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 were previously pending.
A non-final rejection office action was mailed 06 March 2026.
In response to that office action, Applicant filed an Amendment/Request for Reconsideration received 03 June 2026.
In their Amendment/Request for Reconsideration, Applicant amended claims 1-2, 6, 8-13, 15-16, and 20; cancelled claims 4, 7, 14, and 17-19; and added claims 21-26.
Therefore, claims 1-3, 5-6, 8-13, 15-16, and 20-26 are now pending and currently under examination.
Terminal Disclaimer
The terminal disclaimer, filed 03 June 2026, for co-pending application 19/334,451 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement (IDS)
The IDSs (3) filed on 29 May 2026 (1) and 15 July 2026 (2) have been considered by the examiner. Signed copies are enclosed.
Withdrawn Claim Rejections
I. Claims 1, 3-5, 11, and 20 were previously rejected under 35 U.S.C. 102(a)(1) as being anticipated by Acosmetic Co (KR20160101314A; published 25 August 2016). Applicant’s amendment to claim 1 was sufficient to overcome this rejection and aforementioned rejection is hereby withdrawn.
II. Claims 1-11, 13, and 16-19 were 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; claims 12, 15, and 20 were 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 in further view of Coson (previously cited); claim 14 was 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 in further view of O’Halloran (previously cited).
Applicant’s terminal disclaimer, received 03 June 2026, was sufficient to overcome these provisional nonstatutory double patenting rejections and the aforementioned rejections are hereby withdrawn.
Maintained Claim Rejections
The following rejections have been maintained, only modified to incorporate Applicant’s claim amendments, newly added claims, and claim cancellations.
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 1-3, 5-6, 8-13, and 15-16 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, comprising water and is substantially free of volatile alcohol, 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, comprising polyvinyl alcohol, 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, comprising polyisobutene, 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.
Response to Applicant’s Arguments
Applicant’s arguments, received 03 June 2026, have been fully considered, but not found to be persuasive. Applicant contends that the claim amendments identify the chemical components of or within the solvent, film-forming agent, and color-fixing agent. However, the claim amendments do not identify the chemical components with enough specificity to overcome this rejection. For instance, a solvent that comprises water could be any known solvent in the art with a drop of water added. This language is also used to allegedly identify the film-forming agent and color-fixing agent, but fails to permit the skilled artisan to envision a chemical compound that adheres to claimed function (e.g., configured to be peeled off the user’s skin once the solvent has evaporated).
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 1-3, 5-6, 8-13, 15-16, and 20-26 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 1-3, 5-6, 8-13, 15-16, and 20-26 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.
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). This illustrates how, as stated in the previous rejection of record, there is no clear connection between the recited outcome and the arrangement of the components in the composition required to achieve such outcome.
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.
Response to Applicant’s Arguments
Applicant’s arguments, received 03 June 2026, have been fully considered, but not found to be persuasive. Applicant argues the claim amendments removing references to non-water-soluble components being dissolved in the solvent overcomes this rejection. However, these amendments do not overcome the functional language of the instant claims. For instance, amending the solvent to now comprise water and substantially free of volatile alcohol does not support the recited functional claim language. PEG-400 is a solvent known in the art and often found in lip gloss. PEG 400 may contain trace amounts of water, thereby meeting the limitations of “wherein the solvent comprises water.” However, PEG 400 does not effectively evaporate under normal conditions.
Furthermore, the Applicant did not amend or address the recited claim language of “substantially” as recited above and in the previous 112(b) rejection of record.
New Claim Rejections
Applicant’s amendment to independent claims 1 and 20, now requiring the solvent is substantially free of volatile alcohol, necessitates the following new claim rejections:
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, 3, 5, 8, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobo (“KLP-295 Peeling Lip Tint,” published November 2021).
Kobo discloses a long-lasting peel off lip tint cosmetic composition (p. 1).
Regarding claim 1 –
Kobo discloses an aqueous peel off lip tint composition containing water as a solvent, D&C Red No. 27 colorant, and a polyvinyl alcohol completely dissolved in the aqueous phase (p. 1). The solvent is free of a volatile alcohol and the composition as a whole is substantially free of a volatile alcohol as the only disclosed alcohol is a general alcohol present along with sodium phytate and water at 0.20% of the total formulation (p. 1, part 1).
Although Kobo describes the composition as a lip tint rather than expressly as a lip liner, the recitation “for use as a lip liner” constitutes a statement of intended use and does not impart a structural distinction to the claimed composition. Alternatively, to the extent the language requires suitability for use as a lip liner, the Kobo’s disclosed lip tint is capable of being selectively applied along the perimeter of the lips and therefore satisfies the recited use. It would have further been inherent, or at least reasonably expected, that water would evaporate after application independently of the skin and that the dissolved PVA would form an adhering film as the aqueous solvent evaporated, because KLP-295 expressly identifies the product as a peel-off lip tint.
Regarding claim 3 –
Kobo identifies PVA in an amount of 13.05% by weight of the total composition, rendering the claimed range obvious. See MPEP 2144.05.
Regarding claim 5 –
Kobo identifies D&C Red No. 27 colorant in an amount of 1.28% by weight (64% x 2% aqueous solution). Applicant has not defined the term ‘about’ in the specification, so the amount disclosed by Kobo is close to, if not encompassed by the instantly claimed range. Furthermore, Kobo recites titanium dioxide and mica in an amount of 0.5% by weight, rendering the claimed range obvious. See MPEP 2144.05.
Regarding claim 8 –
The composition of Kobo contains Glycerin (p. 1).
Regarding claim 11 –
The composition of Kobo contains ingredients known in the art as skin conditioning agents, such as inulin, butylene glycol and pentylene glycol (p. 1).
Regarding claim 15 –
The composition of Kobo contains ingredients known in the art as preservatives, such as phenoxyethanol and potassium sorbate (p. 1).
The difference between the applied reference and the claimed invention is that the applied references may not teach the instantly claimed method with particularity so as to amount to anticipation. See MPEP “[t]he identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
However, the applied reference discloses the elements of the claimed composition with sufficient guidance, particularity, and with a reasonable expectation of success for the skilled artisan, that the invention would be prima facie obvious to one of ordinary skill in the art.
Kobo discloses a long-lasting peel off lip tint cosmetic composition containing a solvent comprising water that is substantially free of volatile alcohol, one or more colorants, and a film-forming agent comprising polyvinyl alcohol. Kobo discloses this composition with enough particularity that a skilled artisan could envision using this composition on the outer borders of a user’s lips.
As it relates to disclosed proportions in Kobo: Kobo 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 ranges of the film-forming agent and colorants, as suggested by Kobo, yield ranges that are embraced by, overlap with, or are close to the ranges instantly claimed, thereby rendering the rejected claims obvious.
Claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Coson Co LTD/Jeong (previously cited as KR20160087938A; published 25 July 2016; hereinafter ‘Coson’ – Machine Translation relied upon) in further view of Kobo (cited above) and Wonderskin (“Wonder Blading Peel & Reveal Lip Stain Kit,” available online 08 August 2022 as evidenced by Wayback Machine).
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 3, 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, 9, and 21, 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, 12, and 22, 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 and 23, Coson discloses a preservative at an amount of 0.1 to 1.1 %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 claimed ranges, 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 Kobo. The disclosures of Kobo are discussed above. Specifically, Kobo 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.
Although, as applicant has argued, Coson’s composition contains ethanol which accelerates drying, Wonderskin teaches an aqueous PVA peel off lip composition can form an adhering, peelable film without an intentionally added volatile alcohol. Wonderskin further identifies reduced drying and irritation as a result of the alcohol-free formula, which is an improved technical effect over similar products containing alcohol (p. 4).
Regarding instant claim 2, Wonderskin’s composition is free of volatile alcohols (p. 1).
Regarding instant claim 26, Wonderskin teaches a lip-staining composition and further teaches prior to applying the film, the lips can be scrubbed with an exfoliating composition (p. 3). Under the broadest reasonable interpretation of claim 26, an exfoliating product is considered a cosmetic composition and Wonderskin teaches application of this composition prior to peeling off the peelable film.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to omit or substantially reduce the alcohol component of Coson when formulating for optimal lip hydration as taught by Wonderskin, accepting a longer drying time while retaining PVA’s known film-forming properties; it would have further been obvious to employ the colorant taught by Kobo 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 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 are obvious over Coson in view of Kobo and Wonderskin.
Claims 6, 16, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Coson, Kobo, and Wonderskin as applied to claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 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 Kobo and Wonderskin, renders obvious the limitations of instant claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26. 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 and 16.
Regarding instant claims 6, 16, and 24: 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]) that applies long-lasting color to the lips ([0014], [0029]). 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 and 16 are obvious over Coson, Kobo, and Wonderskin in view of Minato.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Coson, Kobo, and Wonderskin as applied to claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 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 Kobo and Wonderskin renders obvious the limitations of instant claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 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, Kobo, and Wonderskin in view of Chung.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Coson, Kobo, and Wonderskin as applied to claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 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 Kobo and Wonderskin renders obvious the limitations of instant claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26. 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 claim 13.
Regarding instant claim 13: 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 claim 13 is obvious over Coson, Kobo, and Wonderskin in view of O’Halloran.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Coson, Kobo, and Wonderskin as applied to claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26 above, and further in view of Allure (“People on TikTok Are Using Maybelline Tattoo Brown as Semi-Permanent Lip Liner and Lipstick; date of publication: 01 July 2022).
Coson in further view of Kobo and Wonderskin renders obvious the limitations of instant claims 1-3, 5, 8-9, 11-12, 15, 20-23 and 26. The combination of references teach a long-lasting peel off lip cosmetic, but do not explicitly teach lining the lips with such cosmetic as required by instant claim 25.
Regarding instant claim 25: Allure teaches a viral hack wherein TikTok users are using Maybelline’s tattoo brow peel off cosmetic as a semi-permanent lip liner (p. 3). This ‘hack,’ as disclosed by Allure, creates a long-lasting stain around the user’s lips (p. 3), but is not guaranteed safe outside its intended use (p. 3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the long-lasting peel off liner disclosed by Coson in a method of applying along the outside border of the lips as required by claim 25. One would be motivated to do so because Allure teaches a viral hack where users seek a more permanent lip liner using a peel off brow tint, but this application comes with safety risks as lip application is not the intended use of the brow tint. One would be motivated to seek compositions intended for lips as a safer substitute for the Maybelline Brow Tint and arrive at Coson’s composition applied in the manner as required by claim 25. Therefore, instant claim 25 is obvious over Coson, Kobo, and Wonderskin in view of Allure.
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. 19/637,978 (filed on 02 April 2026, after the non-final rejection office action was mailed in 18/675,021)
Claims 1-3, 5-6, 8-13, 15-16, and 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 8-14 of copending Application No. 19/637,978 (‘978 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 method of applying a peel-off lip stain comprising the same ingredients at the same proportions. Furthermore, the currently claimed composition is used in the method of ‘978 and therefore, the claims of ‘978 anticipate that which is currently claimed in instant claims 1-3, 5-6, 8-13, 15-16, and 20-26 as outlined below:
Instant claim
Anticipatory ‘978 claim
Claim 20: method of applying peel off lip stain to skin
Claim 1
Claim 21: glycerin or hyaluronic acid
Claim 14
Claim 22: diisostearyl malate or tocopherol
Claim 14
Claim 23: preservative
Claim 14
Claim 24: color fixing agent
Claims 12, 13
Claim 25: application method
Claim 3
Claim 26: application method
Claim 4
Claims 8-11 are further directed to the limitations of the composition currently claimed.
Therefore, claims 1, 3-4, and 8-14 of ‘978 anticipate that which is currently claimed in instant claims 1-3, 5-6, 8-13, 15-16, and 20-26.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Co-pending application no. 19/654,174 (filed on 21 April 2026, after the non-final rejection office action was mailed in 18/675,021)
Claims 1, 3, 5-6, 8-13, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-9, 11-12, and 14-19 of copending Application No. 19/654,174 (‘174 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 composition of a peel-off lip stain comprising the same ingredients at the same proportions. Therefore, the claims of ‘174 anticipate that which is currently claimed in instant claims 1, 3, 5-6, 8-13, and 15-16 as outlined below:
Instant claim
Anticipatory ‘174 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.
Claims 1, 6, and 8
Claim 3: PVA as a film-forming agent included at a concentration between ~5-20 wt%.
Claims 8, 9
Claim 5: the colorant included at a concentration between ~0.2-1.1 wt%.
Claim 11
Claim 6: the color-fixing agent comprises polyisobutene.
Claim 12
Claim 8: a moisturizer selected from glycerin and hyaluronic acid dissolved in the solvent.
Claim 14
Claim 9: the moisturizer glycerin included at ~5-10 wt%.
Claim 14
Claim 10: the moisturizer hyaluronic acid included at ~0.1-3 wt%.
Claim 17
Claim 11: further comprising a skin-conditioning agent.
Claim 15
Claim 12: wherein the skin conditioning agent is diisostearyl malate.
Claim 15
Claim 13: further comprising tocopherol.
Claim 16
Claim 15: further comprising a preservative.
Claim 18
Claim 16: 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 19
Therefore, claims 1, 6, 8-9, 11-12, and 14-19 of ‘174 anticipate that which is currently claimed in instant claims 1, 3, 5-6, 8-13, and 15-16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2 and 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-9, 11-12, and 14-19 of copending Application No. 19/654,174 (‘174 reference application) and further in view of Coson, Kobo, and Wonderskin (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.
The method of the instant application is made obvious by the composition claimed in ‘174 and in further view of Coson, Kobo, and Wonderskin.
Coson discloses a method of using a peel off lip coloring 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]).
Kobo and Wonderskin both disclose peel off lip colorant free of volatile alcohols. Wonderskin further acknowledges its alcohol-free composition is superior to other alcohol-containing products.
Therefore, it would have been obvious to modify the claims of ‘174 in view of Coson, Kobo, and Wonderskin because: 1) Coson discloses a method of applying a similar composition, so one of ordinary skill would envision success in using the composition claimed in ‘174 with the method of Coson; and 2) because Kobo and Wonderskin disclose a volatile alcohol-free composition superior to other alcohol-containing compositions, it would have been obvious to modify the composition in ‘174 to exclude alcohol.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-3, 5-6, 8-13, 15-16, and 20-26 are rejected. No claim is allowed.
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.
Communication
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/JULIA A. ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent 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.
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