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 .
Applicants’ arguments, filed 02/11/2026, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn.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 Interpretation
Claim 1 recites “two-phase composition.” The examiner is interpreting this as two phases separated by a single interface between the phases, not an emulsion. Support for this can be found in the second paragraph of page 1 of the instant specification.
Claims 2 and 3 recites “single phase composition.” The examiner is interpreting this to mean an emulsion. Support for this can be found in the third paragraph of page 1 of the instant specification.
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.
Claims 1-7, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Vetter et al. (WO 2016/146360 A1, publication date 09/22/2016; citing English machine translation; cited in IDS 08/31/2023) in view of Murayama et al. (WO 2020/116480 A1, publication date 06/11/2020; cited in IDS 08/31/2023), as evidenced by SpecialChem (Coco-Caprylate/Caprate, 11/04/2022 [10/8/2025], https://www.specialchem.com/cosmetics/inci-ingredients/coco-caprylate-caprate).
Regarding instant claims 1-7, 9, 10, 14 and 15, Vetter discloses a facial cleanser (i.e., cosmetic composition; instant claim 14) [title] which “are two-phase preparations. They are mixed by shaking before use. After use, the phases segregate within a short time. The presence of two separate phases can be indicated to the user, for example by different coloring of the phases” (i.e., instant claims 2, 3 and 15) [p. 5, para. 6]. The oil phase of the two phase compositions may comprises isohexadecane (i.e., a volatile hydrocarbon oil according to the instant specification at p. 2, line 37) and may further comprise isododecane and coco-caprylate/caprate [p. 5, para. 1]. Vetter discloses “[t]he individual constituents of the oil phase are present at a content of 0.05 to 40 wt .-% . . . based on the total weight of Preparation before” [p. 5, para. 5]. Vetter discloses the compositions may further comprise a “nonionic surfactant selected from the group of caprylyl / caprylic glucosides, decylglucosides or also polyglyceryl-10-laurate” (i.e., a polyglyceryl fatty acid ester) [p. 6, last para.], and in the examples the non-ionic surfactant is provided in an aqueous solution (i.e., included in the aqueous phase of the preparation) [p. 8 and p. 11]. Finally, Vetter teaches that it is desirable to improve the texture of the composition insofar as it discloses that prior art two-phase cosmetic compositions have been criticized for feeling “oily” [p. 4, para. 2].
Coco-caprylate/caprate is a light emollient ester, C8-10 fatty acids connected to C12-18 fatty alcohols (i.e., instant claim 4), as evidenced by SpecialChem.
Vetter does not disclose polyglyceryl fatty acid diesters.
Murayama “provide[s] a stable composition which includes a polyglyceryl fatty acid ester [PGFEs] with less than 10 glycerol units, for high biodegradability, and can provide sufficient makeup removability and a comfortable feeling just after being rinsed off” [p. 2, lines 5-7]. Murayama discloses that “[i]t has been found that if the length of polyglycerol units of PGFEs is too long (e.g., the polymerization degree of the polyglycerol is greater than or equal to 10), the biodegradability of the PGEFs may be very diminished” [p. 1, lines 36-40]. Therefore, in an effort to reduce environmental risks [p. 1, lines 13-20], “it would be preferable to use PGFEs with shorter glycerol units (less than 10 glycerol units) in terms of biodegradability” [p. 1, lines 36-40]. The specific PGFE surfactants Murayama discloses include PG-6 (polyglyceryl-6) distearate [p. 5, line 41], PG-6 (polyglyceryl-6) dioleate and PG-6 (polyglyceryl-6) dicaprate [p. 5, lines 44-45] (i.e., instant claims 9-10).
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the polyglyceryl-10 laurate of Vetter for the PGFEs (e.g., polyglyceryl-6 distearate, polyglyceryl-6 dioleate and/or polyglyceryl-6 dicaprate) of Murayama. One would have been motivated to make this substitution for the environmental reasons of improved biodegradation that accompanies PGFEs with less than 10 glyceryl units, as disclosed by Murayama. Additionally, one would have been motivated to make this substitution for the comfortable feeling of the composition disclosed by Murayama and desired by Vetter. One would have had an expectation of success because Murayama discloses these PGFE surfactants are useful in compositions for removing makeup, which is the purpose of the compositions disclosed by Vetter. The skilled artisan would have been motivated to substitute the PGFEs (e.g., polyglyceryl-6 distearate, polyglyceryl-6 dioleate and/or polyglyceryl-6 dicaprate) of Murayama in place of the polyglyceryl-10 laurate of Vetter as a surfactant in composition for removing makeup with a reasonable expectation of success. The simple substitution of one known element (e.g., the PGFEs of Murayama) in place of another (e.g., the polyglyceryl-10 laurate of Vetter) in order to achieve predictable results (surfactant) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Additionally, a prima facie case of obviousness exists for the claimed ranges of hydrocarbon oil of instant claim 1 (more than 5%w/w) and instant claim 7 (5-50%w/w) because they overlap with the range in the prior art (0.05-40%w/w). 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).
Finally, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have mixed two-phase composition of Vetter to form a single phase composition to apply to the face, i.e. keratin substance, because Vetter discloses it as a suitable method of using the two-phase composition. See MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to formulated a two-phase composition, and a method of using a two phase composition, capable of transforming into a single phase, then back into a two-phase composition comprising an oil phase and an aqueous phase. Wherein the oil phase comprises an ester oil of C8-10 fatty acids and a C12-18 fatty alcohols, and volatile hydrocarbon oil (isohexadecane) within the claimed amounts. Wherein the aqueous phase comprises a polyglyceryl fatty acid ester and water. Wherein the polyglyceryl fatty acid ester is a polyglyceryl diesters and comprises 2-6 polyglyceryl units (polyglyceryl-6 distearate, polyglyceryl-6 dioleate and/or polyglyceryl-6 dicaprate). Wherein the method comprises the mixing the two-phase composition to form a single phase and applying the single phase into a keratin substance, e.g., skin.
Regarding instant claim 11, Vetter discloses the nonionic surfactant may be present in amounts from 0.01 to 2% by weight base on the total weight of the preparation [p. 7, para. 1]. 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). In the present case, the claimed range for the polyglyceryl fatty acid diester (0.005%-1%w/w) overlaps with the range taught by the prior art and a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the two-phase composition taught by Vetter and Murayama to comprise a polyglyceryl fatty acid diester in and amount within the instantly claimed range.
Regarding instant claim 12 and 13, in the exemplary compositions Vetter discloses water may comprise 63.05% by weight and 64.76% by weight of the total composition [p. 8]. On the other hand, Vetter discloses the oil phase may comprise 20 to 80% by volume of the total preparation [p. 4, last para.]. Vetter also discloses previously formulated two-phase preparations of certain proportions of an oil and water phase failed to satisfy consumers [p. 2, para. 3, and p. 4, para. 2]. Specifically, those previously formulated preparations were criticized for being too “oily” [p. 4, para 2].
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). In the present case the claimed range for the amount of water (35-95%w/w) overlaps with the range of the prior art (63.05-64.76% w/w) and a prima facie case of obviousness exists.
Furthermore, it has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Accordingly, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition taught Vetter to comprise water within the instantly claimed amounts, and to comprise the oil phase and aqueous phase at the instantly claimed ratios, through routine optimization. One of ordinary skill in the art would have been motivated to optimize the amount of water and ratio of oil phase to aqueous phase disclosed by Vetter to provide a composition that is not too “oily”, as desired by Vetter. One would have had an expectation of success because Vetter discloses a broad range for the oil phase, and as a result a broad range for the only other phase, the aqueous phase.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the two-phase composition taught by Vetter and Murayama, wherein water is present within the instantly claimed range and the weight ratio of oil phase to water phase is also within the instantly claimed range.
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 §§ 706.07I 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 1-7 and 9-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/246,033 in view of Murayama et al. (WO 2020/116480 A1, publication date 06/11/2020; cited in IDS 08/31/2023).
The claims of ‘033 disclose a two-phase cosmetic [claim 14] composition comprising an oil phase and an aqueous phase, wherein the composition is capable of transforming into a single phase and then back into two phases [claims 1-3]. The oil phase comprises 6-50% w/w volatile hydrocarbon oil (i.e., instant claims 6-7) [claims 1 and 4], 0.01-20% w/w polar oil [claim 11] and comprises 7-70% of the total composition [claim 12]. The aqueous phase comprises a polyglyceryl fatty acid ester and makes up 30-95% w/w of the composition [claims 9 and 17]. The claims of ‘033 also disclose the same method of use as instantly claimed [claim 15].
The claims of ‘033 do not disclose an ester oil and the specific polyglyceryl fatty acid ester.
Murayama discloses polar oils include ester oils [p. 9 lines 1-2] and ester oils include isopropyl myristate (i.e., ester oil according to instant claim 4). Murayama also discloses polyglyceryl fatty acid esters suitable for cosmetic compositions include PG-6 (polyglyceryl-6) distearate [p. 5, line 41], PG-6 (polyglyceryl-6) dioleate and PG-6 (polyglyceryl-6) dicaprate [p. 5, lines 44-45].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious, to one of ordinary skill in the art, to have selected isopropyl myristate and the PGFEs of Murayama as the polar oil and polyglyceryl fatty acid ester (PGFE) of the ‘033 claims, respectively, because Murayama disclosed they suitable for cosmetic compositions.
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). In the present case the ranges for the amount of polar oil (ester oil), volatile hydrocarbon oil, aqueous phase, and the ration of oil phase to aqueous phase overlap with the respective ranges of the prior art, and a prima facie case of obviousness exists for each.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present, the amount of polyglyceryl fatty acid ester would have been obvious to one of ordinary skill in the art, at the time of filling, through routine optimization. One would have been motivated to optimize the amount of polyglyceryl fatty acid ester surfactant to affect the emulsion stability.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a two phase compositions, with the claimed properties, comprising an ester oil, a volatile hydrocarbon oil, a PGFE as claimed and water, all within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
Claims 1-7 and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,471,384 B2 in view of Vetter et al. (WO 2016/146360 A1, publication date 09/22/2016; citing English machine translation; cited in IDS 08/31/2023) and Murayama et al. (WO 2020/116480 A1, publication date 06/11/2020; cited in IDS 08/31/2023).
The claims of ‘384 disclose a composition comprising polyglyceryl dioleate with 4-6 glyceryl units (i.e., instant claims 1 and 8-10) [claim 1-2], oils such as hydrocarbon oils and synthetic oils [claims 1 and 10] and water [claim 1]. The polyglyceryl fatty acid ester comprise 0.5-40% w/w of the composition, the oils comprise 1-50%w/w of the composition and water comprises 3-90% w/w of the composition [claim 1].
The claims of ‘384 do not disclose an ester oil.
Murayama discloses synthetic oils include ester oils [p. 9 lines 14-15] and ester oils include isopropyl myristate (i.e., ester oil according to instant claim 4).
Vetter discloses a cosmetic composition with two-phases as instantly claimed and that “[i]n the field of cleaning products, two-phase systems have been shown to have better cleaning performance, especially when removing waterproof make-up. It combines the good cleansing effect of oils with water” [p. 5, last three paragraphs]. Vetter discloses isohexadecane as the oil phase (i.e., volatile hydrocarbon oil) [p. 4, para. 5].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the ester oil isopropyl myristate as the synthetic oil because Murayama discloses it as a suitable option.
It also would have been obvious to one of ordinary skill in the art, at the time of filling, to have would selected a two phase composition according to Vetter because Vetter discloses it is suitable and provides advantageous cleaning effects.
Finally, 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). In the present case the ranges for the amounts of oils, polyglyceryl fatty acid esters, water and ratio of oil phase to aqueous phase overlap with those respective ranges in the prior art and a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a two phase compositions, with the claimed properties, comprising an ester oil, a volatile hydrocarbon oil, a polyglyceryl-6 dioleate all within the instantly claimed amounts.
Claims 1-7 and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,561,587 B2 in view of Koide et al. (US 10,561,587 B2, date of patent 02/18/2020), Vetter et al. (WO 2016/146360 A1, publication date 09/22/2016; citing English machine translation; cited in IDS 08/31/2023) and Murayama et al. (WO 2020/116480 A1, publication date 06/11/2020; cited in IDS 08/31/2023).
The claims of ‘587 discloses a nano or micro emulsion comprising an oil in amount from 0.1%w/w to 30% w/w [claim 3], polyglyceryl dioleate comprising 3-6 glycerol units in amounts from 0.1%w/w to 30%w/w, and water [claim 1]. The claims disclose it is a cosmetic composition [claim 18].
Koide, which is the specification for the claims of ‘587, discloses the oils suitable for the composition include isohexadecane (i.e., volatile hydrocarbon oil) and ester oils of saturated or unsaturated linear or branched C1-C26 aliphatic monoacids (i.e., instant claim 4) [col. 6, lines 6-12].
The claims of ‘587 and Koide do not disclose a two phase composition as claimed.
Vetter discloses a cosmetic composition with two-phases as instantly claimed and that “[i]n the field of cleaning products, two-phase systems have been shown to have better cleaning performance, especially when removing waterproof make-up. It combines the good cleansing effect of oils with water” [p. 5, last three paragraphs].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claimed of ‘587 as the two phase composition according to Vetter because Vetter discloses it is suitable for cosmetic compositions and provides advantageous cleaning effects.
Finally, 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). In the present case the ranges for the amounts of oils, polyglyceryl fatty acid esters, water and ratio of oil phase to aqueous phase overlap with those respective ranges in the prior art and a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a two phase compositions, with the claimed properties, comprising an ester oil, a volatile hydrocarbon oil, a polyglyceryl-6 dioleate all within the instantly claimed amounts.
Response to Arguments
Applicant argues that polyglyceryl fatty acid diesters (e.g., polyglyceryl-6 dicaprate) demonstrate unexpected results over the polyglyceryl fatty acid monoesters of the prior art (e.g., polyglyceryl-10 laurate). For support Applicant cites the Declaration filed 02/11/2026 which compares an inventive composition to comparative example 5. The tables provided in the Declaration are reproduced below.
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754
974
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195
915
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The argument of unexpected results is not persuasive. Overcoming a rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope, and the results must truly be unexpected. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). In the present case, the results do not appear to be truly unexpected in view of the prior art, and the claims are not commensurate in scope with the objective evidence. Additionally, the Examiner notes that while the allegedly unexpected results are not expressly discloses as unexpected or surprising in the instant specification as originally filed, the Declaration filed 02/22/2026 discloses the observed make-up removability, demuslification speed, storage stability and cleanness of package to be unexpected.
The results do not appear to be truly unexpected because the prior art teaches polyglyceryl fatty acid diesters are poor emulsion stabilizers compared to polyglyceryl fatty acid monoesters. See, for example, Kumar et al. (JAOCS, 1989, vol. 66, no. 1, p. 153-157). Kumar relates to “[t]he correlation of structure of the fatty acids in the mono- and diesters with surfactant properties” [abstract] and discloses that “[m]onoesters showed higher ability in surface tension reduction, emulsification and foaming than the diesters” [abstract]. Specifically, “[a]ll the diesters exhibited poor performance in emulsification compared to corresponding monoesters” [p. 156, last para.]. Table 2 of Kumar shows that diester reduce emulsion stability (i.e., increase demulsification speed) as compared to monoesters. For example, diglycerol dilaurate reduced emulsion stability by up to 4 times (i.e., increased demulsification speed by up to 4 times) as compared to diglycerol monolaurate.
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595
1086
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Similarly, Table 2 of Kumar demonstrates that diesters produce less foam when compared to the corresponding monoesters. See except of Kumar, Table 2 below.
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505
693
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One of ordinary skill in the art would have reasonably expected a reduction in foam to correspond to less residue on the sides of the package and therefore improved package cleanliness.
The diglycerol esters of Kumar read on the instantly claimed polyglyceryl fatty acid esters because instant claim 9 recites “polyglyceryl fatty acid esters comprises from 2 to 6 polyglyceryl units” (i.e., polyglyceryl-2; diglycerol).
The "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case, the claims are not commensurate in scope with the showing of objective evidence because the independent claim does not recite an amount of polyglyceryl fatty acid diesters and a weight ratio of 13.5/86.5 Oil phase/Aqueous phase. The amount of polyglyceryl fatty acid diesters directly impacts emulsion stability. See, for example, Table 2 of Kumar (reproduced in page 18 of this Office Action). Table 2 of Kumar demonstrates that reducing the amount of diester by half also reduces the emulsion stability by about half (see, for example, Table 2 of Kumar, Emulsion Stability of diglycerol dilaurate at 0.1% and 0.05%). Furthermore, one of ordinary skill in the art would have expected the changes to emulsion stability to impact the storage stability of the emulsion (i.e., changes to emulsion transparency) . Similarly, Table 2 of Kumar demonstrates that diester concentration effects surface tension (see, for example, Table 2 of Kumar, Surface tension of diglycerol dilaurate at 0.1% and 0.025%). One of ordinary skill in the art would have expected the formulations with different surface tensions to exhibit different water adhesion properties and therefore demonstrate different package cleanliness scores as defined by the instant specification at page 29, lines 14-24. Additionally, one of ordinary skill in the art would have expected the concentration of surfactants, which can solubilize oils, to impact the effectiveness of makeup removal.
Finally, the weight ratio of oil phase to aqueous phase is important to the emulsion properties. As currently presented, the independent claim reads on both a composition with a dominant oil phase and a composition with a dominant aqueous phase (i.e., to form a W/O emulsion or O/W emulsion). However, one of ordinary skill in the art would not have expect a formulation for an oil-in-water emulsion (as demonstrated in the Declaration) to reasonably represent the properties all emulsions (e.g., water-in-oil emulsion). In fact, a skilled artisan would have understood that “you will use a ‘water-soluble’ emulsifier or blend to make an O/W emulsion, or to solubilize oils, or to obtain detergent action. In other words, you use a ‘water-soluble’ emulsifier when you want your final product to exhibit aqueous characteristics, i.e. to dilute readily with water. For these purposes, you would rarely use an ‘oil-soluble’ emulsifying system. On the other hand, if you wanted to make a W/O emulsion, or couple water soluble materials into an oil, or produce some other type of non-aqueous emulsion system, you would choose an oil-soluble emulsifier” (see ICI (The HLB System, ICI Americas, 1980) at page 4, col. 2, para. 1). In other words, a skilled artisan would have understood that the type of emulsion (e.g., O/W of W/O) dictates the type of surfactant, and that the same surfactants would not provide the same properties to all emulsions. Thus, it is not clear if compositions comprising more oil phase than aqueous phase (i.e., W/O emulsion) but otherwise formulated as disclosed in the Declaration (or Table 1 at page 25 of the instant specification) would demonstrate the same allegedly unexpected results.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612