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 .
DETAILED ACTION
A second request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 18, 2026 has been entered.
Claims 1-5, 7-11, 19-22, 26 and 27 are pending.
Claims 6, 12-18 and 23-25 are cancelled.
Claims 1 and 9 are currently amended.
Claim 27 is new.
Claims 7 and 19 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-5, 8-11, 20-22, 26 and 27 as filed on May 21, 2026 are pending and under consideration to the extent of the elected species, e.g., at least some of the calcium carbonate particles are coupled to the graphene.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn, all previous claim rejections under 35 USC 112(b) are withdrawn, and all previous claim rejections under 35 USC 112(d) are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
Claim 27 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
New claim 27 recites inter alia a dispersing agent from 1 to 20% and a lash lengthening fiber or a volumizing powder from 1 to 20%. Applicant’s Remarks cite to paragraphs [0038] and [0039] in support. Paragraph [0039] discloses (reproduced in part, emphasis added):
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The disclosed ranges do not support the breadth of the ranges newly claimed.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 8-11, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kanemaru et al. (WO 2010/146630, published December 23, 2010, as evidenced by the Google translation, of record) in view of Fukushima et al. (WO 2020/077365, published April 16, 2020, of record); Ning et al. (CN 107802504 A, published March 16, 2018, as evidenced by the Google translation, of record); Lee et al. “A route towards superhydrophobic graphene surfaces: surface-treated reduced graphene oxide spheres,” Journal of Materials Chemistry A 1:7312-7315, 2013, of record; Budde et al. (US 2021/0077368, published March 18, 2021, of record); and Alwattari et al. (US 5,874,072, published February 23, 1999).
Kanemaru teaches a cosmetic comprising calcium carbonate (title; abstract; claims). The calcium carbonate has an average particle size of 1 to 50 microns and may be subjected to a hydrophobic treatment (claims 2, 3), as required by instant claim 3. The cosmetic comprises about 0.1 to 30 wt% calcium carbonate (page 2, 6th full paragraph), as required by instant claim 22. The cosmetic may further comprise powder components inclusive of iron oxide, titanium oxide (dye that is a mineral pigment as evidenced by paragraph [0037] of the instant specification) or/and carbon black or/and bitumen; Example 24 comprises inter alia 3 wt% titanium oxide (page 2, 8th full paragraph), as required by instant claim 8. The cosmetic may further comprise higher fatty acids inclusive of stearic acid or/and higher fatty alcohols inclusive of stearyl alcohol (emulsifiers); Examples 6 and 24 comprise inter alia 1 wt% stearic acid (page 2, 12th full paragraph; page 5; pages 10-11), as required by instant claim 8. The cosmetic may further comprise silicone oils inclusive of linear polysiloxanes (oil) such as dimethylpolysiloxane; Example 8 comprises inter alia 2 wt% dimethylpolysiloxane and Example 24 comprises inter alia 7 wt% dimethylpolysiloxanes (page 2, 14th full paragraph), as required by instant claim 9. The cosmetic may further comprise surfactants (emulsifiers) (paragraph bridging pages 2 and 3; page 3, 1st full paragraph). The cosmetic may further comprise a humectant (page 3, 2nd full paragraph), as required by instant claim 9. The cosmetic may further comprise a preservative (page 3, 12th full paragraph), as required by instant claim 9. The cosmetic may be a mascara (page 3, 13th full paragraph; Examples 8, 36), as required by instant claim 10. Regarding the exclusion of bituminous conglomerate as required by instant claim 11, while Kanemaru optionally embraces the presence of bitumen as a powder component, optional inclusion of a particular component teaches compositions that both do and do not contain that component (see MPEP 2123) and Kanemaru, as a whole, is silent to and does not require a bituminous conglomerate.
Kanemaru does not teach about 7.5 to 10 wt% hydrophobic graphene nano-platelets having a water contact angle greater than or equal to about 110º, wherein at least some of the calcium carbonate particles are coupled to the graphene as required by claim 1.
Kanemaru does not specifically teach or exemplify a single embodiment comprising about 1 to 20 wt% of a dye, about 1 to 10 wt% of an emulsifier and about 1 to 5 wt% of a polymer selected from the group inclusive of acrylate/styrene/ammonium methacrylate copolymer or/and polyether as required by claim 1 as currently amended.
Kanemaru does not teach aragonite as required by claim 2.
Kanemaru does not teach a water contact angle greater than or equal to about 125º to less than about 180º as required by claim 21.
These deficiencies are made up for in the teachings of Fukushima, Ning, Lee, Budde, and Alwattari.
Fukushima teaches graphene nanoplatelet coated calcium carbonate particles; the coating forms a direct contact (coupled) (title; abstract; claims; Figure; paragraphs [0014], [0020]; Example 1). Calcium carbonate is found in aragonite; calcium carbonate is relatively brittle and may dissolve (paragraph [0006]), as required by instant claim 2. The graphene coating improves mechanical strength and imparts chemical resistance properties (abstract; paragraphs [0008], [0020]). The graphene may be graphene oxide or reduced graphene (paragraph [0021]). The graphene is 0.5 to 15 wt% of the composite particle (claims 10, 11).
Ning teaches a mascara comprising 0.1 to 10 wt% graphene (title; abstract; claims, in particular 1, 4, 5). The graphene is a dark gray powder with a plane size of 5 to 15 microns (nanoplatelet) (claim 2). Graphene has antibiotic property, good adhesiveness and improves waterproof effect (hydrophobic, water contact angle greater than 90º) (abstract; page 2, lower half, paragraph starting “Graphene is the monolayer …”). The graphene is dispersed in the oil phase of an emulsion (abstract; page 3).
Lee teaches graphene forms hydrophobic surfaces and further teaches reduced graphene oxide has a contact angle of 127º (page 7312, 1st and 2nd paragraphs; Figure 4), as required by instant claim 21.
Budde teaches surface-reacted calcium carbonate and the use as a skin appearance modifier in a cosmetic composition inclusive of eye make-up products; the calcium carbonate may comprise at least one agent adsorbed onto the surface thereof (title; abstract; claims, in particular 1, 8, 10, 11, 13). The calcium carbonate may have an aragonitic form (claim 4), as required by instant claim 2. The composition comprises water or/and at least one oil selected from the group inclusive of siloxanes; suitable siloxanes include dimethicone (polydimethylsiloxane) (claims 9, 20; paragraph [0123]). Oils also include fatty acids inclusive of stearic acid (paragraphs [0119], [0124], [0127]). The at least one oil is present from 1 to 95 wt% (paragraph [0128]). The composition further comprises at least one additive inclusive of emulsifiers and colorants; colorants include pigments or dyes such as inter alia titanium dioxide (claim 12; paragraph [0137]). The composition may comprise 0.1 to 10 wt% emulsifiers and 0.1 to 15 wt% colorants (paragraph [0149]). The exemplary compositions further comprise film forming agents (e.g., Table 2).
Alwattari teaches mascara compositions comprising water-insoluble polymeric material and water-soluble film forming polymers; said compositions exhibit improved wear and are removable with soap and water (title; abstract; claims). The water-insoluble polymeric material is selected from the group inclusive of styrene/acrylates/methacrylate copolymers additionally comprising ammonia and is present from about 3 to about 60 wt% and the water-soluble film forming polymers are selected from the group inclusive of polyethylene oxide (a polyether) and are present from about 2 to about 50 wt% (claim 1). The compositions further comprise wax, emulsifier, pigment and water (claim 1).
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 cosmetic compositions of Kanemaru inclusive of the mascaras to further comprise 0.1 to 10 wt% graphene powder (nanoplatelet, hydrophobic) as taught by Ning inclusive of graphene nanoplatelets as taught by Fukushima in order to provide antibiotic property, good adhesiveness and to improve the waterproof effect of the cosmetic compositions. There would be a reasonable expectation of success because Kanemaru embraces the presence of powder components inclusive of carbon black and the graphene of Ning and of Fukushima falls within this genus.
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 hydrophobic coating of the calcium carbonate particles of the cosmetic compositions of Kanemaru to comprise graphene – inclusive of reduced graphene oxide – nanoplatelets as taught by Fukushima in order to improve the strength and chemical resistance properties of the calcium carbonate particles. There would be a reasonable expectation of success because Kanemaru embraces any hydrophobic treatment and because graphene is known to form hydrophobic surfaces inclusive of those having a contact angle of 127º in view of Lee.
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 cosmetic compositions of Kanemaru in view of Ning, Fukushima and Lee inclusive of the mascaras to comprise 1 to 95 wt% of at least one oil selected from the group inclusive of siloxanes inclusive of dimethicone (polysiloxane), 0.1 to 10 wt% emulsifiers and 0.1 to 15 wt% colorants (dye) as taught by Budde because such compositions are suitable for formulating cosmetic compositions inclusive of eye make-up products comprising calcium carbonate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. There would be a reasonable expectation of success because Kanemaru embraces the presence of and exemplifies embodiments of composition comprising oils inclusive of polysiloxanes, emulsifiers.
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 cosmetic compositions of Kanemaru in view of Ning, Fukushima, Lee and Budde inclusive of the mascaras to further comprise about 3 to 60 wt% water-insoluble polymeric material inclusive of styrene / acrylates / methacrylate copolymers additionally comprising ammonia and about 2 to 50 wt% of water-soluble film forming polymers inclusive of polyethylene oxide (a polyether) as taught by Alwattari in order to improve wear and removability of the compositions. See MPEP 2144.05.
Regarding claim 2, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to source the calcium carbonate of Kanemaru from known sources inclusive of aragonite as taught by Fukushima and by Budde.
Regarding claim 8, although Kanemaru renders obvious compositions comprising fatty acids inclusive of stearic acid and exemplifies embodiments comprising 1 wt% stearic acid, in the alternative, 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 compositions of Kanemaru in view of Fukushima, Ning, Lee, Budde and Alwattari to comprise fatty acids inclusive of stearic acid in amounts ranging from 1 to 95 wt% as taught by Budde because such compositions are suitable for formulating cosmetic compositions inclusive of eye make-up products comprising calcium carbonate. See MPEP 2144.05.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kanemaru et al. (WO 2010/146630, published December 23, 2010, as evidenced by the Google translation, of record) in view of Fukushima et al. (WO 2020/077365, published April 16, 2020, of record); Ning et al. (CN 107802504 A, published March 16, 2018, as evidenced by the Google translation, of record); Lee et al. “A route towards superhydrophobic graphene surfaces: surface-treated reduced graphene oxide spheres,” Journal of Materials Chemistry A 1:7312-7315, 2013, of record; Budde et al. (US 2021/0077368, published March 18, 2021, of record); and Alwattari et al. (US 5,874,072, published February 23, 1999) as applied to claims 1-3, 8-11, 21 and 22 above, and further in view of Myers et al. (US 2020/0308015, published October 1, 2020, of record).
The teachings of Kanemaru, Fukushima, Ning, Lee, Budde and Alwattari have been described supra.
They do not teach oolitic aragonite as required by claim 4.
They do not teach milled oolitic aragonite particles as required by claim 5.
These deficiencies are made up for in the teachings of Myers.
Myers teaches cosmetic compositions comprising a carrier and oolitic aragonite beads having an average diameter between 10 nm to 10 mm such as 2 to 8 microns and further teaches a milling system for producing the oolitic aragonite beads (title; abstract; claims; paragraphs [0036], [0042]-[0043], [0046], [0081]), as required by instant claims 4, 5. The beads have a low variation in the particle size distribution having a size between 2.0 and 3.5 microns (claim 6; paragraphs [0012]-[0013], [0046]). The beads may be hydrophobically modified or coated with another substance (claim 8; paragraphs [0016], [0028], [0062], [0081]). Cosmetics include mascara; oolitic aragonite in cosmetics for eyelashes can achieve a homogenous deposit while providing softness (claim 17; paragraphs [0022], [0078]). The cosmetic may have a soft focus effect (paragraph [0028]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the milled oolitic aragonite beads of Myers for the calcium carbonate particles of Kanemaru because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kanemaru et al. (WO 2010/146630, published December 23, 2010, as evidenced by the Google translation, of record) in view of Fukushima et al. (WO 2020/077365, published April 16, 2020, of record); Ning et al. (CN 107802504 A, published March 16, 2018, as evidenced by the Google translation, of record); Lee et al. “A route towards superhydrophobic graphene surfaces: surface-treated reduced graphene oxide spheres,” Journal of Materials Chemistry A 1:7312-7315, 2013, of record; Budde et al. (US 2021/0077368, published March 18, 2021, of record); Alwattari et al. (US 5,874,072, published February 23, 1999); and Brittain (US 4,586,520, published May 6, 1986, of record).
The teachings of Kanemaru have been described supra.
Kanemaru does not teach about 7.5 to 10 wt% hydrophobic graphene nano-platelets having a water contact angle greater than or equal to about 110º, wherein at least some of the calcium carbonate particles are coupled to the graphene as required by claim 1.
Kanemaru does not specifically teach or exemplify a single embodiment comprising about 1 to 20 wt% of a dye, about 1 to 10 wt% of an emulsifier and about 1 to 5 wt% of a polymer selected from the group inclusive of acrylate / styrene / ammonium methacrylate copolymer or/and polyether as required by claim 1 as currently amended.
Kanemaru does not teach a device comprising a container, the cosmetic of claim 1 within the container, and an applicator, wherein the application is detachable from the container as required by claim 20.
These deficiencies are made up for in the teachings of Fukushima, Ning, Lee, Budde, Alwattari and Brittain.
The teachings of Fukushima have been described supra.
The teachings of Ning have been described supra.
The teachings of Lee have been described supra.
The teachings of Budde have been described supra.
The teachings of Alwattari have been described supra.
Brittain teaches a mascara applicator comprising an elongated applicator shaft having a handle portion disposed on one end thereof and a bristle brush portion disposed on the opposite end thereof, a reservoir comprising fluent mascara and a cover removably engagable with said reservoir, forming at least part of said handle portion of said shaft (title; abstract; claims, in particular 1; Figures, in particular 7).
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 cosmetic compositions of Kanemaru inclusive of the mascaras to further comprise 0.1 to 10 wt% graphene powder (nanoplatelet, hydrophobic) as taught by Ning inclusive of graphene nanoplatelets as taught by Fukushima in order to provide antibiotic property, good adhesiveness and to improve the waterproof effect of the cosmetic compositions. There would be a reasonable expectation of success because Kanemaru embraces the presence of powder components inclusive of carbon black and the graphene of Ning and of Fukushima falls within this genus.
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 hydrophobic coating of the calcium carbonate particles of the cosmetic compositions of Kanemaru to comprise graphene – inclusive of reduced graphene oxide – nanoplatelets as taught by Fukushima in order to improve the strength and chemical resistance properties of the calcium carbonate particles. There would be a reasonable expectation of success because Kanemaru embraces any hydrophobic treatment and because graphene is known to form hydrophobic surfaces inclusive of those having a contact angle of 127º in view of Lee.
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 cosmetic compositions of Kanemaru in view of Ning, Fukushima and Lee inclusive of the mascaras to comprise 1 to 95 wt% of at least one oil selected from the group inclusive of siloxanes inclusive of dimethicone (polysiloxane), 0.1 to 10 wt% emulsifiers and 0.1 to 15 wt% colorants (dye) as taught by Budde because such compositions are suitable for formulating cosmetic compositions inclusive of eye make-up products comprising calcium carbonate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. There would be a reasonable expectation of success because Kanemaru embraces the presence of and exemplifies embodiments of composition comprising oils inclusive of polysiloxanes, emulsifiers.
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 cosmetic compositions of Kanemaru in view of Ning, Fukushima, Lee and Budde inclusive of the mascaras to further comprise about 3 to 60 wt% water-insoluble polymeric material inclusive of styrene / acrylates / methacrylate copolymers additionally comprising ammonia and about 2 to 50 wt% of water-soluble film forming polymers inclusive of polyethylene oxide (a polyether) as taught by Alwattari in order to improve wear and removability of the compositions. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to package the cosmetic compositions of Kanemaru in view of Fukushima, Ning, Lee, Budda and Alwattari inclusive of mascaras comprising calcium carbonate and graphene nano-platelets as elaborated supra within appropriate containers inclusive of the container of Brittain when the compositions are in the form of a mascara because such is routine and conventional in the art.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kanemaru et al. (WO 2010/146630, published December 23, 2010, as evidenced by the Google translation, of record) in view of Fukushima et al. (WO 2020/077365, published April 16, 2020, of record); Ning et al. (CN 107802504 A, published March 16, 2018, as evidenced by the Google translation, of record); Lee et al. “A route towards superhydrophobic graphene surfaces: surface-treated reduced graphene oxide spheres,” Journal of Materials Chemistry A 1:7312-7315, 2013, of record; Budde et al. (US 2021/0077368, published March 18, 2021, of record); and Alwattari et al. (US 5,874,072, published February 23, 1999) as applied to claims 1-3, 8-11, 21 and 22 above, and further in view of Anselmi et al. (US 2020/0330344, published October 22, 2020, of record).
The teachings of Kanemaru, Fukushima, Ning, Lee, Budde and Alwattari have been described supra.
Ning further teaches the mascara comprises 0.1 to 10 wt% graphene, 10 to 30 wt% wax, 10 to 30 wt% film forming agents in the form of polymers, 1 to 10 wt% NMF (natural moisturizing factors) such as glycerin (humectant), 2 to 12 wt% emulsifying agents, 0 to 10 wt% coloring agents, 2 to 10 wt% grease (oil inclusive of isononyl isononanoate or/and dimethyl silicone polymer), 0.05 to 0.5 wt% preservative and a balance of water (title; abstract; claims, in particular 1, 4, 5; page 3, top half).
Budde further teaches the compositions may comprise from 1 to 95 wt% water (solvent), 0.1 to 15 wt% preserving agents, 0.1 to 10 wt% thickeners (emulsion stabilizers) or/and stabilizers (paragraphs [0128], [0149]).
Alwattari further teaches the compositions may comprise from about 1 to 40 wt% wax, about 0.1 to 20 wt% emulsifier, about 3 to 30 wt% pigment and about 10 to 75 wt% water (solvent) (claim 1).
They do not specifically teach about 1 to 10 wt % solvent, about 1 to 10 wt% wax, about 1 to 5 wt% humectant, about 0.5 to 5 wt% preservative, about 0.1 to 2.5 wt% emulsion stabilizer and about 2 to 20 wt% oil as required by claim 26.
These deficiencies are made up for in the teachings of Anselmi.
Anselmi teaches eye make-up compositions inclusive of mascara comprising 5 to 15 wt% graphene, the composition being free of synthetic polymers because such function is accomplished by the graphene (title; abstract; claims, in particular 1 & 2; paragraph [0034]). The compositions may further comprise 2 to 20 wt% waxes (claim 5). The compositions may further comprise 1 to 10 wt% emulsifiers, 2 to 20 wt% oils and 0.5 to 20 wt% dyes (claim 6). The compositions may further comprise preservatives; Example 3 comprise 1 wt% preservatives (paragraphs [0044], [0066]). The compositions may further comprise additives inclusive of moisteners (humectants) such as glycerin in amounts up to 20 wt% (paragraph [0045]). The carrier is a watery solvent (paragraph [0047]).
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 cosmetic compositions of Kanemaru, Fukushima, Ning, Lee, Budde and Alwattari to comprise the specific amounts of the specific categories of ingredients as independently taught by Ning and by Budde and by Alwattari and by Anselmi in order to prepare a mascara or/and eye make-up product. The combined teachings of the prior art therefore render obvious mascara or/and eye make-up product compositions comprising, in addition to the calcium carbonate and the reduced graphene oxide nano-platelets, in addition to the dye, in addition to the emulsifier, and in addition to the polymer 2 to 20 wt% or/and 10 to 30 or/and 1 to 40 wt% waxes rendering obvious 1 to 40 wt% waxes; 0 or/and 10 to 30 wt% film forming polymers rendering obvious 0 to 30 wt% film forming polymers; up to 20 wt% glycerin or/and 1 to 10 wt% NMF such as glycerin rendering obvious 0 to 20 wt% humectant; 1 wt% or/and 0.05 to 0.5 wt% or/and 0.1 to 15 wt% preservative rendering obvious 0.05 to 15 wt% preservative; 0.1 to 10 wt% thickeners (emulsion stabilizers) or/and stabilizers , 2 to 20 wt% or/and 2 to 10 wt% oil rendering obvious 2 to 20 wt% oil inclusive of oil inclusive of polysiloxane oils, and a balance of the composition comprising an aqueous solvent, the minimum and maximum ranges thereof being derivable by summing the endpoints of all of the requisite components, e.g., the compositions of Ning may comprise as much as 74.85 wt% water surplus and as little as 0 wt% water consistent with the disclosure of Budde of 1 to 95 wt% water and with the disclosure of Alwattari of about 10 to 75 wt% water. See MPEP 2144.05.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Kanemaru et al. (WO 2010/146630, published December 23, 2010, as evidenced by the Google translation, of record) in view of Fukushima et al. (WO 2020/077365, published April 16, 2020, of record); Ning et al. (CN 107802504 A, published March 16, 2018, as evidenced by the Google translation, of record); Lee et al. “A route towards superhydrophobic graphene surfaces: surface-treated reduced graphene oxide spheres,” Journal of Materials Chemistry A 1:7312-7315, 2013, of record; Budde et al. (US 2021/0077368, published March 18, 2021, of record); and Alwattari et al. (US 5,874,072, published February 23, 1999); Anselmi et al. (US 2020/0330344, published October 22, 2020, of record); and Hadasch et al. (FR 2,921,264 A1, published March 27, 2009, as evidenced by the Google translation).
The teachings of Kanemaru have been described supra.
Kanemaru does not teach about 7.5 to 10 wt% hydrophobic graphene nano-platelets having a water contact angle greater than or equal to about 110º, wherein at least some of the calcium carbonate particles are coupled to the graphene; does not specifically teach or exemplify a single embodiment comprising about 1 to 20 wt% of a dye, about 1 to 10 wt% of an emulsifier and about 1 to 5 wt% of a polymer selected from the group inclusive of acrylate/styrene/ammonium methacrylate copolymer or / and polyether; and does not specifically teach about 1 to 10 wt % solvent, about 1 to 10 wt% wax, about 1 to 5 wt% humectant, about 0.5 to 5 wt% preservative, about 1 to 20 wt% dispersant, about 0.1 to 2.5 wt% emulsion stabilizer, about 1 to 20 wt% fiber or powder, and about 2 to 20 wt% oil as required by claim 27.
These deficiencies are made up for in the teachings of Fukushima, Ning, Lee, Budde, Alwattari, Anselmi and Hadasch.
The teachings of Fukushima have been described supra.
The teachings of Ning have been described supra.
The teachings of Lee have been described supra.
The teachings of Budde have been described supra.
The teachings of Alwattari have been described supra.
The teachings of Anselmi have been described supra.
Hadasch teaches oily compositions comprising fibers and a dispersing agent (title; abstract; claims). The fibers are present in an amount of least 5 wt% (claims 1, 11). The dispersing agent is present in an amount of 0.1 to 15 wt% (claim 17). The compositions may be a makeup composition such as a mascara (page 2, 2nd full paragraph under Description). The compositions blur or/and camouflage relief inhomogeneities (claim 36). It is known to use fibers in mascara for their lengthening effect (page 2, 3rd full paragraph under Description). The dispersant makes it possible to homogenously disperse fibers in the compositions (page 2, 6th full paragraph under Description).
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 cosmetic compositions of Kanemaru inclusive of the mascaras to further comprise 0.1 to 10 wt% graphene powder (nanoplatelet, hydrophobic) as taught by Ning inclusive of graphene nanoplatelets as taught by Fukushima in order to provide antibiotic property, good adhesiveness and to improve the waterproof effect of the cosmetic compositions. There would be a reasonable expectation of success because Kanemaru embraces the presence of powder components inclusive of carbon black and the graphene of Ning and of Fukushima falls within this genus.
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 hydrophobic coating of the calcium carbonate particles of the cosmetic compositions of Kanemaru to comprise graphene – inclusive of reduced graphene oxide – nanoplatelets as taught by Fukushima in order to improve the strength and chemical resistance properties of the calcium carbonate particles. There would be a reasonable expectation of success because Kanemaru embraces any hydrophobic treatment and because graphene is known to form hydrophobic surfaces inclusive of those having a contact angle of 127º in view of Lee.
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 cosmetic compositions of Kanemaru in view of Ning, Fukushima and Lee inclusive of the mascaras to comprise 1 to 95 wt% of at least one oil selected from the group inclusive of siloxanes inclusive of dimethicone (polysiloxane), 0.1 to 10 wt% emulsifiers and 0.1 to 15 wt% colorants (dye) as taught by Budde because such compositions are suitable for formulating cosmetic compositions inclusive of eye make-up products comprising calcium carbonate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. There would be a reasonable expectation of success because Kanemaru embraces the presence of and exemplifies embodiments of composition comprising oils inclusive of polysiloxanes, emulsifiers.
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 cosmetic compositions of Kanemaru in view of Ning, Fukushima, Lee and Budde inclusive of the mascaras to further comprise about 3 to 60 wt% water-insoluble polymeric material inclusive of styrene / acrylates / methacrylate copolymers additionally comprising ammonia and about 2 to 50 wt% of water-soluble film forming polymers inclusive of polyethylene oxide (a polyether) as taught by Alwattari in order to improve wear and removability of the compositions. See MPEP 2144.05.
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 cosmetic compositions of Kanemaru, Fukushima, Ning, Lee, Budde and Alwattari to comprise the specific amounts of the specific categories of ingredients as independently taught by Ning and by Budde and by Alwattari and by Anselmi and by Hadasch in order to prepare a mascara or/and eye make-up product. The combined teachings of the prior art therefore render obvious mascara or/and eye make-up product compositions comprising, in addition to the calcium carbonate and the reduced graphene oxide nano-platelets, in addition to the dye, in addition to the emulsifier, and in addition to the polymer at least 5 wt% fibers for their lengthening effect; 0.1 to 15 wt% dispersing agent to homogenously disperse the fibers; 2 to 20 wt% or/and 10 to 30 or/and 1 to 40 wt% waxes rendering obvious 1 to 40 wt% waxes; 0 or/and 10 to 30 wt% film forming polymers rendering obvious 0 to 30 wt% film forming polymers; up to 20 wt% glycerin or/and 1 to 10 wt% NMF such as glycerin rendering obvious 0 to 20 wt% humectant; 1 wt% or/and 0.05 to 0.5 wt% or/and 0.1 to 15 wt% preservative rendering obvious 0.05 to 15 wt% preservative; 0.1 to 10 wt% thickeners (emulsion stabilizers) or/and stabilizers , 2 to 20 wt% or/and 2 to 10 wt% oil rendering obvious 2 to 20 wt% oil inclusive of oil inclusive of polysiloxane oils, and a balance of the composition comprising an aqueous solvent, the minimum and maximum ranges thereof being derivable by summing the endpoints of all of the requisite components, e.g., the compositions of Ning may comprise as much as 74.85 wt% water surplus and as little as 0 wt% water consistent with the disclosure of Budde of 1 to 95 wt% water and with the disclosure of Alwattari of about 10 to 75 wt% water. See MPEP 2144.05.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant's arguments have been considered but moot in light of the modified / new grounds of rejection over Kanemaru necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Billinger et al. (US 2022/0062155) teaches mascara compositions comprising inter alia volumizing powders / fillers which can further improve the buildable, volumizing effect (title; abstract; claims; paragraphs [0054]-[0055]).
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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