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 .
DETAILED ACTION
The Applicant’s reply filed on 3/20/26 is acknowledged. Claims 1-24 are pending. Claim 18 has been withdrawn. Claims 1-17 and 19-20 have been amended. Claims 22-24 are new. Claims 1-17 and 19-24 are under consideration.
Objections Withdrawn
The objection to the abstract is withdrawn in view of the amended abstract.
The objection to claims 1-17 and 19-21 is withdrawn in view of the amended claims.
Rejections Withdrawn
The rejection of Claims 4-11 and 21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claim(s).
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Lahousse (WO 2013/102570; cited in IDS) in view of Lebreux (“Preservative Deep Dive: Phthalates, Silicones, and their Alternatives” Ultrus; 2017).
Lahousse teaches a water-in-oil emulsion (e.g. abstract, Claim 1) comprising
- ethyl cellulose (e.g. page 3; Example 1);
- octyldodecanol (i.e. at least one first non-volatile oil that is liquid at 25°C, chosen from saturated or unsaturated, linear or branched C10-C26 fatty alcohols) (e.g. page 11, Example 1);
- at least one second non-volatile oil chosen from silicone oils and hydrocarbon-based oils other than the said first oil (e.g. Claim 1, pages 12, 21, 23); and
- a nonionic surfactant polyglyceryl-4 isostearate (i.e. a first non-ionic hydrocarbon-based surfactant) (e.g. pages 42-43; Example 1).
Lahousse does not teach that the second non-volatile oil is a hydrocarbon oil is liquid at 25°C chosen from ethers of formula ROR', carbonates of formula RO(CO)OR', or as recited in Claim 6.
This is made up for by the teachings of Lebreux.
Lebreux teaches alternatives to silicones in cosmetic compositions (e.g. page 1). Lebreux teaches Cyclopentasiloxane (D5) is a Dimethicone which has raised both safety and environmental concerns in the EU (as well as other countries such as Canada) (e.g. page 4). “The initial restriction of D5 at less than 0.1% in wash-off products should be extended to leave-on products, causing the end of this remarkable ingredient at relatively short notice.” (e.g. page 4). Lebreux teaches, as alternatives to silicones, that dicaprylyl ether, combines a very high spreadability with good stability, and dicaprylyl carbonate, significantly improves the sensory performance of the final formulation (e.g. page 6).
Regarding Claims 1, 4, 6, 10 and 21, it would have been obvious to one of ordinary skill in the art at the time of filing to select dicaprylyl ether or dicaprylyl carbonate as the second non-volatile oil of Lahousse. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Lahousse teaches the inclusion of at least one second non-volatile oil chosen from silicone oils and hydrocarbon-based oils other than the said first oil (e.g. Claim 1, pages 12, 21, 23). One of ordinary skill in the art would have been motivated to select the hydrocarbons dicaprylyl ether or dicaprylyl carbonate, as disclosed by Lebreux in order to overcome the safety and environmental concerns with silicones and obtain the benefits of spreadability, stability, and improved sensory performance. One of ordinary skill in the art would have predicted success as Lahousse teaches that the non-volatile oil is chosen from silicone oils or hydrocarbon-based oils other than the said first oil.
Regarding Claim 2, Lahousse exemplifies 6.55 wt% (26.2% in water of 25 wt%), which is within the claimed range (e.g. Example 1).
Regarding Claims 3 and 14, Lahousse exemplifies 12.28 wt% water, which is within the claimed range (e.g. Example 1).
Regarding Claim 5, Lahousse exemplifies 25 wt% octyldodecanol, which is within the claimed range (e.g. Example 1).
Regarding Claims 7 and 8, Lahousse further teaches the inclusion of at least one non-volatile hydrocarbon-based oil of ester type, that is liquid at 25°C, including hydrocarbon-based plant oils (e.g. page 24-25) present at 5-75 wt%, which overlaps with the claimed range (e.g. page 12). Lahousse teaches that the second oil is present at 5-75 wt% (e.g. page 12), this results in ratios of 0.067-15:1, which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 11, Lahousse exemplifies 0.86 wt% polyglyceryl-4 isostearate (e.g. Example 1), which is slightly below the claimed range. However, Lahousse more broadly teaches 0.1-20 wt% of surfactant, which overlaps with the claimed range (e.g. page 42). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 12, Lahousse further teaches the inclusion of moisturizers, including propylene glycol (i.e. at least one liquid polyol chosen from saturated or unsaturated, linear or branched C2-C8 compounds comprising at least 2 hydroxyl groups) (e.g. page 54).
Regarding Claim 13, Lahousse further teaches the inclusion of water soluble solvents including C1-C5 monoalcohols (e.g. page 39).
Regarding Claim 15, Lahousse exemplifies 0.325 wt% sodium lauryl sulfate (anionic surfactant) ( 1.3 % of 25 wt%) (e.g. Example 1).
Regarding Claim 16, Lahousse exemplifies the inclusion of pigments (e.g. Example 1).
Regarding Claims 17 and 20, Lahousse further teaches the inclusion of a 0.1-30 wt% of volatile oil, or may be free of volatile oil (e.g. page 25-26).
Regarding Claim 19, Lahousse teaches that ethyl cellulose may be present at 4-60 wt%, which overlaps with the claimed range (e.g. page 4).
Regarding Claims 22 and 23, Lahousse teaches the second non-volatile oil may be one or more non-volatile silicone oils and/or non-volatile fluoro oils or hydrocarbon-based oil other than the said first oil (e.g. page 12, lines 18-23; Claim 1). In replacing the silicones of Lahousse with the oils of Lebreux, specifically the dicaprylyl ether or dicaprylyl carbonate, the composition would comprise 0 wt% silicone or fluoro-oils.
Regarding Claim 24, Lahousse teaches that the first non-volatile oil is present at 5-75 wt% (e.g. page 10) and the second oil is present at 5-75 wt% (e.g. page 12), this results in ratios which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 9, 11, 14-16, 19 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-11 and 13-16 of U.S. Patent No. 11,819,563.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A composition comprising:
- ethyl cellulose;
- at least one first non-volatile oil that is liquid at 25°C, chosen from saturated or unsaturated, linear or branched C10-C26 fatty alcohols;
- at least one second non-volatile hydrocarbon-based oil that is liquid at 25°C chosen from ethers of formula ROR', carbonates of formula RO(CO)OR', in which formulae the R and R' groups, which may be identical or different, represent a saturated or unsaturated, branched or unbranched, hydrocarbon-based group comprising at most 16 carbon atoms, and mixtures thereof.
Claims 1, 3-5, 16 and 19 are met by patented claims 1 and 2.
Claim 2 is met by patented claim 1, 8 and 9.
Claim 9 is met by patented claim 6.
Claim 11 is met by patented claim 5.
Claim 14 is met by patented claim 16.
Claim 15 is met by patented claim 5.
Claim 24 is met by claims 1 and 6.
Claims 1-5, 9, 11, 14-16, 19 and 24 are directed to an invention not patentably distinct from claims 1-3, 5-11, 13-16 of commonly assigned 11,819,563. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 11,819,563, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-9, 11, 13, 14, 16, 19 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 3-15 of U.S. Patent No. 11,478,414 in view of Lebreux (“Preservative Deep Dive: Phthalates, Silicones, and their Alternatives” Ultrus; 2017).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A composition comprising:
- ethyl cellulose;
- at least one first non-volatile oil that is liquid at 25°C, chosen from saturated or unsaturated, linear or branched C10-C26 fatty alcohols;
- at least one second non-volatile hydrocarbon-based oil that is liquid at 25°C;
- at least one nonionic surfactant
Patent ‘414 does not teach that the second non-volatile oil is a hydrocarbon oil is liquid at 25°C chosen from ethers of formula ROR', carbonates of formula RO(CO)OR', or as recited in Claim 6.
This is made up for by the teachings of Lebreux.
Lebreux teaches alternatives to silicones in cosmetic compositions (e.g. page 1). Lebreux teaches Cyclopentasiloxane (D5) is a Dimethicone which has raised both safety and environmental concerns in the EU (as well as other countries such as Canada) (e.g. page 4). “The initial restriction of D5 at less than 0.1% in wash-off products should be extended to leave-on products, causing the end of this remarkable ingredient at relatively short notice.” (e.g. page 4). Lebreux teaches, as alternatives to silicones, that dicaprylyl ether, combines a very high spreadability with good stability, and dicaprylyl carbonate, significantly improves the sensory performance of the final formulation (e.g. page 6).
It would have been obvious to one of ordinary skill in the art at the time of filing to select dicaprylyl ether or dicaprylyl carbonate as the second non-volatile oil. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Patent ‘414 teaches the inclusion of at least one second non-volatile oil chosen from phenyl silicone oils. One of ordinary skill in the art would have been motivated to select the hydrocarbons dicaprylyl ether or dicaprylyl carbonate, as disclosed by Lebreux in order to overcome the safety and environmental concerns with silicones and obtain the benefits of spreadability, stability, and improved sensory performance.
Claims 1-5, 7-9, 14, 16, 19 are met by patented claim 1.
Claim 6 is met by Lebreux.
Claim 11 is met by patented claim 9.
Claim 13 is met by patented claim 14.
Claims 1-9, 11, 13, 14, 16, 19 and 24 are directed to an invention not patentably distinct from claims 1 and 13-15 of commonly assigned 11,478,414. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 11,478,414, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-9, 11, 13, 14, 16, 19 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-18 of U.S. Patent No. 11,413,233 in view of Lebreux (“Preservative Deep Dive: Phthalates, Silicones, and their Alternatives” Ultrus; 2017).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A composition comprising:
- ethyl cellulose;
- at least one first non-volatile oil that is liquid at 25°C, chosen from saturated or unsaturated, linear or branched C10-C26 fatty alcohols;
- at least one second non-volatile hydrocarbon-based oil that is liquid at 25°C;
- at least one nonionic surfactant
Patent ‘233 does not teach that the second non-volatile oil is a hydrocarbon oil is liquid at 25°C chosen from ethers of formula ROR', carbonates of formula RO(CO)OR', or as recited in Claim 6.
This is made up for by the teachings of Lebreux.
Lebreux teaches alternatives to silicones in cosmetic compositions (e.g. page 1). Lebreux teaches Cyclopentasiloxane (D5) is a Dimethicone which has raised both safety and environmental concerns in the EU (as well as other countries such as Canada) (e.g. page 4). “The initial restriction of D5 at less than 0.1% in wash-off products should be extended to leave-on products, causing the end of this remarkable ingredient at relatively short notice.” (e.g. page 4). Lebreux teaches, as alternatives to silicones, that dicaprylyl ether, combines a very high spreadability with good stability, and dicaprylyl carbonate, significantly improves the sensory performance of the final formulation (e.g. page 6).
It would have been obvious to one of ordinary skill in the art at the time of filing to select dicaprylyl ether or dicaprylyl carbonate as the second non-volatile oil. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Patent ‘233 teaches the inclusion of at least one second non-volatile oil chosen from phenyl silicone oils. One of ordinary skill in the art would have been motivated to select the hydrocarbons dicaprylyl ether or dicaprylyl carbonate, as disclosed by Lebreux in order to overcome the safety and environmental concerns with silicones and obtain the benefits of spreadability, stability, and improved sensory performance.
Claims 1-5, 7-9, 14, 16, 19 are met by patented claim 1.
Claim 6 is met by Lebreux.
Claim 11 is met by patented claim 9.
Claim 13 is met by patented claim 14.
Claims 1-9, 11, 13, 14, 16, 19 and 24 are directed to an invention not patentably distinct from claims 1 and 3-18 of commonly assigned 11,413,233. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 11,413,233, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-17 and 19-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17, 19 and 20 of copending Application No. 18/258,408 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A water-in-oil emulsion comprising:
- ethyl cellulose;
- at least one first non-volatile oil that is liquid at 25°C, chosen from saturated or unsaturated, linear or branched C10-C26 fatty alcohols;
- at least one second non-volatile hydrocarbon-based oil that is liquid at 25°C chosen from ethers of formula ROR', carbonates of formula RO(CO)OR', in which formulae the R and R' groups, which may be identical or different, represent a saturated or unsaturated, branched or unbranched, hydrocarbon-based group comprising at most 16 carbon atoms, and mixtures thereof; and
- at least one first non-ionic hydrocarbon-based surfactant.
Claim 2 is met by copending claims 1 and 2.
Claim 3 is met by copending claim 3.
Claim 4 is met by copending claim 4.
Claim 5 is met by copending claim 5.
Claim 6 is met by copending claims 6 and 7.
Claim 7 is met by copending claim 1.
Claim 8 is met by copending claim 19.
Claim 9 is met by copending claim 8.
Claim 10 is met by copending claim 9.
Claim 11 is met by copending claim 10.
Claim 12 is met by copending claim 12.
Claim 13 is met by copending claim 13.
Claim 14 is met by copending claim 15.
Claim 15 is met by copending claim 11.
Claim 16 is met by copending claim 16.
Claim 17 is met by copending claim 14.
Claim 19 is met by copending claim 2.
Claim 20 is met by copending claim 20.
Claim 21 is met by copending claim 9.
Claims 22 and 23 are met by claim 1.
Claim 24 is met by copending claim 17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 3/20/26 have been fully considered but they are not persuasive.
Applicant argues on page 9 that cyclomethicone (D5) is a well-known volatile oil. (See, for example, Lahousse at page 25, line 23 through page 26, line 4). Thus, one of ordinary skill in the art would not be motivated to use dicaprylyl carbonate/dicaprylyl ether as an alternative to the second non-volatile oil in Lahousse based on Lebreux's disclosure. As such, the asserted motivation and combination of Lahousse and Lebreux cannot result in the claimed compositions.
This is not found persuasive. The issue is not whether cyclomethicone is a well-known volatile oil, because Lebreux teaches silicone alternatives and motivation for their use. As described supra, Lahousse teaches the inclusion of at least one second non-volatile oil chosen from silicone oils and hydrocarbon-based oils other than the said first oil (e.g. Claim 1, pages 12, 21, 23). One of ordinary skill in the art would have been motivated to select the hydrocarbons dicaprylyl ether or dicaprylyl carbonate, as disclosed by Lebreux in order to overcome the safety and environmental concerns with silicones and obtain the benefits of spreadability, stability, and improved sensory performance. One of ordinary skill in the art would have predicted success as Lahousse teaches that the non-volatile oil is chosen from silicone oils or hydrocarbon-based oils other than the said first oil.
Accordingly, the rejection is maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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