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 .
Priority
The instant application claims foreign priority to FR2014057 filed 12/23/20020. The instant application is a 371 of PCT/FR2021/052441 filed 12/23/2021.
Information Disclosure Statement
The information disclosure statements (IDS) dated 09/21/2023, 08/07/2025 and 01/28/2026 all comply with provisions of 37 CFR 1.97, 1.98 and MPEP §609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits.
Claim Rejections - 35 USC § 112 Indefiniteness
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.
Claim 26 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 26 recites the limitation "at least one other filler" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 26 depends from claim 14. Claim 14 does not recite a filler, therefore the term at least one other filler is not supported by the claim from which claim 26 is depends.
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.
A)Claims 14-22 and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Maio et al (EP1588686A1 provided by applicant in the IDS filed 09/21/2023).
Maio recites a cosmetic composition with improved skin substantive, long wear and no-transfer properties comprising: 0.25% - 40% by weight of the composition of a particular silicone-containing polyurethane, in which the silicone pre-polymer is an alkoxylated, bis-hydroxyalkyl group terminated polydialkylsiloxane, in which the reactive OH- group is attached to a carbon atom, the silicone-containing polyurethane having a molecular weight of between 5,000 and 800,000, the balance comprising conventional cosmetic excipients, colourants and additives (Maio at claim 1). Maio further recites an Example 5 reproduced below;
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Maio further teaches the use of 5 to 20% silica (Maio at [0043]). Maio teaches that the composition provides benefits to the film forming adhesive and sensorial properties of the cosmetic when applied to the lips (Maio at [0005-0006]).
Maio differs from the instant claims in this rejection insofar as it does not teach the combination of the instantly recited components with sufficient specificity for anticipation. Maio teaches the components of the instant recited composition and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment or a preferred composition.
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 a time prior to the filing of the present patent application and following the teachings of Maio to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
With regards to the amount of the silicone-polyurethane polymer it would have been prima facie obvious to have optimized the amount of polymer in the composition. Maio teaches 0.25% - 40% by weight of the composition of a particular silicone-containing polyurethane, which overlaps the instantly claimed range of at least 17.5%. 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).
B) Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Maio et al (EP1588686A1 provided by applicant in the IDS filed 09/21/2023) as applied to claim14-22 and 34-28 above, and further in view of Ranade (WO2009/082565 provided by applicant in the IDS filed 09/21/2023).
The teachings of Maio are discussed above.
The teachings of Maio differ from instant claim 23 insofar as they do not teach specific silicas. The teachings of Ranade cure this deficit.
Ranade teaches a cosmetic with hydrophobized silica Aeroxide LE 3 type (Ranade at [0048]).
It would have been prima facie obvious to have combined the silica of Maio with the silica of Ranade for a cosmetic composition comprising silica. See MPEP 2144.06(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 § 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 14-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/268,650 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach a cosmetic with a silicone-polyurethane polymer and one or more linear or branched C8-C19 alkanes.
The instant application recites a cosmetic composition for care and/or make-up of keratinous materials, comprising, in a physiologically acceptable medium: a) a silicone/polyurethane polymer with an active material content of at least 17.5% by weight, relative to the total weight of the composition, b) one or more linear or branched C8-C19 alkanes, and c) a silica powder.
The reference application recites a homogeneous single-step cosmetic composition for applying make-up to keratin materials, comprising, in a physiologically acceptable medium, at least:- one or more linear or branched C8-C19 alkane(s);- one or more phenyl silicone oil(s) whose refractive index at 25°C is greater than 1.45 and having a viscosity at 25°C of greater than 100 mPa.s selected from the group consisting of oils of the INCI names phenylpropyldimethylsiloxysilicate, trimethyl pentaphenyl trisiloxane, trimethylsiloxyphenyl dimethicone, and mixtures thereof; and - a silicone-polyurethane polymer. (650’ at claim 1). The reference application recites wherein the composition is a liquid and anhydrous composition (650’ at claim 2). The reference application recites wherein the silicone- polyurethane polymer is present in the composition in an active material content ranging from 14 to 25%, by weight relative to the total weight of the said composition (650’ at claim 3). The reference application recites further comprising a lipophilic gelling agent (650’ at claim 4). The reference application recites wherein the branched C8- C19 alkanes are chosen from the group consisting of isododecane, isodecane,isohexadecane, hemi-squalane and mixtures thereof, and the linear C8-C19 alkanes are chosen from the group consisting of n-dodecane, n-undecane, n-tridecane, n-tetradecane,n-pentadecane and mixtures thereof. (650’ at claim 5). The reference application recites wherein the compositionfurther comprises one or more the silicone oil(s) comprising at least one phenyl group, whose refractive index at 25°C is greater than 1.45, are chosen selected from the group consisting of oils of the INCI names phenylpropyldimethylsiloxysilicate, diphenyldimethicone, diphenylsiloxyphenyltrimethicone, phenyltrimethicone, andmixtures thereof (650’ at claim 6). The reference application recites wherein the composition comprises at least one trimethyl pentaphenyl trisiloxane (650’ at claim 7). The reference application recites
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(650’ at claim 8). The reference application recites further comprising a copolymer comprising carboxylate groups and polydimethylsiloxane groups (650’ at claim 9). The reference application recites wherein the composition comprises – isododecane; - a trimethyl pentaphenyl trisiloxane, and- a silicone-polyurethane polymer reaction product of a hydroxyl functionalized polyorganosiloxane of formula Ib:
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(650’ at claim 10). The reference application recites further comprising an ingredient selected from a wax, a filler, a colouring agent and mixtures thereof (650’ at claim 11). The reference application recites wherein the fillers are chosen from the group consisting of silica powders, cellulose powders, cotton powders and mixtures thereof (650’ at claim 12). The reference application recites a cosmetic process for caring for and/or applying make-up to keratin materials, comprising the application, to the said keratin materials, of a composition (650’ at claim 13). The reference application recites further comprising at least one pigment (650’ at claim 14). The reference application recites further comprising a diphenylsiloxy phenyl trimethicone (650’ at claim 15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are presently allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612