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 .
Priority
Foreign priority to FR2203098 filed 04/05/2022 is acknowledged. Further, it is acknowledged that instant application is a 371 of PCT/FR2023/050489 filed 04/05/2023.
Status of Application
The Examiner acknowledges receipt of the amendments filed 09/11/2206, wherein claims 12, 24, and 25 have been amended, and claim 14 has been cancelled.
Claims 12-13 and 15-26 are presented for examination on the merits. The following rejections are made.
Specification
Applicant’s amendments filed 09/11/2026 overcome the objection to the specification made by the Examiner. This objection is withdrawn.
Maintained Rejections Following Amendments
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 12-13 and 16-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gans (US 8865194 B1).
Gans describes a cosmetic composition that is for the skin.
Regarding claims 12, 16, and 17, Gans discloses that the composition comprises zinc oxide, boron nitride, and ozokerite wax (pg. 8, example 6-C). Further, the composition disclosed in Gans does not contain titanium dioxide (i.e. concentration is less than 3 wt.%), and the waxes in the composition make up 19.0 wt.% of the composition (pg. 8, example 6-C). The concentration of waxes disclosed in instant claim 12 overlaps with the concentration disclosed in Gans, and as such is anticipated. MPEP § 2131.03(II).
Regarding claim 13, Gans describes that the composition is an anhydrous form (see claim 14).
Regarding claim 18 and 19, Gans discloses that the zinc oxide makes up 3.0 wt.% of the composition, and boron nitride makes up 1.5 wt.% of the composition (pg. 8, example 6-C). The range of concentrations of both the zinc oxide and boron nitride of instant claims 18 and 19 overlap with the concentrations disclosed in Gans, and as such are anticipated. MPEP § 2131.03(II).
Regarding claim 20, as discussed above, Gans describes that the concentration of zinc oxide is 3.0 wt.%, and the concentration of boron nitride is 1.5 wt.%. The ratio of zinc oxide to boron nitride that is described in instant claim 20 overlaps with that disclosed in Gan’s example 6-C, and as such is anticipated. MPEP § 2131.03(II).
Regarding claim 21, Gans further discloses that the composition may further comprise soy lecithin (i.e. lipophilic gelling agent, pg. 8, example 6-C).
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.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Gans (US 8865194 B1).
Regarding claim 15, Gans teaches that the cosmetic composition can further contain lanolin (see column 3, line 58). As taught in the instant specification, the “pasty fatty substances” of the instant invention can be selected from the group consisting of lanolin and its derivatives (pg. 8, line 6).
Gans does not teach with sufficient specificity to anticipate and so the claims are obvious. It would have been obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Gans to exclude the titanium dioxide from the composition with a reasonable expectation of success to obtain the composition of the instant claim.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method of the instant claims with predictable results.
Claim(s) 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Gans (US 8865194 B1) in view of Brissette (US 20150098973 A1).
While Gans teaches the claimed invention as above, it fails to teach that the composition is in the form of a stick or packaged in a pot or cup, and that the composition can be used as a lipstick, blush, or concealer.
Regarding claims 22-24, Brissette teaches a cosmetic composition that can comprise zinc oxide, boron nitride, and waxes. The anhydrous composition of Brissette can be in the form of a lipstick, concealer, blush, or eyeliner (see claim 14).
Regarding claims 25 and 26, Brissette teaches that the cosmetic formulation can be used in various personal or cosmetic care (para. [0079]), and is applied to the skin (para. [0072]).
Gans and Brissette are considered to be analogous to the claimed invention because they are in the same field of cosmetic compositions that are applied to the skin. The person of ordinary skill in the art at the time of the effective filing date would be motivated to make the composition taught in Gans into a stick that can be applied to the skin because Brissette teaches that cosmetic compositions comprising zinc oxide, boron nitride, and waxes are effective as a lipstick. MPEP § 2143 (g).
Response to Applicant’s Arguments
Applicant asserts the following:
The present invention is not anticipated by Gans under 35 U.S.C. 102(a)(1), because while Gans discloses compositions comprising the ingredients listed in claim 12, the reference does not describe a solid composition. The compositions of Gans are described to be viscous or semisolid, distinct from solid compositions. The recitation of the structural feature that the cosmetic composition is in a solid form is in the preamble and as such must be treated as a claim limitation.
Gans discloses ointments containing ozokerite wax present at a content of about 20% by weight, whereas Brissette teaches that the resin wax content exceeds 38 wt.%. A person skilled in the art would not have used a total wax content of 3-25 wt.% relative to the total weight of the composition in a solid composition because Brissette teaches that the wax is an essential component. As such, the present invention is not obvious over the cited references Gans and Brissette.
In response to argument A, as discussed above in the rejections under 35 U.S.C. 102(a)(1), Gans discloses a composition with components that have concentrations overlapping with those disclosed in instant invention. Since Gans teaches each component in same amounts of claim 12, it would have the same inherent properties (such as physical state or viscosity) as that of instant invention. See MPEP § 2112.01(II) “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Applicants arguments boarder on suggesting the instant claim cannot be a solid raising a possible 112 since how can something with the same components not be a solid? Either that or applicant is not claiming some essential feature please clarify.
In response to argument B, as described above in the rejections under 35 U.S.C. 103, one of ordinary skill in the art would be motivated to make the composition of Gans, with a wax content of 20 wt.%, and further formulate it to be in the form of a lipstick, as Brissette teaches the ingredients of Gans can safely and effectively be used to make a lipstick.
Examiner thanks Applicant for the amendments and following arguments, but the rejections of claims 12-13 and 15-26 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 are maintained.
Conclusion
Claims 12-13 and 15-26 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Makenna Miller whose telephone number is (571)272-9852. The examiner can normally be reached Mon-Fri 7:30-5:00 EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
