DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
The listing of claims filed 22 November 2024, have been examined. Claims 1-18 are pending. Claims 1-18 are amended and are supported by the originally-filed disclosure.
Claim Objections
Claims 15 and 18 are objected to because of the following informalities:
Claim 15 is objected to because the standard is incorrectly written as "ATSM D93". The correct spelling is "ASTM D93", which is the standard referenced throughout the rest of the specification and claims. This is a typographical error that must be corrected.
Claim 18 recites "production of a C10 Guerbet alcohol, 1-Hexanol, 2-isopropyl-5-methyl". This chemical name appears incorrect. CAS 2051-33-4 corresponds to 2-isopropyl-5-methyl-1-hexanol not "1-Hexanol, 2-isopropyl-5-methyl". The structure/name ordering should be corrected.
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 Applicant regards as his invention.
Claims 3, 4, 6, and 18 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, regards as the invention.
Claim 3 is indefinite for referring to the "non-transfer lipstick composition according to claim 1". Claim 2 introduces "wherein it is a non-transfer or low transfer lipstick." However, the term "non-transfer lipstick composition" lacks proper antecedent basis because claim 1 does not establish that the composition is necessarily a "non-transfer lipstick composition". The applicant is required to amend the claim to provide proper antecedent basis or otherwise clarify the intended dependency (e.g. "The lipstick composition according to claim 2, wherein the composition is a non-transfer lipstick...").
Claim 4 is indefinite for "percentage greater than or equal to 85% of carbon 14". It is unclear whether carbon 14 percentage is referring to isotope abundance, renewable carbon fraction, or percentage of total carbon atoms. To overcome this rejection, the applicant should amend the claim to provide a clear measurement basis.
Claim 6 recites "has a biodegradability of at least 50% according to OECD 301F". This is indefinite because the testing conditions are not incorporated in the specification in sufficient detail. The OECD 301F method depends on inoculum, concentration, and duration test conditions. To overcome this rejection, the applicant is advised to amend the specification to provide adequate experimental detail to determine the metes and bounds of the claim with reasonable certainty.
Claim 18 recites "the mixture of the product formed in step 1)" and "the bio-sourced alcohol mixture formed in step 2)". However, the process steps are identified as (a), (b), (c), (d), and (e). There are no numbered steps 1) and 2). Thus, the claim contains improper internal references. The recitations "step 1)" and "step 2)" lack antecedent basis because the process steps are identified using letters (a)-(e). The applicant is required to amend the claim for proper antecedent basis (e.g., replace "step 1)" with "step a)").
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 1-9, and 11-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Barone et al. (US20130272982A1; published 17 October 2013, hereinafter “Barone”) in view of Bernoud (WO2019197507A1; published 17 October 2019).
Barone teaches cosmetic compositions comprising volatile hydrocarbon materials suitable for lip cosmetic applications. Barone discloses cosmetic compositions including volatile oily compounds for cosmetic applications, including compositions having film-forming cosmetic components (Abstract and Title). Barone specifically teaches coconut alkanes, which comprise volatile oily compositions containing paraffins. Barone teaches a volatile oily composition comprising 50 to 100% by weight of a mixture of linear paraffins and 70 to 99% by weight of at least one linear paraffin selected from C8, C10, C12 paraffins and mixtures thereof (¶[0006]-[0009], ¶[0025]).
Barone further teaches incorporation of the coconut alkane volatile component into cosmetic compositions at significant amounts. In an exemplary formulation, Barone teaches coconut alkanes present at 41.12 wt% and 5.00 wt% of the total composition (¶[0017]). Thus, Barone teaches a volatile alkane component present at greater than the claimed minimum amount of 2 wt%.
Barone also teaches higher carbon alkanes. Specifically, Barone teaches that the volatile oily composition may include C12 paraffin and higher linear paraffins, including C14-C24 paraffins (¶[0031]). Barone also teaches that the volatile oily composition may contain minor amounts of branched hydrocarbons (¶[0030]). However, Barone does not expressly teach a controlled volatile alkane mixture comprising a defined fraction A of branched C≤10 alkanes and fraction B of C>10 alkanes as required by instant claim 1.
Bernoud cures this deficiency. Bernoud teaches a cosmetic excipient comprising a volatile hydrocarbon mixture of alkanes for incorporation into cosmetic formulations (Abstract). Bernoud teaches that the alkane mixture may be used in cosmetic compositions, including lip coloring compositions such as lipstick and lip gloss formulations (¶[0194] and ¶[0214]). Bernoud teaches that the cosmetic excipient comprises at least one branched C8-C10 alkane, and at least one C≥11 alkane (claims 1, 5, and 6). Thus, Bernoud teaches the claimed combination of fraction A comprising branched C≤10 alkanes, and fraction B comprising C>10 alkanes.
Bernoud further teaches that branched C10 alkanes include trimethylheptanes (¶[0047]). Bernoud teaches that the C8-C10 alkane component may be present in an amount of 1-50% by mass relative to the total alkane mixture (claim 7). Bernoud also teaches that the C≥11 alkane component may be present in amounts of 50-99% by mass relative to the alkane mixture (claim 10).
Bernoud explicitly teaches that the use of a cosmetic excipient consisting only of branched alkanes makes it possible to obtain more stable emulsions than the emulsions obtained with linear alkanes, with remarkable cosmetic qualities in addition to excellent stability in the emulsions such as better dispersibility (i.e., the possibility of obtaining regular dispersions, of powders, for example pigments), and better spreadability of the compositions on the skin (¶[0033] and ¶[0034]).
Instant claim 1 additionally requires that the volatile mixture of alkanes has a flash point below 55°C measured according to ASTM D93. Barone also teaches measuring flash point according to ASTM D93 for coconut alkanes(¶[0056]). Bernoud teaches ASTM D93 as the method for determining flash point (¶[0014]) and that flash point and volatility characteristics are relevant properties of alkane mixtures (¶[0030]-[0032]).
Bernoud examples of the alkane mixture of the composition comprise 30% n-decane (C10 linear alkane, flash point 46°C), 40% n-dodecane (C12 linear alkane, flash point 71°C) and 30% n-tetradecane (C14 linear alkane, flash point 115°C) has a flash point of 66°C (¶[0031]), wherein it is particularly advantageous for volatility that the alkane mixture has a flash point of less than 69°C (¶[0032]; see ¶[0030]). Example A5, formulation 7 is a lip formulation having Vegelight® Silk coconut alkanes 21% n-decane (C10 linear alkane), 74% n-dodecane (C12 linear alkane), and 5% n-tetradecane (C14 linear alkane) (pages 15-16). Thus, the flash point limitation represents an optimized property of the selected alkane mixture. Moreover, the flash point of an alkane mixture is a fundamental, well-understood property that can be predictably adjusted based on the carbon chain length and branching of the alkanes. Bernoud itself provides the roadmap for achieving a lower flash point by adjusting the ratio of C8-C10 alkanes.
Further, one of ordinary skill in the art would recognize that a volatile hydrocarbon solvent selected for cosmetic evaporation properties would characteristically possess a low flash point. Although, the precise instant claimed flash point value is not expressly disclosed by Barone or Bernoud, the flash point is a known result-effective variable dependent on known formulation parameters, including alkane chain length and branching. Therefore, selecting an alkane mixture, following the volatile hydrocarbon mixture guidance of Barone and Bernoud, having a flash point with an optimum value below 55°C would have been an obvious optimization of a result-effective variable (see In re Aller, 220 F.2d 454 (CCPA 1955)).
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Barone and Bernoud because both references address the same technical problem, providing cosmetic compositions containing volatile hydrocarbon carriers that evaporate after application while providing desirable sensory characteristics.
Barone teaches volatile alkane materials for lipstick compositions to provide desired cosmetic properties, including shine and transfer resistance (Abstract). Bernoud expressly teaches that its alkane mixture is a cosmetic excipient for use in cosmetic formulations (Abstract). Bernoud further teaches that the selection of alkane components affects formulation behavior, including volatility characteristics, spreading behavior, tactile properties, and non-greasy feel (¶[0027]). Accordingly, substituting Bernoud’s volatile alkane mixture for Barone’s coconut alkane mixture would have been a predictable substitution of known volatile hydrocarbon carriers in the same type of cosmetic composition. A combination of familiar elements according to known methods is obvious when it yields predictable results (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
One of ordinary skill in the art would have reasonably expected success because Barone already demonstrates that volatile alkane mixtures function as carriers in lipstick compositions, Bernoud teaches the same class of volatile alkane materials for cosmetic use, and both references teach that volatility, spreading behavior, and sensory properties are controlled through selection of hydrocarbon components. The substitution would therefore have been within the routine skill of a cosmetic formulator (see In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)).
Bernoud teaches that the cosmetic excipient (volatile alkane mixture) may be obtained entirely from raw materials of plant, bacterial, or animal origin, preferably plant origin (¶[0187]). Therefore, claim 5 is obvious over Barone in view of Bernoud. Evidentiary reference Lucas et al. (US20170058222A1; published March 2, 2017, hereinafter “Lucas”) teaches renewable organic compositions having high biogenic carbon content (i.e., at least 85% to approximately 100%) and carbon-14 measurement according to ASTM D6866 (¶[0019]) were known in the art at the time of the instant invention.
Selecting/substituting renewable hydrocarbons would have been predictable because renewable hydrocarbons are chemically equivalent to petroleum-derived hydrocarbons. The use of ASTM D6866 radiocarbon measurement is merely an analytical method for confirming renewable carbon content. A claimed measurement method does not impart patentability where the underlying composition is obvious. The modification would have been predictable because the chemical identity and cosmetic function of the hydrocarbon carrier would remain unchanged. One of ordinary skill in the art would have been motivated to use a biosourced alkane mixture in a lipstick composition to meet the growing demand for natural-origin and environmentally friendly ingredients.
Evidentiary reference Bauer et al. (WO2021116365A1; published 17 June 2021, hereinafter “Bauer”) teaches that OECD 301F biodegradation testing was a known method for evaluating biodegradation of chemical compositions (Abstract). Bernoud’s individual components (i.e., n-decane, n-dodecane, n-tetradecane) are known to be readily biodegradable under OECD 301F (83.2% measured, 89.8% measured, and 80% calculated, biodegradable, respectively; see respective evidentiary references n-Decane Sigma-Aldrich Safety Data Sheet (page 9, 12.2), n-Dodecane Sigma-Aldrich Safety Data Sheet (page 11, Biodegradability), and n-Tetradecane Sigma-Aldrich Safety Data Sheet (page 8, 12.2)), and Bauer teaches that OECD 301F testing was known, but the specific measurement of ≥50% biodegradability for the specific instant claimed mixture is not explicitly disclosed. However, this would be an expected property of the alkane mixture. One of ordinary skill in the art would have been motivated to evaluate Bernoud’s renewable alkane hydrocarbon mixture using recognized biodegradation testing methods (i.e., OECD 301F testing) because environmental properties are relevant characteristics of renewable cosmetic ingredients as a routine procedure.
Bernoud teaches branched C8-C10 alkanes and specifically teaches branched C10 alkanes (claims 5 and 6). Selection of a particular carbon number within the known branched alkane class would have been obvious because carbon number predictably affects volatility and evaporation behavior (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)). Bernoud further teaches that branched C10 alkanes include trimethylheptanes (¶[0047]). One of ordinary skill in the art would have been motivated to select specific branched C10 alkanes, such as 2,3,6-trimethylheptane, from the class of branched C10 alkane trimethylheptanes, taught by Bernoud to achieve desired volatility and sensory properties.
Evidentiary reference Nakanishi (Molecular Structure and Physical Properties of Branched Alkanes, Bulletin of the Faculty of Engineering, Shinshu University, Issue No. 11, June 15, 1961) teaches it was known in the art at the time of the instant invention that 2,3,6-trimethylheptane is a known branched trimethylheptane alkane (page 57, Table III). Thus, one of ordinary skill in the art selecting among known branched C10 trimethylheptane species would have considered 2,3,6-trimethylheptane because it was a known trimethylheptane class member, from a total of 9 members documented by Nakanishi (page 56-57, Table III), is a known constitutional isomer of 2,2,3-trimethylheptane (exemplified Bernoud in ¶[0047] for the taught trimethylheptane class), and would provide the same expected function of a volatile branched C10 hydrocarbon for the same volatility objective. The selection of a specific instant claimed species from the small, finite number of compounds in the known genus of trimethylheptane disclosed in the prior art, wherein the results are predictable is prima facie obvious (see MPEP § 2144.08 and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992)).
Barone teaches C12-C24 paraffins and the C12 alkane dodecane and tetradecane (¶[0031]) and Bernoud teaches C≥11 alkane components (claim 1). The specific selection of chain length is a predictable modification because boiling point, volatility, and evaporation rate correlate directly with carbon number. A skilled artisan would have selected higher alkanes for emolliency and persistence (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
Bernoud Example A5, formulation 7 teaches a lip formulation containing coconut alkanes comprising n-decane, n-dodecane, and n-tetradecane (pages 15-16). Selection of n-dodecane as the higher alkane component would have been obvious because it is a known cosmetic volatile/emollient hydrocarbon to provide desired volatility/emolliency balance. The specific selection is a routine optimization.
Regarding instant claim 14, Bernoud teaches mixtures of lower and higher hydrocarbons. Nakanishi teaches the specific compound 2,3,6-trimethylheptane, as described above. The combination of 2,3,6-trimethylheptane and a C>10 alkane is not expressly disclosed. However, one of ordinary skill in the art would have been motivated to select specific branched C10 alkanes (such as 2,3,6-trimethylheptane) from the class of branched C10 alkanes taught by Bernoud to achieve desired volatility and sensory properties. The selection of a specific claimed species from the genus of trimethylheptane compounds disclosed in the prior art is prima facie obvious (see MPEP § 2144.08 and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992)), as described above.
One of ordinary skill in the art would have had a reasonable expectation of success in combining the specific compound 2,3,6-trimethylheptane as a branched alkane with known physical properties (Nakanishi, page 57, Table III) with as the specific branched C10 alkane taught by Bernoud (¶[0047]) combined with Barone’s lipstick composition comprising a volatile mixture of alkanes (Abstract). One of ordinary skill would expect that using the specific isomer 2,3,6-trimethylheptane in the alkane mixture would provide similar or improved volatility and sensory properties.
Barone teaches nonvolatile oils in cosmetic compositions (¶[0032]-[0035]). Specific examples mentioned include vegetable oils as suitable nonvolatile oils (¶[0034]), which are known high flash point cosmetic oils including sunflower oils (¶[0034]; wherein sunflower seed oil is known to have a flash point >110°C (see evidentiary reference Sunflower seed oil Sigma-Aldrich Safety Data Sheet, page 5)). Selecting a conventional nonvolatile cosmetic oil having a high flash point (i.e., >110°C) would have been a routine and predictable choice, as this is a standard property for many cosmetic oils (e.g., plant oils, esters). The flash point of such oils is a fundamental property known to formulators and the specific flash point value is a property of the selected oil and would not impart patentability absent unexpected results. Selecting a nonvolatile oil having a high flash point (>110°C) would have been an obvious and routine formulation choice for lipsticks to provide emollience and stability.
Bernoud teaches a renewable-origin cosmetic alkane mixture entirely obtained from raw materials of plant, bacterial or animal origin, preferably of plant origin (¶[0187]). Evidentiary reference Lucas teaches that renewable compositions having high biogenic carbon content were known in the art at the time of the invention (as discussed above). Evidentiary reference Li (CN115337234A; published 15 November 2022) teaches that it was known in the art at the time of the instant invention to prepare lipstick formulations with 100% pure biological source ingredients (Title and Abstract) and provides explicit motivation to do so in the Background section (page 2). Thus, the concept of achieving ≥85% natural origin was known and would have been obvious to one of ordinary skill in the art.
On of ordinary skill in the art would have been motivated to maximize renewable content in cosmetic formulations because renewable cosmetic ingredients were known alternatives to petroleum-derived materials and the known desire in the art to create cleaner, more sustainable, and natural-origin cosmetic products, as explicitly stated by Li. A formulator would be motivated to maximize the natural origin content of a product to meet consumer demand and regulatory standards for natural cosmetics. Using other naturally derived ingredients (e.g., plant oils, waxes, pigments) would be an obvious step to increase the overall naturalness index. The calculation of a mass percentage is a simple arithmetic exercise, and achieving an 85% threshold is a routine optimization goal.
Barone teaches volatile alkanes for long-lasting lip products but does not explicitly teach drying time of the composition, however indicates in its <15 minutes in the panelist evaluation (¶[0052]). Bernoud teaches volatile alkane mixtures selected for evaporation characteristics (¶[0249]-[0293]) and evaluates evaporation behavior over time and seeks volatile hydrocarbon compositions having performance comparable to volatile silicones (¶[0022] and [0253]).
Bernoud provides data on the percentage of non-evaporated material over time (e.g., 69.27% residual mass after 1438 minutes for one mixture) (¶[0251]) and is directly concerned with the volatility of alkane mixtures, aiming to replicate the quick-drying performance of volatile silicones like cyclopentasiloxane (¶[0022] and ¶[0253]). Thus, Bernoud teaches volatile hydrocarbon compositions selected for rapid evaporation, wherein drying time is impacted by the volatile solvent selection, concentration, and evaporation rate. Given the drying time is a function of volatility, and one of ordinary skill in the art would expect that a volatile alkane mixture with a flash point below 55°C would dry quickly, within the instant claimed time.
Evidentiary reference Scancarella et al. (US20020159960A1; published 31 October 2002) teaches that transfer resistance is assessed by applying the film to the lips and allowing it to dry for 5 minutes, then lightly touching the lips to the back of the hand; if no color or a trace of color remains, the film is considered transfer resistant (¶[0028]), wherein drying time depends on the type of polymeric film former and other ingredients in the composition and generally, a drying time of ½ minute to 10 minutes is suitable to permit the transfer resistant layer to adequately set on the lips (¶[0067]). Preferably the film should dry in at least 30 seconds to 5 minutes (¶[0094]).
One of ordinary skill in the art would find it obvious to formulate a long-wear, transfer-resistant lipstick having the instant claimed drying time after application of the composition to the lips at 20°C of ≤5 min 30 sec. From these teachings it would have been obvious to a formulator to optimize volatile solvent concentration and film-forming components to achieve a desired drying time that confers transfer resistance.
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Barone and Bernoud because they both address the same technical problem of providing cosmetic compositions having volatile carriers that evaporate after application to leave a cosmetic film. One of ordinary skill in the art would have recognized that the volatile alkane mixture of Bernoud is an alternative volatile carrier for the lipstick composition of Barone, as a simple substitution of known elements with predictable results. Bernoud expressly discusses the importance of volatility and sensory properties for cosmetic excipients (¶[0027]).
One of ordinary skill in the art would have been motivated to use Bernoud's alkane mixture in Barone's lipstick composition to achieve improved volatility and sensory properties. The claimed differences represent predictable optimization of known variables, selection of known hydrocarbon species, and substitution of known renewable sources. Accordingly, instant claims 1-9, and 11-17 would have been obvious to a person of ordinary skill in the art before the instant effective filing date.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Barone et al. (US20130272982A1; published 17 October 2013, hereinafter “Barone”) in view of Bernoud (WO2019197507A1; published 17 October 2019), in further view of Bernoud and Ramiandrasoa (US20210045991A1; published 18 February 2021).
Barone and Bernoud teach the limitations of instant claim 1, as described above, from which instant claim 10 depends, however does not explicitly teach the specific limitations of instant claim 10.
Instant claim 10 requires fraction A of 51-100%. Barone teaches a lipstick composition with coconut alkanes comprising linear paraffins, including C8, C10, and C12 paraffins, as discussed above. While Barone discloses a range of 50-100% for the linear paraffin mixture, the composition is directed to linear paraffins, not the branched C≤10 alkanes required by instant claim 10. Additionally, the C8-C10 alkane content relative to the total volatile alkane mixture is not specified as >50%. Bernoud teaches C8-C10 alkane content of 1-50% (claim 7). Thus, the prior art does not expressly disclose fraction A greater than 50%.
Bernoud and Ramiandrasoa teach a cosmetic composition for lip makeup (e.g., lipstick) including a linear paraffin mixture of 90-99% by weight of at least one linear paraffin selected from C8 or C10 paraffins and mixtures thereof and 1-10% by weight of a C14 linear paraffin (Abstract). While the mixture is directed to a linear C8 or C10 paraffin not a branched C8 or C10 alkane (isoparaffin), it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to substitute the ratios of the lower alkanes and higher alkanes taught by Bernoud and Ramiandrasoa for that of the ratios taught by Bernoud using a branched C10 alkane into the composition. Both references teach hydrocarbon-based volatile cosmetic solvents having the same function.
One would be motivated to do so because Bernoud teaches selection of hydrocarbon chain lengths for cosmetic volatility and sensory properties for cosmetic excipients, noting that the mixture should have volatility characteristics and a similar behavior in a formulation, in particular in terms of sensory properties such as the ability to spread on the skin, the sensation to the touch, or even the non-greasy character of the film obtained (¶[0027]). The specific selection of the specific instant claimed ratios of the lower and higher chain length alkanes is a predictable modification because boiling point, volatility, and evaporation rate correlate directly with carbon number. A skilled artisan would have selected lower branched alkanes for volatility and higher alkanes for emollience and persistence.
The substitution of Bernoud's branched C10 isoparaffin for Bernoud and Ramiandrasoa’s linear C10 paraffin would have been a simple substitution of known elements with predictable results (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). A skilled artisan would have recognized that volatile hydrocarbon mixtures were interchangeable cosmetic carriers because such solvents perform the same function of temporarily reducing viscosity and evaporating after application. Thus, increasing the amount of lower molecular weight branched alkanes to increase volatility represents optimization of a known variable (see In re Aller, 220 F.2d 454 (CCPA 1955)). One of ordinary skill in the art seeking a more volatile cosmetic carrier would have adjusted the relative proportions of lower molecular weight branched alkanes and higher molecular weight alkanes and would have decreased the proportion of higher alkanes and increase the proportion of lower alkanes to increase volatility and drying speed to improve film formation and transfer resistance. Therefore, the claimed ranges represent routine optimization (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over Barone et al. (US20130272982A1; published 17 October 2013, hereinafter “Barone”) in view of Bernoud (WO2019197507A1; published 17 October 2019), in further view of Wick and Mahnke (US20120220806A1; published 30 September 2012, hereinafter “Wick”).
Barone and Bernoud teach the limitations of instant claim 1, as described above, from which instant claim 18 depends, however does not explicitly teach the specific limitations of instant claim 18.
Wick explicitly teaches a process for producing a C10 Guerbet alcohol from isoamyl alcohol (instant claim 18, step a). Wick discloses a process for dimerizing alcohols in the manner of a Guerbet reaction (Abstract). Wick teaches that 3-methylbutan-1-ol (an isoamyl alcohol) can be used as a starting alcohol for the Guerbet reaction (¶[0002]) and is very particularly preferred as the monoalcohol (¶[0034]). The dimerization of 3-methylbutan-1-ol in a Guerbet reaction would produce a C10 Guerbet alcohol. Wick explicitly confirms this, stating that "Matsu-ura et al. describe ... the Guerbet reaction under iridium catalysis ... 3-methyl-1-butanol (an isoamyl alcohol) can be dimerized in 50% yield", and the dimerization product has the structure of a C10 Guerbet alcohol (¶[0015]). In a working example, Wick demonstrates the Guerbet reaction using 2500 g of 3-methyl-1-butanol to produce a Guerbet alcohol content of 75% (Example 3, ¶[0067]).
Wick teaches the Guerbet reaction conditions as performed in the presence of a base, a carbonyl compound, and a hydrogenation catalyst from the group of the metals ruthenium, rhodium, palladium, osmium, iridium and platinum (Abstract), with the conversion reaction performed within the temperature range of 140-230° C and at a pressure in the range of 0.1-6 bar (claims 13 and 14). Wick's working example for producing the C10 Guerbet alcohol from 3-methyl-1-butanol uses 4 g of Pd/C as the catalyst and is heated to 180° C (¶[0067]). Wick teaches that isoamyl alcohol can be obtained as a byproduct of fermentation and wherein methyl-1-butanol can be obtained from hydroformylation and reduction of butane isomers (¶[0002]), thus teaching renewable, bio-sourced raw material obtained from fermentation processes.
As detailed above for claim 1, from which claim 18 depends, Barone is expressly directed to shiny, transfer resistant lipstick formulations (Title and Abstract) wherein the invention is suitable for anhydrous cosmetics including lipstick (¶[0050]). Barone provides a specific lipstick formulation working example comprising coconut alkanes and a coconut gel comprising vegetable oil, the combination of the alkane mixture with one or more pigments and powders, mica and lauroyl lysine, and fragrance (¶[0017]). The method of making Barone's lipstick involves heating a coconut gel, adding coconut alkanes, adding a colorant paste, and adding mica and fragrance (¶[0043]-[0049]).
Barone teaches processes for preparing alkanes and lipstick compositions that form the basis for the remaining steps of instant claim 18. Specifically, Barone teaches a method for producing alkanes from fatty alcohols. Barone states, "The paraffins (or fatty alkanes) contained in the oily composition according to the invention may be advantageously obtained according to a method comprising the following successive steps: 1—dehydration of at least one C6-C24 fatty alcohol to obtain an alkene, and 2—hydrogenation of said alkene to an alkane." (¶[0027]-[0029]). Barone further teaches that the fatty alcohols can be obtained from plant sources and particularly be obtained by saponification of natural oils or fats (¶[0029]), and that the alkanes obtained preferably contain an even number of carbon atoms and may also include branched alkanes (¶[0030]).
Bernoud provides examples of a formulation for coloring the lips (page 15, Example A4, Formulation 6) and a high-quality lip formulation (pages 15-17, Example A5, Formulation 7). These examples teach the combination of a volatile alkane mixture with waxes (e.g., candelilla wax), oils (e.g., sunflower seed oil, sweet almond oil), and pigments (e.g., CI 15850:1), specifically teaching that the alkane mixture can be "Vegelight Silk" containing 21% decane, 74% dodecane, and 5% tetradecane (page 16, Example AS, Formulation 7).
Bernoud explicitly teaches cosmetic excipients comprising volatile mixtures of alkanes and the use of Guerbet alcohols to produce such mixtures. Specifically, Bernoud teaches a cosmetic excipient comprising volatile mixtures of alkanes with at least one C8-C10 alkane, and at least one C≥11 alkane (Abstract), wherein the C8-C10 alkane may be branched and lists numerous specific branched C10 alkanes, including trimethylheptanes (page 3, ¶15). Bernoud teaches that methylalkanes are preferably obtained by dehydration of a Guerbet alcohol (page 2, ¶8), further stating in one embodiment, the alkanes according to the invention are obtained by dehydration of the corresponding Guerbet alcohol, followed by hydrogenation of the alkene obtained (page 8, ¶9). Bernoud also teaches that, "Guerbet alcohol will be obtained either by a classical Guerbet process through the condensation of two alcohols, or by a synthesis such as described in patent application US2012/0220806" (page 8, ¶11), which is Wick.
The specific mixture of the C10 Guerbet alcohol product with at least one bio-sourced C>10 alcohol to form a bio-based alcohol mixture (instant claim 18, step b) is not explicitly taught by Wick, Barone, and Bernoud. While Wick teaches the production of a C10 Guerbet alcohol and Barone teaches that the fatty alcohols can be obtained from plant sources, the specific mixing step with a bio-sourced C>10 alcohol is not explicitly disclosed. However, one of ordinary skill in the art would have been motivated to mix the C10 Guerbet alcohol with other bio-sourced alcohols to tailor the properties of the final alkane mixture, as taught by Bernoud (mixing C8-C10 alkanes with C≥11 alkanes). The use of bio-sourced alcohols is expressly taught by Barone and Bernoud .
The specific volatile mixture of alkanes consisting of 2,3,6-trimethylheptane and a C>10 alkane (instant claim 18, step c) is not explicitly taught by Wick, Barone, and Bernoud. While Bernoud teaches a mixture of branched C8-C10 alkanes and C≥11 alkanes, and Wick teaches a Guerbet process that can produce branched C10 alcohols, the specific combination consisting of 2,3,6-trimethylheptane and a C>10 alkane is not explicitly disclosed. However, one of ordinary skill in the art would have been motivated to select specific branched C10 alkanes (such as 2,3,6-trimethylheptane) from the class of branched C10 alkanes, specifically trimethylheptanes, taught by Bernoud to achieve desired volatility and sensory properties. The selection of a specific instant claimed species from the small, specific known genus of trimethylheptane compounds disclosed in the prior art is prima facie obvious (see MPEP § 2144.08 and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992)).
Regarding the addition of none, one or more volatile alkanes to the volatile mixture of alkanes (instant claim 18, step d), Barone and Bernoud teach mixtures of alkanes, the specific step of optionally adding volatile alkanes is a routine formulation choice. Regarding the combination of the volatile mixture of alkanes with at least one compound chosen from non-volatile oils, glossy oils, pasty fatty substances, gelling agents, film-forming polymers, waxes, pigments, dyes, and mixtures thereof (instant claim 18, step e), Barone teaches a lipstick composition comprising coconut alkanes, pigments, and other ingredients. Bernoud teaches lip coloring and lip formulations comprising a volatile alkane mixture with waxes, oils, and pigments. The specific list of compounds is a routine formulation choice for lipstick compositions, as taught by both Barone and Bernoud.
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Wick with the teachings of Barone and Bernoud because Barone teaches a transfer-resistant lipstick compositions containing volatile alkanes (coconut alkanes). Bernoud teaches a cosmetic excipient comprising a volatile alkane mixture suitable for use in lipstick and a formulation for coloring the lips. Barone teaches a method for producing alkanes from fatty alcohols by dehydration followed by hydrogenation (as described above). Bernoud teaches that the alkane mixture is obtained by dehydration of a Guerbet alcohol followed by hydrogenation of the alkene obtained, and expressly references Wick's Guerbet synthesis method as a source for the Guerbet alcohols. This is a direct teaching and motivation to combine the Guerbet process of Wick with the dehydration/hydrogenation process taught by Bernoud.
One of ordinary skill in the art would have been expressly motivated to use the Guerbet process of Wick to produce the Guerbet alcohols for subsequent dehydration and hydrogenation as taught by Bernoud. In addition, one of ordinary skill in the art would recognize that the C10 Guerbet alcohol produced by Wick's process is a suitable fatty alcohol for Barone's and Bernoud's dehydration/hydrogenation process. The prior art provided the motivation to make such a combination in the expectation that it would produce volatile alkanes suitable for cosmetic formulations.
One of ordinary skill in the art would have been motivated to use the volatile alkane mixture produced from Wick's Guerbet alcohol in Barone's lipstick composition to achieve transfer resistance and shine. The substitution of one known volatile alkane mixture for another in a known lipstick composition is a simple substitution of known elements with predictable results (see MPEP § 2144.02 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). Further, Wick teaches that isoamyl alcohol can be obtained from a renewable byproduct of fermentation, Barone teaches that fatty alcohols can be obtained from plant sources and Bernoud teaches that the cosmetic excipient is entirely obtained from raw materials of plant, bacterial or animal origin, preferably of plant origin (page 8, ¶9).
One of ordinary skill in the art would have been motivated to use bio-sourced starting materials (isoamyl alcohol, bio-sourced C>10 alcohols) to produce the volatile alkane mixture, as there was a known desire in the art for sustainable, bio-sourced cosmetic ingredients. The prior art provided the motivation to make such a modification in the expectation that it would have similar or improved properties.
One of ordinary skill in the art would have had a reasonable expectation of success in combining Wick, Barone, and Bernoud because Wick teaches a process for producing a C10 Guerbet alcohol from isoamyl alcohol, Barone teaches a process for producing alkanes from fatty alcohols by dehydration and hydrogenation, and Bernoud teaches a cosmetic excipient comprising a volatile mixture of alkanes and expressly references Wick's Guerbet synthesis method as a source for the Guerbet alcohols.
One of ordinary skill would expect that the C10 Guerbet alcohol produced by Wick's process could be dehydrated and hydrogenated according to Barone's and Bernoud's teachings to produce a volatile alkane mixture (including branched C10 alkanes) for use in a lipstick composition according to Barone's teachings. The sequence of Guerbet synthesis followed by dehydration and hydrogenation is a known and predictable route to branched alkanes, as expressly taught by Bernoud.
The process steps recited in instant claim 18 are standard organic synthesis techniques known in the art. One of ordinary skill in the art would have found it obvious to prepare branched alkanes via Guerbet synthesis followed by dehydration and hydrogenation, as this is a known route to branched alkanes. Thus, instant claim 18 would been obvious because the claimed synthesis is a predictable application of known Guerbet alcohol and hydrocarbon conversion chemistry.
Claim Rejections – Nonstatutory 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).
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of co-pending U.S. Patent Application No. 18/843,413 (hereinafter “’413”; published as US20260041617A1) in view of Barone et al. (US20130272982A1; published 17 October 2013, hereinafter “Barone”). Although the claims at issue are not identical, they are not patentably distinct from each for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The inventions claimed in the instant application and the co-pending application ’413 are not patentably distinct because the instant claims are directed to an obvious variation of the same volatile alkane cosmetic compositions claimed in the co-pending application ’413.
The co-pending application ’413 claims (a) a cosmetic composition applicable to the skin comprising a volatile mixture of alkanes; (b) wherein the volatile mixture comprises: (i) 20-100% fraction A comprising at least one branched C≤10 alkane; and (ii) 0-80% fraction B comprising at least one linear or branched C>10 alkane; (c) wherein the volatile mixture has a flash point below 55°C measured according to ASTM D93; and; (d) wherein the volatile mixture is present at ≥10 mass% relative to the total composition (claims 1-2).
The instant claims recite substantially the same composition. Specifically, instant claim 1 recites a lipstick composition comprising: (i) a volatile mixture of alkanes; (ii) fraction A comprising 20-100% by mass of at least one branched C≤10 alkane; (iii) fraction B comprising 0-80% by mass of at least one linear or branched C>10 alkane; and (iv) the volatile mixture having a flash point below 55°C according to ASTM D93.
The only distinction between instant claim 1 and co-pending application ’413 claim 1 is that the instant claim specifies the cosmetic composition as a lipstick composition and reduces the required volatile alkane concentration from ≥10 mass% to ≥2 mass%. However, the co-pending application ’413 expressly teaches that the claimed volatile alkane mixture is useful in cosmetic compositions including lip cosmetic products.
The co-pending application ’413 specification describes that the volatile alkane mixture may be incorporated into cosmetic compositions including lipstick, lip gloss, and related makeup products. The co-pending application ’413 further describes combining the volatile alkane mixture with cosmetic ingredients including non-volatile oils, glossy oils, pasty fatty substances, gelling agents, film-forming polymers, waxes, pigments, and dyes. Thus, modifying the cosmetic composition of the co-pending application ’413 from a general skin cosmetic composition to a lipstick composition represents a change in intended use and an obvious selection of one known cosmetic application among those expressly contemplated by the co-pending application ’413 disclosure.
A cosmetic formulator would have recognized lipstick as an obvious cosmetic embodiment of the claimed volatile alkane compositions because the same volatile alkane mixture provides the same functional properties, including volatility, spreading properties, sensory properties, and evaporation characteristics. The limitation requiring the volatile alkane mixture to represent ≥2 mass% of the total composition does not render the instant claims patentably distinct. The co-pending application ’413 already teaches compositions containing the same volatile alkane mixture at ≥10 mass%. A concentration of 2 mass% is merely a lower concentration within a range that would have been routinely optimized by a skilled artisan based on desired cosmetic properties such as volatility, sensory feel, spreading, and drying characteristics. Selection of a particular concentration of an otherwise known ingredient is generally considered obvious where the concentration is result-effective (see In re Aller, 220 F.2d 454, 456 (CCPA 1955) and In re Boesch, 617 F.2d 272, 276 (CCPA 1980)).
Instant claim 2 is likewise not patentably distinct because the co-pending application ’413 teaches the same volatile alkane composition and expressly teaches cosmetic compositions containing the volatile alkane mixture at concentrations including at least 25 mass% (claim 2). The additional limitation that the lipstick is “non-transfer or low transfer” does not render claim 2 patentably distinct because the co-pending application ’413 teaches the same volatile alkane composition for cosmetic applications where evaporation of volatile components and formation of a cosmetic film are desired.
Alternatively, Barone teaches volatile alkane-containing lipstick compositions providing transfer-resistant cosmetic films. Barone teaches cosmetic lip compositions comprising volatile solvents and film-forming components for providing shiny, transfer-resistant lipstick compositions (Abstract and Title). Therefore, selecting the volatile alkane composition of the co-pending application ’413 for a lipstick formulation would have been an obvious cosmetic implementation.
Instant claims 3-14 are also not patentably distinct from the co-pending application ’413 because they merely recite specific species, ratios, or components already disclosed or suggested by the co-pending application ’413. The co-pending application ’413 teaches: branched C≤10 alkanes; branched C10 alkanes; 2,3,6-trimethylheptane; C>10 alkanes including n-dodecane; mixtures of branched lower alkanes and higher alkanes; bio-derived alkane mixtures; ASTM D6866 carbon-14 measurements; OECD biodegradability testing; and cosmetic compositions containing oils and other cosmetic ingredients. Accordingly, selecting 2,3,6-trimethylheptane, n-dodecane, or specific alkane ratios represents selection from expressly disclosed alternatives. A species selected from a disclosed genus is generally obvious absent unexpected results (see MPEP §2144.08 and In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992).
Instant claim 15 recites a nonvolatile oil having a flash point greater than 110°C.The co-pending application ’413 teaches combining the volatile alkane mixture with nonvolatile oils. Selection of a conventional cosmetic nonvolatile oil having a known flash point is not patentably distinct because flash point is an inherent physical property of the selected oil.
Instant claims 16-17 recite natural-origin content thresholds. The co-pending application ’413 teaches that the volatile alkane mixture may be obtained entirely from plant, bacterial, or animal origin materials. The degree of natural-origin content represents optimization of the amount of known bio-derived ingredients in the cosmetic composition. Absent evidence of unexpected results associated at the claimed percentage; the selection of 85-90% natural origin content is an obvious optimization.
Instant claim 18 recites a drying time of ≤5 minutes 30 seconds. The co-pending application ’413 teaches volatile alkane compositions selected for evaporation behavior and cosmetic performance. Further, Barone teaches volatile alkane cosmetic compositions designed to provide transfer-resistant lipstick films (Abstract, ¶[0006]-[0009] and ¶[0052]). Drying time is a result-effective property dependent upon volatile solvent amount, evaporation rate, and formulation components. Optimization of drying time would have been within the ordinary skill of a cosmetic formulator (see In re Applied Materials, 692 F.3d 1289, 1296 (Fed. Cir. 2012)), wherein routine optimization of known parameters does not confer patentability.
While the instant application presents limitations not expressly claimed in the co-pending application ’413, such as the specific identification of the composition as a lipstick rather than a general cosmetic composition, the lower volatile alkane concentration threshold of ≥2 mass%, and the specific drying time requirement of ≤5 minutes 30 seconds. However, these limitations represent specific cosmetic use selections (e.g., lipstick for lip application) and optimization of variables already disclosed in the co-pending application ’413 rather than patentably distinct subject matter. If applicant presents evidence of unexpected results specifically attributable to these distinctions, such evidence will be considered.
Accordingly, claims 1-18 are not patentably distinct from claims 1-19 of co-pending application ’413 in view of Barone. The applicant may obviate this provisional nonstatutory double patenting rejection by filing a terminal disclaimer in accordance with 37 C.F.R. §1.321(c).
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of co-pending U.S. Patent Application No. 18/843,501 (hereinafter “’501”; published as US20250170037A1). Although the claims at issue are not identical, they are not patentably distinct from each for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant application and co-pending application ’501 are directed to the same inventive concept of cosmetic compositions comprising a volatile mixture of alkanes wherein the volatile alkane mixture comprises: fraction A containing branched C≤10 alkanes; and fraction B containing linear or branched C>10 alkanes; wherein the volatile alkane mixture has a flash point below 55°C measured according to ASTM D93; and wherein the volatile alkane mixture is incorporated into a cosmetic composition.
The only material distinction between the instant application and co-pending application ’501 is the particular cosmetic category co-pending application ’501 is directed towards an eye makeup composition and the instant application a lipstick composition. The chemical composition of the volatile alkane mixture, its source, physical properties, and method of preparation are substantially identical. Thus, the pending claims are directed to an obvious variation of the claimed eye makeup compositions.
Instant claim 1 recites “A lipstick composition wherein it comprises a volatile mixture of alkanes…” including: (a) 20-100% fraction A comprising at least one branched C≤10 alkane; (b) 0-80% fraction B comprising at least one linear or branched C>10 alkane; wherein: flash point is below 55°C; and the volatile alkane mixture is at least 2 mass % of the composition. Co-pending application ’501 claim 1 recites an eye makeup composition comprising: “a volatile mixture of alkanes” wherein the mixture comprises: “from 20 to 100% of a fraction A which comprises at least one branched C≤10 alkane” and: “from 0 to 80% of a fraction B which comprises at least one linear or branched C>10 alkane” and: “the volatile mixture of alkanes has a flash point below 55°C measured according to ASTM D93” and: “represents a mass percentage greater than or equal to 10% relative to the total mass of the composition.”
Thus, the co-pending application ’501 already claims the identical volatile alkane mixture and identical physical property limitation. The only difference is that the co-pending application ’501 claim requires incorporation into an eye makeup composition, whereas the instant claim requires incorporation into a lipstick composition. It would have been obvious to one of ordinary skill in the cosmetic formulation art to substitute lipstick as the cosmetic vehicle for the eye makeup composition of co-pending application ’501.
The co-pending application ’501 specification expressly teaches that the volatile alkane mixture is suitable for cosmetic compositions generally, including compositions selected from makeup compositions, lip products, mascara, foundations, compositions applied to skin, and keratin fiber compositions. The co-pending application ’501 specification teaches that the volatile alkane mixture provides desirable cosmetic properties including rapid evaporation, improved drying, sensory properties, spreadability, and cosmetic film formation. Accordingly, applying the same volatile alkane mixture to lipstick represents merely a predictable use of a known cosmetic ingredient in another cosmetic product category. A person of ordinary skill would have been motivated to modify the eye makeup composition of co-pending application ’501 to a lipstick composition because the references recognize that volatile hydrocarbon oils are commonly used across multiple cosmetic formulations.
A skilled artisan would have had a reasonable expectation of success because the volatile alkane mixture is already disclosed as a cosmetic ingredient, lipstick and eye makeup compositions are both conventional cosmetic delivery formats, the function of the alkane mixture is not dependent upon eye-specific anatomy or formulation requirements, and the claimed lipstick formulation uses the same branched C≤10 alkane component, linear/branched C>10 alkane component, flash point limitation, natural-origin characteristics, and biodegradability characteristics. Thus, incorporating the disclosed volatile alkane mixture into lipstick would have been a predictable application of known cosmetic technology.
Instant claims 2-17 merely recite additional limitations already disclosed or suggested by the co-pending application ’501. For example, instant claim 3 requires ≥25% volatile alkane mixture. Co-pending application ’501 claim 2 similarly recites, “greater than or equal to 25% relative to the total mass of the composition.” Instant claims 4-6 require ≥85% C14, biological origin, and OECD 301F biodegradability. Co-pending application ’501 claims 3-5 recite the same limitations. Instant claims 7-14 require branched C9/C10 alkane, 2,3,6-trimethylheptane, C11-C16 alkanes, and n-dodecane. Co-pending application ’501 claims 6-13 disclose the same alkane identities. Instant claim 15 requires nonvolatile oil having flash point >110°C. Co-pending application ’501 claim 14 teaches the same feature. Instant claim 16 requires ≥85% natural origin. Co-pending application ’501 claim 15 teaches the same limitation. Instant claim 17 requires a drying time limitation. Co-pending application ’501 claim 16 teaches a drying time limitation for application to eyelashes. The selection of a comparable drying time for lipstick represents routine optimization of formulation properties.
Instant claim 18 recites the process of producing C10 Guerbet alcohol from isoamyl alcohol, mixing with C>10 bio-sourced alcohol, dehydration, hydrogenation, obtaining volatile mixture containing 2,3,6-trimethylheptane and C>10 alkane, and combining with cosmetic components. Co-pending application ’501 claim 17 recites substantially the same process of production of C10 Guerbet alcohol, 1-hexanol, 2-isopropyl-5-methyl from isoamyl alcohol, mixture with bio-sourced C>10 alcohol, obtaining volatile mixture of alkanes by dehydration and hydrogenation, and combining with cosmetic ingredients. The only difference is the final cosmetic product category. It would have been obvious to use the same manufacturing process to prepare a lipstick composition because the process produces the same volatile alkane ingredient.
Accordingly, claims 1-18 of the instant application are provisionally rejected on the ground of non-statutory obviousness-type double patenting over claims 1-17 of co-pending application ’501. The pending instant claims merely substitute lipstick for eye makeup as the cosmetic end-use application of the same volatile alkane composition and preparation process. Such substitution would have been obvious to one of ordinary skill in the art because cosmetic formulations routinely employ interchangeable volatile hydrocarbon vehicles across cosmetic product categories. The applicant may overcome this provisional rejection by filing a terminal disclaimer in compliance with 37 C.F.R. §1.321(c).
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-39 of co-pending U.S. Patent Application No. 18/853,474 (hereinafter “’474”; published as US20250223249A1). Although the claims at issue are not identical, they are not patentably distinct from each for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant claim 1 is directed to “A lipstick composition wherein it comprises a volatile mixture of alkanes…” including fraction A comprising 20-100% branched C≤10 alkane; fraction B comprising 0-80% linear or branched C>10 alkane; flash point below 55°C according to ASTM D93; and volatile alkane mixture present at ≥2 wt% of the composition. Co-pending application ’474 claims a process for preparing the same volatile alkane mixture. Specifically, claim 20 of the co-pending application ’474 recites “A process for preparing a volatile mixture of alkanes comprising…” wherein a Guerbet alcohol is produced from a bio-sourced linear or branched alcohol; the Guerbet alcohol is combined with another bio-sourced alcohol; and a volatile mixture of alkanes is obtained by dehydration followed by hydrogenation.
The co-pending application ’474 further claims that the resulting volatile alkane mixture comprises the branched alkane derived from the Guerbet alcohol, and at least one alkane derived from the added bio-sourced alcohol (claims 20, 25, and 27-29). The co-pending application ’474 specifically claims “20 to 80% by mass of 2,3,6-trimethylheptane and 20 to 80% by mass of at least one linear alkane chosen from n-decane, n-dodecane and n-tetradecane.” (claim 28). Thus, the co-pending application ’474 claims production of the identical volatile alkane mixture required by instant claim 1.
The only difference between instant claim 1 and the claims of the co-pending application ’474 is that instant claim 1 recites the resulting volatile alkane mixture incorporated into a lipstick composition rather than the process for producing the volatile alkane mixture. However, the co-pending application ’474 expressly claims preparation of cosmetic compositions containing the same volatile alkane mixture. Specifically, claim 33 recites, “A process for preparing a cosmetic composition, comprising a step of mixing the volatile mixture of alkanes obtained by a process according to claim 20 with at least one compound chosen from non-volatile oils, glossy oils, pasty fatty substances, gelling agents, film-forming polymers, waxes, antioxidants, pigments, dyes, surfactants…”.
The claimed lipstick composition of the instant application merely selects one known cosmetic use from among the expressly disclosed cosmetic compositions. Additionally, claim 36 of the co-pending application ’474 specifically recites, “A method comprising preparing a cosmetic composition for lipstick, long-lasting lipstick, or lip gloss comprising the volatile mixture of alkanes obtained by the process according to claim 20.” Accordingly, the co-pending application ’474 already claims preparation of a lipstick composition comprising the same volatile alkane mixture.
The difference between instant claim 1 and claim 36 of the co-pending application ’474is only the particular structural limitation that the volatile mixture is present at “greater than or equal to 2%” relative to total composition weight. The selection of the amount of volatile alkane mixture is an obvious optimization of a known cosmetic formulation variable because the co-pending application ’474 teaches incorporation of the volatile alkane mixture into cosmetic compositions and provides broad ranges of incorporation.
A person of ordinary skill would have recognized that varying concentration of a known cosmetic volatile oil component within customary formulation ranges would predictably modify properties such as drying time, transfer resistance, and sensory characteristics (see In re Aller, 220 F.2d 454, 456 (CCPA 1955), optimization of result-effective variables is obvious). Therefore, instant claim 1 is not patentably distinct from the claims of the co-pending application ’474.
Instant claims 2-17 merely recite additional limitations directed to non-transfer lipstick properties, ≥25% volatile alkane concentration, radiocarbon content, bio-sourced origin, biodegradability, specific alkane species, 2,3,6-trimethylheptane, n-dodecane, nonvolatile oils, natural-origin content, and drying time. Each of these limitations is expressly taught or suggested by the co-pending application ’474.
Instant claims 7-14 recite branched C9/C10 alkanes, branched C10 alkane, 2,3,6-trimethylheptane, C11-C16 alkanes, and n-dodecane. The co-pending application ’474 expressly claims “20 to 80% by mass of 2,3,6-trimethylheptane and 20 to 80% by mass of at least one linear alkane chosen from n-decane, n-dodecane and n-tetradecane.” (claim 28). Therefore, the specific alkane identities are not patentably distinct.
Instant claims 4-5 and 16 recite bio-sourced alkane mixtures, natural origin ingredients, and biodegradability. The co-pending application ’474 expressly claims bio-sourced linear or branched alcohol starting materials, plant origin alcohols, ASTM D6866/EN16640 radiocarbon analysis, and OECD 301F biodegradability (claims 21, 24, 31, and 32). Thus, these limitations merely recite inherent properties or expected characteristics of the same bio-sourced volatile alkane compositions. A composition made from the claimed bio-sourced alcohol feedstocks would inherently possess the claimed radiocarbon characteristics.
Instant claim 15 recites at least one nonvolatile oil having a flash point greater than 110°C. The co-pending application ’474 claim 33 expressly teaches combining the volatile alkane mixture with, “non-volatile oils, glossy oils, pasty fatty substances, gelling agents, film-forming polymers, waxes…”. Therefore, incorporating a conventional nonvolatile oil into the lipstick formulation would have been an obvious formulation modification.
Instant claim 17 recites drying time after application at 20°C to lips ≤5 minutes 30 seconds. The co-pending application ’474 teaches cosmetic compositions containing the claimed volatile alkane mixtures for cosmetic applications including lipstick and long-lasting lipstick. The drying time is a predictable property resulting from the volatility and flash point characteristics already claimed. A skilled artisan would have optimized drying time by adjusting concentration of volatile alkane, polymer content, wax content, and oil content (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
Instant claim 18 recites preparing the lipstick composition by producing C10 Guerbet alcohol from isoamyl alcohol, mixing with biosourced C>10 alcohol, dehydration/hydrogenation to produce 2,3,6-trimethylheptane, C>10 alkane, and combining with cosmetic ingredients. This claim is substantially identical to claim 20 of the co-pending application ’474. The co-pending application ’474expressly recites Guerbet synthesis, isoamyl alcohol, bio-sourced C>10 alcohol, dehydration, hydrogenation, and formation of volatile alkane mixture (claims 20, 23, 25, and 28).
The final cosmetic combination step is expressly recited in claim 33. Accordingly, instant claim 18 merely recasts the claimed process of the co-pending application ’474 with the end product characterized as a lipstick composition. Such claiming of a product-by-process relationship does not impart patentable distinction where the claimed product/process is the same (see In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)).
Accordingly, claims 1-18 are provisionally rejected under the doctrine of nonstatutory obviousness-type double patenting over claims 20-39 of co-pending application ’474. The instant claims are not patentably distinct because the co-pending application claims production of the identical volatile alkane mixture, and the co-pending application expressly claims incorporation of that mixture into lipstick and cosmetic compositions.
The additional limitations of the instant claims represent only selection of a particular cosmetic category, optimization of concentration, routine formulation choices, inherent properties of bio-sourced materials, or predictable results of known compositions. Therefore, issuance of separate patents containing both claim sets would improperly extend patent rights beyond the statutory term. The applicant may overcome this provisional rejection by filing a terminal disclaimer in accordance with 37 C.F.R. §1.321(c), or by demonstrating that the claims are patentably distinct.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-27 of co-pending U.S. Patent Application No. 17/047,136 (hereinafter “’136”; published as US20210154110A1). Although the claims at issue are not identical, they are not patentably distinct from each for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant application and the co-pending application ‘136 are directed to related cosmetic compositions comprising mixtures of alkane compounds and share common inventors and ownership. The proper inquiry is whether the differences between the pending claims and the reference claims represent patentably significant differences or merely obvious modifications of the same invention.
Instant claim 1 recites, “A lipstick composition wherein it comprises a volatile mixture of alkanes…” wherein the volatile mixture comprises (a) 20-100% by mass fraction A comprising at least one branched C≤10 alkane, (b) 0-80% by mass fraction B comprising at least one linear or branched C>10 alkane, wherein the volatile mixture has a flash point below 55°C measured according to ASTM D93, and represents ≥2% by mass relative to the total composition. The co-pending application ‘136 claims a cosmetic excipient comprising a substantially overlapping alkane mixture. Specifically, claim 14 of the co-pending application ‘136 recites, “A cosmetic excipient comprising a mixture of alkanes, the mixture of alkanes comprising at least one C8-C10 alkane, and at least one C≥11 alkane…” wherein the C8-C10 alkane is present at ≤50% by mass; the mixture is entirely obtained from plant, bacterial, or animal origin raw materials; and the mixture is free of odd-numbered carbon alkanes.
The co-pending application ‘136 therefore claims the same fundamental composition of lower carbon number alkane component (C8-C10), higher carbon number alkane component (C≥11), and cosmetic use as an excipient. The instant claim merely changes the cosmetic context from a general cosmetic excipient to a lipstick composition. Such selection of a particular cosmetic formulation category from a known cosmetic excipient is an obvious variation because the co-pending application ‘136 expressly teaches that the claimed alkane mixture is a cosmetic excipient suitable for incorporation into cosmetic compositions.
The co-pending application ‘136 further discloses that the alkane mixture may be formulated with cosmetic ingredients, including oils, pigments, waxes, and film-forming materials, which are conventional lipstick components. Therefore, incorporation of the claimed alkane mixture into a lipstick composition would have been an obvious modification of the claimed cosmetic excipient (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) wherein a predictable use of prior art elements according to their established functions is obvious).
The alkane mixture required by instant claim 1 substantially overlaps with the mixture claimed in the co-pending application ‘136. The co-pending application ‘136 teaches C8-C10 alkanes, C≥11 alkanes, mixtures thereof, and cosmetic applications (claims 14-24). The instant claim recites branched C≤10 alkanes, linear or branched C>10 alkanes, and cosmetic lipstick compositions. The difference between “C8-C10 alkane” and “C≤10 alkane” and “C≥11 alkane” and “C>10 alkane” is an overlap in scope rather than a patentable distinction. A person of ordinary skill would have recognized that selecting branched C9/C10 alkane species and C11-C16 alkane species from the broader alkane mixture would have been a routine selection from known cosmetic alkane excipients.
Instant claims 2-16 recite additional limitations directed to non-transfer or low-transfer lipstick, increased volatile alkane concentration, radiocarbon content, bio-sourced origin, biodegradability, specific alkane species, 2,3,6-trimethylheptane, n-dodecane, natural-origin content, and nonvolatile oils. These limitations do not render the claims patentably distinct.
Instant claims 7-14 recite branched C9/C10 alkanes, branched C10 alkanes, 2,3,6-trimethylheptane, C11-C16 alkanes, and n-dodecane. The co-pending application ‘136 teaches selection of C10 methyl alkanes, C12, C14, C16 and higher alkanes, and mixtures thereof (claims 16-24). Thus, the claimed alkane identities are merely narrower selections within the known cosmetic alkane mixtures already claimed. Optimization of alkane chain length and branching characteristics would have been an obvious matter of formulation preference (see In re Aller, 220 F.2d 454, 456 (CCPA 1955), wherein general conditions are disclosed, optimizing ranges is ordinarily obvious).
Instant claims 4-6 and 16 recite plant/bacterial/animal origin, biodegradability, and natural-origin ingredients. The co-pending application ‘136 expressly teaches “entirely obtained from raw materials of plant, bacterial, or animal origin.” (claim 14). Therefore, these limitations are already claimed. The radiocarbon limitation is an inherent characteristic of the claimed bio-sourced material. A composition prepared entirely from biological raw materials would necessarily exhibit radiocarbon values corresponding to biogenic carbon (see Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1349 (Fed. Cir. 1999)).
Instant claim 15 recites, “at least one non-volatile oil having a flash point greater than 110°C.” The co-pending application ‘136 teaches cosmetic excipients intended for combination with cosmetic ingredients. In cosmetic formulations, inclusion of nonvolatile oils is a conventional formulation choice. The selection of a nonvolatile oil having a desired flash point would have been an obvious optimization of known cosmetic formulation components.
Instant claim 17 recites drying time after application at 20°C to lips ≤5 minutes 30 seconds. The co-pending application ‘136 teaches alkane mixtures having controlled evaporation properties. Specifically, claim 27 recites, “percentage of evaporation at t=10 hours is between 10 and 30.” A skilled artisan would have recognized that evaporation rate, volatile alkane concentration, and cosmetic carrier composition affect drying time. Optimization of these parameters to obtain a desired drying time would have been routine experimentation (see KSR, 550 U.S. at 421, wherein finite experimentation to optimize predictable results does not confer patentability).
Instant claim 18 recites preparation of the lipstick composition by producing a C10 Guerbet alcohol from isoamyl alcohol, mixing with a bio-sourced C>10 alcohol, dehydration and hydrogenation to produce 2,3,6-trimethylheptane, C>10 alkane, and combining with cosmetic components. The co-pending application ‘136 teaches the resulting cosmetic alkane mixture and its use as a cosmetic excipient. Further, one of ordinary skill in the art would understand that conventional cosmetic formulations contain volatile hydrocarbon mixtures and cosmetic oils/excipients. Accordingly, preparing the claimed lipstick composition using the known alkane mixture would have been an obvious application of the claimed cosmetic excipient. The process differences merely describe the method of making the known composition rather than a patentably distinct invention (see In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), wherein process limitations impart patentability only where they result in a different product).
Thus, instant claims 1-18 are provisionally rejected under nonstatutory obviousness-type double patenting over claims 14-27 of co-pending application ‘136. The pending claims are not patentably distinct because the co-pending application ‘136 claims the same cosmetic alkane mixture. The instant claims merely apply that mixture to lipstick formulations. The additional limitations are selections from known alkane species, conventional cosmetic formulation choices, optimization of concentration and volatility, and inherent properties of bio-sourced materials.
Accordingly, granting separate patents would result in an unjustified extension of patent rights. The applicant may overcome this provisional rejection by filing a terminal disclaimer pursuant to 37 C.F.R. §1.321(c), or by demonstrating that the pending claims are patentably distinct from the claims of co-pending application ‘136.
Conclusion
No claims are allowed.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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