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 .
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 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.
Claim 1, 2, 5, 6, 7, 9, 10, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Norman (US 20150265507) in view of Patel (US 8,992,899) and Lange (US 20080193404).
Norman teaches an oil in water anionic emulsion for eyelashes comprising (a) a continuous phase comprising 35 to 55% by weight of water based on the total weight of the emulsion; (b) a discontinuous phase comprising 15 to 25% by weight of a combination of waxes, wherein the combination of waxes comprises paraffin wax, carnauba wax, beeswax, and candelilla wax based on the total weight of the emulsion; and (c) 5 to 15% by weight of the emulsion of an anionic surfactant system comprising stearic acid, palmitic acid, myristic acid, polyethylene glycol-40 (PEG-40) stearate, and stearyl stearate, wherein the oil-in-water anionic emulsion is capable of thickening the appearance of eyelashes (Claim 1). Additional agents include 0.1 to 2% by weight VP/eicosane copolymer, 0.1 to 2% by weight silica, 5 to 15% by weight iron oxide, tocopherol acetate and panthenol are suitable for the anionic emulsion, capryryl glycol, hydroxyethylcellulose, disodium EDTA, benzyl alcohol (¶ 7). Mascara products are applied to eye lash hairs using a mascara wand from a container (¶ 8).
Norman does not teach polyethylene as part of the wax system, nor the film forming polymers. Norman also does not teach the various excipients of the dependent claims.
Patel teaches waxes suitable for mascaras include polyethylene waxes (claim 8). Common excipients include benzyl alcohol (¶ 54), isododecane (¶ 31), and non-volatile silicone oils for example, non-volatile polydimethylsiloxanes (¶ 65).
Lange teaches the use of triacontany and polyvinylpyrrolidone as components for mascara formulations (¶¶ 147, 154, 155, 156, 159, 208). Known excipients include trisiloxane (¶ 200), disteardimonium hectorite (¶ 523), aminomethylpropanol (¶ 590), and propylene carbonate (¶ 525).
It would have been obvious to one of ordinary skill in the art to vary waxes used in the mascara based on waxes known in the art to be suitable for mascara products.
Further, it would have been obvious to add additional excipients to the mascara of the primary reference, such as those taught by the other references, where they are added to provide known cosmetic properties.
Note, it appears the claims are directed to well known components of mascara products which are used for their known uses. Absent a showing of unexpected results, their inclusion is obvious as their use is well known in the art.
It would have been obvious to vary the amount of each component, given they are disclosed for specific functions, i.e. providing a wax component, etc, and varying the amount will result in varying the properties of the resulting mascara product, such as adherence to the lash and stability after application. While the primary reference specifically teaches 15% as the lower end, it is reasonably expected that varying the waxes used will vary the amount needed in the end product. As such, it would be obvious to reduce the amount when various combination of wax materials are used to produce the desired cosmetic properties.
Finally, where the composition made obvious is a mascara product, it would have been obvious to apply the composition to the eyelash using a mascara wand, given that is the basic functional and application for mascara products as taught by Norman.
Claim 3, 4, 8, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Norman (US 20150265507), Patel (US 8,992,899) and Lange (US 20080193404), in view of Feng (US 20070212316).
Norman, Patel and Lange are discussed above but do not teach the inclusion of acrylates/ethylhexyl acrylate copolymer or polyvinylpyrrolidone.
Feng teaches wax based mascara compositions can include acrylates/ethylhexyl acrylate copolymers (claims 8 and 16). Further teaches mascaras commonly have film forming polymers, such as polyvinylpyrrolidones, cellulose, and quaternized polymers, such as polyquaternium bentonites (¶ 17). Common mascara excipients include glycerol stearate (¶ 6), propanediol and potassium salts (¶ 16), phetnoxyethanol (¶ 32).
It would have been obvious to add additional agents to the wax system based on what is well known in the cosmetic field, such as taught by Feng.
Claim 12, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Norman (US 20150265507), Patel (US 8,992,899) and Lange (US 20080193404), in view of Schlossman (US 20090257966).
Norman, Patel and Lange are discussed above but do not teach the inclusion of hydrogenated cyclopentadiene.
Schlossman teaches hydrogenated cyclopentadienes were known polymers for wax compositions used as mascara (¶¶ 10 and 28). Thermoplastics, such as polyimide may be used (¶ 20). Colorants include isopropyl titanium triisostearate (¶ 103). Xantham gum is used as a stabilizer (¶ 116).
It would have been obvious to add additional agents to the wax system based on what is well known in the cosmetic field, such as taught by Schlossman.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Norman (US 20150265507), Patel (US 8,992,899) and Lange (US 20080193404), in view of Gupta (US 20060110415).
Norman, Patel and Lange are discussed above but do not teach the inclusion of triethyl citrate, ethylhexylglycerin, hexylene glycol, or salicylic acid.
Gupta teaches cosmetics, such as mascaras (¶ 80), can include triethyl citrate (¶ 27), ethylhexylglycerin (¶ 113), hexylene glycol (¶ 33), and salicylic acid (¶ 32).
It would have been obvious to add additional agents to the wax system based on what is well known in the cosmetic field, such as taught by Gupta.
Claim 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Norman (US 20150265507) in view of Patel (US 8,992,899), Lange (US 20080193404), Feng (US 20070212316), Schlossman (US 20090257966), and Gupta (US 20060110415).
The references are discussed above and provide motivation for obviousness. As the references are relied upon for specific claim limitations, they can also be relied on in combination here to show the cosmetic field of mascara development is well known and have many well-known excipients and additional ingredients which may be included. The skilled artisan would find it obvious to vary any and all these well-known excipients to produce mascara products with varying properties. As such, absent a showing of unique and unexpected results, the combinations disclosed in the prior art appear to all be obvious variants.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,857,079 in view of Patel (US 8,992,899), Lange (US 20080193404), Feng (US 20070212316), Schlossman (US 20090257966), and Gupta (US 20060110415). Patent ‘079 corresponds to US 20150265507, discussed above, and the claims are obvious for the reasons recited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri (9am-6pm + mid-day flex).
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612