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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 2, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1 – 10 are examined here-in.
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 non-obviousness.
Claims 1 – 4, 7, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Susak (US 2012/0189676 A1).
Susak teaches cosmetic compositions for keratin fibers (paragraph 0002). Susak teaches topical compositions that may be emulsions (paragraph 0008). Susak’s example 3 is for an oil-in-water emulsion (paragraph 0212).
Susak teaches aqueous phase structuring agents that increases viscosity (thickens) the aqueous phase (paragraph 0062). Susak teaches that aqueous phase structuring agents such as thickeners, gums, and polysaccharides should be included in the amount of 0.01 to 30% of the composition (paragraph 0062).
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). In Example 3.2, mica/titanium dioxide coated with triethoxycaprylyl silane is present in the amount of 0.5% w/w (paragraph 0212, example 3). 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 – 4, 7, 8, and 10 are rendered prima facie obvious over the teachings of 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., an aqueous component of 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)).
Susak’s teaching for an emulsion cosmetic composition that includes humectant butylene glycol, a PEG-modified dimethicone, an oil, a surface-treated powder, and fatty acid glyceryl esters, among other ingredients (paragraphs 0002, 0008, 0014, 0021 – 0025, 0029, 0042 – 0058, 0062, 0075, 0076, 0113 – 0115, 0124 – 0125, 0149, 0212), reads on instant claim 1.
Susak’s teaching for humectant butylene glycol in 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 20% as recited in claim 1. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Susak’s teaching for a polyoxyalkylene-modified silicone such as a PEG-modified dimethicone (paragraphs 0014, 0021 - 0025) reads on component B of instant claim 1.
Susak’s teaching for esters, vegetable oils, and synthetic oils as suitable oily phase ingredients for the composition (paragraphs 0029, 0042 – 0055) reads on component C of instant claim 1. A person of ordinary skill in the art would be motivated by Susak’s teaching that oily ingredients have skin moisturizing and protective properties (paragraph 0029) to include an oil in the composition.
Susak’s teaching that the composition may include powders that are surface treated to render the particles more lipophilic (paragraph 0149) reads on component D of 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.
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 powder in the amount of 0.1 – 75% by weight of the total composition (paragraph 0147) overlaps on the instantly claimed range of 4 to 30% by mass as recited in instant claim 3.
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.
Susak’s teaching for waxes as oily phase structuring agents (paragraphs 0089 – 0090) reads on instant claims 7 and 8.
Susak’s teaching for cosmetic compositions for keratin fibers that may be topical emulsions (paragraphs 0002, 0008, 0191, 0218, 0219, 0222) reads on instant claim 10.
Claims 5, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Susak (as cited above) and further in view of Bchir (US 2018/0280258 A1).
Susak’s teachings are discussed above.
Susak does not teach the component B is PEG-12 dimethicone, that the oil-in-water emulsion further contains an anionic surfactant as component F, or that nanodiscs comprising component B are adhered to an oil-water interface.
Bchir teaches the missing elements of 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).
Bchir teaches the composition may include anionic surfactants, and that a person of ordinary skill in the art has the necessary expertise to include such an ingredient (paragraphs 0256 – 0259).
The combination of Susak and Bchir’s teachings renders claims 5, 6, 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 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 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 Susak’s teaching for a polyoxyalkylene-modified silicone such as a PEG-modified dimethicone (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 that the composition may include anionic surfactants, and that a person of ordinary skill in the art has the necessary expertise to include such an ingredient (paragraphs 0256 – 0259) reads on instant claim 6.
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.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Double Patenting over 18/294,890
Claims 1 – 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 selected from 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 50% or lower as recited in instant claim 2.
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.
Conclusion
All claims are rejected. No claims are allowed.
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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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612