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 Application
The Examiner acknowledges receipt of the amendments filed 06/24/2026 wherein claims 1, 2, 4, 6, 7, and 8 have been amended and claims 14-20 have been added.
Claims 1-20 are presented for examination on the merits. The following rejections are made.
Modified Rejections of Record following Amendments
Claim Rejections - 35 USC § 103
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 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 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.
Claim(s) 1-4, 6, 9, 11, 14, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1) in view of El Achkar (US 20200390665 A1).
Regarding claims 1-4, 6, and 17, Nakamura is directed to a cosmetic composition for the eyelashes that contains 0.1-6 wt% fibers, including silk and rayon fibers (para. [0039]) which meets the limitations of instant claims 1-3. (“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”) MPEP § 2144.05(I). Additionally, Nakamura teaches a cosmetic composition that comprises of polyvinyl alcohol (i.e. film-forming agent, para. [0056]).
Regarding claims 1 and 18, while Nakamura does not teach specifically a latex film-forming agent with a low-glass transition temperature, elements of El Achkar could be substituted to yield a predictable result. El Achkar discloses a composition for coating keratin materials that contains a latex film-forming agent (para. [0186]) with a low glass transition temperature (para. [0135]). Low glass transition temperature is relative, but is defined in El Achkar to be in the range of -120°C to 70°C, and this encompasses the defined range at [0057] instant specification, that being -46°C to -100°C. MPEP § 2144.05(I).
Regarding claim 9 and 11, Nakamura discloses a makeup composition that may contain surfactants or emulsifiers (para. [0034]), hydrocarbon oils (para. [0033]), and different types of waxes (para. [0028]). Additionally, the composition in Nakamura discloses iron oxide as a colorant (para. [0047]).
Regarding claim 14, Nakamura describes the lengths of the fibers in the composition to be within the range 0.1-5 mm (para. [0039]). This broader range of fiber length described in Nakamura overlaps the corresponding range recited in instant claim 4 of the present invention, which claims fiber lengths of 1-1.3 mm. MPEP § 2144.05(I).
Nakamura and El Achkar are considered to be analogous to the claimed invention because they are in the same field of cosmetic compositions for coating keratin. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the polyvinyl alcohol film-forming agent taught in Nakamura for the latex- film forming agent taught in El Achkar. Both components are known in the art as film-forming agents for the function of improving adhesion to the eyelashes and enhancing longevity of the composition, and both can be used for cosmetic compositions. Simple substitution of one film- forming agent with another is within the purview of the skilled artisan, and would yield predictable results. MPEP § 2143(III)(b).
Claim(s) 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1) in view of El Achkar (US 20200390665 A1), in further view of Siddiqui (US 20180104161 A1).
Nakamura and El Achkar teach the claimed invention as above, but fail to teach the thickness for fibers in a cosmetic composition for coating keratin.
Regarding claim 5, Siddiqui teaches a cosmetic composition for the eyelashes that has fibers with a denier of 2-4 (see claim 7). The range of denier described in the present invention, 2-3.5 denier, is thus overlapped by the corresponding range described in Siddiqui. MPEP § 2144.05(I).
Nakamura, El Achkar, and Siddiqui are considered to be analogous to the claimed invention because they are in the same field of cosmetic compositions for keratin. One of ordinary skill in the art could routinely optimize the thickness of the rayon and silk fibers taught in Nakamura to be within 2-4 denier as taught by Siddiqui, in order to improve lengthening properties of the composition for the lashes. Siddiqui provides motivation as to why the properties of fibers, such as thickness, are modified to achieve optimized length and thickness of the eyelashes (para. [0009]). Such knowledge was within the level of ordinary skill before the effective filing date of the instant invention. As such, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the invention to modify the products taught in Nakamura and El Achkar, which are ready for improvement, to yield predictable results of improved lengthening properties of the composition. MPEP § 2143(III)(d).
Claim(s) 7-8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1) in view of El Achkar (US 20200390665 A1), in further view of Barilari (US 20150366763 A1).
Nakamura and El Achkar teach the claimed invention as above, but fail to teach the percent composition of film-forming agent that will be utilized in the cosmetic composition.
Regarding claim 7-8 and 20¸Barilari describes a cosmetic composition for the eye with a film-forming agent that comprises 20-60 wt% film-forming latex (see claim 120). The percent composition of film-forming agent in the composition of Barilari overlaps the corresponding range recited in both instant claim 7 (40-67 wt%) and instant claim 8 (10-30 wt%). MPEP § 2144.05(I) (“The proportions are so close are prima facie one skilled in the art would have expected them to have the same properties”).
Nakamura, El Achkar, and Barilari are considered to be analogous to the claimed invention because they are in the same field of cosmetic compositions for keratin. Barilari teaches the importance of film-forming agents in preventing latex coagulation (para. [0049]). One of ordinary skill in the art could routinely optimize the percent composition of the latex film-forming agent to be within the range of 20-60% as taught by Barilari, to reduce latex coagulation. As such, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the invention to modify the product taught in Nakamura and El Achkar, which are ready for improvement, to adjust percent composition of the film-forming agent to yield predictable results of increased adhesion and reduced coagulation.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1) in view of El Achkar (US 20200390665 A1), in further view of Mondet (US 20070104667 A1).
Nakamura and El Achkar teach the claimed invention as above, but do not teach a cosmetic composition where the silk fibers have a length of 1 µm to 10 µm, as instant claimed.
Regarding claim 16, Mondet teaches a cosmetic composition that can be used on lashes, where fibers have a length ranging from 1 µm to 10 mm (para. [0325]). This range encompasses that disclosed in instant invention (1 µm to 10 µm). MPEP § 2144.05(I). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to substitute the fibers in Nakamura (with a length of 0.1 mm to 5 mm) for fibers with a length disclosed in Mondet (1 µm to 10 mm). Both fiber lengths are known in the art to be effective to enhance lengthening properties of the composition on the eyelashes. Simple substitution of one range of fiber lengths for another would be within purview of the skilled artisan, and would yield predictable results. MPEP § 2143(III)(b).
Claim(s) 1, 10, 12-13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20180369121 A1), as evidenced by Nakamura (US 20060134043 A1), and in further view of El Achkar (US 20200390665 A1).
While Nakamura and El Achkar teach the entirety of claim 1 and the invention as shown above, they fail to teach a composition that lacks surfactants, waxes, and pigments of instant claims 10 and 12. Additionally, with respect to claim 13, they do not provide a method of how to apply artificial eyelashes using their compositions.
Regarding claim 10 and 12, El Achkar teaches that oils in cosmetics can produce a greasy effect (para. [0003]). Lee describes a cosmetic composition that comprises no surfactants or emulsifiers, and no oils or waxes (see claim 9). The cosmetic composition described in Lee is also stated to be formulated either with or without pigments (para. [0008]). Omitting these elements from a cosmetic composition allows for improved durability without adhesive failure. Further, Nakamura teaches that fatty acids present in cosmetic compositions can allow for the coating to disintegrate into water or skin oil, making it difficult to keep the cosmetic effective over long periods of time (para. [0007]). Thus, Nakamura provides motivation to why one of ordinary skill in the art would either be motivated to exclude fatty acids of the formula R-COOH, or be motivated to optimize the number of carbons in the alkyl chain.
Lee, Nakamura, and El Achkar are considered to be analogous to the claimed invention since they are in the same field of cosmetic compositions for the eye. Lee teaches that cosmetic compositions containing no oils, waxes, or surfactants will have improved transfer-resistance and long-wearing properties (para. [0007]). As such, one would be motivated to produce the compositions taught in Nakamura and El Achkar without surfactants, oils, or waxes to improve resistance and long-lasting properties of the composition. Therefore, it would have been obvious to someone of ordinary skill in the art to modify the compositions of Nakamura and El Achkar to exclude surfactants, oils, and waxes to yield predictable results such as improved resistance and adhesion abilities, as taught in Lee. See MPEP § 2143(III)(g).
Regarding claim 13, Lee discloses applying a cosmetic composition to the eyelashes first before applying fake eyelashes, where the adhesive is applied then allowed to dry after the false lashes are positioned (para. [0044]). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to combine the prior art elements taught in Nakamura and El Achkar, with the known method referenced in Lee to yield predictable results. See MPEP § 2143(III)(a).
Response to Applicants’ Arguments
Applicant’s amendments filed 06/24/2026 overcome the rejection of claims 2, 4-6, 7, and 8 made by Examiner under 35 U.S.C. 112(b). This rejection is withdrawn.
Applicant asserts the following:
The primary reference Nakamura requires the presence of an oil-in-water emulsion containing a C23-C100 fatty acid and does not teach or suggest that it could be modified to contain the subject matter of at least new claim 19.
Nakamura does not teach or suggest emulsions having a glass-transition temperature (Tg) below -16 ºC, and nowhere in Nakamura does it suggest to use low Tg latex film forming agents. Further, Nakamura does not suggest that Tg should be optimized to improve Nakamura's compositions, as Nakamura teaches examples of compositions where Tg is an irrelevant characteristic. Nakamura teaches that its compositions are improved by combining a resin emulsion, where Tg is unimportant, with a fatty acid. There is nothing in Nakamura that suggests Tg of the resin emulsion is a variable that should be optimized to improve the composition.
One of ordinary skill in the art would not be motivated to look to El Achkar for improvement of an eyelash/eyebrow coating compositions, as El Achkar does not describe a composition for eyelashes, eyebrows, or mascaras. Therefore there is no reason to look to El Achkar when optimizing the composition of Nakamura. The Office Action has unsupported assertions that El Achkar is "analogous art" because it is not in the same field of cosmetic eyelash compositions, as stated in El Achkar's disclosure.
The tertiary references Siddiqui, Mondet, and Barilari are cited for different subject matter for dependent claims, and they cannot compensate for the deficiencies of Nakamura and El Achkar as above.
Claims 2-9 and 11, as well as claims 14-17 are free of the rejection in which Lee is the primary reference. These claims are further free of rejection based on the unsupported assertions that El Achkar is "analogous art".
Regarding new claim 20, Lee teaches away from compositions containing more than 2.5% of latex, and Lee cannot teach or suggest the subject matter of this claim. Lee further cannot be modified with any secondary reference to yield the subject matter of the claim.
In response to argument A, Nakamura does teach a composition with a C23-C100 carboxylic acid, however it also teaches that fatty acids present in cosmetic compositions can allow for the coating to disintegrate into water or skin oil, making it difficult to keep the cosmetic effective over long periods of time (para. [0007]). Thus Nakamura provides motivation to why one of ordinary skill in the art would either be motivated to exclude fatty acids of the formula R-COOH, or be motivated to optimize the number of carbons in the alkyl chain. As described in prior 103 rejection, Lee teaches a cosmetic composition that does not comprise surfactants (i.e. it would be inherent not to include fatty acids of the formula R-COOH, see claim 9). Applicant's argument is not persuasive as Nakamura presents motivation as to why one of ordinary skill in the art would be motivated to exclude fatty acids from a composition for coating eyelashes/eyebrows, and Lee provides a composition that is effective to coat keratin, that does not include surfactants.
In response to argument B, Nakamura presents the benefits of the film-forming agent, stating it is important for long-lasting effects of the compositions (para. [0003]). Further, Nakamura discloses the glass transition temperature (Tg) of the emulsion containing the film-forming agent should be in the range of -30 to 55 ºC, describing that a soft makeup film can be obtained (para. [0015]). Nakamura does not directly teach the Tg described in amended claim 1, but does teach that the Tg can determine properties of the compositions, such as allowing a soft makeup film to be obtained. This would encourage one of ordinary skill in the art to further optimize properties of the film-forming agent, such as the glass transition temperature. Therefore Applicant's argument that there is nothing in Nakamura that suggests Tg is an optimizable parameter is not found to be persuasive. El Achkar describes a latex film-forming agent with a Tg of -120 to 70 ºC (para. [0135]), which overlaps with the range of instant claim 1. MPEP 2144.05(I). As such the glass-transition temperature of the film-forming agent is obvious unless Applicant can demonstrate criticality of ranges. "…differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical" MPEP § 2144.05(II)(a). Applicant did not demonstrate criticality of the Tg temperature, and the primary source Nakamura presents motivation as to why the film-forming agent is an optimizable parameter, and as such the rejection under 103 is maintained. As described in prior 103 rejection, one of ordinary skill in the art could substitute the film-forming polymer of Nakamura with the latex film-forming agent in El Achkar to yield predictable results, as both film-forming agents are known in the art to have the same function of enhancing durability of the cosmetic compositions. MPEP 2143(I)(b).
In response to C, Applicant asserts that one would not be motivated to look to El Achkar because it is not drawn to a composition for eyelashes, eyebrows, or mascaras. This argument is not found to be persuasive because El Achkar is drawn to a composition that is most broadly defined to be applied to keratinous materials, which can include eyelashes and eyebrows. It remains considered to be analogous to the claimed invention because it is a cosmetic composition for the purpose of coating keratin, and is safe for application around the eyes (abstract, para. [0010]). The composition of Nakamura, El Achkar, and of instant invention are interacting with similar elements such as water and oil from the skin, and as such would utilize similar components to enhance transfer resistance properties. As such, one of ordinary skill in the art would be motivated to look to El Achkar to determine components that can maximize durability of the composition when applied to keratin, and the rejections under 35 U.S.C. 103 in view of El Achkar are maintained.
Regarding argument D, the rejections made under 35 U.S.C. 103 in view of Nakamura and El Achkar are maintained as above, and as such Siddiqui, Mondet, and Barilari are able to compensate for the deficiencies that are not covered by the primary and secondary sources.
In response to E, claims 2-9 and 11 Applicant is correct that these claims are not rejected where Lee is the primary reference, however as above, these claims remain rejected under Nakamura and El Achkar are maintained.
In response to F, Applicant's argument that Lee teaches away from compositions containing more than 2.5% of film-forming polymer is found to be persuasive. However, the rejection under 35 U.S.C. 103, as above, overcomes this argument as Barilari teaches a cosmetic composition for the eye where the concentration of the film-forming agent is in an amount of 20-60 wt.% (para. [0050]). As above, one of ordinary skill in the art would be motivated to optimize the concentration of the film-forming agent to maximize the compositions durability and transfer resistance properties.
Examiner thanks Applicant for the amendments and following arguments, but the rejections of claims 1-20 under 35 U.S.C. 103 are maintained.
Conclusion
Claim(s) 1-20 are rejected.
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 Makenna Miller whose telephone number is (571)272-9852. The examiner can normally be reached Mon-Fri 7:30-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
Prosecution Insights