CTNF 18/258,896 CTNF 89235 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Claims 1-10 are pending. Election/Restrictions 08-25-02 Applicant’s election of Group I, claims 1-8, directed to a water-in-oil emulsified cosmetic composition in the reply filed on 12/18/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The requirement is still deemed proper and is therefore made FINAL. Claims 9 and 10 are withdrawn as being drawn to a nonelected invention. Claims 1-8 are under consideration. Information Disclosure Statement Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 6/22/23. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 8 is 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 8 recites “wherein the composition has a two-phase shaking form”. It is unclear what a “two-phase shaking form” is. The Specification does not provide a definition and claim 1 recites that the composition is “a water-in-oil emulsified cosmetic”. It is unclear if the claim is reciting how the emulsion is formed, or another aspect of the composition. For the purpose of examination the limitation will be understood as part of the method of making the composition, and the composition itself is a water-in-oil emulsified cosmetic. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-6 and 8 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Iida et al. (US 2011/0104222; previously cited) . Iida et al. teach the combined use of a vinyl-based polymer, which has a carbosiloxane dendrimer structure in a side chain thereof, a hydrophobic powder and a particular nonvolatile cosmetic oil in specific proportions makes it possible to obtain a cosmetic which can provide a good feel upon use, can form an even cosmetic film on the skin, gives a low film feeling after being applied to the skin, has high adhesion to the skin, and is excellent in the effect that makes fine wrinkles and pores hardly visible (e.g. paragraph 0014). Regarding Claims 1-3 and 8, Iida et al. exemplify a water-in-oil emulsified liquid foundation (e.g. Example 24) comprising: - a silicone-treated titanium dioxide and iron oxide (A); - 6.7 wt% silicone dendrimer-acrylate copolymer (i.e. a carbosiloxane dendrimer) (B); - 0.8 wt% dimethylpolysiloxane-polyoxyethylene copolymer, HLB 5 (C), and - 3 wt% dimethylpolysiloxane (6 cs) (D), wherein the ratio of the mass of component (B) to the total mass of component (C) and component (D) is about 1.8, which is within the claimed range, and wherein the composition contains no fluoroether compound. Regarding Claims 4-6, Example 24 further comprises 2 wt% of the polyol glycerin and the 25 wt% combined of the volatile oils decamethylcyclopentasiloxane and dimethylpolysiloxane (2 cs) (e.g. paragraph 0093 and Example 24). Regarding Claim 8, the limitation is understood as a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In the instant case, the product of Example 24 anticipates the instant water-in-oil emulsified cosmetic composition . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Iida et al. (US 2011/0104222; previously cited) in view of Sanchez et al. (WO 2015/075626) . Regarding Claims 1-6 and 8, the teachings of Iida et al. are described supra. Example 24 of Iida et al. is directed to a liquid foundation, but does not recite a viscosity. This deficiency is made up for by the teachings of Sanchez et al. Sanchez et al. teach an application device comprising a container containing a cosmetic makeup composition, especially foundation, having a viscosity of less than 0.8 Pa.s at 25°C (i.e. 800 mPa.s) (e.g. abstract). Sanchez et al. teach that the expression "cosmetic makeup composition" is understood to mean a cosmetic composition comprising at least colorants, intended to provide a colour and an aesthetic effect to the keratin materials on which it is applied, in particular, a cosmetic composition for making up the skin of the face, such as a foundation (e.g. page 1, lines 20-24). Sanchez et al. teach that consumers are increasingly seeking cosmetic makeup products that spread easily and rapidly in particular on the skin in the form of a deposit which should not be thick but on the contrary should blend in as much as possible with the support for coverage without marking or mask effect. They therefore seek makeup products with lighter, fluid formulations, which are easy to apply, and with superior comfort and wear properties (wear property of the mattness, wear property of the colour, uniformity of the deposit, non- greasy, non-tacky appearance) (e.g. page 1, line 27- page 2, line 2). Sanchez et al. teach that according to one particular embodiment, the cosmetic makeup composition according to the invention has a viscosity from 0.04 to 0.08 Pa.s at 25°C (i.e. 40-80 mPas), which is within the claimed range (e.g. page 1, lines 18-19). Regarding Claim 7, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the liquid foundation of Iida et al. to achieve a viscosity of less than 0.8 Pa.s at 25°C (i.e. 800 mPa.s) or from 0.04 to 0.08 Pa.s at 25°C (i.e. 40-80 mPas), as taught by Sanchez. One of ordinary skill in the art would have predicted success as both Iida et al. and Sanchez et al. are directed to liquid foundations, and would have been motivated to select the viscosity range of Sanchez et al. in order to use the application device of Sanchez to achieve the benefits of blended coverage, easy application, superior comfort and wear. Conclusion No claim is allowed. 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NICOLE P BABSON/ Primary Examiner, Art Unit 1619 Application/Control Number: 18/258,896 Page 2 Art Unit: 1619 Application/Control Number: 18/258,896 Page 3 Art Unit: 1619 Application/Control Number: 18/258,896 Page 4 Art Unit: 1619 Application/Control Number: 18/258,896 Page 5 Art Unit: 1619 Application/Control Number: 18/258,896 Page 6 Art Unit: 1619 Application/Control Number: 18/258,896 Page 7 Art Unit: 1619