DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 27 May 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The indefiniteness rejection is withdrawn in view of the amendment to the claims. 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 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.
Claims 1-2, 5, 8-12, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Rattina et al. (US Patent Application Publication 2023/0058262) in view of BASF (“Luviset Clear AT 3”, 2020, pages 1-10).
Rattina et al. discloses water-in-oil emulsion cosmetics comprising a hydrophobic film-forming polymer, a volatile hydrocarbon oil, an absorbent filler, and pigments (abstract). The water and oil of the emulsion read upon instantly recited elements (a) and (b).
Rattina et al. suggests that the hydrophobic film-forming polymer can be trimethylsiloxysilylcarbamoyl pullulan (sold under the trade name TSPL-30-ID) (paragraph [130]). This ingredient reads upon the instantly recited element (c).
Instant claim 1 recites the further inclusion of an aqueous phase film-former (element (d)). Rattina et al. suggests the further inclusion of additives usually used in cosmetics, such as film-forming polymers (paragraph [189]), but does not suggest the specific type of film-former (such as vinyl pyrrolidone/methacrylamide/vinyl imidazole copolymer, the elected species of element (d).
BASF discloses a specific film forming agent, the agent being the copolymer of vinyl pyrrolidone, methacrylamide, and vinyl imidazole (page 1). This product is the elected species of film forming material.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have used the specific film forming polymer taught by BASF in the cosmetic disclosed by Rattina et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Independent instant claim 1 further recites that the composition is “free of polyurethanes.” Rattina et al. requires a polyurethane (abstract), in an amount of from 0.2 to 20 wt% (paragraph [62]). The instant specification discusses the definition of “free” (paragraph [34]). Small amounts of the material are permitted provided these amounts do not materially affect at least one of the advantageous properties of the composition. Such properties include mattifying materials (which the polyurethane is not taught to affect). Small amounts stated in this definition include not greater than 0.5 wt%, and such an amount overlaps the range taught by Rattina et al. for the polyurethane. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Rattina et al suggests the inclusion of clay (paragraph [176]), reading upon the limitations recited by instant claims 2 and 5.
The trimethylsiloxysilylcarbamoyl pullulan disclosed by Rattina et al. reads upon the limitation recited by instant claims 8 and 16.
The vinyl pyrrolidone/methacrylamide/vinyl imidazole copolymer disclosed by BASF reads upon the limitations recited by instant claims 9-10 and 17-18.
Instant claims 11 and 19 recite limitations to the relative amount of elements (c) and (d). Rattina et al. suggests the hydrophobic film-forming polymer is present in from 1 to 20 wt% (paragraph [133]). And BASF suggests the copolymer of vinyl pyrrolidone, methacrylamide, and vinyl imidazole is useful in from 1 to 7 wt% (page 7). These amounts provide for a range of relative amounts, and that range overlaps the instantly recited range. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claims 12 and 20 recite limitations to the amount of water present, and Rattina et al. suggests 1 to 70 wt% water (paragraphs [19-20]). And this amount overlaps the instantly recited range.
Instant claim 21 recites that the film-forming system consists of the recited film former. And no other film former is required by Rattina et al.
Claim 15 is rejected (as well as claims 1-2, 5, 8-12, and 16-21) under 35 U.S.C. 103 as being unpatentable over Rattina et al. (US Patent Application Publication 2023/0058262) in view of BASF (“Luviset Clear AT 3”, 2020, pages 1-10) as applied to claim 1 above, and further in view of Scotland et al. (US Patent Application Publication 2014/0227213).
Instant claim 15 further limits the clay, and recites that it is hectorite. While Rattina et al suggests the inclusion fillers such as of clay (paragraph [176]), this specific clay is not taught. The deficiency is remedied by Scotland et al., which discloses cosmetic compositions with mineral fillers (abstract). Such fillers include clays such as hectorite (paragraphs [54] & [56]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have used hectorite as the clay in the cosmetic composition taught by Rattina et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Response to Arguments
The Applicant argues that the obviousness rejection is not proper in view of the amended claims. Claim 1 has been amended to recite that the composition is free of polyurethanes. And Rattina et al. requires such an ingredient to be present.
The Examiner acknowledges the argument presented, but does not consider it persuasive. Independent instant claim 1 further recites that the composition is “free of polyurethanes.” Rattina et al. requires a polyurethane (abstract), in an amount of from 0.2 to 20 wt% (paragraph [62]). The instant specification discusses the definition of “free” (paragraph [34]). Small amounts of the material are permitted provided these amounts do not materially affect at least one of the advantageous properties of the composition. Such properties include mattifying materials (which the polyurethane is not taught to affect). Small amounts stated in this definition include not greater than 0.5 wt%, and such an amount overlaps the range taught by Rattina et al. for the polyurethane. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Brian Gulledge/Primary Examiner, Art Unit 1699
Prosecution Insights