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 .
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.
Claim(s) 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Patent Pub. 2010/0233301).
Cheng et al. disclose cosmetic compositions in the form of lipstick and lip gloss ([0034]). Cheng et al. disclose the composition comprises about 0.1 to 50% oils (a), including polybutene or polyisobutene ([0036] and [0038]); emulsifiers including PEG-10 dimethicone at a concentration from about 0.01-40% (b); about 0.1 to 45% (c) film formers including trimethylsiloxysilicate ([0041]); and silicone elastomers structuring agents, including vinyl dimethicone/methicone silsesquioxane at a concentration of about 1-60% (d) ([0043] and [0046]). Cheng et al. disclose the compositions are applied to the skin ([0041]).
The prior art discloses the use of 0.1 to 50% (a), 0.01-40% (b), 0.1 to 45% (c) and 2-60% (d). Thus, the prior art differs from the instant claims insofar as it does not disclose the particular endpoints recited therein, i.e. (a) 0.05 to 3%, (b) 0.05 to 3%, (c) 1 to 20% and (d) 0.5 to 5%. It is well-settled, however, that even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003). Accordingly, since an overlap plainly exists here, it would have been obvious to have selected values within the overlap, consistent with the reasoning of the Peterson decision.
The prior discloses compositions containing at least one polyene, at least one polyether-modified silicone; at least one siloxysilicate rein; and at least one non-emulsifying silicone elastomer. Together these would provide a composition as claimed instantly.
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art.
Since this modification of the prior art represents nothing more than “the predictable use of prior art elements according to their established functions” a prima facie case of obviousness exists.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612
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