DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-17 and 21-26 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 10/27/2025 has been entered.
Claims 1, 3-8, 10-11, 13, 15, and 17 were amended, claims 23-26 were added, and claims 18-20 were canceled. No new material was added.
Applicant’s amendments have overcome the previous rejections under 35 U.S.C. 112(b) and objections to the claims.
The rejections of claims 18-20 are moot, because the claims were canceled.
Claims 1-17 and 21-26 are newly rejected under 35 U.S.C. 112(b) due to the amendment.
Claims 1-17 and 21-26 are newly rejected under 35 U.S.C. 103 due to the amendment.
Priority
This application claims priority to PRO 63/337,568.
Claims 1-17 and 21-26 are considered to have an effective filing date of 05/02/2022.
Information Disclosure Statement
The information disclosure statement filed 10/27/2025 has been considered.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/27/2025, with respect to the rejection(s) of claim(s) 1-14, 16, and 21-22 under 35 U.S.C. 103 over Foley have been fully considered and are persuasive due to the amendment. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Foley and Launag as discussed below.
Applicant argues that the method of Foley does not demonstrate a pigment is “dispersed in the compound 1” (Remarks, page 9). This argument is not persuasive, because according to the claim, the one or more pigments are dispersed in the grinding vehicle and/or carrier, not in the compound of formula I. As stated in the rejection below, Foley teaches a composition in which titanium dioxide and iron oxide colorants (i.e., pigments as defined by the instant claim 13) are ground together with a mortar and pestle (i.e., a grinding vehicle), combined with an oil phase (i.e., a carrier), and mixed (Foley, page 21, paragraph 0350). One of ordinary skill in the art would expect the pigments suggests to disperse upon mixing in the carrier.
Applicant argues that the “all-natural ingredients” of Foley does not apply to the composition as a whole and rather only the polymer compound of Formula I, and therefore the composition taught by Foley would not have an NOI between 0.5 and 1.0 as claimed (Remarks, page 10). This argument is not persuasive, because the NOI is a physical property of the composition taught by Foley and Launag, which reads on the claimed invention as discussed below. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. Both Foley and Launag teach the use of the natural citronellol polymer as claimed, and together teach the composition comprising the claimed ingredients. Therefore, it would be reasonable to expect the resulting composition would have the NOI value claimed.
Applicant states that the specification demonstrates unexpected beneficial effects which are not predicted by the teachings of Foley and Launag, including improved wetting time, faster and more effective milling and shearing steps, improved Hegman grind, lower viscosity, and higher color strength (Remarks, page 11). This argument is not persuasive, because Foley teaches the polymers disclosed offer improved viscosity (Foley, page 2, paragraph 0029), and names color quality as a criteria which should be enhanced (Foley, pages 18-19, paragraphs 0337-0338), demonstrating improved viscosity and color strength are not unexpected results in the field. Wetting time and Hegman grind are also physical properties of the claimed composition. As above, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. The assertion of faster and more effective milling and shearing steps is not supported with evidence comparing the prior art. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e).
New 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.
Claims 1-17 and 21-26 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.
Regarding claims 1 and 13, the claims recite the limitation "the pigment". There is insufficient antecedent basis for this limitation in the claims. This limitation should read “the one or more pigments”. Claims 2-12, 14-17 and 21-26 are each dependent on the rejected claim 1 and do not cure its deficiencies.
Regarding claim 7, the claim recites the limitation "the group". There is insufficient antecedent basis for this limitation in the claim. The Examiner suggests removing the phrase “the group” from the claim.
Regarding claim 14, the claim recites the limitation "the pigments". There is insufficient antecedent basis for this limitation in the claim. This limitation should read “the one or more pigments”.
Regarding claim 26, the parenthetical recitation of “(MSO)” renders the claim indefinite because it is unclear whether the limitations in parentheses are part of the claimed invention or describing an example or preference. See MPEP § 2173.05(d). The Examiner notes that MSO appears to be a common abbreviation for methylated soybean oil.
New 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.
Claims 1-17 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Foley (US 20200165383 A1; IDS reference, 08/08/2023), further in view of Launag (DE 102010049642 A1), and as evidenced by Alpol Cosmetique (ISO 16128 Standard, 2025). The references were cited previously by the Examiner.
Regarding claim 1, Foley teaches a composition in which titanium dioxide and iron oxide colorants (i.e., pigments as defined by the instant claim 13) are ground together with a mortar and pestle (i.e., a grinding vehicle), combined with an oil phase (i.e., a carrier), and mixed (Foley, page 21, paragraph 0350), which suggests the pigments would be dispersed homogenously in the carrier. Foley teaches the oil phase can be a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I, wherein R1 is CH2CH2CH(CH3)CH2CH2, R2 is H, and n is 0-20), and exemplifies a composition comprising 34.5% of sample C (i.e., the citronellol polymer), and without any dispersants (Foley, page 20, example 15, primer), which lies within the claimed ranges of the one or more compounds of formula I and the optional one or more dispersants.
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(Foley, page 4, paragraphs 0074-0075).
Foley teaches a dispersion of titanium dioxide and iron oxide colorants (i.e., pigments as defined by the instant claim 13), but does not specify the pigments in the claimed amounts. Launag, however, teaches a dispersion comprising at least one pigment in 0.1-85% by weight (Launag, abstract), which encompasses the claimed range of 40% to 80%, and teaches the pigments can be oxides of titanium and/or iron (Launag, claim 10). 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).
Foley and Launag are both considered to be analogous to the claimed invention, because all are in the same field of cosmetic pigment dispersions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Foley to have included the pigment in the amount taught by Launag to result in a stable composition with a high pigment content which does not agglomerate (Launag, page 24, paragraph 0020), because Foley names smoothness and color quality as criteria which should be enhanced (Foley, pages 18-19, paragraphs 0337-0338).
Regarding claim 2, Foley and Launag together teach all the elements of the current invention as applied to claim 1. As above, Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I, wherein R1 is CH2CH2CH(CH3)CH2CH2, R2 is H, and n is 0-20).
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(Foley, page 4, paragraphs 0074-0075).
Regarding claim 3, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I, wherein R1 is CH2CH2CH(CH3)CH2CH2 and n is 0-20; Foley, page 4, paragraphs 0086-0087). Foley teaches R2 is a lower alkyl which can be C1-12 (Foley, page 3, paragraph 0047), which lies within the claimed range of C1-20.
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(Foley, page 4, paragraphs 0086-0087).
Regarding claim 4, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I, wherein R1 is CH2CH2CH(CH3)CH2CH2 and n is 0-20; Foley, page 4, paragraphs 0086-0087). Foley teaches R2 is an alkyl ester which can be -C(O)-C1-12 (Foley, page 3, paragraph 0051).
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(Foley, page 4, paragraphs 0086-0087).
Regarding claim 5, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I, wherein R1 is CH2CH2CH(CH3)CH2CH2; Foley, page 4, paragraphs 0086-0087). Foley teaches n is 2 or 3 (Foley, page 4, paragraph 0065), which lies within the claimed range.
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(Foley, page 4, paragraphs 0086-0087).
Regarding claim 6, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I, wherein R1 is CH2CH2CH(CH3)CH2CH2; Foley, page 4, paragraphs 0086-0087). Foley teaches n is 2 or 3 (Foley, page 4, paragraph 0065), which lies within the claimed range.
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(Foley, page 4, paragraphs 0086-0087).
Regarding claim 7, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I with the claimed structure).
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(Foley, page 4, paragraphs 0074-0075).
Regarding claim 8, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), which can have the formula below (i.e., a compound of formula I), wherein n can be 1-3 (Foley, page 4, paragraphs 0074-0075), which lies within the claimed range.
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(Foley, page 4, paragraphs 0074-0075).
Regarding claim 9, Foley and Launag together teach all the elements of the current invention as applied to claim 1. As above, Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), and exemplifies a composition made without water (i.e., non-aqueous; Foley, page 20, example 15, primer).
Regarding claim 10, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches the composition comprises natural ingredients including essential oils (Foley, page 15, paragraph 0310).
Regarding claim 11, Foley and Launag together teach all the elements of the current invention as applied to claim 1. As above, Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), and teaches compound 1 is used as a carrier (Foley, page 7, paragraph 0127). As above, Foley does not specify a dispersant, which reads on the claim without the optional ingredient.
Regarding claim 12, Foley and Launag together teach all the elements of the current invention as applied to claim 1. As above, Foley teaches compound 1 is used as a carrier (Foley, page 7, paragraph 0127).
Regarding claim 13, Foley and Launag together teach all the elements of the current invention as applied to claim 1. As above, Foley teaches titanium dioxide and iron oxide colorants (i.e., pigments; Foley, page 21, paragraph 0350).
Regarding claim 14, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches the compounds disclosed are useful as a cosmetic ingredient (i.e., cosmetic grade; Foley, page 2, paragraph 0030) and teaches the use of titanium dioxide and iron oxide colorants (i.e., pigments; Foley, page 21, paragraph 0350) with no mention of any treatment or coating.
Regarding claim 15, Foley and Launag together teach all the elements of the current invention as applied to claim 1. As above, Foley teaches a dispersion of titanium dioxide and iron oxide colorants (i.e., pigments as defined by the instant claim 13) and compound 1 (i.e., citronellol; Foley, page 6, paragraph 0104) which can be in combination with at least one excipient (Foley, claim 22), but does not specify the excipient is a dispersant. Launag teaches a pigment dispersion preparation comprising a polymer (Launag, abstract), and defines the polymer as a dispersant (Launag, page 29, paragraph 0032). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Foley to have included a dispersant as taught by Launag, because Launag teaches the dispersant increases the dispersibility of the pigments (Launag, page 29, paragraph 0032).
Regarding claim 16, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches a dispersion of compound 1 (Foley, page 6, paragraph 0104), and exemplifies a composition made without any silicone polymers (Foley, page 20, example 15, lotion).
Regarding claim 17, Foley teaches all the elements of the current invention as applied to claim 1. As above, Foley teaches a dispersion of titanium dioxide and iron oxide colorants (i.e., pigments as defined by the instant claim 13) and compound 1 (i.e., citronellol; Foley, page 6, paragraph 0104), but does not specify a dispersion consisting essentially of only the claimed components. Launag teaches a composition comprising at least a pigment, a dispersion medium (i.e., a dispersant), and a polymer (Launag, abstract), which is defined as a dispersant (Launag, page 29, paragraph 0032). Launag teaches citronellol is a perfume oil (Launag, page 105, paragraph 0151) which is an optional component (Launag, page 104, paragraph 0149), suggesting a composition consisting essentially of at least a pigment, dispersants, and citronellol as a possible embodiment. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the citronellol composition of Foley to have included a dispersant as taught by Launag, because Launag teaches the dispersant increases the dispersibility of the pigments (Launag, page 29, paragraph 0032).
Regarding claim 21, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches the composition can be a cosmetic composition (Foley, claim 24).
Regarding claim 22, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley does not calculate a natural origin index of the composition, but teaches the compounds disclosed in the composition are manufactured using all-natural ingredients (Foley, page 2, paragraph 0029). As evidenced by Alpol Cosmetique, all-natural ingredients would result in a natural index of 1 (Alpol Cosmetique, page 3, “how is the natural share of a cosmetic product calculated?”), suggesting the composition of Foley would have a natural origin index of 1 as claimed.
Regarding claim 23, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley and Launag do not measure a pigment wet out time. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. Foley and Launag make obvious the claimed structure as discussed above, and therefore would be expected to have the same properties, absent evidence to the contrary.
Regarding claim 24, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley and Launag do not, however, measure a peak hold viscosity. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. Foley and Launag make obvious the claimed structure as discussed above, and therefore would be expected to have the same properties, absent evidence to the contrary.
Regarding claim 25, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley and Launag do not, however, measure a Hegman grind. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. Foley and Launag make obvious the claimed structure as discussed above, and therefore would be expected to have the same properties, absent evidence to the contrary.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Foley (US 20200165383 A1; IDS reference, 08/08/2023) and Launag (DE 102010049642 A1) as applied to claims 1-17 and 21-25, and further in view of Amela (DE 19853846 A1).
Regarding claim 25, Foley and Launag together teach all the elements of the current invention as applied to claim 1. Foley teaches the composition can comprise an emulsifiers (Foley, page 20, example 15), and Launag teaches dispersants, wetting agents, and emulsifiers are synonymous (Launag, page 35), but neither specifies a dispersant from the claimed list. Amela teaches dispersions of pigments with dispersants (Amela, page 4, 7th paragraph) and oils which can be citronellol (Foley, page 12, 1st paragraph). Amela teaches dispersants comprising polyhydroxystearic acid (Amela, page 6, 6th paragraph).
Foley, Launag, and Amela are considered to be analogous to the claimed invention, because all are in the same field of cosmetic pigment dispersions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Foley and Launag to have included the specific dispersant taught by Amela, because both Foley and Launag teach the use of emulsifiers/dispersants, and Launag teaches dispersants facilitate the dispersion of particles in a dispersing medium (Launag, page 34, paragraph 0043), while Amela teaches a specific dispersant used in such compositions.
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.
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613