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 .
Claim Objections
Claim 5 is objected to because of the following informalities: the term "beeswax" is recited twice in the list of waxes. Examiner recommends removing the duplication of the term "beeswax". Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 - 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schlossman et al. (US 2014/0308221 A1, Published Oct. 16, 2014). Schlossman et al. teaches nanoparticle-particulate composite powders that can be formulated into dispersions and incorporated into a cosmetic composition, in which the cosmetic composition can be an emulsion (paragraphs [0010, 0015, and 0042]). Additionally, Schlossman et al. teaches that the powders can include an organic wax (paragraphs [0020, and 0030]) and that dispersing agents can also be included in the powder, which includes polyhydroxy acids (paragraph [0041]). Schlossman et al. further teaches a specific formulation in Table 2, that includes a powder (TiO2) in an amount of 62%, carnauba wax and polyhydroxystearic acid. They also disclose that “the dispersing agents have a molecular weight of from 1,000 to 10,000” (paragraph [0041]). Lastly, since Applicant’s claim 10 depends on claim 1 and because claim 1 is anticipated by Schlossman et al. any property of the claimed composition, including viscosity, is anticipated. Therefore, the teachings of Schlossman et al. anticipate claims 1 - 6, and 10.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Vatter et al. (US20020028223A1, Published Mar. 7, 2002) as evidenced by Balasubramanian et al. (US6149922, Published Nov. 21, 2000) and in view of Bretzler et al. (US5871717, Published Feb. 16, 1999).
Vatter et al. teaches an anhydrous (non-aqueous) oil-dispersion cosmetic composition comprising an oil or fatty phase (paragraphs [0013] – [0020]), with a surfactant (paragraph [0097]), wax (paragraph [0165]), and a powder (paragraphs [0100]-[105]), where the powder is present as solid particulate material dispersed in the oil phase (paragraph [0105]) reading on Applicant’s claims 1 and 11. Specifically, Vatter et al. discloses “anhydrous cosmetic compositions comprising… about 30% pigment” (paragraphs [0013] – [0020]). They define pigments to include powders such as titanium dioxide, zinc oxide, talc, mica, iron oxide, nylon, polyethylene powder, methacrylate powder, and more (paragraphs [0102], [0103], and pg. 20 claim 8). Since the pigments include powders, the 0.1 % to 30% pigment composition of Vatter et al. reads on the Applicant’s claims 1 and 6. Furthermore they disclose organopolysiloxane elastomer powders used in the composition such as vinyl dimethicone/methicone silsesquioxane crosspolymer (paragraph [0060]) which reads on powders described in the Applicant’s specification. The disclosed percentages for the oil phase and powders from Vatter et al. (paragraphs [0013] – [0020]) also include the ratios recited in Applicant’s claim 8 and would have been routinely optimized to achieve the desired properties.
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Furthermore Vatter et al. states the preferred pigment/powders have “a primary average particle size” of about 5 nm to about 100,000 nm (100 µm) and “most preferably” from about 100 nm (0.1 µm) to about 1000 nm with “mixtures of the same or different pigment/powder having different particle sizes” being useful “(e.g., incorporating a TiO2 having a primary particle size of from about 100 nm to about 400 nm with a TiO2 having a primary particle size of from about 10 nm to about 50 nm)” (paragraph [105]). They also disclose that the elastomer average particle size ranges from “above 10 (or above about 10) microns to about 200 microns” (paragraphs [0015] and [0062]). These particle size disclosures correspond to Applicant’s range as recited in claim 7.
In regard to surfactants, Vatter et al. teach that emulsifiers or surfactants are essential to the composition to “aid in dispersion of solid particles (e.g., pigments)” and disclose surfactants such as alkoxylated compounds based on C10-C22 fatty alcohols and acids, and sorbitan (paragraph [0097]). The alkoxylated fatty acid compounds correspond to polyethylene glycol fatty acid esters, while the sorbitan-based surfactants are polyhydric alcohol fatty acid esters as recited in Applicant’s claim 2. Moreover, alkoxylated fatty acid surfactants include polyhydroxystearic acid, PEG-30, and dipolyhydroxystearate as recited in Applicant’s claim 3. Although Vatter at al. does not disclose the exact molecular weights of the surfactants, selecting a surfactant having a molecular weight within the range of Applicant’s claim 4 represents a predictable result of using known materials for their intended purpose. Vatter et al. discloses examples of surfactants such as “copolymers of polyoxypropylene-polyoxyethylene” which have molecular weights above 2000 g/mol as evidenced by Balasubramanian et al. (column 4, lines 30-35) reading on Applicant’s claim 4.
Vatter et al. also teach the waxes for use in the composition as “candelilla, carnauba waxes, beeswax, spermaceti, carnauba, baysberry, montan, ozokerite, ceresin, paraffin, synthetic waxes such as Fisher-Tropsch waxes, silicone waxes (e.g., DC 2503 from Dow Coming), microcrystalline waxes and the like” (paragraph [0170]) which includes one or more of the recited waxes in Applicant’s claim 5.
Vatter et al. differs from the claimed invention in the teaching of (A) the specified hardness of the composition and (B) the specified viscosity.
With regard to the limitations of (A) while Vatter et al. does teach that their composition can be a balm (paragraph [0222]), and also a method for ascertaining the hardness in a similar fashion as the instant application (paragraph [0207]), the resultant hardness of the composition is different from that of the Applicant. Bretzler et al. however teaches an anhydrous cream composition with a hardness from about 75 gram force to about 500 gram force, a delta stress from about 300 dyne/cm2 to 8,000 dyne/cm2, and static yield stress at least about 1,000 dyne/cm2. Applicant’s claim 9 refers to the invention having a hardness of 100 to 5000 dyne/cm2 which overlaps with the rheologic properties of the anhydrous cream disclosed by Bretzler et al.
With regard to the limitations of (B) Bretzler et al. discloses their anhydrous cream composition comprises a crystalline gellant with an anhydrous liquid carrier where the liquid carrier preferably has a viscosity of between 5 and 500 cs at 25°C (column 15). While centistokes (cs) measures kinematic viscosity and centipoise (csp) measures dynamic velocity, one of reasonable skill in the art at the time the invention was filed would recognize the relationship between cs and csp and the choice of units as a matter of routine optimization.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to take the teachings of Vatter et al. and modify the composition in view of Bretzler et al. to obtain a cosmetic composition exhibiting the features of the instant application. Vatter et al. provides the motivation to combine by recognizing that cosmetic compositions suffer from instability, phase separation, and viscosity change (paragraph [0006]). Therefore, one of ordinary skill in the art would have a reasonable expectation of success by combining the teachings of Vatter et al. and Bretzler at al. to achieve Applicant’s claims 1-11.
Conclusion
No claims are allowed in this action.
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/RAJESH JAIPRASHAD/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691