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 .
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 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.
DETAILED ACTION
Claims 1-19 are pending in this application. This application is a division of 17/732,697, filled on 04/29/2022.
Claim Objection
Claim 1 is objected in the recitation the acronyms “HLB”. Use of the full terminology at the first occurrence would obviate this objection.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claim 19 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of "substantially free of oils" in claim 1 and the recitation of “optionally an oil" in claim 19 render claim 19 indefinite. It is confusing to one of ordinary skill whether the primer is substantially free of oils as recited in claim 1 or not as recited in claim 19.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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.
Claims 1-4, 6-8, 11, and 14-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Masuda et al. (US 2015/0056152 A1).
Masuda et al. teach an eyebrow color or foundation (implies the claimed applying an eyebrow primer to an eyebrow and applying an eyebrow makeup composition over the eyebrow primer in the instant claim 1) (paragraph 24 and claim 9) comprising
0.1 to 30% by weight (calculated as solids and based on the composition) of an emulsion (paragraph 24),
8-80% by weight of inorganic powder including talc (the claimed transparent filler in the instant claims 1-4 and 19);
wherein the emulsion comprises
polymerization product of a triorganosiloxysilicic acid and an ethylenically unsaturated monomer including t-butyl acrylamide (the claimed polyacrylamide thickener in the instant claims 1 and 19),
in the presence of 0.1-20% by weight of at least one emulsion stabilizer such as nonionic surfactant including polyoxyethylene hardened castor oil (HLB of about 8.6-16, the claimed high HLB surfactant, HLB ≥9, in the instant claims 1, 17, and 18 according to the instant specification paragraph 28) and sorbitol fatty acid esters (HLB of about 1.6-8.6, the claimed additional not high HLB surfactant in the instant claims 14 and 15 according to the instant specification paragraph 76), and polyvinyl alcohol (the claimed water-soluble polymer in the instant claims 8 and 10 and the claimed polyhydric alcohol in the instant claim 11) (abstract and paragraph 14, 20-23, and 32 and claim 8), and
water (paragraph 40) (the claimed polyacrylamide thickener in the instant claims 1, 6, and 7 and also the claimed water-dispersed latex polymer in the instant claims 1 and 19).
Masuda et al. do not teach oil as a must have component (the instant claim 1).
Masuda et al. do not teach clay and pigment as must have components (the instant claim 16).
The weight percentage of surfactant is calculated to be 0.0001-6% by weight (0.-1%x0.1%=0.0001%, 20%x30%=6%).
Masuda et al. do not specify the same weight percentages of talc (5-80% vs the claimed 5-10% in the instant claim 4), surfactant 0.0001-6% vs the claimed ≥2%, ≥4%, and ≥6% in the instant claims 1, 17, and 18 and 1-3% in the instant claim 15), polyacrylamide thickener/latex polymer (0.1 to 30% vs the claimed ≥0.5% and ≥2% in the instant claims 6 and 7).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside/overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of talc is 5-10% by weight and the range of talc taught in the prior art is 5-80% by weight and therefor, includes the claimed range.
The claimed ranges of surfactant are ≥2%, ≥4%, ≥6%, and 1-3% by weight and the range of surfactant taught in the prior art is 0.0001-6% by weight and therefor, includes/overlaps with the claimed range.
The claimed range of polyacrylamide thickener/latex polymer is ≥0.5% and ≥2% by weight and the range of polyacrylamide thickener/latex polymer taught in the prior art is 0.1 to 30% by weight and therefor, overlaps with the claimed range.
Claims1-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Masuda et al. (US 2015/0056152 A1) in view of Den-Braven et al. (US 2010/0105638 A1).
The teachings of Masuda et al. are discussed above and applied in the same manner. Masuda et al. also tech the non-ionic surfactants including polyoxyalkylene alkyl ethers (paragraph 34) and 0-10% by weight of polymers and common cosmetic ingredients (paragraph 52).
Masuda et al. do not specify the polyoxyalkylene alkyl ethers non-ionic surfactants including ceteareth-25 in the instant claim 5, the polymers including polyvinylpyrrolidone (PVP) in the instant claim 9 and the same weight percentage of it in the instant claim 10, and the common cosmetic ingredients including glycerin and a plurality of glycols in the instant claims 12 and 13.
This deficiency is cured by Den-Braven et al. who teach cosmetic compositions (abstract) comprising surface active ingredients including ceteareth-25 (a polyoxyalkylene alkyl ether) (paragraph 35), usual cosmetic additives such as propylene glycol, glycerin, and ethylene glycol (paragraph 50), and cosmetically and dermatologically acceptable polymers including PVP (paragraph 55, 57, and 58) and the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Masuda et al. and Den-Braven et al. to specify the polyoxyalkylene alkyl ethers non-ionic surfactants, the 0-10% by weight of polymers, and the common cosmetic ingredients in the composition taught by Masuda et al. including ceteareth-25, including PVP, and including propylene glycol, glycerin, and ethylene glycol, respectively. Cosmetic compositions comprising ceteareth-25 as a surface-active ingredient, propylene glycol, glycerin, and ethylene glycol as usual cosmetic additives, and PVP as a cosmetically and dermatologically acceptable polymer was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying them flows from its having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
The claimed range of water-soluble polymer is 7-13% by weight and the range of polymer taught in the prior art is 0-10% by weight and therefor, overlaps with the claimed range.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614