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 .
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.
Claim Status
Applicant’s amendment of 07/02/2026 is acknowledged. Claims 1-3, 9-10, 12-13, and 19-20 are amended. Claims 1-20 are currently pending and are examined on the merits herein.
Priority
No priorities are claimed as reflected in the filing receipt dated 04/08/2024.
Previous Rejections/Objections
Applicant’s arguments filed 07/02/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied as necessitated by Applicant’s amendment to the claims. They constitute the complete set of rejections and/or objections presently being applied to the instant application. Applicant’s arguments insofar as they pertain to the present grounds of rejections and/or objections are addressed herein.
Claim Interpretation
The Examiner is interpreting the limitation “T-modified silicone resin” to mean any silicone resin which comprises, in its chemical structure, one or more trifunctional units (T units) as well as one or more other units (M, D and/or Q), as defined in Applicant’s instant specification [0064].
The Examiner is interpreting the limitation “about” to mean within 10% to 15% of the indicated number, as defined in Applicant’s instant specification [0013].
With no limiting definition of the term “an amount sufficient to makeup the lips” provided in Applicant’s instant disclosure and because an ordinarily skilled artisan would understand that the amount of a product deemed “sufficient” to makeup the lips will subjectively vary by user, the Examiner is interpreting any amount of composition applied to the lips as sufficient to meet the limitation “an amount sufficient to makeup the lips”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Brun et al. (US20090214458A1; 08/27/2009; PTO-892 of instant action).
Brun, throughout the reference, discloses compositions for treating keratin fibers, comprising: (a) at least one copolymer comprising at least one silicone resin and at least one fluid silicone; (b) at least one volatile solvent; (c) and at least one silicone resin comprising at least one trifunctional unit of formula (R)SiO3/2 [claim 1].
In at least one exemplary embodiment, a composition comprises: 42 g volatile cyclic silicone DC245 fluid; 10 g α,ω-dihydroxyl polydimethylsiloxane/cyclopentadimethylsiloxane mixture; 3 g polydimethylsilsesquioxane; 10 g mica nacre coated with brown iron oxide; 15 g disteardimonium hectorite (10%) and propylene carbonate (3%) in isododecane; and 20 g BioPSA 7-4400 diluted to 40% in isododecane [0272, example 3].
Regarding claims 1-3 and 10: BioPSA 7-4400 is silicone copolymer comprising a silicone resin segment and a fluid silicone segment [0010] and thus reads on instant component (A).
Regarding instant component (B), polydimethylsilsesquioxane corresponds to a silicone resin comprising at least one trifunctional (T) unit [0070]. Because Brun explicitly teaches that these silicone resins may also contain M, D, and Q units [0067-0069], an ordinarily skilled artisan could readily envisage an embodiment wherein the polydimethysilsequioxane resin further comprises M, D, and/or Q units, which reads on the instantly claimed T-modified silicone resin. Note: MPEP 2131.02. A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
Regarding the instantly claimed weight ratio of (A):(B), the weight ratio of silicone copolymer to silicone resin in the exemplary composition of Brun is ~2.7:1, which lies within and thus anticipates the instantly claimed ranges (calculated by Examiner based on 20 g of silicone copolymer diluted to 40%, relative to 3 g silicone resin).
Regarding claim 4: Because no film formers other than the silicone copolymer and the silicone resin are included in the composition of Brun, the components collectively represent a majority fraction of film-forming component of the composition.
Regarding claim 5: Brun teaches that its compositions are anhydrous [claim 20].
Regarding claim 6: Because Brun’s exemplary composition namely comprises volatile solvents, which are taught by Brun as liquid at room temperature [0035], an ordinarily skilled artisan would reasonably determine that the composition is in liquid form.
Regarding claim 7: Brun teaches iron oxides as natural pigments [0123]. Thus, the mica nacre coated with brown iron oxide reads on the instantly claimed coloring agent.
Regarding claim 8: Volatile cyclic silicone DC245 fluid and isododecane, which is taught by Brun as a volatile hydrocarbon-based oil [0044], meet the claim limitation.
Regarding claim 9: The exemplary composition of Brun comprises 42 wt.% volatile cyclic silicone DC245 fluid and 25 wt.% isododecane for a total of 67 wt.% volatile oils, which reads on the instantly claimed range of from about 10% to about 60% (see “Claim Interpretation” above). The Examiner’s calculation for isododecane is based on 20 g “BioPSA 7-4400 diluted to 40% in isododecane” and 15 g “Disteardimonium hectorite (10%) and propylene carbonate (3%) in isododecane”.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892 of 04/02/2026).
Claims 1-10 are rejected above as anticipated by Brun et al. The claims are further rejected herein to demonstrate that, in addition to claims 1-10, claims 11-20 are also obvious in view of the prior art.
Patil teaches a cosmetic composition for application to keratinous surfaces for the purpose of coloring, conditioning, or protecting such keratinous surface, comprising a silicone polymer which is the reaction product of a siloxane resin and a diorganosiloxane, in a cosmetically acceptable carrier (Abstract and Claims).
In an exemplary embodiment, a transfer resistant lipstick composition comprises: 14.60% w/w C20-40 alcohol wax; 16.20% w/w silicone copolymer; 8.10% w/w trimethylsiloxysilicate; 51.10% w/w isododecane; 10.00% w/w pigments; wherein the silicone copolymer is a siloxane resin/diorganosiloxane copolymer (Paragraph 0266, Table 1).
Regarding claims 1-3 and 10: The silicone copolymer of Patil reads on instant component (A) as evidenced by Applicant’s instant specification, which states that the fluid silicone segment is preferably a diorganopolysiloxane (instant spec., 0054].
Regarding instant component (B), Patil explicitly teaches MQ resins, preferably trimethylsiloxysilicate, and T or MT resins as preferred silicone film formers [0227-0233]. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could readily envision an embodiment wherein the lipstick composition of Patil comprises an MT resin, which reads on the instantly claimed T-modified silicone resin, as the silicone film former rather than trimethylsiloxysilicate. Note: MPEP 2131.02.
Regarding the instantly claimed weight ratio of (A):(B), the weight ratio of silicone copolymer to silicone film former is 1.4:1, based on the silicone copolymer being Dow Corning 7-4505, which Patil teaches in a subsequent example as 70 parts silicone in 30 parts isododecane [0270]. This weight ratio very closely approaches the instantly claimed range of at least 1.5:1. Because Patil teaches that its lipstick compositions can comprise 1-25% of the silicone copolymer, it would have been obvious to one of ordinary skill in the art to manipulate the concentration of silicone copolymer within the prior art range, which encompasses embodiments that overlap the instantly claimed weight ratios of (A):(B), according to known methods in order to achieve a desired level of moisture retention and/or improvement in skin appearance, which Patil directly attributes to the silicone copolymer component [0258; 0262].
Regarding claim 4: Because no film formers other than the silicone copolymer and the MT resin are included in the lipstick composition of Patil, the components collectively represent a majority fraction of film-forming component of the composition.
Regarding claim 5: Patil teaches that the lip compositions are preferably anhydrous [0201].
Regarding claim 6: While the exemplary lipstick composition of Patil is in stick form, Patil expressly teaches that the lipstick may be in solid stick, semi-solid, or liquid form [0204; 0267]. Therefore, one of ordinary skills in the art could readily envision an embodiment wherein the lipstick composition of Patil is in liquid form rather than stick form.
Regarding claim 7: The pigments in the lipstick composition of Patil read on the instantly claimed at least one coloring agent.
Regarding claim 8: The isododecane in the lipstick composition of Patil is a volatile hydrocarbon oil, as evidenced by Applicant’s instant specification [instant spec., 0080].
Regarding claim 9: The amount of isododecane in the lipstick composition of Patil is 55.96% w/w, which lies within and thus reads on the instantly claimed range of volatile oil. The total amount of silicone copolymer and silicone film former in the composition is 24.3% w/w, which reads on the instantly claimed range of from about 2% to about 20% (see “Claim Interpretation” above).
Regarding claim 11: Patil teaches that the lipstick composition was applied to the lips of two panelists and exhibited good transfer resistance [0267]. Under broadest reasonable interpretation, the application step of Patil, wherein the lipstick composition was necessarily applied in an amount sufficient to makeup the lips of two panelists, reads on the instantly claimed method (see “Claim Interpretation” above).
Regarding claims 12, 13, and 20: The claims are rejected for the same reasons as applied to claims 2, 3, and 10, respectively, above.
Regarding claims 14, 15, 16, 17, 18, and 19: The claims are rejected for the same reasons as applied to claims 4, 5, 6, 7, and 8, respectively, above.
Response to Arguments
Applicant’s arguments submitted on 07/02/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but were not found to be persuasive.
Applicant argues that Patil does not teach or suggest the ratios in the pending claims. This argument was not found to be persuasive. While Patil simply exemplifies a weight ratio of instant components (A):(B) of 1.4:1, which very closely approaches the instantly claimed ratio, the ratio is still obvious. Patil teaches that the concentration of silicone copolymer can range from 1-25% w/w. It is within the skillset of an ordinarily skilled artisan to manipulate the concentration of components within the ranges disclosed in the prior art in order to achieve a composition with a desired balance of properties, including moisture retention and/or improvement in skin appearance, which Patil directly attributes to the silicone copolymer component. For example, a composition comprising 25% w/w silicone copolymer and 8.1% w/w silicone film former would result in a weight ratio of 3:1, which renders obvious the instantly claimed range. "[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). Given that Applicant did not point out the criticality of the (A):(B) weight ratio of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
In view of the foregoing, the prior art rejections of record are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/637,039 in view of Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892 of 04/02/2026).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of App ‘039 recite a composition comprising at least one copolymer containing a silicone resin segment and at least one fluid silicone segment and at least one T-modified silicone resin.
The difference between the instant claims and that of App. ‘039 is the presence of at least one hydrophobically-modified pullulan compound. Because the instant claims recite the transitional term “comprising” which is inclusive and does not exclude additional, unrecited elements, the composition of App. ‘039 reads on the instantly claimed composition. Further, the claims of App. ‘039 do not expressly recite the weight ratio of A:B recited in instant claims 1-3, 10, 12-13, or 20.
The deficiencies of App. ‘039 are cured by Patil, whose teachings are as set forth above and further incorporated herein.
Regarding instant claims 2-3, 10, 12-13, and 20: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘039 by manipulating the concentration of silicone copolymer within the range of 1-25% w/w, which encompasses embodiments which read on the instantly claimed ratio of (A):(B), according to known methods to achieve a desired level of moisture retention and/or improvement in skin appearance, which Patil directly attributes to the silicone copolymers comprising the same structure.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of App. ‘039 with the prior art teachings as proposed because all components and concentrations are known in the art to be useful in formulating lipstick compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/618,229 in view of Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of App ‘229 recite a composition comprising at least one copolymer containing a silicone resin segment and at least one fluid silicone segment.
The difference between the instant claims and that of App. ‘229 is the presence of at least one hydrophobically-modified pullulan compound versus at least one T-modified silicone resin as recited in instant claims 1 and 11. Because the instant claims recite the transitional term “comprising” which is inclusive and does not exclude additional, unrecited elements, the composition of App. ‘229 reads on the instantly claimed composition for the reasons discussed below. Further, the claims of App. ‘229 do not expressly recite the weight ratio of A:B recited in instant claims 1-3, 10, 12-13, or 20.
The deficiencies of App. ‘229 are cured by Patil, whose teachings are as set forth above and further incorporated herein.
Regarding instant claims 1-3, 10-13, and 20: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘229 by further including a T-modified silicone resin in the range of 1-35% w/w because Patil teaches that the combination of silicone copolymer to silicone film former within this concentration range produces a lipstick composition with good transfer resistance [Patil, 0228]. Regarding the instantly claimed weight ratio, it would have been obvious to one of ordinary skill in the arti to manipulate the concentration of silicone copolymer within the range of 1-25% w/w and silicone film former in the range of 1-35% w/w, which encompasses embodiments which read on the instantly claimed ratio of (A):(B), according to known methods to achieve a desired level of transfer resistance.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of App. ‘229 with the prior art teachings as proposed because all components and concentrations are known in the art to be useful in formulating lipstick compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/692,095 in view of Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892 of 04/02/2026).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of App ‘095 recite a composition comprising at least one copolymer containing a silicone resin segment and at least one fluid silicone segment (e.g. silicone of dimethiconol type).
The difference between the instant claims and that of App. ‘095 is the presence of at least one silicone elastomer containing carboxylic acid functions versus at least one T-modified silicone resin as recited in instant claims 1 and 11. Because the instant claims recite the transitional term “comprising” which is inclusive and does not exclude additional, unrecited elements, the composition of App. ‘095 reads on the instantly claimed composition for the reasons discussed below. Further, the claims of App. ‘095 do not expressly recite the weight ratio of A:B recited in instant claims 1-3, 10, 12-13, or 20, that the composition is liquid as recited in instant claims 6 and 16, or the method of applying the composition to the lips as recited in instant claim 11.
The deficiencies of App. ‘095 are cured by Patil, whose teachings are as set forth above and further incorporated herein.
Regarding the composition of instant claims 1-3, 10-13, and 20: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘095 by further including a T-modified silicone resin in the range of 1-35% w/w because Patil teaches that the combination of silicone copolymer to silicone film former within this concentration range produces a lipstick composition with good transfer resistance [Patil, 0228]. Regarding the instantly claimed weight ratio, it would have been obvious to one of ordinary skill in the arti to manipulate the concentration of silicone copolymer within the range of 1-25% w/w and silicone film former in the range of 1-35% w/w, which encompasses embodiments which read on the instantly claimed ratio of (A):(B), according to known methods to achieve a desired level of transfer resistance.
Regarding the method of claim 11: It would have been obvious to one of ordinary skill in the art to apply the composition taught by the combination of App. ‘095 claims and Patil to the lips in an amount sufficient to makeup the lips because Patil teaches that compositions comprising the same ingredients are useful as transfer-resistant lipsticks.
Regarding claims 6 and 16: It would have been obvious to one of ordinary skill in the art to formulate the composition taught by the combination of App. ‘095 claims and Patil as a liquid because Patil teaches this is a useful form of the composition for application to lips and it is within the skillset of an ordinarily skilled artisan to determine which composition form provides a desired consistency or texture to a user.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of App. ‘095 with the prior art teachings as proposed because all components and concentrations are known in the art to be useful in formulating lipstick compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. No. 8,846,015 B2 in view of Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892 of 04/02/2026).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of US ‘015 recite a composition comprising at least one copolymer containing a silicone resin segment and at least one fluid silicone segment. The composition of US ‘015 does not comprise water and thus is considered anhydrous and may be in the form of a lip gloss, which under broadest reasonable interpretation is liquid.
The difference between the instant claims and that of US ‘015 is the presence of a supramolecular polymer, a detackifying ingredient, a fatty phase of silicone oil, and at least one light silicone fluid versus at least one T-modified silicone resin as recited in instant claims 1 and 11. Because the instant claims recite the transitional term “comprising” which is inclusive and does not exclude additional, unrecited elements, the composition of US ‘502 reads on the instantly claimed composition for the reasons discussed below. Further, the claims of US ‘015 do not expressly recite the weight ratio of A:B recited in instant claims 1-3, 10, 12-13, or 20, or the at least one volatile oil recited in instant claims 8-9 and 18-19.
The deficiencies of US ‘502 are cured by Patil, whose teachings are as set forth above and further incorporated herein.
Regarding the composition of instant claims 1-3, 10-13, and 20: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of US ‘502 by further including a T-modified silicone resin in the range of 1-35% w/w because Patil teaches that the combination of silicone copolymer to silicone film former within this concentration range produces a lipstick composition with good transfer resistance [Patil, 0228]. Regarding the instantly claimed weight ratio, it would have been obvious to one of ordinary skill in the arti to manipulate the concentration of silicone copolymer within the range of 1-25% w/w and silicone film former in the range of 1-35% w/w, which encompasses embodiments which read on the instantly claimed ratio of (A):(B), according to known methods to achieve a desired level of transfer resistance.
Regarding instant claims 8-9: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘502 claims and Patil by further including isododecane because Patil teaches that hydrocarbons serve as good skin penetrants.
Regarding instant claims 18-19: It would have been obvious to one of ordinary skill in the art to adjust the amount of isododecane using 51.10% w/w, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization because Patil teaches that this amount is effective for delivering silicone-based lip compositions to the lips of a user.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘502 with the prior art teachings as proposed because all components and concentrations are known in the art to be useful in formulating lipstick compositions.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. No. 9,089,502 B2 in view of Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892 of 04/02/2026).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of US ‘502 recite a composition comprising at least one copolymer containing a silicone resin segment (e.g., trimethylsiloxysilicate) and at least one fluid silicone segment (e.g. silicone of dimethiconol type). The composition of US ‘502 does not comprise water and thus is considered anhydrous and may be in the form of a lip gloss, which under broadest reasonable interpretation is liquid.
The difference between the instant claims and that of US ‘502 is the presence of a supramolecular polymer, a detackifying ingredient, and at least one light silicone fluid versus at least one T-modified silicone resin as recited in instant claims 1 and 11. Because the instant claims recite the transitional term “comprising” which is inclusive and does not exclude additional, unrecited elements, the composition of US ‘502 reads on the instantly claimed composition for the reasons discussed below. Further, the claims of US ‘502 do not expressly recite the weight ratio of A:B recited in instant claims 1-3, 10, 12-13, or 20.
The deficiencies of US ‘502 are cured by Patil, whose teachings are as set forth above and further incorporated herein.
Regarding the composition of instant claims 1-3, 10-13, and 20: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of US ‘502 by further including a T-modified silicone resin in the range of 1-35% w/w because Patil teaches that the combination of silicone copolymer to silicone film former within this concentration range produces a lipstick composition with good transfer resistance [Patil, 0228]. Regarding the instantly claimed weight ratio, it would have been obvious to one of ordinary skill in the arti to manipulate the concentration of silicone copolymer within the range of 1-25% w/w and silicone film former in the range of 1-35% w/w, which encompasses embodiments which read on the instantly claimed ratio of (A):(B), according to known methods to achieve a desired level of transfer resistance.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘502 with the prior art teachings as proposed because all components and concentrations are known in the art to be useful in formulating lipstick compositions.
Response to Arguments
Applicant’s arguments submitted on 07/02/2026 with respect to rejections on the grounds of non-statutory double patenting have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but were not found to be persuasive.
In response to Applicant’s arguments, the Examiner notes that the arguments are analogous to those made concerning the rejections under 35 U.S.C. 103 and were not found to be persuasive for the reasons discussed in detail above. Accordingly, the double patenting rejections of record are maintained.
Conclusion
No claim is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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