9Notice 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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated June 8, 2026 is acknowledged.
Claims 1-13 are pending.
Claims 2, 5, 7, 11 and 12 are currently amended.
Claims 10 and 13 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-9, 11 and 12 as filed on June 8, 2026 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, some of the previous claim objections are withdrawn, all previous claim rejections under 35 USC 112(b) are withdrawn, and all previous claim rejections under 35 USC 112(d) are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 5, 2026 was considered.
Claim Objections
Claims 2 and 12 are objected to because of the following informalities:
Claim 2: where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. See MPEP 608.01(m) and 37 CFR 1.75(i).
Claim 12c): “10% wt%” should recite “10 wt%”.
Appropriate correction is required.
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112(b)
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 8 and 12 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 pre-AIA the applicant regards as the invention.
Claim 8e) recites a hydrophobic agent such as N-acyl amino acids. Description of examples and preferences is properly set forth in the specification rather than in a single claim because the recitation of examples and preferences leads to confusion over the intended scope of the claim. See MPEP 2173.05(c). Claim 12 is included in this rejection because it depends from claim 8 and because it does not remedy the noted ambiguity.
Maintained Grounds of Rejection: 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dique-Mouton et al. (WO 2018/228783 A1, published December 20, 2018, of record) in view of Stepniewski et al. (US 5,599,533, published February 4, 1997, of record) and Choi et al. (KR 100854086 B1, published August 25, 2008, as evidenced by the Google translation, of record).
Dique-Mouton teaches water-in-oil emulsions, comprising a physiologically acceptable medium, for coating keratin materials comprising at least (title; abstract; claims):
an oily continuous phase comprising at least one volatile oil (pages 14-15), as required by instant claims 8c), 12c),
a discontinuous aqueous phase,
at least one hydrophobic film-forming polymer,
at least one nonvolatile oil,
at least one filler,
an emulsifying system, and
at least one pigment, and optionally
at least one water-soluble liquid polyol chosen from glycols (claim 2), as required by instant claim 9.
Regarding the amount of volatile oils of at least 10 wt% as required by instant claim 12c), Dique-Mouton exemplifies embodiments of W/O emulsions comprising at least 13.1 wt% dodecamethylpentasiloxane (volatile oil) (pages 53-54; also page 15, lines 21-32).
The at least one hydrophobic film-forming polymer is chosen vinyl polymers comprising at least one carbosiloxane dendrimer-based unit and is present from 0.5 to 20 wt% (claims 10, 11; pages 24-28), as required by instant claim 12a). 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). "[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). See MPEP 2144.05. The vinyl polymer comprises a molecular side chain containing a carbosiloxane dendrimer structure, and may be derived from the polymerization of:
from 0 to 99.9 parts by weight of a vinyl monomer; and
from 100 to 0.1 parts by weight of a carbosiloxane dendrimer containing a radical polymerizable organic group, represented by
PNG
media_image1.png
124
256
media_image1.png
Greyscale
in which Y represents a radical-polymerizable organic group, R1 represents an aryl group or an alkyl group containing from 1 to 10 carbon atoms, and Xi represents a silylalkyl group which, when i=1, is represented by
PNG
media_image2.png
118
354
media_image2.png
Greyscale
in which R1 is as defined above, R2 represents an alkylene group containing from 2 to 10 carbon atoms, R3 represents an alkyl group containing from 1 to 10 carbon atoms, Xi+1 represents a hydrogen atom, an alkyl group containing from 1 to 10 carbon atoms, an aryl group, or the silylalkyl group defined above with i=i+1; i is an integer from 1 to 10 which represents the generation of said silylalkyl group, and ai is an integer from 0 to 3; in which said radical-polymerizable organic group contained in component (A) is chosen from:
organic groups containing a methacrylic group or an acrylic group and that are represented by the formulae
PNG
media_image3.png
78
280
media_image3.png
Greyscale
PNG
media_image4.png
72
282
media_image4.png
Greyscale
in which R4 represents a hydrogen atom or an alkyl group, R5 represents an alkylene group containing from 1 to 10 carbon atoms; and
organic groups containing a styryl group and that are represented by the formula
PNG
media_image5.png
94
244
media_image5.png
Greyscale
in which R6 represents a hydrogen atom or an alkyl group, R7 represents an alkyl group containing from 1 to 10 carbon atoms, R8 represents an alkylene group containing from 1 to 10 carbon atoms, b is an integer from 0 to 4, and c is 0 or 1, such that if c is 0, -(R8)c- represents a bond (page 24, line 39 through page 25, line 26), as required by instant claim 2. The vinyl polymer may comprise tris[tri(trimethylsiloxy)silylethyldimethylsiloxy]silylpropyl carbosiloxane dendrimer-based unit corresponding to one of the formulae
PNG
media_image6.png
232
458
media_image6.png
Greyscale
(page 27, lines 18-24), as required by instant claim 3. The vinyl polymer is preferably an acrylate / polytrimethylsiloxymethacrylate copolymer having the INCI name: Acrylates / Polytrimethyl Siloxymethacrylate copolymer, in particular that sold in isododecane (volatile oil) (page 28, lines 12-17), as required by instant claims 4, 8a), 12a).
The at least one hydrophobic film-forming polymer may further comprise at least one silicone acrylate copolymer (pages 28-29). The silicone acrylate copolymer comprises carboxylate groups comprising for example (meth)acrylic acid and polydimethylsiloxane groups (page 28, lines 20-50), as required by instant claim 5. The silicone acrylate copolymer may comprise an acrylates/dimethicone dispersed in cyclopentasiloxane (volatile oil) (page 29, lines 32-44), as required by instant claims 8b), 11, 12b). Regarding the amount of the acrylate / dimethicone copolymer of 0.5 to 7 wt% as required by instant claim 11b), Dique-Mouton teaches the at least one hydrophobic film-forming polymer is present from 0.5 to 20 wt% (claim 11; page 19, lines 8-11). See MPEP 2144.05.
The at least one pigment is coated with at least one lipophilic or hydrophobic compound (claim 14; pages 34-48). Lipophilic or hydrophobic treatment agents include silicone surface agents (pages 38-46, in particular page 39, lines 10-20), as required by instant claims 7, 8e), 12e). The compositions comprise at least 5 wt%, from 5 to 40 wt% pigments (page 34, lines 24-27), as required by instant claim 12e). See MPEP 2144.05.
Dique-Mouton further teaches the at least one nonvolatile oil can be chosen from silicone oils such as polydimethylsiloxanes (pages 7-14, in particular page 7, lines 22-25; page 8, lines 8-12).
Dique-Mouton does not teach a C8-C22 alkyl dimethicone as required by claim 1.
Dique-Mouton does not teach the C8-C22 alkyl dimethicone is cetyl dimethicone as required by claims 6, 8d).
Dique-Mouton does not teach 0.05 to 5 wt% cetyl dimethicone as required by claim 12d).
These deficiencies are made up for in the teachings of Stepniewski and Choi.
Stepniewski teaches water-in-oil emulsions comprising silicone oils and optionally further comprising at least one pigment (title; abstract; claims, e.g., 1, 4-7, 25). Nonvolatile silicone oils include dimethicones and alkylated derivatives thereof such as cetyl dimethicone (column 3, lines 20-32), as required by instant claims 6, 8d), 12d).
Choi teaches water-in-oil compositions having excellent oil resistance by using a wax to which a silicone group is added, using an acrylate / silicone copolymer as a film former, and powder coated with a silicone resin (title; abstract; claims). Suitable waxes include stearyl (C18) dimethicone or/and cetyl (C16) dimethicone and may be present from 0.5 to 25 wt% (claims; page 2, middle), as required by instant claims 6, 8d), 12d).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute silicone oils inclusive of cetyl dimethicone as taught by Stepniewski for the nonvolatile silicone oils of the emulsions of Dique-Mouton because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. One would have been motivated to make the substitution in order to reap the expected benefit of excellent oil resistance as taught by Choi when cetyl dimethicone is used in combination with acrylate / silicone polymers as embraced by Dique-Mouton and with powders coated with a silicone resin as embraced by Dique-Mouton.
Regarding claim 12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the cetyl dimethicone in the compositions of Dique-Mouton in amounts from 0.5 to 25 wt% as taught by Choi and to optimize therein in order to reap the expected benefit of excellent oil resistance. It is prima facie obvious to optimize such result-effective variables within prior art conditions or through routine experimentation. See MPEP 2144.05.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant cites to the working examples in the specification in support of the argument that cetyl dimethicone achieves better performance in terms of fidelity of color after application and stability of color over a day.
The specification and the working example have been considered as part of the Graham analysis in the determination of prima facie obvious. The working example lacks nexus with genus of compositions claimed. There is no evidence of record that the performance of 0.5 wt% cetyl dimethicone in the composition of the working example is extrapolatable across the genus of compositions claimed. See generally MPEP 716 for information regarding allegations of unexpected results. And notably, the genus of compositions claimed does not exclude other dispersants or/and stabilizers.
Applicant argues Dique-Mouton discloses a long list of polymers and does not exemplify an embodiment comprising the instantly claimed combination. Applicant further argues the instantly claimed polymers destabilize pigments.
This is not found persuasive because the genus of compositions claimed does not exclude other polymers. At least claim 10 of Dique-Mouton points to mixtures of polymers inclusive of those comprising carbosiloxane dendrimers as instantly claimed and section V at pages 28-30 points to a particular embodiment comprising silicone acrylates as instantly claimed. Notably, there is no evidence of record that the instantly claimed combination of polymers produces a different result than any other combination possessed by Dique-Mouton.
Applicant’s argument regarding an issue with lack of stabilization is acknowledged but not found persuasive because there is no evidence of record that the compositions of Dique-Mouton are not stable. Furthermore, the art recognizes cetyl dimethicone as a dispersant (e.g., Cernasov et al. (US 5,976,510), abstract).
Applicant argues the technical area and technical problem of Choi are far away from those of Applicant. Applicant repeats the argument regarding pigment destabilization.
This is not found persuasive because Choi is in the field of cosmetics. Applicant is reminded the prevailing legal standard is not that of the problem – solution approach of other jurisdictions.
Applicant argues Stepniewski does not disclose polymers as instantly claimed and further states Stepniewski motivates stabilizing agents other than cetyl dimethicone.
This is not found persuasive because Stepniewski is not relied upon to render obvious polymers other than cetyl dimethicone.
In response to applicant's arguments against the references individually, 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).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
Prosecution Insights