DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-20 are pending.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
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 Record Mintel ID 6834761 (Camouflage Ultra Wear High Coverage Concealer by L’Oréal, published Sep 2019) in view of Yamaguchi (US 2023/0233423 A1).
Regarding instant claims 1-3, 5-6, 8-10, 14 and 16-20, Record Mintel ID 6834761 teaches a cosmetic concealer comprising (a) polyglyceryl-6 octastearate and glyceryl behenate, (b) hydrogenated polyisobutene (hydrogenated), (c) sorbitan sesquiisostearate and sorbitan sesquioleate, (d) silica silylate, and (e) titanium dioxide (CI 77891), CI 77492, CI 77491 and CI 77499 (black 11). The composition further comprises stearalkonium hectorite, microcrystalline wax, water, propylene glycol, etc. (Ingredients).
Record Mintel ID 6834761 does not explicitly disclose one or more esters formed from at least one fatty acid having more than 13 carbon atoms and at least one monoalcohol, as instantly claimed.
Yamaguchi teaches water-in-oil type emulsion cosmetics comprising a spherical powder, an oily component, a lipophilic surfactant, and a pigment ([0044]-[0050]). The water-in-oil type emulsion cosmetic comprises 5-60 mass %, preferably 10-40 mass %, of an oily component, such as fatty acid esters such as isopropyl myristate, isopropyl palmitate, cetyl 2-ethylhexanoate, (phytosteryl/isostearyl/cetyl/stearyl/behenyl) dimer dilinoleate, isopropyl N-lauroylsarcosinate, di(cholesteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(cholesteryl/behenyl/2-octyldodecyl) N-lauroyl-L-glutamate, caprylic/capric triglyceride, di(phytosteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(phytosteryl/2-octyldodecyl/behenyl) N-lauroyl-L-glutamate, glyceryl tristearate, glyceryl tribehenate, and the like ([0051]-[0058]; Tables 1, 3, 5 and 6).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare water-in-oil emulsion cosmetic compositions according to Record Mintel ID 6834761 wherein the fatty acid esters are replaced with or further comprise isopropyl myristate and/or isopropyl palmitate. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute isopropyl myristate or isopropyl palmitate as functionally equivalent to polyglyceryl-6-octastearate, caprylic/capric triglyceride and glyceryl behenate as taught by Yamaguchi. The Supreme Court in KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. One such rationale includes the simple substitution of one known element for another to obtain predictable results. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. See MPEP 2143.
Regarding claims 4, 7, 12-13 and 15, Record Mintel ID 6834761 does not explicitly disclose the concentration of the components, as instantly claimed.
However, Yamaguchi teaches water-in-oil type emulsion cosmetics comprising a spherical powder, an oily component, a lipophilic surfactant, and a pigment. The water-in-oil type emulsion cosmetic comprises 0.1-5 mass %, preferably 0.5-3 mass%, of a spherical powder ([0044]-[0050]). The water-in-oil type emulsion cosmetic comprises 5-60 mass %, preferably 10-40 mass %, of an oily component, such as fatty acid esters such as isopropyl myristate, isopropyl palmitate, cetyl 2-ethylhexanoate, (phytosteryl/isostearyl/cetyl/stearyl/behenyl) dimer dilinoleate, isopropyl N-lauroylsarcosinate, di(cholesteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(cholesteryl/behenyl/2-octyldodecyl) N-lauroyl-L-glutamate, caprylic/capric triglyceride, di(phytosteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(phytosteryl/2-octyldodecyl/behenyl) N-lauroyl-L-glutamate, glyceryl tristearate, glyceryl tribehenate, and the like; as well as liquid paraffin ([0051]-[0058]; Tables 1, 3, 5 and 6). The water-in-oil type emulsion cosmetic comprises 0.1-10 mass %, preferably 1-7 mass %, especially 4 mass %, of a lipophilic surfactant, such as sorbitan fatty acid esters such as sorbitan monolaurate, sorbitan monopalmitate, sorbitan monostearate, sorbitan monoisostearate, sorbitan monooleate, sorbitan sesquistearate, sorbitan sesquiisostearate, sorbitan sesquioleate, sorbitan tristearate, sorbitan trioleate, and the like ([0059]-[0063]; Tables 1, 3, 5 and 6).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the cosmetic concealer composition according to Record Mintel ID 6834761 wherein the concentrations of components are optimized within the ranges taught by Yamaguchi. Such would have been obvious because Record Mintel ID 6834761 and Yamaguchi both teach a cosmetic concealer/makeup product comprising the same components providing the same benefit. A person of ordinary skill in the art would have been motivated to include conventional and workable amounts of the components in the compositions according to Record Mintel ID 6834761.
Regarding claim 11, Record Mintel ID 6834761 does not explicitly disclose sorbitan palmitate, sorbitan isostearate, sorbitan trioleate or mixtures thereof, as instantly claimed.
Yamaguchi teaches that the lipophilic surfactant that functions as a water-in-oil type emulsifier includes sorbitan sesquiisostearate, sorbitan sesquioleate, sorbitan monopalmitate, sorbitan monoisostearate, and sorbitan trioleate ([0059]).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include sorbitan palmitate, sorbitan isostearate, sorbitan trioleate or mixtures thereof in the composition of Record Mintel ID 6834761 as effective water-in-oil type emulsifiers, or to replace the sorbitan sesquiisostearate and sorbitan sesquioleate of Record Mintel ID 6834761 with sorbitan palmitate, sorbitan isostearate, sorbitan trioleate or mixtures thereof as functionally equivalent water-in-oil type emulsifiers, as reasonably taught by Yamaguchi.
Response to Arguments
Applicant's arguments filed 20 July 2026 have been fully considered but they are not persuasive. Applicant argues that because the two primary references reflect commercial products which were presumably optimized for commercial use and specific consumer benefits, no motivation would have existed to modify these products in any way, let alone in the specific ways which would yield the claimed compositions. Any such modifications would risk the optimization which had occurred when developing the commercial products and, as such, would not be attempted. And, secondary reference Yamaguchi would not motivate one of ordinary skill in the art to modify the optimized formulations in Camouflage Concealer and Concealer II in a manner yielding the claimed compositions. Yamaguchi merely motivates the use of spherical powders in compositions containing polyaspartate.
The examiner respectfully argues that according to MPEP 2143, examples of rationales that may support a conclusion of obviousness includes; (B) simple substitution of one known element for another to obtain predictable results. Record Mintel ID 6834761 and Yamaguchi both teach cosmetic composition comprising water-in-oil emulsions, wherein the compositions comprise fatty acid esters. Yamaguchi teaches that suitable fatty acid esters include isopropyl myristate and isopropyl palmitate. Therefore, a person of ordinary skill in the art would have a reasonable expectation that substituting the fatty acid esters of Record Mintel ID 6834761 with isopropyl myristate and isopropyl palmitate according to Yamaguchi would result in a water-in-oil emulsion cosmetic composition.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Record Mintel ID 10743238 (Concealer by L’Oréal, published April 2023) in view of Yamaguchi (US 2023/0233423 A1).
Regarding instant claims 1, 5-6, 8-11, 14 and 16-20, Record Mintel ID 10743238 teaches a cosmetic concealer comprising (a) coco-caprylate/caprate and polyglyceryl-6 polyricinoleate (b) hydrogenated polyisobutene (hydrogenated), (c) sorbitan isostearate, (d) silica silylate, and (e) titanium dioxide (CI 77891), CI 77491, CI 77492 and CI 77499 (black 11). The composition further comprises disteardimonium hectorite, microcrystalline wax, water, propylene glycol, glycerin, etc. (Ingredients).
Record Mintel ID 10743238 does not explicitly disclose one or more esters formed from at least one fatty acid having more than 13 carbon atoms and at least one monoalcohol, as instantly claimed.
Yamaguchi teaches water-in-oil type emulsion cosmetics comprising a spherical powder, an oily component, a lipophilic surfactant, and a pigment ([0044]-[0050]). The water-in-oil type emulsion cosmetic comprises 5-60 mass %, preferably 10-40 mass %, of an oily component, such as fatty acid esters such as isopropyl myristate, isopropyl palmitate, cetyl 2-ethylhexanoate, (phytosteryl/isostearyl/cetyl/stearyl/behenyl) dimer dilinoleate, isopropyl N-lauroylsarcosinate, di(cholesteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(cholesteryl/behenyl/2-octyldodecyl) N-lauroyl-L-glutamate, caprylic/capric triglyceride, di(phytosteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(phytosteryl/2-octyldodecyl/behenyl) N-lauroyl-L-glutamate, glyceryl tristearate, glyceryl tribehenate, and the like ([0051]-[0058]; Tables 1, 3, 5 and 6).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare water-in-oil emulsion cosmetic compositions according to Record Mintel ID 10743238 wherein the fatty acid esters are replaced with or further comprise isopropyl myristate and/or isopropyl palmitate. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute isopropyl myristate or isopropyl palmitate as functionally equivalent to coco-caprylate/caprate and polyglyceryl-6-polyricinoleate as taught by Yamaguchi. The Supreme Court in KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. One such rationale includes the simple substitution of one known element for another to obtain predictable results. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. See MPEP 2143.
Regarding claims 4, 7, 12-13 and 15, Record Mintel ID 10743238 does not explicitly disclose the concentration of the components, as instantly claimed.
However, Yamaguchi teaches water-in-oil type emulsion cosmetics comprising a spherical powder, an oily component, a lipophilic surfactant, and a pigment. The water-in-oil type emulsion cosmetic comprises 0.1-5 mass %, preferably 0.5-3 mass%, of a spherical powder ([0044]-[0050]). The water-in-oil type emulsion cosmetic comprises 5-60 mass %, preferably 10-40 mass %, of an oily component, such as fatty acid esters such as isopropyl myristate, isopropyl palmitate, cetyl 2-ethylhexanoate, (phytosteryl/isostearyl/cetyl/stearyl/behenyl) dimer dilinoleate, isopropyl N-lauroylsarcosinate, di(cholesteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(cholesteryl/behenyl/2-octyldodecyl) N-lauroyl-L-glutamate, caprylic/capric triglyceride, di(phytosteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(phytosteryl/2-octyldodecyl/behenyl) N-lauroyl-L-glutamate, glyceryl tristearate, glyceryl tribehenate, and the like; as well as liquid paraffin ([0051]-[0058]; Tables 1, 3, 5 and 6). The water-in-oil type emulsion cosmetic comprises 0.1-10 mass %, preferably 1-7 mass %, especially 4 mass %, of a lipophilic surfactant, such as sorbitan fatty acid esters such as sorbitan monolaurate, sorbitan monopalmitate, sorbitan monostearate, sorbitan monoisostearate, sorbitan monooleate, sorbitan sesquistearate, sorbitan sesquiisostearate, sorbitan sesquioleate, sorbitan tristearate, sorbitan trioleate, and the like ([0059]-[0063]; Tables 1, 3, 5 and 6).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the cosmetic concealer composition according to Record Mintel ID 10743238 wherein the concentrations of components are optimized within the ranges taught by Yamaguchi. Such would have been obvious because Record Mintel ID 10743238 and Yamaguchi both teach a cosmetic concealer/makeup product comprising the same components providing the same benefit. A person of ordinary skill in the art would have been motivated to include conventional and workable amounts of the components in the compositions according to Record Mintel ID 10743238.
Regarding claims 2-3, Record Mintel ID 10743238 does not explicitly disclose esters of myristic acid, esters of palmitic acid, esters of stearic acid and mixtures thereof, as instantly claimed.
Yamaguchi teaches that the oily component in the water-in-oil type emulsion cosmetics include esters such as isopropyl myristate, isopropyl palmitate, cetyl 2-ethylhexanoate, (phytosteryl/isostearyl/cetyl/stearyl/behenyl) dimer dilinoleate, isopropyl N-lauroylsarcosinate, di(cholesteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(cholesteryl/behenyl/2-octyldodecyl) N-lauroyl-L-glutamate, caprylic/capric triglyceride, di(phytosteryl/2-octyldodecyl) N-lauroyl-L-glutamate, di(phytosteryl/2-octyldodecyl/behenyl) N-lauroyl-L-glutamate, glyceryl tristearate, glyceryl tribehenate, and the like ([0051]).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include esters of myristic acid, esters of palmitic acid, esters of stearic acid and mixtures thereof in the composition of Record Mintel ID 10743238 as effective oily components in water-in-oil type emulsion cosmetics, or to replace the oily components of Record Mintel ID 10743238 with esters of myristic acid, esters of palmitic acid, esters of stearic acid and mixtures thereof as functionally equivalent oily components in water-in-oil type emulsion cosmetics, as reasonably taught by Yamaguchi.
Response to Arguments
Applicant's arguments filed 20 July 2026 have been fully considered but they are not persuasive. Applicant argues that because the two primary references reflect commercial products which were presumably optimized for commercial use and specific consumer benefits, no motivation would have existed to modify these products in any way, let alone in the specific ways which would yield the claimed compositions. Any such modifications would risk the optimization which had occurred when developing the commercial products and, as such, would not be attempted. And, secondary reference Yamaguchi would not motivate one of ordinary skill in the art to modify the optimized formulations in Camouflage Concealer and Concealer II in a manner yielding the claimed compositions. Yamaguchi merely motivates the use of spherical powders in compositions containing polyaspartate.
The examiner respectfully argues that according to MPEP 2143, examples of rationales that may support a conclusion of obviousness includes; (B) simple substitution of one known element for another to obtain predictable results. Record Mintel ID 10743238 and Yamaguchi both teach cosmetic composition comprising water-in-oil emulsions, wherein the compositions comprise fatty acid esters. Yamaguchi teaches that suitable fatty acid esters include isopropyl myristate and isopropyl palmitate. Therefore, a person of ordinary skill in the art would have a reasonable expectation that substituting the fatty acid esters of Record Mintel ID 10743238 with isopropyl myristate and isopropyl palmitate according to Yamaguchi would result in a water-in-oil emulsion cosmetic composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.W.S/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights