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 .
Status of Application and Claims
Claims 1-12 are pending and under consideration in this action.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 12/25/2023. It is noted, however, that applicant has not filed a certified copy of the JP2023-218062 application as required by 37 CFR 1.55.
Specification
The disclosure is objected to because it contains trademarks. For example, Vaseline (p. 14). The use of the term Vaseline, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 5 is objected to because of the following informalities: “[(A1)/(A2)]”. Square brackets should not be used, as they are reserved for making claim amendments. Appropriate correction is required.
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 4-5, 9-10, 12 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, that depends on claim 1, recites “1 to 70%” of (A) component is A1. However, claim recites “... containing (A1) rice bran wax as the (A) component”, which implied that the entire (A) component (i.e. 100%) is “(A1) rice bran wax). Therefore, claim 4 is in conflict with the 100% recitation of claim 1.
Claim 5 recites “(A2)… as the (A) component”, which implies that the A component is entirely A2. This claim conflicts with claim 1, which recites “ (A1) rice bran wax as the (A) component”. The claim language of claim 1 implies that the entire (A) component (i.e. 100%) is “(A1) rice bran wax). Therefore, dependent claim 5 conflicts with claim 1.
Claims 5 and 12 recite “a mass ratio [(A1)/(A2)] between the (A1) component and a hydrocarbon contained in (A2) the hydrocarbon-based wax is 1/30 to 2/1”, which renders the claims unclear. “A mass ratio [(A1)/(A2)]” denotes there is one claimed ratio of “[(A1)/(A2)]”. However, the claims recite the ratio being “1/30 to 2/1”, which claims a range of ratios for “[(A1)/(A2)]”. Therefore, it is unclear whether claim 5 and 12 are claiming one ratio or a range of ratios.
Additionally, it is unclear what components the mass ratio is between. “[(A1)/(A2)]” implies that the ratio is between the entirety of A1 and A2. However, the claim also recites a mass ratio “between the (A1) component and a hydrocarbon contained in (A2).” This phrase renders the claim indefinite, as it is unclear whether the ratio is between the entirety of A1 and A2 or A1 (rice bran wax) and the hydrocarbon component of A2.
Claims 9 and 10 recite “a pasty oil” and “a liquid oil”. There is insufficient antecedent basis for this limitation in the claim because there is no previous recitation that the composition has these properties. Further, it is unclear if these two oils are further comprised by the cosmetic or if they are part of the A, B, C, D, and E components.
Claim 12 recites “(A2)… as the (A) component”, which implies that the A component is entirely A2. This claim conflicts with claim 11, which recites “ (A1) rice bran wax as the (A) component”. The claim language of claim 11 implies that the entire (A) component (i.e. 100%) is “(A1) rice bran wax). Therefore, dependent claim 12 conflicts with claim 11.
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)(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 1-4, 6, 8-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Biganska et al. (US20240041718A1; filed 21 December 2021)
Regarding claim 1, Biganska et al. teaches a cosmetic composition that can be produced in the form of a stick (Abstract, para. 0247). Biganska et al. teaches a composition comprising at least one crystallizable fatty substance, chosen from a list including rice bran wax (para. 0163). Biganska et al. further teaches the composition comprising spherical silica particles (para. 0130). Additionally, Biganska et al. teaches particles within the size range of instant claim 1 (e.g. para 0122). The composition may further contain volatile oils like liquid paraffins and polymethylsiloxanes (para. 0191). The instant specification listed both low-molecular-weight linear silicones like dimethylpolysiloxane and light liquid isoparaffin as suitable volatile components (instant specification para. 0038). Regarding the claim limitation “coating agent”, Biganska et al. teaches the composition may contain silicone resins (para. 0292). The instant specification defines silicone resins as suitable coating agents (instant specification para. 0043). Biganska et al. teaches the composition can additionally contain colorants (reads on a coloring material)(para. 0225).
Regarding claim 2, Biganska et al. teaches the crystallizable fatty substance (reads on solid oil, rice bran wax) is present in a content of between 0.01% and 15.00% by weight with respect to the weight of the composition (para. 0173).
Regarding claim 3, Biganska et al. teaches the crystallizable fatty substance (reads on solid oil) is present in a content of between 0.1% and 8% by weight, with respect to the weight of the composition (para. 0173). The crystallizable fatty substance may be rice bran wax, component (A1) of the instant invention (Biganska et al. para. 0165).
Regarding claim 4, Biganska et al. teaches the crystallizable fatty substance (reads on solid oil) is present in a content of 15.00% (para. 0173). This falls within the range of 1 to 70%. Therefore, the claim limitations of claim 4 are satisfied.
Regarding claim 6, Biganska et al. teaches the composition comprising an inorganic filler comprising silica, aluminum oxide, sodium oxide, potassium oxide, iron oxide, calcium oxide, and titanium oxide (para. 0144).
Regarding claim 8, Biganska et al. teaches an oil phase in the amount of 20%. In the list of possible oils within the composition, Biganska et al. names volatile paraffins and their derivatives and volatile polymethylsiloxanes (para. 0191; 0204).
Regarding claim 9, Biganska et al. teaches a compositing comprising a pasty compound in the amount of 0% to 10% by weight with respect to the total weight of the composition (para. 0223). Biganska et al. cites esters as possible pasty compounds (para. 0208). The instant specification presents a non-exhaustive list of possible pasty oils, one being hydrogenated castor oil isostearate, a hydrogenated castor-oil-derived ester of isosteric acid (instant specification para. 0052). Additionally, Biganska teaches an oil phase comprising liquid oils like liquid triglycerides of fatty acids comprising 4 to 10 carbon atoms or liquid paraffins (para. 0191). This oil phase may be present in the composition in the amount 20% by weight with respect to the total weight of the composition (para. 0204). Therefore, the claim limitation of claim 9 is satisfied, as the pasty compound may be present in the composition in an amount up to 10% by weight of the composition and the liquid oil may be present in an amount up to 20% by weight of the composition. Thus, the combined total weight of the pasty compound and liquid oil may be 0.1-20% by mass with respect to the total weight of the composition taught in Biganska et al.
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.
Claims 1-4, 5, 8-9, 11, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Biganska et al. (US20240041718A1; filed 21 December 2021) in view of Ilekti (FR 2983720A1; published 14 June 2013; translation from google patents) and Mintel. “Stay-On Eyeline Ultra-Thin Cream Pencil” (published September 2023).
Biganska et al. throughout the reference teaches a composition comprising a solid oil which may be rice bran wax, a spherical powder having a diameter within the range of 1 to 50 μm, a volatile component, a coating agent, and a coloring material, as discussed above. Biganska et al. further teaches the composition comprising hydrocarbon waxes, for example candelilla wax (e.g. para. 0163). The instant specification lists candelilla wax as a suitable hydrocarbon wax (instant specification; para. 0012)
Biganska et. al differs from the instantly claimed invention in that it fails to teach: (i) wherein a mass ratio [(A1)/(A2)] between the (A1) component and a hydrocarbon contained in (A2) the hydrocarbon-based wax is 1/30 to 2/1; (ii) wherein the (D) component is trimethylsiloxysilicate. Ilekti and Mintel are relied upon for this disclosure. The teachings of Ilekti and Mintel are set forth herein below.
Ilekti teaches throughout the reference that the total content of the polar wax(es) and apolar wax(es) are such that the weight ratio of polar: apolar waxes is greater than or equal to 1. Ilekti teaches the composition comprising at least one polar wax, naming rice bran wax as an option for the polar portion of the wax composition. Ilekti further discloses the composition comprising at least one apolar wax chosen from hydrocarbon waxes, preferably from microcrystalline waxes, paraffin waxes, ozokerite, polyethylene waxes, and mixtures of diester waxes (para. 007). Ilekti teaches the composition comprising at least 50% by weight polar waxes relative to the total weight of waxes (para. 007). For the instant invention, this correlates to the ratio of A1 (rice bran wax) to A2 (hydrocarbon-based wax) being greater than or equal to 1. Instant claims 5 and 12 claim the mass ratio of A1:A2 be 1/30 to 2/1. Therefore, the composition taught in Ilekti satisfies the claim limitation of instant claims 5 and 12, as the weight ratio falls within this range.
Mintel discloses the composition of an eyeliner pencil containing trimethylsiloxysilicate (Ingredients). Additionally, Mintel claims the product is oil, sweat, tears and rub resistant and allows for a smooth application with minimum effort (Product description).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Biganska et al. and Ilekti and arrive at the instantly claimed invention. It would be obvious to modify Biganska et al. to include a pasty wax a liquid oil in this ratio to achieve a consumer composition that provides a smooth and homogenous application and improves the ease of application, as taught by Ilekti.
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Biganska et al. and Mintel to arrive at the instantly claimed invention. It would be obvious to modify Biganska et al. to include trimethylsiloxysilicate to achieve a consumer composition that improves the resistance to sweat, oil, etc. and the smooth application. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as trimethylsiloxysilicate is a silicone resin. Biganska et al. teaches that silicone resins are suitable components of the composition.
Claims 1-9, 10, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Biganska et al. (US20240041718A1; filed 21 December 2021) and Mintel. “Stay-On Eyeline Ultra-Thin Cream Pencil” (published September 2023), as applied to claims 1-9 and 11-12 above, and further in view of Okamoto et al. (JP2023062540A; published 8 May 2023; cited in IDS 2/14/2025; translation from google patents).
The combined teachings of Biganska et al. and Mintel are discussed above.
Biganska et. al differs from the instantly claimed invention in that it fails to teach: wherein a ratio of a content of the (A) component to a total content of a pasty oil and a liquid oil contained in the oily stick-shaped cosmetic is 0.1 to 30. Okamoto et al. is relied upon for this disclosure. The teachings of Okamoto et al. are set forth herein below
Okamoto et al. discloses a composition comprising (A) a non-polar wax; (B) a polar wax; and (C) a liquid oil (claim 1). Okamoto et al. teaches petroleum jelly as a part of component A, the non-polar wax (“Test Example 1 to 24” para. 04). The instant specification names Vaseline, a name brand petroleum jelly, as an example of a pasty oil (instant specification para. 0052). Okamoto et al. teaches rice bran wax as a polar wax (“Test Example 1 to 24” para. 03). Within the composition, the total amount of the non-polar wax and the polar wax is 23% by mass to 40% by mass with respect to the mass of the cosmetic composition (“Claims” ln. 4). The polar wax is 20% by mass to 60% by mass with respect to the total amount the non-polar wax and the polar wax (“Claims” ln. 5). The liquid oil content is 55% to 75% by mass relative to the mass of the cosmetic composition (“Claims” ln. 16). Within these ranges, there are amounts of each component that satisfy the instant claim limitation the “ratio of a content of the (A) component to a total content of a pasty oil and a liquid oil contained in the oily stick-shaped cosmetic is 0.1 to 30.”
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed to combine the teachings of Biganska et al. and Okamoto et al. and arrive at the instantly claimed invention. It would be obvious to modify Biganska et al. to include these components at the specified ratio within Okamoto et al. to achieves a consumer composition that provides a smooth application feeling, as taught by Okamoto et al. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Okamoto et al. teaches the proportions within the cosmetic directly correspond to the smooth application feeling.
Conclusion
Claims 1-12 are rejected. No claims are allowed.
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/Olivia Anne MacMillan/
Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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