. 7, lines 2-3]. It would have been obvious to one of ordinary skill in the art, at the time of filling, to have applied the composition taught by Lahousse to keratin material (lips). It would have been obvious because Lahousse discloses applying the composition to the lips is one intended purpose of the disclosed compositions.
2) Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lahousse (WO 2013/102570 A2, publication date 07/11/2013) as applied to instant claims 1-8, 10-16 and 18-20 above, and further in view of Koyama et al. (JP 2020/176067 A, publication date 10/29/2020; citing English machine translation), Klein (Cosmetics & Toiletries magazine, October 2003, Vol. 118, No. 10), and Mitsubishi (Surfhope se cosme, Mitsubishi-Kagaku Foods Corporation, 2005).
Lahousse, which is taught above, differs from the instant claim 9 insofar as it does not teach sucrose esters. Lahousse does disclose surfactants used the composition should have an HLB (hydrophobic/lipophilic balance) of less than 7 [p. 40, lines 17-18].
Koyama discloses a cosmetic composition comprising which may be formulated as a water-in-oil emulsion [p. 28, last para.]. The composition may further comprise ethyl cellulose [p. 19, line 3], an oily base such as 2-octyldodecanol [p. 12, lines 3-6], castor oil [p. 12, ¾ down paragraph 2] and glycerin [p. 14, para. 2]. Koyama also discloses surfactants useful in the invention include sorbitan monooleate, sorbitan monoisostearate, sorbitan monolaurate, sorbitan monopalmitate, sorbitan monostearate (i.e., sorbitan esters) as well as sucrose fatty acid esters [p. 17, ¼ down para. 1].
Klein relates to cosmetic compositions [journal title] and discloses that “[f]ormulating water-in-oil emulsions is inherently more difficult than oil-in-water emulsions” [first sentence] and that sucrose esters are known emulsifiers for water-in-oil emulsions [p. 25, left col., second para.].
Koyama and Klein do not disclose the HLB of sucrose esters.
Mitsubishi discloses sucrose fatty acid esters, used in cosmetics, may have HLB values less than 7 [p. 4, row C-1202, -1205 and -1601 of Cosmetic Grade column].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the sorbitan esters of Lahousse with sucrose esters because Koyama discloses they are both useful in water-in-oil cosmetic compositions. One would have been motivated to do so because Klein discloses that, while water-in-oil emulsions are difficult to formulate, sucrose esters are known to work as emulsifiers. One would have had an expectation of success because Koyama discloses a similar composition which utilizes sucrose esters. Additionally, one would have had an expectation of success because Mitsubishi discloses sucrose fatty acid ester surfactants used in cosmetics may have HLB values less than 7, as desired by Lahousse. The skilled artisan would have been motivated to have substituted the sucrose fatty acid esters of Koyama in place of the sorbitan fatty acid esters of Lahousse as surfactants with a reasonable expectation of success. The simple substitution of one known element (e.g., the sucrose fatty acid ester of Koyama) in place of another (e.g., the sorbitan fatty acid ester of Lahousse) in order to achieve predictable results (surfactant) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
3) Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lahousse (WO 2013/102570 A2, publication date 07/11/2013) as applied to instant claims 1-8, 10-16 and 18-20 above, and further in view of Koyama et al. (JP 2020/176067 A, publication date 10/29/2020; citing English machine translation), Klein (Cosmetics & Toiletries magazine, October 2003, Vol. 118, No. 10), Mitsubishi (Surfhope se cosme, Mitsubishi-Kagaku Foods Corporation, 2005) and Cecchini et al. (Happi Magazine, 11/03/2010, accessed 7/30/2025 from the internet; https://www.happi.com/silicone-alternatives-in-personal-care/).
Lahousse, which is taught above, differs from the instant claims insofar as it does not teach sucrose laurate, sucrose palmitate, and dicaprylyl ether. As discussed in rejections of instant claims 1, 4, 6, 12, 16 and 19 above, Lahousse teaches a composition comprising at least 8% ethyl cellulose, fatty alcohols (octyldodecanol) as a first oil, castor oil as a second oil, sorbitan esters as surfactants, glycerol, dyes and a 50/50 ratio of first oil to second oil.
Regarding the independent claim 17, as stated in the rejections above Lahousse discloses the following amounts of ethyl cellulose, octyldodecanol, second oil (castor oil), surfactants, glycerol (polyol) and aqueous phase (i.e., water, glycerol, and surfactant):
Table 1. Percent ranges for amounts of each component according to Lahousse and to instant claim 17.
Component
Prior Art Range (% w/w)
Prior Art Citation (page, row)
Instant Claim 17 (% w/w)
Ethyl cellulose
4 to 60
7, 19
11 to 14
Octyldodecanol
5 to 75
10, 15-17
30 to 50
Second Oil (castor oil)
5 to 75
21, 1-4
NA
Surfactants (sorbitol ester)
1 to 20
42, 18-19
2 to 7
Glycerol (polyol)
0.001 to 30
58, 19-20
10 to 20
Aqueous Phase
5 to 80
39, 29-31
15 to 20
Lahousse further discloses the dyes may be liposoluble and water-soluble dyes [p. 59, line 9], which may produce a transparent solution [p. 59, line 20]. Lahousse also discloses surfactants used the composition should have an HLB (hydrophobic/lipophilic balance) of less than 7 [p. 40, lines 17-18].
Lahousse does not disclose sucrose palmitate, sucrose laurate and dicaprylyl ether.
Koyama discloses a cosmetic composition which may be formulated as a water-in-oil emulsion [p. 28, last para.]. The composition may further comprise ethyl cellulose [p. 19, line 3], an oily base such as 2-octyldodecanol [p. 12, lines 3-6], castor oil [p. 12, ¾ down paragraph 2] and glycerin [p. 14, para. 2]. Koyama also discloses surfactants useful in the invention include sorbitan monooleate, sorbitan monoisostearate, sorbitan monolaurate, sorbitan monopalmitate, sorbitan monostearate (i.e., sorbitan esters) as well as sucrose fatty acid esters [p. 17, ¼ down para. 1], such as sucrose laurate and sucrose palmitate [p. 8, para. 2]. Koyama also discloses an acceptable oil to use in the composition is dicaprylyl ether [p. 13, 5th to last line].
Klein relates to cosmetic compositions [journal title] and discloses that “[formulating water-in-oil emulsions is inherently more difficult than oil-in-water emulsions” [first sentence] and that sucrose esters are known emulsifiers for water-in-oil emulsions [p. 25, left col., second para.].
Koyama and Klein do not disclose the HLB of sucrose esters.
Mitsubishi discloses sucrose laurate and sucrose palmitate, used in cosmetics, may have HLB values less than 7 [p. 4, row C-1202, -1205 and -1601 of Cosmetic Grade column].
Cecchini relates to cosmetic emulsions [p. 2, 3rd para.] and teaches that dicaprylyl ether combines high spreadability with good stability [p. 2, 5th para.].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the sorbitan esters of Lahousse with sucrose laurate and sucrose palmitate because Koyama discloses sucrose laurate and sucrose palmitate are both useful in water-in-oil cosmetic compositions. One would have been motivated because Klein discloses that, while water-in-oil emulsions are difficult to formulate, sucrose esters are known to work as emulsifiers. One would have had an expectation of success because Koyama discloses a similar composition which utilizes sucrose esters. Additionally, one would have had an expectation of success because Mitsubishi discloses sucrose laurate and sucrose palmitate surfactants used in cosmetics may have HLB values less than 7, as desired by Lahousse. The skilled artisan would have been motivated to have substituted the sucrose laurate and sucrose palmitate of Koyama in place of the sorbitan fatty acid esters of Lahousse as surfactants with a reasonable expectation of success. The simple substitution of one known element (e.g., the sucrose laurate and sucrose palmitate of Koyama) in place of another (e.g., the sorbitan fatty acid ester of Lahousse) in order to achieve predictable results (surfactant) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Similarly, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the castor oil of Lahousse with the dicaprylyl ether of Koyama. One would have been motivated to do so because dicaprylyl ether was known to combine good spreadability and stability in cosmetic emulsions, according to Cecchini. One would have had an expectation of success because Koyama discloses a similar composition which utilizes either castor oil or dicaprylyl ether as the oily base of an emulsion. The simple substitution of one known element (e.g., dicaprylyl ether of Koyama) in place of another (e.g., castor oil of Lahousse) in order to achieve predictable results (emulsion oil) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case the prior art ranges for ethyl cellulose, octyldodecanol, second oil (castor oil or dicaprylyl ether), surfactants, glycerol (polyol) and aqueous phase (i.e., water, glycerol, and surfactant) all overlap with the corresponding instantly claimed ranges, see Table 1. As such, a prima facie case of obviousness exists for each range. Furthermore, because the first oil (octyldodecanol) and the second oil are disclosed to be present in the same amounts (e.g., 5-75% w/w and 5-75% w/w), the ratio of first oil to second oil in the prior art (50/50) overlaps with the instantly claimed ratio (50/50 to 90/10). Therefore, a prima facie case of obviousness also exists for the ratio of first oil to second oil.
Finally, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have formulated to composition to be transparent because Lahousse discloses the added dyes may form a transparent solution. One of ordinary skill in the art would have appreciated that the addition of transparent dyes teaches a transparent composition.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a transparent composition provided as a water-in-oil (inverse) emulsion comprising: ethyl cellulose, octyldodecanol, dicaprylyl ether, sucrose laurate, sucrose palmitate, glycerol, an aqueous phase (i.e., water, polyol and water-soluble surfactants) and at least one fat or water-soluble due, wherein each component and the ratio of first oil (octyldodecanol) and second oil (dicaprylyl ether) are within the instantly claimed ranges.
Response to Arguments
1) On page 9 of their remarks, Applicant request withdraw of the objection to the abstract in view of the new abstract provided 11/25/2025.
The Examiner respectfully maintains the objection to the abstract. While the new abstract conforms the word limits, the abstract is not in narrative form. See MPEP 608.01(b) I (c).
2) On pages 9-10 of their remarks, Applicant argues the instant claims are not obvious because the ethylcellulose is added in pulverulent form to the oily phase, not as an aqueous dispersion as taught by the prior art.
This argument is not persuasive. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113.).
As discussed above, the instant claims are examined with respect to the composition of the product. In the present case, the final compositions for the products of the prior art and the instant claims are the same and the products provide the same effect, e.g., glossy, low tack composition for making up lips (see Instant Specification at [0010] and Lahousse at page 1, lines 1-8). Thus, even though the products of the instant claims are made with different method steps, those method steps do not distinguish the instant products from the products of the prior art.
Furthermore, the Examiner respectfully disagrees with Applicant’s assertion that the prior art comprises the ethylcellulose in the aqueous phase. For the preparation of the examples on page 67, paragraph 3, Lahousse discloses:
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Wherein the ethylcellulose was provided as an aqueous dispersion [p. 66, row 1]. Considering the mixing of the ethylcellulose dispersion and octyldodecanol, one of ordinary skill in the art would have expected migration of ethylcellulose out of the aqueous dispersion and into the octyldodecanol (i.e., oily phase). See, for example, Arnaud et al. (US 5,908,631, date of patent 06/01/1999). Arnaud discloses that ethylcellulose is a water-insoluble polymer [col. 1, line 49], but that it may be substantially solubilized in a fatty alcohol [abstract], such as octyldodecanol [col. 6, lines 11-12].
3) On page 11 of their remark, Applicant argues that none of the references cure the alleged deficiencies of Lahousse.
This argument is not persuasive. The rejections stand for the reasons above and of record.
Conclusion
THIS ACTION IS MADE FINAL. 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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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612