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 1-27 are presented for examination.
Claim Rejections - 35 USC § 112
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.
Claim 1-13, 15-19 and 21-26 are 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.
Claims 1-5, 8, 12, 23 and 24 are indefinite as to the phrase “in particular” or “particularly”. The term “in particular” and “particularly” in claims 1-5, 8, 12, 23 and 24 are a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims fail to set forth the bounds and metes of the claimed invention.
Claims 6, 9, 13, 17-19, 21 and 25 are indefinite as to the phrase “preferentially” or “preferably”.
The terms “preferentially” and “preferably” in claim 6,9, 13, 17-9, 21 and 25 is a relative term which renders the claim indefinite. The term “preferentially” and “preferably” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims fail to set forth the bounds and metes of the claimed invention.
Claims 1-3, 8, 10-12, 15, 16, 22 and 26 are indefinite as to the phrase “chosen”. The replacement of such phrase with “selected from the group consisting of” will overcome the rejection.
Regarding claim 22, the phrases "for example" and “such as” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 26 is indefinite as to the phrase “silica particle other than the preceding ones”. The phrase fails to set forth the preceding silica particles in claim 1. In addition there is no antecedent bases for “silica particles” in claim 1.
Claims depending on the rejected claims are also rejected, since they have all the limitations of the rejected claims.
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.
Claim(s) 1-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 9545373 submitted by the applicant) in view of Valverde et al. (US 20200085723 equivalent to WO 2018114212 submitted by the applicant).
The claims are drawn to a composition in the form of a water-in-oil emulsion, in particular comprising a physiologically acceptable medium, especially for coating keratin materials, more particularly for making up and/or caring for keratin materials, comprising:
a) at least one oily continuous phase comprising at least one volatile oil chosen from volatile hydrocarbon oils, volatile silicone oils and their mixtures, and
b) at least one aqueous phase dispersed in said oily phase, comprising at least one water- soluble organic UV screening agent comprising at least one benzylidenecamphor sulfonic acid group and/or at least one water-soluble organic UV screening agent comprising at least one benzoxazole sulfonic acid group, and
c) at least one organic or inorganic base capable of partially or completely neutralizing said water-soluble organic UV screening agent(s), and
d) at least one hydrophobic film-forming polymer, and
e) at least one emulsifying surfactant chosen from polyoxyalkylenated linear polydimethylmethylsiloxanes with an HLB ≤ 8.0, and
f) at least one vitamin B3; said composition not containing a nonvolatile ester oil.
Regarding claim 1, Lu teaches a cosmetic compositions and methods of using and producing cosmetic compositions. Lu teaches that more specifically, the present invention is directed to a translucent water-in-oil cosmetic composition. See column 1, lines 9-10 and column 2, lines 16-17. Lu teaches that W/O emulsions are often stabilized with silicone elastomeric polymers. See column 4, lines 58-60 and column 5, line 57. The use of TEREPHTHALYLIDENE dicamphor sulfonic acid components is taught in table 1. The use of a base, such as triethanolamine is taught in table 1. The use of volatile silicone oil is taught in tables 1 and 2. Lu teaches Particularly suitable examples of silicone oils, include, but are not limited to dimethicone, dimethicone (and) dimethiconol, or combinations thereof. In one embodiment, the silicone oils includes co-emulsifiers, such as, but not limited to, lauryl PEG-9 polydimethylsiloxyethyl dimethicone, PEG-10 dimethicone, PEG-9 polydimethylsiloxyethyl dimethicone (and) PEG-9. The co-emulsifiers facilitate stability of the composition. In another embodiment, the oil phase may also include cosmetically acceptable additives or adjuvants as well as cosmetic or dermatologic active agents. Lu further teaches The at least one water-in-oil emulsifier is selected from the group consisting of dimethicone (and) dimethicone/PEG-10/15 crosspolymer, dimethicone (and) PEG/PPG-18/18 dimethicone, cyclopentasiloxane (and) PEG/PPG-18/18 dimethicone, dimethicone (and) dimethicone/polyglycerin-3 crosspolymer, or combinations thereof. See table 1. The use of vitamin B3, such as niacinamide is taught in tables 1 and 2.
Lu does not teach the use of a hydrophobic film forming polymer. However, Valverde teaches a W/O emulsion comprising a continuous oily phase, a mixture of liquid organic UV-screening agents, a linear volatile silicone oil and pigments; more particularly example 1 of describes an W/O emulsion containing docamethylpentasiloxane , homosalate, ethylhexyl salicylate, octacrylene (i.e. oil- soluble UV-screening agents), vinyl dimethicone/methicone silsesquioxane cross- polymer (d), Polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate (i.e. W/O emulsifier having an HLB value between 3 and 8) and niacinamide. See table 1. The use of Siloxysilicate resins such as trimethylsiloxysilicate (TMS) resins is taught in Para [0202].
It would have been obvious to a person skilled in the art to add a hydrophobic film forming polymer into the composition of Lu, motivated by the teachings of Valverde, which teaches a W/O emulsion comprising a continuous oily phase, a mixture of liquid organic UV-screening agents, a linear volatile silicone oil and pigments and a film forming polymer, such as trimethylsiloxysilicate (TMS) resins
Regarding claim 2, Valverde teaches the use of petroleum and isododecane as volatile hydrocarbon-based oils. See Para [0087].
Regarding claim 3, Valverde teaches the use of dodecamethylpentasiloxane as a volatile silicone oil. See table 1.
Regarding claim 4, Valverde teaches the use one volatile hydrocarbon oil, such as isododecane and volatile silicone oil, such as dodecamethylpentasiloxane in a cosmetic formulation. Furthermore, Valverde teaches that the cosmetic composition may contain oils selected from cyclic volatile silicone oils; non-volatile oils chosen from hydrocarbon-based oils, silicone oils and fluor oils, and mixtures thereof, volatile hydrocarbon-based oils; ingredients that are soluble or miscible in the oily phase; mixtures thereof. See Para [0045].
Regarding claim 5, Valverde teaches the total concentration of oily phase in the composition of the invention preferably ranges from 30% to 95% by weight and more particularly ranging from 40% to 70% by weight relative to the total weight of the composition. See Para [0058].
Regarding claim 6, the determination of optimum proportions or amounts of volatile oils are considered to be within the skill of artisan in the absence of evidence to the contrary. Applicant’s attention is drawn to In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), where the court states “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”.
Regarding claim 7, Valverde teaches When the composition is a water-in-oil emulsion, the aqueous phase is preferably present in a concentration of at least 20% by weight, preferably ranging from 30% to 60% by weight, more particularly from 40% to 50% by weight, relative to the total weight of said composition. See para [0290].
Regarding claim 8, Lu teaches the use of TEREPHTHALYLIDENE dicamphor sulfonic acid components is taught in table 1 as UV screening agent.
Regarding claim 9, Valverde teaches the concentration of said mixture of liquid organic UV-screening agents ranges from 15% to 40% by weight, relative to the total weight of the composition. See claims 2 and 3. However, the determination of optimum proportions or amounts are considered to be within the skill of artisan in the absence of evidence to the contrary.
Regarding claim 10, Lu teaches the use of a base, such as triethanolamine. See table 1.
Regarding claim 11, Lu teaches the use of sodium hydroxide as a buffering agent. See (19).
Regarding claim 12, Valverde teaches a W/O emulsion comprising a continuous oily phase, a mixture of liquid organic UV-screening agents, a linear volatile silicone oil and pigments; more particularly example 1 of describes an W/O emulsion containing docamethylpentasiloxane (a), homosalate, ethylhexyl salicylate, octacrylene (i.e. oil- soluble UV-screening agents), vinyl dimethicone/methicone silsesquioxane cross- polymer (d), Polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate (i.e. W/O emulsifier having an HLB value between 3 and 8) and niacinamide. See table 1. The use of Siloxysilicate resins, such as, trimethylsiloxysilicate (TMS) resins is taught in Para [0202].
Regarding claim 13, the determination of optimum proportions or concentration of hydrophobic polymer is considered to be within the skill of artisan in the absence of evidence to the contrary.
Regarding claims 14 and 15, Lu teaches in one embodiment, the silicone oils includes co-emulsifiers, such as, but not limited to, lauryl PEG-9 polydimethylsiloxyethyl dimethicone, PEG-10 dimethicone, PEG-9 polydimethylsiloxyethyl dimethicone (and) PEG-9. See table 1.
Regarding claims 16 and 17, Lu teaches The at least one water-in-oil emulsifier is selected from the group consisting of dimethicone (and) dimethicone/PEG-10/15 crosspolymer, dimethicone (and) PEG/PPG-18/18 dimethicone, cyclopentasiloxane (and) PEG/PPG-18/18 dimethicone, dimethicone (and) dimethicone/polyglycerin-3 crosspolymer, or combinations thereof. See table 1.
Regarding Claim 18, Lu teaches the use of PEG-10 dimethicone and PEG-18/18 dimethicone.
Regarding claim 19, Lu teaches in one embodiment, the oil phase comprising at least one water-in-oil emulsifier, the water-in-oil emulsifier being an emulsifying linear silicone at a concentration, by weight, of about 1% to about 25%, or alternatively about 3% to about 10%, or alternatively about 5% to about 8%, based upon weight of the composition. In one embodiment, the emulsifying linear silicone is dimethicone (and) PEG/PPG-18/18 dimethicone. See (28).
Regarding claim 20, Lu teaches the use of niacinamide in tables 1 and 2.
Regarding claim 21, Lu teaches the concentration of niacinamide being 5%. See table 1.
Regarding claim 22, Valverde teaches the use of titanium oxide, iron oxide, cerium oxide and zinc oxide as pigments. See Para [0120]. Valverde teaches that The coated pigments are pigments that have undergone one or more surface treatments of chemical, electronic, mechanochemical and/or mechanical nature with compounds such as amino acids, beeswax, fatty acids, fatty alcohols, anionic surfactants, lecithin, sodium, potassium, zinc, iron or aluminum salts of fatty acids, metal alkoxides (of titanium or aluminum), polyethylene, silicones, proteins (collagen, elastin), alkanolamines, silicon oxides, metal oxides or sodium hexametaphosphate. See Para [0375].
Regarding claim 23, Valverde teaches the composition comprises at least 5% by weight of pigments, more preferentially from 5% to 40% by weight of pigments, in particular from 10% to 30% by weight and preferably from 10% to 20% by weight of pigments, relative to the total weight of said composition. See Para [0118].
Regarding claim 24, Valverde teaches that the polyoxyalkylenated silicone elastomer is preferably mixed with at least one hydrocarbon-based oil and/or one silicone oil to form a gel. In these gels, the polyoxyalkylenated elastomer may be in the form of non-spherical particles. See Para [0310].
Regarding claim 25, the determination of optimum proportions or amounts are considered to be within the skill of artisan in the absence of evidence to the contrary.
Regarding claim 26, Valverde teaches examples of mineral fillers that may be mentioned include talc, mica, silica, hollow silica microspheres, kaolin, calcium carbonate, magnesium carbonate, hydroxyapatite, boron nitride, glass or ceramic microcapsules, or composites of silica and of titanium dioxide. See Para [0421].
Regarding Claim 27, Lu in combination with Valverde teach a water-in-oil cosmetic formulation. To use the cosmetic formulation in the form of a foundation does not create a patentably distinct composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZOHREH A FAY whose telephone number is (703)756-1800. The examiner can normally be reached Monday-Friday 9:30AM-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZOHREH A FAY/Primary Examiner, Art Unit 1617
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