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 .
Summary
Claims 1-20 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application was filed on April 16, 2024.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on January 31, 2025 and June 28, 2024 are acknowledged. A signed copy of both documents are attached to this office action.
Claim Rejections - 35 USC § 112
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.
Claim 2 is 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.
Claim 2 has the phrase “…at least 1:1.” However, a skilled artisan would not know if, for example, either ratio of 1:2 or 2:1 would meet the claim limitation.
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 non-obviousness.
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 Ebanks et al. (US2018/0214369A1) in view of Tong et al. (US2013/02364006A1), Rattina et al. (FR3058888A1), and Bradshaw et al. (WO2012/089692A2).
[The Examiner is going to introduce each new reference and then combine them where appropriate to reject the instant claims.]
1. Ebanks et al.
Ebanks et al. is considered the closest prior art to the present invention as it teaches long-wear compositions containing silicone resin and silicone elastomer resin (see title). In addition, Ebanks et al. disclose compositions including at least one silicone resin comprising at least one T unit and at least one silicone elastomer resin, as well as methods of making such compositions and methods of applying such compositions to keratinous material are provided (see abstract).
2. Tong et al.
Tong et al. teach cosmetic compositions based on a supramolecular polymer, a hyperbranched functional polymer, a light silicone fluid and a copolymer of a silicone resin and a fluid silicone (see title). Furthermore, Tong et al. disclose that the present invention relates to a cosmetic composition and method for making up and/or enhancing the appearance of a keratinous substrate, comprising at least one supramolecular polymer, at least one detackifying ingredient which is a hyperbranched functional polymer, at least one fatty phase ingredient(s), at least one light silicone fluid other than the fatty phase ingredient(s), and at least one copolymer containing a silicone resin segment and a fluid silicone segment. The compositions of the present invention may optionally contain at least one functional filler, at least one wax and at least one colorant (see abstract).
3. Rattina et al.
Rattina et al. teach film-forming composition based on pullulan, and its uses in cosmetic compositions for make-up and/or care of keratin materials, skin and lips (see title). Additionally, Rattina et al. disclose that the invention relates to a film-forming composition comprising: (i) a trialkylsiloxysilylcarbamoyl pullulan compound, (ii) an acrylate/polytrimethylsiloxymethacrylate and/or acrylate/polydimethylsiloxane copolymer, (iii) a polysilsesquioxane resin, and (iv) a volatile solvent. The invention also aims at the use of such a composition for makeup and/or the care of keratinous materials, skin and lips, and more particularly in semi-permanent mascaras, foundations and lipsticks (see abstract).
4. Bradshaw et al.
Bradshaw et al. teach comfortable, long-wearing, transfer-resistant colored cosmetic compositions having a non-tacky feel (see title). Additionally, Bradshaw et al. disclose that the present invention is directed to an anhydrous composition which is long wearing and transfer resistant, while at the same time providing superior comfort, non-tacky feel and cushioning, the composition containing: (a) at least one silsesquioxane resin; (b) at least one polypropylsilsesquioxane wax substituted with alkyl units having at least 30 carbons; (c) at least one siloxysilicate resin; (d) at least one volatile solvent; and (e) at least one colorant (see abstract).
Combination of Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al.
Regarding instant claim 1, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach a cosmetic composition. The necessary citations of Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. that pertain to instant claim 1 are presented in Table I.
Table I
Instant Claim 1
Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. Citations
A composition comprising (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment, (B) at least one hydrophobically-modified pullulan compound, and (C) at least one T-modified silicone resin.
Ebanks et al. disclose compositions [element (C)] including at least one silicone resin comprising at least one T unit and at least one silicone elastomer resin, as well as methods of making such compositions and methods of applying such compositions to keratinous material are provided (see abstract and claims within Ebanks et al.).
Tong et al. relates to lip make-up compositions based on a silicone (A) according to the present claim (see claim 1; also see paragraphs [0225-0240] within Tong et al.). According to Tong et al., the silicones (A) make it possible to improve the cosmetic properties of comfort, transfer resistance and staying power of the compositions containing them when applied to the lips (see paragraphs [0002-0005]; also see Examples within Tong et al.).
Rattina et al. describes lip make-up compositions based on trialkylsiloxysilylcarbamoyl pullulane (B) (hydrophobically-modified pullulan compound; see claims 1, 19, and 22-24 within Rattina et al.). The deposits obtained with these compositions have good hold and resist transfer and are comfortable; the compositions are stable (see page 10, paragraph 3 within Rattina et al.).
Additionally, Bradshaw et al. disclose [element (C)] comfortable, long-wearing, transfer-resistant colored cosmetic compositions having a non-tacky feel (see title). Further, Bradshaw et al. disclose that the present invention is directed to an anhydrous composition which is long wearing and transfer resistant, while at the same time providing superior comfort, non-tacky feel and cushioning, the composition containing: (a) at least one silsesquioxane resin; (b) at least one polypropylsilsesquioxane wax substituted with alkyl units having at least 30 carbons; (c) at least one siloxysilicate resin; (d) at least one volatile solvent; and (e) at least one colorant (see abstract and claims within Bradshaw et al.).
A wide variety of products fall within the terms (A) and (C) of instant claim 1. In element A, the silicone resin may be any silicone resin, for example a T resin or a derivative (see paragraphs [0041-0045] within Ebanks et al.; also see PTO-892 NPL U), whereas the silicone fluid segment may comprise a wide range of substituents (see paragraphs [0230-0240] within Tong et al.). Thus, the effect observed in the instant application cannot be extrapolated to the entire field claimed, i.e. with any copolymer (A) and any T-modified silicone resin (C).
Due to this blending of elements A and C, the Examiner views the present invention as combining elements A / C with element B.
Furthermore, Rattina et al. disclose that the inventors unexpectedly discovered that the combination of a trialkylsiloxysilylcarbamoyl
pullulan compound with an acrylate/polytrimethylsiloxymethacrylate and/or acrylate/polydimethylsiloxane copolymer and a polysilsesquioxane resin leads to a synergistic
effect, enabling the formulation of film-forming compositions that leave a supple, light, soft,
non-greasy and non-sticky feeling, while exhibiting significantly improved adhesion, and
therefore resistance to water, sebum and perspiration, as well as to friction, superior to that
of prior art compositions (see page 3, paragraph 2 within Rattina et al.).
Therefore, suggesting the combination of elements A / C with pullulan element B.
Therefore, a skilled artisan (POSITA) would consult the disclosures of Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. to teach all the elements of instant claim 1.
The remainder of the instant claims which are either directly or indirectly dependent on claim 1 are taught in full by the combination of Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al.
Regarding instant claims 2 and 12, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment and the (C) at least one T-modified silicone resin are present in a ratio by weight, A:C, that is at least 1:1. Ebanks et al. disclose silicone resins that comprise T-modified silicone resins (C; see paragraph [0045] within Ebanks et al.). Tong et al. disclose silicone resins which form a copolymer with a fluid silicone segment (A; see paragraphs [0225-0240] within Tong et al.). In addition, using the disclosed allowable weight percentages of each copolymer, the ratio of A:C of at least 1:1, can be obtained (see paragraphs [0237] and [0240] within Tong et al.; also see paragraph [0058] within Ebanks et al.).
Regarding instant claims 3 and 13, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment, the (B) at least one hydrophobically-modified pullulan compound, and the (C) at least one T-modified silicone resin are present in a ratio by weight, (A+C):B, that is greater than 1.5:1. Instant claim 2 and 12 establishes that of at least a 1:1 ratio of A:C can be met. Rattina et al. disclose the use of hydrophobically-modified pullulan compound [see page 3, paragraph 2 (Description of the Invention) within Rattina et al.]. A skilled artisan (POSITA) would combine the three polymeric elements under routine experimental conditions at a ratio of greater than 1.5:1 for (A+C):B. For example, a hypothetical ratio would combine the following for (A+C):B; (0.75+0.75):1. This ratio is not unique or unusual enough that would not allow a skilled artisan (POSITA) to obtain this result.
Regarding instant claims 4 and 14, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment, (B) at least one hydrophobically-modified pullulan compound, and (C) at least one T-modified silicone resin collectively represent a majority fraction of a film-forming component of the composition. Elements A, B, and C are the active cosmetic ingredients. A skilled artisan (POSITA) using the prior art of record would collectively have elements A, B, and C representing the majority fraction of a film-forming component of the composition.
Regarding instant claims 5 and 15, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the composition is anhydrous. Ebanks et al. disclose wherein the composition is anhydrous (see claim 2 within Ebanks et al.).
Regarding instant claims 6 and 16, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the composition is liquid. Ebanks et al. disclose wherein the composition is liquid (see paragraph [0026] within Ebanks et al.).
Regarding instant claims 7 and 17, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the composition further comprises at least one coloring agent. Ebanks et al. disclose wherein the composition further comprises at least one coloring agent (see claim 4 within Ebanks et al.).
Regarding instant claims 8 and 18, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the composition further comprises at least one volatile oil. Ebanks et al. disclose wherein the composition further comprises at least one volatile oil (see Example 1 within Ebanks et al.).
Regarding instant claims 9 and 19, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the composition further comprises from about 10% to about 60% by weight of at least one volatile oil and wherein the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment, the (B) at least one hydrophobically-modified pullulan compound, and the (C) at least one T-modified silicone resin are present in a total percent by weight from about 2% to about 20%, wherein all percentages are of the total composition. Ebanks et al. disclose wherein the composition further comprises from about 15% to about 50% by weight of at least one volatile oil (see Example 1 within Ebanks et al.) and wherein the polymeric components comprise from about 0.2 to about 20% (see paragraphs [0058] and [0080] within Ebanks et al.). [As defined within instant claim 1, the combination of Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. disclose all elements of the instant application.]
Regarding instant claims 10 and 20, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach wherein the (A) at least one copolymer containing a silicone resin segment and at least one fluid silicone segment, the (B) at least one hydrophobically-modified pullulan compound, and the (C) at least one T-modified silicone resin are present in a ratio by weight, (A+C):B, that is at least about 2:1. Please see the citations and discussion within instant claims 3 and 13 for the necessary rejection text. A skilled artisan (POSITA) would be able to meet the instant claims 10 and 20 limitation under routine experimental conditions.
Regarding instant claim 11, Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. teach a method of making up lips comprising applying the composition of instant claim 1 to lips in an amount sufficient to makeup the lips. Ebanks et al. disclose a method of applying the polymeric composition to keratinous materials, such as the lips (see abstract and paragraph [0018] within Ebanks et al.). Also, please see the citations and discussion within instant claim 1 for the necessary rejection text.
Analogous Art
The Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. references are directed to the same field of endeavor as the instant claims, that is, the cosmetic composition as disclosed within instant claim 1.
Obviousness Analysis
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the long-wear polymeric composition disclosed by Ebanks et al., using the teachings of Tong et al., Rattina et al., and Bradshaw et al. in order to arrive at the subject matter of the instant claims.
The Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. references all have considerable overlap for a polymeric cosmetic composition. However, a wide variety of products fall within the terms (A) and (C) of instant claim 1. In element A, the silicone resin may be any silicone resin, for example a T resin or derivative (see paragraphs [0041-0045] within Ebanks et al.; also see PTO-892 NPL V), whereas the silicone fluid segment may comprise a wide range of substituents (see paragraphs [0230-0240] within Tong et al.). Thus, the effect observed in the instant application cannot be extrapolated to the entire field claimed, i.e. with any copolymer (A) and any T-modified silicone resin (C). Due to this blending of elements A and C, the Examiner views the present invention as combining elements A and/or C with element B. Furthermore, Rattina et al. disclose that the Inventors unexpectedly discovered that the combination of a trialkylsiloxysilyl- carbamoyl pullulan compound with an acrylate/polytrimethylsiloxymethacrylate and/or acrylate/polydimethylsiloxane copolymer and a polysilsesquioxane resin leads to a synergistic effect, enabling the formulation of film-forming compositions that leave a supple, light, soft, non-greasy and non-sticky feeling, while exhibiting significantly improved adhesion, and therefore resistance to water, sebum and perspiration, as well as to friction, superior to that of prior art compositions (see page 3, paragraph 2 within Rattina et al.). Therefore, suggesting the combination of elements A and/or C with pullulan element B.
In this instance, Ebanks et al., Tong et al., and Bradshaw et al. supply the use of elements A and C, while Rattina et al. supplies the use of element B. All references are directed to polymeric cosmetic compositions and therefore constitute analogous art under MPEP §2141.01(a). A POSITA would have reasonably consulted the four references when seeking to develop a multi-polymeric cosmetic composition.
Starting with Ebanks et al., the skilled person only had to try the necessary claim limitations disclosed by Tong et al., Rattina et al., and Bradshaw et al. The combination of Ebanks et al., Tong et al., Rattina et al., and Bradshaw et al. would allow one to arrive at the present application without employing inventive skill. This combination of the polymeric cosmetic composition taught by Ebanks et al. along with the use of the necessary claim limitations taught by Tong et al., Rattina et al., and Bradshaw et al. would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the polymeric cosmetic composition disclosed by Ebanks et al. with the use of the necessary claim limitations taught by Tong et al., Rattina et al., and Bradshaw et al. Incorporating the disclosure of Ebanks et al. into the alternative polymeric cosmetic compositions taught by Tong et al., Rattina et al., and Bradshaw et al. represents a predictable use of prior art elements according to their established functions, consistent with MPEP §2143 and KSR.
Furthermore, the additional claim limitations taught by Tong et al., Rattina et al., and Bradshaw et al. would have been viewed by a POSITA as routine design optimizations or known modifications for a polymeric cosmetic composition. Implementing these features in Ebanks et al.’s polymeric cosmetic composition would not require more than ordinary skill or routine experimentation.
Accordingly, the combination of Ebanks et al., supplemented by Tong et al., Rattina et al., and Bradshaw et al. provides all the elements of the claimed invention. The resulting multi-polymeric composition constitutes no more than the predictable outcome of combining familiar prior art components, and therefore the claimed subject matter would have been obvious to a POSITA prior to the effective filing date of the invention.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-2, 5-9, 11-12, and 15-19 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1-20 of co-pending Application No. 18/618,199 (reference application) in view of Rattina et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘199 encompass multi-polymeric cosmetic compositions.
The difference between the instant claims and that of Application ‘199 is the presence of a hydrophobically-modified pullulan compound.
However, Rattina et al. teach film-forming composition based on pullulan, and its uses in cosmetic compositions for make-up and/or care of keratin materials, skin and lips (see title). Additionally, Rattina et al. disclose that the invention relates to a film-forming composition comprising: (i) a trialkylsiloxysilylcarbamoyl pullulan compound, (ii) an acrylate/polytrimethylsiloxymethacrylate and/or acrylate/polydimethylsiloxane copolymer, (iii) a polysilsesquioxane resin, and (iv) a volatile solvent. The invention also aims at the use of such a composition for makeup and/or the care of keratinous materials, skin and lips, and more particularly in semi-permanent mascaras, foundations and lipsticks (see abstract).
It would have been prima facie obvious to incorporate a hydrophobically-modified pullulan compound with application ‘199 as an additional polymer as suggested by Rattina et al. There would have been a reasonable expectation of success in doing so as both Rattina et al. and Application ‘199 are to multi-polymeric cosmetic compositions.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 5-9, 11-12, and 15-19 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1-20 of co-pending Application No. 18/618,229 (reference application) in view of Ebanks et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘229 encompass multi-polymeric cosmetic compositions.
The difference between the instant claims and that of Application ‘229 is the presence of a T-modified silicone resin.
However, Ebanks et al. is considered the closest prior art to the present invention as it teaches long-wear compositions containing silicone resin and silicone elastomer resin (see title). In addition, Ebanks et al. disclose compositions including at least one silicone resin comprising at least one T unit and at least one silicone elastomer resin, as well as methods of making such compositions and methods of applying such compositions to keratinous material are provided (see abstract).
It would have been prima facie obvious to incorporate a T-modified silicone resin with application ‘229 as an additional polymer as suggested by Ebanks et al. There would have been a reasonable expectation of success in doing so as both Ebanks et al. and Application ‘229 are to multi-polymeric cosmetic compositions.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615