Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Application
The Preliminary Amendment filed on 03/08/24 is acknowledged.
Claims 3-14, 16, 18, 20, 22-23, and 25-28 were amended.
Claims 1-28 are included in the prosecution.
Priority
This Application is a 371 of PCT/EP2022/074340 filed on 09/01/22. This Application also claims foreign priority to FR 2109490 filed on 09/10/21. Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119 (a)-(d), which papers have been placed of record in the file.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) an English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 03/08/24 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement. Please see the attached copy of PTO-1449.
Claim Objections
Claims 1, 3, 5, 16, and 27 are objected to because of the following informalities:
In claim 1, line 5, the identifier “(1)” should be corrected to recite“(I)” based on formula (I) recited in line 3.
In claim 1, lines 7 and 10, the terms “and” at the end should be deleted, since the term “and” is properly recited in the penultimate line of claim 1.
In claim 3, line 4, a comma or semi-colon should be added at the end of the line.
In claim 5, the periods following components i-vi should be deleted. Please see MPEP 608.01(m) which states: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” Appropriate correction is required.
In claim 5, the term “or” should be added at the end of the penultimate line.
In claim 16, line 2, there is a closing parenthesis after the term “surfactants,” which should be deleted.
In claim 27, penultimate line, the terms “and,” “or,” or “and/or” should be added at the end of the line.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1-3, 5-8, 10-19, 21-26, and 28 recite terms that make the claims indefinite.
Claims 1, 6, 12, 13, 14, 16, 18, 19, 21, 23, and 28 recite the term “notably.”
Claims 1, 2, 7, 8, 11, 12, 13, 15, 17, 18, 19, 24, and 25 recite the term “preferably.”
Claims 2, 12, 13, 15, and 23 recite the term “more preferentially.”
Claims 2 and 15 recite the term “even more preferentially.”
Claims 3, 6, 10, 13, 14, 16, 18, 22, 23, 24, and 25 recite the term “more particularly.”
Claims 10, 17, 19, and 23 recite the term “even more particularly.”
Claims 5, 6, and 28 recite the term “in particular.”
Claims 7 and 10 recite the term “better still.”
Claims 26 and 28 recite the term “such as.”
The terms “notably,” “preferably,” “more preferentially,” “even more preferentially,” “more particularly,” “even more particularly,” “in particular,” “better still,” and “such as” render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In claims 5, 6, 7, 8, 13, 15, 17, 19, and 24, the recitation of “(are)” and in claim 24, last line, the recitation of "(CI 77499)" render the claim indefinite because it is unclear whether the limitation(s) in the parentheses are part of the claimed invention. See MPEP § 2173.05(d). It is recommended that the parentheses be removed and claims worded more clearly.
Claim 13, line 3 recites the limitation of “at 25°C” with respect to the nonionic surfactant with an HLB value of greater than or equal to 8. Claim 13 is dependent on claim 1, but claim 1 does not recite any temperature associated with the HLB of the nonionic surfactant. There is insufficient antecedent basis for this limitation in the claim.
Claim 28, last line recites “at least one composition as defined in claim 1.” This is confusing because claim 1 is drawn to a single composition. Clarification and/or amendment are required.
Claims 4, 9, 20, and 27 are included for not correcting the defects of the claims from which they depend.
Notice for all US Patent Applications filed on or after March 16, 2013
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over Raineau et al. (US 2009/0016982 A1 – “Raineau”), as evidenced by PubChem (National Center for Biotechnology Information (2026). PubChem Compound Summary for CID 23672321, Potassium Cetyl Phosphate. Retrieved February 14, 2026 from https://pubchem.ncbi.nlm.nih.gov/compound/Potassium-Cetyl-Phosphate - “PubChem”) in view of Muller et al. (US 6,521,238 B1 – “Muller”).
Instant claim 1 is:
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Raineau teaches a cosmetic composition comprising an aqueous phase and an emulsifying system, where the emulsifying system contains at least one C10-C30 alkyl phosphate and at least one C8-C24 fatty alkyl ether of polyethylene glycol (PEG), the ether comprising from 1 to 19 ethylene glycol units and having an HLB<8 at 25°C (Abstract, compositions 6-8 – [0190]-[0196], and claims 1-23). The composition comprises a physiologically acceptable medium whose use is compatible with application to the eyelashes ([0039]). Raineau also teaches a process for making up keratin fibres, including mascara compositions for making up keratin fibres ((Abstract, [0002], [0014], [0188], [0193]), and applying to eyelashes (claim 24). The C8-C24 fatty alkyl ether of PEG comprises from 1 to 19 ethylene glycol units (claim 1) and is chosen from C16-C18 fatty alkyl ethers of PEG comprising from 1 to 19 ethylene glycol units (claim 5). The emulsifying system contains additional surfactants which are chosen from anionic and non-ionic surfactants ([0051]). The anionic surfactants include alkyl phosphates including cetyl phosphate sold under the name Amphisol K (Roche), Amphisol A (Roche), Arlatone MAP (Uniqema) and Crodafos MCA (Croda) ([0027] and Compositions 6-8 - [0191]). The nonionic surfactant cetyl alcohol is disclosed ([0080], Composition 8 - [0191]). Non-ionic surfactants with an HLB of less than 8 at 25°C are disclosed ([0065]). The fatty alkyl ether of PEG is Steareth-2 (polyethylene glycol (2) stearyl ether) with an HLB equal to 5, which is sold under the names Brij 72 (Uniqema) and Volpo S2 (Croda) ([0030] and Compositions 6-8 – [0191]). The nonionic surfactant PEG-200 glyceryl monostearate is also disclosed ([0057]). The aqueous phase comprises water ([0043]).
PubChem discloses that potassium cetyl phosphate has the formula C16H34KO4P (Page 1) and is also known as Amphisol K (Page 6).
Raineau does not expressly teach a fatty dialkyl ether of formula (I) as recited in instant claim 1.
Muller teaches a cosmetic composition containing a pearlescent agent and at least one fatty alcohol (Title, Abstract, claim 1). The pearlescent agent includes fatty dialkyl ethers of formula (I):
R—O—R′ (I)
in which:
R and R′, which may be identical or different, are chosen from saturated and unsaturated, linear and branched alkyl radicals containing from 12 to 30 carbon atoms and preferably from 14 to 24 carbon atoms, more particularly, R and R’ are identical, and preferably, R and R’ are stearyl radicals, i.e. 18 carbon atoms (Col. 3, lines 18-36, claims 1, 3, 7, 32, 33, 34, 35). Muller teaches a process for the cosmetic treatment of a keratin substance comprising applying to the keratin substance the cosmetic composition comprising the fatty dialkyl ether (claim 42). The composition shows very good homogeneity and good stability of the pearling agent, as well as viscosity which is satisfactory for applying them to keratin substances (Col. 2, lines 49-52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic composition for application to keratin fibers, such as a mascara composition, comprising an aqueous phase and an emulsifying system, where the emulsifying system contains at least one C10-C30 alkyl phosphate and at least one C8-C24 fatty alkyl ether of polyethylene glycol (PEG), the ether comprising from 1 to 19 ethylene glycol units and having an HLB<8 at 25°C, as taught by Raineau, substitute the fatty dialkyl ethers of formula (I): R—O—R′ (I) in which R and R′, which may be identical or different, are chosen from saturated and unsaturated, linear and branched alkyl radicals containing from 12 to 30 carbon atoms and preferably from 14 to 24 carbon atoms, more particularly, R and R’ are identical, and preferably, R and R’ are stearyl radicals, as taught by Muller, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because the simple substitution of one known element (the fatty dialkyl ether taught by Muller) for another (the fatty alkyl ether taught by Raineau) to obtain predictable results (preparing a cosmetic composition for application to keratin fibers as taught by both Raineau and Muller) is obvious. Please see MPEP 2141(III)(B). Both Raineau and Muller are drawn to cosmetic compositions containing fatty alkyl ethers which are suitable for application to keratin fibers. One of ordinary skill in the art would have found it obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A). Moreover, Muller teaches the advantage of using their pearlescent agent, which includes the fatty dialkyl ether of formula (I): R—O—R′ (I), in which the R1 and R2 are identical and preferably, R and R’ are stearyl radicals, i.e., R and R’ have 18 carbon atoms (Col. 3, lines 18-36, claims 7, 32, and 33), which lies within the claimed range of 16 to 20 carbon atoms, thereby rendering this limitation obvious.
Also, Muller teaches the advantage of the composition which shows very good homogeneity and good stability of the pearling agent, as well as viscosity which is satisfactory for applying them to keratin substances (Col. 2, lines 49-52).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding instant claim 1, the limitation of a composition in a physiologically acceptable medium comprising (1) at least one fatty dialkyl ether of formula (I) would have been obvious over the cosmetic composition comprising an aqueous phase and an emulsifying system, where the emulsifying system contains at least one C10-C30 alkyl phosphate and at least one C8-C24 fatty alkyl ether of polyethylene glycol (PEG), the ether comprising from 1 to 19 ethylene glycol units and having an HLB<8 at 25°C (Abstract, compositions 6-8 – [0190]-[0196], and claims 1-23), wherein the composition comprises a physiologically acceptable medium whose use is compatible with application to the eyelashes ([0039]), as taught by Raineau, in view of cosmetic composition comprising the fatty dialkyl ethers of formula (I): R—O—R′ (I) in which R and R′, which may be identical or different, are chosen from saturated and unsaturated, linear and branched alkyl radicals containing from 12 to 30 carbon atoms and preferably from 14 to 24 carbon atoms, more particularly, R and R’ are identical, and preferably, R and R’ are stearyl radicals (Col. 3, lines 18-36, claims 1, 3, 7, 32, 33, 34, 35), as taught by Muller.
Regarding instant claim 1, the limitation of (2) at least one anionic surfactant comprising (3) at least one cationic counterion, preferably at least one anionic surfactant in a form partially or totally neutralized by said cationic counterion would have been obvious over the anionic surfactants ([0051]), including alkyl phosphates which further include cetyl phosphate sold under the name Amphisol K (Roche), Amphisol A (Roche), Arlatone MAP (Uniqema) and Crodafos MCA (Croda) ([0027] and Compositions 6-8 - [0191]), as taught by Raineau, as evidenced by PubChem since this reference teaches that Amphisol K is potassium cetyl phosphate (Page 6).
Regarding instant claim 1, the limitation of (4) at least one nonionic surfactant with an HLB of less than or equal to 8 would have been obvious over the non-ionic surfactants with an HLB of less than 8 at 25°C ([0065]), as well as the non-ionic surfactants cetyl alcohol ([0080], Composition 8 - [0191]), the fatty alkyl ether of PEG Steareth-2 (polyethylene glycol (2) stearyl ether) with an HLB equal to 5, which is sold under the names Brij 72 (Uniqema) and Volpo S2 (Croda) ([0030] and Compositions 6-8 – [0191]), and PEG-200 glyceryl monostearate ([0057]), as taught by Raineau.
Regarding instant claim 1, the limitation of (5) water would have been obvious over the aqueous phase which comprises water ([0043]), as taught by Raineau.
Regarding instant claim 2, the limitation of the fatty dialkyl ether of formula (I) in a content of at least 3% by weight would have been obvious over the fatty alkyl ether in an overlapping range of from 0.1% to 20% by weight ([0031]), as taught by Raineau in view of the fatty dialkyl ethers of formula (I): R—O—R′ (I) in which R and R′, which may be identical or different, are chosen from saturated and unsaturated, linear and branched alkyl radicals containing from 12 to 30 carbon atoms and preferably from 14 to 24 carbon atoms, more particularly, R and R’ are identical, and preferably, R and R’ are stearyl radicals, (Col. 3, lines 18-36, claims 1, 3, 7, 32, 33, 34, 35), as taught by Muller.
Regarding instant claim 3, the limitation of the fatty dialkyl ether of formula (I) would have been obvious over the fatty dialkyl ethers of formula (I): R—O—R′ (I), in which R and R’ are identical, and preferably, R and R’ are stearyl radicals (Col. 3, lines 18-36, claims 1, 3, 7, 32, 33, 34, 35), as taught by Muller.
Regarding instant claim 4, the limitation of the anionic surfactant having an HLB of greater than or equal to 8 would have been obvious over the anionic surfactants ([0051]), including alkyl phosphates which further include potassium cetyl phosphate sold under the name Amphisol K (Roche) ([0027] and Compositions 6-8 - [0191]), and the emulsifiers having an HLB of greater than or equal to 8 at 25°C ([0050]), as taught by Raineau, as evidenced by PubChem since this reference teaches that Amphisol K is potassium cetyl phosphate (Page 6).
Regarding instant claim 5, the limitation of the anionic surfactant which is a C12-C20 monoalkyl phosphate would have been obvious over the potassium cetyl phosphate sold under the name Amphisol K (Roche) ([0027] and Compositions 6-8 - [0191]), as taught by Raineau, as evidenced by PubChem since this reference teaches that potassium cetyl phosphate has the formula C16H34KO4P and has 16 carbon atoms (Page 1).
Regarding instant claim 6, the limitation of the cationic counterion that is an alkali metal cation would have been obvious over the potassium in potassium cetyl phosphate sold under the name Amphisol K (Roche) ([0027] and Compositions 6-8 - [0191]), as taught by Raineau, as evidenced by PubChem since this reference teaches that potassium cetyl phosphate has the formula C16H34KO4P (Page 1).
Regarding instant claim 7, the limitation of the anionic surfactant present in a total content of greater than or equal to 2% by weight relative to the total weight of the composition would have been obvious over the cetyl phosphate Arlatone MAP from Uniqema used at 6.66% in composition 6, and at 2.18% in compositions 7 and 8 (Compositions 6-8 - [0191]), as taught by Raineau. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claim 8, the limitation of the anionic surfactant which is a C12-C22 monoalkyl phosphate would have been obvious over the potassium cetyl phosphate sold under the name Amphisol K (Roche) ([0027] and Compositions 6-8 - [0191]), as taught by Raineau, as evidenced by PubChem since this reference teaches that potassium cetyl phosphate has the formula C16H34KO4P and has 16 carbon atoms (Page 1).
Regarding instant claim 9, the limitation of the anionic surfactant which is potassium cetyl phosphate would have been obvious over the potassium cetyl phosphate sold under the name Amphisol K (Roche) ([0027] and Compositions 6-8 - [0191]), as taught by Raineau, as evidenced by PubChem since this reference teaches that potassium cetyl phosphate has the formula C16H34KO4P and has 16 carbon atoms (Page 1) and is also known as Amphisol K (Page 6).
Regarding instant claim 10, the limitation of at least 30.0% by weight of water would have been obvious over the calculated amount of water for compositions 6, 7, and 8, which is 57.32% (100%-42.68%), 58.59% (100%-41.41%), and 56.59% (100%-43.41%), respectively (Compositions 6-8 - [0191] – reproduced below), as taught by Raineau. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
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Regarding instant claim 11, the limitation of at least one wax would have been obvious over the carnauba wax and beeswax ([0095] and compositions 6-8 – [0191]), as taught by Raineau.
Regarding instant claim 12, the limitation of the wax present in a content of less than 30.0% would have been obvious over the carnauba wax present in an amount of 3.21% and beeswax present in an amount of 4.07% (compositions 6-8 – [0191]), as taught by Raineau. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claims 13 and 14, the limitations of the nonionic surfactant with an HLB of greater than or equal to 8 which is a C14-C30 fatty alcohol would have been obvious over the cetyl alcohol ([0080], Composition 8 - [0191]), which has 16 carbon atoms, as taught by Raineau. The HLB value of cetyl alcohol is an intrinsic property of the cetyl alcohol and inseparable from it. Therefore, since Raineau teaches cetyl alcohol, the HLB value is also taught by Raineau.
Regarding instant claim 15, the limitations of the nonionic surfactant present in amounts ranging from 1.0% to 10.0% by weight would have been obvious over the cetyl alcohol present in an amount of 2% by weight (Composition 8 - [0191]), as taught by Raineau. Please see MPEP 2144.05.
Regarding instant claim 16, the limitation of the nonionic surfactant which is an ether of a fatty alcohol would have been obvious over the Steareth-2 (Brij 72 from Uniqema) (Compositions 6-8 - [0191]), as taught by Raineau.
Regarding instant claim 17, the limitation of the nonionic surfactant present at from 1.0% to 10% by weight would have been obvious over the Steareth-2 present in an amount of 3.33% in composition 6 and amounts of 2.1% by weight in composition 8 (Compositions 6-8 - [0191]), as taught by Raineau. Please see MPEP 2144.05.
Regarding instant claim 18, the limitation of the nonionic surfactant which is glyceryl monostearate would have been obvious over the PEG-200 glyceryl monostearate ([0057]), as taught by Raineau.
Regarding instant claim 19, the limitation of the nonionic surfactant present in a content of from 1.0% to 10% by weight would have been obvious over the PEG-200 glyceryl monostearate ([0057]) and the total content of surfactants in an overlapping range of 0.1% to 30% by weight ([0088]), as taught by Raineau. Please see MPEP 2144.05.
Regarding instant claim 20, the limitation of at least one liquid fatty phase would have been obvious over the paraffins ([0095] and [0191]), hydrocarbon-based oils including isoparaffins ([0153]), petroleum jelly ([0160]), sunflower oil, grapeseed oil, sesame oil ([0158]), as taught by Raineau.
Regarding instant claim 21, the limitation of at least one nonvolatile oil would have been obvious over the hydrocarbon-based oils including isoparaffins ([0153]), petroleum jelly ([0160]), sunflower oil, grapeseed oil, sesame oil ([0158]), as taught by Raineau.
Regarding instant claim 22, the limitation of the composition comprising less than 2.0% by weight of volatile oil would have been obvious over the compositions which do not contain any volatile oil (compositions 6-8 - [0191]), as taught by Raineau.
Regarding instant claim 23, the limitation of at least one colorant would have been obvious over the pigments including iron oxide ([0169]-[0170] and [0191]), as taught by Raineau.
Regarding instant claim 24, the limitation of the colorant present in a content ranging from 1.0% to 30.0% by weight would have been obvious over the iron oxide included in an amount of 7.14% by weight (compositions 6-8 - [0191]), as taught by Raineau. Please see MPEP 2144.05.
Regarding instant claim 25, the limitation of a film forming polymer would have been obvious over the water-soluble film-forming polymers including polyvinylpyrrolidones ([0123] and [0127]) and aqueous dispersions of vinylpyrrolidone ([0135]), as taught by Raineau.
Regarding instant claims 26, 27, and 28, the limitations of an eyelash product (instant claim 26), an assembly or kit (instant claim 27) and a process for coating keratin materials (instant claim 28) would have been obvious over the mascara compositions for making up keratin fibres ((Abstract, [0002], [0014], [0188], [0193]), and applying to eyelashes (claim 24), as taught by Raineau.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARADHANA SASAN whose telephone number is (571)272-9022. The examiner can normally be reached Monday to Friday from 6:30 am to 3:00 pm.
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615