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 .
Status of Claims
Receipt of Remarks/Amendments filed on 03/18/2026 is acknowledged. Claims 1 and 7 are amended and claim 2 is canceled. Claims 12 and 13 are new. Claims 1 and 3-13 are currently pending and are examined on the merits herein.
Priority
The instant application filed 11/22/2023, is a 371 filing of PCT/JP2022/023761, filed 06/14/2022, which claims foreign priority to JP2021-104413, filed 06/23/2021.
Claim Interpretation
Claim 7 recites a “moisture content of 5% by mass or less”. Such a limitation is being interpreted as the amount of water present in the composition being less than 5% by mass.
Withdrawn rejections
Claims 1-11 were rejected under 35 U.S.C. 112(b) for being indefinite. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
The following grounds of rejection are necessitated by amendment:
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.
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.
1. Claims 1 and 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Miwake, H., (JP 2018070481 A, 05/10/2018, ip.com translation used, on record), hereinafter JP’481, in view of Yokozuka, A., et al. (JP 2019196337 A, 11/14/2019, ip.com translation used, on record), hereinafter JP’337.
JP’481 discloses a cleansing oil containing the components A to D: (A) a diester of a branched or unsaturated fatty acid having 14 to 22 carbon atoms and polyglycerin, (B) 6 to 10 carbon atom ester of a fatty acid and polyglycerin; (C): one or more selected from the group consisting of diester oils of dihydric alcohols and branched fatty acids, triester oils of glycerin and branched fatty acids, and diester oils of dicarboxylic acids and branched aliphatic alcohols, and (D): hydrophilicity compound (abstract).
Regarding claim 1: The cleansing oils of examples 3 to 18 of JP’481 are transparent (p. 10, final para.; p. 11, para. 6; Tables 4-9). The cleansing oil comprises either a diester or triester oil as component C (abstract; p. 4, para. 1), which reads on the ester oil of the instant claims. The amount of ester oil is preferably 20 to 80% by mass. An oil agent other than the diester/triester oil may be blended, which includes a hydrocarbon oil (p. 4, para. 8). The B component of JP’481 is a nonionic surfactant such as hexaglyceryl dicaprylate (p. 3, para. 5), which reads on the (C1) nonionic surfactant as instantly claimed. The A component of JP’481 is a nonionic surfactant such as polyglyceryl-10 diisostearate or polyglyceryl-10 dioleate (p. 3, para. 3), which both read on the (C2) nonionic surfactant as instantly claimed.
Regarding claim 4: The amount of component B, which corresponds to nonionic surfactant (C1) is preferably blended at an amount of 1% to 20% by mass (p. 3, final para.). The amount of component A, which corresponds to nonionic surfactant (C2) is also preferably blended at an amount of 1% to 20% by mass (p. 3, para. 5). As such, the total content of nonionic surfactant corresponding to (C1) and (C2) would be 2 to 40% by mass.
Regarding claims 5 and 6: As discussed above, the nonionic surfactants of JP’481 are preferably hexaglyceryl dicaprylate (p. 3, para. 5), which reads on the (C1) nonionic surfactant, and polyglyceryl-10 diisostearate or polyglyceryl-10 dioleate (p. 3, para. 3), which read on the (C2) nonionic surfactant.
Regarding claim 7: Water can also be mix/blended with the cleansing oil. However, when a large amount of water is blended, water cannot be completely contained in the oil phase, resulting in an oil-in-water emulsion composition. When adding water, it is preferable to make it 20 mass% or less, and it is especially preferable not to mix water (p. 4, para. 9). The preferred embodiment of JP’481 thereby contains no water which reads on a moisture content of 5% by mass or less as instantly claimed.
Regarding claim 8: Component D of JP’481 is a hydrophilic compound which includes glycerin, polyglycerins such as diglycerin, polyalkylene glycols such as polyethylene glycol, and more (p. 7, final 2 paragraphs). Such compounds read on a moisturizer as instantly claimed.
Regarding claims 10 and 11: The composition of JP’481 is a cleansing oil with excellent wash-out properties that can wash away cosmetics firmly. Thus, clogging of pores and rough skin are unlikely to occur, and the burden on the skin due to friction when removing makeup can be reduced (p. 6, para. 7). Such a composition reads on a skin cleanser and cleansing cosmetic as instantly claimed.
The teachings of JP’481 differ from that of the instant invention in that JP’481 does not explicitly teach an aliphatic hydrocarbon having 8 to 20 carbon atoms as defined in claims 1, 3, and 12, nor wherein the content of the ester oil is 40% to 90% by mass and the mass ratio of the nonionic surfactants is 2.5 to 10 or 3 to 10, as defined in instant claims 1 and 13. JP’481 also fails to explicitly teach the range of claim 4 and the viscosity of claim 9.
JP’337 discloses an oil-based cleansing cosmetic composition comprising nonionic surfactants (a-1) and (a-2); 10 to 30% by mass of (b) hydrocarbon oil; and 1 to 71% by mass of (c) ester oil (abstract). The cleansing cosmetic is applied to skin (Example 1) and is preferably a transparent liquid (p. 11, para. 3).
The hydrocarbon oil according to component (b) is not particularly limited as long as it can be used in cosmetics. It may be selected from chain saturated hydrocarbon having 13 to 15 carbon atoms, hydrogenated polyisobutene, isododecane and more (p. 4, para. 1; p. 5, para 3-4), all of which read on an aliphatic hydrocarbon having 8 to 20 carbon atoms as recited in claim 1. It is preferably selected from ~15 chain saturated hydrocarbons (p. 5, para. 4). Hydrogenated polyisobutene with ~15 carbons and isododecane further read on the hydrocarbons of claim 1. The hydrocarbon oil is present at 10 to 30% by mass which falls within the range of claim 3.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the hydrocarbon component of JP’337 to the cleansing oil composition of JP’481 since hydrocarbon oils are known and routine in the art of oil cleansers. One of ordinary skill in the art could have combined these elements according to known techniques with no change in their respective function, to predictably yield the instant invention. Additionally, both JP’481 and JP’337 disclose oil cleansers and “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to select any of the hydrocarbon oils taught by JP’337, such as ~15 chain saturated hydrocarbons like hydrogentated polyisobutene, or isododecane, since the selection of a known material for incorporation into a composition, based on its recognized suitability for its intended use, is considered prima facie obvious. See MPEP 2144.07.
It would have been further obvious to include the hydrocarbon oil in an amount of 10 to 30% by mass as taught by JP’337 since this a known and routine amount at which to incorporate a hydrocarbon oil in an oil cleanser. The combination of prior art elements according to known techniques to yield predictable results is considered prima facie obvious. See MPEP 2143. Such an amount falls within the range of claim 3 (i.e., 3-30%). While 10-30% does not fall within the instantly claimed range of claim 12 (i.e., 3-8.92%) it is well within the abilities of an ordinary artisan to optimize the amount of hydrocarbon in the composition depending on the desired consistency and feel of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 12 through no more than routine experimentation. Generally, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in adding the hydrocarbon oil of JP’337 into the composition of JP’481 since both teach oil cleansers for cosmetic use on the skin and JP’481 welcomes the addition of hydrocarbon oils and JP’337 teaches using hydrocarbon oils in a composition also comprising ester oils and nonionic surfactants.
As such, the hydrocarbon (component B) as defined in claims 1, 3, and 12 is obvious.
Regarding the amount of ester oil in the combined composition of JP’481 and JP’337, both teach high amounts such as 20 to 80% or 1 to 71% by mass, respectively. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. As such, the amount of ester oil in claim 1 is obvious.
Regarding the mass ratios of the nonionic surfactants corresponding to (C1) and (C2) of the instant invention, JP’481 teaches that they are each independently included at an amount of 1 to 20% by mass. While JP’481 does not explicitly teach a mass ratio between the nonionic surfactants, it is well within the abilities of an ordinary artisan to optimize the amount of each in the composition depending on the desired properties and consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ratios through no more than routine experimentation. Generally, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, the mass ratios of claims 1 and 13 are obvious.
Regarding the total amount of nonionic surfactants (C1) and (C2), JP’481 teaches 2 to 40% by mass total of the surfactants which correspond to (C1) and (C2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. As such, claim 4 is obvious.
Regarding claim 9, because the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property (i.e., viscosity when mixed with water). It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
2. Claims 1 and 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Miwake, H., (JP 2017206450 A, 11/24/2017, ip.com translation used, on record), hereinafter JP’450, in view of Yokozuka, A., et al. (JP 2019196337 A, 11/14/2019, ip.com translation used, on record), hereinafter JP’337.
JP’450 teaches an oil-based cleansing cosmetic comprising (A) polyglycerol difatty acid ester comprising a fatty acid having 8 to 10 carbon atoms and a polyglycerin having an average degree of polymerization of 4 to 10; (B) a fatty acid having 18 to 22 carbon atoms and a polyglycerin having an average degree of polymerization of 8 to 15; and (C) an oil agent (abstract).
Regarding claim 1: The cosmetic is transparent when less than 20% by mass of water is included (p. 3, para. 6; Examples 1-4). The oil agent may be an oil agent mix comprising hydrocarbon oils and ester oils (p. 6, final para.). The compounding quantity of an oil agent is 10-90 mass% (p. 7, para. 2). The polyglycerol difatty acid ester comprising a fatty acid having 8 to 10 carbon atoms and a polyglycerin having an average degree of polymerization of 4 to 10 (abstract; p. 6, para. 4) reads on the nonionic surfactant (C1) of the instant claims. The fatty acid having 18 to 22 carbon atoms and a polyglycerin having an average degree of polymerization of 8 to 15 (abstract; p. 6, para. 5), reads on the nonionic surfactant (C2) of the instant claims. The ratio of the difatty acid esters corresponding to (C1):(C2) (i.e., (A):(B) as taught by JP’450) is 12:5 to 1:1 (abstract; p. 6, para 6).
Regarding claim 4: The amount of (A), which corresponds to nonionic surfactant (C1) is preferably blended at an amount of 9 to 12% by mass (p. 6, para. 4). The amount of (B), which corresponds to nonionic surfactant (C2) is preferably blended at an amount of 5 to 8% by mass (p. 6, para. 5). As such, the total content of nonionic surfactant corresponding to (C1) and (C2) would be between 14 and 20% by mass which falls within the instantly claimed range (i.e., 8-45%).
Regarding claim 5: The polyglycerol difatty acid ester composed of a fatty acid having 8 to 10 carbon atoms and polyglycerol having an average polymerization degree of 4 to 10, which corresponds to (C1) is hexaglyceryl dicaprate and/or hexaglyceryl dicaprylate (p. 2, final para.).
Regarding claim 6: The polyglycerin difatty acid ester composed of a fatty acid having 18 to 22 carbon atoms and polyglycerin having an average polymerization degree of 8 to 15 is decaglyceryl diisostearate and/or decaglyceryl dioleate (p. 2, final para.).
Regarding claim 7: While it is taught that the oil-based cleansing cosmetic may be used/washed away with water and various tests are done which entail diluting the oil-based cleansing cosmetic with water, there is no explicit teaching that the oil-based cleansing cosmetic comprises water. Examples 1 to 4 further teach that the upper limit of the amount of water that can keep the cosmetics transparent is 20% by mass in Examples 1, 3, and 4 and 30% by mass in Example 2 (p. 3, final para.).
Regarding claim 8: Various raw materials commonly used in cosmetics can be blended as optional components. For example, polyhydric alcohols, thickeners, antioxidants, fragrances and the like can be blended. Specifically, a polyhydric alcohol may act as a solvent thereby increasing the cleansing power when blended. In particular, 1,2-pentanediol and dipropylene glycol are preferable because cleansing power is improved (p. 6, para. 7-8). Such compounds read on a moisturizer as instantly claimed.
Regarding claim 9: The primary purpose of including a thickener is to thicken to the desired viscosity. The second purpose is to improve the spread, improve the slip on the skin, and facilitate cleansing. The inherent viscosity may improve the stickiness of surfactants and oils (p. 7, para. 9).
Regarding claims 10 and 11: The composition of JP’450 is oil-based cleansing cosmetic which removes makeup from the skin (abstract; p. 5, para. 1-2). Such a composition reads on a skin cleanser and cleansing cosmetic as instantly claimed.
The teachings of JP’450 differ from that of the instant invention in that JP’450 does not explicitly teach an embodiment comprising both an ester oil and an aliphatic hydrocarbon as defined in claims 1, 3, and 12, nor wherein the mass ratio of the nonionic surfactants is 2.5 to 10 or 3 to 10, as defined in instant claims 1 and 13. JP’450 also fails to explicitly teach the moisture content of claim 7, the inclusion of the moisturizer of claim 8, and the viscosity of claim 9.
JP’337 discloses an oil-based cleansing cosmetic composition comprising nonionic surfactants (a-1) and (a-2); 10 to 30% by mass of (b) hydrocarbon oil; and 1 to 71% by mass of (c) ester oil (abstract). The cleansing cosmetic is applied to skin (Example 1) and is preferably a transparent liquid (p. 11, para. 3).
The hydrocarbon oil according to component (b) is not particularly limited as long as it can be used in cosmetics. It may be selected from chain saturated hydrocarbon having 13 to 15 carbon atoms, hydrogenated polyisobutene, isododecane and more (p. 4, para. 1; p. 5, para 3-4), all of which read on an aliphatic hydrocarbon having 8 to 20 carbon atoms as recited in claim 1. It is preferably selected from ~15 chain saturated hydrocarbons (p. 5, para. 4). A hydrogenated polyisobutene of ~15 carbons and isododecane further read on the hydrocarbon of claim 1. The hydrocarbon oil is present at 10 to 30% by mass which falls within the range of claim 3.
The composition may further comprise component (e) comprising 3 to 10% by mass of water (p. 3, final para.).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ester oil and hydrocarbon components of JP’337 as the oil agent in the oil-based cleansing cosmetic of JP’450 since ester oils and hydrocarbon oils are known and routine oils in the art of oil cleansers. One of ordinary skill in the art could have combined these elements according to known techniques with no change in their respective function, to predictably yield the instant invention. Additionally, both JP’450 and JP’337 disclose oil cleansers and “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to select any of the hydrocarbon oils taught by JP’337, such as ~15 chain saturated hydrocarbons like hydrogentated polyisobutene, or isododecane, since the selection of a known material for incorporation into a composition, based on its recognized suitability for its intended use, is considered prima facie obvious. See MPEP 2144.07.
It would have been further obvious to include the ester oil at 1 to 71% by mass and the hydrocarbon oil in an amount of 10 to 30% by mass as taught by JP’337 since these are known and routine amounts at which to incorporate these oils in an oil cleanser. The combination of prior art elements according to known techniques to yield predictable results is considered prima facie obvious. See MPEP 2143. The amount of 1 to 71% by mass of an ester oil overlaps with the instantly claimed amount of claim 1 (i.e., 40-90%). JP’450 teaches a compounding quantity of an oil agent of 10-90 mass%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. The amount of 10-30% by mass of a hydrocarbon falls within the range of claim 3 (i.e., 3-30%). While 10-30% does not fall within the instantly claimed range of claim 12 (i.e., 3-8.92%) it is well within the abilities of an ordinary artisan to optimize the amount of hydrocarbon in the composition depending on the desired consistency and feel of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 12 through no more than routine experimentation. Generally, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in adding the ester oil and hydrocarbon oil of JP’337 into the composition of JP’450 since both teach oil cleansers for cosmetic use on the skin and JP’450 welcomes the use of ester and hydrocarbon oils as the oil agent.
As such, the ester oil of claim 1 and the hydrocarbon as defined in claims 1, 3, and 12 are obvious.
Regarding the mass ratios of the nonionic surfactants (C1) and (C2) of the instant invention, JP’450 teaches a mass ratio of (C1) to (C2) (i.e., in the form of (A):(B)) of 12:5 to 1:1. While such a ratio does not fall within the mass ratios range of claims 1 and 13, it is well within the abilities of an ordinary artisan to optimize the ratio of nonionic surfactants in the composition depending on the desired properties and consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range ratio through no more than routine experimentation. Generally, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the upper limit of the range taught by JP’450 is 2.4:1 which does not overlap with the range of instant claim 1 but is very close (i.e., 2.5:1). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05. As such, the mass ratios of claims 1 and 13 are obvious.
Regarding claim 7, while JP’450 does not explicitly teach a moisture content of 5% by mass or less, JP’450 teaches the upper limit of the amount of water that can keep the cosmetics transparent is 20% or 30% in various examples. JP’337 teaches its oil cleanser may further contain component (e) comprising 3 to 10% by mass of water (p. 3, final para.). Thus, both references teach amounts of water which overlap with the instantly claimed moisture content of less than 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Furthermore, one of ordinary skill in the art could have optimized the amount of water/moisture in the composition through no more than routine experimentation depending on the desired transparency of the final product, as reasonably suggested by JP’450. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, it would have been prima facie obvious to one of ordinary skill in the art to include the 1,2-pentanediol or dipropylene glycol of JP’450 in the final composition since such compounds improve the cleansing power of the oil composition as taught by JP’450.
Regarding claim 9, because the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property (i.e., viscosity). It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Furthermore, JP’450 teaches adjusting viscosity with a thickener meaning one of ordinary skill in the art could have obtained a composition with the desired viscosity simply by adding and adjusting the amount of thickener via routine experimentation depending on the desired spreadability/consistency of the final product.
Response to Arguments
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive:
(1) Applicant states that neither Miwake ‘481 nor Miwake ‘450 have an example including an aliphatic hydrocarbon and that the upper limit of the mass ratio of (A) to (B) in Miwake ‘481 is 12:5 (corresponding to (C1):(C2)). Applicant cites Miwake ‘481 for stating “From this, it was determined that in comparative example 18, there is a risk that cleansing powder may decrease when a large amount of water is mixed in during actual use”, citing Miwake ‘481 paragraphs [0037], [0039], and Table 3. However, these paragraphs and tables in Miwake ‘481 do not appear to reference this, in fact, Table 3 of Miwake does not even present a comparative example 18. Examiner wonders if these citations were made in error. Either way, applicant has not distinctly pointed out how such a statement teaches away from the instantly claimed ratio of 2.5:1 to 10:1, Applicant has only cited the above excerpt and simply stated that therefore, Miwake ‘481 teaches away. As such, it is unclear to the examiner what exactly is being referenced and how it constitutes a teaching away. Additionally, as discussed in the above rejections, a mass ratio of 12:5 (i.e., 2.4:1) is very close to the instantly claimed mass ratio of 2.5:1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05. In response to applicant's arguments against the Miwake references individually, for not teaching an aliphatic hydrocarbon, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, the secondary reference Yokozuka (JP’337), is relied on for teaching the addition of an aliphatic hydrocarbon. Additionally, both Miwake references welcome the addition of hydrocarbons.
(2) Applicant argues that Yokozuka does not teach or suggest the effects of hydrocarbon oils other than the chain saturated hydrocarbon oils having 13 to 15 carbon atoms, and that Yokozuka includes liquid paraffins as examples of the hydrocarbon oil. Applicant points to comparative example 6 of the instant invention, which includes a mineral oil (a liquid paraffin), and indicates that such a composition has worse results for makeup removal and appearance. Applicant asserts that since the hydrocarbons of Yokozuka include paraffins, it would not have been obvious to a person of ordinary skill to select the hydrocarbon oil of Yokozuka since including mineral oil in the instant composition produces undesirable results.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the effects of the hydrocarbon oils) are not recited in the rejected claim(s). 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). If applicant means to argue such features as unexpected results when a specific hydrocarbon is used versus another (i.e., claimed versus not claimed), an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). In this case, applicant has not pointed to a comparison with the closest prior art to sufficiently show unexpected results nor is it clear what the comparative example is “worse” than. Additionally, not all mineral oil is considered a liquid paraffin. Mineral oil is a broader team than liquid paraffin, with liquid paraffin typically referring to highly refined and high purity mineral oil. The instant specification does not explicitly define the mineral oil and Yokozuka does not recite mineral oil, rather its recites liquid paraffin. As such, comparative example 6 which contains “mineral oil” cannot automatically be equated to an example containing “liquid paraffin”. Even if the two could be equated, the fact that one example of Yokozuka’s hydrocarbons has poor properties in the instant invention is not evidence that other examples would. One of ordinary skill in the art could have chosen the instantly claimed hydrocarbons of isododecane and hydrogenated polyisobutene since these are known and effective hydrocarbon oils in transparent, oil cleansing compositions. It is prima facie obvious to combine any prior art elements according to any known techniques, as long as it yield predictable result with a reasonable expectation of success. Applicant must prove otherwise for in order to overcome the prima facie case.
Conclusion
No claims 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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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616