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 .
Status of the Claims
Pursuant to the amendment dated 06/09/2026, claim 16 has been cancelled and new claim 21 has been added. Claims 1-15 and 17-21 are pending and under current examination.
A terminal disclaimer is on file for U.S. Patent No. 10,709,647 and 11,096,871.
All rejections not reiterated have been withdrawn, specifically, the nonstatutory double patenting rejections have been withdrawn in view of the terminal disclaimer filed 06/09/2026.
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 1-15 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US20190125649; publication date: 05/02/2019; cited in the IDS filed 06/18/2024), as evidenced by Charambura et al.(US20020037255; publication date: 03/28/2002).
With regard to claims 1-6, 7-9, 17, and 21, Cao discloses an example composition in table 1 on page for containing 1.5 % MSS-500/3H (i.e. porous silica particles having size of 3 microns, surface area of 600-800 m2/g; 0067; limitations of instant claims 1-4), 12.7 % DC 9509 (i.e. dimethicone/vinyl dimethicone crosspolymer having diameter of 3 microns; 0067; limitations of instant claims 1, 5-7, 17, and 21), 1.5 % caprylic/capric triglyceride (limitations of instant claims 1, 8 and, 21), and the balance of the composition is water, which amounts to greater than 20%. The weight ratio of triglyceride to silicone elastomer is 8.5.
The composition is entirely within the scope of instant claim 1 other than that the amounts of dimethicone/vinyl dimethicone crosspolymer and triglyceride fall just outside the ranges recited in instant claims 1 and 9. The claims are considered prima facie obvious because Cao discloses a range for amount of silicone crosspolymer (i.e. the dimethicone/vinyl dimethicone crosspolymer) of 0.001 to 25% by weight (0033). This range overlaps with the range recited in the instant claims. Cao also discloses triglycerides such as e.g. olive oil, palm kernel oil, sunflower, safflower, cotton seed oils etc. to be emollients (0048 and Charambura 0037, which evidences that e.g. sunflower seed oil is a triglyceride). One having ordinary skill would not have expected making minor adjustments in the amount of triglyceride to dramatically impact the emollient performance of the composition and it would have been routine for one of ordinary skill to adjust the amount of oil to make a more or less emollient composition. See MPEP 2144.05(II)(A): 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to claims 10, 18, and 21, the weight ratio of triglyceride to porous silica particle is 1:1, which falls within the scope of the range recited in claim 10. With regard to claim 18, although the ratio of triglyceride to porous silica particle in the one example composition is lower than the claimed range, the examiner does not consider this limitation to patentably define over the cited prior art as explained above regarding the amount of triglyceride present in terms of percent. See MPEP 2144.05(II)(A).
With regard to claims 11, 19, and 21, the weight ratio of porous silica particle and silicone elastomer to triglyceride is 9.5:1, which falls just outside the scope of the range recited in claim 11 and with regard to claim 19, although the ratio of triglyceride to porous silica particle in the one example composition is higher than the claimed range, the examiner does not consider this limitation to patentably define over the cited prior art as explained above regarding the amount of triglyceride present in terms of percent. See MPEP 2144.05(II)(A).
With regard to claims 12, 13, 20, and 21, although the example composition contains cyclopentasiloxane in an amount greater than permitted by the instant claims, Cao discloses this substance as only one of many suitable oil phase emollients that may be used in the composition. It would have been prima facie obvious to substitute the cyclopentasiloxane with any of the emollient oils disclosed by Cao, including triglyceride containing oils such as e.g. olive oil, palm kernel oil, sunflower, safflower, cotton seed oils (see MPEP 2144.06). In this case, the amount of triglyceride would be adjusted up and cyclopentasiloxane amounts may be as low as zero.
With regard to claim 14, the composition can be an oil in water emulsion (0044).
With regard to claims 15 and 21, the composition may contain from 1-99% water (see MPEP 2144.05(I)).
With regard to claims 16 and 21, the porous silica particle is preferably present in the composition in an amount of from 0.01 to 20% by weight, which overlaps with the claimed range. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
On pages 6-7, Applicant argues that the Office focuses on Example 1, sample 1 in Table 1 of Cao. Applicant cites samples 1 and 2 in comparison to samples A and B of the instant specification as demonstrating that the instant invention has resolved a problem with pilling and arguing that this was an unexpected finding. Applicant argues on page 7 that the data of the examples in the specification as filed demonstrate nonobviousness over Example 1, sample 1 of Cao.
Please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
In the instant case, the data show that decreasing the quantity of cyclopentasiloxane and increasing the amount of triglyceride reduces incidence of pilling on spreading of example compositions over a model skin surface. This effect is not clearly unexpected as silicones such as cyclopentasiloxane were known in the art to cause pilling in makeup (see Essie, pages 2-3: “What causes pilling? There are two main culprits: silicones and gums. The common silicones include dimethcione, trimethicone, cyclopentasiloxane…” (emphasis added)). Accordingly, one having ordinary skill would have predicted that removing or reducing the quantity of a substance that causes pilling would correspondingly reduce the pilling of a cosmetic composition. The data are also only qualitative: the existence of pilling is either marked as a yes or a no, with no indication of degree of pilling. It is unclear whether a statistically significant improvement has been observed in the experiment. Finally, data are not commensurate in scope with the claims, particularly claim 1 which embraces any silicone elastomer, any triglyceride, any silica porous particle (e.g. having any degree of porosity), whereas the test compositions only evaluate compositions containing one substance of each broad category. Data are also not commensurate in scope with claims 1-11, 12-15, and 17-19 because these claims do not limit the amount of cyclopentasiloxane; however, the effect is only observed in samples containing small amounts or none of this substance. It is not clear that the effect would be observed across the full scope of the claims. As such, data of record fails to meet the burden on Applicant to overcome an obviousness rejection with a persuasive showing of unexpected results.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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