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
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 on 04/08/2024.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/28/2024, 08/02/2024, 04/02/2025, and 07/21/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
Regarding the non-patent literature document International Cosmetic Ingredient Dictionary and Handbook disclosed in the IDS filed on 08/02/2024, the Examiner notes that only the cover, title page, and copyright page of the document were filed. Accordingly, only these pages have been considered by the Examiner.
Claim Objections
Claims 2-3, 10, 12-13, and 20 are objected to because of the following informalities:
In claim 2, the limitation “wherein the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment and [the] (B) at least one T-modified silicone resin” appears twice, which is redundant and should only appear once. The only difference in the two recitations is the presence of the word “the” before the limitation “(B) at least one T-modified silicone resin”, which should be retained to clarify proper antecedent basis of the limitation.
Claim 2 (line 5), claim 3 (line 3), claim 10 (line 3), claim 12 (line 3), claim 13 (line 3), and claim 20 (line 3) each appear to recite an extraneous space between the terms “A:B,” and “that”, which should be removed.
Applicant is advised that should claim 3 and/or claim 10 be found allowable, claim 13 and/or claim 20, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
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 3, 9-10, 12-13, and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3, 9, 12-13, and 19 each recite the limitation “(B) at least one T-modified silicone resin”. Because other claims (e.g., claims 2, 4, 10, 14, and 20) deliberately recite ““the (B) at least one T-modified silicone resin”, it is unclear whether the limitation refers to the T-modified silicone resin recited in parent claims 1 or 11, or to a different resin. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting each claim to mean that T-modified silicone resin refers to the same as that recited in the parent claim.
Claims 10 and 20 each recite the limitation “(A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment”. Because other claims (e.g., claims 2-4, 9, 12-14, and 19) deliberately recite “the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment”, it is unclear whether the limitation refers to the copolymer recited in parent claims 1 or 11, or to a different resin. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting each claim to mean that copolymer refers to the same as that recited in the parent claim.
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 (Paragraph 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 (Paragraph 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 1-20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Patil et al. (US20040161395A1; published: 08/19/2004; PTO-892).
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 claim 1: The silicone copolymer of Patil reads on the instantly claimed component (A) as evidenced by Applicant’s instant specification, which states that the fluid silicone segment is preferably a diorganopolysiloxane (Instant Specification, Paragraph 0054). Regarding the instantly claimed component (B): Patil explicitly teaches MQ resins, preferably trimethylsiloxysilicate, and T or MT resins as preferred silicone film formers (Paragraph 0227-0233). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could at once envisage 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. 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 claims 2, 3, and 10: The weight ratio of silicone copolymer to silicone film former in the lipstick composition of Patil is 2:1, which lies within and thus reads on the instantly claimed ranges.
Regarding claim 4: Because no other 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 (Paragraph 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 (Paragraphs 0204 and 0267). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could at once envisage 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 Specification, Paragraph 0080).
Regarding claim 9: The amount of isododecane in the lipstick composition of Patil lies within and thus reads on the instantly claimed range of volatile oil, and 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 (Paragraph 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.
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).
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 2-3, 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 weight ratio of silicone copolymer to T-modified silicone resin using 2:1 as a starting point for routine optimization because Patil teaches that this ratio of silicone copolymer comprising a siloxane resin and a diorganosiloxane to silicone film former produces a lipstick composition with good transfer resistance.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of App. ‘039 with the prior art teachings as proposed because T-modified silicone resins are known in the art to be useful film formers in the formulation of 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 2-3, 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, using a 2:1 weight ratio of silicone copolymer comprising a siloxane resin and a diorganosiloxane to T-modified silicone resin as a starting point for routine optimization because Patil teaches that this ratio of silicone copolymer to silicone film former produces a lipstick composition with good 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 T-modified silicone resins are known in the art to be useful film formers in the formulation of 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).
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 2-3, 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, using a 2:1 weight ratio of silicone copolymer comprising a siloxane resin and a diorganosiloxane to T-modified silicone resin as a starting point for routine optimization because Patil teaches that this ratio of silicone copolymer to silicone film former produces a lipstick composition with good 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 T-modified silicone resins are known in the art to be useful film formers in the formulation of 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).
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 2-3, 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, using a 2:1 weight ratio of silicone copolymer comprising a siloxane resin and a diorganosiloxane to T-modified silicone resin as a starting point for routine optimization because Patil teaches that this ratio of silicone copolymer to silicone film former produces a lipstick composition with good 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 T-modified silicone resins are known in the art to be useful film formers and isododecane is known to be a useful skin penetrant in the formulation of 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).
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 2-3, 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, using a 2:1 weight ratio of silicone copolymer comprising a siloxane resin and a diorganosiloxane to T-modified silicone resin as a starting point for routine optimization because Patil teaches that this ratio of silicone copolymer to silicone film former produces a lipstick composition with good 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 T-modified silicone resins are known in the art to be useful film formers in the formulation of lipstick compositions.
Conclusion
No claim is allowed.
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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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616