DETAILED ACTION
RESPONSE TO AMENDMENT
1. Receipt of Applicants’ amendments/remarks filed 5/15/2026 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/15/2026 has been entered.
INFORMATION DISCLOSURE STATEMENT
2. Information Disclosure Statements filed 4/6/2026 and 5/29/2026 are acknowledged.
WITHDRAWN REJECTIONS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 Rejections not reiterated from previous Office Actions are hereby withdrawn.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 § 112
4. 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 1-15 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 1 recites (dry matter) and the parenthesis renders the claim indefinite because it is not clear if the limitation is part of the claim r not. The dependent claims have been included because they do not cure this deficiency.
5. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. It is noted that claim 7 recites withdrawn however, claim 7 was not previously withdrawn. Claim 7 should be canceled because claim 1 requires the trimethyl pentaphenyl trisiloxane. Therefore, it is not considered further limiting. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections- 35 USC § 103
6. 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 1-3, 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 and further in view of Scholler et al. (US 2019/0133918) and Rosario-Melendez et al. (US 2018/0027943).
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. McDermott disclose amounts of the shine enhancing agents (up to 30 % or 1-20 % by weight) that overlap with the instant claims (8-30 %).
The modified Mintel has been discussed supra but does not disclose the silicone-polyurethane polymer is from 14 to 25 % or 6 6 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).
The modified Mintel does not disclose the isododecane is present from 20 to 60 % by weight of the composition.
Rosario-Melendez et al. (US 2018/0027943) (hereinafter Rosario-Melendez et al.) disclose volatile solvent are capable of evaporating on contact with the skin or lips in less than one hour at room temperature and atmospheric pressure which may be isododecane and may be present from 5 to 50 % by weight (para 0291-0294). 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 have the volatile solvent (isododecane) be present from 5 to 50 %. One would have been motivated to do so because it is capable of evaporating in less than one hour.
7. 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, Scholler et al. (US 2019/0133918) and Rosario-Melendez et al. (US 2018/0027943) as applied to claims 1-3, 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.
8. 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, Scholler et al. (US 2019/0133918) Rosario-Melendez et al. (US 2018/0027943) as applied to claims 1-3, 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
9. 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
10. Applicants’ arguments have been fully considered and are not persuasive for the reasons below.
Applicants argue that claim 1 is further distinguished from Mintel Plum & Spray lip color since the invention comprises a trimethyl pentaphenyl trisiloxane and species the % contents of linear or branched C8-C19 alkanes, phenylated silicone oils, and silicone-polyurethane copolymer. A high content silicone polyurethane polymer was soluble in a mixture of oils when the oil mixture represented 3 to 4 times the proportion of polymer. None of the cited documents suggests a solubility problem with a silicone-polyurethane polymer at a high active ingredient content.
In response, the Examiner respectfully submits that the purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
In response, the Examiner respectfully submits that McDermott (US 20080102048)(hereinafter McDermott) disclose lip compositions containing trimethyl pentaphenyl trisiloxane and that these are shine enhancing agents (para 0399) and that these are present in amounts that overlap with the instant claims.
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.
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/DANAH AL-AWADI/Primary Examiner, Art Unit 1615
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