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 1-7.
Claim Rejections - 35 USC § 101 / § 112 – Hybrid Claim
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
1. Claim 7 rejected under 35 U.S.C. 101 because the claimed invention is not directed to a single statutory class.
The claim(s) are directed to neither a “process” nor a “machine”, but rather embraces or overlaps two different statutory categories of invention set forth under that statue, which is drafted so as to set forth the statutory classes of invention in the alternative only. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
Claim 7 recites a “method for increasing the stability of a composition comprising (A) an oily component with a melting point of 55°C or higher and (B) a polyhydric alcohol” however, the method is presented without any active steps. The claim simply recites “by the additional presence of (C) an acrylic acid-based water- soluble polymer” which is neither a process nor a machine, where no active steps of the presence of an acrylic acid-based water- soluble polymer are claimed.
Claim 7 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.
A single claim which recites both a product and a method of using that product is indefinite under 35 USC 112, second paragraph. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
Note, for the sake of compact prosecution, claim limitations will be interpreted as intended use limitations or product by process limitations.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1. Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yakuta et al. (JP 11-236316, Aug. 31, 1999) (hereinafter Yakuta) (ISR Reference).
Yakuta discloses a composition comprising an oily solid cosmetic that has excellent
adhesion to the skin and lips, smooth spreadability, no squeaky feeling at the time of application, and excellent spreadability (¶ [0004]). Example 8, a lipstick stick, contained microcrystalline wax, paraffin wax, dipropylene glycol, alkyl-modified carboxyvinyl polymer, and a cosmetic component (¶ [0037]).
In regards to the method of claim 7, the claim does not have methods steps to convey how this method would be performed. See Indefiniteness Rejection above. However, the composition of the reference comprises substantially the same components as the composition of the instant claim. Therefore, the composition of the reference would inherently have an increased stability because it comprises substantially the same components mixed together as that of the instant claim.
The prior art anticipates the indicated claims because it discloses a composition in the form of a stick comprising microcrystalline wax and paraffin wax (i.e., claimed component A), along with dipropylene glycol (i.e., claimed component B), and finally alkyl-modified carboxyvinyl polymer (i.e., claimed component C) as instantly claimed.
2. Claim(s) 1-2, 4, and 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (JP 01-160914, Jun. 23, 1989) (hereinafter Nakamura) (ISR Reference).
Nakamura discloses a cosmetic having a small loss of an ultraviolet absorbent flowing out from the skin or the like due to perspiration, water or the like, a high ultraviolet absorbing ability, no stickiness when applied to the skin or the like and a good use feeling (Pg. 3). Example 8, a lipstick, contained crosslinked polyacrylic acid, yellow bee’s wax, and propylene glycol (Pg. 10).
In regards to the method of claim 7, the claim does not have methods steps to convey how this method would be performed. See Indefiniteness Rejection above. However, the composition of the reference comprises substantially the same components as the composition of the instant claim. Therefore, the composition of the reference would inherently have an increased stability because it comprises substantially the same components mixed together as that of the instant claim.
The prior art anticipates the indicated claims because it discloses a composition in the form of a stick comprising crosslinked polyacrylic acid (i.e., claimed component C), yellow bee’s wax (i.e., claimed component A), along with propylene glycol (i.e., claimed component B) as instantly claimed.
3. Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaminuma et al. (JP 2008-050271, Mar. 6, 2008) (hereinafter Kaminuma) (ISR Reference).
Kaminuma discloses a makeup cosmetic having remarkably improved usability, safety, and stability (Overview). Example 25, a stick foundation, contained ceresin, dipropylene glycol, and polyacrylic alkyl (¶ [0069]).
In regards to the method of claim 7, the claim does not have methods steps to convey how this method would be performed. See Indefiniteness Rejection above. However, the composition of the reference comprises substantially the same components as the composition of the instant claim. Therefore, the composition of the reference would inherently have an increased stability because it comprises substantially the same components mixed together as that of the instant claim.
The prior art anticipates the indicated claims because it discloses a composition in the form of a stick comprising ceresin (i.e., claimed component A), dipropylene glycol (i.e., claimed component B), along with polyacrylic alkyl (i.e., claimed component C) as instantly claimed.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yakuta et al. (JP 11-236316, Aug. 31, 1999) (hereinafter Yakuta) (ISR Reference) in view of Vatter et al. (US 2001/0003586, Jun. 14, 2001) (hereinafter Vatter).
The teachings of Yakuta are discussed above. Yakuta further discloses wherein suitable cosmetic ingredients for use include antiphlogistics (i.e., anti-inflammatories) (¶ [0023]).
Yakuta differs from the instant claims insofar as not explicitly disclosing wherein the composition comprises a steroid.
However, Vatter discloses cosmetic compositions such as lipstick compositions which have improved feel (Abstract). The composition may include optional ingredients. Suitable optional ingredients include anti-inflammatory agents such as hydrocortisone (¶ [0066]).
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. As discussed above, Yakuta discloses wherein the composition may comprise antiphlogistics. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Yakuta to comprise a steroid such as hydrocortisone, since it is a known anti-inflammatory agent for use in lipsticks as taught by Vatter.
2. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (JP 01-160914, Jun. 23, 1989) (hereinafter Nakamura) (ISR Reference) in view of Vatter et al. (US 2001/0003586, Jun. 14, 2001) (hereinafter Vatter).
The teachings of Nakamura are discussed above. Nakamura further discloses wherein suitable additional components for use include anti-inflammatory agents (Pg. 6).
Nakamura differs from the instant claims insofar as not explicitly disclosing wherein the composition comprises a steroid.
However, Vatter discloses cosmetic compositions such as lipstick compositions which have improved feel (Abstract). The composition may include optional ingredients. Suitable optional ingredients include anti-inflammatory agents such as hydrocortisone (¶ [0066]).
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. As discussed above, Nakamura discloses wherein the composition may comprise anti-inflammatory agents. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Nakamura to comprise a steroid such as hydrocortisone, since it is a known anti-inflammatory agent for use in lipsticks as taught by Vatter.
3. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaminuma et al. (JP 2008-050271, Mar. 6, 2008) (hereinafter Kaminuma) (ISR Reference) in view of Vatter et al. (US 2001/0003586, Jun. 14, 2001) (hereinafter Vatter).
The teachings of Kaminuma are discussed above. Kaminuma further discloses wherein suitable other components that can be blended include anti-inflammatory agents (¶ [0048]).
Kaminuma differs from the instant claims insofar as not explicitly disclosing wherein the composition comprises a steroid.
However, Vatter discloses cosmetic compositions which have improved feel (Abstract). Cosmetics include foundation (¶ [0011]). The composition may include optional ingredients. Suitable optional ingredients include anti-inflammatory agents such as hydrocortisone (¶ [0066]).
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. As discussed above, Kaminuma discloses wherein the composition may comprise anti-inflammatory agents. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Kaminuma to comprise a steroid such as hydrocortisone, since it is a known anti-inflammatory agent for use in cosmetics as taught by Vatter.
Conclusion
Claims 1-7 are rejected.
No claims are allowed.
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
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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