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 Status
Claims 1-20 are pending and currently under examination.
Information Disclosure Statement (IDS)
The IDSs (2) were filed on 30 May 2024 and 13 February 2026. The IDS filed on 13 February 2026 has been considered by the examiner. However, the IDS filed on 30 May 2024 listed four foreign patent documents with which no copy was provided to the office, therefore those references were not considered by the examiner.
Therefore, the information disclosure statement filed 30 May 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP states that the purpose of the written description requirement is to ensure that
the inventor had possession, as of the filing date of the application, of the specific subject matter
later claimed. The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the application. These include “level of skill
and knowledge in the art, partial structure, physical and/or chemical properties, functional
characteristics alone or coupled with a known or disclosed correlation between structure and
function, and the method of making the claimed invention.” See MPEP § 2163.02.
The written description requirement for a claimed genus may be satisfied through
sufficient description of a representative number of species by actual reduction to practice,
disclosure of drawings, or by disclosure of relevant identifying characteristics, for example,
structure or other physical and/or chemical properties, by functional characteristics coupled with
a known or disclosed correlation between function and structure, or by a combination of such
identifying characteristics, sufficient to show the Applicants were in possession of the claimed
genus.
The instant claims are drawn to a composition for use as a lip liner and a method of applying color to the lips. The following functional language is used to describe the components of the composition:
Claim 1 –
A solvent that evaporates substantially independently of a user’s skin. Applicant has defined the term ‘substantially independently’ to mean that “as the solvent evaporates it does not damage the user’s skin, and draws little to no moisture out of the skin” ([0040]).
A film-forming agent capable of (1) dissolving in the solvent and (2) forming a film whereby the film is capable of (1) adhering to the user’s skin and (2) peeled off the user’s skin once the solvent has evaporated.
Claim 6 and 19 –
A color-fixing agent capable of dissolving in the solvent. Applicant has defined the term ‘color-fixing agent’ as a component which may enhance the dispersion and penetration of the colorant into the user’s skin ([0043]).
MPEP 2163.03(V) states that adequate written description may be lacking when a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. Further, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are “representative of the full variety or scope of the genus,” or by the establishment of “a reasonable structure-function correlation.” See MPEP 2163(II)(A)(3)(a)(ii).
The disclosure of the instant application fails to provide more than one or two species of the generic and functionally recited components and further fails to provide a structure-function correlation for the claimed components that are a functionally recited genus. In addition, the functions that are recited are not consistent with the disclosed species.
Here, the only identified solvent in the entire specification is water ([0026]). In the preferred embodiment of the invention, the specification indicates the solvent may dissolve all the components of the lip liner to form a homogeneous mixture ([0050]). Furthermore, the only two working examples use water as a solvent at a concentration of 40.4% by weight ([0063] and [0069]). The structure of solvents which yield the recited functionality of evaporation and solubilization is not disclosed as water is the only identified solvent. In addition, the claims recite additional components with the claimed capability of dissolving in the solvent. However, prior art suggests otherwise, thereby further emphasizing the need for disclosure of a wide variety of species. For instance, Dubbs1 teaches α-tocopherol (vitamin E) has very low solubility in pure water (abstract). Furthermore, Yamamoto teaches polyisobutene is a water-insoluble oil ([0003]).2 This is problematic because the structure of solvents that yield the recited functionality of evaporation and solubilization is not exemplified by the disclosure of water as a solvent and no structural features of the solvents that are necessary to perform these functions are described.
Along those same lines, the film-forming agent is claimed with the following functionalities:
Dissolving in the solvent; and
Forming a film whereby the film is capable of (1) adhering to the user’s skin and (2) peeled off the user’s skin once the solvent has evaporated.
The specification only identifies polyvinyl alcohol in the film-forming agent role ([0012], [0025], [0041], [0063], and [0069]) and no structural element of this compound is identified as being responsible for conferring this functionality nor is any configuration discussed beyond simply being combined with other claimed components. While the specification does disclose that polyvinyl alcohol is a chemically synthesized polymer, which, “[a]fter being applied to a user’s skin, it may form filaments which come together to rapidly form a uniform, durable film over the user’s skin surface as the moisture in the lip liner, including moisture from the solvent, evaporates” ([0041]), there is no way to extrapolate other color-fixing agents that function as prescribed in the instant claims.
A similar issue arises with the claimed color-fixing agent wherein the specification only identifies polyisobutene as such ([0015], [0043], [0063], and [0069]). While the specification does disclose polyisobutene is a very stable, high-viscosity synthetic resin which may be used to provide adhesion ([0043]), there is no way to envision other compounds with the claimed functionality.
There is no structure/function correlation presented, and a representative number of species for the combination is not presented in the instant disclosure. For the reasons stated above, one of ordinary skill would not have deemed the applicant to be in possession of the invention as claimed. MPEP § 2163.02 states, “[a]n objective standard for determining compliance with the written description requirement is, ‘does the description clearly allow person of ordinary skill in the art to recognize that he or she invented what is claimed’”. The courts have decided: the purpose of the “written description” requirement is broader than to merely explain how to “make and use”; the Applicant must convey with reasonable clarity to those skilled in the art, that as of the filing date sought, he or she was in possession of the invention. The invention is for purposes of the “written description” inquiry, whatever is now claimed. See Vas-Cath, Inc v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Federal Circuit, 1991).
Therefore, for all these reasons the specification lacks adequate written description, and
one of skill in the art cannot reasonably conclude that Applicant had possession of the claimed
invention at the time the instant application was filed.
Claim Rejections - 35 USC § 112(b)
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 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-20 recite a composition/method requiring said composition comprising a solvent in which a film-forming agent, one or more colorants, and, when present, a color-fixing agent, moisturizer, skin conditioning agent, and preservative are ‘dissolved’ in the solvent. Water is the only disclosed solvent. The solvent is recited with functional identifying language and recited to be configured to evaporate in a certain amount of time, but no discussion of the necessary arrangement is detailed to achieve this evaporation duration. Specific compounds for some of the other claimed categories of components are also recited and several of them, such as tocopherol and polyisobutene, are not soluble in water (see rejection above under part (a) of this statute). The claims also recite a number of functional limitations for the components requiring configuration for various outcomes, but there is no clear connection between the recited outcome and the arrangement of the components in the composition required to achieve such outcome. For instance, the ‘film-forming agent’ in claim 1 requires that the film-forming agent produces a film and “the film is configured to be peeled off the user’s skin once the solvent has evaporated.” It is unclear as to what compound is needed to perform the required functions required of the ‘film-forming agent’ with the desired outcomes and additionally dissolve in an unidentified solvent that further dissolves the other recited components. In addition, as recited in claim 6, it is unclear what composition of color-fixing agent is required to “enhance the dispersion and penetration of the colorant into the user’s skin,” (Specification, [0043]), especially when a specific colorant or genus of colorants is not recited. Thus, the scope of the following is unknown: 1) the solvent; 2) the configurations that achieve the recited function of the dissolution; and 3) the film-forming agents and color-fixing agents that function as recited is unknown.
The specification prepares a single exemplary composition comprising:
40.4 wt% water (solvent)
20 wt% polyvinyl alcohol (film-forming agent)
5.6 wt% diisostearyl malate
15 wt% polyisobutene
4.8 wt% tocopherol
0.1 wt% phenoxyethanol
1.1 wt% colorants (Cl 16035 at 0.4 wt%, Cl 45410 at 0.3 wt%, Cl 19140 at 0.2 wt%, and Cl 42090 at 0.2%)
See specification [0064].
The components only total 87 wt%, implying that the composition in the single working example provided in the specification also includes undisclosed components. The specification details mixing the water insoluble ingredients diisostearyl malate, polyisobutene, and tocopherol into water. These actions imply a mixture/dispersion of components, not a solution in accordance with the meaning of the instantly recited term “dissolved.” The specification then adds polyvinyl alcohol, a water-soluble polymer to the mixture. The final addition in the mixture are the colorants and phenoxyethanol. The composition is subsequently “put into a sieving grinding machine and ground 1-3 times, depending on whether the colorants, which were powders, had been ground evenly” ([0067]). The composition is stated to be completed following “grinding” ([0068]). The discussion of solid colorant and grinding implies that undissolved material is present in the final composition. Therefore, for the sake of compact prosecution and the application of prior art, a composition that includes the structurally recited components will be deemed sufficient to meet the claimed limitations regardless of whether their combination with the solvent yields a single phase (e.g., dissolution).
Claim 1 further recites the limitation “a solvent that evaporates substantially independently of a user’s skin…” Claim 20 recites the limitation “a solvent that evaporates in air substantially independent of the skin.” The specification defines the term ‘substantially independently’ as “meaning that as the solvent evaporates it does not damage the user’s skin, and draws little to no moisture out of the skin” ([0040]). Even in light of this definition, the term ‘substantially’ is indefinite as one of ordinary skill could not determine the metes and bounds of the claims reciting this term.
Claim 8 is a Markush grouping but requires a material selected from an open list of alternatives (“at least one moisturizer selected from a group that includes…”). Therefore, claim 8 is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h).
The scope of claims 9 and 10 is unclear because neither claim clearly limits the moisturizer of the parent claim and could be interpreted as requiring both hyaluronic acid and glycerin.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5, 11, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Acosmetic Co LTD/Kang (KR20160101314A; published 25 August 2016; hereinafter ‘Acosmetic’ – Machine Translation relied upon).
Acosmetic discloses a peel-off cosmetic coloring for lips having the properties of a peel-off patch when applied to the lip skin ([0001]).
Regarding instant claim 1, Acosmetic discloses a working example of a peel-off composition for lips comprising:
Purified water (solvent);
Water soluble color pigments including red cabbage pigment and beet red pigment (colorants);
Polyvinyl alcohol (film-forming agent).
See Example 1 ([0047]-[0054]).
Acosmetic discloses that lip peel-off type cosmetic composition, as used in the working examples, is specifically defined as a cosmetic composition formulated so that when the cosmetic composition is applied to the lip skin, a film is formed and after the film is removed, the lips are colored ([0020]).
Regarding instant claims 3 and 4, Acosmetic discloses that, in working example 1, the composition contains polyvinyl alcohol at 15 wt% ([0061]).
Regarding instant claim 5, Acosmetic discloses that, in working example 1, the composition contains the various colorants at 0.10 or 0.20 wt% ([0061]).
Regarding instant claim 11, Acosmetic’s working example 1 further comprises dipropylene glycol as a polyol dissolved in the solvent ([0052]), which serves as a humectant to disperse the natural pigment and provide moisture to the skin ([0031]). The use as disclosed by Acosmetic can be categorized as a skin conditioning agent since the applicant has not provided a limiting definition for the term that would exclude such uses.
Regarding instant claim 20, Acosmetic discloses a peel-off type cosmetic composition that is specifically defined as a cosmetic composition formulated so that when the cosmetic composition is applied to the lip skin, a film is formed and after the film is removed, the lips are colored and additional effects, such as moisturizing and gloss, are provided ([0020]). Acosmetic further provides that application of the peel-off cosmetic composition includes polyvinyl alcohol dissolving in water and crosslinking as the water evaporates, thereby forming a film composition when applied to the lips ([0026]). Acosmetic further discloses use of this composition by forming a film after applying the peel-off type cosmetic composition to the lips and then slowly peeling it off ([0027]).
Acosmetic details the claimed components in the claimed proportions and arrangements and a method of using such. Therefore, claims 1, 3-5, 11, and 20 are anticipated by Acosmetic.
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 1-5, 8-9, 11-12, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Coson Co LTD/Jeong (KR20160087938A; published 25 July 2016; hereinafter ‘Coson’ – Machine Translation relied upon) in further view of Acosmetic Co LTD (cited above).
Coson discloses a peel-off cosmetic composition with improved lip color and moisturizing properties comprising skin moisturizers, oils, polyvinyl alcohols, ethanol, solubilizers, coloring pigments, preservatives, and purified water (p. 1, ¶ 1).
Regarding instant claim 1, Coson discloses a working example of a peel-off cosmetic composition for lips having improved lip color and moisturizing properties comprising:
Purified water (solvent) at [0086];
Color pigments (colorants) at [0089];
Polyvinyl alcohol (film-forming agent) at [0085].
See production Example 1 ([0084]-[0089]).
Production Example 1 is a preferred embodiment of Coson’s invention. In addition, Coson further teaches embodiments of the invention which include applicable ranges of proportions that make obvious the instantly claimed invention as follows:
A peel-off lip cosmetic composition with improved lip color and moisturizing properties featuring a skin moisturizer between 1 to 10 wt%; oil between 0.10 to 5 wt%; polyvinyl alcohol between 8 to 14.90 wt%; ethanol between 5 to 20 wt%, solubilizer between 0.10 to 17 wt%; coloring pigment between 0.21 to 2 wt%; preservative between 0.10 to 1.1 wt%; and purified water between 30 to 85.49 wt% (p. 1-2, ¶ 2).
Regarding instant claim 2, Coson discloses the purified water with which other components are dissolved at an amount of 30 to 85.49 wt% (p. 1-2; ¶ 2).
Regarding instant claims 3 and 4, Coson discloses polyvinyl alcohol in a peel-off lip cosmetic composition at a range of 8 to 14.90 wt% (p. 1, ¶ 2).
Regarding instant claim 5, Coson discloses coloring pigment in a peel-off lip cosmetic composition at a range of 0.21 to 2 wt% (p. 1-2, ¶ 2).
Regarding instant claims 8 and 9, Coson discloses the skin moisturizer is selected from embodiments which include glycerin at an amount of 1 to 10 wt% ([0040], [0041]).
Regarding instant claims 11 and 12, Coson discloses the oil is selected from embodiments which include diisoteraryl malate at an amount of 0.10 to 5 wt% (p. 2, ¶ 4).
Regarding instant claim 15, Coson discloses a preservative at an amount of 0.1 to 1.1 %wt (p. 1-2; ¶ 2).
Regarding instant claims 16, 17, and 18, as previously discussed, Coson discloses a peel-off lip cosmetic composition with improved lip color and moisturizing properties featuring a skin moisturizer between 1 to 10 wt%; oil between 0.10 to 5 wt%; polyvinyl alcohol between 8 to 14.90 wt%; ethanol between 5 to 20 wt%, solubilizer between 0.10 to 17 wt%; coloring pigment between 0.21 to 2 wt%; preservative between 0.10 to 1.1 wt%; and purified water between 30 to 85.49 wt% (p. 1-2, ¶ 2).
Regarding instant claim 20, Coson discloses the composition of Preparation Example 1 was evaluated in a study ([0145]), which involved 50 women applying the composition to their lips and removing the dried film after 5 to 10 minutes ([0145]-[0156]). Specifically in this study, lip color persistence was evaluated and users rated Preparation Example 1 a 9.91 (out of 10, where 10 is very satisfactory), indicating the preferred embodiment of Coson successfully transferred color to the lips of the study participants ([0152]-[0153]).
As it relates to disclosed proportions in Coson: regarding the aforementioned claims 2-5, 8-9, 11-12, and 15-18, Coson discloses the currently claimed components of the cosmetic lip composition in ranges or amounts that overlap or are merely close to the claimed ranges or amounts. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). The instantly claimed ranges or amounts are modified by the term “about” and no definition has been given that limits the scope of this term. Therefore, the claimed proportions of water, polyvinyl alcohol, glycerin, and diisostearyl malate, as suggested by Coson, yield ranges that are embraced by, overlap with, or are close to the ranges instantly claimed, thereby rendering the rejected claims obvious.
Although Coson discloses a peel-off cosmetic composition, the embodiments of which are identical to the currently claimed components, Coson does not explicitly recite a specific colorant, dye, or pigment used in the composition. Therefore, it cannot be determined if the dye used in Coson was dissolved in water. However, this feature is made obvious in view of Acosmetic. The disclosures of Acosmetic are discussed above. Specifically, Acosmetic discloses a peel-off lip composition comprised of polyvinyl alcohol, which forms a film configured to adhere and peel off the user’s skin, and colorants. Both the polyvinyl alcohol and colorants are dissolved in water.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the colorant taught by Acosmetic for the peel off composition of Coson. This modification would have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome (e.g., specific pigment vs. generic pigment) and as the application of the same technique to a similar product in order to yield the same improvement. It would follow to dissolve these water-soluble pigments/dye to the water of Coson because they dissolve their water-soluble components in the water of the composition. Therefore, claims 1-5, 8-9, 11-12, and 15-18 are obvious over Coson in view of Acosmetic.
Claims 6, 7, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Coson and Acosmetic as applied to claims 1-5, 8-9, 11-12, 15-18, and 20 above, and further in view of Minato (cited in Applicant’s 13 February 2026 IDS as: US PGPub No. 2019/0262242; date of publication: 29 August 2019).
Coson in view of Acosmetic renders obvious the limitations of instant claims 1-5, 8-9, 11-12, 15-18, and 20. In addition, Coson further discloses embodiments containing coloring pigments, and further teaches an oil and envisions liquid paraffin as an option ([0022]), but does not recite a color-fixing agent polyisobutene and its concentration by weight as required by instant claims 6, 7, and 19.
Regarding instant claims 6, 7, and 19: Minato discloses a lip cosmetic composition comprised of polyisobutene, polyvinyl alcohol, a water-soluble dye, a preservative, and water (Table 2 at [0073] and Table 4 at [0077]). Further, Minato envisioned polyisobutene as a non-volatile oil at 15 wt% ([0010], [0079], see Table 11 – Formulation Example 10 and claim 3). Finally, Minato includes liquid paraffin and polyisobutylene as members of their non-volatile hydrocarbon category ([0019]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the non-volatile oils in Coson with polyisobutene because the scope of oils disclosed in Coson overlaps with the scope of non-volatile hydrocarbon oils of Minato whereby both Coson and Minato envision liquid paraffin. One of ordinary skill would be motivated to do so because Minato discloses polyisobutene as an exemplary non-volatile oil, interchangeable with liquid paraffin, and used in lip cosmetic products containing polyvinyl alcohol, water, and dyes. The inclusion of polyisobutene would have been obvious because of their common use and contemplation in lip cosmetics.
According to MPEP 2112.01, “a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” This treatment results from In re Spada, which states that, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). While Minato does not discuss the same function of polyisobutene as a ‘color-fixing agent’ as instantly claimed, Minato details the claimed components in the claimed proportions and arrangements; thus, their properties would follow.
Furthermore, the proportion of polyisobutene disclosed by Minato at 15 wt% is identical to the claimed range. Therefore, Minato provides a range that approaches, overlaps, or is close to the instant range, thereby rendering the claimed range obvious. See MPEP 2144.05(I). This modification would have been obvious as the simple substitution of one known component for another in order to yield a predictable outcome and as the application of the same technique to a similar product in order to yield the same improvement. Therefore, instant claims 6, 7, and 19 are obvious over Coson and Acosmetic in view of Minato.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Coson and Acosmetic as applied to claims 1-5, 8-9, 11-12, 15-18, and 20 above, and further in view of Chung (cited in Applicant’s 13 February 2026 IDS as: US Patent No. 6,039,960; date of patent: 21 March 2000).
Coson in further view of Acosmetic renders obvious the limitations of instant claims 1-5, 8-9, 11-12, 15-18, and 20 where a moisturizing agent is included in the water phase. Hyaluronic acid is not explicitly recited by either reference as an option for this component as required by instant claim 10.
Regarding instant claim 10: Chung discloses lip cosmetics that include water soluble antioxidants as well as humectants such as hyaluronic acids or glycerin in the water phase (see abstract; col. 3, lines 18-33). The determination of proportions of the individual components, Chung discloses, is readily made by the skilled artisan in accordance with the standard usage in the art (col. 3, lines 33-36). Chung further notes the amounts of each individual component are not especially crucial and ratios for the components may be varied (col. 3, lines 36-39).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the moisturizing component glycerin disclosed by Coson with hyaluronic acid. One of ordinary skill would be motivated to do so because Chung discloses both hyaluronic acid and glycerin function as humectants in lipstick and lip-care products. Furthermore, the range of moisturizer disclosed by Coson between 1 to 10 wt% would be applicable to the claimed range of hyaluronic acid because Chung discloses the proportions of individual components are not crucial and can be varied. Furthermore, Coson’s disclosed range of 1 to 10 wt% of moisturizer overlaps with the claimed range in instant claim 10. See MPEP 2144.05(I). This modification would have been obvious as the simple substitution of one known component for another in order to yield a predictable outcome and as the application of the same technique to a similar product in order to yield the same improvement. Therefore, instant claim 10 is obvious over Coson and Acosmetic in view of Chung.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Coson and Acosmetic as applied to claims 1-5, 8-9, 11-12, 15-18, and 20 above, and further in view of O’Halloran (cited in Applicant’s 13 February 2026 IDS as: US PGPub No. 2003/0086954; date of publication: 08 May 2003).
Coson in further view of Acosmetic renders obvious the limitations of instant claims 1-5, 8-9, 11-12, 15-18, and 20. In addition, Coson further discloses embodiments containing antioxidants, but does not recite specific antioxidants for use ([0026], [0059], and [0081]). As such, tocopherol and its concentration by weight are not explicitly recited as an option for this component as required by instant claims 13 and 14.
Regarding instant claims 13 and 14: O’Halloran discloses a peel-off cosmetic composition on the skin of a subject that includes polyvinyl alcohol in a water solvent and dyes (abstract, [0024], and [0027]). In addition, O’Halloran discloses the utility of including an antioxidant at 0.2 to 3 wt% in the peel-off cosmetic composition with tocopherol as an envisioned antioxidant ([0018]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the generic antioxidant disclosed by Coson with specifically tocopherol. One of ordinary skill would be motivated to do so because O’Halloran discloses tocopherol as an envisioned antioxidant in peel-off cosmetic products containing polyvinyl alcohol, water, and dyes. Furthermore, the range of antioxidant disclosed by O’Halloran between 0.2 to 3 wt% would be applicable to the claimed range of tocopherol because the instantly claimed proportion for the tocopherol is modified by the term “about” and no definition has been given that limits the scope of this term. Therefore, O’Halloran provides a range that approaches, overlaps, or is close to the instant range, thereby rendering the claimed range obvious. See MPEP 2144.05(I). This modification would have been obvious as the simple substitution of one known component for another in order to yield a predictable outcome and as the application of the same technique to a similar product in order to yield the same improvement. Therefore, instant claims 13 and 14 are obvious over Coson and Acosmetic in view of O’Halloran.
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.
Co-pending application no. 19/334,451
Claims 1-11, 13, and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-8, 10-14, and 19-22 of copending Application No. 19/334,451 (‘451 reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because each application is drawn to a peel-off lip stain comprising the same ingredients at the same proportions. Furthermore, the currently claimed application is a genus of ‘451 and therefore, the claims of ‘451 anticipate that which is currently claimed in instant claims 1-11, 13, and 16-19 as outlined below:
Instant claim
Anticipatory ‘451 claim
Claim 1: a composition used as a lip liner comprising a solvent that evaporates, a colorant(s), a film-forming agent dissolved in the solvent. The film-forming agent is configured to the user’s skin and peels off after solvent has evaporated.
Claim 1
Claim 2: solvent is ~40.4 wt%.
Claim 3
Claim 3: film-forming agent included at a concentration between ~5-20 wt%.
Claim 1
Claim 4: the film-forming agent comprises polyvinyl alcohol.
Claim 5
Claim 5: the colorant included at a concentration between ~0.2-1.1 wt%.
Claim 19
Claim 6: a color-fixing agent at ~15% wt%.
Claim 6
Claim 7: the color-fixing agent comprises polyisobutene.
Claim 7
Claim 8: a moisturizer selected from glycerin and hyaluronic acid dissolved in the solvent.
Claims 8 and 19-21
Claim 9: the moisturizer glycerin included at ~5-10 wt%.
Claim 20
Claim 10: the moisturizer hyaluronic acid included at ~0.1-3 wt%.
Claim 21
Claim 11: further comprising a skin-conditioning agent dissolved in a solvent.
Claims 10 and 19
Claim 13: further comprising tocopherol dissolved in solvent.
Claims 12 and 13.
Claim 16: a composition used as a lip liner comprising a solvent at ~40.4 wt%, a colorant(s) at ~0.2-1.1 wt%, and a film-forming agent dissolved in the solvent at ~5-20 wt%.
Claims 1, 3, and 16
Claim 17: the film-forming agent comprises polyvinyl alcohol.
Claim 5
Claim 18: solvent comprises water.
Claim 1
Claim 19: color-fixing agent at ~15 wt%.
Claim 6
Therefore, claims 1, 3, 5-8, 10-13, and 19-22 of ‘451 anticipate that which is currently claimed in instant claims 1-11, 13, and 16-19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 12, 15, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-8, 10-14, and 19-22 of copending Application No. 19/334,451 (‘451 reference application) and further in view of Coson (cited previously in this Office Action).
Although the claims at issue are not identical, they are not patentably distinct from each other because each application is drawn to a peel-off lip stain comprising the same ingredients at the same proportions. While ‘451 claims use of diisostearyl malate in the composition (see ‘451 claim 11), ‘451 does not explicitly claim the concentration of ~5.6 wt% as required by instant claim 12. ‘451 also does not explicitly claim: the concentration of ~0.1 wt% as required by instant claim 15 and the method of using the composition as required by instant claim 20.
As discussed above, Coson provides embodiments of peel-off cosmetic composition with improved lip color and moisturizing properties. Coson discloses further possible components of the peel-off cosmetic lip composition including:
Regarding instant claim 12: Coson discloses the oil is selected from embodiments which include diisoteraryl malate at an amount of 0.10 to 5 wt% (p. 2, ¶ 4).
Regarding instant claim 15, Coson discloses a preservative at an amount of 0.1 to 1.1 %wt (p. 1-2; ¶ 2).
In addition, Coson discloses a method of using said composition whereby the composition of Preparation Example 1 was evaluated in a study ([0145]), which involved 50 women applying the composition to their lips and removing the dried film after 5 to 10 minutes ([0145]-[0156]). Specifically in this study, lip color persistence was evaluated and users rated Preparation Example 1 a 9.91 (out of 10, where 10 is very satisfactory), indicating the preferred embodiment of Coson successfully transferred color to the lips of the study participants ([0152]-[0153]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the following in ‘451:
the concentration of diisostearyl malate as claimed in ‘451 to that which is instantly claimed in claim 12 in view of Coson. The range of diisostearyl malate disclosed by Coson between 0.10 to 5 wt% would be applicable to the claimed range of diisostearyl malate because the instantly claimed proportion for the diisostearyl malate is modified by the term “about” and no definition has been given that limits the scope of this term. Therefore, Coson provides a range that approaches and is close to the instant range, thereby rendering the claimed range obvious. See MPEP 2144.05(I). This modification to ‘451 would have been obvious because Coson teaches that specific range is safe and effective for use in a cosmetic lip composition.
the concentration of the preservative as claimed in ‘451 to that which is instantly claimed in claim 15 in view of Coson. The range of preservative disclosed by Coson between 0.1 to 1.1 wt% would overlap with the claimed range of preservative thereby rendering the claimed range obvious. See MPEP 2144.05(I).
the method of using said composition in instant claim 20 would be obvious in light of Coson teaching use for such composition.
These modifications to ‘451 would have been obvious because Coson teaches that specific ranges of diisostearyl malate and preservative are safe and effective for use in a cosmetic lip composition and the method of using said composition is safe and effective.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-8, 10-14, and 19-22 of copending Application No. 19/334,451 (‘451 reference application) and further in view of O’Halloran (cited previously in this Office Action).
Although the claims at issue are not identical, they are not patentably distinct from each other because each application is drawn to a peel-off lip stain comprising the same ingredients at the same proportions. While ‘451 claims use of tocopherol in the composition (see ‘451 claim 13), ‘451 does not explicitly claim the concentration of ~4.8 wt% as required by instant claim 14.
Regarding instant claim 14: O’Halloran discloses a peel-off cosmetic composition on the skin of a subject that includes polyvinyl alcohol in a water solvent and dyes (abstract, [0024], and [0027]). In addition, O’Halloran discloses the utility of including an antioxidant at 0.2 to 3 wt% in the peel-off cosmetic composition with tocopherol as an envisioned antioxidant ([0018]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration of tocopherol as claimed in ‘451 to that which is instantly claimed in claim 14 in view of O’Halloran. The range of antioxidant disclosed by O’Halloran between 0.2 to 3 wt% would be applicable to the claimed range of tocopherol because the instantly claimed proportion for the tocopherol is modified by the term “about” and no definition has been given that limits the scope of this term. Therefore, O’Halloran provides a range that approaches, overlaps, or is close to the instant range, thereby rendering the claimed range obvious. See MPEP 2144.05(I). This modification to ‘451 would have been obvious because O’Halloran teaches that specific range is safe and effective for use in a cosmetic lip composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-20 are rejected. No claim is allowed.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A. Rossi whose telephone number is (571)272-0138. The examiner can normally be reached M-F 8:30-5:00.
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/JULIA A ROSSI/Examiner, Art Unit 1615
/CARALYNNE E HELM/Examiner, Art Unit 1615
1 Michael D. Dubbs and Ram B. Gupta. Solubility of Vitamin E (α-Tocopherol) and Vitamin K3 (Menadione) in Ethanol−Water Mixture. Journal of Chemical & Engineering Data 1998 43 (4), 590-591. DOI: 10.1021/je980017l
2 Yamamoto et al. US Publication No.: US2008/0261845 A1; published: 23 October 2008.