DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant's election with traverse of Group I, claims 1-14 and 16-17, glycerin, polyglyceryl-6 polyricinoleate, canola oil, bis-behenyl/isostearyl/phytosteryl dimer dilinoleyl dimer dilinoleate, disteardimonium hectorite, and Yellow 6 Lake in the reply filed on 5 February 2026, is acknowledged. The traversal is on the grounds that the Requirement for Restriction/Election misinterpreted the requirements of PCT Rule 13.2 as “relating to decidedly patentable claims” and that by requiring a restriction/election, the Office has denied Applicant due process (para. 3 of pg. 3 of the reply). This is not found persuasive because, using Applicant’s interpretation of PCT Rule 13.2, the Office would be required to examine all claims prior to determination of unity of invention and subsequent restriction/election requirement. The Examiner disagrees with this interpretation and maintains that unity of invention can be determined prior to examination. See CFR 1.499, which states that a “requirement may be made before any action on the merits” if the application lacks unity of invention.
Applicant further argued that the Office did not provide indication that “the contents of the claims interpreted in light of the description was considered” (antepenultimate para. of pg. 3 of the reply). While it is unclear what Applicant considers clear indication that the claims were interpreted in light of the description, Applicant is advised that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
The preliminary amendment, filed on 23 October 2023, is acknowledged.
Claims 2-15 are amended.
New claims 16-17 were entered.
Claims 1-17 are pending in the instant Office Action.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 5 February 2026.
Claims 1-14 and 16-17 are under consideration in the instant Office Action, to the extent of the following elected species:
the specific hydrophilic moisturizer is glycerin;
the specific non-ionic surfactant is polyglyceryl-6 polyricinoleate;
the specific oil is canola oil;
the specific pasty compound is bis-behenyl/isostearyl/phytosteryl dimer dilinoleyl dimer dilinoleate;
the specific thickener is disteardimonium hectorite; and
the specific colorant is Yellow 6 Lake.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 11 October 2023, 27 December 2024, 14 July 2025, and 19 November 2025, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The use of the terms Plandool™, Lusplan™, and Cropure™, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. The proper symbols have been used in some cases, such as Table 1, but not every case, such as in lines 12-14 of pg. 15 (Plandool) and line 15 of pg. 15 (Lusplan).
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. In response to this objection, Applicant should ensure that each occurrence of trade names or marks are appropriately accompanied by the proper symbol.
Claim Objections
Claims 5 and 17 are objected to because of the following informalities:
Claim 5 recites “according toclaim 1” in the first line. A space should be entered between “to” and “claim”, so the resulting phrase reads “according to claim 1”.
Claim 17 recites “a mixture thereof” at the end of the claim, lacking punctuation. A period should be placed at the end of the claim, resulting in a phrase that reads “a mixture thereof.”
Appropriate correction is required.
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 2-6, 10-11, 13, and 16 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 2 and 3 recite the limitation "the hydrophilic moisturizer" in lines 1-2 and 2, respectively. There is insufficient antecedent basis for this limitation in the claims because claim 1, upon which claims 2 and 3 depend, recites “at least one hydrophilic moisturizer”. Applicant may overcome this rejection by amending claims 2 and 3 to recite “the at least one hydrophilic moisturizer”.
Claims 4, 5, 6, and 16 recite the limitation "the non-ionic surfactant" in lines 2, 2, 2, and 1-2, respectively. There is insufficient antecedent basis for this limitation in the claims because claim 1, upon which all four claims depend, recites “at least one non-ionic surfactant”. Applicant may overcome this rejection by amending claims 4-6 and 16 to recite “the at least one non-ionic surfactant”.
Claims 10 and 11 recite the limitation "the oil" in the second line of each claim. There is insufficient antecedent basis for this limitation in the claims because claim 1, upon which each claim depends, recites “at least one oil”. Applicant may overcome this rejection by amending claims 10 and 11 to recite “the at least one oil”.
Claim 13 recites the limitation "the colorant" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim because claim 12, upon which claim 13 depends, recites “at least one colorant”. Applicant may overcome this rejection by amending claim 13 to recite “the at least one colorant”.
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.
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, 10-11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al. (U.S. Patent No. 10,576,031 B1, published on 3 March 2020, provided by Applicant in the IDS filed on 11 October 2023, hereafter referred to as Shah).
Shah teaches cosmetic compositions comprising exfoliating particles, glycerin, one or more natural fatty compounds, and one or more nonionic surfactants which remove makeup and exfoliate and hydrate the skin of users (Abstract). The compositions are taught to be, in some embodiments, anhydrous (col. 2, lines 4-5 and 30-31). Glycerin is taught to be present in an amount from 1-50% w/w, the one or more natural fatty compounds are taught to be present in an amount from 1-50% w/w, and the one or more nonionic surfactants are taught to be present in an amount from 25-75% w/w (col. 2, lines 33-39 and claim 1). In some embodiments, the non-ionic surfactant is polyglyceryl-6 polyricinoleate (col. 6, lines 54-55 and col. 8, lines 7-10) and the natural fatty compound is the natural oil rapeseed oil, another name for canola oil (col. 6, line 1). Shah further teaches their composition to include another natural fatty compound in the form of a wax with a melting point of ≥60 °C, which in one embodiment is a polyethylene wax (col. 7, lines 14 and 32-33 and claims 1 and 5). Shah does not teach the state of matter their composition takes, but does teach the composition to be anhydrous (vide supra) and in some embodiments taking the form of a balm, which is considered to be equivalent to an anhydrous solid.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “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). These guidelines apply to the recited quantity ranges of glycerin, polyglyceryl-6 polyricinoleate, polyethylene wax, and canola oil – in each case, the recite range is either encompassed by or significantly overlaps with the range taught by Shah, rendering it prima facie obvious.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Shah and the instant claims is that Shah does not teach the specific combination of components as claimed in a single embodiment (e.g., one solid anhydrous composition comprising ≥2% w/w glycerin, polyglyceryl-6 polyricinoleate, polyethylene wax, and canola oil), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Shah, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Shah, to arrive at an invention such as the one being sought in instant claims 1-7, 10-11, and 16.
Claims 9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shah (U.S. Patent No. 10,576,031 B1, published on 3 March 2020, provided by Applicant in the IDS filed on 11 October 2023) as applied to claims 1-7, 10-11, and 16 above, and further in view of Blin (U.S. Patent Application Publication No. US 2010/0028394 A1, published on 4 February 2010).
Shah has been described above, and particularly relevant to claims 9 and 12-14, Shah teaches that the viscosity of their composition should be high (col. 9, lines 39-49 and col. 11, lines 24-32) and that a dye/pigment may optionally be included (Examples 1-2).
Shah does not teach their composition to comprise disteardimonium hectorite nor Yellow 6 Lake. These deficiencies are offset by the teachings of Blin.
Blin teaches cosmetic compositions for making up and/or caring for the lips and keratinous substances in the form of a stick that has a solid exterior and liquid core (Abstract and claim 1). In the solid exterior, Blin teaches that a thickening agent may be used, which in one embodiment is the inorganic lipophilic gelling agent Benton 38V®, which is hectorite modified by distearyldimethylammonium chloride, i.e. disteardimonium hectorite (para. [0160], [0170-0172], and [0246] and Example 3). Blin further teaches that their composition comprises at least one coloring material in an amount from 0.01-40% by weight, preferably 0.5-25% w/w (para. [0188] and claim 13). The coloring materials may be in the form of pigments and in one embodiment the pigment is Yellow 6 Lake, which is present in an amount of 7% w/w in Example 3 (para. [0187] and Example 3).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Blin with the invention rendered obvious by the teachings of Shah to arrive at the invention of claims 9 and 12-14 because combining prior art elements from related inventions according to known methods yields predictable results. The teachings of Shah render obvious a solid anhydrous cosmetic composition comprising glycerin, polyglyceryl-6 polyricinoleate, canola oil, and polyethylene wax in amounts that overlap with or encompass those recited in the instant claims. In view of the teachings of Blin, a person of ordinary skill would have been motivated to use disteardimonium hectorite in the composition of Shah because Blin teaches the modified hectorite to be an inorganic gelling agent that thickens cosmetics and Shah teaches that a high viscosity is important to their cosmetic composition. The ordinary artisan would recognize that inclusion of additional thickening agents would be desirable to increase viscosity and would further be motivated to select a thickening agent that is known to be acceptable for use in cosmetics applied to the skin and/or hair of users.
One of ordinary skill would also be motivated to select Yellow 6 Lake as the pigment in the invention of Shah because Shah teaches its optional inclusion but does not teach any specific species. Blin teaches that Yellow 6 Lake is an acceptable pigment to use in a solid anhydrous cosmetic composition, which an ordinary artisan would be able use to supply information missing from the teachings of Shah. Further, Blin teaches that the pigment may be present in an amount from 0.5-25% w/w, in one solid anhydrous cosmetic composition being present in the amount of 7% w/w, which one of ordinary skill would be motivated to try because it provides a missing piece of the invention of Shah. The values taught by Blin fall within the ranges recited in instant claims 13-14, rendering them prima facie obvious. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 9 and 12-14 in view of the teachings of Shah and further in view of the teachings of Blin.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Shah (U.S. Patent No. 10,576,031 B1, published on 3 March 2020, provided by Applicant in the IDS filed on 11 October 2023) as applied to claims 1-7, 10-11, and 16 above, and further in view of Kao Corp. (U.S. Patent Application Publication No. US 2011/0177143 A1, published on 21 July 2011).
Shah has been described above, and particularly relevant to claim 8, Shah teaches that the fatty compounds of their composition may be a lanolin derivative (col. 6, line 62) and the surfactant in their composition may be a non-glyceryl fatty acid ester (col. 8, lines 17-18).
Shah does not teach their composition to comprise bis-behenyl/isostearyl/phytosteryl dimer dilinoleyl dimer dilinoleate. This deficiency is offset by the teachings of Kao Corp.
Kao Corp. teaches an oil-based cosmetic preparation which provides and retains a smooth feel to the skin of users (Abstract and para. [0015-0016]). The inclusion of one or more paste oil solutions is taught to enable the composition to have “excellent luster and feels smooth and provides a good sense upon use with a non-sticky feeling” (para. [0048]). In one embodiment, the paste oil solution is a dimer acid ester such as dimer dilinoleic acid dimer dilinoleyl bis(behenyl/isostearyl/phytosteryl), sold commercially as Plandool™-G (para. [0050], [0053], and Example 22).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Kao Corp. with the invention rendered obvious by the teachings of Shah to arrive at the invention of claim 8 because combining prior art elements from related inventions according to known methods yields predictable results. The teachings of Shah render obvious a solid anhydrous cosmetic composition comprising glycerin, polyglyceryl-6 polyricinoleate, canola oil, and polyethylene wax in amounts that overlap with or encompass those recited in the instant claims. In view of the teachings of Kao Corp., a person of ordinary skill would have been motivated to use Plandool™-G in the composition of Shah because Kao Corp. teaches the paste oil solution to provide users with a smooth, desirable feeling on the skin following use, which the ordinary artisan would recognize as desirable in a cosmetic composition. In addition, Plandool™-G falls within both the lanolin derivative fatty compound category and the non-glyceryl fatty acid ester surfactant category taught by Shah, which would motivate the ordinary artisan to use the species because it would be reasonably expected to be compatible with the composition of Shah. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 8 in view of the teachings of Shah and further in view of the teachings of Kao Corp.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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