DETAILED ACTION
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 . 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 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.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-12), the species of vinyl pyrrolidone/methacrylamide/vinyl imidazole copolymer, and the species of thickening compound in the reply filed on 02 December 2025 is acknowledged. The traversal is on the ground(s) that examination of the Groups would not be overly burdensome. This is not found persuasive because such a search burden was demonstrated in the restriction requirement mailing (such as the different classifications of the inventions). The requirement is still deemed proper and is therefore made FINAL.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 3-4, 6-7, and 14 are is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
Claims 5 and 8-12 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 5 and 8-12, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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, and 8-12 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.
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 claim 8.
The vinyl pyrrolidone/methacrylamide/vinyl imidazole copolymer disclosed by BASF reads upon the limitations recited by instant claims 9 and 10.
Instant claim 11 recites a limitation 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 claim 12 recites a limitation 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.
Conclusion
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/Brian Gulledge/Primary Examiner, Art Unit 1699