DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed April 20 and April 23, 2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claim 3 is cancelled.
Claims 1, 2, and 4 – 10 are examined here-in.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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 non-obviousness.
Claims 1, 2, 4, 6 - 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (US 2020/0038312 A1) in view of Susak (US 2012/0189676 A1, of record).
Furukawa teaches a cosmetic composition with a silicone polymer (abstract).
Furukawa teaches a composition with a silicone polymer, a solvent, an oleophilic cosmetic material, a surfactant, a powder, and alcohols (paragraphs 0010 – 0012).
Furukawa teaches the composition is preferably an oil-in-water emulsion (paragraph 0013).
Furukawa teaches the alcohols of the composition may be lower alcohols, polyhydric alcohols, or combinations thereof (paragraph 0103). Furukawa teaches lower alcohols and polyhydric alcohols are blended to improve moisturizing effect and consistency (paragraphs 0104 – 0105). Furukawa teaches lower alcohols include ethanol and isopropanol, and polyhydric alcohols include 1,3-butylene glycol, dipropylene glycol, and others (paragraphs 0104 – 0106).
Furukawa teaches polyoxyalkylene-modified silicones are silicone-based surfactants suitable for inclusion in the composition (paragraphs 0083 – 0088).
Furukawa teaches the composition contains at least one surfactant (paragraph 0083). Furukawa teaches surfactants may be a detergent, a disinfectant, a dispersant, or an emulsifier (paragraph 0083). Furukawa teaches a variety of anionic surfactants suitable for inclusion in the composition (paragraphs 0083 – 0084).
Furukawa teaches the oleophilic component of the compositions may include a thickening agent (paragraph 0059). Furukawa teaches microcrystalline wax, paraffin wax, polyethylene wax, and others are suitable for inclusion in the composition (paragraph 0053).
Furukawa teaches powders for the composition are subject to a water-repellant treatment (paragraph 0099). Furukawa teaches that powders can be included in the amount of 0.1 to 99 mass % of the composition, noting that in the case of a solid cosmetic composition, the amount is 80 to 99 mass % (paragraph 0099).
Furukawa does not teach the amounts of each ingredient in the composition or that polyglyceryl-6-ricinoleate as dispersant.
Susak teaches missing elements of Furukawa.
Susak teaches cosmetic compositions for keratin fibers, including topical compositions in the form of emulsions (paragraphs 0002, 0008, 0212).
Susak teaches butylene glycol as a humectant in the composition in the amount of 0.001 to 25% (paragraphs 0124 – 0125). Susak teaches mono-, di-, or polyhydric alcohols are also suitable for inclusion in the composition as nonionic organic surfactants (paragraphs 0114 – 0115).
Susak teaches the composition includes an oxyalkylenated organosiloxane emulsifier in the amount of 0.001 to 50%, which may be a polyoxyalkylene-modified silicone such as a PEG-modified dimethicone (paragraphs 0014, 0021 - 0025).
Susak teaches nonvolatile silicone oils such as dimethicone are suitable in the composition (paragraphs 0029, 0056 – 0058). Susak teaches that silicones are suitable for oil phase structuring agents in an emulsion, where the total amount of oil structuring agent is ranges from 0.01 to 70% by weight (paragraphs 0075, 0076).
In addition to silicone oils, Susak teaches esters, vegetable oils, and synthetic oils are also suitable oily phase ingredients for the composition (paragraphs 0029, 0042 – 0055). Susak teaches oily ingredients have skin moisturizing and protective properties (paragraph 0029).
Susak teaches the composition may include powders that are surface treated to render the particles more lipophilic (paragraph 0149). Susak teaches powders may be included in the amount of 0.1 – 75% by weight of the total composition as appropriate (paragraph 0147).
Susak teaches polyglyceryl-6-ricinoleate is a suitable fatty acid glyceryl ester for inclusion in the composition (paragraphs 0053 – 0055).
Claims 1, 2, 4, 6 - 8, and 10 are rendered prima facie obvious over the combination of Furukawa and Susak, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., a combination of monohydric and dihydric alcohols, polyoxyalkylene-modified silicone, oil, a powder having a hydrophobized surface, dispersant) were known in the prior art (e.g., emulsions, cosmetic compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., an oil-in-water cosmetic emulsion) to one of ordinary skill in the art (MPEP 2143(i)(a)).
The combination of Furukawa’s teaching for a composition with alcohols, a silicone polymer, an oleophilic cosmetic material, a powder, and at least one surfactant (paragraphs 0010 – 0012, 0083) with Susak’s teachings regarding the amounts of various ingredients reads on instant claim 1.
Furukawa’s teaching that for a combination of lower alcohol and polyhydric alcohol (paragraph 0103) in combination with Susak’s teaching for humectant butylene glycol (i.e. a polyhydric alcohol) in the amount of 0.001 to 25% (paragraphs 0124 – 0125) reads on component A of the instant claims and overlaps on the amount of 1 to 35% by mass as recited in claim 1. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i). A person of ordinary skill in the art would have been motivated to use a blend of lower alcohol and polyhydric alcohol as taught by Furukawa because Furukawa teaches that such a combination leads to improved moisturizing effect and consistency (paragraphs 0104 – 0105). Further, a person of ordinary skill in the art would have been motivated to apply the amounts taught by Susak to Furukawa’s polyhydric alcohol because both Susak and Furukawa teach butylene glycol as a preferred polyhydric alcohol (Furukawa paragraph 0104 – 0106, Susak paragraphs 0124 – 0125) and a person of ordinary skill in the art would expect this ingredient to fulfill the same purpose in both compositions.
Furukawa and Susak both teach polyoxyalkylene-modified silicones for inclusion in the composition (Furukawa paragraphs 0083 – 0088, Susak paragraphs 0014, 0021 – 0025), with Susak teaching the amount of 0.01 to 35% (paragraph 0014), overlapping on the claimed range of 0.1 to 5% by mass of the composition as recited for component B of instant claim 1.
Furukawa and Susak both teach oily components of the composition (Furukawa paragraph 0056, Susak paragraphs 0029, 0042 – 0055), with Furukawa’s teaching for an amount of 5 to 40 mass% (paragraph 0056) overlapping on the instantly claimed range of 1 to 40 mass% as recited for component C of instant claim 1.
Furukawa and Susak both teach powders that are surface treated for inclusion in the composition (Furukawa paragraph 0099, Susak paragraph 0149), with Susak teaching powder in the amount of 0.1 – 75% by weight of the total composition (paragraph 0147) which overlaps on the instantly claimed range of 4 to 30% by mass as recited for component D in instant claim 1.
Susak’s teaching for polyglyceryl-6-ricinoleate as a suitable fatty acid glyceryl ester for inclusion in the composition (paragraphs 0053 – 0055) reads on component E-1 of instant claim 1.
As discussed previously, both Furukawa and Susak teach oils for inclusion in the composition (Furukawa paragraph 0056, Susak paragraphs 0029, 0042 – 0055). Susak’s teaching for silicone oils, alongside esters, vegetable oils, and synthetic oils as suitable oily phase ingredients for the composition (paragraphs 0029, 0042 – 0055), wherein the total amount of oil structuring agent ranges from 0.01 to 70% by weight (paragraphs 0075 – 0076) reads on instant claim 2. Although Susak does not explicitly teach that silicone oils should be 50% or less of the oil phase component of the composition, a person of ordinary skill in the art would arrive at this amount via routine experimentation, which is prima facie obvious according to MPEP 2144.05(ii). Merely as an example, a person of ordinary skill in the art would be motivated to include silicone oil in an amount of 50% or less of the oily phase because silicones are often seen as undesirable synthetic ingredients. This is exemplified by the frequent emphasis in marketing of cosmetic compositions reciting “no silicones!”.
Susak’s teaching for polyglyceryl-6-ricinoleate as a suitable fatty acid glyceryl ester for inclusion in the composition (paragraphs 0053 – 0055) reads on instant claim 4.
Furukawa’s teaching that the composition contains at least one surfactant, with a variety of anionic surfactants as suitable examples (paragraphs 0083 – 0084) reads on instant claim 6.
Furukawa and Susak both teach oil-soluble thickening agents for the composition, including several waxes (Furukawa paragraphs 0053, 0059, Susak paragraphs 0089 - 0090), reading on instant claims 7 and 8.
Furukawa and Susak both teach the cosmetic compositions are suitable as makeup compositions (Furukawa paragraphs 0128 – 0131, Susak paragraphs 0002, 0008, 0191, 0218, 0219, 0222), reading on instant claim 10.
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (as cited above) and Susak (as cited above) in view of Bchir (US 2018/0280258 A1, of record).
The combination of Furukawa and Susak is discussed above.
The combination of Furukawa and Susak does not teach component B is PEG-12 dimethicone or nanodiscs.
Bchir teaches the missing elements of the combination of Furukawa and Susak.
Bchir teaches a make-up composition for keratin materials in an emulsion form (abstract).
Bchir teaches the emulsion contains particles that have non-spherical, discoid or ellipsoid shapes (paragraphs 0112 – 0113). Bchir teaches that the non-spherical particles are key to smoothing out and concealing skin imperfections, and to eliminate the feeling of a “masking” effect (paragraphs 0004 – 0011).
Bchir teaches that the discs are surface treated with PEG-12 dimethicone (paragraph 0125, 0245). Bchir teaches that surface-treating the particle with a hydrophobic or hydrophilic surface treatment agent makes the particle more easily dispersible in an aqueous or oily phase (paragraphs 0119 – 0121).
The combination of Furukawa, Susak, and Bchir’s teachings renders claims 5 and 9 prima facie obvious as combining prior art elements according to known methods to yield predictable results (MPEP 2143(i)(a)). A person of ordinary skill in the art would be motivated to include Bchir’s nanodiscs in the composition of Furukawa and Susak because Bchir teaches the non-spherical particles are key to smoothing out and concealing skin imperfections, and to eliminate the feeling of a “masking” effect (paragraphs 0004 – 0011). Therefore, the combination of Furukawa, Susak, and Bchir’s teachings of makeup-compositions comprising the claimed ingredients would yield predictable results, which is prima facie obvious according to MPEP 2143(i)(a).
The combination of Furukawa and Susak’s teaching for a polyoxyalkylene-modified silicone such as a PEG-modified dimethicone (Furukawa paragraphs 0083 – 0088, Susak paragraphs 0014, 0021 - 0025) which reads on component B of instant claim 1 with Bchir’s teaching of PEG-12 dimethicone as a polyoxyalkenylated silicone (paragraphs 02332 - 0245) reads on instant claim 5.
Bchir’s teaching for discs that are surface treated with PEG-12 dimethicone, which acts as a dispersant to make the discs more easily dispersible (paragraphs 0119 – 0121, 0125, 0245) reads on instant claim 9. The limitation of “adhered to an oil-water interface” appears to be capable of being met with Bchir’s PEG-12 dimethicone surface treated particles because substantially the same components (discoid particles, PEG-12 dimethicone, emulsions) are arranged in the same manner. As noted above, a person of ordinary skill in the art would be motivated to include Bchir’s nanodiscs in the composition of Furukawa and Susak because Bchir teaches the non-spherical particles are key to smoothing out and concealing skin imperfections, and to eliminate the feeling of a “masking” effect (paragraphs 0004 – 0011).
Examiner’s Reply to Attorney Arguments Dated April 20 and April 23, 2026
Applicant’s arguments with respect to claims 1, 2, and 4 – 10 have been considered but are moot because the new ground of rejection addresses each element of the claims as presently amended.
Double Patenting
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Double Patenting over 18/294,890
Claims 1, 2, and 4 – 10 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 - 10 of copending Application No. 18/294,890.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to an oil-in-water emulsion cosmetic containing (A) an aqueous component that is a combination of monohydric and dihydric alcohols; (B) a polyoxyalkylene-modified silicone; (C) and oil; (D) a powder having a hydrophobized surface; and (E) a dispersant that is one or more compounds selected from a polyglycerin fatty acid ester and a polyhydroxystearic acid.
Conflicting claim 1 is drawn to an oil-in-water emulsion cosmetic containing (A) an aqueous component selected from monohydric and dihydric alcohols; (B) a polyoxyalkylene-modified silicone; (C) and oil; (D) a powder having a hydrophobized surface.
The instant and conflicting claims differ because conflicting claim 1 does not recite a component (E) dispersant. Although conflicting claim 1 does not recite a component (E), it may be included due to the “comprising” language. Further, conflicting claims 7 and 8 recite a component (G) which is a dispersant that is a polyglycerin fatty acid ester.
Conflicting claim 2 recites the mass of (C) oil occupied by a silicone oil is 50% or higher, overlapping with the instantly claimed 1 to 40% as recited in instant claim 1.
Conflicting claim 4 recites component (B) is PEG-12 dimethicone, reading on instant claim 5.
Conflicting claim 5 recites the inclusion of an oil-phase thickener, reading on instant claim 7.
Conflicting claim 6 recites the inclusion of an anionic surfactant, reading on instant claim 6.
Conflicting claim 9 recites nanodiscs comprising the component (B) are adhered to an oil-water interface, reading on instant claim 9.
Conflicting claim 10 recites the oil-in-water emulsion is a make-up cosmetic, reading on instant claim 10.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments Dated April 20 and April 23, 2026
Applicant does not present any arguments regarding the provisional non-statutory double patenting rejection (Remarks page 6). According to MPEP 804(1), a complete response to a non-statutory double patenting rejection is either a showing that the claims subject to the rejection are patentably distinct from the reference claim or the filing of a terminal disclaimer. The Examiner notes that Applicant’s argument is not a showing that the claims are patentably distinct from the reference claims. As such, the non-statutory double patenting rejection is maintained.
Conclusion
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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