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 .
Continued Examination Under 37 CFR 1.114
A 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 31, 2026 has been entered.
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 1-3, 6, 8-15, and 18-25 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, 15, and 19 recite “a solvent configured to evaporate substantially independently of a user's skin after the lip liner stain is applied to a user's lips, wherein the solvent comprising comprises water and omits ethyl alcohol”. The scope of the composition that has this “configuration” is unclear because the heat (temperature) of the user’s skin would influence the rate of evaporation of a volatile solvent that is applied to its surface (see Scheepers et al. Journal of Coating Technology and Research 2019 16 (5):1213–1221, abstract, page 1214 second column last partial paragraph-page 1215, figure 1, and table 1). The instant specification discusses a solvent with the ability to evaporate substantially independently of the user's skin as meaning that as the solvent evaporates it does not damage the user's skin, and draws little to no moisture out of the skin (see specification paragraph 38). The phenomenon of solvent evaporation is not the same as skin damage or water loss from the skin into a solvent on its surface. While the applicant is free to be their own lexicographer, it is not clear if the meaning given to “evaporate substantially independently of the user's skin” still embraces the plain meaning of its words when a solvent is “configured” to have this function. Specifically, it is unclear what, if anything, is required of the composition arrangement and components in order for a solvent to be “configured to evaporate substantially independently of the user's skin” other than for the solvent to just be present in the composition
Given the contemplation of multiple components in the role of a single component category, the recitations of concentrations, in the absence of a basis, are unclear. Recitations of proportions should state the basis of the proportion for the sake of clarity. (e.g., concentration by weight of x percent based on the total liquid peel-off lip liner stain, concentration by weight of x percent based on the solvent, etc.).
Claim 9 recites that the solvent “evaporates 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. Since the claim is drawn to a product, the boundaries on its scope of compositions is not unclear.
For the sake of application of prior art, the functional limitations at issue will be deemed as met when the recited structural limitations of the claims are met. Concentrations will be interpreted as based upon the total composition. Clarification is still required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. It is not evident that there is any composition within the scope of claim 1 where its polyvinyl alcohol would not function as recites in claim 2. Thus the scope of claim 1 and claim 2 appear to be same. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (previously cited) in view of Bae et al. (previously cited) and Choi et al. (US PGPub No. 2019/0091114) as evidenced by Khoo et al. (Food and Nutrition Research 2017 61(1361779):1-21), Esatbeyoglu et al. (Molecular Nutrition and Food Research 2015 59:36-47), and Dipropylene glycol Technical Product Information Sheet (2021).
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%, alcohol of C1 to C4 at 3 to 7 wt%, silicone oil, natural essential oil, and optionally, acrylic cross-linked polymers which acts as a dispersion stabilizer for the natural pigment and thickener in the composition (see paragraphs 8-9, 11-12, and 40). They teach preparing the composition by mixing the polyvinyl alcohol into heated water in which it dissolves (see paragraphs 42-43). Subsequently, they add and disperse natural pigment and polyol into the solution, followed by an alcohol of C1 to C4, organic acid, natural essential oil, and silicone oil (see paragraphs 44-45). Example 2 includes 15 wt% polyvinyl alcohol (film forming agent), about 80.5 wt% water (solvent), 0.2 wt% colorant, ethanol, dimethicone, and dipropylene glycol as the polyol (humectant and moisturizer) (see table 1 example 2 and paragraph 31). The colorant includes cabbage pigment and beet red pigment which they detail to be composed of the water soluble compounds anthocyanin and betanin, respectively (see paragraphs 22-23; Khoo et al. abstract, page 1, and table 1; Esatbeyoglu et al. abstract and page 1). Their water solubility means that the cabbage pigment and beet red pigment are water soluble dyes and the combination of water soluble components in the detailed proportion of water would dissolve. They go on to detail the formulation as a milk lotion or toner, implying a liquid final state (see paragraph 82). Kang et al. do not detail vacuum defoaming and filtering of the prepared composition
Bae teaches a similar peel off cosmetic that confers color to skin 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 storage which implies its presence in some sort of container (see paragraph 56 and example 1; instant claim 15).
Choi et al. also teach a peel off facial cosmetic that starts as a liquid and dries to solid after application (see abstract and paragraph 10). In preparing the composition, Choi et al. teach combining the desired ingredients, stirring, then vacuum degassing, filtering, and storage (see paragraphs 213-221 and intervening tables). They subsequently teach their composition in a container (see paragraph 222).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the exemplified composition of Kang et al. where ethanol is retained or replaced with an alternative C1-C4 alcohol as the simple substitution of one known element for another in order to yield a predictable outcome. Preparation of these compositions as Kang et al. detail would follow. Dipropylene glycol is completely soluble in water and meets the limitation for both the instant moisturizer and humectant, thus its dispersion into the aqueous solution of polyvinyl alcohol in water prepared during the production of the composition of Kang et al. would yield its dissolution (see Dipropylene glycol Technical Product Information Sheet page 1). The exclusion of ethyl alcohol from “a solvent configured to evaporate substantially independently of a user’s skin” of instant claim 15, excludes the ethyl alcohol from this category of ingredient. The recitation does not exclude ethyl alcohol from the entire composition. Thus compositions of Kang et al. with and without ethanol meet the limitations for the instant solvent. Water can be viewed as the instant solvent while ethanol or the alternative C1 to C4 alcohol can be viewed as a drying aid or adhesion promoter, as Kang et al. describes them (see paragraph 37). Adjusting the component proportions within the envisioned ranges such that the taught final forms (e.g., liquid) can be attained also would follow. It additionally would have been obvious to filter, vacuum defoam, and store the composition in a sealed container after addition and dispersion 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 Bae et al. and Choi et al. who teach the benefit or desire to remove unwanted solid and gaseous material in this manner. 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 15 and 18 are obvious over Kang et al. in view of Bae et al. and Choi et al. as evidenced by Khoo et al., Esatbeyoglu et al., and Dipropylene glycol Technical Product Information Sheet.
Claims 1-3, 8-12, 14, 19-20, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (previously cited) in view of Kang et al. and DeBeaud et al. (previously cited) as evidenced by Boch et al. (previously cited), Sattler et al. (previously cited), Khoo et al., Esatbeyoglu et al., and the Glycerin Material Data Safety Sheet (1998).
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 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 (colorant) 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 (humectant and moisturizer), the oil as diisostearyl malate, the solubilizer as polysorbate 80, the preservative as phenoxyethanol, and the pigment as a dye and organic pigment (see paragraphs 21-24; instant claims 10-11, 20, 22, and 24). Polysorbate 80 is known as a skin penetration enhancer making it qualify as a color fixing agent (see Boch et al. paragraph 30; instant claim 1). They teach the pigment as a mixture of dye and organic pigment (see paragraph 24). Jeong et al. also teach paraffin oil as an envisioned oil as well as combinations of oil components in the composition, where the oil penetrates the skin and enhances the moisturizing effect of the composition (see paragraphs 20, 22, and 43-44). Jeong et al. further teach that it is preferable to include an antioxidant 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, then combining these two water based preparations into a uniform mixture (see paragraphs 27 and 71-78). Jeong et al. go on to 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 and polyisobutene are not explicitly detailed components.
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 note the benefit of including natural pigments in such compositions due to their stability and safety (see paragraph 4). Kang et al. 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%, alcohol of C1 to C4 at 3 to 7 wt%, silicone oil, as well as natural essential oil, and an optional acrylic cross-linked polymer (see paragraphs 8-9, 11-12, and 40). They teach preparing the composition by mixing the polyvinyl alcohol into heated water in which it dissolves (see paragraphs 42-43). Subsequently, they add and disperse natural pigment and polyol into the solution, followed by an alcohol of C1 to C4, organic acid, natural essential oil, and silicone oil (see paragraphs 44-45). Natural pigments are envisioned and exemplified to include cabbage pigment and beet red pigment which they detail to be composed of the water soluble compounds anthocyanin and betanin, respectively (see paragraphs 22-23 and example 2; Khoo et al. abstract, page 1, and table 1; Esatbeyoglu et al. abstract and page 1). Their water solubility means that the cabbage pigment and beet red pigment are water soluble dyes and the combination of water soluble components in the detailed proportion of water would dissolve. A C1 to C4 alcohol that is present in the composition is included as a drying aid or adhesion promoter (see paragraph 37). 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).
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 (color fixing agent) (see paragraph 114; instant claims 1 and 19).
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. The selection also yields a composition with a color fixing agent. It additionally would have been obvious to 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). Glycerin is a completely water soluble ingredient that meets the limitation of the instant humectant and moisturizer; thus it would also be dissolved in the water (solvent) (see Glycerin Material Safety Data Sheet first 1) Additionally, it would have been obvious to add a cabbage pigment or beet pigment colorant, as detailed by Kang et al., at their taught proportion. This choice would have been obvious because of the benefits Kang et al. teach them to provide as colorants in a similarly configured peel off lip stain composition. Also, “[i]t 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 proportions for the water soluble colorant in the composition then meet the instant claim limitations. Further, it would have been obvious to include polyisobutene as an additional oil along with diisostearyl malate 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 (e.g., paraffin oil and polyisobutene are alternative oils in lip cosmetic). The instantly claimed proportions for the solvent that is disclosed as water and for the diisostearyl malate are 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 (see instant claim 3). “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). Similarly, the proportion of diisostearyl malate present along with polyisobutene as the oil component would fall within a range that overlaps the claimed range of about 5.6 wt%, thereby rendering the claimed range obvious (see MPEP 2144.05; instant claim 23). The proportions of the polyvinyl alcohol, glycerin, and water soluble colorant meet or overlap with the instant ranges, thereby also rendering their 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 form of the exemplified composition; however the proportion of water is similar to and can exceed that of the instant example of a liquid final form, while 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, 8-12, 14, 19-20, and 22-24 are obvious over Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet.
Claims 1-3, 8-14, 19-20, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet as applied to claims 1-3, 8-12, 14, 19-20, and 22-24 above, and further in view of O’Halloran et al. (previously cited).
Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet render obvious the limitations of instant claims of instant claims 1-3, 8-12, 14, 19-20, and 22-24, where an antioxidant is included in the composition. The identity of the antioxidant is 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; instant claim 13).
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 Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet 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 simple substitution of one known element for another in order to yield a predictable outcome (e.g. specific antioxidant vs. generic antioxidant). Therefore claims 1-3, 8-14, 19-20, and 22-24 are obvious over Jeong et al. in view of Kang et al., DeBeaud et al., and O’Halloran et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet.
Claims 1-3, 8-12, 14, and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet as applied to claims 1-3, 8-12, 14, 19-20, and 22-24 above, and further in view of Chen (previously cited).
Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet render obvious the limitations of instant claims of instant claims 1-3, 8-12, 14, 19-20, and 22-24, where they envision the presence of glycerin as a skin moisturizer. 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 include hyaluronic acid as a moisturizing ingredient in the composition of Jeong et al. in view of Kang et al. and DeBeaud et al. as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet 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 meets or overlaps with that instantly claimed, thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1-3, 8-12, 14, and 19-24 are obvious over Jeong et al. in view of Kang et al., DeBeaud et al., and Chen as evidenced by Boch et al., Khoo et al., Esatbeyoglu et al., Sattler et al., and the Glycerin Material Data Safety Sheet.
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 1-3, 6, 8-14, 19-23, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/675021 (reference application) in view of Valdes et al. (previously cited).
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 stain with a solvent that evaporates substantially independently of the user’s skin, a film forming polymer dissolved in the solvent, colorant dissolved in the solvent, color fixing agent as polyisobutene, skin conditioner, preservative, glycerin, and hyaluronic acid. The film forming polymer is recited to comprise polyvinyl alcohol and the solvent is recited to comprise water, thus the colorant may also be water soluble. Diisostearyl malate, polyisobutene as the color fixing agent, glycerin, and hyaluronic acid also are present in both compositions at the same proportions. The copending claims also recite a preservative dissolved in the solvent and the presence of tocopherol (antioxidant). The component categories are present at the same proportions. Ethyl alcohol is not a recited component; and therefore is not a required constituent. 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. In spite of some copending claims reciting components dissolved in solvents in which they are not clearly soluble, the component and accompanying proportion recitations still render the components obvious to include in the composition at the recited proportions (e.g., tocopherol, polyisobutylene and diisostearyl malate). Therefore claims 1-3, 6, 8-14, 19-23 and 25 are obvious over claims 1-19 of copending Application No. 18/675021 in view of Valdes et al.
Claims 1-3, 6, 8-14, and 19-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/675021 in view of Valdes et al. as applied to claims 1-3, 6, 8-14, 19-23 and 25 above, and further in view of Jeong et al.
Claims 1-19 of copending Application No. 18/675021 in view of Valdes et al. render obvious the limitations of instant claims of instant claims 1-3, 6, 8-14, 19-23 and 25 where a preservative is present. Phenoxyethanol is not explicitly recited as the preservative.
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, 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 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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select phenoxy ethanol as the preservative in the composition of the copending claims in light 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, 6, 8-14, and 19-25 are obvious over claims 1-19 of copending Application No. 18/675021 in view of Valdes et al. and Jeong et al.
Claims 1-2, 6, 8-14, 19, 22, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/637978 (reference application) as evidenced by Sattler et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a liquid peel off lip liner stain with a solvent that evaporates substantially independently of the user’s skin, a film forming polymer dissolved in the solvent, water soluble colorant dissolved in the solvent, color fixing agent as polyisobutene, a combination of components selected from diisostearyl malate, phenoxyethanol, tocopherol, glycerin, and hyaluronic acid. The film forming polymer is recited to comprise polyvinyl alcohol and the solvent is recited to comprise water. The phenoxyethanol solvent is water soluble, thus it would be dissolved in the water (see Sattler et al. column 6 lines 47-49). The component categories for film forming polymer and water soluble colorant are present at the same proportions. Ethyl alcohol is not a recited component; and therefore is not a required constituent. While a single claim lineage does not provide for limitations of each of the instant claims, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the copending method with the instantly claimed composition by making combinations amongst the components recited to be combined. Therefore claims 1-2, 6, 8-14, 19, 22, and 24 are obvious over claims 1-20 of copending Application No. 19/637978 as evidenced by Sattler et al.
Claims 1-3, 6, 8-14, 19-20, and 22-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/637978 as evidenced by Sattler et al. as applied to claims 1-2, 6, 8-14, 19, 22, and 24 above, and further in view of Jeong et al.
Claims 1-20 of copending Application No. 19/637978 as evidenced by Sattler et al. render obvious the limitations of instant claims of instant claims 1-2, 6, 8-14, 19, 22, and 24, where glycerin and diisostearyl malate are present. A proportion for these components is not recited.
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 detail the polyvinyl alcohol (film forming agent) at 8.00 to 14.9 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 (colorant) 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 paragraphs 20 and 24). They envision the skin moisturizer as glycerin, the oil as diisostearyl malate (skin conditioning agent), the preservative as phenoxyethanol, and the pigment as a dye and organic pigment (see paragraphs 21-24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the water, glycerin, and diisostearyl malate of the copending claims at proportions taught by Jeong et al. because they were known to be suitable for their ingredient classes in similar compositions. This results in ranges that overlap with the instantly claimed ranges, thereby rendering the instantly claimed ranges obvious (see MPEP2144.05). Therefore claims 1-3, 6, 8-14, 19-20, and 22-24 are obvious over claims 1-20 of copending Application No. 19/637978 and Jeong et al. as evidenced by Sattler et al.
Claims 1-2, 6, 8-14, 19, 21-22, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/637978 and Jeong et al. as evidenced by Sattler et al. as applied to claims 1-2, 6, 8-14, 19, 22, and 24 above, and further in view of Chen et al.
Claims 1-20 of copending Application No. 19/637978 and Jeong et al. as evidenced by Sattler et al. render obvious the limitations of instant claims of instant claims 1-2, 6, 8-14, 19, 22, and 24, where hyaluronic acid is present. The proportion of hyaluronic acid 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 employ hyaluronic acid I the modified copending claims at a proportion taught by Chen et al. because it was known to be suitable for its ingredient class (skin moisturizer and oil) in similar compositions. This results in a range that overlaps with the instantly claimed range, thereby rendering the instantly claimed range obvious (see MPEP2144.05). Therefore claims 1-2, 6, 8-14, 19, 21-22, and 24 are obvious over claims 1-20 of copending Application No. 19/637978 and Jeong et al. and Chen as evidenced by Sattler et al.
Claims 1-3, 6, 8-14, and 19-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 19/654174 (reference application) as evidenced by Sattler et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a liquid peel off lip liner stain with a solvent that evaporates substantially independently of the user’s skin, a film forming polymer dissolved in the solvent, colorant dissolved in the solvent, color fixing agent as polyisobutene, diisostearyl malate as well as the presence of phenoxyethanol, tocopherol, glycerin, and hyaluronic acid. The film forming polymer is recited to comprise polyvinyl alcohol and the solvent is recited to comprise water. The water as a solvent then implies that the colorant may be water soluble since it is dissolved in the solvent. The phenoxyethanol solvent is water soluble, thus it would be dissolved in the water (see Sattler et al. column 6 lines 47-49). The component or component categories are recited at ranges that meet or overlap with those instantly recited. Ethyl alcohol is limited to no more than about 1 wt%. While a single claim lineage does not provide for limitations of each of the instant claims, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the product of the copending claims which yields the instantly claimed composition by making combinations amongst the components recited to be combined. The overlapping ranges for component proportions between the two sets of claims, render the instantly claimed ranges obvious (see MPEP 2144.05).Therefore claims 1-3, 6, 8-14, and 19-25 are obvious over claims 1-26 of copending Application No. 19/654174 as evidenced by Sattler et al.
Observations from the Prior Art
It is noted that Jeong et al. teach an oil present in the polyvinyl alcohol based peel off lip stain composition at up to 5 wt%. When assessed at 10 wt%, the composition contents separated in an undesirable fashion, which appears to point away from the oil exceeding this proportion in their composition (see table 3). Kang et al. teach its contemplated oils present in the form of silicone oil and natural essential that are present at up to 0.1 wt% and up to 0.5 wt%, respectively. Unlike Jeong et al., they do not recite a solubilizer for the oils in their composition. Kang et al. also teach of undesired outcomes when their oil concentration levels are exceeded which appears to point away from their oil components exceeding their taught proportions (see paragraphs 34 and 36).
Response to Arguments
Applicant's arguments filed March 31, 2026 have been fully considered. In light of the amendment to the claims, the rejections under 35 USC 112(a), 35 USC 102, as well as under 35 USC 103 over Bae et al. as a primary reference and over Kang et al. as a primary reference for product claims are hereby withdrawn. New grounds of rejection to address the new claim limitations are detailed that modify rejections over Kang et al. and Jeong et al. The applicant’s argument against the applicability of refences that are reapplied well as the rejections under 35 USC 112(b) are not persuasive and are addressed below in as much as they apply to the new grounds of rejection.
Regarding rejections under 35 USC 112(b):
The applicant argues that chemical and mechanical components may be claimed functionally and give the term “solvent” as an example of a functional recitation. The examiner does not dispute the fact that functional limitations are permitted. When they are employed they must provide a clear-cut indication of the scope of the subject matter embraced by the claim (see MPEP 2173.05(g)). When the functional limitation fails to meet this criteria a clarity issue exists. While simply reciting “solvent” as functional recitation of desired component would not have this issue, the instant claims include more language in their functional recitations and at times employ their own meanings for terms or embodiments of functional limitations that are not clearly consistent with their plain meanings. Thus the instant claims’ use of functional language is not limited to instances where it provides a clear-cut indication of the scope of the subject matter embraced by the claim.
It remains unclear in what manner polyisobutene acts as a color fixing agent that fulfills the definition of a “component which may enhance the dispersion and penetration of the colorant into the user's skin” (see instant specification paragraph 41). Nevertheless, Bae et al. and Jeong et al. evidence that compounds that perform this function in the context of skin staining compositions were known in the art. Thus the applicant may exercise their prerogative to be their own lexicographer and explicitly include polyisobutene as member of a color fixing agent category.
Regarding rejections under 35 USC 103 over Kang et al. in view of others or as a secondary reference:
The applicant argues that Kang et al. requires water insoluble pigments. In support of this argument, the applicant cites a definition for “pigment” that they do not provide and pairs it with a misconstrued teaching from Kang et al. While the applicant repeatedly argues that Kang et al. state that they employ water insoluble pigments, these arguments are incorrect because no such statement appears its text. In contrast to the applicant’s argument, Kang et al. do not state that there are three types of colorants. Instead, Kang et al. state that there are three types of synthetic pigments and contrast them with “natural pigments”, where the latter are employed for benefits they confer for coloring skin. Their use of the term “pigment” is clearly employed as an umbrella term for colorant or coloring material because they define “synthetic pigments” to embrace substances that are water soluble, slightly water soluble, and water insoluble which does not align with the applicant’ attempted narrowing of “pigment” to embrace only insoluble material (see paragraph 3). Kang et al. go on to describe particular plant sources for the “natural pigments” as well as the extraction of several of them in water which implies their water solubility. They also name the chemical compounds that are responsible for the color in these “natural pigments” and these compounds are known to be water soluble. The rejection has been supplemented with evidentiary references to illustrate this point more so (see Khoo et al. and Esatbeyoglu et al.).
Furthermore, there is no evidence that the definition relied upon by the applicant in their arguments, attempting to constrain all uses of the term “pigment” to a powder that does not dissolve in oil or water, should be applied to Kang et al. The state of the art is not in support of such a limited definition in the context of the “natural pigments” about which Kang et al. is concerned and such a viewpoint would require disregarding much of the explicit discussion and rationale Kang et al. set forth for the coloring components they prefer. Both Khoo et al. (abstract, page 3-4, table 1) and Esatbeyoglu et al. (abstract and page 36) employ the term ”pigment” to describe the chemical compounds Kang et al. also discuss as “natural pigments” found in plants and repeatedly discuss their water solubility. Moreover Merriam Webster (2021) details a definition for “pigment” that includes the more stringent scope the applicant offers, but also a broader definition that embraces the context in which the term is employed in the art. Therefore the evidence of record does not support the applicant’s argument that Kang et al. requires a water-insoluble natural pigment. Instead their teachings meet the limitations of instantly claimed water soluble colorants and remain applicable to the instant claim limitations concerning water soluble colorant in a liquid peel-off lip liner stain in both the instant method and product claims.
The applicant additionally argues that the Kang et al. do not state that their taught “natural pigments” stain the lips, but that they are instead deposited on the lips. The prior art is not required to employ the applicant’s choice of words in order to describe the same phenomenon. Kang et al. describe the function of their composition to be “a cosmetic composition formulated so that when the cosmetic composition is applied to the lip skin, a film is formed, and after the film is removed, the lips are colored (see paragraph 20). They also illustrate in the figures the coloration left behind on the skin after removal of the dried film as described. This description and illustration fulfills the capability for ‘stain’. The applicant has provided no metric to delineate the occurrence of a “stain” in a manner that distinguishes the claimed composition capabilities from those of Kang et al. There is no evidence that the “natural pigments” of Kang et al. fail to “leave a lip liner stain on the user’s skin” as instantly claimed. The applicant’s additional argument that the color from “natural pigments” of Kang et al. is not “ingrained” in the skin upon application from their vehicle or one similar to it in the prior art has no supporting evidence. Therefore the “natural pigments” of Kang et al. are able to stain lips.
The applicant also argues that the composition of the Kang et al. is not a liquid. They rely upon a teaching by Kang et al. that their composition “may” be in gel form, but discount the teachings that this form is optional. Kang et al. repeatedly note that the envisioned ingredient that confers the gel structure and a gel form are optional (see paragraph 8, 39, and 44). They further teach various forms of the composition, several of which can be liquid such as milk lotion and serum (see paragraph 82). The state of the art recognizes these forms as well as some gels as liquid forms (see Ullom et al. US PGPub No. 2005/0220828 paragraph 154). The applicant again cites a reference that has not provided to support their narrow interpretation of the meaning of the term “gel” employed by Kang et al. While the structure/form of the composition of Kang et al. is not limited to a gel, even its gel forms are not limited to those that behave like solids, as the applicant argues. Furthermore, there are no claim limitations or definitions reciting a viscosity boundary for a liquid nor any evidence that compositions of Kang et al. are not liquids. Thus the teachings by Kang et al. of compositions in forms known to be liquid as well as those whose consistency can be tuned toward a gel as desired fulfill the instant claim requirement for a liquid composition.
Regarding rejections under 35 USC 103 over Bae et al. as a secondary reference:
The applicant argues that claims 1 and 19 exclude ethanol. The language of these claims recite “a solvent configured to evaporate substantially independently of a user's skin after the lip liner stain is applied to a user's lips, wherein the solvent comprising comprises water and omits ethyl alcohol”. This recitation excludes ethanol from the solvent. This exclusion from one category of ingredient does not exclude ethanol from the composition as a whole. While Bae et al. is no longer relied upon as a primary reference, the absence of polyisobutene and not the presence of ethanol stands as the underlying reason.
Regarding rejections under 35 USC 103 over Jeong et al. in view of others:
The applicant repeats their arguments about the presence of ethanol that were directed toward Bae et al. in response to the teachings of Jeong et al. As noted in the response concerning Bae et al. above, the claims do not exclude ethanol as a component from the product that is made. Thus, in contrast to the applicant’s argument, Jeong et al. do not teach way from the product that is currently claimed.
The applicant argues that Kang et al. cannot be combined with Jeong et al. and assert that they require a water insoluble pigment and deposit color on the lips. As noted in response to their argument about Kang et al. previously in this section, Kang et al. do not require a water insoluble pigment in their composition and they do not limit the capability of their composition or colorant to depositing color on the surface of the lip. Instead, Kang et al. teach natural pigments that are water soluble and detail skin coloration (staining) due to the application of their colored composition onto skin, drying, and subsequent removal of a polyvinyl alcohol based film. The response to the more elaborated discussion of these topics by the applicant directed toward Kang et al. that was addressed above is similarly reiterated.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The applicant argues that the combination of prior art teachings cannot “mix and match” their limitations. To the contrary, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The combination of teachings of the very similar compositions set forth by Kang et al. and Jeong et al. yield a variety of obvious compositions, given the extensive overlap in their teachings. One reference can inform the other in regard to already established obvious modifications that one reference may elaborate upon to different degrees than another (e.g., choices for moisturizers, alcohols to aid in drying, enhancing actives, etc.).
The applicant further argues that the cited prior art does not suggest that polyisobutene would be compatible in a peel off composition. There is no evidence pointing to any expected incompatibility of polyisobutene with such compositions. In fact, it has been explicitly employed in similar polyvinyl alcohol based peel off compositions as an oil agent to act as a moisturizer, to yield desirable skin feel, and to aid in peel-off (see Watanabe et al. JP 2003095865 abstract and paragraphs 6 and 14, recited as polyisobutylene). These prior art oils even overlap in scope and intended use with those taught in Jeong et al. and Kang et al. (see Jeong et al. 43-44 and Kang et al. paragraph 35). Given the explicit teaching of moisturizing oils in the composition of Jeong et al. and the expansion of the scope of these components known in lip cosmetics, the addition of another oil, namely polyisobutene, known for the same purpose would have been obvious and had a reasonable expectation of success for its inclusion.
The applicant also argues that DeBeaud et al. teach polyisobutene in an emulsion, not a peelable composition, to support their argument that it would be incompatible in the composition of Jeong et al. This is unpersuasive because peelable compositions and emulsions are not mutually exclusive, as Kang et al. and Watanabe both teach peel-off emulsion compositions (see Watanabe example 11 and Kang et al. paragraph 82). Furthermore, Jeong et al. explicitly teach oils in their compositions as well as a solubilizer to stably integrate the oil into the water based composition (see paragraphs 49-50).
Regarding double patenting rejections:
The applicant’s acknowledgment of the double patenting rejections and consideration of filing terminal disclaimers is noted.
Conclusion
No claim is allowed.
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/CARALYNNE E HELM/ Examiner, Art Unit 1615
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