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 .
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 Status
Claims 1-14 are currently pending and are examined on the merits herein.
Priority
No priorities are claimed as reflected in the filing receipt dated on 11/08/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities:
Claims 3 and 4 recite the term “Cetereath-25”, which appears to be a typographical error intended to represent ceteareth-25, as evidenced by Applicant’s instant specification [0003; Tables 1 & 2]. Additionally, the term is inappropriately capitalized and should read “ceteareth-25”.
Appropriate correction is required.
Drawings
The drawings are objected to because 37 CFR 1.84(u)(1) (see MPEP 507(e)) states: Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear. Here, Applicant’s drawings refer to “FIG. 1”. The Examiner notes that changes in the drawings must be reflected in Applicant’s instant specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 14 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.
Claim 14 recites the limitation “remain on the one or more lashes for a period of time, the period of time being from 1 hour to 48 hours”. It is unclear whether the claim means (1) the composition must remain on the lashes for any amount of time within the recited range, e.g., for 1 hour or for 2 hours, etc., or (2) the composition must remain on the lashes for the entire “period of time”, e.g., the duration of from 1 hour to 48 hours. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean the composition must remain on the lashes for any amount of time within the recited range and not necessarily the full duration of the range.
Claim Interpretation
Regarding the term “substantially free” recited in claims 10-13: Applicant’s instant specification states that the term refers to compositions that contain no appreciable amount of the component, for example, about 1% by weight based on the weight of the composition [0010]. While providing examples, the instant disclosure does not expressly provide a definition for “appreciable amount” and states that the term “about [a number]” generally refers to values that are within +10%, +8%, +6%, +5%, +4%, +3%, +2%, +1%, or +0.5% of the number [0066]. Thus, the term “substantially free” is given its broadest reasonable interpretation as is consistent with Applicant’s instant specification and is interpreted to mean no more than 11% by weight of the component based on the total weight of the composition.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel (Record ID: 7154061; published: 01/2020; IDS of 3/10/2025) as evidenced by NICNAS (Full Public Report; published: 05/2007; PTO-892) and Shiner Gold (webpage, <https://shinergold.com/creative-ways-to-use-pomade-beyond-hairstyling/>; archived: 08/02/2023; PTO-892).
Mintel discloses a hair pomade composition containing aqua (water), ceteareth-25, PEG-7 glyceryl cocoate, VP/methacrylamide/vinyl imidazole copolymer, propylene glycol, polyurethane-39, hydrogenated polyisobutene, PEG-7 hydrogenated castor oil, parfum, phenoxyethanol, decylene glycol, CI 16255, and CI 13015 [pg. 1-2, “Ingredients”].
Regarding claim 1: Ceteareth-25 is a polyethylene glycol ether of cetearyl alcohol as evidenced by instant claim 3 and thus reads on the instantly claimed water-soluble wax. VP/methacrylamide/vinyl imidazole copolymer is a polymer of N-vinylpyrrolidone, methacrylamide and N-vinyl imidazole as evidenced by NICNAS [pg. 3, “Identity of Chemical”] and thus reads on the instantly claimed film former.
Regarding claim 11: The reference composition does not comprise C2-C5 monoalcohols and thus meets the claim.
Regarding claim 13: The reference composition does not comprise additional waxes and thus meets the claim.
It is noted that the recitation “mascara” in claims 1, 11, and 13 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition of Mintel is capable of performing the intended use, as evidenced by Shiner Gold which states that pomades are known to be used to give lift and volume to eyelashes [pg. 2, “Brow and Lash Styling”], then it meets the claim. Note: MPEP 2111.02.
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.
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.
Claims 1-6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Pang et al. (US11602498B2; published: 03/14/2023; PTO-892) in view of Making Cosmetics (webpage, <https://makingcosmetics.com/>; archived: 03/21/2023; PTO-892).
Pang teaches a three-step process for curling eyelashes comprising: (i) applying a first composition that includes a reducing agent to an eyelash, (ii) applying a second composition that includes a contractile polymer to the eyelash, and (iii) manually lifting the eyelash [abstract, claims]. The second composition may be an oil-in-water emulsion [col. 6, lines 57-61].
Pang further teaches an embodiment wherein the second composition comprises 2 – 20% w/w of Luviset Clear as the contractile polymer, 5 – 15% w/w of a rheological modifier, and water as the remainder [col. 8-9, tables 1-2]. Luviset Clear is a film-forming copolymer of N-vinylpyrrolidone, methacrylamide, and N-vinylimidazole [col. 4, lines 60-65] and thus reads on the instantly claimed film former recited in claim 1.
However, Pang does not expressly teach that the composition includes a water-soluble wax including a polyethylene glycol ether of cetearyl alcohol.
Making Cosmetics teaches that ceteareth-25 is a universal emulsifier for cosmetic oil-in-water emulsions and has stabilizing, gel-forming, and thickening properties [pg. 1].
Regarding claims 1 and 2: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the second composition of Pang by including ceteareth-25 as the rheology modifier because Making Cosmetics teaches that it is routinely used for stabilizing, gelling, and/or thickening cosmetic oil-in-water compositions, i.e., adjusting the cosmetic’s rheological properties.
Regarding claim 2: Because Pang teaches that the composition comprises 5 – 15% w/w rheological modifier and Making Cosmetics teaches that ceteareth-25 can be used in cosmetic compositions up to 30%, it would have been prima facie obvious to manipulate the concentration of ceteareth-25 using 15% w/w as a starting point for routine optimization in order to achieve a composition with desired rheological properties.
Regarding claim 4: The composition taught by the prior art combination does not comprise water-soluble waxes other than ceteareth-25 and thus meets the claim.
Regarding claim 5: Pang further teaches that the second composition preferably comprises from about 3% to about 35% w/w, about 5% to about 30% w/w, or about 7% to about 25% w/w of the film forming polymer [col. 4, lines 65-67 and col. 5, lines 1-14]. Therefore, one of ordinary skill in the art could at once envisage embodiments wherein the prior art composition comprises 3% w/w, 5% w/w, or 7% w/w of the copolymer of N-vinylpyrrolidone, methacrylamide, and N-vinylimidazole, which each lie within and thus read on the instantly claimed range.
Regarding claim 6: The composition taught by the prior art combination does not comprise film formers other than the copolymer of N-vinylpyrrolidone, methacrylamide, and N-vinylimidazole and thus meets the claim.
Regarding claim 11: The composition taught by the prior art combination does not comprise C2-C5 monoalcohols and thus meets the claim.
Regarding claim 12: The composition taught by the prior art combination does not comprise colorants and thus meets the claim.
Regarding claim 13: The composition taught by the prior art combination does not comprise additional waxes and thus meets the claim.
Regarding claim 14: The method of Pang reads on the instantly claimed application step. Regarding the step of allowing the composition to remain on the one or more lashes for a period of time: Pang further teaches that the contractile polymer contracts and hardens when it dries, suggesting that the composition is not intended to be wiped off immediately [col. 3, lines 40-45]. Further, Pang teaches that the lift imparted to the lashes will last at least 12 hours [col. 7, lines 40-45]. Therefore, it would have been prima facie obvious to have the composition remain on the lashes for 12 hours, which lies within and thus reads on the instantly claimed range, in order to fully make use of the lash-lifting effects.
It is noted that the recitation “mascara” in claims 1-6 and 11-14 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition for curling eyelashes taught by the combination of Pang and Making Cosmetics is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02.
An ordinarily skilled artisan would reasonably expect success in modifying the prior art teachings as proposed because Pang does not impose limits on the rheological modifier component of its composition, and ceteareth-25 is well known in the art to be useful for adjusting the rheological properties of cosmetic emulsions.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Pang et al. (US11602498B2; published: 03/14/2023; PTO-892) in view of Making Cosmetics (webpage, <https://makingcosmetics.com/>; archived: 03/21/2023; PTO-892), as applied to claims 1-6 and 11-14 above, and further in view of Poddçebniak et al. (Appl. Sci., vol. 14, pg. 1-15; published: 02/16/2024; PTO-892) and Puracy (webpage, <https://puracy.com/>; published: 07/27/2023; PTO-892).
The combination of Pang and Making Cosmetics teaches the invention(s) of claims 1-6 and 11-14 as discussed in detail above and further incorporated herein.
Regarding claim 9: Pang further teaches that the second composition preferably comprises from about 50% to about 75% w/w of water [col. 6, lines 62-37], which lies within and thus reads on the instantly claimed range.
However, the combination of Pang and Making Cosmetics does not expressly teach that composition further comprises a polyol or a preservative as recited in claims 7 and 8, respectively, from which claim 9 ultimately depends, or the skin active agent and/or chelating agent recited in claim 10.
Poddçebniak teaches that to inhibit microbial growth in cosmetics during manufacture, packaging, and storage, preservatives are added to ensure the safety of the cosmetic user [pg. 1, “Introduction”]. Phenoxyethanol is the most frequently used preservative in mascaras [pg 5, Fig. 4]. Poddçebniak further teaches that ethylhexylglycerin can enhance the antimicrobial activity of phenoxyethanol by allowing the preservative to penetrate more effectively, thereby reducing the concentration of preservative required [paragraph spanning pg. 2-3].
Puracy teaches that ethylhexylglycerin is routinely found in mascaras and is generally considered safe in concentrations of up to 8% in products that can be rinsed off like cosmetics [pg. 2, “What Does Ethylhexylglycerin Do?”; pg. 3, “Safe Dosage”].
Regarding claims 7 and 8: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the prior art combination by further including the phenoxyethanol of Poddçebniak, which reads on the preservative recited in claim 8, in order to inhibit microbial growth and protect the user applying the composition. It would have also been prima facie obvious to further include the ethylhexylglycerin Poddçebniak, which is structurally a polyol and thus reads on the same recited in claim 7, in order to enhance the efficacy of phenoxyethanol. Regarding the amount of polyol recited in claim 7, it would have been obvious to one of ordinary skill in the art to manipulate the concentration of ethylhexylglycerin within the range of up to 8% taught by Puracy, which substantially overlaps and thus renders obvious the instantly claimed range, in order to achieve suitable synergy with phenoxyethanol while minimizing the amount of preservative required. It would have been obvious to adjust the concentration of ethylhexylglycerin based on its weight relative to the weight of the composition because all other ingredients in the prior art composition are measured by weight.
Regarding claim 10: Poddçebniak teaches that chelating agents such as EDTA can facilitate the activity of many preservatives as it chelates the iron necessary for microbial metabolism and growth [pg. 3, first paragraph]. Therefore, it would have been prima facie obvious to modify the composition taught by the prior art combination by further including a chelating agent such as EDTA to inhibit microbial metabolism and growth within the composition. Because the composition taught by the prior art combination includes a water-soluble wax (e.g., ceteareth-25), a film former (e.g., copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole), a polyol (e.g., ethylhexylglycerin), a preservative (e.g., phenoxyethanol), water, and a chelating agent (e.g., EDTA) and does not include other materials, the prior art composition meets the claim.
An ordinarily skilled artisan would reasonably expect success in modifying the prior art teachings as proposed because preservatives and chelating agents are routinely used in the art to formulate cosmetic compositions applied to the eyelashes and are particularly important for making cosmetics safe for the user.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,602,498 B2 in view of Pang et al. (US11602498B2; published: 03/14/2023; PTO-892), Making Cosmetics (webpage, <https://makingcosmetics.com/>; archived: 03/21/2023; PTO-892), Poddçebniak et al. (Appl. Sci., vol. 14, pg. 1-15; published: 02/16/2024; PTO-892) and Puracy (webpage, <https://puracy.com/>; published: 07/27/2023; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct because the claims of US ‘498 recite a method for providing semi-permanent curl to eyelashes, comprising applying a composition to the eyelash, and a kit comprising the composition, wherein the composition comprises a contractile polymer and water, and wherein the contractile polymer is a film-forming polymer comprising at least one cyclic group selected from the group consisting of cyclic amides, cyclic amines, and mixtures thereof [see US ‘498 claims 1, 10, 12, and 20, for example]. The claims of US ‘498 also recite wherein the cyclic amide group and/or cyclic amine group of the at least one film forming polymer comprise one or more aromatic or aliphatic ring structures [claim 11], wherein the contractile polymer is a copolymer comprising at least one pyrrolidone monomer [claim 17], and wherein the contractile polymer has at least some acrylate or acrylamide functionality [claim 19]. Further, the claims recite that the composition is substantially free of colorants [claim 14] and C1-C4 monoalcohols [claim 19], and the claims do not recite that the composition comprises any C5 monoalcohols or additional waxes.
The claims of US ‘498 do not expressly recite that the contractile polymer is a copolymer of n-vinyl pyrrolidone, methacrylamide, and n-vinylimidazole or that the composition further comprises a water-soluble wax as recited in instant claim 1. Further, the claims of US ‘498 do not expressly recite the limitations of instant claims 2-10, or the method step of allowing the mascara to remain on the lashes for the period of time recited in instant claim 14.
The teachings of Pang, Making Cosmetics, Poddçebniak, and Puracy are as set forth above and further incorporated herein.
Regarding instant claims 1-6: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of US ‘498 by using the copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole taught by Pang as the contractile polymer in an amount of 3% w/w, 5% w/w, or 7% w/w because Pang explicitly demonstrates that this concentration of the same copolymer, which meets all of the requirements of the polymer recited in the claims of US ‘498, is particularly useful for curling eyelashes. Further, it would have been prima facie obvious to further include the ceteareth-25 of Making Cosmetics to adjust the rheological properties of the composition, using 15% w/w as a starting point for routine optimization to achieve a composition with desired rheological properties, because Pang teaches that the combination of contractile polymer and rheological modifier provides significantly longer-lasting lift [col. 8, tables 1-2; col. 9, lines 1-12].
Regarding claims 7 and 8: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘498 claims, Pang, and Making Cosmetics by further including the phenoxyethanol of Poddçebniak, which reads on the preservative recited in claim 8, in order to inhibit microbial growth and protect the user applying the composition. It would have also been prima facie obvious to further include the ethylhexylglycerin of Poddçebniak, which is structurally a polyol and thus reads on the same recited in claim 7, in order to enhance the efficacy of phenoxyethanol. Regarding the amount of polyol recited in claim 7, it would have been obvious to one of ordinary skill in the art to manipulate the concentration of ethylhexylglycerin within the range of up to 8% taught by Puracy, which substantially overlaps and thus renders obvious the instantly claimed range, in order to achieve suitable synergy with phenoxyethanol while minimizing the amount of preservative required. It would have been obvious to adjust the concentration of ethylhexylglycerin based on its weight relative to the weight of the composition because all other ingredients in similar prior art compositions are measured by weight.
Regarding claim 9: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘498 claims, Pang, Making Cosmetics, Poddçebniak, and Puracy by using from about 50% to about 75% by weight of water because Pang teaches this amount is known in the art to be useful in formulating eyelash curling compositions comprising the same ingredients.
Regarding claim 10: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘498 claims, Pang, Making Cosmetics, Poddçebniak, and Puracy by further including a chelating agent such as EDTA to inhibit microbial metabolism and growth within the composition. Because the composition taught by the combination of US ‘498 claims and prior art includes a water-soluble wax (e.g., ceteareth-25), a film former (e.g., copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole), a polyol (e.g., ethylhexylglycerin), a preservative (e.g., phenoxyethanol), water, and a chelating agent (e.g., EDTA) and does not include other materials, the composition meets the claim.
Regarding the step of allowing the composition to remain on the one or more lashes for a period of time recited in instant claim 14: It would have been obvious to one of ordinary skill in the art to modify the method recited in the claims of US ‘498 by allowing the composition remain on the lashes for 12 hours, which lies within and thus reads on the instantly claimed range, because Pang teaches that compositions comprising the same ingredients that are applied to the lashes have lash-lifting effects for this duration.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘498 with the prior art teachings as proposed because all ingredients and concentrations are known in the art to be safe and routinely used to formulate cosmetic compositions applied to the eyelashes.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6, 8-11, 13, 15, and 17-18 of U.S. Patent No. 11,452,684 B2 in view of Pang et al. (US11602498B2; published: 03/14/2023; PTO-892), Making Cosmetics (webpage, <https://makingcosmetics.com/>; archived: 03/21/2023; PTO-892), Poddçebniak et al. (Appl. Sci., vol. 14, pg. 1-15; published: 02/16/2024; PTO-892) and Puracy (webpage, <https://puracy.com/>; published: 07/27/2023; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct because the claims of US ‘684 recite a method of making up eyelashes, comprising applying a primer composition to the eyelashes, and a kit comprising the primer composition, wherein the primer composition comprises a non-ionic and water
soluble or water dispersible copolymer, which is a copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole, in a concentration of from about 10% by weight to about 60% by weight, wherein 10% by weight reads on the instantly claimed range [see US ‘684 claims 1-2, 4, 10-11, and 13, for example]. Further, the claims recite that the composition is substantially free of colorants [claims 6 and 15], and the claims do not recite that the composition comprises any C2-C5 monoalcohols or additional waxes.
The claims of US ‘684 do not expressly recite that the composition further comprises a water-soluble wax as recited in instant claim 1. Further, the claims of US ‘684 do not expressly recite the limitations of instant claims 2-4, 7-10, or the method step of allowing the mascara to remain on the lashes for the period of time recited in instant claim 14.
The teachings of Pang, Making Cosmetics, Poddçebniak, and Puracy are as set forth above and further incorporated herein.
Regarding instant claims 1-4: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of US ‘684 by further including the ceteareth-25 of Making Cosmetics to adjust the rheological properties of the composition, using 15% w/w as a starting point for routine optimization to achieve a composition with desired rheological properties, because Pang teaches that the combination of a copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole and rheological modifier provides significantly longer-lasting lift to a composition that is intended to be applied to eyelashes before a composition comprising a pigment [col. 8, tables 1-2; col. 9, lines 1-12; claims 1 and 8].
Regarding claims 7 and 8: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘684 claims, Pang, and Making Cosmetics by further including the phenoxyethanol of Poddçebniak, which reads on the preservative recited in claim 8, in order to inhibit microbial growth and protect the user applying the composition. It would have also been prima facie obvious to further include the ethylhexylglycerin of Poddçebniak, which is structurally a polyol and thus reads on the same recited in claim 7, in order to enhance the efficacy of phenoxyethanol. Regarding the amount of polyol recited in claim 7, it would have been obvious to one of ordinary skill in the art to manipulate the concentration of ethylhexylglycerin within the range of up to 8% taught by Puracy, which substantially overlaps and thus renders obvious the instantly claimed range, in order to achieve suitable synergy with phenoxyethanol while minimizing the amount of preservative required. It would have been obvious to adjust the concentration of ethylhexylglycerin based on its weight relative to the weight of the composition because all other ingredients in similar prior art compositions are measured by weight.
Regarding claim 9: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘684 claims, Pang, Making Cosmetics, Poddçebniak, and Puracy by using from about 50% to about 75% by weight of water because Pang teaches this amount is known in the art to be useful in formulating eyelash curling compositions comprising the same ingredients.
Regarding claim 10: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘684 claims, Pang, Making Cosmetics, Poddçebniak, and Puracy by further including a chelating agent such as EDTA to inhibit microbial metabolism and growth within the composition. Because the composition taught by the combination of US ‘684 claims and prior art includes a water-soluble wax (e.g., ceteareth-25), a film former (e.g., copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole), a polyol (e.g., ethylhexylglycerin), a preservative (e.g., phenoxyethanol), water, and a chelating agent (e.g., EDTA) and does not include other materials, the composition meets the claim.
Regarding the step of allowing the composition to remain on the one or more lashes for a period of time recited in instant claim 14: It would have been obvious to one of ordinary skill in the art to modify the method recited in the claims of US ‘684 by allowing the composition remain on the lashes for 12 hours, which lies within and thus reads on the instantly claimed range, because Pang teaches that compositions comprising the same ingredients that are applied to the lashes have lash-lifting effects for this duration.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘684 with the prior art teachings as proposed because all ingredients and concentrations are known in the art to be safe and routinely used to formulate cosmetic compositions applied to the eyelashes.
Claims 1-9 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/345,554 in view of Pang et al. (US11602498B2; published: 03/14/2023; PTO-892), Making Cosmetics (webpage, <https://makingcosmetics.com/>; archived: 03/21/2023; PTO-892), Poddçebniak et al. (Appl. Sci., vol. 14, pg. 1-15; published: 02/16/2024; PTO-892) and Puracy (webpage, <https://puracy.com/>; published: 07/27/2023; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct because the claims of App. ‘544 recite an oil-in-water composition comprising water, at least one oil, at least one hydrophobically modified polysaccharide, and at least one aqueous phase film former, wherein the film former is a copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole [see copending claims 1 and 6-7, for example]. Further, the claims recite that the composition is devoid of colorant [see copending claim 10], and the claims do not recite that the composition comprises any C2-C5 monoalcohols or additional waxes.
The claims of App. ‘544 do not expressly recite that the composition further comprises a water-soluble wax as recited in instant claim 1. Further, the claims of App. ‘544 do not expressly recite the limitations of instant claims 2-4, 7-10, or the method of instant claim 14.
The teachings of Pang, Making Cosmetics, Poddçebniak, and Puracy are as set forth above and further incorporated herein.
Regarding instant claims 1-4: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘544 by further including the ceteareth-25 of Making Cosmetics to adjust the rheological properties of the composition, using 15% w/w as a starting point for routine optimization to achieve a composition with desired rheological properties, because Pang teaches that the combination of a copolymer of N-vinyl pyrrolidone, methacrylamide, and N-vinylimidazole and rheological modifier is useful for formulating a cosmetic oil-in-water emulsion that provides significantly longer-lasting lift to eyelashes [col. 8, tables 1-2; col. 9, lines 1-12].
Regarding claims 7 and 8: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of App. ‘544 claims, Pang, and Making Cosmetics by further including the phenoxyethanol of Poddçebniak, which reads on the preservative recited in claim 8, in order to inhibit microbial growth and protect the user applying the composition. It would have also been prima facie obvious to further include the ethylhexylglycerin of Poddçebniak, which is structurally a polyol and thus reads on the same recited in claim 7, in order to enhance the efficacy of phenoxyethanol. Regarding the amount of polyol recited in claim 7, it would have been obvious to one of ordinary skill in the art to manipulate the concentration of ethylhexylglycerin within the range of up to 8% taught by Puracy, which substantially overlaps and thus renders obvious the instantly claimed range, in order to achieve suitable synergy with phenoxyethanol while minimizing the amount of preservative required. It would have been obvious to adjust the concentration of ethylhexylglycerin based on its weight relative to the weight of the composition because all other ingredients in similar prior art compositions are measured by weight.
Regarding claim 9: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of App. ‘544 claims, Pang, Making Cosmetics, Poddçebniak, and Puracy by using from about 50% to about 75% by weight of water because Pang teaches this amount is known in the art to be useful in formulating eyelash curling compositions comprising the same ingredients.
Regarding instant claim 14: It would have been obvious to one of ordinary skill in the art to apply the composition recited in the claims of App. ‘544 to the eyelashes using the method of Pang because the prior art reference teaches that compositions comprising the same ingredients are useful for providing significantly longer-lasting lift to eyelashes. It would have further been obvious to allow the composition remain on the lashes for 12 hours, which lies within and thus reads on the instantly claimed range, in order to fully make use of the lash-lifting effects because Pang teaches that the effects last for this for this duration.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of App. ‘554 with the prior art teachings as proposed because all ingredients and concentrations are known in the art to be safe and routinely used to formulate cosmetic compositions applied to the eyelashes.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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