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 .
The previous claim rejections made under 35 U.S.C. 112 as indicated in the Office action dated March 11, 2026 have been withdrawn in view of applicant’s amendment made to claims 4 and 6-10.
The previous claim rejection made under 35 USC 102 over Bichon et al. (US 20220016012 A1) has been withdrawn in view of the amendment made to claim 1 which excludes phenylated silicone oil.
The previous claim rejection made under 35 USC 103 over Bichon in view of Foley (US 20150352017 A1) has been withdrawn for the same reason.
The previous claim rejection made under 35 USC 103 over Kahle in view of Clavel et al. (US 20140079656 A1) has been maintained for reasons of record.
New rejections have been made to address the amended claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 and 20 depend on claim 1 and require the claimed composition be “substantially free of phenylated silicone oil”. Since the base claim requires the composition “devoid” of any phenylated silicone oil, the dependent claims improperly broaden the scope of the claim by allowing the composition to be “substantially free” of the same component.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Objections
Claim 20 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim . When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
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.
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 1-4, 7, 10, 12, 13, 15 remain rejected and claims 17, 19 and 20 are newly rejected under 35 U.S.C. 103 as being unpatentable over Kahle (US 20190358132 A1, published November 28, 2019) in view of Clavel et al. (US 20140079656 A1, published on March 20, 2014) (“Clave” hereunder).
Kahle discloses a cosmetic an emulsion-based cosmetic preparation comprising a lipid phase comprising at least one solvent as a carrier and at least one lipophilic film former and an aqueous phase comprising water or an hydroalcoholic solvent and a hydrophilic film former, and at least one emulsifier based on polyglyceryl fatty acid ester and at least one pigment. The combination is said to be quick drying and the film produced is not only water-, oil- and smudge-resistant and durable, but also forms a kind of matrix in which the other ingredients, in particular the pigments, are homogenously distributed throughout the gelatinous preparation. See [0019], [0027], [0036].
As for the lipophilic film former, Kahle teaches using acrylates/polytrimethylsiloxymethacrylate copolymer, which is the presently claimed carbosiloxane dendrimer of the present invention in claims 7 and 17.
Although the disclosed examples are in the form of oil-in-water emulsion, the reference teaches and suggests that the invention can be in the form of water-in-oil emulsion, see [0027]; the reference teaches that the proportion of the solvents in which the film formers are dispersed varies depending on the form of the emulsion. See [0049]. Clavel further teaches that water-in-oil emulsions are generally advantageous to make foundations, sun products or moisturizing creams. See [0003-0004]. The reference teaches that water-in-oil emulsions can be made by using polyglyceryl-based emulsifiers such as polyglyceryl-3 polyricinoleate. See [0071]. The reference further teaches that colorants, oil-phase gellants such as hectorite and film formers are also used in the formulation. See [0194, 0206, 0253].
Given the teachings in Khale that either oil-in-water or water-in-oil emulsions can be made with the film formers in each phase, formulating either form of cosmetic composition would have been prima facie obvious. Modifying the Kahle examples and making a water-in-oil emulsion would have been obvious in view of Clavel, as the latter teaches that oil-based emulsions are well known as a better moisturizer. Since both Kahle and Clavel teach using polyglyceryl-based emulsifiers to stabilize emulsions, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing a stable water-in-oil emulsion with improved moisturizing property. See present claim 1.
Regarding the new limitation which excludes phenylated silicone oil, Khale does not teach or suggest using phenylated silicone oil. See also present claims 12 and 20.
Regarding claims 2-4, Kahle further teaches that fillers such as bentonite, hectorite, montmorillonite, etc. can be used. See [0062]. Adding active agents common in cosmetics such as emollients is also suggested. See [0061].
Regarding claim 5, Kahle suggests using ‘fillers with an oil-emulsion -based binder” for easier handling and processing. Such pigments with a binder is viewed a surface-treated pigments. See [0002]. Using such pigments for easier handling and processing would have been prima facie obvious.
Regarding claim 7, Khale teaches using a hydrophobic film former having acrylate and siloxane moieties which forms a water-compatible, hydrophobic film. Acrylates/polytrimethylsiloxymethacrylate copolymer is disclosed, which meets the present claim limitation.
Regarding claims 10 and 19, Example 1 shows a formulation in which the weight ratio of the aqueous phase film former (styrene/acrylates/ammonium methacrylate copolymer) and the carbosiloxane dendrimer compound is 1:1.
Regarding claim 13, Clavel teaches that the liquid fatty phase, or oil, is used in a content ranging from 15-70% or more preferably in the range of 20-65%, which meets the present claim limitation.
Regarding claim 15, Kahle teaches that the suitable filler for the composition include hectorite. See [0062].
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kahle and Clavel as applied to claims 1-4, 7, 10-15, 17, 19 and 20 as above, and further in view of Foley (US 20150352017 A1, published on December 10, 2015).
Kahle teaches adding to the composition additives common in cosmetics, the reference fails to specifically disclose vitamins.
Foley teaches that niacinamide is a vitamin B3 compound known as a skin conditioning agent. See [0029]. Example 1 shows a water-in-silicone oil formulation comprising niacinamide in the oil phase.
Given the teaching and suggestion of Kahle to add common cosmetic additives in the disclosed formulation, one of ordinary skill in the art before the effective filing date of the present application would have been obviously motivated to look to prior art such as Foley for specific type of useful vitamins. Since Foley teaches that niacinamide is well known as a skin conditioning agent and further discloses a water-in-silicone oil formulation comprising niacinamide in the oil phase, the skilled artisan would have been motivated to combine the teachings of the two references with a reasonable expectation of successfully producing a stable oil-in-silicone oil emulsion with enhanced skin conditioning effects.
Claims 5, 8, 9, 11, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kahle and Clavel as applied to claims 1-4, 7, 10-15, 17, 19 and 20 as above, and further in view of Sano et al. (JP2021075562 A, published on May 20, 2021) (“Sano” hereunder).
Regarding claim 5, although Kahle teaches using colorant, the reference fails to specifically mention surface-treated pigments.
Sano teaches that iron-oxide-coated mica, organic pigment-coated mica titanium, etc. can be used as bright powders in cosmetic art. See translation, p. 7, the 4th full paragraph. The reference teaches skin-tightening cosmetic compositions comprising film forming agents. See abstract.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Kahle and add the surface-treated pigments in the composition as motivated by Sano, as the latter teaches such pigments impart brightening effects. Since both references are directed to film-forming cosmetic composition comprising colorants, the skilled artisan would have had a reasonable expectation of successfully combining the references and producing a stable, skin-brightening cosmetic composition.
Regarding claims 8, 9 and 18, Kahle fails to teach the specific water-soluble film forming polymers of the present claims.
Sano teaches that including the one or more film-forming components selected from a water-soluble film-forming agent, an oil-soluble film-forming agent, and a film-forming polymer emulsion enhances the firmness of the skin. See p. 8, the last paragraph. The reference teaches water-soluble film-forming agents which dissolves in an aqueous phase to form a cosmetic film; the reference discloses one or a combination of two or more of polyvinylpyrrolidone, polyvinyl alcohol, etc. See translation, p. 9, the first full paragraph. The reference further discloses that oil-soluble film-forming agents including silicone dendrimer-modified resin compounds, etc.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Kahle and add any of the disclosed film forming agents in Sano, as the latter teaches film components that can be added in cosmetic compositions to enhance the firmness of the skin. Since both references are directed to cosmetic compositions comprising film forming components in both water and oil phases, the skilled artisan would have had a reasonable expectation of successfully combining the references and producing a stable, skin-firming cosmetic composition.
Regarding claim 11, Kahle does not specifically mention the average gloss properties. However, as Sano teaches and suggests adding brightening pigments for luster or spherical powders for hiding skin defects, one of ordinary skill in the art would have understood that a targeted visual effect could be achieved by adding appropriate colorants or powders to a film-forming cosmetic composition. See Sano, translation, p. 7, the 4th full paragraph, the 8th full paragraph.
Regarding claim 14, Sano teaches that cosmetic film forming compositions can be used as makeup cosmetics such as foundations and base makeup cosmetics. See translation, p. 13, Industrial Applicability. Thus, using the Kahle composition comprising the film formers of the references to makeup skin would have been prima facie obvious.
Response to Arguments
Applicant’s arguments filed on June 11, 2026, have been considered but are moot in view of the new grounds of rejection.
Conclusion
No claims are allowed.
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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/GINA C JUSTICE/ Primary Examiner, Art Unit 1617
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