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 Amendments
Status of Claims
The amendment, filed on 29 June 2026, is acknowledged.
Claims 1, 5, 13, and 17 have been amended.
Claim 15 was previously withdrawn from consideration as being drawn to a nonelected invention in the Office Action mailed on 31 March 2026.
Claims 1-14 and 16-17 are pending and under consideration in the instant Office Action, to the extent of the following previously 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.
Objections Withdrawn
Objections to Specification
Applicant’s amendment to the specification, submitted on 29 June 2026, has overcome the objection to the Specification set forth in the Office Action mailed on 31 March 2026. Accordingly, the relevant objection is withdrawn.
Objections to Claims
Applicant’s amendments to claims 5 and 17 have overcome the objections to the claims set forth in the Office Action mailed on 31 March 2026. Accordingly, the relevant objections are withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejections of claims 2-6, 1-11, 13, and 16 under 35 U.S.C. § 112 are withdrawn in view of Applicant’s amendments to the claims.
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1-14 and 16-17 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendment to claim 1 and in favor of the new grounds of rejection below.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Instant claim 1 was amended to recite a non-ionic surfactant present in an amount from 0.1-8% w/w relative to the total weight of the composition. Claim 6, which depends from claim 1, recites the non-ionic surfactant to be present in an amount from 0.1-30% w/w relative to the total weight of the composition, which is a broader range than the one recited in instant claim 1 and fails to further limit the claim.
Claim 14, which also depends from amended claim 1, recites “at least one non-ionic surfactant” in part b) and “at least one oil” in part d). Because instant claim 1 was amended to recite “a non-ionic surfactant” and “an oil” (bold added for emphasis), claim 14 broadens the scope of the claim by allowing for a mixture of more than one non-ionic surfactant and a mixture of more than one oil. The above limitations therefore fail to limit the claim from which it depends and do not comply with the requirements of 35 U.S.C. § 112(d).
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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, 10-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over El-Nokaly et al. (U.S. Patent No. 6,325,995 B1, priority to 7 September 1993, hereafter referred to as E-N) in view of Clavel et al. (U.S. Patent Application Publication No. US 2014/0079656 A1, published on 20 March 2014, hereafter referred to as Clavel).
E-N teaches lipstick compositions comprising association structures which deliver polar solvent/moisturizers through a non-polar medium (Abstract). The instant application is directed to a lipstick for caring for/making up keratin materials (Summary of Invention, pg. 2, lines 5-10 and Invention Examples 1-6, pg. 25-26), therefore the teaching of lipstick compositions by E-N is considered equivalent to a composition for caring for and/or making up keratin materials as recited in instant claim 1. The compositions are taught to comprise 5-90% w/w wax, 1-90% of an emollient component which may be an oil, and 0.1-80% w/w of an association structure which comprises 3-96% w/w with respect to the association structure (0.003-77% w/w with respect to the total composition) polar solvent, 4-97% w/w with respect to the association structure (0.004-78% w/w with respect to the total composition) surfactant, and 0-35% w/w with respect to the association structure (0-28% w/w with respect to the total composition) of a color (claim 1). E-N teaches that their compositions are preferred to be free of water, which is interpreted as equivalent to anhydrous, and that a preferred polar solvent is glycerine (col. 6, lines 9-14). Non-ionic surfactants are taught to be most preferred and in some embodiments are polyglycerol esters of fatty acids (col. 8, lines 11-19). Wax in the composition is taught to act as a “solidifying agent” and assists in the “formation of the solid structure” of the composition, which is considered equivalent to teaching a solid composition (col. 12, lines 16-17). The wax may be a natural, mineral, or synthetic wax and in one embodiment is polyethylene wax (col. 12, lines 21-30). The oil in the emollient component may be rapeseed oil, which is another name for canola oil (col. 13, line 47). The color is taught to be provided by a component that is in some embodiments a lake and a preferred lake is Yellow 6 Aluminum Lake, which is equivalent to the elected “Yellow 6 Lake” as evidenced by Table 1 of the instant spec. (col. 15, lines 1-16).
E-N does not teach the specific polyglycerol ester of fatty acids polyglyeryl-6 polyricinoleate. This deficiency is offset by the teachings of Clavel.
Clavel teaches cosmetic compositions for the purpose of “making up and/or caring for keratin materials, in particular the skin and the lips” (Abstract and para. [0001]). In some embodiments, the composition is in the form of a lipstick or lip balm (para. [0255]). The compositions are taught to provide satisfactory comfort upon application to users and improved stability as a result of comprising a linear alkane, one or more polyglyceryl polyricinoleates, and one or more polyols (para. [0019] and claim 18). In one embodiment, the polyol is glycerol, another name for glycerine (para. [0097] and claim 33). The polyglyceryl polyricinoleates are taught to be present in an amount from 4-7% w/w (para. [0088] and claims 29-31). A preferred species of polyglyceryl polyricinoleates is taught to be polyglyceryl-6 polyricinoleate (para. [0086], claims 27-28, and Example 2), which Clavel makes particular mention is available commercially from Nikko Chemicals Co. Ltd. under the trade name Hexaglyn PR-15 (para. [0084]). Finally, Clavel teaches that their composition may comprise a wax which in one embodiment is a polyethylene wax (para. [0154-0156]).
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, rapeseed oil, and Yellow 6 Aluminum Lake – in each case, the recited range is either encompassed by or significantly overlaps with the range taught by E-N, rendering it prima facie obvious.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Clavel to use polyglyeryl-6 polyricinoleate as the specific polyglycerol ester of fatty acids in the invention of E-N because the combination of prior art elements from similar inventions according to known methods yields predictable results. E-N teaches a solid, anhydrous lipstick composition comprising glycerin, rapeseed oil, Yellow 6 Aluminum Lake, and a polyglycerol ester of fatty acids in amounts that significantly overlap with or encompass the ranges recited in instant claims 1, 3, 6-7, 11, and 13-14.
In view of the teachings of Clavel, one of ordinary skill in the art would find it obvious to use polyglyeryl-6 polyricinoleate as the specific polyglycerol ester of fatty acids in the invention of E-N because Clavel teaches the species to be suitable for use in amounts that fall within the ranges taught by E-N in lipstick compositions that are suitable for application to users’ skin and comprise the identical components glycerin and polyethylene wax. The ordinary artisan would desire a polyglycerol ester of fatty acids that is compatible with the species used in the invention of E-N and would be motivated to use polyglyceryl-6 polyricinoleate because Clavel teaches it to be compatible and safe for users. One of ordinary skill would further be motivated to use the species because Clavel teaches polyglyceryl-6 polyricinoleate to provide satisfactory comfort upon application to users and improved stability when used in quantities that fall within the range taught by E-N, which the ordinary artisan would recognize as beneficial in their lipstick composition. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-7, 10-14, and 16 in view of the teachings of E-N and Clavel.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over E-N (U.S. Patent No. 6,325,955 B1, priority to 7 September 1993) in view of Clavel (U.S. Patent Application Publication No. US 2014/0079656 A1, published on 20 March 2014) as applied to claims 1-7, 10-14, 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).
E-N and Clavel have been described above.
E-N and Clavel do 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 E-N and Clavel 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 E-N and Clavel render obvious a solid anhydrous cosmetic composition comprising glycerin, polyglyceryl-6 polyricinoleate, rapeseed oil, Aluminum 6 Lake, 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 rendered obvious above because Kao Corp. teaches the paste oil solution to provide users with a smooth, desirable feeling on the skin following use. The ordinary artisan would recognize these properties as desirable in a cosmetic composition intended to be applied to the skin of users and would be motivated to include the species in their composition to impart the desirable properties. 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 E-N and Clavel and further in view of the teachings of Kao Corp.
Claims 9 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over E-N (U.S. Patent No. 6,325,955 B1, priority to 7 September 1993) in view of Clavel (U.S. Patent Application Publication No. US 2014/0079656 A1, published on 20 March 2014) as applied to claims 1-7, 10-14, and 16 above, and further in view of Blin (U.S. Patent Application Publication No. US 2010/0028394 A1, published on 4 February 2010).
E-N and Clavel have been described above, and particularly relevant to claims 9 and 17, E-N teaches that their composition should have a solid structure (col. 12, lines 16-20).
E-N and Clavel do not teach their composition to comprise disteardimonium hectorite. 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).
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 E-N and Clavel to arrive at the invention of claims 9 and 17 because combining prior art elements from related inventions according to known methods yields predictable results. The teachings of E-N and Clavel render obvious a solid anhydrous cosmetic composition comprising glycerin, polyglyceryl-6 polyricinoleate, rapeseed oil, Yellow 6 Aluminum Lake, 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 rendered obvious above because Blin teaches the modified hectorite to be an inorganic gelling agent that thickens cosmetics while E-N teaches that their compositions require a solid structure. The ordinary artisan would recognize that inclusion of additional thickening agents would be desirable to increase viscosity and add solidity to their composition. The person of ordinary skill 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 and would recognize the suitability of disteardimonium hectorite as taught by Blin. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 9 and 17 in view of the teachings of E-N and Clavel and further in view of the teachings of Blin.
Response to Arguments
The Applicant’s arguments, filed on 29 June 2026, have been fully considered but are not persuasive. Applicant argues in the section titled “REMARKS” that spans pg. 10-11 that the Shah reference does not teach the range of non-ionic surfactants recited in amended claim 1. In view of the new grounds of rejection above, which rely upon the E-N reference in view of the Clavel reference, it is demonstrated that the E-N reference teaches the recited range and the argument is not found to be persuasive.
Conclusion
No claims are allowed.
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.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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