Patent Application 17775263 - COSMETIC COMPOSITION

Title: COSMETIC COMPOSITION
Application Information

Invention Title: COSMETIC COMPOSITION
Application Number: 17775263
Submission Date: 2025-05-16T00:00:00.000Z
Effective Filing Date: 2022-05-06T00:00:00.000Z
Filing Date: 2022-05-06T00:00:00.000Z
National Class: 424
National Sub-Class: 401000
Examiner Employee Number: 99471
Art Unit: 1614
Tech Center: 1600
Rejection Summary

102 Rejections: 0
103 Rejections: 3
Cited Patents

No patents were cited in this rejection.
Office Action Text



    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 .

Response to Amendment
The Amendment filed 04/30/2025 has been entered. Applicant’s amendments are in response to in the Final Office Action mailed 03/26/2025.  Applicant’s claims have been amended in the following manner: no claims have been amended, and only arguments have been made, which are found to be persuasive. Thus, the 103 rejection is withdrawn and replaced by another 103 rejection for a new ground of rejection in a second non-final action.
The Examiner further acknowledges the following:
Claims 28-39 are pending. 
Claims 28-39 are presented for examination and rejected as set forth below.


New 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 28-39 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (US20080081022A1), as evidenced by Itoh (US6153689A), and in further view of Debeaud (WO2018115256A1), Butler (US5110890), and Han (WO2017057862A1 – machine translation provided).
Applicants claims are directed to a cosmetic composition of specific ingredients and amounts and a method of applying, wherein there is only one silicone resin composition in the cosmetic composition. 
Yu teaches film-forming and cosmetic compositions containing a combination of polyhedral oligomeric silsesquioxane (POSS) and non-POSS silicone resins (abstract, Yu – claim 1). 
Regarding claims 28-35: Yu teaches a combination of POSS (such as the T resin poly(phenylsilsesquioxane) uncured in [0175], where uncured means that the silsesquioxane has not been exposed to conditions that cures it into a film, as evidenced by Itoh -  abstract and col 4, lines 36-45) and non-POSS silicone resins (such as the MQ resin, trimethylsiloxysilicate (Yu - claim 15, [0021-0023])) in a combined amount of 0.5-35 wt% [0016]. All other ingredients, without limitation and including, dimethicone (polydimethylsiloxanes) [0199], solvent, surfactant, thickener, and preservatives (Yu – claims 9 and 19) make up the remaining 65-99.5 wt% [0190-0194]. Note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). Thus, Yu teaches a combination of the above ingredients (separate from the silicone resin) among others in the cosmetic composition such as a lipstick composition [0180] to total in an amount of 65-99.5 wt%. 
Note that the lipstick (B) in Example 2 is anhydrous (reads on <10 wt% water) [0272]. Note that Yu regards water as optional in the cosmetic formulations [0195]. The formulation can also comprise water in the form of an emulsion (Yu – claim 20). BHT is a preservative found in 0.05 wt% in lipstick (B) (reads on ‘additional ingredient’) [0272]. 
Regarding claims 36-37: Yu teaches waxes generally [209, 210] and polyethylene 500 (polyethylene) in a lipstick at 9.5 wt% [0272].
Regarding claim 38: Yu teaches pigments generally in 0.1-6 wt% [0217-0219] and red iron oxide in 0.81 wt%, etc. in lipstick (B) [0272].
Regarding claim 39: Yu teaches a method of applying the cosmetic composition to a keratinous surface (Yu – claims 22 and 23).
In summary, Yu teaches the instant composition with respect to the general classes of ingredients to combine and the amount of silicone resin in relation to additional ingredients, in which the composition can be an aqueous emulsion or anhydrous. However, Yu does not teach all of the specific species of ingredients and amounts of the claim set (instant claims 28-39). 
Han teaches an anhydrous lipstick (pg 4, lines 158-159 – “directly applied to the lips”, pg 5, lines 193-197) composition (comparative example 1/2 of Table 1/2), that comprises a film-forming agent that can comprise the specific combination of polyphenylsilsesquioxane (a T resin) and trimethylsiloxysilicate (an MQ resin) (pg 5-6, lines 204-220). Han teaches that this film-forming agent combination in 10-40 wt% (pg 6, lines 251-257) leads to advantageous results of a flexible, rigid material that improves spreading, durability, and prevent smudging (pg 5-6, lines 204-236, 251-257).
Debeaud teaches an emulsion composition comprising silicone resins useful for making lipsticks (abstract, pg 1). Debeaud teaches emulsion compositions, incorporating an ingredient from the class of MQT resins (pg 5, lines 9-13) (with reference to Butler (US5110890), where MQT resins based on a phenyl-t are described with respect to R = phenyl for “component B” – col 2, lines 31-70) where the silicone resin is 15-35 wt% (Debeaud – claim 5), that can be combined with dimethicone (polydimethylsiloxane) (Debeaud – claim 6, pg 7, lines 1-32 or pg 15, lines 21-26) in 8-30 wt% (pg 15, lines 34-35). Debeaud also teaches incorporation of the surfactant PEG/PPG-18/18 dimethicone (pg 27, lines 3-9) in 0.5-10 wt% (Debeaud – claim 17), a hydrocarbon solvent in 0.5-15 wt% (Debeaud – claim 11), and a hydrophobic thickener of disteardimonium-modified hectorites (reads on disteardimonium hectorite) (pg 36, lines 19-23) in 0.1 to 8 wt% (pg 37, lines 21-22). Note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). 
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu to select the  polyphenylsilsesquioxane and trimethylsiloxysilicate (and amounts) as the MQT resin, as taught by Han, and disteardimonium hectorite, hydrocarbon solvents, PEG/PPG-18/18 dimethicone (and amounts), as the thickener, solvent, and surfactant, respectively, as taught by Debeaud. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). In this case, Yu teaches generally the combination of MQ and T resins for their film-forming ability (similarly to Han) and further incorporates dimethicone, solvents, surfactants, and thickeners, where Debeaud teaches specific species and amounts of those ingredient classes for the purpose of making lipsticks. Furthermore, Han teaches the advantage of using a film-forming combination of polyphenylsilsesquioxane and trimethylsiloxysilicate in anhydrous lipstick compositions, where the combination leads to advantageous results of a flexible, rigid material that improves spreading and durability, and prevent smudging in anhydrous lipstick compositions.

Claims 28-39 are rejected under 35 U.S.C. 103 as being unpatentable over Debeaud (WO2018115256A1), in further view of Butler (US5110890) and Han (WO2017057862A1 – machine translation provided).
Debeaud teaches an emulsion composition comprising silicone resins useful for making lipsticks (abstract, pg 1). 
Regarding claims 28-35: Debeaud teaches emulsion compositions (at least 10 wt% water, which overlaps with the water requirements of claim 28) for use in lipsticks (abstract, pg 1), incorporating an ingredient from the class of MQT resins (pg 5, lines 9-13)  (with reference to Butler (US5110890), where MQT resins based on a phenyl-t are described with respect to R = phenyl for “component B” – col 2, lines 31-70) where the silicone resin is 15-35 wt% (Debeaud – claim 5), that can be combined with dimethicone (polydimethylsiloxane) (pg 7, lines 1-32) in 8-30 wt% (pg 15, lines 22-35). Debeaud also teaches incorporation of the surfactant PEG/PPG-18/18 dimethicone (pg 27, lines 5) in 0.5-10 wt% (Debeaud – claim 17), a hydrocarbon solvent in 0.5-15 wt% (Debeaud – claim 11), a hydrophobic thickener of disteardimonium-modified hectorites (reads on disteardimonium hectorite) (pg 36 lines 19-23) in 0.1 to 8 wt% (pg 37, lines 21-22), and additional surfactants (pg 23, lines 36-37; pg 24, lines 1-40) in 0.1-15% (Debeaud – claim 17) or preservatives, humectants, etc. in appropriate amounts (pg 37, ‘common additives’). Note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Regarding claims 36-37: Debeaud teaches waxes in the appropriate amounts (pg 37, lines 24-40).
Regarding claim 38: Debeaud teaches pigments/dyestuffs (pg 31, lines 21-28 and pg 32, lines 25-40) in 0.05-5 wt% (pg 34, lines 34-35)
Regarding claim 39: Debeaud teaches application of the cosmetic to a keratinous surface (pg 39, lines 10-20).
In summary, Debeaud teaches the instant composition except for the specified MQT resin (instant claim 28-29, and 32) and the amount of wax (instant claims 36-37).
Han teaches an anhydrous lipstick (pg 4, lines 158-159 – “directly applied to the lips”, pg 5, lines 193-197) composition (comparative example 1/2 of Table 1/2), that comprises a film-forming agent that can comprise the specific combination of polyphenylsilsesquioxane (a T resin) and trimethylsiloxysilicate (an MQ resin) (pg 5-6, lines 204-220).  Han teaches that this film-forming agent combination in 10-40 wt% (pg 6, lines 251-257) leads to advantageous results of a flexible, rigid material that improves spreading, durability, and prevent smudging (pg 5-6, lines 204-236, 251-257). Han also teaches optionally using wax as in comparative example 2 (synthetic wax or polyethylene in 5 wt%) (pg 11).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Debeaud to select   polyphenylsilsesquioxane and trimethylsiloxysilicate as the MQT resin, as taught by Han, because Han teaches the advantage of using a film-forming combination of polyphenylsilsesquioxane and trimethylsiloxysilicate to provide a flexible, rigid material that improves spreading, durability, and prevent smudging in anhydrous lipstick compositions. Furthermore, it is a matter of selecting an MQT resin among the general class of MQT resins used in film-forming lipstick compositions taught by Debeaud (with reference to Butler). Furthermore, Han teaches the amount of wax to use in a lipstick composition, where Debeaud teaches general incorporation of waxes. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). 
Claims 28-39 are rejected under 35 U.S.C. 103 as being unpatentable over Debeaud (WO2018115256A1), Butler (US5110890), and Han (WO2017057862A1 – machine translation provided), as applied to claims 28-39 above, and in further view of Brieva (US6103250).
As described above Debeaud, Butler, and Han teach the instant composition described by the claim set. Furthermore, Debeaud teaches the incorporation of vitamins (pg 37, lines 25-30) and silicone elastomers (pg 25, lines 1-6). However, Debeaud does not teach water levels below 10 wt%.
Brieva teaches anhydrous lipstick compositions (col 1, lines 4-8), comprising silicone elastomers (col 2, lines 14-18) that improve aesthetics of anhydrous cosmetic compositions (col 1, lines 48-67), where anhydrous means no intentional water is added (col 2, lines 36-44), exemplified by the lipstick composition of example 2 that contains no water (col 9-10). Brieva provides further motivation to reduce the amount of water, as taught by Debeaud, below the lower 10 wt% in a cosmetic composition through introduction of water sensitive ingredients such as ascorbic acid (vitamin C) (col 1, lines 48-66; col 9, lines 26-35). 
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings above to further reduce the amount of water to be able to incorporate water sensitive ingredients such as the vitamins, as taught by Brieva, in which Debeaud teaches vitamins for incorporation (pg 37, lines 25-30). This could be accomplished by incorporating Brieva’s solution of silicone elastomers, in which silicone elastomers are taught for optional incorporation by Debeaud (pg 25, lines 1-6).


Response to Arguments
Applicants arguments, see pg 4-7, filed 04/30/2025, with respect to the 103 rejection of claims 28-39 under rejection have been fully considered and are persuasive. Therefore, the 103 rejection has been withdrawn. However, upon further consideration and search, new art has been found to reject the claims in the non-final rejection presented herein.
On page 4-7 of Applicant’s response, Applicant argues that Dop (US20100260701A1), used as the primary reference of the previous final action, explicitly relies on MQT-propyl silicone resins for the operability of the invention. Therefore, it is improper to substitute the MQT-phenyl silicone resin (polyphenylsilsesquioxane/trimethylsiloxysilicate) for an MQT-propyl silicone resin, since in the context of Dop, they would not be considered to have the same functional operability, and it would change the nature of Dop’s invention that is not accounted for in the teachings of Dop. Applicant also argues that Cook and Han do not resolve this issue. The Examiner agrees that although siloxane resins are mentioned generally [0005], the subsequent description only captures siloxane resins with the T-propyl modification [0006-0017], so that the siloxane resins with the T-propyl modification are the only intended siloxane resins of Dop’s invention. The newly applied primary references above that form the foundation of the new 103 rejections, however, while preferring certain MQT resin subtypes, they unequivocally include the general teaching of MQT resins for incorporation into the invention, including the T-phenyl modification (see above for rationale).


Correspondence
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 extension fee 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 date of this final action. 
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/R.P./Examiner, Art Unit 1614                                                                                                                                                                                                        5/8/2025

/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614