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 .
Summary
Claims 1 - 27 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application filed on January 28, 2025, is a 371 of PCT/EP2023/070954 filed July 28, 2023, which in turn claims priority to French patent application FR2207928 filed on July 29, 2022.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on January 28, 2025, and May 27, 2026, are acknowledged. Signed copies of forms PTO/SB/08 are attached to this office action.
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 1, 2, 6, 16, 18, 20, 21, and 23 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.
With regard to claim 1, “at least ethylcellulose” indefinite because it is unclear what else could be there since ethylcellulose is a single compound, not a class of compounds. This is different from "at least one" in other parts of the claim, which is not indefinite.
Claims 2, 16, 18, 20, 21 and 23 are indefinite in claim dependency. “According to the preceding claim” should be “according to claim 1, 15, 17, 19, 20 or 22”, respectively. Claim numbering can change and if that happened it would be unclear from which claim these claims would depend.
With regard to claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation, “. . . mono- or diesters” and the claim also recites “more particularly from 12 to 80 carbon atoms” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6, 9-23 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Levy et al., WO 2014097258 A2, published 2014-06-26 (Reference D2 on the 237).
Levy et al. teach cosmetic compositions that comprise water, ethylcellulose, a first non-volatile oil that may be silicone oil, a stabilizer, optionally a third hydrocarbon based nonvolatile oi and a fatty substance such as waxes and pasty fatty substances., see page 3 lines 4-21. Amounts of ethylcellulose are disclosed at page 6, line 19 - page 7, line 4 to be at least 4%, 4-60%, 4-50%, 5-30% or 5-20% by weight of the composition.
The compositions may be solid, see page 5, lines 5 and 6
With regard to the instantly claimed first oil, Levy et al. teach a third additional hydrocarbon-based non-volatile oil (F) in a total content ranging from 1% to 75% by weight and preferably from 5% to 75% by weight relative to its total weight, which may be an ester oil; Levy et al. specifically name C12 to C15 alkyl benzoate and 2-octyldodecyl benzoate, see claim 19.
With regard to the instantly claimed second oil, Levy et al. teach that C10-26 alcohols may be present, desirably at less than or equal to 4% of the composition, see page 3, lines 22-24.
With regard to the instantly claimed third oil, Levy et al. teach a non-volatile silicone oil present in a total amount of 5% to 75% by weight, preferably from 5% to 60% by weight and better still from 10% to 50% by weight relative to the total weight of the said composition, most preferably 10% to 40% by weight and better still from 15% to 30% see page 8, line 24 - page 9, line 6. A second particularly preferred embodiment is to have the third oil be phenyl silicone oil, see page 11, line 10 - page 16, line 25. The language at the bottom of page 8 clearly implies that Levy et al. contemplate using mixtures of silicone oils, “A composition according to the invention comprises at least a first non-volatile oil chosen from silicone oils and/or fluoro oils (C).
With regard to the instantly claimed fourth oil, Levy et al. teach non-phenyl silicone oil as one of the nonvolatile silicone oils, see page 10, lines 1-5.
With regard to claim 1, the claim requires that the ratio of the first oil + the second oil divided by the third oil be less than 1.
Data for the calculation of the ratios: the claimed first oil = Levy et al.’s second oil E, amounts taught range from 0.01% to 3.5% by weight, in particular from 0.05% to 2.5% by weight, preferably from 0.1% to 2% by weight and better still from 0.2% to 1.5%
The claimed second oil = C10-26 alcohols taught to be present at 4% or less
The claimed third oil = phenyl silicones taught to be present at 5% to 75% by weight, preferably from 5% to 60% by weight and better still from 10% to 50% by weight relative to the total weight of the said composition, most preferably 10% to 40% by weight and better still from 15% to 30%
Using the most preferred amounts, first oil = 0.2-1.5%, second oil= 4% and third oil = 15-30%. The ratio would be 4.2-5.5% divided by 15-30% 4.2/15=0.28; 5.5/15=0.37; 4.2/30=0.14 and 5.5/30=0.18. All these permutations are less than 1.
The calculations including the fourth oil are done similarly: the first oil + the second oil + the fourth oil: first = 0.2-1.5%, second = 4%; fourth = 15-30%; third =15-30%. The ratio would be 4.2+15=19.2; 19.2/15=1.28; 4.2+30=34.2; 34.2-15=2.28; 5.5+15=20.5; 20.5/30=0.68; and 5.5-30=35.5; 35.5/30=1.18. At least some of these ratios are also less than 1.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to formulate a lipstick composition comprising the claimed ethylcellulose and oils in a solid composition with the expectation of producing a well-performing lipstick because Levy et al. provide ample teachings of what to include and the proportions, where applicable. Levy et al. disclose both liquid and solid compositions, the decision of which form would be up to the formulator. The amounts of ingredients do not necessarily align perfectly between the instant claims and Levy et al.; it is considered well within the ordinary level of skill in the art to experiment with the amounts to arrive at the most effective formulation. Said person of ordinary skill would have an advanced degree and understanding of the characteristics of skin, knowledge of the ingredients used and the reasons fherefor.
With regard to claim 6, Levy et al. teach that their component F may be ester oils having at least 23 or 30 carbon atoms, see page 24, line 12 - page 27, line 16; Levy et al. mention total carbon atoms up to 70 at page 25, lines 1, 19, 22 and 27. These read on the claimed second oil.
With regard to claim 9, with the ethylcellulose content being 4-60% and the C10-26 alcohols at most 4%, the calculation would be 4/8*100=50% or 60/64*100=93.75%, both are "at least 10%".
With regard to claim 10, Levy et al. teach trimethyl siloxyphenyl dimethicone at page 12, line 29 and diphenyl dimethicones at page 15, line 6.
With regard to claims 12 and 13; phenyl silicones that do not have dimethicone are disclosed at page 15, lines 25-27; the lower limit of 5% meets claim 13.
With regard to claim 14, at least some of the ratios calculated above are between 0.5 and 1.
With regard to claims 15 and 16, Levy et al. teach additional non-volatile oils including liquid paraffin, polybutylenes (another name for polybutenes), see page 29, lines 8 and 11-13, respectively. Levy et al. do not teach specific amounts, however, it is clear that this ingredient is only present in minor amounts, thus, one of ordinary skill in the art would have found it obvious to use such minor amounts as recited in claim 16.
With regard to claims 17 and 18, Levy et al. teach additional volatile oils selected from volatile hydrocarbon-based oils and volatile silicone oils in amounts ranging from 0.1-30%, especially 0.5-20% at page 30, line 7 - page 31, line 18.
With regard to claims 19-23, Levy et al. teach the addition of at least one solid fatty substance including waxes and pasty substances, see page 51, lines 1-13.
Specific to waxes, Levy et al. teach that the wax may be beeswax, which is a nonpolar wax (page 51, line 25). The amount of wax is taught to range from 0.1-30% or 0.1-20%, see page 53, lines 12 and 15. At page 53, lines 18-23 Levy et al. indicate that lower amounts of wax are preferred when the compositions are liquid. Logically, then, if one were making the embodiment of a solid, disclosed at page 5, lines 5 and 6, one would use higher amounts of wax, thus rendering claim 21 obvious.
With regard to the pasty compound, these are discussed at page 53, line 28 - page 59, line 4. Levy et al. name at least two of the pasty substances disclosed in the instant specification: lanolin and its derivatives at page 55, lines 25 and 26 and block copolymers such as Elfacos® at page 56, lines 23-27. Amounts taught for the pasty compound include 0.1-30%, especially 1-20%, see page 58, line 29 - page 59, line 4.
With regard to claim 25, Levy et al. teach the presence of pigments, a species of colorant, see page 70, line 25 - page 71, line 24.
With regard to claim 26, Levy et al. teach fillers including, among others, silica, kaolin (clay) at page 60, lines 6-19.
With regard to claim 27, Levy et al. teach application of the composition to the lips, see claim 36, therefore, it would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to apply the cosmetic of Levy et al. to lips.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Levy et al. as applied to claims 1-6, 9-23 and 25-27 above, and further in view of Nakajima et al., EP 3730124 A1, published 2020-10-28.
The teachings of Levy et al. are outlined above. They specify a water content of at least 5%. They also, however, contemplate their composition being a solid, see page 5, lines 5 and 6.
Nakajima et al. teach solid cosmetics and state, in paragraph [0046], ". . .it is preferable that the amount of water in solid cosmetics be as small as possible, more preferably, it is desirable to set the water content in the solid cosmetic composition to zero (0) or 1% or less."
Levy et al. provide little to no guidance as to how to make their disclosed embodiment of a solid lipstick, none of their examples are directed to solid compositions. Therefore, enablement for the solid embodiment must be found in the prior art such as Nakajima et al.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to minimize the amount of water in the solid composition because of the teachings of Nakajima et al.
Allowable Subject Matter
Claims 7 and 8 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Levy et al. specifically say that the C10 – C26 alcohols are to be present at 4% or less; these claims require 8-20. Other references teach this ingredient in larger proportions, specifically, claim 10 of Cavazzuti et al. However, increasing the amount of these alcohols would go against the teaching of Levy et al. and would be contrary to the mode of operation in Levy et al. In addition, at page 4, lines 1-11 say that the composition with low amounts of these alcohol oils show an improved level of staying power and/or of transfer resistance, while at the same time being comfortable and not tacky. Therefore, motivation is lacking to increase the amount of alcohol oils to the amounts instantly claimed.
The copy of Cavazzuti et al. furnished has had portions removed because the whole document was too big to import. Any inconvenience is regretted.
Conclusion
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
