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 .
The examiner acknowledges receipt of IDS filed 04/28/2026 and amendment and remarks filed 05/28/2026.
Claims 1, 12 and 15-16 are amended.
New claim 21 is added.
Claims 1-21 are pending.
Election/Restrictions
In response to the restriction requirement of 12/08/2025, applicant elected without traverse Group I, claims 1-17, in the reply filed on 01/15/2026 is acknowledged. The examiner also acknowledged applicant’s election of isobutyl methacrylate as methacrylate polymer of item of claim 1 (i) a; polycitronellol acetate as the solvent of item claim 1 (i) b; isodecane as the optional alkane of item of claim 1 (i) d; squalane as the nonpolar oil of item of claim 1 (ii) a; and candelilla was as specific solid fatty compound.
Claims 18-20 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/15/2026.
Claims 1-17 and new claim 21 are under consideration.
The examiner also acknowledges applicant’s request, to rejoins additional species that depend on or otherwise require all the limitations of allowable generic claim, upon allowance of a generic claim.
Information Disclosure Statement
The IDS filed 04/28/2026 has been considered by the examiner.
Response to Arguments
For the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, the amendment to claims 1, 12, 15 and 16 overcomes the rejection.
For the rejections under 35 USC 103: i) On pages 8, 9 and 10 and 11, applicant argues that Mitra does not teach the sequence of applying the anhydrous compositions to the skin and as such does not render the present invention obvious; that Mitra in paragraphs [0007] and [0013] and other 10 additional paragraphs teaches that the cosmetic cleansing composition efficiently removes makeup and sebum, dirt and debris without smudging; Mitra teaches coagulant system that can congeal and form viscoelastic fluid, and bind and remove sebum, makeup, dirt and other unwanted material from skin. That the citation of paragraph [0035] in the last office action that the composition is applied in a series of steps does not meet the sequential application of the anhydrous compositions. That the examiner’s reliance on In re Burhans and In re Gibson are of questionable precedent because they were decided in 1952and these cases has to do with mere change in the sequence of adding ingredients to a composition to achieve the same result.
Response: Applicant’s argument on pages 8-11 has to do with the sequence of applying the compositions to the skin to remove makeup. The applicant is correct that Mitra does not say that a first anhydrous composition is applied before the second anhydrous composition. However, the result is the same and although, claim 1 lists (i), (ii) and (iii), claim 1 does not specifically state that step (i) is performed before step (ii) and/or that the steps are performed sequentially. Further also, while applicant states in the last paragraph of page 9 of the remarks filed 05/28/2026 that “sequence of steps according to the present invention is critical to addressing the problems mentioned above,” there is no evidence on record in the as filed specification that such a sequence is disclosed or such a sequence is critical. It is appropriate to thus note that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946)) and there is no evidence in the as filed specification pointing to unexpected results. Further, selection of any order of mixing ingredients is prima facie obvious (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)) in that applying one composition and then applying another composition before wiping implies that the two compositions are mixed at the application site. The decisions in on In re Burhans and In re Gibson have not been invalidated.
On pages 12 and 13, applicant appears to be arguing that hindsight reasoning has been employed in the rejection to arrive at the claimed invention because to arrive at the claimed invention, applicant argues, is to: a) decide on employing an anhydrous composition as opposed to aqueous one; b) decide to include a solvent in the composition capable of solubilizing the hydrophobic polymer; c) decide on providing a second composition; d) decide applying second composition to the skin while the first composition and makeup are still on the skin; e) decide employing anhydrous composition as the second composition as opposed to water containing one; f) decide to include a nonpolar oil in which the hydrophobic polymer is not soluble in the second composition. Applicant further states that the problem solved by the office action is an illusory or non-existent one because Mitra teaches that its compositions are easy on the skin such that the ordinary skilled artisan would not modify Mitra achieve what Mitra has achieved (citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 104 U.S.P.Q.2d 1001 (Fed. Cir.
2012), which explains "because each device independently operates effectively, a person having
ordinary skill in the art would have no reason to combine the features of both devices into a single device”; Ex parte Richard, Appeal No. 2016-004425, Ser. No. 12/195,806, p. 20
(PTAB, Nov. 8, 2017) (non-precedential) which finds no reason why one of ordinary skill in the art would seek to modify polymers to have a property they already possess; and Ex parte Sadamitsu, Appeal No. 2010-004917, Ser. No. 10/985,880 (PTAB, Feb. 28, 2012) (nonprecedential) which finds no reason to modify a wafer to improve resistivity and gettering effect considering the wafer "is already disclosed as having both high resistivity and high gettering effect".
Response: The examiner respectfully disagrees with applicant’s premised argument. Mitra teaches the examined method. The difference is that Mitra is silent on the order of applying the first and second anhydrous compositions. Modification of the anhydrous compositions is not required. Order of application could be varied except there is factual evidence that applying one anhydrous composition to the skin before applying the second/another anhydrous composition provides unexpected results. Applicant has not demonstrated that and the as filed specification has not presented any evidence that applying the first anhydrous composition before the second anhydrous composition is unexpectedly superior. Combination is not required in this case; modification of the compositions is not required. Therefore, the findings in Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 104 U.S.P.Q.2d 1001 (Fed. Cir. 2012), Ex parte Richard, Appeal No. 2016-004425, Ser. No. 12/195,806, p. 20 (PTAB, Nov. 8, 2017), and Ex parte Sadamitsu, Appeal No. 2010-004917, Ser. No. 10/985,880 (PTAB, Feb. 28, 2012) are not violated.
Thus, the rejections are maintained below. New claim 21 will also be addressed in the rejection below
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 (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 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.
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.
Claim(s) 1-12 and 14-17 remain rejected and claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over MITRA et al. (US 20220249342 A1) for reasons of record and reiterated herein below. The scope of the claims have not changed.
MITRA et al. (US 20220249342 A1) method of removing makeup (paragraphs [0004], [0007], [0013], [0032], [0033], [0034], [0043]) by applying anhydrous cosmetic cleansing composition to skin and peeling or sloughing off; in some embodiments the cosmetic cleansing composition is applied in a series of steps (paragraph [0035], [0043]). The cosmetic cleansing compositions comprises cosmetic carrier system and cleansing coagulant system (paragraph [0006]); the cleansing coagulant system congeals to form viscoelastic fluid that can bind and remove makeup; the coagulant system includes oil and viscosity modifier that include food derived oil and methacrylate polymer components (paragraph [0043]). A named natural food derived oil is linseed oil and the polymer is polyisobutyl methacrylate (paragraph [0045]). The polyisobutyl methacrylate in linseed oil natural derived oil meets the limitation of claim 1 (i) a, that hydrophobic polymer formed as a reaction product of a food derived oil and a methacrylate polymer. The cosmetic cleansing composition include alkanes, namely isododecane, iso-paraffin or isohexadecane (paragraph [0076]) and oily phase that includes isopropyl myristate (paragraph [0079]) with the isododecane meeting the limitation of the elected optional alkane of claims 1 and 9 and 12, and the isopropyl myristate meets the requirement of solvent that is capable of solubilizing the hydrophobic polymer of claims 1 and 9. The cosmetic carrier system contains oily phase components including humectant (paragraph [0025]) such as squalane humectant (paragraphs [0113]- [0116], [0174], claim 5) meeting the elected squalane, nonpolar oil in which the hydrophobic polymer is not soluble of claims 1 and 14. The cosmetic carrier system contains fatty alcohols (paragraph [0027]) such as C8-C25 fatty alcohol (paragraph [0103]); C16 is cetyl alcohol and C18 is stearyl alcohol, with fatty alcohols such as the cetyl and stearyl alcohols being waxy and meeting the requirement of claim 16.
In an embodiment, the cleansing coagulant system alone or with a solvent is imbued in a pad or wipe or pod and the cosmetic carrier is separately imbued or contained in pad, wipe or pod (paragraphs [0030]-[0031]).
The cleansing coagulant system meets the limitation of a first anhydrous composition and the cosmetic carrier system meets the limitation of the second coagulant system.
For claim 1, MITRA does not specifically teach that the cleansing coagulant, which is the first anhydrous composition is applied followed by the cosmetic carrier composition, which is the second anhydrous composition. However, MITRA teaches that in some embodiments, the cosmetic cleansing composition is applied in a series of steps from one or more articles of manufacture in a series of steps, where after the first application one or more subsequent applications provides for reacting, fixing or coagulating the cleansing coagulant system component to form a semi solid or solid or congealed material that may thereafter be peeled or sloughed off from the keratinous tissue (paragraph [0035]).
Therefore, before the effective date of the invention, the artisan would reasonably expect that applying the cleansing coagulant to the skin having makeup followed by application of the cosmetic carrier would provide a congealed material on the skin that would be effectively peeled off or sloughed off to remove the makeup. It has been settled in In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; and in In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (that the selection of any order of mixing ingredients is prima facie obvious.
For claim 2, MITRA does not say that the applied anhydrous composition is not transparent.
For claim 3, isobutyl methacrylate in the linseed oil meets the claim.
For claim 4, linseed oil or sunflower oil is present at 60-80% (paragraph [0058]) which is specific point range within the claimed range of 50-85%; the polymer is present at 25-35% (paragraph [0057]), a specific point range within the claimed range of 15-50%.
For claim 5, the polyisobutyl methacrylate polymer meets the claim.
For claim 6, the reaction product of linseed oil and polyisobutyl methacrylate meets the claim.
For claim 7, because the linseed oil at 60-80% and the isobutyl methacrylate polymer at 25-35% teaches the parts of the polymer to linseed oil, the ordinary skilled artisan would reasonably expect that the polymer in the reaction product would be at a certain parts by weight and the linseed oil will be at acceptable parts by weight to achieve a product that when applied would be expected to be peeled off to remove the makeup. 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).
For claim 8, the one or more solvents capable of solubilizing the hydrophobic polymer has the recited characteristic of:
“solubilizing the hydrophobic polymer of (i)(a) have a dispersion component (D), a polar
component (P), and a hydrogen bonding component (H), and a distance (Ra) less than or
equal to 13.4 MPa0.5 as per Hansen Solubility Parameters, wherein the distance (Ra) is
defined by formula (I):
Ra = (4(D - D1) 2 + (P – P1 )2 + (H - H1)2 (I)) (Square Root)
wherein
D1 is 16.8 MPa0.5
P1 is 4.8 MPa0.5, and
H1 is 13.0 MPa0.5.”
Because isopropyl alcohol, isododecane, isopropyl myristate are solvents that are capable of solubilizing the hydrophobic polymer as claimed in instant claim 9; and it is one or more of these that have the characteristic recited in claim 8, the isododecane and isopropyl myristate would also inherently have the characteristic recited in claim 9.
For claim 9, the isododecane and isopropyl myristate meet the requirement of solvent that is capable of solubilizing the hydrophobic polymer of claims 1 and 9.
For claim 11, olive oil and sunflower oil (paragraph [0073]) meets the claim.
For claim 12, the isodecane meets the limitation of alkane in claim 12.
For claim 14, the squalane meets the claim.
For claim 15, silica (paragraphs [0021], [0051], [0138], [0168], claim 3) meet the claim.
For claim 16, fatty alcohols are waxy and C16 (cetyl alcohol), C18 (stearyl alcohol) fatty alcohols (paragraph [0103]) meet the claim.
For claim 10, the polymer is present at 25-35% (paragraph [0057]) which is a specific point range of the claimed 10-40%; alkane is present at from about 1% to about 12% or from about 3% to about 11% or from about 5% to about 10% (paragraph [0078]) with the 5-10% being a specific point within the claimed range of 1-25%, and Solvents such as water soluble solvents, namely isopropyl alcohol (paragraph [0094]) is present at 0.5-90% (paragraphs [0097], [0098]). 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).
For claim 17, the cosmetic carrier system comprises an oil phase (paragraphs [0012], [0024]-[0027], [0048]) and is present at from about 75% to about 99% (paragraphs [0023], [0053]); the cosmetic carrier system is a solvent for the cosmetic coagulant system (paragraph [0054]). The cosmetic carrier system is the second anhydrous composition and the coagulant system is the first anhydrous composition. Claim 17 (b) and (c) are optional.
For claim 21, make is long-wear or shorter-wear. Mitra in the background of the invention acknowledges long-wear foundations that removal. Therefore, before the effective date of the invention, the artisan would expect the composition of Mitra to the effective in predictably removing long-wear makeup with the anhydrous composition of Mitra.
Therefore, MITRA renders claims 1-12, 14-17 and 21 prima facie obvious.
New Rejections
Necessitated by IDS
Claim(s) 1 and 13 are rejected and claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over MITRA et al. (US 20220249342 A1) in view of Cavaco et al. (US 20230414478 A1).
Claim 13 depends on claim 1.
Claim 1 has been described above to render claim 1 p[rima facie obvious.
Mitra teaches composition comprising the hydrophobic polymer present at 25-35% (paragraph [0057]) which is a specific point range of the claimed 10-40% meeting 13 (a); alkane is present at from about 1% to about 12% or from about 3% to about 11% or from about 5% to about 10% (paragraph [0078]) with the 5-10% being a specific point within the claimed range of 1-25% and isododecane is named meeting 13 (c), and Solvents such as water soluble solvents, namely isopropyl alcohol (paragraph [0094]) is present at 0.5-90% (paragraphs [0097], [0098]). Mitra also teaches the use of oily components such as isopropyl myristate as oily phase (paragraphs [0026], [0070], [0081]) and the oily component is present at 15-45% (paragraph [0075]). 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).
Mitra differs from claim 13 because Mitra does not use polycitronellol acetate as required by claim 13. However, Cavaco teaches cosmetic composition that comprises caprylic/capric triglyceride, polycitronellol acetate, isopropyl myristate (paragraphs [0080] and [0133]). Therefore, before the effective date of the invention, the artisan would be motivated to include polycitronellol acetate in the composition of Mitra with the expectation that the polycitronellol acetate as an effective emollient.
Mitra in combination with Cavaco renders claim 13 prima facie obvious.
No claim is allowed.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 04/28/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Yong Kwon can be reached at 5712720581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
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