DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of oil containing steradiene, dimethicone, an ester of a polyhydric alcohol and a condensed hydroxy fatty acid, a coloring powder, and a synthetic wax and/or dextrin palmitate/2-ethylhexanoate in the reply filed on 18 December 2025, is acknowledged.
Status of Claims
The preliminary amendment, filed on 22 June 2023, is acknowledged.
Claims 1 and 3-8 are amended.
New claims 9-15 have been entered.
Claims 1-15 are pending and under consideration in the instant Office Action, to the extent of the following elected species:
the specific oil containing a phytosterol derivative is an oil containing steradiene;
the specific liquid silicone oil is dimethicone;
the specific separation inhibitor is an ester of a polyhydric alcohol and a condensed hydroxy fatty acid;
the specific powder is a coloring powder; and
the specific solid oil and/or lipophilic gelling agent is a synthetic wax and/or dextrin palmitate/2-ethylhexanoate.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent Japanese Patent Application No. JP 2020-218078, filed on 26 December 2020, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 22 June 2023, and 24 July 2023, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objection to title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title of the instant application is “OIL-BASED COSMETIC”. The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. The title does not reflect the main inventive concept of Applicant’s invention and the major components of the invention. The title is generic and can be applicable to any “oil-based cosmetic”. The Examiner advises Applicant to consider including major components of the composition, primary purpose of the invention, and/or the general steps taken to achieve the claimed invention in the title to precisely reflect the inventive concept. Inasmuch as the words "new", "improved", "improvement of", and "improvement in" are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles "a," "an," and "the" should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7 recites “wherein a content”. Clarity would be improved if “a” were replaced with “the”, so the resulting phrase reads “wherein the content” (bold added for emphasis).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2, 6, and 11 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 2 recites the limitations "the oil" and “the silicone oil (B)” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 1, upon which claim 2 depends, recites “an oil containing a phytosterol derivative” and “a liquid silicone oil”. Claim 11 depends from claim 2, does not resolve the issue of antecedent basis, and is therefore also rejected. Applicant may overcome this rejection by amending claim 2 to recite “the oil containing a phytosterol derivative” as in claims 1 and 9 or “component (A)” as in claim 7, and to recite “the liquid silicone oil” as in claims 1 and 10 or “component (B)” as in claim 7.
Claim 6 recites the limitations "the oil" and “the silicone oil (B)” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 1, upon which claim 6 depends, recites “an oil containing a phytosterol derivative” and “a liquid silicone oil”. Applicant may overcome this rejection by amending claim 6 to recite “the oil containing a phytosterol derivative” as in claims 1 and 9 or “component (A)” as in claim 7, and to recite “the liquid silicone oil” as in claims 1 and 10 or “component (B)” as in claim 7.
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, 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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kose Corp. (Japanese Patent No. JP 2014-177453 A, published on 28 February 2018, provided by Applicant in the IDS filed on 22 June 2023, references to English translation, hereafter referred to as Kose) in view of Yokozeki Yushi Kogyo KK (Japanese Patent No. JP 2018-131404 A, published on 23 August 2018, provided by Applicant in the IDS filed on 22 June 2023, references to English translation, hereafter referred to as Yokozeki).
Kose teaches oil-based cosmetic compositions with durable colors, good gloss, and stability, comprising silicone compounds, one or more liquid silicone oils, organopolysiloxane polymer, and colorants (Abstract). In addition to the components above, Kose teaches their composition to comprise a hydrocarbon and/or ester oil having a refractive index >1.47 at 25 °C, which in one embodiment is dimerlinoleic acid di(phytosteryl/isostearyl/cetyl/stearyl/benehyl), which is equivalent to an oil containing a phytosterol derivative (A) in instant claim 1 (pg. 4, lines 38-41). The hydrocarbon and/or ester oil is taught to be present in an amount from 1-30% w/w, which enables the composition to have durable gloss and prevents secondary-adhesion following application by the user (pg. 4, lines 46-47). The one or more liquid silicone oils in the composition may be dimethylpolysiloxane, which is equivalent to dimethicone, the component (B) recited in the instant claims (pg. 3, line 32), and may be present in an amount from 10-90% w/w (pg. 3, line 18). The ranges taught by Kose result in a ratio of component (A): component (B) from 1/90 to 3/1, which significantly overlaps with the range recited in instant claim 6.
Kose further teaches the composition to comprise one or more lipophilic surfactants, including sorbitan sesquioleate, the ester of a polyhydric alcohol and condensed hydroxy fatty acid (pg. 4, lines 25-29). The lipophilic surfactant is taught to be present in an amount from 0.01-15% w/w (pg. 4, line 36). The colorant is taught to be inorganic, such as TiO2, ZnO, or Al2O3, or organic, such as red No. 226, blue No. 404, or yellow No. 401, and are present in an amount from 0.001-40% w/w (pg. 4, lines 7-23). In addition to the above components, Kose teaches that oily components may be present, including Fischer-Tropsch wax, which is a synthetic wax as evidenced by para. [0052] of the instant specification (pg. 4, lines 48-49 and 52-55). Finally, Kose teaches that the cosmetic can be formulated as a liquid, paste, or solid and is “substantially free of water”, with any water content ≤0.1% w/w (pg. 5, lines 5-9). These teachings are interpreted as an oil-in-oil emulsion cosmetic composition.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “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). These guidelines apply to the quantities of oil containing a phytosterol derivative, liquid silicone oil, and separation inhibitor, as well as the ratio recited in instant claim 6. In each instance, the range of values taught by Kose either encompasses or significantly overlaps with the recited range and therefore renders them prima facie obvious.
Kose does not teach the oil containing a phytosterol derivative to contain the specific derivative steradiene. This deficiency is offset by the teachings of Yokozeki.
Yokozeki teaches a transparent oily composition for topical skin application that contains a phytosterol derived from vegetable oil (Abstract). Phytosterols are taught to be components of vegetable oils, such as soybean and rapeseed oil, which are useful in cosmetic compositions, in part due to their ability to impart gloss (pg. 1, final two para.). In particular, the phytosterol derivative steradiene is found to have desirable properties for use in cosmetic compositions that are applied to the skin of users, including imparting “excellent gloss” (pg. 2, lines 10-13). In addition, Yokozeki teaches steradiene to be “superior in safety” due to its derivation from vegetable oil, to impart UV-C absorption and moisturizing abilities to compositions, and for being easy to handle in cosmetic compositions (pg. 2, lines 19-23 and pg. 8, lines 21-26). The oil containing steradiene is taught to have a refractive index of ≥1.50 at 40 °C and is a liquid at 25 °C (pg. 7, lines 18-24). Steradiene is taught to be suitable for use in emulsions in amounts from 1-40% w/w, and is preferably present in an amount of ≥95% w/w of the oil in the composition (pg. 8, lines 28-36 and Abstract).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Yokozeki to use oil comprising steradiene in the invention of Kose because combining prior art elements according to known methods to impart a known benefit yields predictable results. Kose teaches an oil-based cosmetic composition comprising an oil containing phytosterol derivatives, dimethicone, and an ester of a polyhydric alcohol and a condensed hydroxy fatty acid in amounts that significantly overlap with those recited in the instant claims, as well as coloring powders and a synthetic wax. In view of the teachings of Yokozeki, an ordinary artisan would be motivated to try substituting oil containing steradiene for the oil containing dimerlinoleic acid di(phytosteryl/isostearyl/cetyl/stearyl/benehyl) because Yokozeki teaches steradiene to impart properties to cosmetic compositions that the ordinary artisan would identify as desirable and to be safe and stable in cosmetic compositions. The quantity of oil containing steradiene taught by Yokozeki significantly overlaps with the quantity of oil containing phytosterol derivatives taught by Kose, and one or ordinary skill would reasonably expect the substitution of oil containing steradiene to produce a stable composition with the desired properties. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-14 in view of the teachings of Kose and Yokozeki.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kose (Japanese Patent No. JP 2014-177453 A, published on 28 February 2018, provided by Applicant in the IDS filed on 22 June 2023, references to English translation) in view of Yokozeki (Japanese Patent No. JP 2018-131404 A, published on 23 August 2018, provided by Applicant in the IDS filed on 22 June 2023, references to English translation) as applied to claims 1-14 above, and further in view of Yamasaki et al. (U.S. Patent No. 9,987,210 B2, published on 5 June 2018, hereafter referred to as Yamasaki).
Kose and Yokozeki have been described above, and particularly relevant to claim 15, Kose teaches that a strong cosmetic film is desirable following application (pg. 2, lines 11-16 and 35) and that thickness and high viscosity are important to the film (pg. 3, lines 1-8).
Kose and Yokozeki do not teach the inclusion of dextrin palmitate/2-ethylhexanoate as a thickening agent. This deficiency is offset by the teachings of Yamasaki.
Yamasaki teaches a cosmetic conditioning oil composition containing one or more oils and an oil thickener which improves conditioning benefits when applied to the hair and/or skin (Abstract). The composition of Yamasaki is taught to form a thin lubrication film following application which can provide “improved conditioning benefits” while resisting removal via rinsing due to the oil thickener (col. 2, lines 35-50). The thickener of Yamasaki’s invention is taught to be compatible with natural and synthetic oils, including dimethicone (col. 3, lines 9-10 and 28). In one embodiment, the preferred oil thickener is dextrin palmitate/ethylhexanoate, with the Tradename Rheopearl TT® (col. 4, lines 35-39 and Examples 2-3, 6, and 9).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to use dextrin palmitate/ethylhexanoate as a thickener in the composition rendered obvious by the teachings of Kose and Yokozeki because combining prior art elements according to known methods to impart a known benefit yields predictable results. Kose and Yokozeki rendered obvious an oil-based cosmetic composition comprising an oil containing steradiene, dimethicone, and an ester of a polyhydric alcohol and a condensed hydroxy fatty acid in amounts that significantly overlap with those recited in the instant claims, as well as coloring powders and a synthetic wax. In view of the teachings of Yamasaki, a person of ordinary skill would be motivated to add dextrin palmitate/ethylhexanoate to the composition as a thickener because Yamasaki teaches the thickener to form films that provide improved conditioning while resisting removal via rinsing and that the thickener is compatible with natural and synthetic oils, including dimethicone. An ordinary artisan would recognize that the improved conditioning properties are desirable in a cosmetic composition, would desire a component that improves film formation and durability, and would be motivated to use dextrin palmitate/ethylhexanoate in the composition rendered obvious above because Yamasaki teaches that it is compatible with dimethicone, the specific liquid silicone oil taught by Kose. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 15 in view of the teachings of Kose and Yokozeki and further in view of the teachings of Yamasaki.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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 at (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.
/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619