DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 09/29/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 (New Matter)
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-14 and 16-21 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces new matter as the claim recites the limitation: a content of water is 67.3% “or more.”
There is no readily apparent support in the specification for the limitation “or more”, and applicant has not pointed such out as recommended by MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.”
The limitation of: "67.3% or more” was not described in the specification as filed, and a person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification does disclose an example in which the content of water is specifically an amount of 67.3% (Formulation 37 of Example 6), but does not describe the instantly claimed limitation of “or more”.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 1-5, 7-14, and 16-21 are rejected under 35 U.S.C. 103 as being obvious over Willemin (US 2008/0226756 A1) in view of Valverde (US 2016/0008236 A1) and Shimizu et al. (US 2006/0013790 A1).
Regarding claim 1, Willemin teaches the use of an aqueous gel composition cosmetic for the skin [Abstract] [0023] that contains hectorites, which are assumed to be unmodified, as hydrophilic gelling agents [0428] and pectin as a tightening agent [0620]-[0622]. Hydrophilic gelling agents are disclosed as a customary adjuvant which may be present in an amount of 0.01 to 20% of the total weight of the composition [0425]-[0426]. Tightening agents may be present in the composition in an amount from 0.01 to 30% by weight [0624]. Willemin discloses water as a solvent [0278].
Willemin does not teach water in an amount of 67.3 wt.% or more, or the composition having a viscosity from 10 to 2,000 Pa.s.
Valverde teaches a gelled cosmetic composition [Abstract] with the aqueous phase (water) in an amount of 5 to 95% by weight, relative to the total weight of the composition [0449]. Valverde teaches that the cosmetic composition with the water in this amount forms a stable and consistent product [0056] and the aqueous phase provides freshness and lightness to the composition [0003] [0010] [0570].
Since Willemin generally teaches an aqueous gel cosmetic, it would have been prima facie obvious to one of ordinary skill in the art to include water in an amount of 5 to 95% by weight, within the teachings of Willemin, because Valverde teaches a gelled cosmetic composition with the aqueous phase (water) in this amount. An ordinarily skilled artisan would be motivated to use this amount of water because Valverde teaches that the cosmetic composition with the water in this amount forms a stable and consistent product [0056] and the aqueous phase provides freshness and lightness to the composition [0003] [0010] [0570].
The combined teachings of Willemin and Valverde do not teach a viscosity from 10 to 2,000 Pa.s.
Shimizu teaches a cosmetic composition for the skin [abstract] with a viscosity from 0.1 to 120 Pa.s [0315]. Shimizu teaches that this is an advantageous viscosity for the cosmetic composition [0315] and the cosmetic composition with this viscosity is soft, smooth, and has a comfortable sensation [0039]-[0043].
Since Willemin generally teaches a cosmetic composition for the skin, it would have been prima facie obvious to one of ordinary skill in the art to formulate the composition to have a viscosity from 0.1 to 120 Pa.s, within the teachings of Willemin, because Shimizu teaches a cosmetic composition for the skin with this viscosity. An ordinarily skilled artisan would be motivated to use this viscosity because Shimizu teaches that this is an advantageous viscosity for a cosmetic composition [0315] and the cosmetic composition with this viscosity is soft, smooth, and has a comfortable sensation [0039]-[0043].
Furthermore, claim 1 is rendered prima facie obvious because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., pectin, unmodified hectorite, and water in the instantly claimed amounts) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a gelled cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Willemin in view of Valverde and Shimizu reads on claims 1-2, 4 and 21.
Regarding claims 3 and 17, Willemin does not disclose low-methoxy pectins (claim 3) which comprise a degree of methoxylation of less than 50% (claim 17).
Valverde teaches the use of low-methoxy pectin having a degree of esterification of less than 50% [0248].
The skilled artisan would have been motivated to use the low methoxy pectin of Valverde within the composition of Willemin for predictable gelling with a reasonable expectation of success. The simple substitution of one known element (e.g. the low methoxy pectin of Valverde) in place of another (e.g. the pectin antibody of Willemin) in order to achieve predictable results (gelling) is prima facie obvious. See MPEP 2143, Exemplary Rationale B. Additionally, it would not have been inventive select a known compound to meet known requirements. See MPEP 2144.07.
Claim 5 is rendered prima facie obvious because Willemin discloses the hectorite is 0.01 to 20 wt.% of the composition [0426] and pectin is 0.01 to 30 wt.% of the composition [0620],[0622],[0624]. This is a ratio of hectorite to pectin of about 0.0003:1 to 2,000:1.
A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 7 is rendered prima facie obvious because Willemin discloses the use of surfactants cocoyl betaine and cocamidopropyl betaine [0446] to serve as amphoteric and zwitterionic surfactants [0442].
Claim 8 is rendered prima facie obvious because Willemin discloses the use of surfactants, cocoyl betaine and cocamidopropyl betaine [0446], to serve as amphoteric and zwitterionic surfactants [0442] in an amount ranging from 0.1 to 50 wt.% relative to the total weight of the composition [0433].
A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 9 is rendered prima facie obvious because Willemin discloses the use of glycols [0278].
Claim 10 is rendered prima facie obvious because Willemin discloses the use of an oil in water emulsion [0404] and that the composition can be in the form of a gel [0023].
Claim 11 is rendered prima facie obvious because Willemin discloses the use of an oil in water emulsion [0404].
Claim 12 is rendered prima facie obvious because Willemin discloses the use of the composition on hair and for skin care [Abstract],[0944],[0945].
Claim 13 is rendered prima facie obvious because Willemin discloses the use of the composition for skin care [Abstract],[0944],[0945].
Claim 14 is rendered prima facie obvious because Willemin discloses use of the composition on body hair and hair [0944],[0945].
Claim 16 is rendered prima facie obvious because Willemin discloses the use of the composition for cosmetic application [0425].
Claim 18 is rendered prima facie obvious because Willemin discloses the use of surfactants cocoyl betaine and cocamidopropyl betaine [0446].
Claim 19 is rendered prima facie obvious because Willemin discloses the use of glycols [0278].
Claim 20 is rendered prima facie obvious because Willemin discloses the use of oil in water emulsion [0404].
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection (Willemin in view of Valverde and Shimizu) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Willemin).
Claim 6 is rejected under 35 U.S.C. 103 as being obvious over Willemin (US 2008/0226756 A1) in view of Valverde (US 2016/0008236 A1) and Shimizu et al. (US 2006/0013790 A1) and further in view of INCIDecoder (INCIDecoder. (2017, August 12). Sucrose.https://web.archive.org/web/20170812143329/https://incidecoder.com/ingredients/sucrose.).
The 35 U.S.C. 103 rejection over Willemin in view of Valverde and Shimizu was previously discussed.
Examiner’s Note: The limitation of claim 6, that reads “sucrose” is assumed to require sucrose and not a sucrose derivative.
Willemin fails to disclose the composition further comprises sucrose, as recited in claim 6.
INCIDecoder is drawn to the use of sucrose in cosmetics and teaches the use of sucrose in cosmetics as it soothes and helps hydrate the skin [Pg. 1, Para. 1].
It would have been prima facie obvious for one of ordinary skill in the art to have modified the teachings of Willemin with INCIDecoder, to have incorporated sucrose. One would have been motivated to add sucrose to soothe and hydrate the skin [Pg. 1, Para. 1].
Response to Arguments
Applicant’s arguments with respect to claim 6 have been considered but are moot because the new ground of rejection (Willemin in view of Valverde, Shimizu, and INCIDecoder) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Willemin in view of INCIDecoder).
Claims 1-5, 7-14, and 16-21 are rejected under 35 U.S.C. 103 as being obvious over Valverde (US 2016/0008236 A1) in view of Willemin (US 2008/0226756 A1) and Shimizu et al. (US 2006/0013790 A1).
Regarding claim 1, Valverde teaches a gelled cosmetic composition for the skin [abstract] with an aqueous phase and oily phase [Abstract] where lipophically modified hectorites [0307] are present in an amount of 0.1 to 15% by weight relative to the total weight of the oily phase [0308] and the aqueous phase and the oily phase are present in a weight ratio ranging from 95/5 to 5/95 [0065]. This is from 0.005 to 14.25 % of hectorites in the total composition. The composition also includes low-methoxy pectins [0248] as a natural gelling agent [Claim 6] which may be used from 0.1% to 8% relative to the total weight of the aqueous phase [0147] and the aqueous phase and the oily phase are present in a weight ratio ranging from 95/5 to 5/95 [0065]. This is from 0.005 to 7.6 wt.% of low-methoxy pectins in the total composition. Valverde teaches water in an amount of 5 to 95% by weight, relative to the total weight of the composition [0449].
Valverde fails to teaches the use of unmodified clays (because the hectorite of Valverde appears to be modified) and a viscosity from 10 to 2,000 Pa.s.
Willemin teaches the use of an aqueous gel composition cosmetic that contains hectorites, which are assumed to be unmodified, as hydrophilic gelling agents. Either hydrophilic or lipophilic gelling agents may be used in the cosmetic composition [0428].
It would have been prima facie obvious for one of ordinary skill in the art to have modified the teachings of Valverde, to have incorporated unmodified hectorites because Willemin teaches either that hydrophilic or lipophilic compounds may be used in cosmetic compositions as gelling agents. One would have been motivated to add unmodified hectorites to serve as gelling agents as taught by Willemin at [0428].
The skilled artisan would have been motivated to have substituted the clays of Willemin in place of the clays of Valverde for incorporation in the composition of Valverde for predictable gelling of the composition with a reasonable expectation of success. The simple substitution of one known element (e.g. the clays of Willemin) in place of another (e.g. the clays of Valverde) in order to achieve predictable results (increase gelling of the composition [0428]) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
The combined teachings of Valverde and Willemin do not teach a viscosity from 10 to 2,000 Pa.s.
Shimizu teaches a cosmetic composition for the skin [abstract] with a viscosity from 0.1 to 120 Pa.s [0315]. Shimizu teaches that this is an advantageous viscosity for the cosmetic composition [0315] and the cosmetic composition with this viscosity is soft, smooth, and has a comfortable sensation [0039]-[0043].
Since Valverde generally teaches a cosmetic composition for the skin, it would have been prima facie obvious to one of ordinary skill in the art to formulate the composition to have a viscosity from 0.1 to 120 Pa.s, within the teachings of Valverde, because Shimizu teaches a cosmetic composition for the skin with this viscosity. An ordinarily skilled artisan would be motivated to use this viscosity because Shimizu teaches that this is an advantageous viscosity for a cosmetic composition [0315] and the cosmetic composition with this viscosity is soft, smooth, and has a comfortable sensation [0039]-[0043].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Valverde in view of Willemin and Shimizu reads on claims 1-4 and 21.
Claim 5 is rendered prima facie obvious because Valverde discloses hectorites [0307] are present in an amount of 0.1 to 15% by weight relative to the total weight of the oily phase [0308] and the aqueous phase and the oily phase are present in a weight ratio ranging from 95/5 to 5/95 [0065]. This is from 0.005 to 14.25 % of hectorites in the total composition. Valverde also discloses pectins [0248] as a natural gelling agent [Claim 6] which may be used from 0.1% to 8% by weight relative to the total weight of the aqueous phase [0147] and the aqueous phase and the oily phase are present in a weight ratio ranging from 95/5 to 5/95 [0065]. This is from 0.005 to 7.6 wt.% of low-methoxy pectins in the total composition.
The instant claim 5 recites, the unmodified hectorite/pectin mass ratio is between 10/1 and 1/10.
Valverde taught a weight ratio of hectorite to pectin of 1:1 to around 2:1. A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claims 7-8 and 18, Valverde discloses the use of a surfactant [0533]-[0535] for stability of compositions [0008],[0053].
Valverde does not disclose the use of cocoyl betaine and cocamidopropyl betaine as surfactants in the instantly claimed amount.
Willemin teaches the use of surfactants, cocoyl betaine and cocamidopropyl betaine [0446], to serve as amphoteric and zwitterionic surfactants [0442] in an amount ranging from 0.1 to 50 wt.% relative to the total weight of the composition [0433].
The skilled artisan would have been motivated to have substituted the surfactants of Willemin in place of the surfactants of Valverde for incorporation in the composition of Valverde for predictable increase in stability with a reasonable expectation of success. The simple substitution of one known element (e.g. the betaines surfactants of Willemin) in place of another (e.g. the surfactants of Valverde) in order to achieve predictable results (increase in stability of the composition over time) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Further regarding claim 8, since Valverde generally taught cosmetic compositions with surfactants, it would have been prima facie obvious to one of ordinary skill in the art to include the instantly claimed amount of surfactant, within the teachings of Valverde, because Willemin taught a surfactant from 0.1 to 50 wt.% relative to the total weight of the composition. An ordinarily skilled artisan would be motivated to use the instantly claimed amount of surfactant because Willemin taught this is an acceptable amount to be used within a gelled cosmetic composition [0442],[0433]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 9 is rendered prima facie obvious because Valverde discloses the use of alcohols [0448].
Claim 10 is rendered prima facie obvious because Valverde discloses the composition is a water containing gel cometic composition [Abstract].
Regarding claims 11 and 20, Valverde discloses the composition has an oil in water sense [0057] and can be used for topical application [0001]-[0002].
Valverde does not disclose the composition is an oil-in-water emulsion.
Willemin discloses oil in water emulsion as a form conventionally used for topical application [0404].
Since Valverde generally taught a cosmetic composition for topical application, it would have been prima facie obvious to one of ordinary skill in the art to use the form of an oil-in-water emulsion, within the teachings of Valverde, because Willemin taught oil in water emulsion is a form conventionally used for topical application [0404].
Claim 12 is rendered prima facie obvious because Valverde discloses that the composition is for caring for and making up keratin materials such as for cosmetic application to the skin, lips, and eye lashes [0001]-[0002].
Claim 13 is rendered prima facie obvious because Valverde discloses that the composition is for cosmetic application to the skin and lips [0002].
Claim 14 is rendered prima facie obvious because Valverde discloses that the composition is for cosmetic application to the eye lashes [0002].
Claim 16 is rendered prima facie obvious because Valverde discloses that the composition is a cosmetic composition [Abstract],[0002].
Claim 17 is rendered prima facie obvious because Valverde discloses that low-methoxy pectins have a degree of esterification of less than 50% [0248].
Claim 19 is rendered prima facie obvious because Valverde discloses the use of glycols [0448].
Response to Arguments
Applicant's arguments filed 09/29/2025 have been fully considered but they are not persuasive, and will be addressed insofar as they apply the new ground of rejection.
Applicant argues that there is no reason to substitute the lipophilic modified hectorite with a hydrophilic unmodified hectorite because they are two different gelling agents and the gelling action is different.
The Examiner disagrees. It would have been prima facie obvious for one of ordinary skill in the art to have modified the teachings of Valverde, to have incorporated unmodified hectorites because Willemin teaches either that hydrophilic or lipophilic compounds may be used in cosmetic compositions as gelling agents. One would have been motivated to add unmodified hectorites to serve as gelling agents as taught by Willemin at [0428].
Applicant’s further arguments with respect to claim 1 have been considered but are moot because the new ground of rejection (Valverde in view of Willemin and Shimizu) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Valverde in view of Willemin).
Claim 6 is rejected under 35 U.S.C. 103 as being obvious over Valverde (US 2016/0008236 A1) in view of Willemin (US 2008/0226756 A1) and Shimizu et al. (US 2006/0013790 A1) and further in view of INCIDecoder (INCIDecoder. (2017, August 12). Sucrose.https://web.archive.org/web/20170812143329/https://incidecoder.com/ingredients/sucrose.).
The 35 U.S.C. 103 rejection over Valverde in view of Willemin and Shimizu was previously discussed.
Examiner’s Note: The limitation of claim 6, that reads “sucrose” is assumed to require sucrose and not a sucrose derivative.
Valverde fails to teach the use of sucrose.
INCIDecoder is drawn to cosmetics and teaches the use of sucrose in cosmetics as it soothes and helps hydrate the skin [Pg. 1, Para. 1].
It would have been prima facie obvious for one of ordinary skill in the art to have modified the combined teachings of Valverde, Willemin, and Shimizu with INCIDecoder, to have incorporated sucrose. One would have been motivated to add sucrose to soothe and hydrate the skin [Pg. 1, Para. 1].
Response to Arguments
Applicant’s arguments with respect to claim 6 have been considered but are moot because the new ground of rejection (Valverde in view of Willemin, Shimizu and INCIDecoder) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Valverde in view of Willemin and INCIDecoder).
Claims 1-5, 9-14, 16-17 and 19-21 are rejected under 35 U.S.C. 103 as being obvious over Mizutani (US 2010/0112017 A1) in view of Valverde (US 2016/0008236 A1) and Shimizu et al. (US 2006/0013790 A1).
Regarding claim 1, Mizutani teaches a cosmetic composition for the skin [Abstract] [0014] which can be a gel [0103] and includes water [abstract]. The composition contains natural hectorite as a water swellable clay [0092] and low-methoxy pectin as a nonionic water-soluble polymer [0091], both in an amount of 0.001 to 5 mass % in the composition [0093]. The water-soluble polymers and water-swellable mineral clay can be used together [0087] and increase viscosity, improve temporal stability, and enhance the feel of use of the oil-in-water type emulsion cosmetic [0087].
Mizutani does not teach water in an amount of 67.3 wt.% or more, or the composition having a viscosity from 10 to 2,000 Pa.s.
Valverde teaches a gelled cosmetic composition [Abstract] with the aqueous phase (water) in an amount of 5 to 95% by weight, relative to the total weight of the composition [0449]. Valverde teaches that the cosmetic composition with the water in this amount forms a stable and consistent product [0056] and the aqueous phase provides freshness and lightness to the composition [0003] [0010] [0570].
Since Mizutani generally teaches an aqueous gel cosmetic, it would have been prima facie obvious to one of ordinary skill in the art to include water in an amount of 5 to 95% by weight, within the teachings of Mizutani, because Valverde teaches a gelled cosmetic composition with the aqueous phase (water) in this amount. An ordinarily skilled artisan would be motivated to use this amount of water because Valverde teaches that the cosmetic composition with the water in this amount forms a stable and consistent product [0056] and the aqueous phase provides freshness and lightness to the composition [0003] [0010] [0570].
The combined teachings of Mizutani and Valverde do not teach a viscosity from 10 to 2,000 Pa.s.
Shimizu teaches a cosmetic composition for the skin [abstract] with a viscosity from 0.1 to 120 Pa.s [0315]. Shimizu teaches that this is an advantageous viscosity for the cosmetic composition [0315] and the cosmetic composition with this viscosity is soft, smooth, and has a comfortable sensation [0039]-[0043].
Since Mizutani generally teaches a cosmetic composition for the skin, it would have been prima facie obvious to one of ordinary skill in the art to formulate the composition to have a viscosity from 0.1 to 120 Pa.s, within the teachings of Mizutani, because Shimizu teaches a cosmetic composition for the skin with this viscosity. An ordinarily skilled artisan would be motivated to use this viscosity because Shimizu teaches that this is an advantageous viscosity for a cosmetic composition [0315] and the cosmetic composition with this viscosity is soft, smooth, and has a comfortable sensation [0039]-[0043].
Furthermore, it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., natural hectorite, low-methoxy pectin, and water in the claimed amounts) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a gelled cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Further regarding claim 1, the ordinary skilled artisan would have been motivated to use the water-soluble polymers and water-swellable mineral clay together in order to increase viscosity, improve temporal stability, and enhance the feel of use of the oil-in-water type emulsion cosmetic as taught by Mizutani at [0087].
Mizutani in view of Valverde and Shimizu reads on claims 1-4 and 21.
Claim 5 is rendered prima facie obvious because Mizutani discloses hectorite and pectin both in an amount of 0.001 to 5 mass %. This is a mass ratio of unmodified hectorite to pectin of 1:1.
Claim 9 is rendered prima facie obvious because Mizutani discloses the use of alcohols [0054].
Claim 10 is rendered prima facie obvious because Mizutani discloses the use of a water containing gel like pack [pg 25, Practical example 47].
Claim 11 is rendered prima facie obvious because Mizutani discloses an oil in water type emulsion [0006] & [0087].
Claim 12 is rendered prima facie obvious because Mizutani discloses a composition is used as hair styling products, hair maintenance products and various skin cosmetic products [0102] & [0103].
Claim 13 is rendered prima facie obvious because Mizutani discloses the composition is used for various skin cosmetic products [0102] & [0103].
Claim 14 is rendered prima facie obvious because Mizutani discloses the composition is used for hair styling and for maintaining hair [0102].
Claim 16 is rendered prima facie obvious because Mizutani discloses the composition is used for various skin cosmetic products [0102] & [0103].
Regarding claim 17, Mizutani fails to teach the low methoxy pectins have a degree of esterification less 50%.
Valverde is drawn to cosmetic composition for making up and caring for keratin materials and teaches the use of low methoxy pectins [0248] that have a degree of esterification of less than 50% [0248].
The skilled artisan would have been motivated to have substituted the low methoxy pectin of Valverde in place of the pectins of Mizutani for incorporation in the composition of Mizutani for predictable gelling with a reasonable expectation of success. The simple substitution of one known element (e.g. the low methoxy pectin of Valverde) in place of another (e.g. the pectin of Mizutani) in order to achieve predictable results (gelling) is prima facie obvious. See MPEP 2143, Exemplary Rationale B. Additionally, it would not have been inventive select a known compound to meet known requirements. See MPEP 2144.07.
Claim 19 is rendered prima facie obvious because Mizutani discloses glycols as a hydrophilic medium [0054].
Claim 20 is rendered prima facie obvious because Mizutani discloses the use of an oil in water type emulsion [0006] & [0087].
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection (Mizutani in view of Valverde and Shimizu) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Mizutani).
Claim 6 is rejected under 35 U.S.C. 103 as being obvious over Mizutani (US 2010/0112017 A1) in view of Valverde (US 2016/0008236 A1) and Shimizu et al. (US 2006/0013790 A1) and further in view of INCIDecoder (INCIDecoder. (2017, August 12). Sucrose.https://web.archive.org/web/20170812143329/https://incidecoder.com/ingredients/sucrose.).
The 35 U.S.C. 103 rejection over Mizutani in view of Valverde and Shimizu was previously discussed.
Examiner’s Note: The limitation of claim 6, that reads “sucrose” is assumed to require sucrose and not a sucrose derivative.
Mizutani fails to teach the use of sucrose.
INCIDecoder is drawn to cosmetics and teaches the use of sucrose in cosmetics as it soothes and helps hydrate the skin [Pg. 1, Para. 1].
It would have been prima facie obvious for one of ordinary skill in the art to have modified the teachings of Mizutani with INCIDecoder, to have incorporated sucrose. One would have been motivated to add sucrose to soothe and hydrate the skin [Pg. 1, Para. 1].
Response to Arguments
Applicant’s arguments with respect to claim 6 have been considered but are moot because the new ground of rejection (Mizutani in view of Valverde, Shimizu, and INCIDecoder) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Mizutani in view of INCIDecoder).
Claims 7-8 and 18 are rejected under 35 U.S.C. 103 as being obvious over Mizutani (US 2010/0112017 A1) in view of Valverde (US 2016/0008236 A1) and Shimizu et al. (US 2006/0013790 A1) and further in view of Willemin (US 2008/0226756 A1).
The 35 U.S.C. 103 rejection over Mizutani in view of Valverde and Shimizu was previously discussed.
Regarding claims 7-8 and 18, additionally, Mizutani discloses the use of amphoteric surfactants [0038] that improve the temporal stability of oil-in-water cosmetic emulsions [0034].
Mizutani does not disclose betaines as surfactants, as recited in claim 7, in an amount between 0.15% and 5% by weight, as recited in claim 8, where the betaine is cocoyl betaine or cocamidopropyl betaine, as recited in claim 18.
Willemin taught the use of an aqueous gel composition cosmetic [Abstract] [0023] with the surfactants, cocoyl betaine and cocamidopropyl betaine [0446], to serve as amphoteric and zwitterionic surfactants [0442] in an amount ranging from 0.1 to 50 wt.% relative to the total weight of the composition [0433]. Willemin also discloses the composition can be an oil in water emulsion [0404].
The skilled artisan would have been motivated to have substituted the surfactants of Willemin in place of the surfactants of Mizutani for incorporation in the composition of Mizutani for predictable increase in temporal stability with a reasonable expectation of success. The simple substitution of one known element (e.g. the betaines surfactants of Willemin) in place of another (e.g. the surfactants of Willemin) in order to achieve predictable results (increase in temporal stability of oil-in-water cosmetic emulsions) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Further regarding claim 8, since Mizutani generally taught cosmetic compositions with surfactants, it would have been prima facie obvious to one of ordinary skill in the art to include the instantly claimed amount of surfactant, within the teachings of Mizutani, because Willemin taught a surfactant in an amount ranging from 0.1 to 50 wt.% relative to the total weight of the composition. An ordinarily skilled artisan would be motivated to use the instantly claimed amount of surfactant because Willemin taught this is an acceptable amount to be used within a gelled cosmetic composition [0442] [0433]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant’s arguments with respect to claims 7-8 and 18 have been considered but are moot because the new ground of rejection (Mizutani in view of Valverde, Shimizu, and Willemin) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Mizutani in view of Willemin).
Applicant’s Declaration (09/29/25)
The Examiner has fully reviewed and considered the Declaration submitted 09/29/25, setting forth a comparison between compositions according to the invention which contain hectorite and comparative compositions which contain montmorillonite.
The results show that the compositions with hectorite have a higher viscosity compared to those containing montmorillonite.
The applicant states in the declaration “The significant effect of an increased viscosity due to the presence of unmodified hectorite in the composition could not have been predicted from the descriptions of any of the references cited in the current Office Action and are therefore, unexpected” (pg. 2, bottom).
First, the Examiner disagrees that the increase in the viscosity of the composition with hectorite is actually unexpected over the prior art. The unmodified hectorites of Willemin are taught as gelling agents [0428], the unmodified hectorites of Mizutani are taught as water-swellable clay minerals [0092], and the seemingly modified hectorites of Valverde are also taught as gelling agents [0428]. It would be reasonably expected that gelling agents and water-swellable components would increase the viscosity of the composition. Further evidence that an increase in viscosity is known in the art is provided by Patel et al. (Natural and synthetic layered materials as cosmetic ingredients, 2010) which states “Both synthetic and naturally occurring hectorite demonstrate a much smaller platelet size than montmorillonite and also a larger aspect ratio (diameter to thickness) offering an efficient mechanism for thickening liquid medium. Natural hectorites as rheological modifiers have been used for many years in certain industrial and personal care applications” (pg. 33, left column, first paragraph). Therefore, the ability of hectorite to increase the viscosity of the composition does not appear to be unexpected over the prior art.
Finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated an “unexpected” increase in viscosity with hectorite, but even if this is so then it would only have been shown for with specific amounts of pectin and unmodified hectorite (Declaration, pg.2, Table). It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing differing amounts falling within the broader scope currently claimed.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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 examiner’s supervisor, Frederick Krass can be reached on 571-272-0580. 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.
/ASHLEE E WERTZ/Examiner , Art Unit 1612 /FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612