DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-18 are pending and currently under examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statement (IDS) filed on 10/21/2024, 12/29/2025, and 04/06/2026 are attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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 the applicant regards as his invention.
Claims 3-12, and 14-15 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3-5 and 15 recite the phrase “dextrin-based”. This language renders the claim indefinite because it is unclear the extent to which the oil gelling agents must resemble dextrin.
Claims 10-12 recite the phrase “amino acid-based”. This language renders the claim indefinite because it is unclear the extent to which the oil gelling agents must resemble an amino acid.
Claim 11 recites the phrase “glutamide-based”. This language renders the claim indefinite because it is unclear the extent to which the oil gelling agents must resemble glutamide.
Claim 14 recites “2~99:1” in line 2. This language renders the claim indefinite because it is unclear what the tilde symbol means with regards to the weight ratio of the oil and oil gelling agent. In the interest of compact prosecution, the examiner interprets “2~99:1” to mean 2 to 99:1.
Claims depending from rejected claims have also been rejected because they incorporate
all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness
concerns outlined above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Masanelli et al. (US20220079847A1, Published 03/17/2022; cited in the IDS filed 10/21/2024).
Applicant’s invention
The Applicant’s claims are drawn to a perfume gel composition comprising a fragrance, an oil, and an oil gelling agent, wherein the composition has a gel formulation for application to the skin.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Masanelli teaches a cosmetic composition comprising: anhydrous spheroids comprising at least one hydrocarbon-based oil and/or one silicone oil and at least one lipophilic structuring agent (i.e., gelling agent) (paragraph [0011]). Masanelli also teaches according to a preferred embodiment, the fragrance is present in the anhydrous spheroids (i.e., perfume gel) (paragraph [0084]). The Examiner points out that the anhydrous spheroids comprise gelling agents, therefore the spheroids have a gel formulation. With regards to the limitation of for application to the skin, the Examiner points out that the limitation does not limit the perfume gel composition and is an intended use of the composition. Masanelli also teaches the spheroids of the invention have a sufficiently flexible and deformable texture, at room temperature, to be able to be applied easily to the skin by means of a small shear, for example with the fingers, and thus to produce a care or makeup effect on the skin (i.e., external use to a skin) (paragraph [0020]).
Regarding claim 2, Masanelli teaches the term “anhydrous spheroid” means that the phase which constitutes these spheroids has a water content of less than or equal to 1%, and preferably less than or equal to 0.5%, by weight of said phase (paragraph [0022]).
Regarding claims 3-6 and 9, Masanelli teaches the lipophilic structuring agent constituting the spheroids of the invention may be chosen from lipophilic gelling agents (paragraph [0046]). Masanelli also teaches lipophilic gelling agents that may advantageously be mentioned include dextrin palmitate (i.e., dextrin fatty acid ester) (paragraph [0060]). Masanelli further teaches preparation of a liquid spheroid composition by mixing, with stirring, preferably at a temperature ranging from 50 to 110° C., at least one lipophilic structuring agent in at least one hydrocarbon-based oil and/or one silicone oil (paragraph [0087]). The Examiner notes that instant claim 4 uses product by process language, wherein the dextrin-based oil gelling agent is dissolved in an oil at a temperature of 60° C or higher. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 (I).
Regarding claims 10-12, Masanelli teaches lipophilic gelling agents that may advantageously be mentioned include dibutyl lauroyl glutamide and dibutyl ethylhexanoyl glutamide (paragraph [0060]).
Regarding claim 13, Masanelli teaches the content of lipophilic structuring agent may range from 0.5% to 95% by weight relative to the total weight of spheroids (paragraph [0047]).
Regarding claim 14, Masanelli teaches the content of lipophilic structuring agent may range from 0.5% to 95% by weight relative to the total weight of spheroids (paragraph [0047]), and the hydrocarbon-based oil(s) and/or the silicone oil(s) may be present in a content ranging from 5% to 99.5% by weight (paragraph [0029]).
Regarding claim 15, Masanelli teaches the amide or the mixture of amides, notably of glutamide(s), represents, for example, between 0.1% and 15.0% by weight relative to the total weight of the anhydrous spheroids (paragraph [0064]). Masanelli also teaches the content of lipophilic structuring agent may range from 0.5% to 95% by weight relative to the total weight of spheroids (paragraph [0047]).
Regarding claims 16-17, Masanelli teaches a cosmetic composition that is solid at room temperature, comprising: anhydrous spheroids comprising at least one hydrocarbon-based oil and/or one silicone oil and at least one lipophilic structuring agent (i.e., gelling agent) (paragraph [0011]). Masanelli also teaches the spheroids of the invention have a sufficiently flexible and deformable texture, at room temperature, to be able to be applied easily to the skin by means of a small shear, for example with the fingers, and thus to produce a care or makeup effect on the skin (i.e., external use to a skin) (paragraph [0020]).
Regarding claim 18, Masanelli teaches preparation of a liquid spheroid composition by mixing, with stirring (i.e., dissolving), preferably at a temperature ranging from 50 to 110° C., at least one lipophilic structuring agent (i.e., oil gelling agent) in at least one hydrocarbon-based oil and/or one silicone oil (paragraph [0087]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Masanelli does not disclose a single embodiment or example where every limitation recited in the instant claims is taught.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The claims are considered prima facie obvious to one of ordinary skill in the art because
Masanelli teaches all of the claimed elements. It would have been prima facie obvious at the time
of filing to have a perfume gel composition comprising a fragrance, an oil, and an oil gelling agent, wherein the composition has a gel formulation for application to the skin. because Masanelli teaches these elements as components of their invention.
With regards to claim 14, wherein a weight ratio of the oil and oil gelling agent is 2~99:1, it would have been prima facie obvious to one of ordinary skill in the art to optimize the weight ratio of the oil and oil gelling agent. Masanelli teaches the content of lipophilic structuring agent may range from 0.5% to 95% by weight relative to the total weight of spheroids (paragraph [0047]), and the hydrocarbon-based oil(s) and/or the silicone oil(s) may be present in a content ranging from 5% to 99.5% by weight (paragraph [0029]). Therefore, it would have been obvious optimize the weight ratio of the oil and oil gelling agent by routine experimentation using the teachings of Masanelli as a starting point to achieve the desired results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
With regards to claim 15, wherein a weight ratio of the dextrin-based oil gelling agent and the amino acid-based oil gelling agent is 100:0.1 to 50, it would have been prima facie obvious to one of ordinary skill in the art to optimize the weight ratio of the dextrin-based oil gelling agent and the amino acid-based oil gelling agent. Masanelli teaches the amide or the mixture of amides, notably of glutamide(s), represents, for example, between 0.1% and 15.0% by weight relative to the total weight of the anhydrous spheroids (paragraph [0064]). Masanelli also teaches the content of lipophilic structuring agent may range from 0.5% to 95% by weight relative to the total weight of spheroids (paragraph [0047]). Therefore, it would have been obvious optimize the weight ratio of the dextrin-based oil gelling agent and the amino acid-based oil gelling agent by routine experimentation using the teachings of Masanelli as a starting point to achieve the desired results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Masanelli et al. (US20220079847A1, Published 03/17/2022; cited in the IDS filed 10/21/2024) in view of Bourlet et al. (FR3083118 A1, Published 01/03/2020).
Applicant’s invention
Masanelli renders obvious all the limitations of instant claim 1. Applicants claim 7 further adds the limitations wherein the dextrin fatty acid ester further comprises a substituted or unsubstituted C3-10 acid. Applicants claim 8 further adds the limitation wherein the substitution is a substitution with a C1-6 alkyl.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 7-8, Masanelli teaches the lipophilic structuring agent constituting the spheroids of the invention may be chosen from lipophilic gelling agents (paragraph [0046]). Masanelli also teaches lipophilic gelling agents that may advantageously be mentioned include dextrin palmitate (i.e., dextrin fatty acid ester) (paragraph [0060]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Masanelli does not teach wherein the dextrin fatty acid ester further comprises a substituted or unsubstituted C3-10 acid; and wherein the substitution is a substitution with a C1-6 alkyl. However this deficiency is cured by Bourlet et al.
In the analogous art of cosmetics, Bourlet teaches a composition comprising, in a physiologically acceptable medium, at least: : a) a lipophilic polymeric gelling agent
derived from castor oil, in particular a castor oil-derived isophorone diisocyanate-urethane
polymer, b) one or more liposoluble organic UV filters, and c) one or more additional lipophilic
polymeric gelling agents selected from a dextrin and C14-C18 fatty acid ester preferably
selected from the group consisting of dextrin palmitates, dextrin myristates and dextrin
palmitates/ethylhexanoates (i.e., dextrin fatty acid ester comprising a substituted or unsubstituted C3-10 acid, wherein the substitution is a substitution with a C1-6 alkyl) (page 10, first paragraph). Bourlet also teaches according to a particular and preferred mode, the composition of the invention shall comprise at least one additional lipophilic gelling agent selected from dextrin and fatty acid esters, an ethylcellulose polymer and mixtures thereof. Dextrin esters according to a particular and preferred mode, the composition of the invention further comprises at least one dextrin ester, preferably selected from dextrin and fatty acid esters, preferably in C12 to C24, preferably still in C14-C18, and in particular selected from the group consisting of dextrin palmitates, dextrin myristates, dextrin palmitates/ethylhexanoates and mixtures thereof (page 8, last paragraph; page 9, first paragraph).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have the dextrin fatty acid ester further comprising a substituted or unsubstituted C3-10 acid and wherein the substitution is a substitution with a C1-6 alkyl in Masanelli’s cosmetic composition comprising anhydrous spheroids. Masanelli teaches the lipophilic structuring agent constituting the spheroids of the invention may be chosen from lipophilic gelling agents (paragraph [0046]). Masanelli also teaches lipophilic gelling agents that may advantageously be mentioned include dextrin palmitate (i.e., dextrin fatty acid ester) (paragraph [0060]). One would have understood in view of Bourlet that a cosmetic composition wherein according to a particular and preferred mode, the composition of the invention shall comprise at least one additional lipophilic gelling agent selected from dextrin and fatty acid esters, Dextrin esters according to a particular and preferred mode, the composition of the invention further comprises at least one dextrin ester, preferably selected from dextrin and fatty acid esters, preferably in C12 to C24, preferably still in C14-C18, and in particular selected from the group consisting of dextrin palmitates, dextrin myristates, dextrin palmitates/ethylhexanoates and mixtures thereof (page 8, last paragraph; page 9, first paragraph). It would have been obvious to have the dextrin fatty acid ester further comprising a substituted or unsubstituted C3-10 acid and wherein the substitution is a substitution with a C1-6 alkyl in Masanelli’s cosmetic composition comprising anhydrous spheroids because Masanelli teaches dextrin palmitates as a dextrin fatty acid ester lipophilic gelling agent and Masanelli teaches lipophilic gelling agents selected from dextrin and fatty acids such as dextrin palmitates and dextrin palmitates/ethylhexanoate. Therefore, dextrin fatty acid ester further comprising a substituted or unsubstituted C3-10 acid and wherein the substitution is a substitution with a C1-6 alkyl such as dextrin palmitates/ethylhexanoate would have been suitable for the purpose of a lipophilic gelling agent in Masanelli’s cosmetic composition. See MPEP 2144.07.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. 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
AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
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