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 . Claims included in prosecution are claims 1-4 and 6-7.
Previous Rejections
Applicants' arguments, filed 7/3/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 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.
1. Claim(s) 1, 4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claude-Foly et al. (US 2013/0295148, Nov. 7, 2013) (hereinafter Claude-Foly).
Claude-Foly discloses a solid cosmetic makeup composition comprising: at least 30% by weight of a pulverulent phase relative to its total weight, and at least 15% by weight of non-volatile oil(s) relative to its total weight (Abstract). Preferably, the composition is in the form of lipstick or other a care and/or makeup product for the lips (¶ [0013]). The composition preferably comprises a structuring agent of the liquid fatty phase such as a wax (¶ [0077-0078]). Suitable waxes include microcrystalline waxes, paraffins and, polyethylene waxes (satisfies claim 4) (¶ [0082]). The pulverulent phase is formed from fillers (¶ [0137]). Suitable fillers include spherical fillers such as polyacrylic acid powder (satisfies claim 6) (¶ [0146 & 0155]). The composition must be suitable for topical application to the skin or the lips (¶ [0232]). Preferably, the composition comprises less than 5% by weight of water (¶ [0240]). According to one particular embodiment, the composition comprises at least one moisturizer (also known as a humectant) (¶ [0242]). The moisturizer could be present in the composition in a content ranging from 0.1% to 15% by weight (¶ [0243]). Preferred moisturizers include dipropylene glycol (¶ [0244]). The example compositions were made via mixing (¶ [0264]).
The prior art is not anticipatory insofar as this combination must be selected from different lists/locations in the reference. It would have been obvious, however, to have made an composition comprising an oily component with a melting point of 55°C or higher; a polyhydric alcohol; and an acrylic acid-based water-soluble polymer, as instantly claimed, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding the amount of polyhydric alcohol recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, moisturizers such as dipropylene glycol are included in Claude-Foly’s composition in an amount of 0.1% to 15% by weight. Accordingly, because the amount recited in the instant claims overlaps with the range disclosed by Claude-Foly, the with the range disclosed by Claude-Foly meets the instantly recited limitations.
Regarding the amount of water recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition preferably comprises less than 5% by weight of water. Accordingly, because the amount recited in the instant claims overlaps with the amount disclosed by Claude-Foly, the with the amount disclosed by Claude-Foly meets the instantly recited limitations.
Accordingly, the teachings of Claude-Foly render obvious claims 1, 4, and 6.
2. Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claude-Foly et al. (US 2013/0295148, Nov. 7, 2013) (hereinafter Claude-Foly) in view of How Products Are Made (Vol. 1, Lipstick Forum, Feb. 4, 2006) (hereinafter HPM).
The teachings of Claude-Foly are discussed above.
Claude-Foly differs from the instant claim insofar as not explicitly disclosing wherein the composition comprises a steroid.
However, HPM discloses that lipstick and lip balm are generally is sold in tubes with the lip stick tube being generally 3 inches (7.6 centimeters) in length and about .50 inch (1.3 centimeters) in diameter and the lip balms being generally slightly smaller in both length and diameter (Background).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the composition of Claude-Foly which is applicable to the lips and preferably in the form of lipstick to be contained in tubes such as those disclosed by HPM since such tubes are the known and common tubes containing lipstick or lip balm as taught by HPM.
Accordingly, the teachings of Claude-Foly and HPM render obvious claim 2.
3. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claude-Foly et al. (US 2013/0295148, Nov. 7, 2013) (hereinafter Claude-Foly) in view of Graber (Chapped Lips – How to Protect Your Pucker, Jan. 22, 2018) (hereinafter Graber).
The teachings of Claude-Foly are discussed above.
Claude-Foly differs from the instant claim insofar as not explicitly disclosing wherein the composition comprises a steroid.
However, Graber discloses that an added dose of hydrocortisone in your lip balm can jumpstart the healing process of especially stubborn dry lips (Pg. 2).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the lip care composition of Claude-Foly which is applied to the lips to comprise a steroid such as hydrocortisone motivated by the desire to utilize its healing properties for dry lips as taught by Graber.
Accordingly, the teachings of Claude-Foly and Graber render obvious claim 3.
4. Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claude-Foly et al. (US 2013/0295148, Nov. 7, 2013) (hereinafter Claude-Foly) in view of Krell (Value-Added Products from Beekeeping, 1996) (hereinafter Krell).
The teachings of Claude-Foly are discussed above.
Claude-Foly differs from the instant claim insofar as not explicitly disclosing a method of suppressing separation of the composition comprising combining the components.
However, Krell discloses that proper mixing of the ingredients is of the utmost importance in the production of stable cosmetic products (Sec. 9.4.4).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have used the composition of Claude-Foly in a method of suppressing separation of a composition since Claude-Foly discloses mixing the components of their composition and mixing is essential to cosmetic product stability as taught by Krell.
Accordingly, the teachings of Claude-Foly and Krell render obvious claim 7.
Response to Arguments
Applicant’s arguments with respect to claims 1-4 and 6-7 have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made. The teachings of Claude-Foly are applied to meet the requirements of the new limitations of wherein “the total amount of the polyhydric alcohol is 3 mass% or more based on the total mass of the composition; and the composition has a water content that is 5 mass% or less based on the total mass of the composition”. The teachings of HPM and Graber are applied to meet the various dependent combinations that result from this amendment. Further, the teachings of Krell are applied to meet the requirements of the new limitations of wherein “a method for suppressing separation of an oil-based solid composition for external use”.
Conclusion
Claims 1-4 and 6-7 are rejected.
No claims are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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