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 .
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 4 and 6-10 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.
Regarding claims 4 and the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 9, 10, 11, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bichon et al. (US 20220016012 A1, published on January 20, 2022) (“Bichon” hereunder).
Bichon teaches a cosmetic make-up composition for keratinous material in the form of a water-in-oil emulsion, which comprises at least one phenylated silicone oil of formula (I), a fat-soluble film-forming polymer, a water-soluble film-forming polymer selected from vinylpyrrolidone homopolymers and copolymers and pigments.
The preferred fat-soluble film-forming polymers include acrylate/polytrimethylsiloxymethacrylate copolymers, the silicone-modified carbosiloxane dendrimer of the present claim 7. See [0074 and 0086].
Table 2 discloses a water-in-silicone oil emulsion comprising an aqueous phase dispersed in the continuous oil phase, comprising acrylate/polytrimethylsiloxymethacrylate copolymer in the oil phase, at least one aqueous phase film former (VP/VA copolymer) in the aqueous phase, at least one oil which include silicone oils (dimethicone, isododecane, phenyl trimethicone, etc), at least one colorant (titanium dioxide, iron oxides, etc) and water. See present claims 1, 7, 9
Regarding claims 2-4, the composition comprises at least one thickening agent (hectorite) and at least one active agent (ethylhexyl methoxycinnamate and titanium dioxide).
Regarding claim 5, the colorants include titanium dioxide surfaced treated with sodium myristoyl glutamate and aluminum hydroxide.
Regarding claim 10, the disclosed emulsion contains 0.256 wt % of acrylates/polytrimethylsiloxymethacrylate copolymer (8 wt%, 3.2% active) and 0.2 wt % of VP/VA copolymers, which is about 1:1 ratio.
Regarding claim 11, the disclosed has all the structural limitations of the present claim and must have the same the average gloss properties as required by the claim unless shown otherwise.
Regarding claim 13, the disclosed formulation contains at least 17.74 wt % of oils (5 wt % dimethicone, 5 wt % phenyl siloxane, at least 7.74wt % isodecane, etc.).
Regarding claim 14, Bichon describes the process step of cosmetic application of the composition of Table 2 to achieve a long-lasting make-up effects.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bichon as applied to claims 1-5, 7, 9, 10, 11, 13 and 14 as above, and further in view of Foley (US 20150352017 A1, published on December 10, 2015).
Bichon teaches and suggests that the cosmetic composition can further comprise cosmetic active agents, including emollients, moisturizers, vitamins, lightening agents, etc. See [00145]. Although Bichon does not specifically disclose niacinamide, 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 Bichon to add vitamins 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 1-4, 7, 10, 12 and 13 are 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].
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 claims 2-4, Khale 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 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 claim 10, 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 12, Khale does not teach or suggest using phenylated silicone oil.
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.
Conclusion
No claims are allowed.
No prior art rejection has been made on claim 7; prior art consideration will be until the scope of the claim can be clarified. See above, the rejection under 35 U.S.C. 112 (b).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ebanks et al. (US 11058625 B2, cited in iDS) teach long-wear foundation and mascara compositions in the form of an emulsion containing silicone acrylate copolymer and silicone elastomer in a specified weight ratio; no water-soluble or -dispersible polymers are used.
Davis et al. (US 20080181858 A1) teach sunscreen compositions comprising one or more sunscreen agents and one or more water-dispersible film forming polymers. The reference teaches that suitable synthetic, water dispersible film forming polymers include VP/Methacrylamide/Vinyl Imidazole copolymer, among others.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GINA JUSTICE whose telephone number is (571)272-8605. The examiner can normally be reached M-F 9:00 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617