DETAILED ACTION
RESPONSE TO AMENDMENT
1. Receipt of Applicants’ amendments/remarks filed 10/1/2025 are acknowledged.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/27/2025 has been entered.
INFORMATION DISCLOSURE STATEMENT
2. Information Disclosure Statements filed 9/19/2025 and 1/28/2026 have been submitted for review.
WITHDRAWN REJECTIONS
3. Rejections not reiterated from previous Office Actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections- 35 USC § 103
4. 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, 5-11, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Plump & Stay Lip Color-as cited on the IDS 11/21/2023 as evidenced by Lip Color and further in view of McDermott (US 20080102048) as evidenced by Dow Corning PH-1555 HRI Cosmetic Fluid.
Mintel Plump & Stay Lip Color (hereinafter Mintel) disclose the product description is said to keep lips looking fabulous up to eight hours without touch-ups. Therefore the product is to be applied to lips (keratin material). As evidenced by Lip color, lip color products contain ingredients that apply color, texture and shine to lips. Mintel disclose that the ingredients are inclusive of isododecane (branched C8-C19) alkane, Bis-hydroxypropyl Dimethicone/SMDI copolymer (silicone polyurethane copolymer) and diphenyl dimethicone (silicone oil with at least one phenyl group with refractive index at 25˚C). The composition is anhydrous. Dimethicone /vinyl dimethicone copolymers as in claim 9 are taught. Coloring agents/pigments are disclosed (e.g., CI 77491). With regards to the one step process, whether a product is to be applied as a single step or two steps is regarded as a product by process limitation and patentability depends on the product and not the manner in which the product is applied (e.g., in one step or two steps). “[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.
The Mintel reference does not disclose trimethyl pentaphenyl trisiloxane pentaphenyl however, McDermott (US 20080102048)(hereinafter McDermott) disclose lip compositions containing trimethyl pentaphenyl trisiloxane and that these are shine enhancing agents (para 0399). As evidenced by DOW Corning, INCI name: Trimethyl Pentaphenyl Trisiloxane has a viscosity of 175 cSt. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include trimethyl pentaphenyl trisiloxane in the compositions of Mintel. One would have been motivated to do so for its shine enhancing properties.
5. Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Plump & Stay Lip Color-as cited on the IDS 11/21/2023 as evidenced by Lip Color and further in view of McDermott (US 20080102048) as evidenced by Dow Corning PH-1555 HRI Cosmetic Fluid as applied to claims 1-2, 5-11, 13-15 above, and further in view of El-Khouri et al. (US 20170291520).
The modified Mintel has been discussed supra and does not disclose lipophilic gelling agent such as bentone. El-Khouri et al. (US 20170291520) (hereinafter El-Khouri et al.) disclose suitable gelling agents for compositions that include for the lips include those such as bentone (claim 1 and paras 0213-0216). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to further include a bentone in the lip composition of Mintel. One would have been motivated to do so for its gelling properties as it is a suitable gelling agent.
6. Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Plump & Stay Lip Color-as cited on the IDS 11/21/2023 as evidenced by Lip Color and further in view of McDermott (US 20080102048) as evidenced by Dow Corning PH-1555 HRI Cosmetic Fluid as applied to claims 1-2, 5-11, 13-15 above, and further in view of Scholler et al. (US 2019/0133918).
The modified Mintel has been discussed supra but does not disclose the silicone-polyurethane polymer is from 14 to 25 %.
Scholler et al. (US 2019/0133918) (hereinafter Scholler et al.) disclose use of a specific silicone resin in order to improve the resistance to rubbing and stability of a cosmetic (para 0006-0009). The amount of silicone-polyurethane is from 8 to 16 % (para 0041). Methylene diphenyl diisocyanate is disclosed (para 0029). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to include the silicone-polyurethane in amounts that overlap with 14-25 %. One would have been motivated to do so as the amounts overlap with the instant claims which would provide for resistance to rubbing. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
7. Claims 1 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Plump & Stay Lip Color-as cited on the IDS 11/21/2023 as evidenced by Lip Color and further in view of McDermott (US 20080102048) as evidenced by Dow Corning PH-1555 HRI Cosmetic Fluid as applied to claims 1-2, 5-11, 13-15 above, and further in view of Sandstrom et al. (US 2012/0269754).
The modified Mintel has been discussed supra and does not disclose the filler is silica powders, cellulose powders or cotton powders.
Sandstrom et al. (US 2012/0269754) (hereinafter Sandstrom et al.) disclose lip compositions that include fillers such as mica and cellulose powder (abstract and para 0061-0062). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the filler mica of Mintel for another filler as disclosed in Scholler et al. One would have been motivated to do so because simple substitution of one filler for another would yield predicable results as both are art recognized equivalent fillers.
DOUBLE PATETNING
8. 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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14-28 of copending Application No. 18268727. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to cosmetic compositions comprising silicone/polyurethane polymers and liner or branched C8-C19 alkanes the differences being that instant claim 1 further recites inclusion of one or more phenyl silicone oils whose reactive index at 20˚C is greater than 1.45. These are inclusive of diphenyldimethicone. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to further include a phenyl silicone such as diphenyldimethicone in the ‘727 application. One would have been motivated to do so because Tournilhac (US 20060204470) disclose non-volatile oils help to obtain good staying power (para 0013). These include diphenyldimethicones (para 0051). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include diphenyldimethicone as the non-volatile silicone oil in the ‘727 application. One would have been motivated to do so to obtain good staying power.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
RESPONSE TO ARGUMENTS
9. Applicants’ arguments have been fully considered and are not persuasive for the reasons below.
Applicants argues that the claims have been amended to a single step and Mintel is directed to a double-step product. In response, the Examiner respectfully submits that whether a product is to be applied as a single step or two steps is regarded as a product by process limitation and patentability depends on the product and not the manner in which the product is applied (e.g., in one step or two steps). “[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.
CONCLUSION
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
CORRESPONDENCE
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danah Al-awadi whose telephone number is (571) 270-7668. The examiner can normally be reached on 9:00 am- 6:00 pm; M-F (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private
PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll- free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272 1000.
/DANAH AL-AWADI/Primary Examiner, Art Unit 1615