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
Claims 1-12 and 14-20 as filed September 6, 2023 are under consideration.
Applicant is advised that there is no claim 13. Because the original numbering of the claims must be preserved throughout prosecution (37 CFR 1.126), Applicant may consider cancelling all pending claims and re-writing them as new claims numbered consecutively beginning with the number next following the highest numbered claim previously presented.
Specification
The abstract of the disclosure is objected to because of the following informalities: the first line is incomplete or/and grammatically incorrect. Appropriate correction is required.
Claim Objections
Claims 5, 7-12, 14-18 and 20 are objected to because of the following informalities:
Claim 5: “candelilla” is misspelled.
Claim 7: “or a mixture thereof” should presumably be deleted and the “or” inserted before “a soft wax” in view of the earlier recitation of “at least two” which requires a mixture. However, claim 7 properly recites “wherein the wax component comprises the mixture” or some variation thereof in view of the dependency from claim 6.
Claims 8, 9: “a range” is properly “the range” because antecedent basis is implicit to the recitation of “a melting point”.
Claims 10, 14 recite ratios without providing a basis for the determination thereof, e.g., by weight (e.g., paragraph [0017]) or by volume (e.g., paragraph [0019]) as disclosed.
Claim 11: caprylhydroxamic is misspelled.
Claim 12: “a ratio” is properly “the ratio” and “a range” is properly “the range”.
Claims 15, 16: “a viscosity” is properly “the viscosity” and “a range” is properly “the range”.
Claims 17, 18: “after application” should presumably be inserted at the end of these claims consistent with paragraph [0020] because it is clear from the specification that the claimed properties are not properties of the composition per se.
Claim 20: “a flashpoint” is properly “the flashpoint” and “a range” is properly “the range”.
Appropriate correction is required.
Applicant is advised that should claim 8 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
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.
Claims 1-3, 5, 6, 8, 9, 12 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191).
Guimont teaches water-in-oil (water-in-silicone) emulsions for eyelashes containing low HLB surfactant (emulsifier), silicone gum and silioxysilicate resin; the emulsions may be in the form of a mascara (title; abstract; claims), as required by instant claim 2. The compositions have good or improved wear (non-brittle) and/or water resistance properties; in contrast, anhydrous compositions have the disadvantage of being dry or/and having poor flexibility (paragraphs [0001], [0003], [0005], [0024]), as required by instant claims 17, 18.
The low HLB surfactant can be a silicone surfactant, preferably comprising dimethicone or a non-silicone surfactant, free of dimethicone (paragraphs [0060], [0061], [0069]). Exemplary surfactants include cetyl PEG/PPG-10/1 dimethicone (paragraph [0075]), as required by instant claim 14.
The compositions comprise about 5 to 80 wt% water and about 5 to 80 wt% oil (ratio of discontinuous water phase to the continuous oil phase from 5:80 to 80:5) (paragraphs [0079]-[0082]), as required by instant claim 12.
Suitable oils include silicone oils inclusive of volatile silicone oils (paragraphs [0081], [0083]-[0084]). Volatile silicone oils include linear or cyclic silicone oils having a viscosity less than or equal to 6 cSt such as PDMS (polydimethylsiloxane (dimethicone)) DC 200 (2 cSt) having a flash point of 87 ºC, PDMS DC 200 (1.5 cSt) having a flash point of 56 ºC (about 50 ºC because the qualifier about permits some tolerance) or/and cyclopentasiloxane (paragraphs [0084], [0085]), as required by instant claims 3, 4, 19, 20. Regarding the substantial exclusion of cyclopentasiloxane (meaning less than about 5 wt% as defined in paragraphs [0012], [0016] of the instant specification) as alternatively required by instant claim 19, optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123. Regarding the flashpoint of the composition as required by instant claim 20, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.
The compositions further comprise at least one wax (claim 3; paragraphs [0098]-[0103]). Suitable waxes include carnauba wax (melting point of about 81 to 86 ºF as evidenced by Travkina, paragraph [0014] (“hard” as defined in instant claims 8, 9)), candelilla wax or/and polyethylene waxes (paragraph [0101]), as required by instant claims 5, 6, 8, 9.
The compositions further comprise additives inclusive of preserving agents (paragraph [0097]; Examples). Guimont is silent towards and does not teach phenoxyethanol, as required by instant claim 19.
Guimont fails to specifically teach or exemplify an embodiment of water-in-oil (water-in-silicone) emulsion comprising a preservative component in the discontinuous aqueous phase as required by claim 1 and therefore anticipation cannot be found. However, a reference is analyzed using its broadest teachings (MPEP § 2123) and Guimont expressly teaches the water-in-oil (water-in-silicone) emulsion may comprise additives inclusive of preserving agents and Guimont exemplifies embodiments of emulsion comprising preservatives. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include preserving agents or preservatives as taught by Guimont in the water phase, in the oil phase, or in both phases of the emulsion in order to protect the compositions from spoilage.
Claims 4 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191) as applied to claims 1-3, 5, 6, 8, 9, 12 and 17-20 above, and further in view of Fujii et al. (US 2019/0216711, published July 18, 2019).
Guimont is applied herewith on a different interpretation of claim 20 in the interest of compact prosecution
The teachings of Guimont have been described supra.
Guimont does not teach 1 centistoke dimethicone as required by claim 4.
Guimont does not specifically teach a flashpoint of the composition of about 30 to about 50 ºC as required by claim 20.
These deficiencies are made up for in the teachings of Fujii.
Fujii teaches a cosmetic composition for the eyes comprising a volatile oil component comprising a volatile silicone oil (title; abstract; claims). Examples of volatile oils include low molecular weight straight chain dimethicones having a viscosity of 0.65, 1, 1.5 or 2 cSt; straight chain dimethicones are preferred from the viewpoint of improving quick drying properties and preventing secondary adhesion immediately after application (paragraph [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the volatile silicone oils of Fujii inclusive of dimethicones having a viscosity of 1 cSt with the volatile silicone oils of Guimont inclusive of PDMS (dimethicone) having a viscosity of 1 cSt because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06.
Regarding claim 20, because the combined teachings of the prior art render obvious emulsions as instantly claimed comprising the same volatile silicone oils as instantly claimed, it is presumed that the emulsions rendered obvious by the prior art also possess a flashpoint as instantly claimed. One would be imbued with the reasonable expectation that the flash point of dimethicones having a viscosity of 1 cSt is less than the flash point of those have a viscosity of 1.5 or 2 cSt as exemplified by Guimont.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191) as applied to claims 1-3, 5, 6, 8, 9, 12 and 17-20 above, and further in view of Kahle et al. (US 2020/0138696, published May 7, 2020).
The teachings of Guimont have been described supra.
Guimont does not specifically teach at least two of a hard, medium and soft wax (as defined in claims 8, 9) as required claim 7.
This deficiency is made up for in the teachings of Kahle.
Kahle teaches cosmetic compositions comprising a wax phase comprising at least one wax (title; abstract; claims). Exemplary waxes include carnauba wax, candelilla wax or/and polyethylene waxes (paragraph [0023]). Mixing two or more different waxes produces a homogenous mixture for which the desired melting point can be set precisely (paragraphs [0024], [0025]). Suitable combinations include a high melting wax having a melting point from 80 to 86 ºC, a mid-range melting wax having a melting point from 65 to 80 ºC, and a low melting wax having a melting point from 55 to 60 ºC (paragraph [0026]).
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 at least one wax of the compositions of Guimont to comprise a blend of high, mid-range and low melting waxes as taught by Kahle in order to produce a homogenous mixture for which the desired melting point can be set precisely.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191) as applied to claims 1-3, 5, 6, 8, 9, 12 and 17-20 above, and further in view of Kahle et al. (US 2020/0138696, published May 7, 2020) and Vargas Pinzon et al. (WO 2022/148990 A1, published July 14, 2022).
The teachings of Guimont have been described supra.
Guimont does not teach the hard, medium and soft waxes (as defined in claims 8, 9) are present in a 1:1:1 ratio as required by claim 10.
This deficiency is made up for in the teachings of Kahle and Vargas Pinzon.
The teachings of Kahle have been described supra.
Vargas Pinzon teaches eyelash compositions; the compositions may comprise at least one hard wax and at least one soft wax in a weight ratio from 10:1 to 1:10 (title; abstract; claims, in particular 2, 11; paragraphs [0077]-[0088]). Hard waxes have a melting point greater than 70 ºC and soft waxes have a melting point below 70 ºC (paragraph [0079]).
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 at least one wax of the compositions of Guimont to comprise a blend of high, mid-range and low melting waxes as taught by Kahle in order to produce a homogenous mixture for which the desired melting point can be set precisely.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the high, mid-range and low melting waxes in ratios of 1-10 : 1-10 : 1-10 as taught by Vargas Pinzon in the compositions of Guimont in view of Kahle and to optimize therein in order to achieve the desired melting point.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191) as applied to claims 1-3, 5, 6, 8, 9, 12 and 17-20 above, and further in view of Winn (US 2009/0143489, published June 4, 2009).
The teachings of Guimont have been described supra.
Guimont does not teach caprylyl glycol and caprylhydroxamic acid as required by claim 11.
This deficiency is made up for in the teachings of Winn.
Winn teaches preservatives for cosmetics comprising at least one hydroxamic acid and further including alkanediols (title; abstract; claims). The at least one hydroxamic acid is selected from caprylohydroxyamic (caprylhydroxamic) acid (claims 6, 7, 19, 20). The alkanediol is selected from caprylyl glycol (claim 12). Cosmetics include mascara (paragraph [0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the preservative as taught by Winn for the preserving agent in the composition of Guimont because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191) as applied to claims 1-3, 5, 6, 8, 9, 12 and 17-20 above, and further in view of Hong et al. (WO 2022-092579 A1, published May 5, 2022, as evidenced by the Google translation).
The teachings of Guimont have been described supra.
Guimont does not teach sorbitan olivate as required by claim 14.
This deficiency is made up for in the teachings of Hong.
Hong teaches water-in-oil makeup cosmetic compositions comprising low HLB emulsifiers inclusive of sorbitan olivate and cetyl PEG / PPG-10 / 1 dimethicone (title; abstract; claims, in particular 1, 7; page 4, 3rd full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the emulsifiers as taught by Hong inclusive of sorbitan olivate with the emulsifiers as taught by Guimont inclusive of cetyl PEG/PPG-10/1 dimethicone because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Guimont et al. (US 2021/0401724, published December 30, 2021) as evidenced by Travkina et al. (US 2005/0042191) as applied to claims 1-3, 5, 6, 8, 9, 12 and 17-20 above, and further in view of Piot et al. (US 6,375,941, published April 23, 2002).
The teachings of Guimont have been described supra.
Guimont does not teach a viscosity of about 2000 to 6000, about 2000 to 5000 cP at 25 ºC and 200 s-1 as required by claims 15, 16.
This deficiency is made up for in the teachings of Piot.
Piot teaches mascara compositions having a viscosity measured at 25 ºC and 200 s-1 ranging from 5 to 18 Pa.s (50 to 180 Poise = 5000 to 18,000 centipoise) (title; abstract; claims).
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 mascara compositions of Guimont to have a viscosity measured at 25 ºC and 200 s-1 ranging from 5 to 18 Pa.s (50 to 180 Poise = 5000 to 18,000 centipoise) as taught by Piot because this viscosity is suitable for mascara.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dempsey et al. (US 2011/0094914) is the closest prior art as identified by USPTO artificial intelligence and teaches a mascara composition that is substantially free of wax and that is not a water-in-silicone emulsion (title; abstract; claims; paragraph [0014]).
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
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600