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.
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (US 2017/0056302 A1; published 02 March 2017) in view of Souda et al. (US 2013/0210930 A1; published 15 August 2013).
Tajima et al. discloses a water-in-oil emulsion solid cosmetic, comprising: an external oil phase comprising a liquid oil thickened or solidified with (A) wax and (B) disteardimonium hectorite; and an internal water phase comprising (C) an internal phase powder dispersed in an aqueous medium (claim 1) wherein the internal phase powder is a powder that may usually be used in cosmetics (paragraph [0040]) wherein the internal phase powder may be inorganic powder, mica, silica, or talc (paragraph [0041]) wherein the external oil phase may contain an external phase powder (paragraph [0052]) such as including a powder such as in the internal phase powder (paragraph [0053]) which may be an organic pigment (i.e., a color material) (paragraph [0041]) wherein the liquid oil may comprise nonvolatile linear silicone oil (paragraph [0033]) wherein the liquid oil is preferably 20-70% by mass of the solid cosmetic (paragraph [0037]) wherein the oil component may comprise semisolid oils (paragraph [0056]) wherein the wax may be lanolin (i.e., a semisolid oil) (paragraph [0025]) wherein wax may be 0.1-30% by mass of the solid cosmetic (paragraph [0027]) wherein the solid cosmetic may contain 2% by mass PEG-10 dimethicone (i.e., film-forming agent) (Formulation Examples 1, 2; paragraphs [0092], [0098]) wherein the solid cosmetic is suitable for being provided as a makeup cosmetic (paragraph [0067]).
Although Tajima et al. does not disclose a specific formulation including all constituents as discussed above, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Tajima et al. as discussed above and to make the solid cosmetic of Tajima et al. as discussed above with all the constituents as discussed above, with a reasonable expectation of success.
Regarding the recitation of 15 mass% or more of residual oil in claim 6, the disclosures of Tajima et al. of liquid oil comprising nonvolatile linear silicone oil wherein the liquid oil is 20-70% by mass of the solid cosmetic as discussed above, results in 20-70% by mass nonvolatile (i.e., residual) linear silicone oil in the solid cosmetic of Tajima et al.
Regarding the recitation of 15 mass% or less of semisolid oil in claim 7, the disclosures of Tajima et al. of the oil component comprising semisolid oil and of wax being lanolin (i.e., a semisolid oil) and wax being 0.1-30% by mass of the solid cosmetic, results in 0.1-30% by mass lanolin (i.e., a semisolid oil) in the solid cosmetic of Tajima et al., which overlaps the claimed range of 15 mass% or less, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Tajima et al. does not disclose that the internal phase powder has an average primary particle size of 1.0 µm or more as claimed.
Souda et al. discloses cosmetic emulsions (title) such as water-in-oil emulsions (paragraph [0148]) which can be in the form of makeup product such as lipstick (paragraph [0264]) wherein average primary particle size of powders therein is preferably 1 nm to 100 µm (paragraph [0108]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Tajima et al. and Souda et al. by using powder having average primary particle size of 1 nm to 100 µm as suggested by Souda et al. as the powder in the solid cosmetic of Tajima et al. as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to use powder that has particle size known to be suitable for use in cosmetic water-in-oil emulsions as suggested by Souda et al., given that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07. Such range of 1 nm to 100 µm overlaps the claimed range of 1.0 µm or more, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 9, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to further combine the teachings of Tajima et al. and Souda et al. by making the water-in-oil solid cosmetic of Tajima et al. in view of Souda et al. as discussed above in the form of a lipstick as in Souda et al. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to formulate the water-in-oil solid cosmetic in a known makeup form such as a lipstick as suggested by Souda et al., given that Tajima et al. suggests formulation as a makeup, and given that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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