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 .
All previous claim rejections as indicated in the Office action dated April 8, 2026, have been maintained for reasons of record.
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.
Claims 1-15 remain rejected under 35 U.S.C. 103 as being unpatentable over LORANT (WO 2013/117550 A2, published on August 15, 2013) in view of Cao et al. (WO 2020/234038 A1, published on November 26, 2020) (“Cao” hereunder), Page et al. (US 20170172904 A1, published on June 22, 2017) (“Page” hereunder) and George et al. (US 20180098615 A1, published on April 12, 2018) (“George” hereunder).
The present claim 1 is directed to a composition comprising:
at least one particulate cellulosic compound;
at least hydrophobic silica aerogel particles;
at least one semicrystalline polymer containing at least one alkyl acrylate chain; and
at least one wax of plant origin having a melting point of greater than 25° C.
Lorant discloses a cosmetic composition comprising Silica Silylate (Aerogel) 0.8 wt%, semicrystalline polymer - poly C10-30 alkyl acrylate (Intelimer IPA 13-1) 2 wt % and carnauba wax from a palm plant 0.75 wt %. See p. 27, Anti-aging smoothing butter, formulation D.
The reference teaches that the combination of a silica aerogel with a semicrystalline polymer improves the sensory properties of the cosmetic composition and makes faster and more complete absorption of the composition into the skin. See p. 1, lines 28 – 31. The reference further teaches that the semicrystalline acrylic acid also functions as a thickener in the oily phase. See p. 2, lines 7 – 10.
Lorant fails to teach the at least one particulate cellulosic compound of the present claim 1.
Cao discloses an oil-in-water emulsion comprising cellulose microspheres for providing soft-focus benefits. See abstract. Tables 1 and 2 disclose example formulations comprising the spherical cellulosic particles (Cellulobeads) in the amount of 3 or 4 wt % based on the total weight of the compositions.
Page also discloses an anhydrous composition comprising particulate cellulosic compound (Cellulobeads from Daito Kasei), hydrophobic silica aerogel particles and candelilla wax from plant origin 5 wt%. See Example 4. The reference teaches that the composition provides ‘soft-focus’ effects to blur skin imperfections while providing breathable, pleasant sensory effects. See abstract.
George teaches cosmetic compositions with sensorial and aesthetic benefits and enhanced stability. A particular combination of about 0.1-1 % of cellulose beads (Cellulobeads from Daito Kasei) and about 0.1-1 % of silica silylate is explicitly mentioned. See [0117]. The reference particularly teaches, “[t]e fillers (e.g., cellulose beads) can provide beneficial effects such as oil control, sebum control, sweat control, mattifying effects, and/or skin protective effects such as the ability to absorb pollutant particles to a composition.” See [0118].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Lorant and combine the spherical cellulosic particles with silica silylate as motivated by Cao, Page and George. The skilled artisan would have been motivated to do so, as 1) all references are directed to skin care cosmetic compositions comprising organic and/or mineral fillers; 2) Cao and Page teaches similar compositions comprising cellulosic microspheres effective in providing skin microrelief and hiding skin imperfection while providing pleasant skin sensory effect, and 3) George teaches that the cellulose beads/silica silylate combination is particularly effective in controlling oil, sebum and sweat and protecting the skin from pollutant. Since 1) Cao teaches a similar oil and water emulsion comprising the cellulose particles and 2) Page and George teaches the specific combination of cellulose particles and silylate silica used in Lorant, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing a stable composition with improved soft-focus effects, sensory feel and skin protection. See the present claims 1-9 and claim 15.
Regarding claim 10, Lorant formulation D also contains behenyl alcohol in the fatty phase.
Regarding claim 11, Lorant teaches waxes or any pasty fatty substances can be used in the fatty phase of the composition. See p. 20, lines 4-8. Although Lorant teaches that such pasty fatty substance can be hydrogenated vegetable oil mixtures or the mixture of polyglycerolated (3 mol) vegetable (mimosa/jojoba/sunflower) waxes and suggests using jojoba oil, the reference fails to mention hydrogenated jojoba oil. See p. 14, line 24; p. 21, line 15-23.
Page teaches using pasty fatty compounds in the lipophilic phase and particularly discloses partially hydrogenated jojoba oil. See [0140]. Also mentioned as a suitable pasty fatty compound is the mixture of polyglycerolated (3 mol) vegetable (mimosa/jojoba/sunflower) waxes, which is also mentioned in Lorant. See [0142].
It is well settled in patent law to combine or substitute art-recognized functional equivalents known for the same purposes. See 2144.06 I and II. Since Lorant and Page establish that partially hydrogenated jojoba oil and a mixture of polyglycerolated (3mol) mimosa/jojoba/sunflower waxes are well-known pasty fatty substance suitable to use in cosmetic composition, combining the two or using one for the other to make a pasty fatty phase for cosmetic formulation would have been prima facie.
Regarding claim 12, Lorant the reference teaches using waxes in solid state at ambient temperature (25°C) and a melting point of greater than or equal to 30°C as a structuring and thickening agent. See p. 1, lines 18-27; p. 20, line 9 – p. 21, line 23. Formulation D contains carnauba wax from a palm plant in the amount of 0.75 wt %.
Regarding claim 13, Lorant teaches using nonvolatile oils having a vapor pressure of less than 0.13 Pa (0.01 mmHg), including hydrocarbon oils, vegetable oils, etc. The formulation D particularly contains hexyldecanol in the fatty phase, which is disclosed as a nonvolatile oil. See 15, line 25.
Regarding claim 14, Lorant further teaches using hydrophilic or lipophilic gelling agent. See p. lines 11 -12. Formulation D particularly contains xanthan gum as a hydrophilic gelling agent.
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.
U.S. Application No. 18/722650
Claims 1-15 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/722650 (reference application) in view of Lorant.
The reference claim 1 is directed to a composition comprising:
at least one particulate cellulosic compound; at least hydrophobic silica aerogel particles; and at least one wax of plant origin having a melting point of greater than 25° C.
Although the reference claim fails to teach at least one semicrystalline polymer containing at least one alkyl acrylate chain, Lorant teaches a cosmetic composition comprising Silica Silylate, semicrystalline polymer - poly C10-30 alkyl acrylate (Intelimer IPA 13-1) 2 wt % and carnauba wax from a palm plant. See p. 27, Anti-aging smoothing butter, formulation D. The reference teaches that the combination of a silica aerogel with a semicrystalline polymer improves the sensory properties of the cosmetic composition and makes faster and more complete absorption of the composition into the skin. See p. 1, lines 28 – 31. The reference further teaches that the semicrystalline acrylic acid also functions as a thickener in the oily phase. See p. 2, lines 7 – 10.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of the reference claims and incorporate to the disclosed composition the semicrystalline polymer containing at least one alkyl acrylate chain as motivated by Lorant, as the latter teaches that the polymer is useful as an oil phase thickening agent and a combination of the semicrystalline polymer and silica aerogel improves the sensory feel. Since both references teach similar cosmetic compositions comprising cellulosic particles and hydrophobic silica aerogel particles, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing a stable cosmetic composition with enhanced rheology and sensory feel. See the present claims 1, 7-9.
The specific limitations of the present claims 2-6 and 10-15 are disclosed in the reference claims 2-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
U.S. Application No. 18/722647
Claims 1-10 and 12-15 remain provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/722647 (reference application) in view of Lorant.
The reference claim 1 is directed to a composition comprising:
at least one particulate cellulosic compound; at least hydrophobic silica aerogel particles; and at least one semicrystalline polymer containing at least one alkyl acrylate chain.
Although the reference claim fails to teach at least one wax of plant origin having a melting point of greater than 25°C, Lorant teaches a cosmetic composition comprising Silica Silylate, semicrystalline polymer - poly C10-30 alkyl acrylate (Intelimer IPA 13-1) 2 wt % and carnauba wax from a palm plant. See p. 27, Anti-aging smoothing butter, formulation D. The reference teaches using waxes in solid state at ambient temperature (25°C) and a melting point of greater than or equal to 30°C as a structuring and thickening agent. See p. 1, lines 18-27; p. 20, line 9 – p. 21, line 23.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of the reference claims and incorporate to the disclosed composition a wax component such as carnauba wax as a structuring and thickening agent as motivated by Lorant. Since both references teach similar cosmetic compositions comprising cellulosic particles, hydrophobic silica aerogel particles and semicrystalline polymer comprising alkyl chain, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing a stable cosmetic composition with enhanced rheology and desired viscosity. See the present claim 1.
The specific limitations of the present claims 2-9 and 13-15 are disclosed in reference claims 2-13.
Regarding claim 10, Lorant formulation D also contains behenyl alcohol in the fatty phase.
Regarding claim 12, Lorant the reference teaches using waxes in solid state at ambient temperature (25°C) and a melting point of greater than or equal to 30°C as a structuring and thickening agent. See p. 1, lines 18-27; p. 20, line 9 – p. 21, line 23. Formulation D contains carnauba wax from a palm plant in the amount of 0.75 wt %.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 11 remains provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/722647 (reference application) and Lorant as applied to claims 1-10 and 12-15 as above, and further in view of Page.
Lorant teaches waxes or any pasty fatty substances can be used in the fatty phase of the composition. See p. 20, lines 4-8. Although Lorant teaches that such pasty fatty substance can be hydrogenated vegetable oil mixtures or the mixture of polyglycerolated (3 mol) vegetable (mimosa/jojoba/sunflower) waxes and also suggests using jojoba oil, the reference fails to mention hydrogenated jojoba oil. See p. 14, line 24; p. 21, line 15-23.
Page discloses an anhydrous composition comprising particulate cellulosic compound (Cellulobeads from Daito Kasei), hydrophobic silica aerogel particles and candelilla wax from plant origin 5 wt%. See Example 4. The reference teaches that the composition provides ‘soft-focus’ effects to blur skin imperfections while providing breathable, pleasant sensory effects. See abstract.
Page teaches using pasty fatty compounds in the lipophilic phase and particularly discloses partially hydrogenated jojoba oil. See [0140]. Also mentioned as a suitable pasty fatty compound is the mixture of polyglycerolated (3 mol) vegetable (mimosa/jojoba/sunflower) waxes, which is also mentioned in Lorant. See [0142].
It is well settled in patent law to combine or substitute art-recognized functional equivalents known for the same purposes. See 2144.06 I and II. Since Lorant and Page establish that partially hydrogenated jojoba oil and a mixture of polyglycerolated (3mol) mimosa/jojoba/sunflower waxes are well-known pasty fatty substances suitable to use in cosmetic composition, combining the two or using one for the other to make a pasty fatty phase for cosmetic formulation would have been prima facie.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed on July 8, 2026, have been fully considered but they are not persuasive.
Applicant argues that Cao fails to suggest Cellulobeads alone can be effective in imparting good soft-focus effect and teaches away from using cellulose beads with a polymeric thickener if achieving soft focus effect is desired. In response, this argument is not commensurate with the scope of the present claims, which do not require the specific AMPS polymer used in the comparison test of Cao, nor any specific organic gelling agent.
Applicant further argues that neither Page nor Goerge provides the specific combination of Cellulobeads with a silica aerogel. Applicant correctly points out that that the silica in Page Example 4 is not silica aerogel, but the reference still supports that a combination of porous silica and particulate cellulosic compounds results in good soft-focus effects. See Page, [0326]. Regarding George, applicant asserts that silica silylate may not be silica aerogel, but applicant includes silica silylate as preferred hydrophobic silica aerogel particles. See published specification, [0062].
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
