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 .
Summary
Claims 1-19 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application was filed on May 22, 2024 is a 371 of PCT/EP2022/082873 filed November 22, 2022. The current application claims foreign priority to FR2112460 filed November 24, 2021.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on May 22, 2024 is acknowledged. A signed copy of the document is attached to this office action.
Claim Objections
Claims 6 and 19 are objected to because of the following informalities:
Claim 6, please delete the << and >> within the text, and insert “…of oil(s) / pigment(s) is between…”.
Claim 19, please use lowercase with the text “…crosspolymer.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 non-obviousness.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (KR102220752B1, published in March 2021) in view of Pujol et al. (US2020/0129413A1, published in April 2020).
[The Examiner is going to introduce each reference and then combine them where appropriate to reject the instant claims. For ease of examination, the Examiner relied upon US2022/0047473A1 as an equivalent English translation of the KR102220752B1 publication. All citations henceforth to Jeong et al. are locations in the US application.]
1. Jeong et al.
Jeong et al. is considered the closest prior art to the present invention as it teaches cosmetic composition having capsule (see title). Furthermore, Jeong et al. disclose a cosmetic composition according to an embodiment of the present disclosure stably contains capsules. In the cosmetic composition according to an embodiment, the capsule where an active ingredient such as a colorant is loaded has excellent
physical and chemical stability. Therefore, the cosmetic composition does not have problems of formulation instability which may be caused by contact and reaction between a component in the capsule and a component outside the capsule, even when kept for a long period of time. In addition, the cosmetic composition can obtain a dramatic makeup effect when the colorant loaded in the capsule is discharged only by frictional force generated during use of the cosmetic (see abstract).
2. Pujol et al.
Pujol et al. teach dispersions comprising at least one non-volatile hydrocarbon oil (see title). In addition, Pujol et al. disclose a dispersion containing a dispersed phase comprising drops and a continuous aqueous phase, preferably in the form of gel, in which the drops comprise a fatty phase containing at least one gelling agent, and in which the fatty phase comprises at least one non-volatile hydrocarbon oil H1 containing
more than 90%, and preferably more than 95%, fatty acids having at least 18 carbon atoms and preferably at least 20 carbon atoms (see abstract).
Combination of Jeong et al. and Pujol et al.
Regarding instant claim 1, Jeong et al. and Pujol et al. teach a dispersion comprising a fatty phase in the form of droplets dispersed in a continuous aqueous phase. The necessary citations of Jeong et al. and Pujol et al. that pertain to instant claim 1 are presented in Table I.
Table I
Instant Claim 1
Jeong et al. and Pujol et al. Citations
A dispersion comprising a fatty phase in the form of droplets dispersed in a continuous aqueous phase, the dispersed phase and the continuous phase being non-miscible with each other at ambient temperature and atmospheric pressure,
Jeong et al. disclose that the cosmetic composition may be an oil-in-water composition or a water-in-oil composition (see paragraph [0040] and abstract within Jeong et al.).
Pujol et al. disclose a dispersion containing a dispersed phase comprising drops and a continuous aqueous phase, wherein the drops
comprise a fatty phase containing at least one gelling agent, and wherein the fatty phase comprises at least one nonvolatile hydrocarbon oil H1 containing more than 90% of
fatty acids having at least 18 carbon atoms (see claim 1 and abstract within Pujol et al.).
wherein the droplets comprise at least one shell and pigments, said shell being formed of at least one anionic polymer comprising at least one carboxylic acid function and of at least one cationic polymer comprising at least two amine functions, characterized in that wherein the quantity of amine functions contributed by the cationic polymer in the fatty phase is between 10.8 µmol and 32.4 µmol per gram of fatty phase.
Jeong et al. disclose within Example 1 a cosmetic with the following ingredients:
anionic polymer – carbomer (derived from acrylic acid comprising at least one carboxylic acid function)
cationic polymer – amodimethicone with two amine functions (see Figure 1)
Figure 1
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pigments
(see Example 1 within Jeong et al. and PTO-892 NPL U).
The scope of the disclosure allows for a fatty phase (oil phase) that expands Example 1 (see paragraph [0033] within Jeong et al.). Furthermore, Jeong et al. disclose additional components that can be included with the cationic polymer within the fatty phase (see paragraph [0037] within Jeong et al.).
Therefore, the following cosmetic can exist according to the Jeong et al. disclosure:
A. 20% fatty phase comprising 0.3 wt% amodimethicone (same level of the cationic polymer as in Example 1).
B. assuming 100 g sample that would correspond to 0.3 g amodimethicone / 1.111 g/mmol 1.111 g/mmol [(0.9 mmol/g number of amino chains per amodimethicone)-1 from the KF-8004 Product Data Sheet NPL supplied by the Applicant] or 0.27 mmol. [0.27 mmol / 20 g fatty phase] = 0.013 5 = (13.5 mmol / g of fatty phase).
Pujol et al. also disclose that the anionic and cationic polymers comprise the shell surrounding the drops (see paragraphs [0055-0057], [0059-0060], [0070], and [0103] within Pujol et al.).
Therefore, a skilled artisan (POSITA; person of ordinary skill in the art) would consult the disclosures of Jeong et al. and Pujol et al. to teach all the elements of instant claim 1.
The remainder of the instant claims which are directly dependent on claim 19 are taught in full by the combination of Jeong et al. and Pujol et al.
Regarding instant claim 2, Jeong et al. and Pujol et al. teach the dispersion according to claim 1, wherein the quantity of amine functions contributed by the cationic polymer in the fatty phase is between 14.4 µmol and 28.8 µmol, per gram of fatty phase. Please see the hypothetical calculation within the discussion of instant claim 1 (Table 1; 25.424 mmol / g).
Regarding instant claim 3, Jeong et al. and Pujol et al. teach the dispersion according instant claim 1, wherein the fatty phase comprises between 1% and 60%, by weight of pigment(s) relative to the total weight of the fatty phase. Jeong et al. disclose 10 weight percent of the powder phase, comprising pigments (see Example 1 within Jeong et al.).
Regarding instant claim 4, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the droplets having a diameter greater than or equal to 150 µm represent a volume greater than or equal to 60% of the total volume of the dispersed phase and/or at least 60% of the droplets have a mean diameter greater than or equal to 150 µm. Pujol et al. disclose mean diameters of the droplets having a diameter greater than or equal to 150 µm represent a volume greater than or equal to 60% of the total volume of the dispersed phase and/or at least 60% of the droplets have a mean diameter greater than or equal to 150 µm (see paragraphs [0016-0017] within Pujol et al.).
Regarding instant claim 5, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, comprising between 1% and 99.25% by weight of oil(s) relative to the total weight of the fatty phase. Jeong et al. disclose the oil phase part in the composition may be included in an amount of 1 % to 95% by weight, based on the
total weight of the composition (see paragraph [0033] within Jeong et al.).
Regarding instant claim 6, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the weight ratio of oil(s) / pigment(s) is between 1.2 and 2.1. Jeong et al. disclose a ratio of oil(s)/pigment(s) of 2.040 [(20.4 / 10) = 2.04; see Example 1 within Jeong et al.].
Regarding instant claim 7, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the droplets comprise a core that is liquid or at least partly gelled or at least partly thixotropic, said core being monophase or comprising an intermediate droplet of an intermediate phase and at least one inner droplet of an inner phase arranged in the intermediate droplet, the intermediate phase and the inner phase being non-miscible with each other at ambient temperature and atmospheric pressure, the pigment(s)being included in the intermediate phase and/or inner phase. Pujol et al. disclose a dispersion containing a dispersed phase comprising drops and a continuous aqueous phase … (see claim 1 and abstract within Pujol et al.). Furthermore, Pujol et al. disclose advantageously, a fatty phase gelling agent of the invention is a thixotropic gelling agent or able to impart thixotropic behaviour to the solution containing the same. Said thixotropic gelling agent is selected in particular from among optionally hydrophobic-treated pyrogenated silicas described in the foregoing (see paragraph [0224] within Pujol et al.). Additionally, Pujol et al. disclose a dispersion of the invention and in particular the core of the drops (i.e. the fatty phase), may
also comprise at least one fragrance … (see paragraph [0276] within Pujol et al.). Thus, from the Pujol et al. disclosure the core is monophasic and all oils are soluble within the fatty phase.
Regarding instant claim 8, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the fatty phase also comprises at least one lipophilic gelling agent. Pujol et al. disclose that the gelling agents able to be used in the invention can be organic or mineral, polymeric or molecular lipophilic gelling agents (see paragraph [0139] within Pujol et al.).
Regarding instant claim 9, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, comprising from 0.5% to 70% by weight of lipophilic gelling agent(s) relative to the total weight of the fatty phase in which they are contained. Pujol et al. disclose a dispersion of the invention can comprise from 0.1 % to 75%... by weight of gelling agent(s) relative to the total weight of the dispersion (see paragraph [0225] within Pujol et al.).
Regarding instant claim 10, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the cationic polymer is a silicone polymer modified by a primary, secondary or tertiary amine function. Jeong et al. disclose the cationic silicone polymer, amodimethicone (see Example 1 within Jeong et al. and Table I within instant claim 1).
Regarding instant claim 11, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the anionic polymer is a polymer comprising monomer units comprising at least one chemical carboxylic acid function. Jeong et al. disclose the anionic polymer, carbomer (see Example 1 within Jeong et al.).
Regarding instant claim 12, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the continuous aqueous phase, even said dispersion, does not comprise a surfactant. Jeong et al. disclose a cosmetic composition that does not comprise a surfactant (see Example 1 within Jeong et al.).
Regarding instant claim 13, Jeong et al. and Pujol et al. teach a method for preparing the dispersion of instant claim 1, comprising the following steps:
- optionally, heating an oily fluid FI and/or an aqueous fluid FE, to a temperature of 40°C to 150°C;
- contacting the aqueous fluid FE with the oily fluid FI; and
- forming droplets of the fatty phase, composed of the oily fluid FI, dispersed in a continuous aqueous phase composed of the aqueous fluid FE, said droplets comprising a shell isolating the core of the fatty phase droplets of the dispersion, wherein:
- the oily fluid FI comprises at least one oil, at least one pigment and at least one cationic polymer, and optionally also at least one lipophilic gelling agent, the quantity of amine functions contributed by the cationic polymer, in the fatty phase, being between 10.8 µmol and 32.4 µmol per gram of fatty phase, and
- the aqueous fluid FE comprises at least water and at least one anionic polymer, in particular a carbomer, and optionally also at least one hydrophilic texturizing agent.
Pujol et al. disclose a method for preparing their dispersion that matches the instant claim 13 limitations (see paragraphs [0335-0340] within Pujol et al.).
Regarding instant claim 14, Jeong et al. and Pujol et al. teach a composition comprising at least one dispersion according to instant claim 1, optionally in association with at least one physiologically acceptable medium. Jeong et al. disclose the cosmetic composition comprising all limitations of instant claim 1 (see Example 1 within Jeong et al.; also see the discussion and citations within Table I).
Regarding instant claim 15, Jeong et al. and Pujol et al. teach the composition according to claim 14, said composition being a make-up composition. Jeong et al. disclose the cosmetic composition may include a foundation, tone-up cosmetics, a sunscreen, an essence, a primer, a concealer, and the like (see paragraph [0047] within Jeong et al.).
Regarding instant claim 16, Jeong et al. and Pujol et al. teach a non-therapeutic cosmetic treatment method of a keratin material, comprising at least one step to apply to said keratin material at least one dispersion according to instant claims 1 or at least one composition according to claim 14. Jeong et al. disclose cosmetic formulations as described within instant claim 15, for the treatment of keratin (skin). It would be obvious to a skilled artisan (POSITA) to apply this cosmetic to a subject in need.
Regarding instant claim 17, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the fatty phase also comprises at least one lipophilic gelling agent chosen from among organic or mineral, polymeric or molecular lipophilic gelling agents; fats solid at ambient temperature and pressure; and mixtures thereof. Please see the citations and discussion within instant claims 1 and 8. Furthermore, Pujol et al. disclose the gelling agent is chosen from among organic or mineral, polymeric or molecular lipophilic gelling agents; fats solid at ambient temperature and pressure; and mixtures thereof, and selected in particular from among waxes, pasty fats, butters, and mixtures thereof (see paragraph [0137] within Pujol et al.).
Regarding instant claim 18, Jeong et al. and Pujol et al. teach the dispersion according to claim 1, wherein the cationic polymer is a silicone polymer modified by a primary, secondary or tertiary amine function, having the following formula:
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Jeong et al. disclose the use of the cationic polymer, amodimethicone, containing two amine functional groups (see instant claim 1; Figure I). Amodimethicone is commercially available and would match the instant claim 18 limitations. It is a complex mixture rather than a single molecule, with a CAS number often listed as 68554-54-1 or 106842-44-8. In addition, Pujol et al. disclose the general structure described above within instant claim 18 (see paragraphs [0118-0127] within Pujol et al.).
Regarding instant claim 19, Jeong et al. and Pujol et al. teach the dispersion according to instant claim 1, wherein the anionic polymer is chosen from among carbomers or an acrylates/C10-30 alkyl acrylate crosspolymer. Pujol et al. disclose the dispersions of the invention can comprise a carbomer and an acrylates/C10-30 alkyl acrylate crosspolymer (see paragraph [0075] within Pujol et al.).
Analogous Art
The Jeong et al. and Pujol et al. references are directed to the same field of endeavor as the instant claims, that is, a dispersion comprising a fatty phase in the form of droplets dispersed in a continuous aqueous phase as disclosed within instant claim 1.
Obviousness Analysis
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the dispersion cosmetic composition comprising amodimethicone disclosed by Jeong et al., using the teachings of Pujol et al. in order to arrive at the subject matter of the instant claims.
The Jeong et al. and Pujol et al. references all have considerable overlap with dispersion cosmetic compositions. In this instance, Jeong et al. supplies the preparation of a dispersion cosmetic composition comprising amodimethicone, while Pujol et al. supports this material supplying detail. All references are directed to the preparation of dispersion cosmetics for the care of keratin materials and therefore constitute analogous art under MPEP §2141.01(a). A POSITA would have reasonably consulted the two references when seeking to develop a dispersion cosmetic composition comprising amodimethicone.
Starting with Jeong et al., the skilled person only had to try the necessary claim limitations disclosed by both Pujol et al. The combination of Jeong et al. and Pujol et al. would allow one to arrive at the present application without employing inventive skill. This combination of the dispersion cosmetic composition comprising amodimethicone taught by Jeong et al. along with the use of the necessary claim limitations taught by Pujol et al. would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the dispersion cosmetic composition comprising amodimethicone disclosed by Jeong et al. with the use of the necessary claim limitations taught by Pujol et al. Incorporating the disclosure of Jeong et al. into the modified dispersion cosmetic comprising amodimethicone taught by Pujol et al. represents a predictable use of prior art elements according to their established functions, consistent with MPEP §2143 and KSR.
Furthermore, the additional claim limitations taught by Pujol et al. would have been viewed by a POSITA as routine design optimizations or known modifications for dispersion cosmetic compositions comprising amodimethicone. Implementing these features in Jeong et al.’s dispersion cosmetic comprising amodimethicone would not require more than ordinary skill or routine experimentation.
Accordingly, the combination of Jeong et al., supplemented by Pujol et al. provides all the elements of the claimed invention. The resulting dispersion cosmetic composition comprising amodimethicone constitutes no more than the predictable outcome of combining familiar prior art components, and therefore the claimed subject matter would have been obvious to a POSITA prior to the effective filing date of the invention.
Response to Arguments
Applicant's arguments filed July 17, 2026 have been fully considered but they are not persuasive.
The instant claim amendments were sufficient to address the claim objections. Therefore, they are all withdrawn from the non-final office action dated April 17, 2026.
The amendments did not necessitate a new ground of rejection.
Applicant Argument: The Applicant argues that the calculation to determine the quantity of the amine functions contributed by the cationic polymer in the fatty phase is incorrect. [The calculation was not presented within the reference of Jeong et al.]
Examiner’s Rebuttal: Yes, the calculation in the non-final office action does not match that of the Applicant, by multiplying the calculated amine within the fatty phase by two. Furthermore, the AI generated Google Search for the molecular weight of amodimethicone is also incorrect. However, using the Applicants own math described on page 7 within their Remarks yields a value which meets the claim limitation.
The scope of the disclosure allows for a fatty phase (oil phase) that expands Example 1 (see paragraph [0033] within Jeong et al.; 1%-95% fatty phase). In addition, Jeong et al. disclose additional components that can be included with the cationic polymer within the fatty phase (see paragraph [0037] within Jeong et al.). The hypothetical value of 20% fatty phase (presented below) is very close to the fatty phase of Example 1 (20.4%).
Therefore, the following cosmetic can exist according to the Jeong et al. disclosure:
A. 20% fatty phase comprising 0.3 wt% amodimethicone (same level of the cationic polymer as in Example 1).
B. assuming 100 g sample that would correspond to 0.3 g amodimethicone / 1.111 g/mmol [(0.9 mmol/g number of amino chains per amodimethicone)-1 from the KF-8004 Product Data Sheet NPL supplied by the Applicant] or 0.27 mmol. [0.27 mmol / 20 g fatty phase] = 0.013 5 = (13.5 mmol / g of fatty phase).
[Furthermore, Applicant may also argue impermissible hindsight reasoning. However, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight [or piece-meal reasoning.] But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).]
Thus, the 35 U.S.C. §103 rejection for instant claims 1-19 is maintained.
Conclusion
No claims are allowed.
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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/JOHN W LIPPERT III/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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