DETAILED ACTION
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 § 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.
Claim18, 30, 33 and 36 are 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 recite parentheticals, and it is not clear if those items within the parenthesis are limitations of the claims. Therefore, the claims are indefinite.
Claim Rejections - 35 USC § 102
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 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) 18, 24-27 and 30-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zewuhn et al. (US Patent Pub. 2019/0388333, disclosed by applicant).
Zewuhn et al. disclose lipstick compositions a method of forming (ABSTRACT). Zewuhn et al. disclose the composition comprises beeswax at a concentration of 11.5 %, rapeseed wax at a concentration of 10%; oil, such as sunflower oil and shea butter at a concentration of 2% ([0060], reference claim 31). Zewuhn et al. disclose the composition comprises lecithin, vitamin E acetate, which meets the limitation of tocopherol, antioxidants and UV light protection filters, such as ethylhexyl methoxycinnamate and/or methoxydibenzoylmethane ([0049 and [0050]). Zewuhn et al. disclose a method of forming a lipstick comprising mixing the constituents, poured into a mold at about 60°C allowed to cool down and removed from a mold ([0061]-[0063]). The composition of the reference are free from petroleum jelly, paraffins, mineral oils, silicone oils and silicone waxes. The composition comprise similar components at similar concentrations and would therefore would inherently have the same properties, such as penetration depth in a needle penetration test.
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) 18-22, 24-34 are rejected under 35 U.S.C. 103 as being unpatentable over Zewuhn et al. (US Patent Pub. 2019/0388333, disclosed by applicant) in view of Schecker et al. (US Patent Pub. 2021/0169771).
Zewuhn et al. is discussed above and differs from the instant claims insofar as they do not disclose the concentration of sunflower oil.
Schecker et al. disclose lip care products comprising oil, sunflower wax and beeswax (ABSTRACT). Schecker et al. disclose the lip care product comprises 30 to 60% by weight of oils ([0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have varied the concentration of the oil component of Zewuhn since they are known concentrations for lip care composition as taught by Schecker.
It would have been obvious to have used the claimed sunflower oil obtained from sunflower hybrids as the sunflower of the references, since it has not been found that the fractions provide any unexpected results within the compositions.
Claim(s) 23 is rejected under 35 U.S.C. 103 as being unpatentable over Zewuhn et al. (US Patent Pub. 2019/0388333, disclosed by applicant) as applied to claims 18, 24-27 and 30-37 above, and further in view of Myers (US Patne 6,290,940).
Zewuhn et al. is discussed above and differs from the instant claims insofar as they do not disclose ascorbyl palmitate.
Meyers et al. disclose a lipstick formulation comprising antioxidants including ascorbyl palmitate, tocopherol, butylated hydroxytoluene and mixtures thereof (column 4, lines 28-35).
It is obvious to replace one component for another equivalent component if it is recognized in the art that two components are equivalent and is not based on the Applicant disclosure. It is also prima facie obviousness to select a known material based on its suitability for its intended use. Also, established precedent holds that it is generally obvious to add known ingredients to known compositions with the expectation of obtaining their known function. See MPEP 2144.06. It would have been obvious to one of ordinary skill in the art to have used ascorbyl palmitate in place of the antioxidant in the compositions of the primary reference based on the prior art's recognition that such species are equivalent in function, as supported by cited precedent.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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