DETAILED ACTION
Claims 1-7, submitted 24 May 2024, are pending in the application and subject to examination in the instant Office 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 .
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 nonobviousness.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Clavel (US PG-PUB 2018/0263890 A1) in view of Inoue et al (JP 2012-149041 A). As the original Inoue document is in Japanese and the Examiner does not read Japanese, the translated document provided by the Applicant will be cited as the English equivalent.
Clavel teaches an anhydrous liquid composition comprising, in a physiologically acceptable medium, a) an oily phase comprising: i) at least one non-volatile oil and ii) at least one volatile hydrocarbon oil and b) at least one monoalcohol comprising from 2-8 carbon atoms and c) at least one lipophilic film-forming polymer chosen from: (i) silicone resins of MQ type, (ii) silsesquioxane resins, (iii) vinyl polymers grafted with a carbosiloxane dendrimer, (iv) their mixtures, and d) at least one particulate material, the said material composition comprising at least 15% by weight of non-volatile oils with respect to the total weight of the composition (Abstract; paragraph 0001; Claim 1). Additionally, Clavel teaches wherein the non-volatile silicone oil is a phenylated silicone oil and further wherein the silicone oil is trimethyl pentaphenyl trisiloxane (paragraphs 0055-0057 and 0062). This reference further teaches wherein the oily phase comprises at least one non-volatile oil in a proportion of at least 15% by weight, prefereably of at least 30% by weight with respect to the total weight of the composition (paragraph 0021) which reads on the percent by mass of the claimed component (A).
Specifically, Clavel teaches a specific embodiment wherein the non-volatile oil comprises a silicone resin of MQ type of trimethylsiloxysilicate (paragraph 0218; Claim 15) and a silsesquioxane resin having an average siloxane unit of formula R1nSiO(4-n)2 where each R1 independently denotes a hydrogen atom or a C1-C10 alkyl group where it is preferred that the R1 is a C1-C4 alkyl (paragraph 0114-0115). This reads on the limitations of instant claims 2-3 has when R1 is methyl, the silsesquioxane is a polymethylsilsesquioxane and the MQ resin is trimethylsiloxysilicate.
Regarding claim 4, Clavel teaches wherein the hydrocarbon oil is a synthetic ester of fatty acid (i.e., diisostearyl malate) (paragraphs 0049, 0051; Claim 4). This also reads on the limitations of claim 5 which further limit the ester oil component to diisostearyl malate.
With respect to claim 6, Clavel teaches that the composition can contain additional cosmetic ingredients such as lipophilic gelling agents (paragraph 0266). While Clavel does not teach wherein the lipophilic gelling agents are a glyceryl ester, Inoue teaches a cosmetic composition comprising 15-80 mass percent of a phenyl-modified silicone and a liquid ester compound (paragraph 0009) further comprising a gelling agent, component (C) (paragraph 0022). Inoue also teaches that the oily gelling agent is not particularly limited as long as it is usually used in cosmetics and offers examples of glyceryl esters such as deca (behenic acid/ capric acid) polyglyceryl-8 and tri (behenic acid/ isostearic acid/ eicosanedoic acid) glyceryl (paragraph 0028).
It would have been prima facie obvious for a person having ordinary skill in the art to combine the teachings of Clavel with the teachings of Inoue to form an oil-based cosmetic composition comprising a non-volatile oil and a volatile oil wherein the non-volatile oil comprises a silicone resin, trimethylpentaphenyltrisoloxane and an ester oil, further comprising a thickening agent wherein the thickening agent is a glyceryl ester. A person having ordinary skill in the art would have an expectation of success because Inoue teaches that when the thickening agent is 1-10 percent by mass of the total amount of the lip cosmetic, the retention ability of the oil is good, the stability over time is good and the dispersibility of the phenyl-modified silicone component is good (paragraph 0029). Thus, it would have been prima facie obvious for a person having ordinary skill in the art, prior to the effective filing date of the instant application, to combine the teachings of Clavel with the teachings of Inoue to arrive at the instantly claimed invention.
With regards to claim 7, Clavel teaches wherein the anhydrous liquid composition further comprises a metal powder, such as silica-coated aluminum (aluminum silicate), at a range of 4% to 12% by weight with respect to the total weight of the composition. This reads on the limitations of claim 7 which require that the amount of powder excluding a colorant is 8% by mass or less.
Conclusion
No claims are allowed.
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JUSTIN CHRISTOPHER SANCHEZ
Examiner
Art Unit 1622
/J.C.S./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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