DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections- 35 USC § 102
2. 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minato et al. (US 20190262242) as evidenced by hydrogenated polysubstance A Versatile Ingredient for Skincare, by Shin Etsu KF-54, and Sucrose Ester of Fatty Acids.
This rejection has been withdrawn in view of the Amendment filed 12/10/2025.
Claim Rejections- 35 USC § 103
3. 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.
4. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Minato et al. (US 20090262242) as evidenced by hydrogenated polysubstance A Versatile Ingredient for Skincare, by Shin Etsu KF-54, and Sucrose Ester of Fatty Acids and further in view of Tokunaga US 20180168992 A1.
Minato et al. (US 20190262242) (hereinafter Minato et al. disclose hydrogenated polyisobutene at 15 % (film-forming hydrocarbon based and incompatible with the dimethyl silicone-separates), diphenyl dimethicone at 15 % (a dimethyl silicone oil in other words has two methyl groups and that has viscosity 400-KF-54), sucrose fatty acid ester (non-silicone surfactant having HLB of 12 or more which is taught to be DK ESTER S-160N which has HBL 16 present at 3.5% , and a water-based thickening agent (polyvinyl alcohol) taught at 0.5 % (see Table 2 as well as 2-3) and water at 60 %. As evidenced by hydrogenated polysubstance A Versatile Ingredient for Skincare, hydrogenated polyisobutene is a film former. As evidenced by Shin Etsu KF-54, the viscosity of diphenyl dimethicone is 400 (see typical properties table). As further evidenced by Sucrose Ester of Fatty Acids, S-160 has HLB of 16. Minato et al. further teach moisturizer (dipropylene glycol). Minato et al. disclose the blending quantity of the hydrogenated polyisobutene is preferably 15% by mass or more relative to the total amount of the non-volatile hydrocarbon oil, more preferably 40% by mass or more thereof and most preferably 55% by mass or more thereof. If the blending quantity of hydrogenated polyisobutene in the non-volatile hydrocarbon oil is too small, the adhesion thereof may be poor and examples of non-volatile hydrocarbon oils other than hydrogenated polyisobutene include polybutene, polyisobutylene, polyisoprene, liquid paraffin, squalane, hydrogenated polydecene, vaseline, polyethylene wax, and microcrystalline wax (para 0018-0019).
Minato et al. discloses the blending quantity of the hydrogenated polyisobutene is preferably 15% by mass or more relative to the total amount of the non-volatile hydrocarbon oil, more preferably 40% by mass or more thereof and most preferably 55% by mass or more thereof. If the blending quantity of hydrogenated polyisobutene in the non-volatile hydrocarbon oil is too small, the adhesion thereof may be poor and examples of non-volatile hydrocarbon oils other than hydrogenated polyisobutene include polybutene, polyisobutylene, polyisoprene, liquid paraffin, squalane, hydrogenated polydecene, vaseline, polyethylene wax, and microcrystalline wax (para 0018-0019). These are hydrocarbon-based solvents and the amounts overlap with the claimed 50-99 %. 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). Minato et al. disclose colorants that can be water-soluble dye. The colorant is not required to be a pigment as it can be water soluble dye (para 0041). Red 227 is a water soluble dye and these may be present from 0.1 to 10 % (para 0049).
Minato et al. does not disclose the hydrocarbon-based polymer is selected from ethylene monomer and/or a styrene monomer unit.
Tokunaga teaches a composition in the form of an O/W emulsion, comprising: (a) at least one hydrocarbon-based block copolymer comprising at least one styrene block and at least one block comprising units chosen from butadiene, ethylene, propylene, butylene and isoprene or a mixture thereof, which are optionally hydrogenated; (b) at least one film-forming linear ethylenic polymer devoid of styrene; (c) at least one oil; and (d) water. The composition according to the present invention can maintain the form of an O/W emulsion for a long period of time, and can exhibit good cosmetic properties such as soft feeling to the touch, uniform adhesion to the skin and long lasting cosmetic effects. A composition in the form of an oil-in-water emulsion, comprising: (a) at least one hydrocarbon-based block copolymer comprising at least one styrene block and at least one block comprising units chosen from butadiene, ethylene, propylene, butylene, isoprene, or mixtures thereof, which are optionally hydrogenated; (b) at least one film-forming linear ethylenic polymer devoid of styrene; (c) at least one oil; and (d) water. See Claim 16. Block copolymer including non-silicone polymer is found in paragraph 0202.
Thus, 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 the styrene-ethylene/propylene mixed block copolymers as taught in Tokunaga in the lip compositions of Minato et al. One would have been motivated to do so to improve skin and lip adherence and provide enhanced wear and longevity.
5. Claims 1-5 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Minato et al. (US 20090262242) as evidenced by hydrogenated polysubstance A Versatile Ingredient for Skincare, by Shin Etsu KF-54, and Sucrose Ester of Fatty Acids and further in view of Tokunaga US 20180168992 A1 and (HK1072552A) and (JP2004168759A).
Minato et al. has been discussed supra and does not disclose the moisturizer as recited by claim 12.
(HK1072552A) (hereinafter ‘552) disclose substrate for cosmetics and relates to improvement of feeling of use thereof. The substrate stratifies both smooth feeling and the moist feeling and is excellent in feeling. The base for external preparations for skin of the present invention contains an alkylene oxide derivative represented by the following formula (I) as a main component. R1O-[(AO)m(EO)n]-R2 (I). The m and n are equivalent to the claimed p and q. The amount of the base for an external preparation for skin in the cosmetic of the present invention is not particularly limited, and is usually about 0.01 to 70% by weight, preferably 0.5 to 40% by weight, and more preferably 0.5 to 20% by weight. The cosmetic containing the base have both excellent smooth feeling and moist feeling (e.g., moisturizer), have good touch feeling, and exhibit the most effective performance when incorporated into a cosmetic. The AO represents an oxyalkylene group having 3 to 4 carbon atoms, EO represents an oxyethylene group, m and n represent average molar numbers of addition of the oxyalkylene group and the oxyethylene group, respectively having 3 to 4 and the ratio of the oxyethylene group to the total amount of the oxyalkylene group and the oxyethylene group having 3 to 4 carbon atoms is 20 to 80 mass%. The oxyalkylene group having 3 to 4 carbon atoms and the oxyethylene group may be added in a block form or in a random form. R1、R2Are the same or different hydrocarbon groups having 1 to 4 carbon atoms or hydrogen atoms, the number of hydrogen atoms being relative to R1And R2The number of hydrocarbon groups (C) is 0.15 or less. It is believed that this reference discloses the average number of added moles of the oxyethylene group is 1 ≦ m ≦ 70, 1 ≦ n ≦ 70 however, (JP2004168759A) (hereinafter ‘759) disclose lipstick formulations containing identical formula I as in claim 12 (see claim 1 and abstract). The invention is to provide a lipstick composition that has high moisturizing effect and is excellent in use feeling and stability. The reference teachings that by adding a specific oxide derivative to a lipstick base, the moisturizing effect was greatly improved, and the felling of use and stability were greatly improved. The reference teaches R 1 O-[(AO) m (EO) n ] -R 2 (1)
wherein, AO is an oxyalkylene group having 3 to 4 carbon atoms, EO is an oxyethylene group, m and n are oxyalkylene groups having 3 to 4 carbon atoms, and the average number of added moles of the oxyethylene group is 1 ≦ m ≦ 70, 1 ≦ n ≦ 70, and the ratio of the oxyethylene group to the total of the oxyalkylene group and the oxyethylene group is 20 to 80% by mass. R 1 and R 2 are a hydrocarbon group having 1 to 4 carbon atoms, which may be the same or different, or a hydrogen atom. Thus, it would be obvious to have average number of added moles of the oxyethylene group is 1 ≦ m ≦ 70, 1 ≦ n ≦ 70 as it is a good moisturizing agent.
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 an alkylene oxide derivative as recited in claim 12 in the formulations of Minato et al. in view of the teachings of the ‘552 and ‘759 references. One would have been motivated to include the alkylene oxide derivative as recited by the formula of claim 12 because cosmetics containing this base have both excellent smooth feeling and moist feeling (e.g., moisturizing properties), have good touch feeling. Adding it would greatly improve the moisturizing effect and feeling of use.
Response to Argument
6. Applicant’s arguments filed 12/10/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
7. 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
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN T TRAN whose telephone number is (571)272-0606. The examiner can normally be reached Monday-Friday, 8:30 am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT A. WAX can be reached at 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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/SUSAN T TRAN/Primary Examiner, Art Unit 1615
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