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 .
Election/Restrictions
Applicant's election with traverse of Group I, drawn to cosmetic compositions comprising a colorant composition, in the reply filed on 08/07/2026 is acknowledged. The traversal is on the grounds that Group II may be examined on the merits along with Group I in the absence of undue burden, and the technical relationship of the claimed inventions involves one or more of the same corresponding technical features.
This is not found persuasive because, as evidenced by their unique CPC classifications, the inventions are known to have separate statuses in the art; the inventions would require a search in multiple distinct CPC classifications, unique text searches, and consideration of multiple different categories of prior art, imposing a serious search burden. Further, analysis of shared technical features applies to applications filed under 35 U.S.C. 371, and the instant application is a U.S. non-provisional application filed under 35 U.S.C. 111(a).
The requirement is still deemed proper and is therefore made FINAL.
Claim 37 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 08/07/2026.
Claims 1-15 and 35-36 are cancelled.
Claims 16-34 are under current examination.
Priority
This application is a CON of Application 17/290,336, filed 04/30/2021, now abandoned. Application 17/290,336 is a national stage entry of PCT/EP2019/078678, filed 10/22/2019, and claims priority to US PRO 62/757,824, filed 11/09/2018.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/21/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is fewer than 50 words in length, and the word “Compositions” in line 1 should appear as the lower case “compositions”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 21 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The cosmetic composition according to Claim 16, wherein the composition is free of carmine red” should read “The cosmetic composition according to Claim 16, wherein the cosmetic composition is free of carmine red”.
Claim 23 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The colorant composition according to Claim 16, wherein the composition has a hue…” should read “The colorant composition according to Claim 16, wherein the colorant composition has a hue…”.
Claim 25 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The cosmetic composition according to Claim 16, wherein the composition further comprises…” should read “The cosmetic composition according to Claim 16, wherein the cosmetic composition further comprises…”.
Claim 31 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The cosmetic composition according to Claim 26, wherein the composition comprises…” should read “The cosmetic composition according to Claim 26, wherein the cosmetic composition comprises…”.
Claim 32 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The colorant composition according to Claim 26, wherein the composition comprises…” should read “The colorant composition according to Claim 26, wherein the colorant composition comprises…”.
Claim 33 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The colorant composition according to Claim 26, wherein the composition is free of carmine red” should read “The colorant composition according to Claim 26, wherein the colorant composition is free of carmine red”.
Claim 34 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “The colorant composition according to Claim 26, wherein the composition has a hue…” should read “The colorant composition according to Claim 26, wherein the colorant composition has a hue…”.
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.
Claim 32 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 32 recites (emphasis added) “The colorant composition according to Claim 26, wherein the composition comprises from 0.05 to 15% by weight colorant composition”. It is unclear how the colorant composition can comprise from 0.05 to 15% by weight of itself, and the metes and bounds of the claim are uncertain. For purposes of examination and applying prior art, the Examiner interprets that Applicant intended to recite “The cosmetic composition according to Claim 26, wherein the composition comprises from 0.05 to 15% by weight colorant composition”, similar to the language of instant claim 31.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 23 and 34 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 23 recites “The colorant composition according to Claim 16, wherein the composition has a hue that is within 12% of the hue for carmine red on the CIELAB color space scale”; claim 16, from which claim 23 depends, recites “the colorant composition mimics the color of cochineal red”. The instant specification uses cochineal red and carmine red interchangeably (see pg. 1, line 7 and pg. 1, line 26), and defines the term “mimics” as being within 12% of the hue for carmine red colorant as expressed on a basis of the CIELAB color space scale (pg. 4, lines 22-24). Thus, claim 23 merely recites the definition of the term “mimics” in claim 16, and fails to further limit the subject matter of claim 16.
The same issue arises in claim 34 which recites the definition of the term “mimics” in claim 26, and thus claim 34 fails to further limit the subject matter of claim 26.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 16-17, 19-23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2002/0086039 A1, published July 4, 2002, included on IDS submitted 10/21/2024), hereafter “Lee” in view of Lou et al. (WO 2017/194486 A1, published November 16, 2017), hereafter “Lou”.
Regarding instant claim 16-17, 19, and 23, Lee teaches a lipstick formulation (cosmetic composition) that comprises 3.0 wt.% Red 7 Ca Lake and 1.0 wt.% Red 33 Al Lake as components (see entire document, particularly example 4 at paragraph [0159]); the wt.% ratio of these components is 3:1. The specification of the instant invention notes that D&C Red No. 7 is (calcium-3-hydroxy-4-[(4-methyl-2-sulfophenyl)azo]-2-naphthalenecarboxylate) which is a calcium salt of (sulfonatophenylazo) naphthoate and D&C Red No. 33 is (disodium-5-amino-4-hydroxy-3-(phenylazo)-naphthalene-2, 7-disulfonate) which is a sodium salt of (phenylazo) naphthalenedisulfonate (pg. 5, lines 3-9); the specification further notes that “such component are often lakes” (pg. 5, line 11). Further, Red 7 and Red 33 are used as colorant components in Examples 2-5 of the instant invention.
Because the structural components of the colorant composition of the prior art are the same as those of the colorant composition of claimed invention, it is prima facie obvious that the properties of instant claim 16 “the colorant composition mimics the color of cochineal red” and “is stable for at least one week when stored at 45 °C” and of instant claim 23 “has a hue that is within 12% of the hue for carmine red on the CIELAB color space scale” must necessarily follow. From MPEP 2112.01: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). ‘When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.’ In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).”
Regarding instant claims 20 and 22, as noted above, the lipstick formulation of Lee (example 4) comprises 3.0 wt.% Red 7 Ca Lake and 1.0 wt.% Red 33 Al Lake, totaling 4.0 wt.%.
Regarding instant claim 21, the lipstick formulation of Lee (example 4) is free of carmine red.
Regarding instant claim 25, Lee teaches that common formulations of lipstick and lip gloss products comprise retinyl palmitate (paragraph [0155]).
Lee does not teach the limitation of instant claim 16 that the cosmetic composition further comprises 0.01 to 2.5% 4-ethyl resorcinol by weight of the cosmetic composition.
Lou teaches a composition comprising a retinoic acid precursor of retinyl palmitate, a skin benefit agent resorcinol derivative of 4-ethyl resorcinol, and a cosmetically acceptable carrier (see entire document, particularly abstract and claims 1-2); the resorcinol derivative is present from 0.001 to 10%, preferably from 0.1 to 3.5% based on the weight of the composition (claim 3 and pg. 6, lines 6-26). Lou teaches that resorcinol derivatives, such as 4-ethyl resorcinol, stabilize retinoic acid precursors and reduce the malodor and discoloration that occurs from premature oxidation of such precursors (pg. 1, lines 6-12 and 21-32, pg. 2, lines 1-7, and Example 1 at pg. 15).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant invention to modify the formulation of Lee with the 4-ethyl resorcinol in an amount overlapping that of instant claim 16, as suggested by Lou. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success in order to incorporate an agent that prevents the premature oxidation and corresponding malodor and discoloration of retinoic acid precursors, such as retinyl palmitate, and which provides a cosmetic composition that can be topically applied without skin irritation (see particularly Lou, pg. 2, lines 1-7). There is a reasonable expectation of success as Lee teaches that common formulations of lipstick products comprise retinyl palmitate (paragraph [0155]).
Claims 18 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Lou as applied to claims 16-17, 19-23, and 25 above, and further in view of Borgna (“Pigments stability in a lipstick” published Nov. 1, 2016; included on IDS submitted 10/21/2024), hereafter “Borgna”.
The teachings of the modified Lee are described above.
While Lee teaches a lipstick formulation that comprises Red 7 Ca Lake and Red 33 Al Lake, the combination of Lee and Lou does not teach that these are particles, plates, or both with the specified dimensions of instant claims 18 and 24.
Borgna teaches that the optimum particle size for pigments in lipsticks is between 400 and 800 nm (0.4-0.8 microns) and that the Red 7 Ca Lake taught by Lee is a pigment known to provide shading in such formulations (pg. 1, paragraph 3-pg. 2, paragraph 1).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant invention to modify the lipstick formulation of Lee in view of Lou with the pigment particles between 400 and 800 nm of Borgna, overlapping the claimed ranges.
One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success because Borgna teaches that in lipstick formulations, this particle size achieves maximum light scattering, resulting in opacity (pg. 1, paragraph 3). There is a reasonable expectation of success as both Borgna and Lee teach lake colorant pigments for the use in lipstick formulations.
Claims 26-27 and 30-34 are rejected under 35 U.S.C. 103 as being unpatentable over Favre et al. (US 2010/0172852 A1, published July 8, 2010, included on IDS submitted 10/21/2024), hereafter “Favre” in view of Duranton et al. (US 2003/0133960 A1, published July 17, 2003), hereafter “Duranton”.
Regarding instant claim 26-27, 30, and 34, Favre teaches lipstick formulations (cosmetic compositions) that comprise 5.99 wt.% D&C Red 7 Calcium Lake and 0.55 wt.% D&C Red 33 Aluminum Lake as components (see entire document, particularly examples 7-11 beginning at paragraph [0072]); the wt.% ratio of these components is 10.9:1. The specification of the instant invention notes that D&C Red No. 7 is (calcium-3-hydroxy-4-[(4-methyl-2-sulfophenyl)azo]-2-naphthalenecarboxylate) which is a calcium salt of (sulfonatophenylazo) naphthoate and D&C Red No. 33 is (disodium-5-amino-4-hydroxy-3-(phenylazo )-naphthalene-2, 7-disulfonate) which is a sodium salt of (phenylazo) naphthalenedisulfonate (pg. 5, lines 3-9); the specification further notes that “such component are often lakes” (pg. 5, line 11). Further, Red 7 and Red 33 are used in Examples 2-5 of the instant invention.
Because the structural components of the colorant compositions of the prior art are the same as the colorant composition of claimed invention, it is prima facie obvious that the properties of instant claim 26 “the colorant composition mimics the color of cochineal red” and “is stable for at least one week when stored at 45 °C” and of instant claim 34 “has a hue that is within 12% of the hue for carmine red on the CIELAB color space scale” must necessarily follow. From MPEP 2112.01: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). ‘When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.’ In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).”
Regarding instant claims 31-32, as noted above, the lipstick formulations of Favre (examples 7-11) comprise 5.99 wt.% D&C Red 7 Calcium Lake and 0.55 wt.% D&C Red 33 Aluminum Lake, totaling 6.54 wt.%.
Regarding instant claim 33, the lipstick formulations exemplified by Favre (examples 7-11) are free of carmine red.
Favre does not teach the limitation of instant claim 26 that the cosmetic composition further comprises 4-ethyl resorcinol, retinyl propionate, or a mixture thereof.
Duranton teaches a method for promoting re-epithelialization of the skin or mucous membrane comprising topical application of a composition comprising acexamic acid and a retinoid of retinyl propionate (see entire document, particularly abstract and claims 1-3). The composition is applied to the lips (claim 17) and may be in solid form, such as a lipstick (paragraph [0041]). Duranton teaches that retinoids are capable of accelerating the re-epithelialization of injured skin by activating epidermal proliferation (paragraph [0011]) and the compositions can be used to prevent or combat chapping, tautness, and/or redness (paragraph [0001]).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant invention to modify the lipstick formulation of Favre with the acexamic acid and retinyl propionate suggested by Duranton. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success in order to incorporate components that re-epithelize the fragile mucous membranes of the lips and can prevent unpleasant sensations such as chapping, as suggested by Duranton (see particularly paragraphs [0001]-[0005], [0013]-[0014], and [0030]). There is a reasonable expectation of success as Duranton teaches that the acexamic acid and retinyl propionate-containing compositions are applied to the lips and can be in a solid lipstick form, and Favre exemplifies lipstick formulations and suggests the inclusion of active agents (paragraph [0061]).
Claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Favre and Duranton as applied to claims 26-27 and 30-34 above, and further in view of Borgna (“Pigments stability in a lipstick” published Nov. 1, 2016; included on IDS submitted 10/21/2024).
The teachings of the modified Favre are described above.
While Favre teaches lipstick formulations that comprise Red 7 Ca Lake and Red 33 Al Lake, the combination of Favre and Duranton does not teach that these are particles, plates, or both with the specified dimensions of instant claims 28 and 29.
Borgna teaches that the optimum particle size for pigments in lipsticks is between 400 and 800 nm (0.4-0.8 microns) and that the Red 7 Ca Lake taught by Favre is a pigment known to provide shading in such formulations (pg. 1, paragraph 3-pg. 2, paragraph 1).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant invention to modify the lipstick formulation of Favre in view of Duranton with the pigment particles between 400 and 800 nm of Borgna, overlapping the claimed ranges. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success because Borgna teaches that in lipstick formulations, this particle size achieves maximum light scattering, resulting in opacity (pg. 1, paragraph 3). There is a reasonable expectation of success as both Borgna and Favre teach lake colorant pigments for the use in lipstick formulations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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/J.M.K./Examiner, Art Unit 1611
/TREVOR LOVE/Primary Examiner, Art Unit 1611
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