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Claims 1-21 are pending; claims 1-6 and 8-19 are examined; claims 7, 20 and 21 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-19, and species election of organic bases, in the reply filed on 7 July 2026 is acknowledged. The traversal is on the grounds that there is sufficient overlap because claims 20 (Group II) and 21 (Group III) depend from claim 1, such that search and examination for all groups would not be overly burdensome; and that the species of inorganic and organic bases have common functionality and properties, thus searching for disclosures related to one of these compounds would probably result in disclosure of the other non-elected compounds as well.
This is not found persuasive because Group I only requires a composition, but Group II requires a specific device and applicator that are materially different from a composition, and Group III requires manipulative differences in a process for coating eyelashes or eyebrows. Moreover, in the instance of election of species, inorganic bases and organic bases may vastly differ on chemical and/or physical properties (e.g., water resistance) and would therefore require different considerations.
The restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 7, 20, and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Claim Objections
Claim 6 is objected to because of the following informalities: “acid(s)” in line 2 of the claim should be recited as --- acids ---. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: immediately prior to “at least one” in line 1 of the claim there should be recited --- said --- or --- the ---. Appropriate correction is required.
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.
Claims 1-6 and 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Amazaki (US 2016/0338937 A1, 11/24/2016).
Amazaki discloses cosmetic compositions comprising at least one aqueous phase comprising water, at least one fatty phase comprising polar oil(s), fatty acid(s), associative polymer(s), and hollow particle(s) ([0008]-[0012]). The polar oil(s) include hydrocarbon-based esters of formula RCOOR′ in which RCOO represents a carboxylic acid residue comprising from 2 to 40 carbon atoms, and R′ represents a hydrocarbon-based chain containing from 1 to 40 carbon atoms ([0071]). The polar oil(s) may include soybean oil ([0069]). The fatty acid(s) includes stearic acid ([0131]). The pH of the aqueous phase may be controlled by basifying agents including triethanolamine ([0048]). The associative polymer(s) include copolymers of vinylpyrrolidone and of fatty chain hydrophobic monomers, examples include vinylpyrrolidone/eicosene copolymer ([0227], [0229]). The compositions may also comprise coloring agents ([0277]).
Regarding claims 1, 5, and 6, as noted by paras. [0053] and [0064] of the instant Specification, stearic acid is a fatty acid containing from 14 to less than 20 carbon atoms suitable as an anionic surfactant.
Regarding claims 1 and 8, as noted by para. [0069] of the instant Specification, triethanolamine is an organic base.
Regarding claims 1 and 13, as noted by para. [0093] of the instant Specification, soybean oil is a liposoluble dye.
Together these would provide a composition as instantly claimed. The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claim 2, as discussed above, Amazaki discloses polar oils of the formula RCOOR’. Accordingly, a compound wherein RCOO represents a carboxylic acid residue comprising 22 carbon atoms, and R’ representing a hydrocarbon chain containing 22 carbon atoms, would have been obvious (i.e. behenyl behenate).
Regarding claim 3, Amazaki further discloses wherein the polar oil may be 1-15% by weight of the composition ([0090]). Accordingly, the claimed ranges (i.e. at least 5.0% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 4, Amazaki further discloses wherein the fatty acid(s) may be 0.1-5% by weight of the composition ([0021]). Accordingly, the claimed ranges (i.e. 3.5-20% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 9, although Amazaki does not explicitly disclose an amount of basifying agents, it would have taken no more than the relative skill of one of ordinary skill in the art to have arrived at the claimed ranges (i.e. at least 0.1% by weight) through routine experimentation based on the pH ranges desired. "[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." See MPEP § 2144.05(II)(A).
Regarding claim 10, Amazaki further discloses wherein the associative polymer(s) may be 0.01-5% by weight of the composition ([0246]). Accordingly, the claimed ranges (i.e. 0.5-10% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 11, Amazaki further discloses wherein the at least one aqueous phase may comprise water, in amounts of 55% by weight or more ([0041]). Accordingly, the claimed ranges (i.e. at least 30.0% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 12, Amazaki further discloses wherein the polar oil, such as soybean oil, may be 1-15% by weight of the composition ([0090]). Accordingly, the claimed ranges (i.e. from 2.0% to 25.0% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 14, Amazaki further discloses wherein polar oil(s) include fatty alcohols containing 12 to 26 carbon atoms ([0074]). Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have included a fatty alcohol as the polar oil, since “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose… [T]he idea of combining them flows logically from their having been individually taught in the prior art" as supported by MPEP § 2144.06(I).
Regarding claim 15, as discussed above, Amazaki discloses wherein the polar oil(s) may be 1-15% by weight of the composition. Accordingly, the claimed ranges (i.e. from 1.0% to 20.0% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 16, Amazaki further discloses wherein associative polymers include water-soluble (i.e. hydrophilic) polymers that are capable of reversibly combining with each other or with other molecules in an aqueous medium ([0181]).
Regarding claim 17, Amazaki discloses wherein associative polymer(s) may be 0.01-5% by weight of the composition ([0246]). Accordingly, the claimed ranges (i.e. from 0.1% to 15.0% by weight) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 18, Amazaki does not explicitly disclose wherein the compositions have, at 25 °C, a hardness of ≥ 20 g. However, since the composition of Amazaki comprises substantially the same components (i.e. linear fatty acid monoester having formula R1-O-R2; anionic surfactant; base; vinylpyrrolidone/eicosene copolymer; dyestuff, and water), one of ordinary skill in the art would reasonably conclude the composition of Amazaki to reasonably possess substantially the same properties as the claimed invention, such as a hardness of ≥ 20 g at 25 °C.
Regarding claim 19, Amazaki further discloses wherein the composition may be used for eyelashes ([0309]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of copending Application No. 18/713,830 in view of Amazaki (US 2016/0338937 A1, 11/24/2016).
Regarding claims 1-6, 8-11 and 14-19, although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composition comprising substantially the same components (1)-(6) as the pending claims, and thus read on the pending claims.
In regard to claims 12-13, the copending claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as an instantly claimed dyestuff.
However, these features are known in the art. As noted in the current rejections, the teachings of Amazaki render obvious claims 1-6 and 8-19.
Therefore, as claims 1-27 of copending Application No. 18/713,830 and Amazaki all disclose compositions comprising instantly claimed components (1)-(6), it would have been prima facie obvious to one of ordinary skill in the art to have modified the copending application and to include the teachings of Amazaki as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06(I).
This is a provisional nonstatutory double patenting rejection.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Boularas et al. (WO 2020/127981 A1, 06/25/2020), directed to compositions for keratin fibers comprising behenyl behenate, stearic acid, triethanolamine, VP copolymers, dyestuffs, film-forming polymers including VP/VA copolymers, stearyl alcohol, and/or polyvinylpyrrolidone hydrophilic polymer.
Pays et al. (US 2010/0307522 A1, 12/09/2010), directed to compositions comprising stearic acid, triethanolamine, VP/eicosene, dyestuff, and aqueous medium, suitable as eyelash products.
Barba et al. (US 2015/0174056 A1, 06/25/2015, IDS reference), directed to compositions for coating keratin fibers comprising stearic acid, triethanolamine, VP/eicosene copolymer, and colorants dispersed in aqueous medium.
Conclusion
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/LUCY M TIEN/ Examiner, Art Unit 1612
/SAHANA S KAUP/ Supervisory Primary Examiner, Art Unit 1612
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