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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-2 and 4-19 in the reply filed on 1/21/26 is acknowledged. The traversal is on the ground(s) that the inventions are product and process claims and not an apparatus for making the product This is not found persuasive because a dual use cosmetic and analgesic composition for topical application can be made with a different method. If the elected claims are found allowable a rejoinder may be possible .
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed May 29, 2024. The Examiner has considered the references cited therein to the extent that each is a proper citation. Please see the attached USPTO Form 1449.
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.
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(s) 1-2, 4-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schlessinger et al. (US 2012/0100183) in view of Mendoza (US 20210228460) and Hagiwara et al. (JP 2002193749).
Schlessinger teaches with regards to instant claim 1, a dual use composition comprising a topical base (see tittle) for lips (i.e., used for lip cracks/sore and pain see 0008, 0017,0601 as required by instant claims 1 and 2) and as a cosmetic composition (see 0208) comprising at least one pigment base i.e., titanium oxide (see 0018, as required by instant claims 1 and 12), a stabilizing agent cetearyl alcohol (as required by instant claims 1 and 9, see 0561), wherein the cold sore analgesic comprises camphor (see 0017-0018) , a camphorated phenol ie., 4-Methylbenzylidene camphor (see 0473, as required by instant claims 6-7 and therefore relieves pain), a conditioning agent (see 0016, as required by instant claim 5) and may also comprise a texturing agent as the reference does teach the composition improves healing tone and texture appearance (see 0601, as required by instant claim 4), a conditioning agent i.e., beeswax (as required by instant claim 5, see 0586).
However Schlessinger fails to teach the required concentrations of the active agents
Mendoza teaches a lip composition (see abstract) also a cosmetic composition (see 0020) comprising cold sore treatment agents (see 0078, as required by instant claim 2) wherein the pigment is either titanium dioxide or iron oxide (as required by instant claims 1, 11-12 and 17 see 0006), wherein the pigment is from 0.35-13.5wt% (see 0008) configured for cosmetic for light, medium or dark skin is an intended use. The lip composition also comprises wax from 0.38-38 wt% (0012) and a stabilizing agent silica (see 0009) accordingly all the agents recited are present therefore the composition is hydrophobic as required by instant claim 1. Mendoza also teaches that the compositions active agent can be an analgesic (see 0076), comprises a camphor/ camphorated phenol ie., 4-Methylbenzylidene camphor (see 0050, as required by instant claims 6-7), cetearyl alcohol as the stabilizing agent (see 0059, as required by instant claim 9) contained in an applicator for topical use (see 0083, as required by instant claim 16) and an emulsifying agent as required by instant claim 17 in part, see 0058).
Hagiwara teaches a lip composition for makeup i.e., cosmetic (see abstract) comprising hydrogenated methyl abietate (see example 10, as required by instant claim 10), thus motivation to use hydrogenated methyl abietate in a cosmetic composition or lip composition with a reasonable expectation of success as it is known in the art to be used in both compositions..
It would have been obvious to one of ordinary skill in the art to have expanded the teachings of Schlessinger to include Mendoza and use the concentration taught because the concentrations of the active agents is well within the purview of the skilled artisan to determine the optimum amounts to get the maximum effect of the drug, hence the reference makes obvious the instant invention. Additionally, it would have been obvious to combine these references and make the modification because they are drawn to same technical fields (constituted with same ingredients and share common utilities, and pertinent to the problem which applicant concerns about. MPEP 2141.01(a).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schlessinger et al. (US 2012/0100183) in view of Mendoza (US 20210228460) and Hagiwara et al. (JP 2002193749) as applied to claims 1-2 and 4-17 above.
Schlessinger is applied here as above and further teaches with regards to claims 18-19, a package/kit comprising a topical composition (see 0598, Fig. 1) comprising an applicator (see 0602 for topical).
Mendoza is applied here as above and further teaches that their composition comprises kits (see 0017, 0079) with an applicator
Hagiwara teaches a lip cosmetic that can be applied as a lip balm, lip gloss, lipstick base.
One would have been motivated to assemble a kit, i.e., put the reagents in a box containing instructions how to use, because they are convenient to use and save time.
If there is no novelty in an article or composition itself, then a patent cannot be properly granted on the article or composition, regardless of the use for which it is intended. The difficulty is not that there can never be invention in discovering a new process involving the use of an old article, but that the statutes make no provision for patenting of an article or composition which is not, in and of itself, new.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 3/13/26
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