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 .
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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Okubo (EP 2263639 A2, Dec. 22, 2010) (hereinafter Okubo) in view of Kaida et al., (EP 2742930 A1, June 18, 2014) (hereinafter Kaida) and Kaizu et al., (US 2014/0194522 A1, July 10, 2014) (hereinafter Kaizu).
Okubo discloses a water-in-oil emulsified cosmetic comprising components (A) to (E).
(A) an oil that is a liquid at 25°C, (B) an oil that is a solid at 25°C, (C) a hydrophobic powder, (D) a surfactant having an HLB of no greater than 8, and (E) water (Claim 1). Component (B) is a ceramide such as N-(hexadecyloxyhydroxypropyl)-N-hydroxyethylhexadecanamide (i.e., an oil component having a melting point of from 50 to 150°C) ([0023]). From the viewpoint of controlling the liquid properties of a cosmetic and improving stability, the content of component (B) is 0.5 to 15 wt% in the water-in-oil emulsified cosmetic ([0026]). Component (A) is an oil that is normally used in a cosmetic, may be used singly or in a combination of two or more types and among them, a hydrocarbon oil and a silicone oil are preferable ([0013]). From the viewpoint of enhancing the dispersibility of a powder or a solid fat, component (A) is contained at 10 to 50 wt% in the water-in-oil emulsified cosmetic ([0014]). Component (D) is PEG-12 Dimethicone (i.e., a non-ionic silicone-based surfactant having a hydrophilic-lipophilic balance (HLB) of from 1 to 7) ([0036]).
Okubo differs from the instant claims insofar as not disclosing wherein the composition comprises octamethyltrisiloxane.
However, Kaida discloses an emulsified cosmetic comprising volatile silicone oils (Abstract). The volatile silicone oil used may be any of those generally used for cosmetics, such as octamethyltrisiloxane ([0025]). The emulsion system of the emulsified cosmetic for eyebrows and eyelashes of the present invention can be selected from the W/O type ([0031]).
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. Okubo discloses wherein the composition comprises a silicone oil. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated octamethyltrisiloxane into the composition of Okubo since it is a known and effective silicone oil for cosmetics as taught by Kaida.
The combined teachings of Okubo and Kaida do not disclose wherein the composition comprises an α-olefin oligomer.
However, Kaizu discloses an emulsion composition stably containing a ceramide, having an excellent moisturizing effect ([0014]). The emulsion composition may further comprise an oil including hydrocarbon oils such hydrogenated polydecene (i.e., an α-olefin oligomer) ([0056]). The emulsion composition is a cosmetic emulsion ([0070]).
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. Okubo discloses wherein the composition comprises hydrocarbon oils. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated hydrogenated polydecene (i.e., an a-olefin oligomer) into the composition of Okubo since it is a known and effective hydrocarbon oil for cosmetics as taught by Kaizu.
Regarding claim 2, as discussed above, the composition of Okubo comprises N-(hexadecyloxyhydroxypropyl)-N-hydroxyethylhexadecanamide (i.e., Component (A)) in 0.5 to 15 wt% and a hydrocarbon oil at 10 to 50 wt% and Kaizu teaches hydrogenated polydecene (i.e., Component C)) is a known and effective hydrocarbon oil. Thus, the claimed ratio would have been obvious since after selecting an amount of N-(hexadecyloxyhydroxypropyl)-N-hydroxyethylhexadecanamide (i.e., Component (A)) and an amount of hydrogenated polydecene (i.e., Component (C)) one would have arrived at a mass ratio of the component (A) to the component (C), (A)/(C), that overlaps with the claimed ratio of from 0.1 to 10. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
Regarding claim 3, as discussed above, the composition of Okubo comprises N-(hexadecyloxyhydroxypropyl)-N-hydroxyethylhexadecanamide (i.e., Component (A)) in 0.5 to 15 wt% and a silicone oil at 10 to 50 wt% and Kaida teaches octamethyltrisiloxane (i.e., Component (B)) is a known and effective silicone oil. Thus, the claimed ratio would have been obvious since after selecting an amount of N-(hexadecyloxyhydroxypropyl)-N-hydroxyethylhexadecanamide (i.e., Component (A)) and an amount of octamethyltrisiloxane (i.e., Component (B)) one would have arrived at a mass ratio of the component (A) to the component (B), (A)/(B), that overlaps with the claimed ratio of from 0.1 to 10. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
Conclusion
Claims 1-8 are rejected.
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha J Knight whose telephone number is (571)270-3760. The examiner can normally be reached Monday - Friday 8:30 am to 5:00 pm ET.
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/S.J.K./Examiner, Art Unit 1614
/TRACY LIU/Primary Examiner, Art Unit 1614