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 1-9 as filed October 23, 2023 are pending and under consideration.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because the first sentence is a fragment. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 1-9 are objected to because of the following informalities:
Claims 1-9 should presumably recite a “water-in-silicone” emulsion rather than a “water-in-silicon” emulsion.
Claims 2, 7 recite ratios without providing a basis for the determination thereof, e.g., by weight, consistent with the recitations of amounts by weight in claims 3, 7.
Claim 3: “by weight of the makeup composition” should presumably recite “by weight of the total makeup composition” consistent with the language of claims 4, 5, 7-9 or vice versa.
Claim 5: “all pigments” should presumably recite “the one or more pigments” consistent with the antecedent in claim 1.
Claim 6: a space should be inserted between the recited numerical values and the recited units.
Claim 8: the comma should presumably be a semi-colon consistent with the formatting of the claims.
Claim 9: Latin names are conventionally italicized and the genus is conventionally capitalized.
Appropriate correction is required.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Bichon et al. (US 2022/0016012, published January 20, 2022) in view of Ricard et al. (US 2018/0263867, published September 20, 2018) as evidenced by PubChem “Triethoxycaprylylsilane,” accessed 2025; Scotland et al. (US 2018/0116947, published May 3, 2018); and Patel et al. (US 2004/0005340, published January 8, 2004).
Bichon teaches make-up compositions in the form of an emulsion comprising, in a physiologically acceptable medium, at least one phenylated silicone oil, a fat-soluble film-forming polymer, a water soluble film-forming polymer, and coloring materials (title; abstract; claims). The fat-soluble film-forming polymer is selected from inter alia trimethylsiloxysilicates (claim 6; paragraphs [0074], [0075], [0086], [0087], [0093]). The fat-soluble film-forming polymer is present from 1 to 7 wt% (claim 7), as required by instant claim 4. 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). See MPEP 2144.05. The coloring materials are pigments surface treated with at least one hydrophobic or lipophilic treatment agent inclusive of silicone surfactants for better dispersion in the oil phase (paragraphs [0128], [0132], [0139]). The coloring materials are present from 2 to 30 wt% (paragraphs [0140], [0141]), as required by instant claim 5.
The emulsion may be a water-in-silicone emulsion (paragraphs [0022], [0023], [0143]). The aqueous phase is present from 1 to 80 wt% (paragraph [0097]), as required by instant claim 8. The aqueous phase may further comprise water-soluble solvent inclusive of ethanol (preservative) or/and glycerol (humectant, skin care active) (claim 10; paragraphs [0098]-[0105]), as required by instant claim 8.
The emulsion further comprises one or more volatile oils (claim 2). According to a particular and preferred embodiment, the compositions comprise at least one volatile silicone oil selected from dimethicones having a viscosity ranging from 0.5 to 6 cSt, methyl trimethicone and mixtures thereof (paragraph [0064]; Table 1), as required by instant claim 2. The content of volatile silicone oils is from 10 to 35 wt% (paragraph [0068]), as required by instant claim 3. Regarding the exclusion of cyclopentasiloxane or cyclotetrasiloxane as required by instant claim 1, Bichon exemplifies cyclopentasiloxane and cyclotetrasiloxane as volatile oils (paragraph [0063]), however, the emulsions of Bichon do not require either cyclopentasiloxane or cyclotetrasiloxane and the optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123. The exemplary emulsions of Table 1 comprise 14 wt% dimethicone and about 15 wt% methyl trimethicone (ratio 15:14) and the exemplary emulsions of Table 2 comprise 5 wt% dimethicone and 14 wt% methyl trimethicone (ratio 14:5). Therefore, Bichon renders obvious a range of ratios which renders obvious the ratios as required by instant claim 2.
The emulsion further comprises at least one filler inclusive of silica such as spherical silica; the fillers may or may not be surface-coated and may be present from 0.1 to 20 wt% (claim 11; paragraphs [0118]-[0121], [0124], [0127]), as required by instant claim 7.
The emulsion may further comprise any additive used in cosmetics such as gelling agents (rheology modifiers), preservatives or/and cosmetic active agents such as vitamins or/and lightening agents (paragraph [0145]). The exemplary emulsions of Table 1 comprise Bentone Gel (rheology modifier) in silicone phase A1 and phenoxyethanol (preservative) in water phase B1, as required by instant claim 8.
Bichon does not teach pigments surface-treated with triethoxycaprylylsilane, spherical silica shells and ellipsoidal silica shells as required by claim 1.
Bichon does not teach the spherical silica shells have an average size of 10 to 14 microns and an oil absorbing capacity of at least 100 g / 100 g and the ellipsoidal silica shells have an average size of 2 to 4 microns and an oil absorbing capacity of at least 450 g / 100 g as required by claim 6.
Bichon does not teach the ratio of spherical to ellipsoidal shells is 1:1 to 4:1 as required by claim 7.
These deficiencies are made up for in the teachings of Ricard, Scotland and Patel.
Richard teaches cosmetic makeup compositions in the form of a water-in-oil emulsion comprising an aqueous phase, a fatty phase and pigments (title; abstract; claims; paragraph [0096]). Preferably the pigments are coated with at least one lipophilic or hydrophobic compound chosen from silicone surface agents inclusive of alkoxysilanes inclusive of alkyltriethoxysilanes sold under Prosil 9202 (triethoxycaprylylsilane as evidenced by PubChem) (paragraphs [0123], [0127], [0150], [0151], [0160]-[0164]). The compositions may comprise fillers inclusive of silica or/and hollow silica microspheres (spherical silica shells) that give the makeup a matt effect and make it possible to combat various attacking factors such as sebum (paragraphs [0301]-[0305]).
Scotland teaches water in oil emulsions providing skin mattity and true color comprising at least one hydrophobically treated powder, at least two mattifying powders, at least one silicone resin and at least one oil absorbing powder (title; abstract; claims; paragraphs [0044], [0045]). The hydrophobically treated powder includes coloring materials treated with hydrophobic agents such as silanes such as triethoxycaprylylsilane (paragraphs [0052]-[0054], [0062], [0065], [0088]). Mattifying powders include silica powders such as hollow silica microspheres, however, the mattifying powders can include particles of any shape inclusive of oblong (ellipsoidal) particles or irregular spheres (paragraphs [0093]-[0109]). Mattifying powders are sebum-absorbing, having a sebum uptake great than or equal to 10 mL / 100 g, greater than about 70 mL / 100 g (paragraph [0096]), as required by instant claim 6. Mattifying powders have particle sizes smaller than about 100 microns and larger than about 2 microns (paragraph [0105]), as required by instant claim 6. The mattifying powders are incorporated into the oil phase and are present in a ratio from about 0.1:1 to about 1.5:1 (paragraphs [0108], [0109]), as required by instant claim 7.
Patel teaches aqueous compositions for the skin comprising porous silica particles having an oil absorption capacity of at least four times their own weight (title; abstract; claims). The silica particles are hollow ellipsoids of silica (claim 3), as required by instant claim 6. The silica particles may average 3 microns in diameter (paragraph [0019]), as required by instant claim 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute surface treatment agents inclusive of alkyltriethoxysilanes sold under Prosil 9202 (triethoxycaprylylsilane as evidenced by PubChem) as taught by Richard or/and silanes such as triethoxycaprylylsilane as taught by Scotland for the surface treatment agents of the coloring materials of Bichon because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Bichon embraces silicone surface treatment agents and the agents of Richard and of Scotland fall within this genus.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute hollow silica microspheres as taught by Richard for the at least one filler of in the emulsions of Bichon because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Bichon embraces silica fillers and the silica of Richard falls within this genus. One would have been motivated to do so in order to reap the expected benefits taught by Richard of providing matt effect and combating sebum and because Bichon desires a “glowy” effect without an oily effect (e.g., paragraph [0105]).
It would have been obvious to one of ordinary to modify the at least one filler of the compositions of Bichon in view of Ricard comprising hollow silica microspheres to further comprise at least one additional mattifying powder as taught by Scotland inclusive of hollow silica microspheres of any shape inclusive of oblong particles (ellipsoidal silica shells) and inclusive of hollow ellipsoids of silica as taught by Patel 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. It would have been obvious to include these fillers in the oil phase as taught by Scotland.
Regarding claim 6, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the at least one filler of the compositions of Bichon in view of Ricard, Scotland and Patel comprising hollow silica microspheres and hollow ellipsoids of silica would have a particle size of about 2 to 100 microns as taught by Scotland because particles of this size are suitable as fillers and would have a sebum-uptake greater than or equal to 10 mL / 100 g as taught by Scotland. Additionally, it would have been obvious that the hollow ellipsoids of silica would have a particle size of about 3 microns and an oil absorption capacity at least 4 times their own weight because Patel teaches hollow ellipsoids of silica to possess these properties.
Regarding claim 7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the at least one filler of the compositions of Bichon in view of Ricard, Scotland and Patel comprising hollow silica microspheres and hollow ellipsoids of silica should be present in the composition in a ratio from about 0.1:1 to about 1.5:1 as taught by Scotland and it would have been obvious to optimize within this range in order to adequately reduce sebum during wear.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bichon et al. (US 2022/0016012, published January 20, 2022) in view of Ricard et al. (US 2018/0263867, published September 20, 2018) as evidenced by PubChem “Triethoxycaprylylsilane,” accessed 2025; Scotland et al. (US 2018/0116947, published May 3, 2018); and Patel et al. (US 2004/0005340, published January 8, 2004) as applied to claims 1-7 above, and further in view of Swanson et al. (WO 2012/011907, published January 26, 2012).
The teachings of Bichon, Richard, Scotland and Patel have been described supra.
They do not teach the aqueous phase comprises sebum-controlling agents as required by claim 8.
They do not teach up to about 1% laminaria saccharina and up to about 3% niacinamide as required by claim 9.
These deficiencies are made up for in the teachings of Swanson.
Swanson teaches Laminaria saccharina extract and vitamin B3 as whitening agents (title; abstract; claims). The L. saccharina is present from 0.00008 to 1.25 wt% (claim 1). Vitamin B3 includes niacinamide (page 7, lines 6-19). Vitamin B3 is a skin tone agent present from about 0.1 to 50%, or from about 1 to 10 wt% (page 6, lines 15-26).
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 emulsions of Bichon in view of Richard, Scotland and Patel to further comprise 0.00008 to 1.25 wt% of Laminaria saccharina extract and about 0.1 to 50% vitamin B3 inclusive of niacinamide as whitening agents in order to improve skin tone. There would be a reasonable expectation of success because emulsions of Bichon may further comprise cosmetic active agents such as vitamins or/and lightening agents.
Conclusion
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