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 .
Claim Objections
Claim 16 is objected to because of the following informalities: the claim recites “one or more colorants” while its parent claim recites “one or more water soluble colorants”. Consistent terminology should be employed to reference components in the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-6, 8-14, and 19-22 are 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 19 identify the recited color fixing agent with functional language. MPEP 2163.03(V) states that adequate written description may be lacking when a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. Further, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation” (see MPEP 2163(II)(A)(3)(a)(ii). In the disclosure, one species of the color fixing agent is detailed and there is no structure-function correlation provided. The component is recited functionally as an agent that “enhances dispersion and penetration of the one or more colorants into the user's skin so that lip liner stain remains on the user's lips after the film is peeled off”. The term “enhance” is a comparative term that only has meaning when a point of comparison is established. No point of comparison is provided in the instant disclosure. In addition, there is no discussion of the chemical features of a compound that are necessary to perform this collection of functions nor any identification of the mechanism by which color from the claimed composition is retained on the skin. Polyisobutene (also known as polyisobutylene) is the only named compound in this category of component. It is an ingredient that is known for inclusion in topical and transdermal compositions as a skin adhesive and also in cosmetic compositions as an oily component (see Yum et al. US PGPub No. 2004/0209909, Lipper et al. WO 02/076379, and Agostini et al. FR 2782917). It is not evident that polyisobutene increases skin penetration of water soluble colorants/compounds directly. Its enhancement could potentially occur due to adhesivity or its greater hydrophobicity than a water soluble colorant. Thus it is not apparent which attributes of the polyisobutene yield the recited functionality such that the artisan could extrapolate the function to other unnamed compounds.
Claim 2 adds further functional limitations to the film forming agent of claim 1 and how it is to perform as part of the composition. The film forming agent is recited to form a plurality of filaments that are configured to form a film that is configured to be peeled off of the user’s skin. Only polyvinyl alcohol is disclosed in this role, but no structural element of this compound is identified as being responsible for conferring this filament forming functionality.
As a result, the artisan of ordinary skill would not have deemed the applicant to be in possession of the invention as claimed.
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 1-6, 8-14, and 19-22 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.
Claims 1-6, 8-14, and 19-22 recite a number of functional limitations for color fixing agent and solvent. In regard to the color fixing agent, the inadequate description of the component, as noted in the discussion concerning section (a) of this statute, renders the scope of compounds embraced by the recitation unclear. Claim 9 recites that the solvent “is configured to evaporate from the user's skin between about 10 minutes and about 15 minutes after application thereto.” This is a conditional recitation that depends on the amount of product that is applied. In addition, it is unclear which structural arrangements yield “configurations” of a solvent comprising water that produce this outcome (e.g. concentration, particular multiphase arrangements, etc.). The specification does not disclose any particular configurations to achieve this evaporation functionality beyond whatever implicit composition structure results from performing the production steps in example 1. Thus the scope of fixing agents and solvent configurations that achieve the recited functions is unknown.
For the sake of compact prosecution and the application of prior art, a composition that includes water will be deemed sufficient to meet the limitations of the functional limitations of instant claim 9. A color fixing agent will be deemed as a component that fixes/holds the colorant in some way or is a skin penetration aid.
Clarification is still required.
Claim 1 recites that the “water-soluble colorants” are “configured to stain the user’s skin”. However it is unclear if the “configured to” limitation connected to an additional implied and unidentified structure for the composition, a narrowed scope of possible colorant options, or an intended use. Prior art considerations will interpret the recitation as an intended use.
Claim 16 recites a mental exercise as a step, where a comparison is made to a color sample. No particular color sample is disclosed or claimed. Thus the scope for the recited method is unclear, since no basis for comparison is recited.
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.
Claims 1-2, 5, 8-10, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al. (previously cited).
Kang et al. disclose a peel-off lip cosmetic composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin when peeled off (see paragraphs 20, 27-28, and 48-58). They contemplate the inclusion of various components that include water, polyvinyl alcohol, natural pigment (colorant), polyol, and acrylic cross-linked polymers which acts as a dispersion stabilizer for the natural pigment and thickener in the composition forming a gel-like structure (see paragraphs 8-9 and 40). They exemplify the composition to include 15 wt% polyvinyl alcohol (film forming agent), about 80.5 wt% water (solvent), 0.2 wt% colorant, acrylate/alkyl acrylate (fixing agent), dimethicone (skin conditioning agent), and polyol humectant/moisturizer/skin conditioning agent (see table 1 example 3 and paragraphs 31 and 48-56). The colorant includes the water soluble dyes cabbage pigment and beet red pigment (see paragraph 23). Thus the combination of water soluble components in the detailed proportion of water would dissolve. In addition, the acrylic cross-linked polymer aids in holding the pigment in the composition, thus it qualifies as a color fixing agent. Kang et al. do not explicitly speak to the final from of the exemplified composition; however the proportion of water is about double that of the instant example of a liquid and the proportion of polymers is less than in the instant example (see instant specification paragraph 62). In addition, the composition is implicitly described as being wet when applied to the lips because it is taught to dry into a film (see paragraph 35-37). Thus absent evidence to the contrary, the composition of Kang et al. meets the limitation of a (viscous) liquid. Therefore claims 1-2, 5, 8-10, and 19 are anticipated by Kang et al.
Claims 1-3, 5, 8-10, 14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bae et al. (previously cited) an evidenced by D and C Red No. 33 MSDS (2016).
Bae et al. disclose a peel-off lip cosmetic composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin for several days when peeled off (see paragraphs 9, 13, 17, 65, and 72 and figure 1). They detail the presence of various components that include water, polyvinyl alcohol, a color reinforcing agent in the form of dihydroxy acetone, colorant, and phenoxyethanol (see paragraph 16). The color reinforcing agent helps the color penetrate into the skin (see paragraph 38). They exemplify the composition to include 9 wt% polyvinyl alcohol (film forming agent), 11 wt% polyvinyl pyrrolidone (film forming agent), 20.26 wt% water (solvent), 20 wt% ethanol (solvent), 0.12 wt% water soluble colorant in the form of Red No. 227, hexanediol (moisturizer, skin conditioning agent), butylene glycol (humectant), polysorbate 80, 25 wt% color fixing agent, antioxidant, phenoxyethanol (see paragraphs 42-43, and 60 D and C Red No. 33 MSDS sections 1 and 9). They detail mixing and dissolving the components or forming a solution as they are mixed into water (see paragraph 45-59). Bae et al. do not explicitly speak to the final from of the exemplified composition; however given the proportion of water containing solvent and absent evidence to the contrary, the composition of Bae et al. meets the limitation of a (viscous) liquid. Therefore claims 1-3, 8-10, 14, and 19 are anticipated by Bae et al. as evidenced by D and C Red No. 33 MSDS
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 1-2, 5-6, 8-10, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al.
Kang et al. teach a peel-off lip cosmetic composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin when peeled off (see paragraphs 20, 27-28, and 48-58). They contemplate the inclusion of various components that include water at 66.2 to 86.8 wt%, polyvinyl alcohol at 10.0 to 20.0 wt%, natural pigment (colorant) at 0.05 to 0.2 wt%, polyol at 0.1 to 0.5 wt%, and acrylic cross-linked polymers at 0.05 to 0.5 wt% which acts as a dispersion stabilizer for the natural pigment and thickener in the composition (see paragraphs 8-9, 11, and 40). They exemplify the composition to include 15 wt% polyvinyl alcohol (film forming agent), about 80.5 wt% water (solvent), 0.2 wt% colorant, acrylate/alkyl acrylate (fixing agent), dimethicone (skin conditioning agent), and polyol humectant/moisturizer/skin conditioning agent (see table 1 example 3 and paragraph 31). The colorant includes the water soluble dyes cabbage pigment and beet red pigment (see paragraph 23). Thus the combination of water soluble components in the detailed proportion of water would dissolve. In addition, the acrylic cross-linked polymer aids in holding the pigment in the composition, thus it qualifies as a color fixing agent. Kang et al. also teach the presence of antioxidant and moisturizing compounds (see paragraph 45). They go on to detail the formulation as a milk lotion or toner, implying a liquid final state (see paragraph 82). While a full example of each embodiment that follows from the teachings of Kang et al. is not detailed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow their guidance and add an antioxidant or additional moisturizing component because they suggest to do so. Adjusting the component proportions within the envisioned ranges such that the envisioned final forms (e.g., liquid) can be attained also would follow. Therefore claims 1-2, 5, 8-10, 12, and 19 are obvious over Kang et al.
Claims 1-2, 5, 8-10, 12-14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. as applied to claims 1-2, 5, 8-10, 12, and 19 above, and further in view of O’Halloran et al. (previously cited) as evidenced by Sattler et al. (previously cited).
Kang et al. render obvious the limitations of instant claims of instant claims 1-2, 5, 8-10, 12, and 19. The presence of tocopherol as the antioxidant or a preservative are not detailed.
O’Halloran et al. teach a peel off cosmetic composition that includes polyvinyl alcohol (see abstract). In addition, they teach of the utility of including 0.01 to 20 wt% pigment/dye, antioxidant at 0.2 to 3 wt%, and preservative at 0.2 to 2 w% (see paragraphs 12 and 20, and 24). Tocopherol is an envisioned antioxidant (see paragraph 18). Phenoxyethanol is detailed as a envisioned preservative (see paragraph 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select tocopherol as the antioxidant for Kang et al. in light of O’Halloran et al. who teach a similar peel off cosmetic and its utility in this role. This modification is obvious as simple substitution of one known element for another in order to yield a predictable outcome (e.g. specific antioxidant vs generic antioxidant). It additionally would have been obvious to add phenoxyethanol as a preservative to the composition in light of O’Halloran. Since phenoxyethanol is water soluble, it would be dissolved in the water (solvent) present in the composition (see Sattler et al. column 6 lines 47-49; instant claim 14). Therefore claims 1-2, 5, 8-10, 12-14, and 19 are obvious over Kang et al. in view of O’Halloran et al. as evidenced by Sattler et al.
Claims 1-2, 5, 8-10, 12-14, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. as applied to claims 1-2, 5, 8-10, 12, and 19 above, and further in view of Chen (CN 108186471 – English translation relied upon for citations).
Kang et al. render obvious the limitations of instant claims 1-2, 5, 8-10, 12, and 19. They envision the presence of glycerin (see paragraph 9). The presence of hyaluronic acid as a moisturizing component is not detailed.
Chen teaches hyaluronic acid and glycerin as moisturizing ingredients in lip cosmetics (see paragraphs 2 and 11). They teach a proportion of 0.5 or 3 wt% of hyaluronic acid to function in this role (see paragraph 16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select hyaluronic acid as a moisturizing ingredient to add to the composition of Kang et al. in light of Chen who teach its utility in this role in a lip composition. This modification is obvious as simple substitution of one known element for another in order to yield a predictable outcome (e.g. specific moisturizer vs. generic moisturizer). The inclusion of this component at the proportion taught by Chen would follow and overlaps with that instantly claimed, thereby rendering the instantly claimed range obvious. “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)” (see MPEP 2144.05). Therefore claims 1-2, 5, 8-10, 12-14, 19 and 21 are obvious over Kang et al. in view of Chen.
Claims 1-3, 5-6, 8-10, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. as evidenced by D and C Red No. 33 MSDS.
Bae et al. disclose a peel-off lip cosmetic composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin for several days when peeled off (see paragraphs 9, 13, 17, 65, and 72 and figure 1). They detail the presence of various components that include water, polyvinyl alcohol, a color reinforcing agent in the form of dihydroxy acetone, colorant, and phenoxyethanol (see paragraph 16). The color reinforcing agent helps the color penetrate into the skin (see paragraph 38). They exemplify the composition to include 9 wt% polyvinyl alcohol (film forming agent), 11 wt% polyvinyl pyrrolidone (film forming agent), 20.26 wt% water (solvent), 20 wt% ethanol (solvent), 0.12 wt% water soluble colorant in the form of Red No. 227, hexanediol (moisturizer, skin conditioning agent), butylene glycol (humectant), polysorbate 80, 25 wt% color fixing agent, antioxidant, phenoxyethanol (see paragraphs 42-43, and 60 D and C Red no. 33 MSDS sections 1 and 9). They detail mixing and dissolving the components or forming a solution as they are mixed into water (see paragraph 45-59). In addition, the color reinforcing agent may be present at 1 to 30 wt% wheel the colorant proportion may range from 0.3 to 6 wt% (see paragraphs 37 and 39). Bae et al. do not explicitly speak to the final from of the exemplified composition; however given the proportion of water containing solvent and absent evidence to the contrary, the composition of Bae et al. meets the limitation of a (viscous) liquid. While a full example of each embodiment that follows from the teachings of Kang et al. is not detailed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow their guidance an adjust the proportion of colorant and color reinforcing agent within the taught range. The instantly claimed proportion for the color fixing agent is modified by the term “about”. No definition has been given that limits the scope of the term “about”. The range for the water taught by Bae et al. embraces the range implicit in the instantly recited “about 15 percent”, thereby rendering this claimed range obvious (see instant claim 6). The proportions of the water soluble colorant overlap with the instant ranges, thereby rendering the claimed ranges obvious (see MPEP 2144.05; instant claim 19). Therefore claims 1-3, 5-6, 8-10, 14, and 19 ae obvious over Bae et al. as evidenced by D and C Red No. 33 MSDS.
Claims 1-3, 5-6, 8-12, 14, 19-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (KR 20160087938 - English translation relied upon for citations) in view of Kang et al. as evidenced by Boch et al. (US PGPub No. 2005/0090481) and Sattler et al.
Jeong et al. teach a peel-off lip cosmetic composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin when peeled off (see paragraphs 16, 135-136, and 154-156). They contemplate the inclusion of various components that include polyvinyl alcohol, pigment (colorant), solubilizer, skin moisturizer, oil, ethanol, a preservative, and purified water (see paragraph 19). They detail the polyvinyl alcohol (film forming agent) at 8.00 to 14.9, 0 wt%, skin moisturizer at 1.00 to 10.00 wt%, oil at 0.10 to 5.00 wt%, solubilizer at 0.10 to 17.00 wt%, pigment at 0.21 to 2.00 wt%, preservative at 0.10 to 1.10 wt%, and water at 30.00 to 85.49 wt% (see paragraph 20). They envision the skin moisturizer as glycerin, the oil as diisostearyl malate (skin conditioning agent), the solubilizer as a polysorbate 80, the preservative as phenoxyethanol, and the pigment as a dye and organic pigment (see paragraphs 21-24; instant claims 10-11, 20, and 22). Polysorbate 80 is known as a skin penetration enhancer making it qualify as a color fixing agent (see Boch et al. paragraph 30; instant claims 1 and 18). Jeong et al. further contemplate an antioxidant present in the composition (see paragraph 26; instant claim 12). They prepare the composition by dissolving polyvinyl alcohol in a portion of the water in a container, mixing the skin moisturizer into the remaining portion of water, combining these two water based preparations into a uniform mixture (see paragraphs 27 and 71-78). Jeong et al. detail combining oil, solubilizer, ethanol, coloring pigment, and preservative then adding the mixture to the polyvinyl alcohol containing mixture, uniformly mixing the combination and degassing (see paragraphs 27 and 79). When applied to the lips of test subjects a dry film is attained within 5 to 10 minutes (see paragraph 145; instant claim 9). A water soluble colorant is not explicitly detailed.
Kang et al. teach a peel-off lip cosmetic in the form of a liquid composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin when peeled off (see paragraphs 20, 27-28, and 48-58). They contemplate the inclusion of various components that include polyvinyl alcohol, natural pigment (colorant), polyol, and water (see paragraphs 8-9 and 40). They exemplify the composition to include 15 wt% polyvinyl alcohol (film forming agent), about 80.5 wt% water (solvent), 0.2 wt% colorant, acrylate/alkyl acrylate (fixing agent), dimethicone (skin conditioning agent), and polyol humectant/moisturizer/skin conditioning agent (see table 1 example 3 and paragraph 31). The colorant includes the water soluble dyes cabbage pigment and beet red pigment (see paragraph 23). Kang et al. also teach the presence of antioxidant and moisturizing compounds (see paragraph 45). They go on to detail the formulation as a milk lotion or toner, implying a liquid final state (see paragraph 82).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make an embodiment of the composition of Jeong et al. where polysorbate 80 is the solubilizer. This choice would have been obvious because it is one of a small set of options they envision for this category of component. It additionally would have been obvious to also include glycerin, diisostearyl malate, phenoxyethanol, and antioxidant for the same reason. Since phenoxyethanol is water soluble, it would be dissolved in the water (solvent) present in the composition (see Sattler et al. column 6 lines 47-49; instant claim 14). It also would have been obvious to add a cabbage pigment or beet pigment colorant as detailed by Kang et al. at their taught proportion because they are taught to provide lip color from a similarly configured peel off composition and are specific colorants known for such compositions. This modification would have been obvious in light of Kang et al. to provide a combination of colorants from a peel-off lip staining composition. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (see MPEP 2144.06). The instantly claimed proportion for the solvent that is disclosed as water is modified by the term “about”. No definition has been given that limits the scope of the term “about”. The range for the water taught by Jeong et al. embraces the range implicit in the instantly recited “about 40.4 wt%”, thereby rendering this claimed range obvious (se instant claim 3). The proportions of the polyvinyl alcohol, glycerin, and water soluble colorant meet or overlap with the instant ranges, thereby rendering the claimed ranges obvious (see MPEP 2144.05; instant claims 1, 3, 6, and 19-20). Jeong et al. do not explicitly speak to the final from of the exemplified composition; however the proportion of water is about similar to and can exceed that of the instant example of a liquid and the proportion of polymers is less than in the instant example (see instant specification paragraph 62). In addition, the composition is implicitly described as being wet when applied to the lips because it is taught to dry into a film (see paragraph 35-37). Thus absent evidence to the contrary, the composition of Jeong et al. meets the limitation of a (viscous) liquid or would have been obvious to attain as a known final form suggested by Kang et al. Therefore claims 1-3, 5-6, 8-12, 14, 19-20, and 22 are obvious over Jeong et al in view of Kang et al. as evidenced by Boch et al. and Sattler et al.
Claims 1-3, 5-12, 14, 19-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. in view of Kang et al. as evidenced by Boch et al. and Sattler et al. as applied to claims 1-3, 5-6, 8-12, 14, 19-20, and 22 above, and further in view of DeBeaud et al. et al. (US PGPub No. 2016/0310374).
Jeong et al in view of Kang et al. as evidenced by Boch et al. and Sattler et al. render obvious the limitations of instant claims 1-3, 5-6, 8-12, 14, 19-20, and 22 as a polyvinyl alcohol containing peel off cosmetic composition that also includes an oil. In addition to diisostearyl malate, Jeong et al. also teach paraffin oil as an envisioned oil as well as combinations of oil components (see paragraphs 20 and 22) Polyisobutene is not explicitly taught as an oil in the composition.
DeBeaud et al. teach lip compositions that include an oil (see abstract). They detail the inclusion of non-volatile oils that include paraffin oil and polyisobutene (see paragraph 114).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention exchange polyisobutene for the diisostearyl malate oil component or add polyisobutene as an additional oil in the modified composition of Jeong et al. This modification would have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome. Therefore claims 1-3, 5-12, 14, 19-20, and 22 are obvious over Jeong et al in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al. and Sattler et al.
Claims 1-3, 5-6, 8-12, 14-15, 18-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al in view of Kang et al.as evidenced by Boch et al. and Sattler et al. as applied to claims 1-3, 5-6, 8-12, 14, 19-20, and 22 above, and further in view of Bae, and Deng et al. (previously cited).
Jeong et al in view of Kang et al. as evidenced by Boch et al. and Sattler et al. render obvious the limitations of instant claims 1-3, 5-6, 8-12, 14, 19-20, and 22 as a polyvinyl alcohol containing peel off cosmetic composition. Jeong et al. detail preparation steps that dissolve the polyvinyl alcohol in water and mix the skin moisturizer into water as well. Given the proportions of water and glycerin (instant moisturizer and humectant), the glycerin would dissolve (see instant claim 18). Since the cabbage pigment or beet pigment colorant of Kang et al are water soluble, their inclusion and dissolution in the second water containing portion with the other water soluble components would have been obvious. A filtering and vacuum defoaming step are not detailed during its production.
Bae teaches a similar peel off cosmetic that confers color when removed and includes polyvinyl alcohol (see abstract and paragraph 21-24 and 32). They detail preparing the composition by dissolving the polyvinyl alcohol in most of its water, combining additional ingredients, and filtering just before a final step of adding the remaining water (see paragraphs 44-58). They teach the filtering to eliminate foreign substances then sealing the prepared mixture for storge which implies its present in some sort of container (see paragraph 56 and example 1; instant claim 15).
Deng et al. teach the preparation of a polyvinyl alcohol based film, where the polyvinyl alcohol is dissolved with other water soluble ingredients in heated water followed by the addition of other ingredients (see abstract and page 12618 first column last partial paragraph-second column first partial paragraph). They vacuum defoam the mixture prior to casting it into a film (see page 12618 second column first partial paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to filter, vacuum defoam, and store the composition of Jeong et al in view of Kang et al. as evidenced by Boch et al. and Sattler et al. in a sealed container after addition of all of its components so as to remove undesired gas bubbles/foam and foreign material as well as maintain this purified state. This modification would have been obvious in light of Deng et al. who teach the benefits of the process of defoaming for a polyvinyl alcohol film producing composition in general and Bae who teach the benefit of filtering a similar composition that is employed in a similar manner as that of Jeong et al. The modification is also obvious as the application of the same technique to a similar product in order to yield the same improvement. Therefore claims 1-3, 5-6, 8-12, 14-15, 18-20, and 22 are obvious over Jeong et al in view of Kang et al., Bae, and Deng et al. as evidenced by Boch et al. and Sattler et al.
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.
The following are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-10, 12, 14, and 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 15-19 of copending Application No. 18/675021 (reference application) in view of Valdes et al. (EP 0274910).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a peel off lip liner cosmetic with the same polyvinyl alcohol as film forming polymer, water as a solvent, water soluble colorant, color fixing agent as polyisobutene, skin conditioner, preservative, glycerin, and hyaluronic acid. The components are present at the same proportions. The copending composition is not recited to be a liquid.
Valdes et al. teach lip liner composition that is composed of water, a water soluble color, and polyvinyl alcohol (see abstract). They explicitly detail the composition in liquid form to permit application from a steady flow-type of pen (see page lines 1-22), explicitly.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of the copending claims as a liquid in order to permit ease of application as detailed by Valdes et al. Therefore claims 1-10, 12, 14, and 19-22 are obvious over claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al.
Claims 1-10, 12-14, and 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al. as applied to claims 1-10, 12, 14, and 19-22 above, and further in view of O’Halloran et al.
Claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al. render obvious the limitations of instant claims of instant claims 1-10, 12, 14, and 19-22. The presence of tocopherol as the antioxidant.
O’Halloran et al. teach a peel off cosmetic composition that includes polyvinyl alcohol (see abstract). In addition, they teach of the utility of including 0.01 to 20 wt% pigment/dye, antioxidant at 0.2 to 3 wt%, and preservative at 0.2 to 2 w% (see paragraphs 12 and 20, and 24). Tocopherol is an envisioned antioxidant (see paragraph 18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add tocopherol as an antioxidant in the composition of the modified copending claims in light of O’Halloran et al. who teach a similar peel off cosmetic and its utility in this role. This modification is obvious as the application of the same technique to a similar product in order to yield a predictable outcome. Therefore claims 1-10, 12-14, and 19-22 are obvious over claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al. and O’Halloran et al.
Claims 1-12, 14, and 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al. as applied to claims 1-10, 12, 14, and 19-22 above, and further in view of Jeong et al.
Claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al. render obvious the limitations of instant claims of instant claims 1-10, 12, 14, and 19-22. The presence of diisostearyl malate.
Jeong et al. teach a peel-off lip cosmetic composed of a film forming polymer that solidifies upon drying after application to skin and leaves a color (stain) on the skin when peeled off (see paragraphs 16, 135-136, and 154-156). They contemplate the inclusion of various components that include polyvinyl alcohol, pigment (colorant), solubilizer, skin moisturizer, oil, ethanol, a preservative, and purified water (see paragraph 19). They envision the skin moisturizer as glycerin, the oil as diisostearyl malate (skin conditioning agent), the solubilizer as a polysorbate 80, the preservative as phenoxyethanol, and the pigment as a dye and organic pigment (see paragraphs 21-24; instant claims 10-11, 20, and 22). Jeong et al. teach the oil to moisturize the lips (see paragraph 43-44).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add diisostearyl malate to the composition of the modified copending claims in light of Jeong et al. who teach of its benefit as a moisturizer in a similar peel off cosmetic. This modification is obvious as the application of the same technique to a similar product in order to yield a predictable outcome. Therefore claims 1-14, and 19-22 are obvious over claims 1-11 and 15-19 of copending Application No. 18/675021 in view of Valdes et al. and Jeong et al.
Response to Arguments
Applicant's arguments filed January 22, 2026 have been fully considered. In light of the amendment to the claims, the rejection under 35 USC 102 over Minato et al. and under 35 USC 103 over Minato et al. in view of others as well as over Masuzaki et al. in view of others are hereby withdrawn. A portion of the rejections under 35 USC 112 are addressed by the amendment; however several remain. New grounds of rejection to address the new claim limitations are detailed. The applicant’s argument against the rejections over Kang et al. and the remaining rejections under 35 USC 112 are not persuasive.
Regarding rejections under 35 USC 112(a):
The amendment has not addressed all the issues under this section of the statue because several functionally claimed components still lack adequate description. Specifically, the color fixing agent is not sufficiently described nor is the “configuration” that corresponds to the functional limitations of instant claim 2. The applicant repeats the functional recitation in their argument that the description is sufficient, but this repetition does not fill the gap in the description to permit the artisan of ordinary skill to envision the chemical components that function in this role. Thus there is insufficient structure-function correlation for the functional recitation of required components. A lack of adequate description also exists for the “configured to” functional language of claim 2 that the amendment has not addressed.
Regarding rejections under 35 USC 112(b):
The applicant states that claim 16 requires a visual comparison to argue that more than a mental exercise is required. To the contrary, a visual comparison is a mental exercise since sight is impossible without mental activity. The mere act of looking at the claimed composition and any other thing implicitly involves seeing the composition’s color, the color of the other item, and then categorizing them as the same or different colors. The claim recites a “color sample” for comparison, but does not identify the color sample. In addition, the claim does not detail any additional step to occur as a result of the composition having the same color or a different color than the color sample. Thus the purpose of the step is unclear and its current constraints are vague.
Regarding rejections under 35 USC 102 over Kang et al.:
The applicant argues that the composition of Kang is a gel-type composition. They cite a different translation of the reference than that instantly cited, but do not provide a copy of the translation. There is no rheological definition provided by the applicant for the term “liquid” such that the composition of Kang et el. fails to fulfill this limitation. The Kang et al. English translation of record states that the composition may be in gel form and includes a component that can provide a gel-like formulation (see paragraphs 8 and 39). However, this component is included in very low concentrations and water is present at a far higher concentration than the instantly exemplified liquid composition. Even if a gel form does occur from the composition of Kang et al., a gel can be a viscous liquid. Thus a gel-like nature does not preclude the composition from still meeting the limitations of a liquid.
The applicant also notes their alternative translation to support an argument that Kang et al. teaches their composition to “remove stains adhering to the lips”. The translation of record does not have this statement and such a statement being applied to the colorant provided by the composition is inconsistent with the rest of the reference. A prior art reference is considered in its entirety (see MPEP 2141.02). The purpose of the composition of Kang et al. is to provide color to lips from a polyvinyl alcohol containing peel off composition, as they discuss repeatedly and show in their figures (see paragraphs 15, 20, 25, 28-29 and figures 1a-1b). Contrary to the applicant’s argument, Kang et al. do not imply that the polyvinyl alcohol in the composition removes the colorant that they intended to apply to the lips upon peeling off its dried film.
The applicant also argues that their color fixing agent is required for retention of color on the lip skin. This category of component is not well described thus it is not clear if such a component is necessary for color retention after removal of the dried polyvinyl alcohol film. In reference to the single embodiment of the color fixing agent that the applicant disclosed, the prior art shows that polyisobutene is not required in a peel off composition in order for color to be retained on the skin (see Kang et al. and Jeong et al.). There is currently no evidence of record that polyisobutene yields an unexpectedly superior impact on peel-off coloring compositions intended for the lips.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARALYNNE E HELM whose telephone number is (571)270-3506. The examiner can normally be reached Mon-Fri 9-5.
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/CARALYNNE E HELM/Examiner, Art Unit 1615
/MELISSA S MERCIER/Primary Examiner, Art Unit 1615