Patent Application 17312585 - COSMETIC COMPOSITION COMPRISING AT LEAST ONE - Rejection
Appearance
Patent Application 17312585 - COSMETIC COMPOSITION COMPRISING AT LEAST ONE
Title: COSMETIC COMPOSITION COMPRISING AT LEAST ONE HYDROPHOBIC FILM-FORMING POLYMER AND AT LEAST ONE AMINOSILICONE
Application Information
- Invention Title: COSMETIC COMPOSITION COMPRISING AT LEAST ONE HYDROPHOBIC FILM-FORMING POLYMER AND AT LEAST ONE AMINOSILICONE
- Application Number: 17312585
- Submission Date: 2025-05-14T00:00:00.000Z
- Effective Filing Date: 2021-06-10T00:00:00.000Z
- Filing Date: 2021-06-10T00:00:00.000Z
- National Class: 424
- National Sub-Class: 070122
- Examiner Employee Number: 85412
- Art Unit: 1619
- Tech Center: 1600
Rejection Summary
- 102 Rejections: 0
- 103 Rejections: 1
Cited Patents
The following patents were cited in the rejection:
- US 0171006đ
- US 0212317đ
Office Action Text
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 Status Applicantâs claim amendments and arguments in the response filed 29 January 2025 are acknowledged. Claims 1-20 are pending. Claims 2, 4-13, 19 & 20 are amended. Claims 5, 11-13, 16 & 17 are withdrawn. Claims 1-4, 6-10, 14, 15 & 18-20 are under consideration. Examination is to the extent of the following species: One or more hydrophobic film forming polymer-hydrogenated styrene/methyl styrene/indene copolymer; -and- One or more Aminosilicones- Bis cetearyl amodimethicone Priority Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. It is noted foreign priority has not been perfected. An English language translation of the foreign application has not been filed. Should Applicant choose to file an English translation, the English language translation should be accompanied with a statement that the translation of the certified copy is accurate. See 37 CFR 1.55 and MPEP §§ 215 and 216. The effective filing date of the instant application 20 December 2019. Drawings The amended drawings were received on 29 January 2025. These drawings are accepted. Election/Restrictions Applicant argues claims 5 and 11-13 should not be withdrawn because claims 5 & 11-13 reads on the elected species of aminosilicone of Formula XII (reply, pg. 23). This is not persuasive. The issue is claims 5 & 11-13 recite additional unelected species. The restriction requirement mailed 10 May 2024 directed Applicantâs representative to âElect at least one or more aminosiliconesâ (emphasis added; restriction-pg. 4). Applicantâs representative in their response stated âApplicant also hereby elects with traverse bis cetearyl amodimethicone as the species of the aminosiliconeâ (reply, pg. 2). Applicant has received examination on their elected species which is bis cetearyl amodimethicone. Withdrawn Objections/Rejections The objection to the figure is withdrawn due amendment to the figure to recite âThe Figureâ. The objection to the abstract is withdrawn due to Applicantâs amendment. The objection to the disclosure is withdrawn due to Applicantâs amendments to state âThe Figureâ instead of âFigure 1â and inclusion of headings and subheadings for the various parts of the disclosure. The objection to claims 9 & 10 are withdrawn due to Applicantâs amendments which write claims 9 & 10 in parallel to the claims from which they depend (i.e. claim 1) to recite âthe organic solvents(c). The objection to claims 4, 19 & 20 is withdrawn due to Applicantâs amendments which place a comma between â2000â and ân denoting a numberâ. The rejection of claims 4, 19 & 20 under 35 USC 112(b) is withdrawn due to amendments which delete the indefinite phrase "such as" from the claims. The rejection of claims 4, 19 & 20 under 35 USC 112(b) is withdrawn due to amendments which delete periods in the middle of the claims. The rejection of claims 4, 19 & 20 under 35 USC 112(b) is withdrawn due to deletion of the indefinite terms, âand notablyâ, âin particularâ and âmore preferentiallyâ from the claims. Objections/Rejections Claim Objections Claims 4, 19 & 20 are objected to because of the following informalities: Formula I, VIII, IX, and X, in claims 4, 19 & 20 are still pixelated and illegible. The examiner had to refer back to the specification to differentiate which substituents were Xâ, Yâ, R3, R4, R6, R5, R8, Râ, Râ, s, 3 and 5. The inability to distinguish between R5, R6 and R8 is striking (see formula VIII and IX). These chemical structures need to be clear, legible and less pixelated than in these claims. Is Applicant submitting these claims in grayscale or color? If so, black and white may promote better fidelity. This is important because one could easily argue these illegible claims introduce issues under 35 USC 112(b). Further, the prime and quotation superscripts need more space between these symbols and the letter they modify, they are now integrated into letter. Appropriate correction is required. 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. Claims 1-4, 6-10, 14, 15 & 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bui [(US 2008/0171006; Published: 07/17/2008; previously presented); as evidenced by Atis (US 2007/0212317; Published: 09/13/2007; previously presented)] and Schrott (WO 2014/114975; Published: 07/31/2014; previously presented). With regard to claims 1-3, 9, 10, 14, 15, & 18, and the elected species, Bui in Inventive Example 3 [0116] teaches an anhydrous composition comprising 8.0% Regalite R1100 (i.e. hydrogenated styrene/methyl styrene/indene copolymer), 1.15% D & C Red No. 7 (i.e. dyestuff), and 16.69% polyisobutene (i.e. nonvolatile organic solvent which is a hydrocarbon based oil; pg. 8; see also [0029]). With regard to claim 18, more broadly, Bui teaches Regalite 1100 (i.e. hydrogenated styrene/methyl styrene/indene copolymer) is a tackifier which provides pressure sensitive adhesion and tackifiers are present in an amount of ranging from greater than 0% to 40% by weight, based on the weight of the composition ([0020], [0030] & [0031]). Bui in Example 3 teaches inclusion of 10.00% isododecane. As evidenced by Atis, isododecane is a volatile solvent (Atisâs claim 9). Bui teaches linear polydimethyl- siloxane that are liquid at room temperature are suitable non-volatile silicone oils for use in the invention [0046]. Bui teaches their compositions are for making up keratinous substrates (abstract). Bui does not teach inclusion of one or more aminosilicones or that the aminosilicone is Formula XII. In the related field of invention of compositions for making up keratinous substrates, Schrott teaches hair and skin conditioning compositions (title). Schrott teaches that current compositions in the art use low molecular hydrocarbons such as isododecane as carriers but these have a number of undesirable attributes as carriers in that they may not be cost effective and they are currently regulated or under increased scrutiny by governmental health and environmental organizations [0003]. Schrottâs goal is to find a delivery system for delivering the hair care benefits of high viscosity and non-volatile hydrocarbons [0004]. Schrott teaches high viscosity non-volatile silicones and hydrocarbon materials may be delivered neat, as a premix, or added to hair care compositions [0004]. The first component of the premix are siloxane polymer which comprise fatty alcohols, and the second component comprises dimethicones having a viscosity from about 20 to about 10,0000 ([0008]-[0010]). With regard to claims 1 (b), 4 Formula XII, 6, 19, Formula XII, & 20 Formula XII, in Table 1 (B), Schrott teaches a premix comprising 80% dimethicone (250 cs) and 20% bis cetearyl amodimethicone (pg. 6). With regard to claim 7, Schrott teaches hair conditioning composition comprise from about 0.5 to about 15% of the premix (i.e. about 0.1 to about 3% of bis-cetearyl amodimethicone; [0013]). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper âfunctional approachâ to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) âObvious to tryâ â choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Here, at least rationale (F) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have substituted Buiâs isododecane carrier with about 0.5 to about 15% of the delivery system containing dimethicone and bis-cetearyl amodimethicone [yielding a composition comprising about 0.1 to about 3% of bis-cetearyl amodimethicone] as suggested by Schrott because isododecane is a volatile carrier that is not cost-effective and under government scrutiny and Schrottâs delivery system is made to replace such carriers. Schrottâs work is in the related field of hair and skin conditioning; hair and skin are keratinous substrates. Buiâs field of endeavor is for making up keratinous substrates. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide conditioning of the skin and an effective carrier for the polyisobutene solvent through use of Schrottâs carrier comprising dimethicone and bis-cetearyl amodimethicone. With regard to the ratio recited by claim 8, the combined teachings of Bui and Schrott yield a ratio where the hydrophobic film former/Regalite 1100 and the aminosilicone (i.e. bis-cetearyl amodimethicone) are in a ratio greater than 1 [ 8% Regalite 1100 : about 0.1 bis-cetearyl amodimethicone; and 8% Regalite 1100 : 3 bis-ceteary amodimethicone]. With regard to the recited amounts of hydrophobic film-forming polymers/ hydrogenated styrene/ methyl styrene/ indene copolymer aminosilicone(s); integers for the x, y, R1, R2, and A Formula XII moieties; ratio of between the hydrophobic film forming polymers(a) and aminosilicones(b), the combined teachings of Bui and Schrott suggest these parameters with values fall within or overlap with the claimed ranges. 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). Response to Arguments Applicant argues their invention is in a different field of endeavor than that of Bui and Schrott. Applicant argues their invention is for treating human keratin fibers, Bui is for making up keratinous substrates, and Schrott discloses hair and skin conditioning compositions (reply, pg. 24). This is not persuasive. Applicant is arguing a more narrow scope than the breadth of the claims. The claims are simply drawn to a âcosmetic compositionâ. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, Bui and Schrott are cosmetic compositions. Also, Applicant is arguing intended use of the composition. The issue is Applicant has not structurally/compositionally distinguished their inventive hair care composition from that which is suitable for skin. Applicant argues Bui and Schrott are not combinable because Bui is directed to making up keratin fibers and exemplifies lip glosses while Schrott mentions skin conditioning in the title but the bulk of Schrottâs disclosure is directed to the treatment of hair (reply, pg. 24-25). This is not persuasive. With regard to the Buiâs compositions, Bui teaches their method is for âmaking up keratinous substratesâ (abstract). Skin is a keratinous substrate. Bui expands that their composition may comprise at least one active agent âto deliver the desired skin benefitâ and that the active agent can penetrate through the skin [0093]. Bui contemplates inclusion of âdermatological active agents such as, for example, emollients, moisturizersâ (i.e. conditioners; [0089]). As such Bui is drawn to the same field of endeavor as Schrott and does not preclude addition of Schrottâs dimethicone and bis cetearyl amodimethicone. Further Buiâs composition is taught to comprise an isododecane carrier which is not cost-effective and under government scrutiny and Schrottâs delivery system comprising dimethicone and bis cetearyl amodimethicone is made to replace such carriers. With specific regard to Applicantâs argument that Bui exemplifies lip glosses and Schrott is directed to hair compositions, â[d]isclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiment.â In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 212. With particular regard to Schrottâs teachings, Schrott mentions compositions for skin and/or skin in their title, and paragraphs [0002], [0004]-[0006], [0008], [0009], [00011], [0012], [00020], [0021] & [0027]; and Schrottâs claim 1. Applicant argues hindsight reconstruction (reply, pg. 25-26). 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). In the instant case, Bui teaches skin compositions comprising isododecane carrier but Schrott teaches this carrier is not cost-effective and under government scrutiny. Schrottâs delivery system comprising dimethicone and bis cetearyl amodimethicone is made to replace such carriers. It would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have substituted Buiâs isododecane carrier with about 0.5 to about 15% of the delivery system containing dimethicone and bis-cetearyl amodimethicone taught by Schrott. Conclusion No claims are allowed. THIS ACTION IS MADE FINAL. 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 LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examinerâs supervisor, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LORI K MATTISON/Examiner, Art Unit 1619 /NICOLE P BABSON/Primary Examiner, Art Unit 1619