DETAILED ACTION
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 .
Status of the Claims
Claim 11 has been canceled. New claims 15-20 have been added. Accordingly, claims 1-10 and 12-20 are pending and under current examination.
Response to Arguments and Withdrawn Rejections
Applicant’s arguments filed 12/23/2025 (hereafter, “Remarks”) have been fully considered. All rejections of claim 11 are withdrawn view of Applicant’s cancelation of this claim.
The rejections of claims 1, 3, 5-7, 10, and 14 under 35 U.S.C. 112(b) as previously presented are withdrawn. New grounds of rejection necessitated by amendment are presented below.
The rejections of claims 1, 2, 4-9, and 11-14 under 35 U.S.C. 102 as being anticipated by Ilekti are withdrawn in view of the claim amendments filed 12/23/2025. New rejections necessitated by amendment are presented below. On page 6 of 7 of Remarks, Applicant notes Ilekti’s Example M1 which uses more total wax than “latex active material” and concludes that Ilekti does not teach the claimed ratio. In reply, it is maintained that Ilekti at Example M1 teaches beeswax, an unalkoxylated wax, in an amount of 4.4% in combination with Daitosol 5000 ADTM latex at 10% by weight, a ratio within the claimed range. Arguments relying on amounts of differently defined components are not persuasive in view of the claim language “at least one latex” and “at least one latex” and “latex active material”. The latex component is not supported to be limited to a concentrated reading based on the claim language recited as supported in the specification as filed.
The rejections of claims 1 and 3-7 under 35 U.S.C. 102 as being anticipated by Lalloret are withdrawn as necessitated by amendment and newly presented below in order to address the claims as amended. The rejections of claims 1 and 3-7 and 10 under 35 U.S.C. 103 as being unpatentable over Lalloret are withdrawn and newly presented as necessitated by amendment filed 12/23/2025. Applicant argues against the rejections relying on Lalloret on page 5 of 7 of Remarks, taking the position that Lalloret does not teach the requisite amounts and ratios of ingredients. In reply, this argument is not persuasive in view of Lalloret’s teaching of at least one latex which is the dispersion of a styrene/acrylate copolymer called Daitosol 5000STY at 4% by weight of the total formulation; and at least one non-alkoxylated wax, stearic alcohol, at 0.6% by weight. Dividing 0.06 by 4 equals 0.15, a ratio of less than 1.0 unalkoxylated wax:latex as in the instant claims. Otherwise, new claim limitations directed to newly claimed combinations of amounts and/or ratios are addressed below. It is noted that rejections under 35 U.S.C. 102 relying on Lalloret are withdrawn in view of the new claim limitations.
New Rejections Necessitated by Amendments of 12/23/2025
Claim Rejections - 35 USC § 112
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 the applicant regards as his invention.
Claims 1-10 and 12-20 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 14 recite “latex active material” without antecedent. While “at least one latex” is earlier recited in the claims, what constitutes an active material or an active material component or a particular latex which is considered an active material is not specified, and the claim is not properly interpreted to assume that “at least one latex” is equal to “latex active material” and is therefore indefinite.
Appropriate clarification is required. All claims depending from or otherwise requiring all limitations of claims 1 and 14 are also rejected here.
New Rejections Necessitated by Amendments
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4-9, 12-14, 16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by WO2022/128540A1 (Ilekti et al., hereafter “Ilekti”) as evidenced by Koster Keunen “SynKos Wax 2065” (published online May 23, 2022).
The instant claims are drawn to an o/w emulsion composition comprising water, at least one surfactant, at least one latex, and at least one unalkoxylated wax, wherein the wax to latex ratio is 1.0 or less, as further specified in the claims, and methods of making and using the same. Please see also rejection above under 35 U.S.C. 112(b).
Ilekti teaches a coating material to be applied to keratin materials in a stepwise application as makeup (see abstract, in particular). Ilekti’s coating material may be in the form of an emulsion including an oil-in-water emulsion (see [0061]) comprising one or more surfactants, water, and oily phase (see [0063], [0065], and [0067]). The products are mascaras preferably o/w emulsions with waxes, surfactants, film-forming polymers in the form of a particle dispersion which is a latex (see [00210]). The latex may be for instance styrene/acrylate copolymers as weas known in the art (see [0002]). The wax component may be beeswax ([0078]).
Regarding in particular claim 1 as amended as well as claims 19 and 20, Table 18 at paragraph [00401], Example M1 which is a mascara formulation, teaches the combination of beeswax (GR B 889 TM by Koster Keunen, a synthetic beeswax; evidence provided to demonstrate this is a synthetic beeswax material ; limitation of claims 1 and 2) in an amount of 4.4% by weight of the total formulation as well as Daitosol 5000 AD™ in an amount of 10% by weight, demonstrating a weight ratio of unalkoxylated wax to latex of less than 1.0. Accordingly, Ilekti teaches each and every limitation of claims 1 and 14.
Regarding claim 2, GR B 889 TM by Koster Keunan is a synthetic beeswax.
Regarding claims 4, 6, and 16, Example M1 further includes acacia gum.
Regarding claim 5, pigments or dyes may be included (see [00210])(limitation of claim 5).
Regarding claim 7, Example M1 further includes Daitosol 5000 AD ™ which is an aqueous phase film forming agent as defined in [00403].
Regarding claim 8, Example M1 as noted above includes a synthetic beeswax but is noted to be devoid of natural beeswax.
Regarding claim 9, Example M1 does not appear to include any animal-derived ingredients, and the disclosure as a whole is noted not to require any animal-derived ingredients. In each instance of a wax or fatty component, plant alternatives to animal derivatives are included.
Regarding claims 12 and 13, Ilekti teaches application of the products to keratin materials including eyelashes (see [00217]-[00219]).
Claims 1, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by FR2983716A1 (Lalloret, et al.; hereafter “Lalloret”; translation enclosed previously).
The instant claims are drawn to an o/w emulsion composition comprising water, at least one surfactant, at least one latex, and at least one unalkoxylated wax, wherein the wax to latex ratio is 1.0 or less, as further specified in the claims, and methods of making and using the same. Please see also rejection above under 35 U.S.C. 112(b).
Regarding claim 1, Lalloret teaches an o/w emulsion comprising in a cosmetically acceptable medium at least one continuous aqueous phase and a dispersed discontinuous oily phase, as well as additional components including at least one photoprotective system, at least one hydrophobic polymer, at least one mixture of nonionic surfactants, and at least one ionic o/w emulsifier. Example 3 in particular includes water; a surfactant which is glycerol stearate and PEG-100 stearate; at least one latex which is the dispersion of a styrene/acrylate copolymer called Daitosol 5000STY at 4% by weight of the total formulation; and at least one non-alkoxylated wax, stearic alcohol, at 0.6% by weight. Dividing 0.06 by 4 equals 0.15, a ratio of less than 1.0 unalkoxylated wax:latex as in the instant claims. See Lalloret Example 7.
Accordingly, Lalloret teaches each and every limitation of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 4-6, 10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over FR2983716A1 (Lalloret, et al.; hereafter “Lalloret”; translation enclosed previously).
The instant claims are drawn to an o/w emulsion composition comprising water, at least one surfactant, at least one latex, and at least one unalkoxylated wax, wherein the wax to latex ratio is 1.0 or less, as further specified in the claims, and methods of making and using the same. Please see also rejection above under 35 U.S.C. 112(b).
Regarding claim 1, Lalloret teaches an o/w emulsion comprising in a cosmetically acceptable medium at least one continuous aqueous phase and a dispersed discontinuous oily phase, as well as additional components including at least one photoprotective system, at least one hydrophobic polymer, at least one mixture of nonionic surfactants, and at least one ionic o/w emulsifier. Example 3 in particular includes water; a surfactant which is glycerol stearate and PEG-100 stearate; at least one latex which is the dispersion of a styrene/acrylate copolymer called Daitosol 5000STY at 4% by weight of the total formulation; and at least one non-alkoxylated wax, stearic alcohol, at 0.6% by weight. Dividing 0.06 by 4 equals 0.15, a ratio of less than 1.0 unalkoxylated wax:latex as in the instant claims. See Lalloret Example 7. As to claims 1 and 12-14, anticipation is the epitome of obviousness.
Further regarding claims 4 and 5, Lalloret teaches nacres to include color effects (see paragraph beginning “Nacres…means colored particles…” in translation).
Further regarding claim 6, Lallret teaches xanthan gum especially among cellulose agents useful as thickeners or adjuvants (see page 15/20 of translation, 8 lines from the bottom of the first paragraph on the page).
As to claim 10, Lalloret’s example utilizing 3% by weight of ethanol is outside the claimed range of about 4% to about 8%. Lalloret considered as a whole and taken in combination with what it reasonably would have suggested to the ordinary artisan renders obvious the amount of ethanol. In addition to Lalloret’s example, outlined above, Lalloret further includes titanium dioxide (pigment), acacia gum (gum), an acrylate copolymer (film former), and ethanol in an amount of 3% by weight. Lalloret teaches monoalcohols including ethanol to be included in the aqueous phase in an amount of 1 to 30% of the total formulation wherein the aqueous phase is present in an amount of 30-90% of the total formulation (see text following “AQUEOUS PHASE” at the bottom of page 10/20 of translation through the first partial paragraph on page 11/20 of translation).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to include a colorant, to include a gum, and/or to increase the amount of alcohol from Lalloret’s example to a slightly larger amount within the aqueous phase in order to achieve the desired end result such as desired color, thickness properties, and quick drying effects or preservative benefits over water alone. One reasonably would have expected success from doing so since Lalloret’s teaching considered as a whole demonstrates the benefits of each of these agents in a mascara formulation and further with regard to ethanol includes a broader range with more monoalcohol than the 3% embodied. This rejection is made using obviousness rationale since Lalloret does not require or necessarily embody the aforementioned adjuvants or functional components in each example but rather generally teaches rationale for including these components for their respective benefits in a mascara formulation. The limitations of claims 12-14 have been addressed above.
Claims 3, 7, 15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over FR2983716A1 (Lalloret, et al.; hereafter “Lalloret”; translation enclosed previously) as applied to claims 1, 4-6, 10, and 12-14 above, and further in view of US8920787B2 (“Li”, newly cited).
The teachings of Lalloret have been delineated above. Lalloret does not specify the latex as in claims 3 and 15 or the aqueous film former as in claims 7, 17, and 18.
Li cures this deficiency. Like Lalloret, Li teaches mascara formulations (see title, in particular). Li’s mascara products contain an aqueous dispersion which includes an acrylic film former which is styrene/acrylate/ammonium methacrylate copolymer (see abstract, in particular; see also Li claim 1). Li’s Example 3 includes vinylpyrrolidone eicosane copolymer in an amount of 1.00% by weight as well as styrene/acrylates/ammonium methacrylate copolymer in an amount of 12.5% (see table listing ingredients), and Example 3 is specifically a mascara composition.
Lalloret and Li are both directed to mascara formulations. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to include styrene/acrylate/ammonium methacrylate copolymer and vinylpyrrolidone eicosane copolymer components as in Li’s mascara formulations in the mascara formulations of Lalloret, with a reasonable expectation of success. One would have been motivated to do so for desirable film forming properties and desirable texture properties specifically for a mascara as based on Li’s embodiment.
Conclusion
No claim is 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 (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 AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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