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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/15/2023 and 01/28/2025 was are acknowledged. The information disclosure statement filed 01/28/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
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 2 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.
Regarding claims 2, 4, 6, 7, and 8, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. Claim 5 is rejected by virtue of its dependency on rejected claim 4. See MPEP § 2173.05(d).
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 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.
Claims 1, 2, 3, 4, 9, and 11 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, 2, and 3, 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, which functions as a film-forming agent (para. [0056]).
Though Nakamura does not teach specifically a latex film-forming agent with a low-glass transition temperature, elements of El Achkar could be substituted to obtain a predictable result. El Achkar discloses a composition for coating keratin materials (could be specific to eyelashes or eyebrows) 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 4, 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).
Regarding claims 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]).
Nakamura and El Achkar are considered to be analogous to the claimed invention because they are in the same field of eyelash compositions for coating lashes/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).
Therefore, claims 1, 2, 3, 4, 9, and 11 are prima facie obvious.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1), in view of El Achkar (US 20200390665 A1), and further in view of Siddiqui (US 20180104161 A1).
With respect to claim 5, Nakamura and El Achkar teach the claimed invention as shown above, but do not disclose optimized thickness for fibers in a cosmetic composition for the eyelashes.
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).
Siddiqui, Nakamura, and El Achkar are considered to be analogous to the claimed invention because they are all in the same field of cosmetic eyelash compositions. 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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1) in view of El Achkar (US 20200390665 A1), and in further in view of Mondet (US 20070104667 A1).
With respect to claim 6, Nakamura and El Achkar teach the claimed invention as shown above, but do no teach a cosmetic composition where the silk fibers have a length of 1 µm to 10 µm, as instant claimed.
Regarding claim 6, 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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20060134043 A1), in view of El Achkar (US 20200390665 A1), and in further view of Barilari (US 20150366763 A1).
Regarding claim 7, El Achkar discloses a composition containing a latex film-forming agent (para. [0186]) with a low glass transition temperature (para. [0135]), again with a glass transition temperature range encompassing the defined range presented in the specification (para. [0057]) of the present invention. MPEP § 2144.05(I).
While El Achkar and Nakamura teach many components instant claimed, they do not teach the percent composition of film-forming agent that will be utilized in the cosmetic composition.
Regarding claim 7 and 8¸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”).
Barilari, 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. 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.
Claims 1, 10, 12, and 13 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, El Achkar teaches that oils in cosmetics can produce a greasy effect (para. [0003]). Regarding claim 10 and 12, 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.
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).
Conclusion
Claims 1-13 are rejected.
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.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611