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
Acknowledgement is made of applicant’s claim for foreign priority based on the application filed in France on 04/05/2022. It is noted, however, that applicant has not filed certified copies of the FR2203098 application in the English translation, as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) filed 01/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
The spacing of the lines of the specification and abstract is such as to make reading difficult. New application papers with lines 1 1/2 or double spaced (see 37 CFR 1.52(b)(2)) on good quality paper are required.
The disclosure is objected to because of the following informalities: the tables provided do not have figure captions.
Appropriate correction is required.
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) 12-14 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 claim 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.%).
Regarding claim 13 and 14, Gans describes that the composition is an anhydrous form (see claim 14), and that 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 14 overlaps with the concentration disclosed in Gans, and as such is anticipated. MPEP § 2131.03(II).
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)
Conclusion
Claim(s) 12-26 are rejected.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
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