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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated November 12, 2025 is acknowledged.
Claims 1-5 and 16-24 are pending.
Claims 6-15 are cancelled.
Claims 1, 4, 5 and 16-19 are currently amended.
Claims 21-24 are new.
Claims 1-5 and 16-24 as filed on November 12, 2025 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, some of the previous claim objections are withdrawn, all of the previous claim rejections under 35 USC 112(d) are withdrawn and all of the previous claim rejections under 35 USC 103 are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, final wherein clause: “a content ratio” is properly “the content ratio” and “a total amount” is properly “the total amount” because antecedent basis is implicit.
Appropriate correction is required.
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 5, 17 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites the fatty acid triglyceride (A2) having a melting point of 30 ºC or higher, however, claim 1 as currently amended recites a fatty acid triglyceride (A) having a melting point of 30 ºC or higher and 45 ºC or lower selected from caprylic/capric/myristic/stearic triglyceride and C10-18 triglycerides. Claim 4 omits the limitations of the highest melting temperature and the specific triglycerides newly added to claim 1. Claims 5, 17 and 19 are included in this rejection because they depend from claim 4.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 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 of this title, 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 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 1-4 and 16-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al. (JP 2010-030969 A, published February 12, 2010, IDS reference filed September 1, 2023, as evidenced by the Google translation, of record) in view of Harrison et al. (US 3,279,999, published October 18, 1966, of record) and Tabakman et al. (US 2008/0233064, published September 25, 2008).
Kawada teaches a pencil-like cosmetic divided into two or more parts (encompasses three parts) in the longitudinal direction:
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comprising 15 to 35 wt% of solid oil (a) having a melting point of 70 to 105 ºC and 5 to 35 wt% of semi-solid or solid oil (b) having a melting point of 40 to 65 ºC (title; abstract; claims; Figure), as required by instant claims 4, 5, 20-22.
The solid oil (a) includes hydrogenated castor oil (page 2, middle), as required by instant claims 3, 24. When the blended amount of (a) is less than 15 wt% the molded core is too soft and when the blended amount of (a) is greater than 35 wt% the molded core is too hard (page 2, middle).
The cosmetic includes lip pencils (page 2, 2nd to last full paragraph; page 5, Example 3). The size of the cross section of each of the color streaks 1a and 1b in Example 1 is 1 x 1.5 mm and the total size of core 1 is 1 x 3 mm (maximal diameter) (page 2), as required by instant claim 23.
Kawada does not teach (b) is fatty acid triglyceride A2 selected from inter alia caprylic/capric/myristic/stearic triglyceride and does not teach a part comprising a higher wt% of wax A1 as required by claims 1, 24.
Kawada does not teach the part comprising the higher wt% of wax A1 has a higher hardness as required by claim 2.
Kawada does not teach the cross sectional area of the first (harder) region to the second region is 0.5/9.5 to 4.5/5.5, is 1.0/9.0 to 4.0 to 6.0 as required by claims 16-19.
These deficiencies are made up for in the teachings of Harrison and Tabakman.
Harrison teaches improved lipsticks which are self-shaping due to the combination of at least two masses of lip rouge:
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having different hardness characteristics at body temperature extending lengthwise (title; column 1, lines 11-15, 40-53; column 2, lines 13-25; Figure 1; claims), as required by instant claim 2. Harder mass 1 has a cross-sectional area of about 1/3 the cross-sectional area of the lipstick (column 2, lines 13-25), as required by instant claims 16-19. The melting points and hardness can be regulated by use of suitable components in controlled proportions; the harder mass comprises a higher total wt% of waxes (6.80 + 6.70 + 2.80 + 6.40) and less oil than the corresponding softer mass (column 2, line 63 through column 3, line 28).
Tabakman teaches high shine, stick shaped cosmetic products comprising oil components (title; abstract; claims). The compositions may further comprise pasty components having a melting temperature from about 32 to 42 ºC such as caprylic/capric/myristic/stearic triglyceride (claims 15-18; paragraph [0037]), as required by instant claims 1, 24. Pasty components having a melting temperature close to the average human body temperature allows the resulting composition to soften upon application and thereby provides a smooth and comfortable feel (paragraph [0037]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the two or more parts of the pencil-like cosmetic device of Kawada to have different hardness values as taught by Harrison in order to provide a pencil that is self-shaping. In order to do so, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to increase the amount of wax in the harder part(s) and to correspondingly decrease the amount of oil as illustrated by Harrison. Additionally, Kawada expressly teaches amount of wax determines the hardness.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the semi-solid or solid oil (b) of Kawada having a melting point of 40 to 65 ºC and pressing in an amount of 5 to 35 wt% to comprise pasty components having a melting temperature of about 32 to 42 ºC inclusive of caprylic/capric/myristic/stearic triglyceride as taught by Tabakman because pasty components having a melting temperature close to the average human body temperature allow the resulting composition to soften upon application and thereby provide a smooth and comfortable feel. There would be a reasonable expectation of success because a melting point of about 32 to 42 ºC as taught by Tabakman overlaps and falls within the scope of the genus of semi-solid oils embraced by Kawada. The combined teachings of Kawada in view of Harrison and Tabakman therefore render obvious parts of a pencil-like cosmetic comprising 5 to 35 wt% of pasty components inclusive of caprylic/capric/myristic/stearic triglyceride as newly claimed, wherein the part(s) having higher hardness comprise lower amounts of the pasty components. Because the ranges for both the amount and for the temperature taught by the prior art overlap the instantly claimed ranges, a prima facie case of obviousness exists. See MPEP 2144.05 for information regarding overlapping ranges.
Regarding claims 16-19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pencil-like cosmetic of Kawada in view of Harrison and Tabakman such that the cross-sectional area of the hardest part having the highest wax content is about 1/3 the cross-sectional area of the two or more parts as taught by Harrison because this is sufficient to provide self-shaping.
Regarding claim 20, although Kawada teaches two or more parts rendering obvious a third part, in view of Harrison it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pencil-like cosmetic of Kawada in view of Harrison and Tabakman to comprise additional parts of differing hardness in order to optimize the shape of the application tip of the product, e.g., to comprise a gradient of hardness as described by Harrison.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al. (JP 2010-030969 A, published February 12, 2010, IDS reference filed September 1, 2023, as evidenced by the Google translation, of record) in view of Harrison et al. (US 3,279,999, published October 18, 1966, of record) and Tabakman et al. (US 2008/0233064, published September 25, 2008) as applied to claims 1-4 and 16-24 above, and further in view of Villette et al. (WO 2018/104639 A1, published June 14, 2018, as evidenced by the Google translation, of record).
The teachings of Kawada, Harrison and Tabakman have been described supra.
Kawada renders obvious the mass% as required by instant claim 5 because the ranges taught by Kawada for (a) and (b) overlap the instantly claimed ranges, sufficient for prima facie obviousness. See MPEP 2144.05.
They do not teach the first region has a hardness of 2.5 to 4.5 N and the second region has a hardness of 0.5 to 2.5 N as required by claim 5.
This deficiency is made up for in the teachings of Villette.
Villette teaches a product for the lips in the form of a stick (title; abstract; claims). The stick has a hardness between 0.4 and 4.5 N (claim 8; page 6, top half).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the two or more parts of the pencil-like cosmetic of Kawada, Harrison and Tabakman, each part having a different hardness property arising from a different wax content, to have a hardness between 0.4 to 4.5 N as taught by Villette because this is a suitable hardness for stick cosmetics intended to be applied to the lips. There would be a reasonable expectation of success because Kawada does not delimit the hardness of the parts and because the cosmetic of Kawada may be applied to the lips.
Response to Arguments
Applicant's arguments have been considered but are moot in light of the new grounds of rejection necessitated by amendment.
Applicant’s argument at pages 6-7 of the Remarks that the rejection of record should be withdrawn because the prior art fails to teach the specific fatty acids newly claimed is moot in light of the new grounds of rejection necessitated by the amendment of the claims. Many of the difficulties encountered in the prosecution of patent applications may be alleviated if each applicant includes, at the time of filing, claims varying from the broadest to which they believe they are entitled to the most detailed that they are willing to accept.
Applicant’s citation to paragraphs [0019], [0022] and [0076] of the instant specification at page 7 of the Remarks in support of the allegation that the melting temperature of (A2) previously recited in claim 8 and now recited in claim 1 imparts advantageous makeup properties and ease of drawing is moot in light of the new grounds of rejection necessitated by amendment. Additionally, Tabakman as newly applied expressly teaches the same caprylic/capric/myristic/stearic triglyceride newly claimed is known in the art to provide a smooth and comfortable feel upon application. "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967). See MPEP 716.02(c). Furthermore, a chemical composition and its properties are inseparable. Therefore, because the combined teachings of the prior art render obvious the same chemical structure, the properties Applicant discloses and/or claims are necessarily present / latent to the prior art. See MPEP 2112 and 2145 II.
Applicant’s argument at page 7 that neither Kawada nor Harrison teach the specific fatty acids newly claimed is moot in light of the new grounds of rejection necessitated by amendment. Tabakman as newly applied expressly teaches the same caprylic/capric/myristic/stearic triglyceride newly claimed.
Applicant’s allegation at page 7 that the prior art of record does not recognize the problems addressed by the claims is acknowledged but not found persuasive because there are no problems addressed by the claims. Rather, the claims circumscribe an obvious stick-shaped cosmetic product. To the extent that Applicant may have intended to allege that the prior art does not recognize the problems addressed by the alleged invention, Applicant is reminded [t]he reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144 IV.
Applicant’s allegation at pages 7-8 that the prior art of record is unrelated and would not have been combined is moot in light of the new grounds of rejection necessitated by amendment.
Arguendo, the prior art of record and as newly applied infra is drawn to cosmetic products and is therefore all related. Furthermore, Applicant’s allegation regarding a “generic functional difference” rejection is untethered to the rejection of record. In order to be entitled to reconsideration or further examination, must distinctly and specifically points out the supposed errors in the examiner’s action. See 37 CFR 1.111. Because Applicant merely disparages the Examiner rather than specifically identifying any passage of the rejection of record that is merely a “generic functional difference” tantamount to hindsight as argued, Applicant’s allegations cannot be persuasive.
Applicant’s allegation at page 8 that there is no motivation to combine to achieve the product newly claimed is moot in light of the new grounds of rejection necessitated by amendment. Because Applicant merely disparages the Examiner rather than specifically identifying any passage of the rejection of record that does not articulate a rationale for the modification of the pencil-like cosmetics of Kawada to render obvious the cosmetic product as previously presented, Applicant’s allegations cannot be persuasive.
With regard to claim 5, Applicant’s allegation at page 8 that the addition of Villette does not remedy the deficiencies of the base rejection over claim 1 as newly presented is moot because there are no deficiencies of the base rejection of record over claim 1 as previously presented and because there are no deficiencies of the base rejection newly applied infra over claim 1 as currently amended.
With regard to new claims 21-24, Applicant’s allegations at page 9 that these claims focus compositions that provide unexpected advantages, unique benefits and work synergistically are unpersuasive because the mere recitation of patent-related buzzwords is mere argument and argument is not evidence. See MPEP 2145 I and 716. There is no evidence of record to substantiate any of Applicant’s allegations. To the extent that Applicant intended to reference the data within the specification, the data within the specification have already been considered as part of the Graham analysis in the determination of prima facie obviousness. That specific compositions are characterized by ease of drawing cannot be considered unexpected in comparison to the prior art at least because Tabakman as newly applied expressly teaches the same caprylic/capric/myristic/stearic triglyceride newly claimed is known in the art to provide a smooth and comfortable feel upon application. See MPEP 716.02 for information regarding information required to substantiate an allegation of unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Aida et al. (JP 2020/040920 A, as evidenced by the Google translation) teaches oily solid cosmetics comprising (A) 4 to 25 wt% solid wax and (B) 30 to 93 wt% liquid oil component inclusive of tri(capryl / caprin / myrstin / stearic acid) ceride (title; abstract; claims; page 2).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600