DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed 06/02/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 –
Indefiniteness, Broad Limitation followed by Narrow Limitation
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.
Claim 3 is 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.
Regarding broad to narrow limitations, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 3 recites the broad recitations of the direct acid dye, and the claim also recites the CI numbers, which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The Applicant is encouraged to remove all parentheses from the claim.
The Examiner notes that claim 14, at line 3, contains the phrase “solids”, which is the broad limitation and the phrase “(or active material”), which is the narrow limitation. Accordingly, the Applicant is encouraged to remove the parenthesis from claim 14.
Response to Arguments
The 35 USC § 112 rejection was not traversed.
Claim Rejections - 35 USC § 103 - Obviousness
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.
Claim(s) 1-10, 15-19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dumousseaux et al (US 2010/0080766 A1) in view of Piot et al (WO 1995/015741 A1) and further in view of Hasebe et al (JP 2005/126381 A).
Dumousseaux taught a process for making up or caring for keratin fibers, by applying to keratin fibers [abstract and claim 1], a kit comprising a first composition comprising a continuous aqueous phase, and dyestuffs (e.g., water-soluble dyes) [0112, 0275]; and, a second composition comprising a continuous oily phase, silicone resins (e.g., reads on hydrophobic film-forming polymer) and volatile hydrocarbon-based oils [0303; claim 8; 0464]. Additionally, Dumousseaux generally taught organic pigments [0277-0278]. Base coat makeup and top coat compositions were disclosed [0004]. Furthermore, processes of applying a first and a second composition were taught [0039]. Dumousseaux was generally drawn to mascara [0003].
Although Dumousseaux generally taught organic pigments, Dumousseaux did not teach at least one direct acid dye; a pH of 2 to 6, as recited in claim 1a.
Piot taught an eyelash and eyebrow makeup composition [title and abstract], comprising, as an organic pigment, D&C acid red 95 (CI 45425) [page 6, line16].
Since Dumousseaux generally taught organic pigments, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Dumousseaux, D&C acid red 95 (CI 45425), as taught by Piot. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, it is prima facie obvious to select acid red 95 for incorporation into a composition, based on its recognized suitability for its intended use as an organic pigment, as taught by Piot et al.
Dumousseaux and Piot did not teach a pH of 2 to 6.
Nevertheless, Hasebe taught that the pH of mascara is usually in the range of 5 to 8.5, in terms of safety to the human body, prevention of corruption, affinity with eyelashes, and the like [page 4, last paragraph].
Since Dumousseaux was drawn to mascara, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Dumousseaux, a pH of 5 to 8.5, as taught by Hasebe. The ordinarily skilled artisan would have been so motivated, because the pH of mascara is usually in the range of 5 to 8.5, in terms of safety to the human body, prevention of corruption, affinity with eyelashes, and the like [page 4, last paragraph].
The instant claim 1 recites a pH from 2 to 6.
The instant claim 7 recites a pH from 2 to 5.
Hasebe taught a pH of 5 to 8.5. A prima facie case of obviousness exists because of overlap, as discussed above.
Dumousseaux, in view of Piot and Hasebe, reads on claims 1, 3, 7-8 and 20.
Claim 2 is rendered prima facie obvious because Dumousseaux taught the dyestuffs present in a content ranging from 0.01% to 30% by weight relative to the total weight of each composition [0280].
The instant claim 2 recites dyes present in a total content of less than 5 %, less than 3 % or between 0.01 % and 3 %.
Dumousseaux taught dyes present from 0.01 % to 30 %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Claims 4-6 are rendered prima facie obvious because Dumousseaux taught the aqueous phase comprising water and propylene glycol in a content ranging from 30% to 98% by weight, [0051].
The instant claim 4 recites water at greater than or equal to 40 %, 45 % to 90 %, or from 50 % to 85 %.
The instant claim 6 recites the pro-penetrating solvent in a content of less than or equal to 30 %, less than or equal to 25 % or from 4 % to 25 %.
Dumousseaux taught water and propylene glycol in a content ranging from 30% to 98% by weight. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 9 is rendered prima facie obvious because Dumousseaux taught silicone resins of the MDTQ type [0297], and trimethyl siloxysilicate (TMS) resins [0301].
Claim 10 is rendered prima facie obvious because Dumousseaux taught a silicone resin (e.g., dimethicone) at 5 % [Example 4].
The instant claim 10 recites resin at 4 % to 35 %, 6 % to 30 % or from 8 % to 25 %.
Dumousseaux taught a silicone resin at 5 %. A prima facie case of obviousness exists because of overlap, as discussed above.
Claim 15 is rendered prima facie obvious because Dumousseaux taught hydrocarbon-based oils, chosen from hydrocarbon-based oils containing from 8 to 16 carbon atoms, and especially branched C8-C16 alkanes [0464].
Claim 16 is rendered prima facie obvious because Dumousseaux taught oils, including hydrocarbon-based oils, at 0.5 % to 60 % [0460, 0463-0464].
The instant claim 16 recites volatile hydrocarbon-based oils at greater than or equal to 20 %.
Dumousseaux taught oils, including hydrocarbon-based oils, at 0.5 % to 60 %. A prima facie case of obviousness exists because of overlap, as discussed above.
Claim 17 is rendered prima facie obvious because Dumousseaux taught the second composition as anhydrous [Example 5].
Claim 18 is rendered prima facie obvious because Dumousseaux taught the second composition as a water-in-oil emulsion [0501].
Claim 19 is rendered prima facie obvious because Dumousseaux taught the dyestuffs comprising pigments and nacres [0276].
Response to Arguments
Applicant’s arguments with respect to the instant claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim(s) 11-12, 14 and 21are rejected under 35 U.S.C. 103 as being unpatentable over Dumousseaux et al (US 2010/0080766 A1), in view of Piot et al (WO 1995/015741 A1), further in view of Hasebe et al (JP 2005/126381 A) and further in view of Plos et al (WO 2020/099109 A1).
The 35 U.S.C. 103 rejection over Dumousseaux, Piot and Hasebe was previously discussed.
Additionally, Dumousseaux taught silicone resins [0302].
Dumousseaux did not teach silicone polyamides, as recited in claims 11-12 and 21.
Plos taught a kit for making up keratin materials, comprising a silicone polyamide in an oily phase [title], where the silicone polyamide corresponded to:
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300
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in which R4, R5, R6 and R7 represented, independently, a linear or branched C1 to C40 alkyl group, preferably a CH3, C2H5, n-C3H7 or isopropyl group, a polyorganosiloxane chain or a phenyl group optionally substituted with one to three methyl or ethyl groups, and m ranged from 1 to 700 or from 15 to 500 or from 50 to 200 and n ranged from 1 to 500 or from 1 to 100 and better still from 4 to 25 [claim 7].
The silicone polyamide was an active material, and ranged from 8 % to 30 % by weight [claim 10].
Since Dumousseaux taught making up or caring for keratin fibers, it would have been prima facie obvious to include, within the teachings of Dumousseaux, Plos’ silicone polyamide. The ordinarily skilled artisan would have been motivated to include a known active material in kits for making up keratin materials. The ordinarily skilled artisan would have been motivated to include, within Dummousseaux’s teachings, silicone polyamides at 8 % to 30 %, because at the said amounts, the silicone polyamide is an active material when included within kits for making up keratin materials, as taught by Plos [abstract, claims 7 and 10].
The instant claim 12 recites silicone polyamide at from 5 % to 30 %.
The instant claim 14 recites solid (or active material) polymers, plus dispersing polymers, at from 20 % to 45 %.
Plos taught silicone polyamides, as active material, at 8 % to 30 %. A prima facie case of obviousness exists because of overlap, as discussed above.
Response to Arguments
Applicant’s arguments with respect to the instant claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Dumousseaux et al (US 2010/0080766 A1), in view of Piot et al (WO 1995/015741 A1), further in view of Hasebe et al (JP 2005/126381 A) and further in view of Ilekti et al (US 2019/0091116 A1).
The 35 U.S.C. 103 rejection over Dumousseaux, Piot and Hasebe was previously described.
Although Dumousseaux taught an oily phase, Dumousseaux was silent the dispersion as recited in claim 13.
Nevertheless, Ilekti taught a composition, especially a cosmetic composition, for caring for and/or making up keratin materials, comprising at least: a non-aqueous medium containing at least one hydrocarbon-based oil, particles of at least one polymer that was surface-stabilized with a stabilizer, the polymer of the particles being a C1-C4 alkyl (meth) acrylate polymer; the stabilizer being an isobornyl (meth)acrylate polymer chosen from isobornyl (meth)acrylate homopolymer and statistical copolymers of isobornyl (meth)acrylate and of C1-C4 alkyl (meth)acrylate present in an isobornyl (meth)acrylate/C1-C4 alkyl (meth)acrylate weight ratio of greater than 4; and a hydrophobic film-forming polymer chosen from block ethylenic copolymers and hydrocarbon-based resins, and mixtures thereof.
Ilekti also related to a cosmetic process for making up and/or caring for keratin materials, and to the use of a dispersion of particles of at least one polymer that was surface-stabilized with a stabilizer in a non-aqueous medium containing at least one hydrocarbon-based oil, for preparing a mascara or eyeliner composition [abstract].
In Example 4, Ilketi taught a dispersion in isododecane, of methyl acrylate/ethyl acrylate/acrylic acid (11.7/75.6/12.7) copolymer particles, stabilized with an isobornyl acrylate/methyl acrylate/ethyl acrylate (92/4/4) statistical copolymer stabilizer. The oily dispersion contained in total (stabilizer+particles) 10% acrylic acid, 10% methyl acrylate, 60% ethyl acrylate and 20% isobornyl acrylate. As demonstrated in the experimental section, Ilketi’s disclosure made it possible to gain access to a mascara formulation or to a liner formulation which retained expected properties in terms of persistence, although containing a vehicle, and which advantageously made it possible to obtain a glossy, long-lasting, transfer-resistant deposit which had no residual tack and which was comfortable [0015].
Since Dumousseaux taught a mascara formulated with an oily phase, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Dumousseaux, Ilketi’s oily dispersion. The ordinarily skilled artisan would have been so motivated, because Ilketi’s oily dispersion made it possible to gain access to a mascara formulation which retained expected properties in terms of persistence, although containing a vehicle, and which advantageously made it possible to obtain a glossy, long-lasting, transfer-resistant deposit which had no residual tack and which was comfortable [0015].
Response to Arguments
Applicant’s arguments with respect to the instant claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/CELESTE A RONEY/ Primary Examiner, Art Unit 1612
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