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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated September 29, 2025 is acknowledged.
Claims 1-3 are pending.
Claims 4 and 5 are cancelled.
Claims 1 and 3 are currently amended.
Claims 1-3 as filed on September 29, 2025 are currently pending and under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the replacement abstract, all previous objections to the specification are withdrawn.
In view of the amendment of the claims, all previous claim objections are withdrawn and all previous claim rejections under 35 USC 103 over Tomoko in view of Tomita are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim as amended does not end with a period. See MPEP 608.01(m). Appropriate correction is required.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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 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.
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.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Tomoko et al. (JP 2012-082188, published April 26, 2012, as evidenced by the translation as cited on the IDS filed September 8, 2023) in view of Hideyuki (JP 2014-129265, published July 10, 2014, as evidenced by the translation as cited on the IDS filed September 8, 2023) as evidenced by Dow, Technical Data Sheet “DOWSIL™ PH-1555 HRI Cosmetic Fluid,” 2018, of record.
Tomoko teaches a solid cosmetic for lip comprising (title; claims):
6 to 50 wt% of an adhesion oil such as dimer dilinoleic acid ester (paragraphs [0012]-[0013]);
25 to 70 wt% of a bleeding oil comprising methyl phenyl silicone that separates at 25 ºC from (a) (paragraph [0015]); and
4 to 12 wt% of a wax;
wherein (a) and (b) are uniformly dispersed at 90 ºC. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
(a) and (b) may be used at a mass ratio of 1:1 (paragraph [0016]), as required by instant claim 3.
Examples of methyl phenyl silicone include trimethyl pentaphenyl trisiloxane (paragraph [0020]).
Tomoko does not specifically teach polyglyceryl-2 isostearate / dimer dilinoleate copolymer or dimer dilinoleyl dimer dilinoleate as required by claim 1.
Tomoko does not specifically teach the viscosity of the phenyl-modified silicone oil is 300 mPa.s or less as required by claim 2.
These deficiencies are made up for in the teachings of Hideyuki.
Hideyuki teaches an oil-in-oil lip cosmetic composition comprising a phenyl modified silicone and a high viscosity nonvolatile ester oil (title; claims). The phenyl modified silicone may comprise PH-1555 and, from the viewpoint of suppressing stickiness, should have a viscosity at 25 ºC of 1000 mPas or less (paragraph [0012]), as required by instant claim 2. As evidenced by Dow, PH-1555 has a specific gravity of about 1, therefore, the kinematic viscosity is about the same as the absolute viscosity, as required by instant claim 2. The high viscosity nonvolatile ester oil includes dimer dilinoleate esters such as polyglyceryl-2 isostearate / dimer dilinoleate copolymer and dimer dilinoleyl dimer dilinoleate (paragraph [0014]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute dimer dilinoleate esters such as polyglyceryl-2 isostearate / dimer dilinoleate copolymer and dimer dilinoleyl dimer dilinoleate as taught by Hideyuki for the dimer dilinoleic acid ester adhesion oil in the compositions of Tomoko because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Regarding claim 2, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the methyl phenyl silicone bleeding oil in the compositions of Tomoko to have a viscosity of 1000 mPas or less as taught by Hideyuki in order to suppress stickiness. There would be a reasonable expectation of success because Tomoko does not delimit the viscosity of the methyl phenyl silicone. Additionally or/and alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ commercially available methyl phenyl silicones inclusive of PH-1555 as taught by Hideyuki as the methyl phenyl silicone bleeding oil in the compositions of Tomoko because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Filippi et al. (EP 1,454,612 A1, published September 8, 2004, as evidenced by the Google translation, of record) in view of Barba et al. (WO 2010/109409 A2, published September 30, 2010, of record).
Filippi teaches a cosmetic composition for making up the lips comprising at least one ester of dimer diol and at least one pasty component (title; abstract; claims). The composition may be a lipstick (solid lip cosmetic) (paragraph bridging pages 2-3).
The at least one ester of dimer diol may comprise esters of dilinoleic acids and of dilinoleic dimers sold under the tradename LUSPLAN DD-DA5 (adhesive oil as evidenced by paragraph [0014] of the instant specification); the amount of ester is from 1 to 99 wt%, from 10 to 35 wt% (page 5, “Diol dimer”). 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
The composition may further comprise a fat phase; when the composition is intended to be applied to lips, the composition may comprise at least one fatty substance liquid at room temperature and a fatty substance solid at room temperature such as a wax (page 7, last line; page 8, 1st full paragraph). Liquid fatty substances include nonvolatile silicone oils inclusive of phenylated silicones such as phenyl trimethylsiloxy diphenylsiloxanes (diphenylsiloxy phenyl trimethicone, seeping oil); these oils can represent from 0.01 to 90 wt%, from 1 to 70 wt% (page 9, 2nd & 3rd full paragraphs). Waxes can be present from 0.01 to 50 wt%, from 5 to 30 wt% (page 9, last full paragraph). Regarding the ratio of (A) to (B) of 1 : 0.5 to 1 : 4 as required by instant claim 3, Filippi renders obvious amounts from 1:90 to 99:0.01, from 10:70 to 35:1.
Filippi does not specifically teach the viscosity of the phenyl silicone is 300 mPa.s or less as required by claim 2.
This deficiency is made up for in the teachings of Barba.
Barba teaches cosmetic compositions comprising at least one phenyl silicone oil and at least one wax; the compositions may be a lipstick (title; abstract; claims, in particular 1, 15). The phenyl silicone oils may have a viscosity between 5 and 1500 mm2/s (about 5 to 1500 mPas assuming a density of about 1) such as a viscosity of 22.5 cSt (about 22.5 mPas) (page 13, lines 13-20), as required by instant claim 2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the phenylated silicone liquid fatty substances in the compositions of Filippi to have a viscosity of between 5 and 1500 mm2/s (about 5 to 1500 mPas assuming a density of about 1) such as a viscosity of 22.5 cSt (about 22.5 mPas) as taught by Barba because such phenyl silicones are suitable for use within lipsticks. There would be a reasonable expectation of success because Filippi teaches lipsticks and because Filippi does not delimit the viscosity of the phenylated silicone liquid fatty substances.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s citation to paragraph [0033] of Tomoko for the disclosure of a binding oil designated component (d) is acknowledged but not found persuasive because component (d) is not required by Tomoko (see, e.g., claim 1) and because it is not seen where the instant claims exclude the presence of this oil.
The data presented at page 5 of the Remarks comparing results from an example of Tomoko with results from an example from Table 4 of the instant specification with results of an additional example comprising a binding oil according to Tomoko is acknowledged. As an initial matter, the submission of comparative or new data are properly presented as an affidavit or declaration such as a declaration filed under 37 CFR 1.132. See MPEP 716. This is important because declarations require a willful false statement clause. Applicant’s conclusion that the additional example evidences an advantage of the recited limitations of the present claims is unpersuasive because the present claims are sufficiently broad to encompass the new embodiment comprising the allegedly deleterious binding oil.
Applicant’s allegation at page 6 of the Remarks that Tomita requires hydrogenated polyisobutene is acknowledged but not found persuasive because while Tomita exemplifies hydrogenated polyisobutene as an exemplary, alternatively suitable adhesion oil (e.g., paragraph [0012]) Tomita does not require hydrogenated polyisobutene.
Applicant’s statement that Tomoko and Hideyuki use diphenyl dimethicone as the silicone oil is acknowledged but not found persuasive because neither Tomoko nor Hideyuki require diphenyl dimethicone. Furthermore, the present claims are sufficiently broad to encompass diphenyl dimethicone.
Therefore, the rejections of record over Tomoko are properly maintained in modified form as necessitated by Applicant’s amendments.
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/270,132 in view of Filippi et al. (EP 1,454,612 A1, published September 8, 2004, as evidenced by the Google translation, of record) and Barba et al. (WO 2010/109409 A2, published September 30, 2010, of record).
The instant claims are drawn to a solid comprising:
(A) 15 to 50 wt% of a copolymer containing a dimer acid ester and/or a dimer acid ester;
(B) 20 to 70 wt% of a phenyl-modified silicone; and
(C) 5 to 15 wt% of a wax
wherein the dimer acid ester comprises polyglyceryl-2 isostearate/dimer dilinoleate copolymer or dimer dilinoleyl dimer dilinoleate and the silicone comprises diphenylsiloxy phenyl trimethicone or trimethyl pentaphenyl trisiloxane. The silicone may have a viscosity of 300 mPa-s or less. The ratio between (A) and (B) may be 1 : 0.5 to 1 : 4.
The copending ‘132 claims are drawn to a solid comprising
(A) 15 to 50 wt% of a copolymer containing a dimer acid ester or a copolymer comprising two dimer acid esters;
(B) 20 to 70 wt% of a non-volatile hydrocarbon oil; and
(C) 5 to 15 wt% of a wax
The dimer acid ester(s) may comprise polyglyceryl-2 isostearate/dimer dilinoleate copolymer or/and dimer dilinoleyl dimer dilinoleate. The ratio between (A) and (B) may be 1 : 0.5 to 1 : 4.
The copending claims differ from the instant claims with respect to the phenyl-modified silicone, the types thereof, the viscosity thereof, and the ratio thereof with respect to the copolymer, however, these differences are bridged by the teachings of Filippi and Barba as elaborated supra because Filippi further teaches non-volatile hydrocarbon oils as employed in the copending claims to be an obvious variant of non-volatile silicone oils inclusive of phenylated silicones such as phenyl trimethylsiloxy diphenylsiloxanes for purposes of formulating the fatty cosmetically acceptable medium of compositions comprising esters of dilinoleic acids intended to be applied to the lips inclusive of lipsticks. Therefore, it would have been obvious to modify the compositions of the copending claims to further comprise non-volatile silicone oils as taught by Filippi in amounts as taught by Filippi in order to formulate a lipstick and in view of Barba it would have been obvious to include phenyl silicone oils having a viscosity between 5 and 1500 mm2/s (about 5 to 1500 mPas assuming a density of about 1) such as a viscosity of 22.5 cSt (about 22.5 mPas) because such phenyl silicones are suitable for use within lipsticks.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments: Double Patenting
Applicant’s statement that the double patenting rejection will only be addressed if the other rejections have been resolved is acknowledged. Applicant is advised that this is not a proper response. See 37 CFR 1.111. A complete response to a nonstatutory double patenting (NDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional. MPEP 804 I(B)(1). Therefore, the provisional double patenting rejection is properly maintained and made again.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee et al. (KR 2025-0055806) is the closest prior art as identified by USPTO artificial intelligence and teaches an oil-dispersible cosmetic composition for the lips (title; abstract; claims).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
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.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600