DETAILED ACTION
Status of Claims
Claims 1-34 are currently pending. Claims 1-2, 5-8 and 14-33 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. Non-elected claims 3-4, 9-13 and 34 are withdrawn from consideration. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final.
Election/Restrictions
Applicant’s election of the claims of Group I (claims 1-33) in the response filed on July 14, 2026 (to the April 15, 2026 Requirement for Restriction) is acknowledged. In response to applicant’s election, the claim of Group II (claim 34) is withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has elected the claims of Group I with traverse.
Also in the response dated July 14, 2026, applicant elected, with traverse, the following species:
(i) “apolar volatile hydrocarbon oil - isododecane”;
(ii) “liquid hydrocarbon solvent with a molecular mass of less than 600 g/mol - ethanol”; and
(iii) “silicone elastomer with carboxylic acid functions - HEXYL/SUCCINYL DIMETHICONE CROSSPOLYMER”
and identified claims 1, 2, 5-8 and 14-34 as reading on the elected species. Therefore, claims 3-4 and 9-13 are withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
The traverse is based on applicant’s arguments:
As for Group II (claim 34), this claim directly depends from preceding claims. Applicant respectfully submits that sufficient overlap of subject matter exists between Group I and Group II claims because of this dependency, in particular with respect to ingredients, such that search and examination for all groups would not be overly burdensome. As such, Applicant respectfully requests reconsideration and withdrawal of the Restriction Requirement at this time.
[…]
Regarding this election, Applicant respectfully submits that no extra burden related to search and examination of species of apolar volatile hydrocarbon oil, hydrocarbon solvent, and silicone elastomer other than isododecane, ethanol, and hexyl/succinyl dimethicone crosspolymer would exist given the common functionality and properties of non-elected species for these types of ingredients. Accordingly, searching for disclosure related to one of these compounds would probably result in disclosure of the other non-elected compounds as well. Accordingly, no exhaustive additional search or examination would be required among these ingredients. For at least these reasons, Applicant respectfully requests reconsideration and withdrawal of the Election of Species Requirement.
07/14/2026 Remarks, p. 18, par. 2 & 4. In response: it is noted that Group I and Group II, as originally restricted 04/15/2026 Office action, are in separate areas of classification (i.e., Group I, the composition in CPC A61K 8/898, and Group II, the process of making the composition in CPC A61Q 19/00), wherein the separate classification provides for the inventions of Groups I and Group II as being distinct, and whereby art that would read on the claims of Group I, would not necessarily read on the claims of Group II, and vice versa. Further different species encompassed by the instant invention do, in fact, create a serious search burden for the examiner. For instance, the examiner would need to search the scope of the elastomer as well as its incorporation in numerous compositions. Burden consists not only of specific searching of classes and subclasses, but also of searching multiple databases for foreign references and literature searches. Burden also resides in the examination of independent claim sets for clarity, enablement, and double patenting issues. Further, a reference that would anticipate the invention of one species would not necessarily anticipate or even make obvious another species. Therefore, restriction is still deemed proper.
Accordingly, the April 15, 2026 Requirement for Restriction is made FINAL, and claims 1-2, 5-8 and 14-33 are examined as follows.
Claim Objections
The following claims are objected to because of the following informalities:
A. Claim 2 is objected to because of the following informality: the claim should end with a period. See MPEP § 608.01(m).
B. Claim 5 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
C. Claim 6 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
D. Claim 7 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
E. Claim 8 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
F. Claim 5 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
G. Claim 14 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
H. Claim 15 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
I. Claim 16 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
J. Claim 17 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
K. Claim 18 is objected to because of the following informality: the claim should end with a period. See MPEP § 608.01(m).
L. Claim 20 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution. To the extent applicant intends the most limiting form, examiner suggests amending claim 20 to read:
[Claim 20] ([…]) Composition according to claim [x]
M. Claim 21 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
N. Claim 22 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
O. Claim 23 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
P. Claim 24 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
Q. Claim 25 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
R. Claim 27 is objected to because the claim should read:
[Claim 27] ([…]) Composition according to claim 20, comprising at least the silicone elastomer in gel form dispersed in isododecane
S. Claim 28 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
T. Claim 30 is objected to because the claim should read:
[Claim 30] ([…]) Composition according to claim 28, wherein the dimethiconol type silicone/silicone resin copolymer is
U. Claim 31 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution. To the extent applicant intends the most limiting form, examiner suggests amending claim 31 to read:
Claim 31] ([…]) Composition according to claim [x]
V. Claim 32 is objected to under 37 C.F.R. § 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only--, and/or, and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). However, the claim has been examined for the purpose of expedited prosecution.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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 2, 5-8 and 14-33 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 pre-AIA , that applicant regards as the invention.
A. Claim 2 is drawn to:
[Claim 2] ([…]) Composition according to claim, wherein the apolar volatile hydrocarbon oil H1 is selected from C8-C16 isoalkanes of petroleum origin, and more particularly isododecane[.]
in dependent claim form, but does not specify whether or not dependency is from independent claim 1, or some other claim, thereby rending the metes and bounds of the claim unclear. Subsequent claims 5-8, 14-33 appear to depend on claim 2 with multiple dependency, and are thus, indefinite as well.
B. Regarding claim 5, the use of “more preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more preferably ranging from 70 to 90 wt % based on the total weight of the oil phase”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
C. Regarding claim 6, the use of “more preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more preferably from 55 to 75% by weight based on the total weight of the composition”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
D. Regarding claim 7, the use of “more preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more preferably less than 400 g/mol, and more particularly less than 300 g/mol”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
E. Regarding claim 15, the use of “more preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more preferably ranging from 2 to 15% by weight based on the total weight of the composition”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
F. Regarding claim 16, the use of “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “preferably ranging from 5 to 20 wt % based on the weight of the composition”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
G. Regarding claim 21, the use of “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “preferably said H2 oil is selected from volatile hydrocarbon oils, volatile silicone oils, nonvolatile hydrocarbon oils, nonvolatile silicone oils, and mixtures thereof”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
H. Regarding claim 24, the use of “more preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more preferably from 20 to 35% by weight based on the total weight of the oil dispersion”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
I. Regarding claim 27, the use of “more particularly” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more particularly at an active material content of 30% by weight in the isododecane-based dispersion”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
J. Regarding claim 29, the use of “more particularly” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “more particularly a Trimethylsiloxysilicate resin”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
K. Regarding claim 32, the use of “in particular” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “in particular said inorganic pigment comprises a lipophilic or hydrophobic coating”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
L. Regarding claim 33, the use of “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “preferably from 10 wt % to 30 wt %, more preferably from 15 to 25 wt % based on the total weight of the composition”) are part of the claimed invention. It is noted that descriptions of examples and preferences are properly set forth in the specification rather than in a claim. See MPEP § 2173.05(c).
Further clarification is required.
Claim Rejections – 35 U.S.C. § 102
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.
Claims 1-2, 7, 15 and 32-33 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by MARY KAY (US 2016/0199286 A1, Publ. Jul. 14, 2016; US equivalent of WO 2015/066199 A1, on 01/29/2025 IDS; hereinafter, “Mary Kay).
For translation: Paragraph [or Column and line] numbers for [REFERENCE] refer to English language translation of [Publication Number or Short Citation].
Mary Kay, for instance, is directed to:
COSMETIC COMPOSITION COMPRISING A CARBOXY-FUNCTIONAL ELASTOMER
ABSTRACT
A cosmetic composition is provided that includes an elastomer and at least one cosmetic component optionally in a cosmetically acceptable medium. The elastomer is according to the general formula: A-B-A or B-A-B, wherein each A independently comprises a polysiloxane moiety having at least two siloxy (Si—O) groups and wherein each B independently comprises a moiety, or a precursor thereof, having at least two carboxyl groups and wherein B is bonded to a silicon atom in A.
Mary Kay, title & abstract. In this regard, Mary Kay teaches a “W/O Foundation”:
W/O Foundation
Formulation 13: W/O Foundation
[0386]
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[0387] The silicone polyether (Bis-Isobutyl PEG/PPG-10/7/Dimethicone Copolymer) can be either omitted or replaced by similar type of material as described in the antiperspirant formulation number 2.
[0388] Silicone wax (C30-C45 Alkyldimethylsilyl Polypropylsilsesquioxane) can be replaced by other waxes as described in Formulation 8.
[0389] Film forming polymer (Trimethylsiloxysilicate and polypropylsilsesquioxane) can be replaced by any other film former corresponding to the following definition: “The term “film-forming polymer” means a polymer capable, by itself or in the presence of an auxiliary film-forming agent, of forming a macroscopically continuous film on a support, especially on keratin materials, preferably a cohesive film and better still a film whose cohesion and mechanical properties are such that the said film can be isolated from the said support”.
[0390] The volatile silicone oil (Caprylyl methicone) can be replaced by any “volatile oil” as described in Formulation 6.
[0391] The pigments (Iron Oxides) can be replaced by any other pigment as described in Formulation 7.
Mary Kay, par. [0386]-[0391], Ex. 13.
Regarding claim 1 and the requirements:
[Claim 1] ([…]) Non-solid composition for caring for and/or making up keratinous materials, in particular the skin, comprising, preferably in a physiologically acceptable medium:
a) an oily phase comprising
i) at least one apolar volatile hydrocarbon oil H1 and
ii) at least one liquid hydrocarbon solvent with a molecular mass of less than 600 g/mol comprising at least one alcohol, carboxylic acid, amine or amide function and mixtures thereof; and
b) at least one silicone elastomer with carboxylic acid functions;
the ratio by weight of the total amount of volatile oil(s) to the total amount of liquid hydrocarbon solvent(s) ii) being less than or equal to 20.0.
Mary Kay clearly teaches a “W/O Foundation” (Mary Kay, par. [0386]-[0391], Ex. 13), WHEREBY it is noted:
“Isododecane” (Mary Kay, par. [0386], Ex. 13) is encompassed by the elected species of “i) at least one apolar volatile hydrocarbon oil H1” of “a) an oily phase” of claim 1, “C8-C16 isoalkanes” of claim 2:
[Claim 2] ([…]) Composition according to claim, wherein the apolar volatile hydrocarbon oil H1 is selected from C8-C16 isoalkanes of petroleum origin, and more particularly isododecane[.]
as well as an “H2 oil” of claims 21-23:
[Claim 21] ([…]) Composition according to any one of the preceding claims, wherein the carboxylic acid-functional silicone elastomer is dispersed in at least one H2 oil and in gel form; preferably said H2 oil is selected from volatile hydrocarbon oils, volatile silicone oils, nonvolatile hydrocarbon oils, nonvolatile silicone oils, and mixtures thereof.
[Claim 22] ([…]) Composition according to claim 21, wherein the H2 oil is a volatile hydrocarbon oil selected from those defined for H1 oil in any of claims 1 to 4.
[Claim 23] ([…]) Composition according to claim 21 or 22, wherein the H2 oil and the H1 oil are identical, in particular denote isododecane.
15.0 wt.% “Glycerin” (Mary Kay, par. [0386], Ex. 13), having a molecular weight of 92/09 g/mol, is encompassed by “ii) at least one liquid hydrocarbon solvent with a molecular mass of less than 600 g/mol comprising at least one alcohol, […] function” of “a) an oily phase” of claim 1, as well as a “liquid hydrocarbon solvent(s) comprising at least one alcohol, […] function” with “a molecular weight of less than 500 g/mol” of claims 7 and 15:
[Claim 7] ([…]) Composition according to any one of the preceding claims, wherein the liquid hydrocarbon solvent(s) comprising at least one alcohol, carboxylic acid, amine and/or amide function has (have) a molecular weight of less than 500 g/mol, more preferably less than 400 g/mol, and more particularly less than 300 g/mol.
[…]
[Claim 15] ([…]) Composition according to any one of the preceding claims, wherein the liquid hydrocarbon solvent(s) with alcohol, carboxylic acid, amine or amide function is (are) present in contents ranging from 1 to 20% by weight, and more preferably ranging from 2 to 15% by weight based on the total weight of the composition.
a “COOR-elastomer” (Mary Kay, par. [0386], Ex. 13) is encompassed by the broadest reasonable interpretation of “b) at least one silicone elastomer with carboxylic acid functions” of claim 1;
wherein the amounts of:
20.0 wt.% “COOH-elastomer” plus 1.0 wt.% “Isododecane” (Mary Kay, par. [0386], Ex. 13) amounts to a “total amount of volatile oil(s)” (of claim 1) of 21.0 wt.% TO
15.0 wt.% “Glycerin” (Mary Kay, par. [0386], Ex. 13) amounting to a “the total amount of liquid hydrocarbon solvent(s) ii)” (of claim 1)
is a ratio thereof of 21.0 wt.% to 15.0 wt. % or 1.4, thereby reading on “the ratio by weight of the total amount of volatile oil(s) to the total amount of liquid hydrocarbon solvent(s) ii) being less than or equal to 20.0” of claim 1 (it is noted that MPEP § 2131.03 states “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art,” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)).).
Thus, Mary Kay anticipates claims 1-2, 7 and 15.
Regarding claims 32-33 and the requirements:
[Claim 32] ([…]) Composition according to any one of the preceding claims, further comprising at least one pulverulent colorant, preferably an inorganic pigment, in particular said inorganic pigment comprises a lipophilic or hydrophobic coating.
[Claim 33] ([…]) Composition according to claim 32, wherein the pulverulent colorant(s) is (are) present, in a content ranging from 5 to 40 wt %, preferably from 10 wt % to 30 wt %, more preferably from 15 to 25 wt % based on the total weight of the composition.
Mary Kay teaches a “W/O Foundation” containing 7.0 wt.% “Pigment (Iron Oxide, Titanium Dioxide”) (Mary Kay, par. [0386]-[0391], Ex. 13), which is encompassed by a “pulverulent colorant” of claims 32-33, and “inorganic pigment” of claim 32, and amounts thereof.
Thus, Mary Kay anticipates claims 32-33.
Claim Rejections – 35 U.S.C. § 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) 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 C.F.R. § 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 1-2, 5-8, 14-16, 21-25 and 32-33 are rejected under 35 U.S.C. § 103 as being unpatentable over MARY KAY (US 2016/0199286 A1, Publ. Jul. 14, 2016; US equivalent of WO 2015/066199 A1, on 01/29/2025 IDS; hereinafter, “Mary Kay).
The teachings of Mary Kay, as set forth in the above rejection of claims 1-2, 7, 15 and 32-33 under 35 U.S.C. § 102 (a)(1) are hereby incorporated. However, to the extent that Mary Kay DOES NOT EXPRESSLY TEACH a single exemplary embodiment also meeting the requirements of Claims x, ther requirements thereof would be obvious per Mary Kay’s broader disclosure. In this regard, it is noted that a reference is analyzed using its broadest teachings. MPEP § 2123 [R-5] states: “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Regarding claims 5-6, 14 and 16 and the requirements:
[Claim 5] ([…]) Composition according to any one of the preceding claims, wherein the apolar volatile hydrocarbon oil(s) H1 is (are) present in contents ranging from 50 to 90 wt %, and more preferably ranging from 70 to 90 wt % based on the total weight of the oil phase.
[Claim 6] ([…]) Composition according to any one of the preceding claims, wherein the apolar volatile hydrocarbon oil(s) H1 is (are) present in an amount ranging from 45 to 85% by weight, and more preferably from 55 to 75% by weight based on the total weight of the composition.
[…]
[Claim 14] ([…]) Composition of any one of the preceding claims, wherein the ratio by weight of the total amount of volatile oil(s) based on the total weight of the composition to the total amount of liquid solvent(s) ii) based on the total weight of the composition] ranges from 5 to 20.
[…]
[Claim 16] ([…]) Composition according to any one of the preceding claims, comprising a carboxylic acid-functional silicone elastomer active material content ranging from 2 to 25 wt %, preferably ranging from 5 to 20 wt % based on the weight of the composition.
Mary Kay teaches “isododecane” (Mary Kay, par. [0292]) among suitable “diluents” (Mary Kay, par. [0291]-[0292]) as part of a “Cosmetically Acceptable Medium” that “can be present in an amount ranging from 0.1% to 99.9% weight percent based upon the total weight of the cosmetic composition,” while “The general level of elastomer of any embodiment described above in the cosmetic compositions may vary from 0.1% to 95% by weight”:
Cosmetically Acceptable Medium
[0296] A cosmetically acceptable medium is meant to designate a medium particularly suitable for apply a composition of the invention on keratin materials.
[0297] The cosmetically acceptable medium is generally adapted to the nature of the support on which the composition should be applied as well as to the aspect under which the composition should be conditioned and includes water, solvents, diluents, or mixtures and emulsions thereof.
[0298] When utilized, the cosmetically acceptable medium can be present in an amount ranging from 0.1% to 99.9% weight percent based upon the total weight of the cosmetic composition.
Cosmetic Composition and Methods of Preparation
[0299] The general level of elastomer of any embodiment described above in the cosmetic compositions may vary from 0.1% to 95% by weight, alternatively from 0.2% to 50%, alternatively from 0.5% to 25%, relative to the total weight of the cosmetic composition. The cosmetic component is present at a level of from 0.01% to 99.99% by weight, relative to the total weight of the cosmetic composition. The cosmetic component may be a mixture of cosmetic components as listed above.
(Mary Kay, par. [0296]-[0299]). Therefore, it would have been prima facie obvious to one of ordinary skill in the art to rearrange Mary Kay’s “W/O Foundation” (Mary Kay, par. [0386]-[0391], Ex. 13) per Mary Kay’s broader disclosure to contain:
“Isododecane” (Mary Kay, par. [0386], Ex. 13) among suitable “diluents” (Mary Kay, par. [0291]-[0292]) as part of a “Cosmetically Acceptable Medium” that “can be present in an amount ranging from 0.1% to 99.9% weight percent based upon the total weight of the cosmetic composition” (Mary Kay, par. [0296]-[0298]); and
a “COOR-elastomer” (Mary Kay, par. [0386], Ex. 13), wherein “[t]he general level of elastomer of any embodiment described above in the cosmetic compositions may vary from 0.1% to 95% by weight, alternatively from 0.2% to 50%, alternatively from 0.5% to 25%, relative to the total weight of the cosmetic composition” (Mary Kay, par. [0299]).
In this respect, it is noted that MPEP § 2144.05 (I), states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d, 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).”
Thus, Mary Kay renders claims 5-6, 14 and 16 obvious.
Regarding claim 8 and the requirements:
[Claim 8] ([…]) Composition according to any one of the preceding claims, wherein the liquid hydrocarbon solvent is ethanol.
Mary Kay teaches the incorporation of “water phase stabilizing agents,” inter alia, “polyols (glycerine, propylene glycol, butylene glycol, and sorbitol), alcohols such as ethyl alcohol, and hydrocolloids” (Mary Kay, par. [0253]), wherein “glycerine” and “ethyl alcohol” are disclosed as functionally equivalent “water phase stabilizing agents,” wherein “ethyl alcohol” is noted as “ethanol” of claim 8, the elected species of “liquid hydrocarbon solvent.” Regarding equivalents known for the same purpose, MPEP § 2144.06 (II) states: “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).”
Thus, Mary Kay renders claim 8 obvious.
Regarding claims 21-25 and the requirements:
[Claim 21] ([…]) Composition according to any one of the preceding claims, wherein the carboxylic acid-functional silicone elastomer is dispersed in at least one H2 oil and in gel form; preferably said H2 oil is selected from volatile hydrocarbon oils, volatile silicone oils, nonvolatile hydrocarbon oils, nonvolatile silicone oils, and mixtures thereof.
[Claim 22] ([…]) Composition according to claim 21, wherein the H2 oil is a volatile hydrocarbon oil selected from those defined for H1 oil in any of claims 1 to 4.
[Claim 23] ([…]) Composition according to claim 21 or 22, wherein the H2 oil and the H1 oil are identical, in particular denote isododecane.
[Claim 24] ([…]) Composition according to any one of claims 21 to 23, wherein the carboxylic acid-functional silicone elastomer oil dispersion comprises from 10 to 40% by weight of silicone elastomer active material, and more preferably from 20 to 35% by weight based on the total weight of the oil dispersion.
[Claim 25] ([…]) Composition according to any one of claims 21 to 24 wherein the carboxylic acid functional silicone elastomer is dispersed in isododecane and in gel form.
Mary Kay clearly teaches a “W/O Foundation” (Mary Kay, par. [0386]-[0391], Ex. 13), WHEREBY it is noted:
“Isododecane” (Mary Kay, par. [0386], Ex. 13), which encompasses “H1” and “H2” of claims 21-23, and “isododecane” of claim 25; and
a “COOR-elastomer” (Mary Kay, par. [0386], Ex. 13), wherein “[t]he general level of elastomer of any embodiment described above in the cosmetic compositions may vary from 0.1% to 95% by weight, alternatively from 0.2% to 50%, alternatively from 0.5% to 25%, relative to the total weight of the cosmetic composition” (Mary Kay, par. [0299]), which encompasses a “silicone elastomer active material” of claim 24 and “carboxylic acid functional silicone elastomer” of claim 25, as well as amounts of claim 24.
With respect to suitable compositional forms, Mary Kay teaches that “the cosmetic compositions may be in the form of a cream, a gel” (Mary Kay, par. [0303]), which encompasses a “gel form” of claim 25. See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, Mary Kay renders claims 21-25 obvious.
Claims 28-31 are rejected under 35 U.S.C. § 103 as being unpatentable over MARY KAY (US 2016/0199286 A1, Publ. Jul. 14, 2016; US equivalent of WO 2015/066199 A1, on 01/29/2025 IDS; hereinafter, “Mary Kay), as applied to claims 1-2, 5-8, 14-16, 21-25 and 32-33, above, and further in view of PATRON (US 2017/0087199 A1, Publ. Mar. 30, 2017; hereinafter, “Patron”).
The teachings of Mary Kay, as set forth above, are hereby incorporated. However, to the extent that Mary Kay DOES NOT EXPRESSLY TEACH the requirements of claims 28-31 for:
[Claim 28] ([…]) Composition according to any one of the preceding claims, further comprising at least one silicone resin and/or at least one dimethiconol silicone-silicone copolymer.
[Claim 29] ([…]) Composition according to claim 28, wherein the silicone resin is an MQ resin, more particularly a Trimethylsiloxysilicate resin.
[Claim 30] ([…]) Composition according to claim 28, wherein the dimethiconol type silicone/silicone resin copolymer is a copolymer with the INCI name: TRIMETHYLSILOXYSILICATE/DIMETHICONOL CROSSPOLYMER.
[Claim 31] ([…]) Composition according to any one of the preceding claims, additionally comprising at least one silicone polyamide, in particular with the INCI name: NYLON-611/DIMETHICONE COPOLYMER.
the choice of the suitable cosmetic components is well within the purview of the ordinarily skilled artisan.
Patron, for instance is directed to:
COMPOSITIONS FOR DELIVERING A COOLING SENSATION
ABSTRACT
Disclosed herein are compositions comprising combinations of one or more cooling agents with additional cooling agents, inactive drug ingredients, food additives, antimicrobials, corticosteroids, compounds known to be used in the production of home, personal care, and pet care products, and smokable materials. Further disclosed are foodstuffs, medicaments, personal care products, home products, pet care products, warming compositions, probiotic supplements and smoking articles produced by incorporating the disclosed combinations.
Patron, title & abstract. In this regard, Patron teaches suitable excipients, inter alia, “Dimethiconol/Trimethylsiloxysilicate Crosspolymer” (Patron, par. [0024]), which is a “silicon resin” of claims 28-30, and “Nylon-611/Dimethicone Copolymer” (Patron, par. [0025]), which is “NYLON-611/DIMETHICONE COPOLYMER’ of claim 31.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate Mary Kay’s “W/O Foundation” (Mary Kay, par. [0386]-[0391], Ex. 13) with “Dimethiconol/Trimethylsiloxysilicate Crosspolymer” and “Nylon-611/Dimethicone Copolymer” per Patron (Patron, par. [0024]-[0025]). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of suitable excipients (Patron, par. [0024]-[0025]) for personal care products (Patron, abstract). See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the prior art renders claims 28-31 obvious.
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 obviousness-type 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-2, 5-8, 14-30 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-5, 7-10 and 12-16 of copending Application No. 18/692,095 (‘095 Application).
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition comprising Hexyl/Succinyl Dimethicone Crosspolymer (i.e. silicone elastomer); Trimethylsiloxysilicate Dimethiconol Crosspolymer; isododecane (i.e. oil); and a C2-C6 mono alcohol, in overlapping amounts.
Thus, claims 1-2, 5-8, 14-30 and 32-33 are anticipated by claims 1-5, 7-10 and 12-16 of the ‘095 Application.
Allowable Subject Matter
Claims 17-20 and 26-27 are drawn to allowable subject matter (encompassing the elected species of (iii) HEXYL/SUCCINYL DIMETHICONE CROSSPOLYMER) pending address of the objections and rejections under 35 U.S.C. § 112(b), and nonstuatutory double patenting, discussed above. In this regard, KERGOSIEN (FR 3126877 B1, Publ. Mar. 17, 2023; Filed Sep. 15, 2021; as evidenced by US 2024/0358622 A1, Publ. Oct. 31, 2024 as an English language translation; on 01/29/2025 IDS) is noted as a reference of interest.
Conclusion
Claims 1-2, 5-8 and 14-33 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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