DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 20 February 2026, in response to the Office Correspondence dated 21 October 2025, are acknowledged.
The listing of Claims filed 20 February 2026, have been examined. Claims 1-20 are pending. Claims 1 and 3 are amended and are supported by the originally-filed disclosure. No claims are canceled and no new claims have been added.
Response to Amendment
The rejection of claims 1-20 under 35 U.S.C. § 112(b) is maintained for reasons set forth in the Response to Arguments below and a new ground of rejection under 35 U.S.C. § 112(b) has been made as necessitated by the amendment to claim 1 as set forth below.
The rejection of claim 15 under § 112(d) is withdrawn. While the substantive scope of claim 15 remains coextensive with the combination already covered by claims 13 and 14 collectively without introducing a meaningfully distinct limitation, the applicant correctly notes that claim 15 depends from claim 13 (which includes behenyl behenate) while claim 14 depends from claim 12 (which does not). The Examiner acknowledges this distinction and accordingly, the rejection is withdrawn.
The rejection under 35 U.S.C. § 103 over Rathsack, Novack, and Zewuhn and the provisional rejection for nonstatutory double patenting over the co-pending U.S. Patent Application 17/999,244 are maintained for the reasons set forth below in the Response to Arguments.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 21 October 2025, since the art which was previously cited continues to read on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 1-20 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, regards as the invention.
Claim 1 is indefinite for “a glycerin-in-oil emulsion”, rending the scope ambiguous. It is unclear whether the claim is limited to a lipstick whose entire mass is a glycerin-in-oil emulsion or whether the emulsion forms only part of a larger composition. The specification fails to define whether this is determined by phase volume fraction, continuous phase identity, or conductivity or microscopy. Without an objective test, the boundary between water-in-oil vs. glycerin-in-oil is unclear.
Claim 1 is also rejected for the limitation “free of mineral oil, paraffin wax, microcrystalline wax, shellac wax, polyethylene waxes, polyacrylates and crosslinked acrylate/C10–C30 alkyl acrylate polymers”, which is indefinite because the degree of “freedom” (i.e., absolute exclusion vs. trace impurities) is not defined. See MPEP 2173.05(n) regarding relative or qualitative terms (“free of”) requiring clarification.
Dependent claims 2-20 are included in this rejection because they do not cure the defect noted above. To overcome this rejection, Applicant may amend the claim to clearly state the emulsion as a glycerin-in-oil emulsion lipstick and amend the Specification to provide definition for “free of”.
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 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.
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Rathsack et al. (WO2021239384A1; published 12 February 2021, hereinafter referred to as “Rathsack”), in view of Novack (US20150164768A1; published 18 June 2015), and in further view of Zewuhn et al. (US20190388333A1; published 26 December 2019, hereinafter referred to as “Zewuhn”).
Rathsack teaches a method of production and cosmetic emulsion containing diisostearoyl polyglyceryl-3 dimer dilinoleate, polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate, and sunflower wax, wherein the preparation is free from mineral oil, paraffin wax, microsrystalline wax, shellac wax, polyethylene wax, polyacrylates, and acrylates/C10-30 alkyl acrylate crosspolymers and vinylpyrrolidone/hexadecene copolymers (Abstract).
Rathsack teaches use of weights based on the total weight of the preparation of 1-4% diisostearoyl polyglyceryl-3 dimer dilinoleate (claims 3 and 4), 0.5-2.5% polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate (claims 3 and 5), and 1-10% sunflower wax (claim 6), also containing behenyl behenate (claim 9), beeswax (claim 10), which directly overlap with the instant claims. The use of water and glycerol in the formulations are also taught, but the claimed ranges (claims 7 and 12) do not overlap with the instant claimed ranges. Rathsack teaches “…the preparation contains esters, the alcohol and acid units of which each comprise hydrocarbon chains of chain length C14 to C62.” (claim 8), which would include but does not explicitly mention carnauba wax, as carnauba wax primarily contains C28-C62 chain length esters (i.e., primarily C26-C32 range monocarboxylic acid and monohydric alcohol aliphatic esters, cinnamic acid diesters, and C28-C62 omega-hydroxy fatty acid and alcohol esters).
Example embodiments (page 8, lines 1-14, see table) include the use of 1.4% diisostearoyl polyglyceryl-3 dimer dilinoleate, 0.8% polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate, 1-2.5% Helianthus annuus seed cera [sunflower wax], 4-5% behenyl behenate, 4% cera alba [beeswax], Prunus amygdalus dulcis oil (20%), Ricinus communis seed oil (10%), however the formulations do not contain carnauba wax, contain only 10% glycerol [glycerin] and contain 50-55% water.
Further, Rathsack teaches the process for producing the cosmetic emulsion by combining the phases and homogenized at a temperature of 80 °C or higher (claim 2) followed by cooling with stirring to 70 to 75 °C and then poured into a casting mold for pens [pen-shaped stick] and in this is cooled to room temperature at a cooling rate of 0.2-0.4 °C / sec (claim 16), then after cooling to room temperature, the stick-shaped mass is removed from the mold and transferred to a storage container for stick-shaped preparations (claim 17). Producing a crayon shaped stick versus a pencil lead shaped stick is not patentably different.
Thus, Rathsack teaches all the limitations of the instant claims except the explicit inclusion of 0.3-2% carnauba wax (instant claims 1, 7 and 12), glycerin at 21-30% weight of the total composition (instant claim 2), and water at < 6% weight of the total composition (instant claim 3).
Novack teaches glycerin-in-oil emulsions for cosmetic application (Abstract), wherein compositions include lipstick (¶[0063]) with exemplary ranges of composition ingredients of 2-40% glycerin, a minor proportion of 1-10% water within the glycerin phase, and an oil phase containing wax, oils, emulsifiers and additional cometic ingredients/pigments (¶[0064], Table 1). From this, it is obvious to used glycerin-in-oil emulsions containing higher levels of glycerin and lower minor proportions of water in lipstick compositions and incorporate a known wax mixture in the oil phase, and to choose waxes, oils and additional cosmetic ingredients known in lipstick art.
Zewuhn teaches that in lipstick compositions, one may use sunflower wax and carnauba wax in mixtures (claim 27) in total wax fractions from 0.05-15% weight, based on a total weight of the formulation (claim 28). In the lipstick formulation example provided, carnauba wax [Copernicia cerifera cera] is used at 0.5% weight of the total composition (¶[0061]), which falls within the range of instant claims 7 and 12.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to produce the formulation described by Rathsack, substituting a mixture of sunflower wax and carnauba wax as disclosed by Zewuhn rather than just sunflower wax, as a matter of simple substitution of known ingredients in the cosmetic lipstick art for formulation optimization, as a glycerin-in-oil emulsion containing higher levels of glycerin and lower minor proportions of water as taught by Novack to be known in lipstick formulation art. A skilled artisan, seeking a “cleaner” or more natural formulation, would have readily omitted mineral oil or paraffin wax, which are known optional ingredients in many lipstick and emulsion formulations, without imparting an inventive effect. Combined, one of ordinary skill would have been motivated to substitute or incorporate these waxes into a glycerin-in-oil emulsion, as they are known and taught in the prior art, to obtain a solid lipstick. As such, it would have been obvious to one of ordinary skill in the art to formulate the instant invention in view of the combined teachings with a reasonable expectation of success.
Claim Rejections – Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of co-pending U.S. Patent Application 17/999,244 (hereinafter “the ’244 application”) in view of Novack (US20150164768A1; published 18 June 2015), and in further view of Zewuhn et al. (US20190388333A1; published 26 December 2019, hereinafter referred to as “Zewuhn”). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each for because the claims merely constitute an obvious variation of the composition or method of making previously claimed in the ’244 application in view of the formulation details taught by Novack and Zewuhn publication.
The ’244 application teaches a method of production and cosmetic emulsion containing diisostearoyl polyglyceryl-3 dimer dilinoleate, polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate, and sunflower wax, wherein the preparation is free from mineral oil, paraffin wax, microsrystalline wax, shellac wax, polyethylene wax, polyacrylates, and acrylates/C10-30 alkyl acrylate crosspolymers and vinylpyrrolidone/hexadecene copolymers (Abstract). It teaches the use of weights based on the total weight of the preparation of 1-4% diisostearoyl polyglyceryl-3 dimer dilinoleate (claims 3 and 4), 0.5-2.5% polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate (claims 3 and 5), and 1-10% sunflower wax (claim 6), also containing behenyl behenate (claim 9), beeswax (claim 10), which directly overlap with the instant claims. The use of water and glycerol in the formulations are also taught, but the claimed ranges (claims 7 and 12) do not overlap with the instant claimed ranges. The ’210 publication teaches “…the preparation comprises esters, of which the alcohol and acid unit each comprises hydrocarbon chains of chain length C14 to C62.” (claim 8), which would include but does not explicitly mention carnauba wax, as carnauba wax primarily contains C28-C62 chain length esters (i.e., primarily C26-C32 range monocarboxylic acid and monohydric alcohol aliphatic esters, cinnamic acid diesters, and C28-C62 omega-hydroxy fatty acid and alcohol esters). Example embodiments include the use of 1.4% diisostearoyl polyglyceryl-3 dimer dilinoleate, 0.8% polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate, 1-2.5% Helianthus annuus seed cera [sunflower wax], 4-5% behenyl behenate, 4% cera alba [beeswax], Prunus amygdalus dulcis oil (20%), Ricinus communis seed oil (10%), however the formulations do not contain carnauba wax, contain only 10% glycerol [glycerin] and contain 50-55% water (¶[0046]).
Further, the ’244 application teaches the process for producing the cosmetic emulsion by combining the phases and homogenized at a temperature of 80 °C or higher (claim 2) followed by cooling with stirring to 70 to 75 °C and then poured into a casting mold for pens [pen-shaped stick] and in this is cooled to room temperature at a cooling rate of 0.2-0.4 °C / sec (claim 16), then after cooling to room temperature, the stick-shaped mass is removed from the mold and transferred to a storage container for stick-shaped preparations (claim 17). Producing a crayon shaped stick versus a pencil lead shaped stick is not patentably different.
Thus, the ’244 application teaches all the limitations of the instant claims except the explicit inclusion of 0.3-2% carnauba wax (instant claims 1, 7 and 12), glycerin at 21-30% weight of the total composition (instant claim 2), and water at < 6% weight of the total composition (instant claim 3).
Novack teaches glycerin-in-oil emulsions for cosmetic application (Abstract), wherein compositions include lipstick (¶[0063]) with exemplary ranges of composition ingredients of 2-40% glycerin, a minor proportion of 1-10% water within the glycerin phase, and an oil phase containing wax, oils, emulsifiers and additional cometic ingredients/pigments (¶[0064], Table 1). From this, it is obvious to used glycerin-in-oil emulsions containing higher levels of glycerin and lower minor proportions of water in lipstick compositions and incorporate a known wax mixture in the oil phase, and to choose waxes, oils and additional cosmetic ingredients known in lipstick art.
Zewuhn teaches that in lipstick compositions, one may use sunflower wax and carnauba wax in mixtures (claim 27) in total wax fractions from 0.05-15% weight, based on a total weight of the formulation (claim 28). In the lipstick formulation example provided, carnauba wax [Copernicia cerifera cera] is used at 0.5% weight of the total composition (¶[0061]), which falls within the range of instant claims 7 and 12.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to produce the formulation described by the ’244 application, substituting a mixture of sunflower wax and carnauba wax as disclosed by Zewuhn rather than just sunflower wax, as a matter of simple substitution of known ingredients in the cosmetic lipstick art for formulation optimization, as a glycerin-in-oil emulsion containing higher levels of glycerin and lower minor proportions of water as taught by Novack to be known in lipstick formulation art. Combined, one of ordinary skill would have been motivated to substitute or incorporate these waxes into a glycerin-in-oil emulsion, as they are known and taught in the prior art, to obtain a solid lipstick. As such, it would have been obvious to one of ordinary skill in the art to formulate the instant invention in view of the combined teachings of the ’244 application, Novack, and Zewuhn with a reasonable expectation of success.
To overcome these rejections, the applicant may file a terminal disclaimer to disclaim any patent term that would extend beyond the expiration date of the referenced patents, provided the required common ownership is established.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 21 October 2025, as the Applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 1-20 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, regards as the invention.
Claim 1 is rejected as indefinite for failing to particularly point out and distinctly claim the subject matter. The recitation “wherein the lipstick is present as glycerin-in-oil emulsion” is ambiguous, contradictory, and fails to inform a person of ordinary skill in the art with reasonable certainty of the scope of the invention.
The new phrase “wherein the lipstick is present as glycerin-in-oil emulsion” is grammatically awkward and structurally unclear. The current phrasing suggests the solid lipstick “is present as” a liquid/semi-liquid emulsion, which is contradictory. A lipstick is a solid stick-shaped composition. An emulsion is a dispersion of two immiscible liquids. One of ordinary skill in the art would not understand with reasonable certainty how a solid lipstick can “be present as” a liquid or semi-liquid emulsion. It is unclear whether the entire lipstick is the emulsion (which would be structurally contradictory), whether the lipstick comprises the emulsion as a component (merely a phase within the larger composition), or whether the lipstick is formed from the emulsion.
MPEP § 2173.02 requires clear metes and bounds. The claim lacks explicit structural boundaries (e.g., “consisting essentially of” vs. “comprising”) relative to the emulsion. Accordingly, the scope remains uncertain. Dependent claims 2-20 are included in this rejection, as they depend from defective claim 1 and do not cure the defect noted above. To overcome this rejection, the applicant is advised to amend claim 1 to recite definite boundaries (e.g., “a cosmetic lipstick comprising a glycerin-in-oil emulsion” or “a cosmetic lipstick which is a solidified glycerin-in-oil emulsion”).
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 20 February 2026, have been fully considered.
The applicant traverses the 35 U.S.C. § 112(b) rejections of claims 1-20. However, the rejection is maintained and further clarified as follows.
The applicant argues that “free of” is not absolute and excludes only “traces.” The Specification provides no definition or threshold for “traces” (e.g., ppm, ppb, or weight percent). In the absence of any guidance, the scope of “free of” remains ambiguous. MPEP § 2173.05(n) explicitly states that terms of degree such as “free of” are indefinite unless the specification provides a standard for measuring that degree (i.e., objective boundaries). The claim does not specify analytical detection limits, or a quantitative threshold (e.g., <0.1 wt.%). Absent such guidance, “free of” is subject to multiple reasonable interpretations, including absolute absence, or absence of intentionally added material.
The applicant’s post-hoc attorney argument that “free of” means “not absolute” is not evidence of record and cannot cure the indefiniteness. To overcome this rejection, the applicant must amend the claim to recite “substantially free of”, “contains less than [x]% by weight based on the total weight of the composition”, or similar statement or provide a supporting definition of “free of” in the Specification. Therefore, the rejection is maintained.
Regarding the “based on a glycerin-in-oil emulsion” rejection, the applicant asserts the amendment to “wherein the lipstick is present as glycerin-in-oil emulsion” resolves the ambiguity associated with “based on a glycerin-in-oil emulsion”. However, the amended language now recites “a cosmetic lipstick, wherein the lipstick is present as glycerin-in-oil emulsion”. While this improves clarity, the new phrase “wherein the lipstick is present as” is structurally unclear. Ambiguity still remains as to whether the entire lipstick composition is the emulsion, or the emulsion is merely a phase within a larger composition. One of ordinary skill in the art would reasonably consider a lipstick a solid stick and also consider an emulsion a liquid or semi-liquid dispersion. Thus, a solid stick (lipstick) “present as” an emulsion is obscure. MPEP § 2173.02 requires clear metes and bounds. The claim lacks explicit structural boundaries (e.g., “consisting essentially of” vs. “comprising”) relative to the emulsion. Accordingly, the scope remains uncertain.
Regarding the rejection of claims 1-20 under 35 U.S.C. § 103, the applicant’s arguments are unpersuasive.
The applicant argues that Rathsack is limited to water-in-oil emulsions, and does not teach glycerin-in-oil emulsions. This argument is not persuasive. This is a distinction without a difference for obviousness purposes. Rathsack explicitly teaches emulsions comprising glycerin as a component of the internal phase and emulsions comprising both water (50-55 wt.%) and glycerol (up to 10 wt.%). Novack explicitly teaches the conversion of such systems into glycerin-in-oil emulsions for lipsticks with high glycerin (levels up to 40%) and low water (<6%). The modification from water-dominant internal phase to glycerin-dominant internal phase is a routine optimization of the polar phase composition, especially given Novack’s explicit teaching. No technical barrier or incompatibility is demonstrated.
The motivation to combine is straightforward- to achieve a more stable, less drying lipstick with higher humectant content. The applicant has not provided any evidence that the claimed glycerin-in-oil emulsion exhibits unexpected properties relative to a water-in-oil emulsion containing the same glycerin content (see In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc), wherein obviousness does not require identical prior art structures; it requires motivation to modify).
The applicant also argues that Rathsack limits glycerin to ≤20% and water ≥35%. However, Novack explicitly teaches 2-40% glycerin and low water content (1-10%). The claimed ranges of 21-30% glycerin and <6% water fall squarely within or adjacent to Novack’s teachings. Thus, selecting these values constitutes routine optimization. Overlapping ranges and optimization within known ranges are prima facie obvious (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)).
The applicant asserts that Novack requires xanthan gum. This argument is not persuasive. Novack’s claim 1 recites a composition “comprising” a polysaccharide, not “consisting essentially of” or “consisting of”. The permissive “comprising” means xanthan gum is an optional, not mandatory, ingredient. The claims of Novack do not universally require polysaccharides for all embodiments. Moreover, Novack’s specification discloses multiple embodiments without polysaccharides. The Examiner is not required to combine every single element of a prior art reference. The combination is of teachings, not entire compositions (see In re Baird, 16 F.3d 380 (Fed. Cir. 1994)). Even if present, omission of a non-critical thickener is obvious (see MPEP § 2144.04). No evidence is provided that xanthan gum is essential to operability.
The applicant argues that Zewuhn only addresses carnauba wax. Correct. This is precisely why Zewuhn is cited. Zewuhn explicitly teaches combining sunflower wax and carnauba wax at ~0.5 wt.% (within claimed range) in lipstick compositions. Zewuhn is cited to teach the substitution of sunflower wax with a sunflower wax/carnauba wax mixture. The combination of Rathsack (teaches sunflower wax), Zewuhn (teaches substituting/adding carnauba wax), and Novack (teaches adjusting glycerin/water ratios) establishes a prima facie obviousness case of simple substitution of known ingredients for their intended purpose, with predictable results. Substitution of one known wax for another is a predictable use of prior art elements (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
Regarding the “free of” components, Rathsack already teaches formulations free of mineral oil, paraffin wax, polyethylene waxes, etc. Thus, this limitation is explicitly disclosed. The applicant also argues lack of motivation to combine the references. Rathsack provides the base formulation and process, Novack teaches glycerin-rich emulsions for improved sensory properties, and Zewuhn teaches wax optimization for lipstick structure. The motivation to combine the references is for formulation optimization and ingredient substitution within known classes. This is consistent with KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), where predictable variations are obvious.
Last, the applicant argues that the examiner has provided only conclusory statements. This argument is not persuasive and fails to address the specific rationales provided. The previous Office Correspondence, dated 21 October 2025, provided detailed reasoning, including identification of specific claim limitations taught by each reference, the differences (e.g., carnauba wax, glycerin %, water %), and the motivation to combine (e.g., formulation optimization, achieving a “cleaner” label, adjusting humectant levels).
To succinctly reiterate the specific rationale, Rathsack teaches a lipstick composition comprising components (a), (b), (c), and the “free of” limitations. Rathsack teaches 10% glycerin and 50-55% water. Rathsack does not teach 21-30% glycerin, <6% water, or carnauba wax. Novack teaches glycerin-in-oil emulsions for lipsticks with 2-40% glycerin and 1-10% water (<6% falls within this range). Thus, it would have been obvious to modify Rathsack’s water-in-oil emulsion to a glycerin-in-oil emulsion by increasing glycerin to 21-30% and reducing water to <6% to enhance moisturization and stability, as taught by Novack. Zewuhn teaches lipstick compositions comprising sunflower wax and carnauba wax in combination, with carnauba wax at 0.5% by weight (within claim 7’s 0.3-2% range). Thus, it would have been obvious to substitute or supplement Rathsack’s sunflower wax with the sunflower/carnauba wax mixture taught by Zewuhn as a matter of routine formulation optimization.
The applicant has not submitted objective evidence of nonobviousness (e.g., unexpected results, commercial success, long-felt need, failure of others). The applicant is reminded that attorney arguments alone cannot overcome a prima facie case of obviousness (see In re De Blauwe, 736 F.2d 699 (Fed. Cir. 1984)).
The provisional double patenting rejection is maintained for the same reasons as the 35 U.S.C. § 103 rejection, given the applicant relies on the same arguments presented for the 35 U.S.C. § 103. These arguments are not persuasive for the same reasons discussed above. The examiner incorporates by reference the motivation provided for the 35 U.S.C. § 103 rejection above. The claims of the instant application differ from those of co-pending Application No. 17/999,244 only by glycerin/water optimization, and inclusion of carnauba wax. These differences are obvious variations in view of Novack (glycerin-in-oil systems), and Zewuhn (wax substitution). Accordingly, the claims are not patentably distinct. A terminal disclaimer remains an appropriate remedy for the applicant to overcome this 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 (87 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 REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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