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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I (claims 1 and 3-7) in the reply filed on 06/23/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claim 2 is cancelled; claims 8-10 are withdrawn.
As such, the restriction is made final.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 03/26/2024 has been considered here.
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.
Claims 1, 3-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019142826 (Furuse, 2019; machine translation previously provided from PE2E via FIT).
In regards to claims 1 and 3, Furuse teaches a water in oil composition having a light transmittance in the visible light region of 80% or more for the skin and lips (see Furuse, abstract; claim 7) (i.e., a transparent water-in-oil lip cosmetic composition). The composition comprises water in an amount from 5 to 30% by mass (see Furuse, page 4, paragraph 6). It is taught that the composition comprises glycerin in an amount of 34.5% by mass in an example (see Furuse, page 9, first example). It is also taught that the composition comprises an oil, such as octyldodecanol (see Furuse, paragraph bridging pages 3-4), and that a mix of 50% of one oil and isopropyl isostearate is preferred (see Furuse, page 4, paragraph 3). It would be within the purview of one with ordinary skill in the art to envisage an oil phase of 50% of octyldodecanol and isopropyl isostearate using the teachings of Furuse. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further in regards to claim 1, it is taught that the oil phase of the composition comprises a lipophilic surfactant and the oil (see Furuse, page 4, paragraph 8). It is taught that the amount of the surfactant is from 1 to 5% by mass of the total composition (see Furuse, page 3, paragraph 5). The oil is taught to comprise from 5 to 30% by mass of the total composition (see Furuse, page 4, paragraph 5). With both of these combined, the total mass of the oil phase would be from 6 to 35% by mass of the total composition. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 4-5, the lipophilic surfactant is taught to be a stearate-based emulsifer, for example dipolyhydroxystearate PEG-30 (see Furuse, page 3, paragraph 5). It is also taught that the oil phase comprises a silicone oil in an amount of 2% by mass or less. It is also taught that the lipophilic surfactant (i.e., the stearate-based emulsifier) is preferably used in an amount from 0.5 to 3% by mass of the total amount of the composition (see Furuse, page 3, paragraph 5). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Using these teachings, one with ordinary skill in the art is able to easily envisage an embodiment wherein the amount of the silicone-based emulsifier is within the claimed range of 2-4% by weight and the stearate-based emulsifier is within 0.1 to 1% by weight of the total composition.
In regards to claim 7, the composition of Furuse is taught to be in the form of a lip gel (see Furuse, page 5, paragraph 8). Using the broadest reasonable interpretation of “lip gloss” as it is not defined in the specification, a lip gel is understood to read on lip gloss as it has the effect of glossing the lips.
Furuse does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Furuse with a reasonable expectation of success to obtain the technical feature of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the technical feature of the instant claims with predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2019142826 (Furuse, 2019; machine translation provided from PE2E via FIT) as applied to claims 1, 3-5, and 7 above, and further in view of JP 2009249338 A (Yamazaki, 2009; machine translation currently provided by PE2E via FIT).
The teachings of Furuse have been described supra. Furuse further teaches that the composition comprises a coloring agent or pigment, specifically cyanocobalamin (see Furuse, page 5, paragraphs 6-7)
The teachings of Furuse are silent on a pigment being used in an amount from 0.1 to 1% by weight of the total composition.
Yamazaki teaches a lip gloss composition (see Yamazaki, page 14, final paragraph) comprising cyanocobalamin as a vitamin(see Yamazaki, page 8, paragraph 2) in an amount from 0.01% by mass or more, or 1.0% by mass or more (see Yamazaki, page 6, paragraph 6). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 6, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Furuse and Yamazaki to formulate the instant composition as both are drawn to lip cosmetic formulations comprising the same compound (i.e., cyanocobalamin). It would be within the purview of one with ordinary skill in the art to adjust the amount of cyanocobalamin in Furuse according to the teachings of Yamazaki as the amount of vitamin effects the strength of cell membranes and prevention of aging by promoting tissue regeneration (see Yamazaki, page 6, paragraph 6). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the teachings of Furuse with Yamazaki according to the known method of making a lip cosmetic composition (e.g., see Furuse, page 6) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
Prosecution Insights