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 Objections
Claim 7 is objected to because of the following informalities: the claim does not begin with a capital letter. Claims must begin with a capital letter and end with a period (MPEP 608.01(m)).
Claim 14 is objected to because of the following informalities: in the second line of the claim, for both logical and grammatical reasons, the term weight should appear after the word by. (The term was deleted by a preliminary amendment. This appears to be an editing error.)
Appropriate correction is required.
Claim 17 is objected to because of the following informalities: in the 6th * limitation, for both logical and grammatical reasons, the phrase fatty acid triglycerides should appear after the word hydrogenated. (The phrase was deleted by a preliminary amendment. This appears to be an editing error.)
Appropriate correction is required.
Claim 25 is objected to because of the following informalities: in the second line of the claim, the term hydrocarbon-bsed should properly be the term: hydrocarbon-based.
Appropriate correction is required.
Inventor’s assistance is respectfully requested in correcting any other minor grammatical and/or spelling errors which may be present in the claim set.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for Euphorbia Cerifera (Candelilla) wax extract and Shorea Robusta resins as the natural resin component of the instant cosmetic emulsion composition, does not reasonably provide enablement for universe of natural resins. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
With regard to rejections under 35 USC 112(a) or 35 USC 112, first paragraph, the following factors are considered (MPEP 2164.01(a)): a) Breadth of claims; b) Nature of invention; c) State of the prior art; d) Level of ordinary skill in the art; e) Level of predictability in the art; f) Amount of direction and guidance provided by the inventor; g) Working examples and; h) Level of experimentation needed to make or use the invention based on the content of the disclosure.
The claims are extraordinarily broad: “Liquid cosmetic composition in the form of an emulsion comprising:
- from 4% to 25% by weight, relative to the total weight of the composition, expressed as active material, of ethylcellulose;
- at least one natural resin;
- ……………………..” (independent claim 1). The remaining claims further define the resin (claims 2-28) and a process for making up and/or caring for human keratin materials comprising applying the instant cosmetic emulsion composition (claim 29).
b,c) The nature of the invention is determined in part by the state of the prior art.
As noted in the background section of the instant specification, and as even a cursory perusal of the pertinent prior art reveals, cosmetic emulsions – and in particular those comprising natural resins or natural products and which meet consumer performance expectations – comprise particular and careful selections of components.
d) The level of skill in the art is considered to be relatively high.
e) The level of predictability in the art is considered to be relatively low.
Even under the best of circumstances, and more than two hundred years after Lavoisier laid the foundations of its modern practice, chemistry remains an experimental science. The chemical arts – the basic art with respect to the formulation of complex, multi-component emulsions such as those of the instant invention – have not advanced to the point where certainty has replaced the need for clinical and/or laboratory experimentation.
Note that the amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art (MPEP 2164.03).
f,g) The amount of direction provided by the inventor is considered to be determined by the specification and the working examples. Inventor’s examples are limited to two natural (plant) resins: Euphorbia Cerifera (Candelilla) Wax Extract and Shorea Robusta Resin.
h) It would clearly require an absolutely extraordinary – and thus undue – amount of experimentation in order determine if the universe of natural resins would, in fact, yield a cosmetic emulsion composition suitable for the instantly desired applications and with the appropriate performance characteristics. Inventor’s extrapolation from an extremely narrow set of examples of natural (plant) resins (2) to the universe of natural resins is unreasonable in an art recognized as unpredictable.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1 is 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.
It is unclear how the limitation, at the end of the claim – that at least one of (a) at least one hydrocarbon-based compound with an ester function, which is solid at ambient temperature; (b) at least one second non-volatile polar hydrocarbon oil, liquid at ambient temperature, different from the first oil and chosen from ester, ether or carbonate oils; or (c) mixtures thereof – can be optional. This is so because the entire specification, including the examples, is predicated upon a composition which achieves the objectives of the instant invention precisely because it is characterized by all of limitations in claim 1, none of which are taught in the specification as optional. (Note, for instance, the explicit teachings of the specification on page 2, [0077]-[0011].)
Clarification is very much in order.
Claim 7 is 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.
What exactly is being claimed is unclear, or even if the claim is an independent claim or a dependent claim, because the preliminary amendment has deleted a portion of the claim preamble such that the claim makes no logical sense.
Clarification is very much in order.
Claim 15 is 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.
It is unclear if R’ and R' are the same variable moiety. It would appear that they must be. But why utilize two distinct symbols?
Clarification is in order.
Claim 20 is 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.
There is insufficient antecedent basis for the limitation hydrocarbon compounds(s) in the claim. Claim 1, the claim from which claim 20 immediately depends, teaches: hydrocarbon-based compounds.
Clarification is in order.
Claims 2-6, 8-14, 16-19 and 21-29 are also 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.
The claims all depend, or ultimately depend, from an indefinite base claim yet do not relieve the indefiniteness. Dependent claims 2-6, 8-14, 16-19 and 21-29 are also, therefore, indefinite.
Allowable Subject Matter
The subject matter of claims 1-29 would be allowable once the objections and 112 rejections outlined above have been overcome. The following is a statement of reasons for the indication of allowable subject matter:
The key to the instant invention is the liquid ethylcellulose cosmetic emulsion composition of claim 1. US 2018/0140515 A1, cited in the IDS, may be taken as a representative example of the closest prior art. The reference teaches an aqueous cosmetic composition comprising alkylcellulose (of between 2 and 6 carbon atoms), at least one non-volatile hydrocarbon-based or silicone oil, and a hydrocarbon-based resin (abstract). The reference does not teach, show, suggest or make obvious the instant ethylcellulose cosmetic emulsion composition comprising a natural resin, a non-volatile oil, and at least one of (a), (b) or (c), or mixtures thereof.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 8/25/2026
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