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 .
Claims 1-12 are pending in the application. Claims 1-12 will be examined.
Information Disclosure Statement
Receipt of Information Statements filed February 5, 2025, July 15, 2025, February 27, 2026, and March 2, 2026 is acknowledged.
Claim Interpretation
Independent claim 1 is directed to a mascara composition comprising: a plurality of waxes including sunflower seed wax and a plurality of behenates including tribehenin and behenyl behenate; and wherein the mascara composition comprises no more than 10% water by weight of the mascara composition. The examiner is interpreting the use of the term “including” as “comprising”. Therefore, the claims are being interpreted and examined as a plurality of waxes comprising sunflower seed wax, tribehenin and behenyl behenate.
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 4 and 5 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.
Claim 4 recites the limitation "the at least one additional wax" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 4 is dependent from claim 1. Claim 1 does not recite “at least one additional wax”. The use of the article “the” in claim 4 indicates that there should be “an additional wax” in claim 1. As such, there is lack antecedent basis.
Claim 5 recites the limitation "the at least one additional wax" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 5 is dependent from claim 1. Claim 1 does not recite “at least one additional wax”. The use of the article “the” in claim 5 indicates that there should be “an additional wax” in claim 1. As such, there is lack antecedent basis.
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.
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.
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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Barba et al. (FR 3031298 A1) in view of JP6976146 and Max Volume Waterproof Mascara (Mintel). Barba et al. and JP6976146 Translations cited by Applicant on the IDS dated 2/27/2026. Max Volume Waterproof Mascara cited on IDS dated 7/15/2025.
Applicant’s Invention
Applicant claims a mascara composition comprising: a plurality of waxes including sunflower seed wax and a plurality of behenates including tribehenin and behenyl behenate; and wherein the mascara composition comprises no more than 10% water by weight of the mascara composition.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Regarding claim 1, Barba et al. teach a set for conditioning and applying a composition for makeup and/or care of keratinous fibers, in particular eyelashes or eyebrows, comprising an anhydrous makeup comprising at least one wax of sunflower and a volatile hydrocarbon oil (page 2, Claim 1, Translation).
Barba et al. teach a composition for coating keratinous fibers, preferably a mascara, having a good hold on the eyelashes, and which is compatible with heating during its application (page 4, paragraph 1, Translation).
Regarding claims 2 and 10, Barba et al. teach the compositions are anhydrous or low-moisture mascaras in the form of dispersions of waxes in organic solvents, in particular volatile organic solvents (page 5, paragraph 1). Barba et al. teach by “anhydrous composition” is meant a composition containing less than 5% by weight of water better still less than 2% by weight of water (page 5, paragraph 2, Translation).
Barba et al. teach that if at least one other wax is present, sunflower wax represents at most 25% by weight of the total weight of wax relative to the total weight of the composition (page 6, paragraph 5, Translation).
Regarding claim 4, Barba et al. teach alcohol waxes have a melting points that vary from 20 to 120˚C. Waxes cited include beeswax. The melting point range of 20˚C to 59˚C reads on the limitations of claim 4 of melting temperature below 60˚C.
Regarding claim 5, Barba et al. teach that term micronized wax or microwax means a wax which is in powder form and has a melting point ranging from 60˚C to 160˚C (page 8, paragraph 2, Translation).
Regarding claim 6, Barba et al. teach the additional waxes are present so that the total amount of additional wax and sunflower wax represents a higher content of equal to 5% by weight of the compositions, particularly between 8% and 20% by weight, preferably between 10% and 15% by weight, relative to the total weight of the composition (page 6, paragraph 6, Translation).
Barba et al. teach the additional waxes consist of polar waxes, apolar waxes, and their mixtures. Preferably the additional wax is chosen from the group consisting of carnauba wax, beeswax, ozokerite wax, paraffin wax and their mixtures (page 6, paragraph 7, bridge to page 7, Translation).
Regarding claim 8, Barba et al. teach the composition comprises at least one dyestuff (page 16, paragraph 2, Translation).
Regarding claim 9, Barba et al. teach the dyestuff is preferably from pigments (page 16, paragraphs 2 and 3, Translation).
Regarding claim 11, Barba et al. teach the total content of non-volatile oil in in the range of 0.01% to 10%, preferably 0.25% to 5% by weight of the composition (page 13, paragraph 2, Translation). This falls within the range of Applicant’s definition of substantially free of no more than 1%, no more than 0.5% and no more than 0.3% by weight of the composition.
Regarding claim 12, Barba et al. teach the composition of claim 1 for obtaining a film deposited on the keratinous fibers, in particular eyelashes or eyebrow, homogeneous and having improved bending properties and/or improved holding of this bending time (page 2, claim 21, Translation).
Barba et al. teach Figure 3 illustrates the bending values measured from TO (15 minutes after applying the mascara) and then for the next 25 hours (page 19, paragraph 10, Translation).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Barba et al. do not specifically disclose a plurality of behenates including tribehenin and behenyl behenate or the sunflower seed wax, the tribehenin; the plurality of waxes includes the sunflower seed wax, the tribehenin, the behenyl behenate, and at least one additional wax, as claimed in claim 3; or sunflower seed wax, the tribehenin, and the behenyl behenate are present in a total amount of 5% to 20% by weight of the composition, as claimed in claim 7. It is for this reason JP6976146 and Max Volume Waterproof Mascara are added as secondary references.
JP6976146 teaches a composition comprising (A) both dimer acid and dimer diol as a constituent unit and (B) one or more waxes selected from the group consisting of carnauba wax, sunflower seed wax, behenyl behenate, glyceryl tribechenate, which is tribehenin (page 1, claim 1, Translation). JP6976146 teaches the waxy composition wherein the waxy composition is 5 to 30% by weight (page 1, claim 3, Translation). JP6976146 teaches preferred makeup cosmetics include mascara (page 8, paragraph 8, Translation).
Max Volume Waterproof Mascara teaches the ingredients include aqua, beeswax, tribehenin, and behenyl behenate (pages 1-2, Ingredients).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Barba et al., JP6976146, and Max Volume Waterproof Mascara and formulate a mascara composition comprising sunflower seed wax, tribehenin, and behenyl behenate. Barba et al. teach a mascara composition comprising an anhydrous makeup comprising at least one wax of sunflower and a volatile hydrocarbon. Barba et al. teach that a number of other waxes can be added to the composition, including various waxes, such as carnauba wax, beeswax, apolar waxes, polar waxes, and ester waxes. One of ordinary skill in the art would have been motivated to add tribehenin and behenyl behenate to the composition because based on the teachings of JP6976146 these wax components are included in the short list of waxes used in the cosmetic composition, a mascara composition. In addition, Max Volume Waterproof Mascara teaches that tribehenin and behenyl behenate are used in a waterproof mascara composition. Based on these teachings one of ordinary skill in the art would have been motivated to add tribehenin and behenyl behenate to the anhydrous compositions taught by Barba et al. with a reasonable expectation of success since these waxes are known to be used in mascara compositions, as a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
In addition, regarding claim 3, one of ordinary skill in the art would have been motivated to add an additional wax because Barba et al., JP6976146, and Max Volume Waterproof Mascara each teach that multiple waxes are used in the mascara compositions. As such, one of ordinary skill in the art would have found it obvious to use sunflower seed wax, tribehenin, behenyl behenate and at least one additional wax, as the use of multiple waxes is known in the art. In addition, in view of In re Kerkhoven, 205 USPQ 1069 (C.C.P.A. 1980), it is prima facie obvious to combine two or more compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. The idea of combining them flows logically from their having been individually taught in prior art, thus claims that requires no more than mixing together two or three conventional waxes used in mascara compositions set forth prima facie obvious subject matter.
Regarding the limitation of claim 7, wherein the sunflower seed wax, the tribehenin, and the behenyl behenate are present in a total amount of 5% to 20% by weight of the composition, Barba et al. teach the additional waxes are present so that the total amount of additional wax and sunflower wax represents a higher content of equal to 5% by weight of the compositions, particularly between 8% and 20% by weight, preferably between 10% and 15% by weight. JP6976146 which contemplates sunflower seed wax, behenyl behenate, glyceryl tribechenate, which is tribehenin, as a wax composition teaches the waxy composition is 5 to 30% by weight of the composition. Therefore, it would have been obvious to one of ordinary skill based on the prior art that the composition would comprise 5% to 20% of the claimed wax components, as this range falls within the ranges specifically taught by the prior art, without evidence to the contrary. In addition, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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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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/ANDRIAE M HOLT/ Examiner, Art Unit 1614
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614
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