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
Claims 1-20 are currently pending and amendments to the claims filed on 07/02/2026 are acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/02/2026 was filed before the mailing date of the instant action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Withdrawn rejections:
Applicant's amendments and arguments filed 07/02/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
New Grounds of Rejections --- as necessitated by amendment
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, 4, 9 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021) in view of Lamberty et al. (US2006/0013840A1).
Applicant claims the below claims 1 and 9 filed on 07/02/2026:
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For examination purpose,
Please note that the term “kit” of instant claim 9 and a statement of intended use “topical application to eyelash and/or eyelash follicles” are not given any patentable weight, as it is directed to a cosmetic composition of instant claim 1.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Gondran discloses a topical cosmetic composition for comprising an extract of sandalwood in a physiologically acceptable medium (e.g., e.g., [0111] and [0115]-[0117]) wherein the sandalwood extract reads on the claimed OR2AT4 agonist active agent and the medium includes coloring agent, pigment, or film-forming polymers, etc. (e.g., [0113]) that reads on the claimed pigment; the composition is provided in the form of an oil-in-water emulsion, a water-in-oil emulsion, etc., (e.g., [0123]) wherein oil is the discontinuous phase and water is the continuous phase in the oil-in water emulsion, and water is discontinuous phase and oil is the continuous phase in the water-in-oil emulsion, and thus, the said emulsion reads on the claimed continuous phase and discontinuous phase, the composition further comprises glyceryl acrylate/acrylic acid copolymer that reads on the claimed acrylate film former (instant claims 1 and 9 (in part), and claims 3, 4 and 13).
However, Gondran does not expressly teach species of film former of instant clams 1, 9, 11 and 13-16; and the amount of instant claim 12. The deficiencies are cured by Lamberty.
Lamberty discloses cosmetic gel which dries to a dry, smooth film upon topical application and a method for imparting color to the eyebrows and eyelashes (abstract); the gel comprises gellants, one or more film formers, and colored fibers wherein the one or more film former includes one or more acrylate copolymers such as acrylate/octylacrylamide copolymers and acrylate/vinyl acetate copolymers that read on the claimed acrylate film formers; ethylene/acrylic acid copolymer ([0023]) which reads on the claimed polyolefin-grafted film former in an amount of about 0.1 to about 20% to provide a smooth, dry film upon application of the cosmetic gel to a substrate. ([0024]) which overlaps the instant range of 5-20% or 15 to 30% or 0.1 to 50% (instant claims 1, 9 and 11-16). MPEP2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
It would have been obvious to modify the composition of Gondran with addition of polyolefin-grafted film former and acrylate film former in order to provide a smooth, dry film upon application of the cosmetic gel to a substrate, as taught by Lamberty.
In light of the foregoing, instant claims 1, 3, 4, 9 and 11-16 are obvious over Gondran in view of Lamberty.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021) in view of Lamberty et al. (US2006/0013840A1).
Applicant claims the below claim 2 filed on 07/02/2026:
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Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Gondran discloses a topical cosmetic composition for comprising Gondran teaches a topical composition containing Sandalwood as an OR2AT4 agonist active agent is in the physiologically acceptable medium that is suitable for skin or appendages such as eyelashes or eyebrows (e.g., [0111]-[0112] and [0120]) which reads on the claimed cosmetically acceptable vehicle; the composition can be applied by in particular topical route (e.g., [0115]-[0116]); and the composition is provided in the form of serum (e.g., [0124]) that reads on the claimed serum.
However, Gondran does not expressly teach species of film former of instant clam 2. The deficiency is cured by Lamberty.
Lamberty discloses cosmetic gel which dries to a dry, smooth film upon topical application and a method for imparting color to the eyebrows and eyelashes (abstract); the gel comprises gellants, one or more film formers, and colored fibers wherein the one or more film former includes one or more acrylate copolymers such as acrylate/octylacrylamide copolymers and acrylate/vinyl acetate copolymers that read on the claimed acrylate film formers; ethylene/acrylic acid copolymer which reads on the claimed polyolefin-grafted film former ([0023]) to provide a smooth, dry film upon application of the cosmetic gel to a substrate. ([0024]) (instant claim 2).
It would have been obvious to modify the composition of Gondran with addition of polyolefin-grafted film former and acrylate film former in order to provide a smooth, dry film upon application of the cosmetic gel to a substrate as taught by Lamberty.
In light of the foregoing, instant claim 2 is obvious over Gondran in view of Lamberty.
Claims 5-7, 10 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021) in view of Lamberty et al. (US2006/0013840A1).
Applicant claims the below claim 5 filed on 07/02/2026:
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Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Gondran teaches a method of topically applying a composition containing sandalwood as an OR2AT4 agonist in a physiologically acceptable medium to the surface of eyelashes or eyebrows (e.g., [0117] and [0120]) in order to improve the appearance of the skin such as eye area (e.g., [0019], [0118] and [0139]), and the cosmetic use of a composition increases the expression of olfactory receptors (OR2AT4) in the skin including eye area (e.g., [0118] and [0140]), which reads on the claimed method using OR2AT4 agonist (instant claim 5 (in part) and instant 10); and the composition is applied twice daily ([0173]) which reads on the claimed at least once daily application (instant claim 6); and the OR2AT4 agonist plays a role in hair growth (e.g., [0021]) and thus applying the composition containing sandalwood as an OR2AT4 agonist to eyelash implicitly improves lash growth rate (instant claim 7).
However, Gondran does not expressly teach species of film former of instant clams 5 and 17-19. The deficiencies are cured by Lamberty.
Lamberty discloses cosmetic gel which dries to a dry, smooth film upon topical application and a method for imparting color to the eyebrows and eyelashes (abstract); the gel comprises gellants, one or more film formers, and colored fibers wherein the one or more film former includes one or more acrylate copolymers such as acrylate/octylacrylamide copolymers and acrylate/vinyl acetate copolymers that read on the claimed acrylate film formers; ethylene/acrylic acid copolymer ([0023]) which reads on the claimed polyolefin-grafted film former in an amount of about 0.1 to about 20% to provide a smooth, dry film upon application of the cosmetic gel to a substrate. ([0024]) which overlaps the instant range of 5-20% in order to provide a smooth, dry film upon application of the cosmetic gel to a substrate ([0024]) (instant claims 5 and 17-19). MPEP2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
It would have been obvious to modify the composition of Gondran with addition of polyolefin-grafted film former and acrylate film former in order to provide a smooth, dry film upon application of the cosmetic gel to a substrate as taught by Lamberty.
In light of the foregoing, instant claims 5-7, 10 and 17-19 are obvious over Gondran in view of Lamberty.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021) in view of Lamberty et al. (US2006/0013840A1).
Applicant claims the below claim 8 filed on 07/02/2026:
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Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Gondran teaches a method of topically applying a composition containing sandalwood as an OR2AT4 agonist in a physiologically acceptable medium to the surface of eyelashes or eyebrows (e.g., [0117] and [0120]) in order to improve the appearance of the skin such as eye area (e.g., [0019], [0118] and [0139]), and the cosmetic use of a composition increases the expression of olfactory receptors (OR2AT4) in the skin including eye area (e.g., [0118] and [0140]), which reads on the claimed method using OR2AT4 agonist and the composition is applied twice daily ([0173]); and the OR2AT4 agonist plays a role in hair growth (e.g., [0021]) and thus applying the composition containing sandalwood as an OR2AT4 agonist to eyelash implicitly improves lash growth rate that embraces improving the length, thickness, number and density of eyelash and eyebrow (instant claim 8, in part).
However, Gondran does not expressly teach species of film former of instant clam 8. The deficiency is cured by Lamberty.
Lamberty discloses cosmetic gel which dries to a dry, smooth film upon topical application and a method for imparting color to the eyebrows and eyelashes (abstract); the gel comprises gellants, one or more film formers, and colored fibers wherein the one or more film former includes one or more acrylate copolymers such as acrylate/octylacrylamide copolymers and acrylate/vinyl acetate copolymers that read on the claimed acrylate film formers; ethylene/acrylic acid copolymer ([0023]) which reads on the claimed polyolefin-grafted film former in an amount of about 0.1 to about 20% to provide a smooth, dry film upon application of the cosmetic gel to a substrate. ([0024]) in order to provide a smooth, dry film upon application of the cosmetic gel to a substrate ([0024]) (instant claim 8). MPEP2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
It would have been obvious to modify the composition of Gondran with addition of polyolefin-grafted film former and acrylate film former in order to provide a smooth, dry film upon application of the cosmetic gel to a substrate as taught by Lamberty.
In light of the foregoing, instant claim 8 is obvious over Gondran in view of Lamberty.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021) in view of Lamberty et al. (US2006/0013840A1) and further in view of Cheng et al. (US2010/0233301A1).
Although Gondran and Lamberty teach acrylate polymer as a film former as noted above, the applied art does not expressly teach ammonium acrylate of instant claim 20. The deficiency is cured by Cheng.
Cheng discloses topical compositions containing fermented extracts of Traditional Chinese Medicinal (TCM) ingredients for improving the appearance and skin condition of the user (abstract); and the composition further comprises fermented extracts including g Santalum album stem (=sandal wood) ([0021]) and at least one film formers such as ammonium acrylates, etc. ([0041]).
It would have been obvious to replace acrylate film polymer of Gondran/Lamberty with ammonium acrylate copolymer film former of Cheng and such replacement would be a matter of choice or design or would be obvious variation, and therefore replacement and/or obvious variation would have yielded no more than the predictable results, in the absence of evidence to the contrary.
In light of the foregoing, instant claim 20 is obvious over Gondran/Lamberty and further in view of Cheng.
Response to Arguments
Applicant’s arguments have been fully considered, but are moot in view of new references of Lamberty and/or Cheng.
Conclusion
The instant claims are not allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/ Primary Examiner, Art Unit 1613
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