DETAILED ACTION
Claims 1-20 are currently pending and under examination.
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 .
Election/Restrictions
Applicant's election with traverse of isododecane, ethanol and candelilla resin in the reply filed on 04/17/2026 is acknowledged. The traversal is on the ground(s) that there is no search burden and examination of volatile solvent and natural resins other than the elected species would exist given the common functionality and properties of non-elected species for these types of compounds. This is not found persuasive because the election of species was based on PCT practice and a special technical feature, thus search burden is not required.
The requirement is still deemed proper and is therefore made FINAL.
No claims are withdrawn as a result of the species election.
Priority
The instant application is a national stage entry of PCT/EP2022/087469, filed 12/22/2022, which claims priority to FR 2114365, filed 12/23/2021.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 06/20/2024 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Claim Objections
Claim 18 is objected to because of the following informalities: Claim 18 contains the typographical error of “at8least”. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (b)
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.
Claims 1-20 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.
Regarding claim 1, claim 1 recites the limitation "total amount of volatile oil(s)", “volatile alcohol(s)” and the “amount of natural resin(s)”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is directed to at least one for each of the volatile oil, volatile alcohol and natural resin, and thus does not properly refer back. Claims 2-20 are further rejected are not curing the ambiguity of claim 1.
Regarding claims 2-4, 6-9, 11 and 13-20, the phrase "preferably", “particularly”, “it being possible”, “for example”, “such as”, “preferentially” and “better still” renders 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). The use of "preferably", “particularly”, “it being possible”, “for example”, “such as”, “preferentially” and “better still” makes it unclear if the limitations following the claim term are optional or required by the instant claims, thus leading to unclear metes and bounds of the claim.
Regarding claims 2, 6 and 8-9, recite the limitation "amount of volatile oil(s)", “amount of volatile alcohol(s)” and the “amount of natural resin(s)”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is directed to at least one for each of the volatile oil, volatile alcohol and natural resin, and thus does not properly refer back.
Regarding claims 3-5, 7, 10, 13-16 and 20, recite the limitation "the volatile oil", “the volatile alcohol”, “the resin” and “said resin”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is directed to at least one for each of the volatile oil, volatile alcohol and natural resin, and thus does not properly refer back.
Regarding claim 3, the limitation (25 °C) in parenthesis makes it unclear if the specific temperature inside the parenthesis is required or not, thus leading to unclear metes and bounds.
Regarding claims 11-12, claims 11-12 recites the limitation "at least one resin”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is directed to at least one natural resin, and thus does not properly refer back.
Regarding claim 17 and 19, claim 17 and 19 recites the limitation "the total amount of diterpenic compounds of the resin” and “the total content of triterpenoid compounds”. There is insufficient antecedent basis for this limitation in the claim. Claim 16 is directed to at least one diterpenic compound.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9, 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN107468547.
Regarding claim 1, the limitation of a cosmetic composition comprising, in a physiologically acceptable medium at least one volatile oil (a), at least one volatile alcohol (b) and at least one natural resin (c), in which the weight ratio of a and b to the amount of c is greater than 1 is met by the ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 36.3 (53.7+0.8:1.5).
Regarding claim 2, the limitation of the weight ratio of volatile oil(s) to amount of natural resin is greater than 0.5 is met by the ‘547 publication teaching balance of isodecane 53.7-62.6 wt% and euphobe cerria wax extract 1.5-2 wt% (page 1) leading to a ratio of 35.8 (53.7:1.5).
Regarding claim 3, the limitation of characterized in that the volatile oil or the volatile alcohol has a vapour pressure at ambient temperature and atmospheric pressure of greater than or equal to 1.3 Pa is met by the ‘547 patent teaching the elected ethanol and isododecane (page 1). “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 4, the limitation of characterized in that the volatile oil is chosen from volatile hydrocarbon based oils is met by the ‘547 publication teaching the elected isododecane (page 1).
Regarding claim 5, the limitation of characterized in that the volatile oil are at least partially of plan origin is met by the ‘547 publication teaching the elected isododecane (page 1).
Regarding claim 6, the limitation of wherein the weight ratio of the amount of volatile oil to natural resin is from 0.5 to 50 is met by ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 35.8 (53.37:1.5).
Regarding claim 7, the limitation of wherein the volatile alcohol is chosen from C1-C4 alcohols is met by the ‘547 publication teaching ethanol (page 1).
Regarding claim 8, the limitation of wherein the weight ratio of volatile alcohol to natural resin is met by the ‘547 publication teaching ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 0.8 (1.2:1.5).
Regarding claim 9, the limitation of the weight ratio of the amount of volatile oil to the amount of volatile alcohol is within the range of 0.01-100 is met by ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 35.8 (53.7:1.5).
Regarding claims 11-12, the limitation of said at least one resin is chosen from a group including resins extracted from plant waxes is met by the ‘547 publication teaching euphobe cerria wax (page 1) from a tree (page 2).
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN107468547 in view of Mintel.
Regarding claim 1, the limitation of a cosmetic composition comprising, in a physiologically acceptable medium at least one volatile oil (a), at least one volatile alcohol (b) and at least one natural resin (c), in which the weight ratio of a and b to the amount of c is greater than 1 is met by the ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 36.3 (53.7+0.8:1.5). The ’547 publication teaching the beeswax and the candelilla wax extract are matched with excellent soft characteristics, so that the applied eyelashes can be more compliant and not easily bonded to each other, thereby avoiding contamination problems (page 2, first paragraph).
Regarding claim 2, the limitation of the weight ratio of volatile oil(s) to amount of natural resin is greater than 0.5 is met by the ‘547 publication teaching balance of isodecane 53.7-62.6 wt% and euphobe cerria wax extract 1.5-2 wt% (page 1) leading to a ratio of 35.8 (53.7:1.5).
Regarding claim 3, the limitation of characterized int hat the volatile oil or the volatile alcohol has a vapour pressure at ambient temperature and atmospheric pressure of greater than or equal to 1.3 Pa is met by the ‘547 patent teaching the elected ethanol and isododecane (page 1). “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 4, the limitation of characterized in that the volatile oil is chosen from volatile hydrocarbon based oils is met by the ‘547 publication teaching the elected isododecane (page 1).
Regarding claim 5, the limitation of characterized in that the volatile oil are at least partially of plan origin is met by the ‘547 publication teaching the elected isododecane (page 1).
Regarding claim 6, the limitation of wherein the weight ratio of the amount of volatile oil to natural resin is from 0.5 to 50 is met by ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 35.8 (53.37:1.5).
Regarding claim 7, the limitation of wherein the volatile alcohol is chosen from C1-C4 alcohols is met by the ‘547 publication teaching ethanol (page 1).
Regarding claim 8, the limitation of wherein the weight ratio of volatile alcohol to natural resin is met by the ‘547 publication teaching ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 0.8 (1.2:1.5).
Regarding claim 9, the limitation of the weight ratio of the amount of volatile oil to the amount of volatile alcohol is within the range of 0.01-100 is met by ‘547 publication teaching mascara cosmetics (page 1, first paragraph) comprising euphobe cerria wax extract 1.5-2 wt%, ethanol 0.8-1.2 wt% and balance of isodecane 53.7-62.6 wt% (100-lowest wt% all ingredients and 100 – highest wt% all ingredients) (page 1). This leads to a ratio of 35.8 (53.7:1.5).
Regarding claims 11-12, the limitation of said at least one resin is chosen from a group including resins extracted from plant waxes is met by the ‘547 publication teaching euphobe cerria wax (page 1) from a tree (page 2).
The ‘547 publication does not specifically teach the weight content of volatile oil is greater than the weight content of volatile alcohol which is itself greater than the weight content of natural resin, relative to the total weight of the composition (claim 10).
The ‘547 publication does not specifically teach terpenic compounds, polyterpenic compounds, monoterpenic or sesquiterpenic compounds, diterpenic compound, diterpenic compound, triterpenic compound and molecular weight of the resin (claims 13-20).
Mintel teaches a mascara volume type composition (title) comprising isododecane, candela wax extract, beeswax, microcrystalline wax and ethanol (ingredient).
It would have been obvious to one of ordinary skill in the art to substitute a first wax resin, euphobe cerria wax extract, as taught by the ‘547 publication with a second wax extract, candelilla wax extract, as taught by Mintel with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectations of success as the ‘547 publication and Mintel are directed to mascara formulations comprising overlapping ingredients, such as isodecane, ethanol, wax resin, beeswax. One of oridnary skill in the art before the filing date of the claimed invention would be motivated to use candelilla wax resin in the mascara formulation taught by the ‘547 publication because the ‘547 publication teaches the candelilla wax extract are matched with excellent soft characteristics, so that the applied eyelashes can be more compliant and not easily bonded to each other, thereby avoiding contamination problems (page 2, first paragraph).
Regarding the ratios of volatile oil, volatile alcohol and natural resin, the ‘547 publication teaches ranges of isododecane, ethanol and wax resin known to be used in mascara compositions, wherein the ingredient such as wax resin have specific properties such as proving soft characteristics and wherein isododecane is the balance of other ingredients in the composition, thus an optimizable parameter.
That being said and in lieu of objective evidence of unexpected results, the concentrations can be viewed as a variable which achieves the recognized result of superior mascara composition. As MPEP 2144.05 recites “where 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 optimization”.The optimum or workable range of dosing can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of dosage nonobvious.
Regarding claims 13-20, the limitations regarding terpenic compounds, polyterpenic compounds, monoterpenic or sesquiterpenic compounds, diterpenic compound, diterpenic compound, triterpenic compound and molecular weight of the resin, The ‘547 publication and Mintel teach the elected candelilla wax resin, and thus would have the terpenic compounds, polyterpenic compounds, monoterpenic or sesquiterpenic compounds, diterpenic compound, diterpenic compound, triterpenic compound and molecular weight of the resin absent factual evidence to the contrary and based on Applicant stating candelilla wax resin reads on claims 1-20 in the species election dated 04/17/2026. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of copending Application No. 18/880,935 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘935 publication teaches a composition comprising at least one volatile oil which may be hydrocarbon based oils, volatile alcohol which may be ethanol and a natural resin which may be candelilla wax extract, in overlapping concentrations and ratios. The ‘935 publication teaches terpenic compounds, polyterpenic compounds, monoterpenic or sesquiterpenic compounds, diterpenic compound, diterpenic compound, triterpenic compound and molecular weight of the resin, thus rending the instant claims obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613
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