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 .
Status of Application
Claims 1-18 are pending and included in the prosecution.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 07/24/24; 08/02/24; 08/12/25 (2 IDS); and 09/24/25 are acknowledged. The submissions are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statements. Please see the attached copies of PTO-1449.
Claim Objections
Claim 1 is objected to because of the following informalities: In claim 1, part (c), the space between “3” and “%” should be deleted. Appropriate correction is required.
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.
Claims 1-18 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 pre-AIA the applicant regards as the invention.
Claim 1, part (c) recites “… at least about 3% by weight of one or more carbohydrate fatty acid ester emulsifiers …” It is unclear if the percent is relative to the total weight of the composition or relative to another portion of the composition. Also, claim 1 does not recite an upper limit for the concentration. It is unclear if the one or more carbohydrate fatty acid ester emulsifiers can be present in any amount greater than 3% by weight, including up to and greater than 100%, relative to other components or the total composition.
Claims 2-18 depend from claim 1 and do not clarify whether the percent is relative to the total composition or another portion, and also do not set an upper limit for the concentration. Therefore, claims 2-18 are indefinite for the reasons given above.
Claims 4, 8, 10, 12, and 13 recite the phrase “… selected from a group consisting of …” (emphasis added). According to MPEP 2111.03(II), “If the claim element is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof").” Also, MPEP 2117 sets forth Markush language as “… selected from the group consisting of …” Applicant is required to use the proper Markush language using the article “the” instead of “a.”
Claims 6 and 11 recite the limitation "… the cosmetic composition …" (emphasis added). Claims 6 and 11 are dependent on claim 1. However, claim 1 does not recite the term “cosmetic.” There is insufficient antecedent basis for this limitation in the claim.
Notice for all US Patent Applications filed on or after March 16, 2013
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 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 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 of this title, 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 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 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 1-18 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 Herrmann et al. (US 2021/0290707 A1 – “Herrmann”), Xiameter™ PMX-200 Technical Data Sheet (XIAMETER™ PMX-200 Silicone Fluid, 0.65 – 2 cSt, 2017-2019, pp. 1-4), and Yamaguchi (US 2023/0233423 A1).
Instant claim 1 is drawn to a composition in the form of a water-in-oil emulsion, comprising:
one or more dimethicones having a viscosity less than about 3 centistokes;
a polymer component comprising one or more polymerized (iso)butenes;
at least about 3% by weight of one or more carbohydrate fatty acid ester emulsifiers;
one or more fillers comprising hydrophobic silica; and
one or more pigments, wherein the composition is substantially free of alkanes.
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 expressly disclose component (a) one or more dimethicone having a viscosity less than about 3 centistokes or the concentration range of component (c) as recited in instant claim 1.
Hermann teaches water-in-oil emulsions ([0104], [0124]-[0126]). Formulation 19 is a concealer stick (TABLE 13). The dimethicone Xiameter® PMX-200 Silicone Fluid 100 cs is disclosed (TABLE 13).
Xiameter™ PMX-200 Technical Data Sheet discloses that the viscosity of this material is 0.65 – 2 cSt, including 0.65 cSt, 1.0 cSt, 1.5 cSt, and 2.0 cSt (Title, Pages 1 and 2), and that this material provides soft feel and subtle skin lubricity; excellent spreading; leaves no residue or buildup; has transient effect; and nongreasy feel (Page 1).
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 obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic concealer composition comprising polyglyceryl-6 octastearate and glyceryl behenate, hydrogenated polyisobutene (hydrogenated), sorbitan sesquiisostearate and sorbitan sesquioleate, silica silylate, titanium dioxide (CI 77891), CI 77492, CI 77491 and CI 77499 (black 11), stearalkonium hectorite, microcrystalline wax, water, propylene glycol, etc., as taught by Record Mintel ID 6834761, in view of the water-in-oil cosmetic emulsions ([0104], [0124]-[0126]), including a concealer stick and the dimethicone Xiameter® PMX-200 Silicone Fluid, as taught by Herrmann, use Xiameter™ PMX-200 having a viscosity of 0.65 – 2 cS, as taught by Xiameter™ PMX-200 Technical Data Sheet, and the water-in-oil type emulsion cosmetics comprising sorbitan monoisostearate at 4.0%, as taught by Yamaguchi, and produce the instant invention.
One of ordinary skill in the art would have been motivated to combine the teachings of the prior art references because they all teach the preparation of cosmetic compositions. One of ordinary skill in the art would have found it obvious to prepare a water-in-oil emulsion formulation based on the preference taught by Herrmann ([0104]). One of ordinary skill in the art would have found it obvious to use the dimethicone Xiameter™ PMX-200 having a viscosity of 0.65 – 2 cS because Xiameter™ PMX-200 Technical Data Sheet teaches the advantages of using this material, including soft feel and subtle skin lubricity; excellent spreading; no residue or buildup; transient effect; and nongreasy feel (Page 1). One of ordinary skill in the art would have found it obvious to include the conventional and workable amounts of the components of the cosmetic compositions taught by Yamaguchi in the formulations of Record Mintel ID 6834761 and Herrmann. Moreover, according to MPEP 2141(III)(A), it is obvious to combine prior art elements according to known methods to yield predictable results.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding instant claim 1, the limitation of a composition in the form of a water-in-oil emulsion would have been obvious over the water-in-oil emulsions ([0104], [0124]-[0126]), as taught by Hermann.
Regarding instant claim 1, the limitation of component (a) one or more dimethicones having a viscosity less than about 3 centistokes would have been obvious over the dimethicone Xiameter® PMX-200 Silicone Fluid 100 cs (TABLE 13), as taught by Herrmann and the Xiameter™ PMX-200 Technical Data Sheet which discloses that the viscosity of this material is 0.65 – 2 cSt (Title, Pages 1 and 2), and that this material provides soft feel and subtle skin lubricity; excellent spreading; leaves no residue or buildup; has transient effect; and nongreasy feel (Page 1).
Regarding instant claim 1, the limitation of component (b) a polymer component comprising one or more polymerized (iso)butenes would have been obvious over the hydrogenated polyisobutene (hydrogenated) (Ingredients), as taught by Record Mintel ID 6834761.
Regarding instant claim 1, the limitation of component (c) at least about 3% by weight of one or more carbohydrate fatty acid ester emulsifiers would have been obvious over the 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), particularly the sorbitan monoisostearate used at 4.0% in Examples 1-3 (Table 3), as taught by Yamaguchi.
Regarding instant claim 1, the limitation of component (d) one or more fillers comprising hydrophobic silica would have been obvious over the silica silylate (Ingredients), as taught by Record Mintel ID 6834761.
Regarding instant claim 1, the limitation of component (e) one or more pigments would have been obvious over the CI 77499 (black 11 or black iron oxide) (Ingredients), as taught by Record Mintel ID 6834761.
Regarding instant claim 1, the limitation of the composition being substantially free of alkanes would have been obvious over the composition taught by Record Mintel ID 6834761 which does not contain any alkanes.
Regarding instant claims 2-3, the limitations of the one or more dimethicones having a viscosity less than about 3 centistokes present in the composition in an amount ranging from about 8% to about 15% by weight relative to the total weight of the composition would have been obvious over the viscosity of Xiameter™ PMX-200 Silicone Fluid which has a viscosity of 0.65 – 2 cSt, including 0.65 cSt, 1.0 cSt, 1.5 cSt, and 2.0 cSt (Title, Pages 1 and 2), as taught by Xiameter™ PMX-200 Technical Data Sheet, and the auxiliary substances and additives that can be included in quantities of 0.1 to 99 wt.% based on the total weight of the formulation ([0105]), wherein the auxiliary substances include silicone derivatives ([0106]), as taught by Herrmann.
Regarding instant claims 4-6, the limitations of hydrogenated polyisobutene present in the cosmetic composition in an amount ranging from about 8% to about 12% by weight relative to the total weight of the composition would have been obvious over the hydrogenated polyisobutene (hydrogenated) (Ingredients), as taught by Record Mintel ID 6834761, and the auxiliary substances and additives that can be included in quantities of 0.1 to 99 wt.% based on the total weight of the formulation ([0105]), wherein the auxiliary substances include skin-moisturizing substances ([0106]), as taught by Herrmann.
Regarding instant claims 7-11, the limitations of sorbitan isostearate present in the cosmetic composition in an amount ranging from about 8% to about 12% by weight relative to the total weight of the composition would have been obvious over the lipophilic surfactant sorbitan monoisostearate and the use of 0.1-10 mass% of a lipophilic surfactant in the water-in-oil emulsion cosmetic ([0059]-[0063]; Tables 1, 3, 5 and 6), as taught by Yamaguchi.
Regarding instant claim 12, the limitation of hydrophobic silica present in the cosmetic composition in an amount ranging from about 0.1% to about 1% by weight relative to the total weight of the composition would have been obvious over the hydrophobic silica silylate (Ingredients), as taught by Record Mintel ID 6834761, and the auxiliary substances and additives that can be included in quantities of 0.1 to 99 wt.% based on the total weight of the formulation ([0105]), wherein the auxiliary substances include thickeners ([0106]), as taught by Herrmann.
Regarding instant claim 13, the limitation of clay and hydrophobic bentonite would have been obvious over the clay and bentonite ([0066]), as taught by Yamaguchi and the bentonites ([0107]), as taught by Herrmann. One of ordinary skill in the art would have found it obvious to use a hydrophobic bentonite since Yamaguchi teaches the advantage of hydrophobic treatment including water resistance ([0104]), and dispersion on the outer oil phase of the water-in-oil type emulsion cosmetics ([0068]), as taught by Yamaguchi.
Regarding instant claim 14, the limitation of the one or more fillers comprising hydrophobic silica and the polymer component comprising polymerized (iso)butene present in a weight ratio of hydrophobic silica to polymerized (iso)butene that is from about 1:50 to about 1:10 would have been obvious over the hydrophobic silica silylate (Ingredients), as taught by Record Mintel ID 6834761, and the auxiliary substances and additives that can be included in quantities of 0.1 to 99 wt.% based on the total weight of the formulation ([0105]), wherein the auxiliary substances include thickeners ([0106]), as taught by Herrmann and the hydrogenated polyisobutene (hydrogenated) (Ingredients), as taught by Record Mintel ID 6834761, and the auxiliary substances and additives that can be included in quantities of 0.1 to 99 wt.% based on the total weight of the formulation ([0105]), wherein the auxiliary substances include skin-moisturizing substances ([0106]), as taught by Herrmann. One of ordinary skill in the art would have found it obvious to modify the ratio of components (d) : (b) based on the desired attributes of the composition and the recited ratios would have been obvious over the ranges of these components taught by Herrmann unless there is evidence of criticality or unexpected results.
Regarding instant claim 15, the limitation of the one or more pigments would have been obvious over the titanium dioxide (CI 77891), CI 77492, CI 77491 and CI 77499 (black 11) (Ingredients), as taught by Record Mintel ID 6834761.
Regarding instant claim 16, the limitation of one or more waxes would have been obvious over the microcrystalline wax (Ingredients), as taught by Record Mintel ID 6834761, waxes including carnauba wax, beeswax, and microcrystalline wax ([0051]), as taught by Yamaguchi, the waxes ([0106]), beeswax (TABLES 12 and 13) and carnauba wax (TABLE 13), as taught by Herrmann.
Regarding instant claim 17, the limitation of one or more other ingredients would have been obvious over the Salvia officinalis leaf extract, Cucumis sativus extract, and Chamomilla recutita flower extract (Ingredients), as taught by Record Mintel ID 6834761.
Regarding instant claim 18, the limitation of a method for making up the skin would have been obvious over the cosmetic concealer which is applied onto face or eye area that needs coverage (Page 1), as taught by Record Mintel ID 6834761, and the concealer stick Formulation 19 (TABLE 13), as taught by Herrmann.
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 1-18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No.18/651,001 (“the ‘001 Application”) in view of Yamaguchi (US 2023/0233423 A1) and Xiameter™ PMX-200 Technical Data Sheet (XIAMETER™ PMX-200 Silicone Fluid, 0.65 – 2 cSt, 2017-2019, pp. 1-4).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition in the form of a water-in-oil emulsion, comprising components (b) – (e), and therefore, encompass overlapping or coextensive subject matter.
One difference is that component (a) in instant claim 1 is one or more dimethicones having a viscosity less than about 3 centistokes which is not recited in claims of the ‘001 Application.
Another difference is that component (a) in claim 1 of the ‘001 Application is one or more esters formed from at least one fatty acid having more than 13 carbon atoms and at least one monoalcohol, whereas instant claims do not recite this limitation.
The teachings of Yamaguchi and Xiameter™ PMX-200 Technical Data Sheet are discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a composition in the form of a water-in-oil emulsion as recited in the instant claims and include one or more esters formed from at least one fatty acid having more than 13 carbon atoms and at least one monoalcohol, as taught by Yamaguchi and arrive at the claimed invention of the ‘001 Application.
One of ordinary skill in the art would have been motivated to do so because according to MPEP 2141(III)(A), it is obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have found it obvious to include the components such as the esters formed from at least one fatty acid having more than 13 carbon atoms known to be used in cosmetic compositions as taught by Yamaguchi and have a reasonable expectation of success in producing a functional cosmetic product.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a composition in the form of a water-in-oil emulsion as recited in the claims of the ‘001 Application and include one or more dimethicones having a viscosity less than about 3 centistokes, as taught by Xiameter™ PMX-200 Technical Data Sheet and arrive at the instant claims.
One of ordinary skill in the art would have been motivated to do so because Xiameter™ PMX-200 Technical Data Sheet teaches the advantages of using this material, including soft feel and subtle skin lubricity; excellent spreading; no residue or buildup; transient effect; and nongreasy feel (Page 1).
Both sets of claims recite the transitional phrase “comprising” which allows the inclusion of additional components.
Therefore, instant claims are obvious over claims of the ‘001 Application in view of Yamaguchi and Xiameter™ PMX-200 Technical Data Sheet, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
No claims are allowed.
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615
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