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 .
Status of Claims
Amendment filed on 03/13/2026 is acknowledged.
Claims 1-2 and 9 are amended.
Claims 1-10 are pending and being examined on the merits herein.
Priority
This instant application 18294890, filed on 02/02/2024, is a 371 of PCT/JP2022/032172, filed on 08/26/2022, which claims foreign priority of Japan 2021-143756, filed on 09/03/2021.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 12/16/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 03/13/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "when the trihydric or higher polyhydric alcohols are present in the cosmetic" in the end of the claim. There is insufficient antecedent basis for this limitation in the claim, because the cosmetic containing (A)(B)(C)(D) components defined earlier in the claim does not have or mention trihydric or higher polyhydric alcohols, or suggest “trihydric or higher polyhydric alcohols” are optional components in addition to (A)-(D).
Claim 9 recites the limitation “from vesicles of the component (B)”. There is insufficient antecedent basis for this limitation in the claim, because in claim 1 component (B) is a polyoxyalkylene-modified silicone, it is not vesicles. There is no implication or indication that component (B) can be in “vesicles” form in claim 1.
Claims 2-8 and 10 are rejected accordingly because they do not further clarify the issue as addressed in claim 1, upon which they depend directly or indirectly.
Remained 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.
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.
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Collier et al. (CA2607142 or WO2006121610, 11/16/2006, PTO-892).
Collier throughout the reference teaches personal care compositions including cosmetic compositions such as eye shadows, high-melting point lipsticks, lipsticks, lip glosses, lip balms, mascaras, eyeliners, pressed powder formulations, and foundations comprising at least one pigment (e.g., Pg. 6, Lines 17-20).
Regarding instant claims 1 and 4, Collier exemplifies an oil-in-water foundation (Pg. 213 bottom) containing deionized water 53.30%, butylene glycol (known as dihydric alcohols) 6.0% (corresponding to instant claim 1 (A)), cyclopentasiloxane, PEG-12 dimethicone (as polyoxyalkylene-modified silicone) copolymer (corresponding to instant claims 1(B) and claim 4), cyclopentasiloxane 6.35%, caprylyl trimethicone 6.35%, pigments AS 5811 (titanium dioxide triethoxycaprylylsilane) 7.50%, pigment AS 5131 iron oxides triethoxycaprylylsilane 0.70%, AS 5146 (iron oxides triethoxycaprylylsilane 0.05%), AS 5126 (iron oxides triethoxycaprylylsilane 0.35%), AS 50230 (talc triethoxycaprylylsilane 3.50%) (corresponding to pigment in instant claim 1 (D)), methylparaben 0.2%, benzoic acid 0.2%, compound SA (Pg. 213, Line 40-Pg. 214, Line 10).
Since the butylene glycol as dihydric alcohol alone amount 6.0% in the Collier composition falling within the dihydric alcohol alone constituting 1% to 20% by mass relative to the overall amount of the cosmetic as recited in instant claim 1, as MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Thus, the dihydric alcohol amount is anticipated by prior art.
Collier teaches that silicone oils refer to as cyclic and/or linear silicones present as monomers or polymers (e.g., Pg. 46, Lines 1-5; Pg. 47, Lines 15-24) including but not limited to phenyltrimethicone, dimethicone, phenyldimethicone, cyclomethicone (octamethylcyclotetrasiloxane ), hexamethyl cyclotrisiloxane, polydimethylsiloxane, poly(methylphenylsiloxane), cetyldimethicone, and behenoxydimethicone, and compounds thereof whose organic side chains having been derivatized, e.g., polyethoxylated and/or polypropoxylated (e.g., Pg. 47, lines 15-20). Therefore, among the components in the foundation formulation as shown above, Collier teaches silicone oil including cyclopentasiloxane, PEG-12 dimethicone copolymer, cyclopentasiloxane, caprylyl trimethicone (corresponding to instant claim 1(C)).
Collier foundation example (Pg. 213 bottom), as discussed above, does not contain trihydric or polyhydric alcohols in the cosmetic formulation. The language in instant claim 1 “wherein the total amount of the component (A) is higher than the total amount of trihydric or higher polyhydric alcohols in the cosmetic when the trihydric or higher polyhydric alcohols are present in the cosmetic” is interpreted as a contingent limitation, limiting the scope of the claim under the broadest reasonable interpretation only when trihydric or higher polyhydric alcohols are present in the cosmetic; while trihydric or higher polyhydric alcohols are not required for the cosmetic formulation. Instant claim 1 presents cosmetic composition containing components (A)(B)(C)(D) as required ingredients without indication or presence of “trihydric or higher polyhydric alcohols” as required ingredients. Therefore, Collier formulation anticipates instant claim 1, because this instantly claimed contingent condition does not take effect when trihydric or higher polyhydric alcohols do not present in formulations.
Regarding instant claim 2, among the components in the foundation formulation as shown above, Collier teaches silicone oil including cyclopentasiloxane, PEG-12 dimethicone copolymer 15.0%, cyclopentasiloxane 5.0%, caprylyl trimethicone 6.35%, in total amount of 26.0% of the cosmetic composition, while total oil phase constitutes (15.0 + 5.0 + 6.35 + 0.05 + 7.50 + 0.70 + 0.05 + 0.35 + 3.50)% = 38.15% of cosmetic composition (Note: reference shows error in listing oil phase as water phase, as evidenced by Pg. 107, Line 6: the present compositions comprise at least one silicone oil phase), resulting in silicone oil 26.0/38.15 = 68.15% more than 50% occupying oil phase in the composition, which falling within the range of amount 50% or higher in instant claim 2. Therefore, the amount of silicone oil is anticipated, as MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding instant claim 3, Collier teaches that pigments including but not limited to inorganic pigments based on metaloxides and/or other in water slightly soluble or insoluble metal compounds can be surface treated with hydrophobic thin film layer (e.g., Pg. 32, Lines 2-9); in come embodiments, the pigments are treated with compounds including but not limited to amino acids, silicones, lecithin and ester oils (e.g., Pg. 113, Lines 13-14).
Regarding instant claim 5, Collier teaches that the personal care composition can comprise thickeners, emulsifiers, humectants, etc. (e.g., pg. 50, Line 30), preferred polymer thickening agents including polyacrylamide polymers, carboxyvinyl polymers, commercially available thickeners such as Carbopol resins that can be hydrophobically modified (e.g., Pg. 106 Line 32 – Pg. 107 Line 5), showing that thickeners can be in oil phase, e.g., Carbopol 1342 (acrylates/C10-30 alkyl acrylate crosspolymer) in After Sun Lotion along with bisabolol and perfume, and cetearyl ethylhexanoate in oil phase (Pg. 159, line 35).
Regarding instant claim 6, Collier teaches that anionic surfactants are useful for the composition, including but not limited to isethionates, alkyl and alkyl ether sulfates and salts etc. (e.g., Pg. 106, Lines 1-5).
Regarding instant claim 7, Collier teaches that the carrier acting as a diluent, dispersant, solvent or the like for the essential components, ensuring these components can be applied and distributed evenly over the selected target at an appropriate concentration (e.g., Pg. 101).
Regarding instant claim 8, Collier exemplifies polyglyceryl-3 methyl glucose distearate (containing 3 glycerin molecules) in Sun Care Lotion-SPF 27 (Pg. 162) or Sunscreen Lotions (Pg. 207), and teaches various polyglycerin fatty acid esters emulsifiers suitable for the compositions, including polyglyceryl-3 oleate, polyglyceryl-3 diisostearate, polyglyceryl-4 dipolyhydroxystearate, diisostearoyl polyglyceryl-3 diisostearate, polyglyceryl-3 dipolyhydroxystearate, polyglyceryl-4 dipolyhydroxystearate, polyglyceryl-3 dioleate, etc. (Pg. 48, Lines 5-21).
Regarding instant claim 9, Collier teaches the polyoxyalkylene-modified silicone, such as PEG-12 dimethicone, therefore, in the oil-in-water composition as discussed above in the foundation composition, PEG-12 dimethicone would constitute inherent properties as instantly claimed, such as the component polyoxyalkylene-modified silicone would present in vesicles, and would be capable of forming nanodiscs adhered to an oil-water interface, because MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding instant claim 10, Collier teaches the above foundation composition, which is a makeup cosmetic.
MPEP 2112.01.I states that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
Applicant’s arguments filed on 03/13/2026 have been fully considered but they are not persuasive.
Applicant asserts that Collier does not disclose the limitation of “wherein the total amount of the component (A) is higher than the total amount of trihydric or higher polyhydric alcohols in the cosmetic when the trihydric or higher polyhydric alcohols are present in the cosmetic”, and thus Collier does not anticipate the claim.
As presented above in this office action regarding this limitation language of amended claim 1, the claim language of “wherein the total amount of the component (A) is higher than the total amount of trihydric or higher polyhydric alcohols in the cosmetic when the trihydric or higher polyhydric alcohols are present in the cosmetic” is interpreted as contingent condition, limiting the scope of the claim under the broadest reasonable interpretation only when trihydric or higher polyhydric alcohols are present in the cosmetic; while trihydric or higher polyhydric alcohols are not required for the cosmetic formulation. Instant claim 1 presents cosmetic composition containing components (A)(B)(C)(D) as required ingredients without indication or presence of “trihydric or higher polyhydric alcohols” as required ingredients. Therefore, Collier formulation anticipates instant claim 1, because this instantly claimed contingent condition does not take effect when trihydric or higher polyhydric alcohols do not present in formulations.
Applicant argues that the mono/di- versus tri-/polyhydric alcohol ratio is a key compositional feature for forming vesicles of component (B) and promoting their transition to nanodiscs adhered to the oil-water interface.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., mono/di- versus tri-/polyhydric alcohol ratio) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, the trihydric or higher polyhydric alcohols are not required components in instant claim 1, therefore, such ratio of monohydric/dihydric versus trihydric/higher polyhydric alcohol may not exist when the latter component is absent in the formulation. Consequently, the argument of such ratio being critical for the vesicle formation or nanodiscs transition is not convincing.
As presented in this office action, Collier teaches the cosmetic formulation as instantly claimed, and therefore, the properties of such formulation would necessarily present, including vesicle formation or nanodiscs transition.
Please refer to the entire office action presented above as a complete response to the remarks/arguments.
Conclusion
No claim is allowed.
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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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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