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 .
Status of Application
Receipt of Applicant’s remarks filed on June 2, 2026 is acknowledged.
Claims 28, 30, 32-40, 42-45, and 47-50 are pending in this application.
Claims 1-27, 29, 31, 41, and 46 have been cancelled. No claims have been amended.
All pending claims are under examination in this application.
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
An updated PTO-892 including a citation to Huerta et al. (US 7,416,719) and all additional references cited in this action is attached to this communication.
Maintained Rejections
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, 30, 32-37, 39-40, 42-44 and 47-50 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (WO 2014/012230; cited on IDS dated November 4, 2022), as evidenced by Paula’s Choice Skincare (Bismuth Oxychloride, accessed online November 20, 2024) and Unilong (Carbopol 980, accessed March 30, 2026), in view of Huerta et al. (US 7,416,719).
Liu discloses a cosmetic composition for caring for and/or make up keratin materials, in particular the skin of the face, comprising:
At least one scattering filter having a particle size of less than 35 mm;
At least one red or pink nacre; and
At least one blue nacre (abstract).
The composition can further comprise at least one organic or inorganic UV sunscreen (page 3, lines 23-26).
The nacres may include nacreous pigments such as mica coated with iron oxide, mica coated with bismuth oxychloride, mica coated with titanium oxide or dioxide, for example (page 5, lines 21-24).
Titanium dioxide is not recited as required component.
a. of Liu is disclosed to include bismuth oxychloride (page 3, line 1), which is a pearlescent pigment, as evidenced by Paula’s choice.
Example 1 discloses of Carbomer 980 (a polyacrylate polymer) and phenoxyethanol (an alcohol).
It is noted that Carbomer 980 has multiple functionality as a suspending agent, stabilizer, emulsifier, and thickener , as evidenced by Unilong.
Regarding claims 30, 43 and 50, as noted above, nacres include mica coated with iron oxide.
Regarding claims 32 and 49, as noted above, (a) is disclosed to include bismuth oxychloride (page 3, line 1).
Regarding claims 33-36, as noted above, the nacres and fillers are disclosed to include mica or silica/silica microspheres, which are substrates (page 5, lines 21-24; page 18, line 36 through page 19, line 7).
Regarding claim 37, as noted above, the at least one scattering filter having a particle size of less than 35 mm.
Regarding claim 38, soluble dyes are not a required component of the composition.
Regarding claim 39, as noted above, the composition can comprise at least one UV sunscreen. The UV sunscreen agents can include UV-A and/or UV-B agents which are hydrophilic and/or lipophilic (page 19, lines 30-32).
Regarding claim 40, the composition can be in the form of an oil in water emulsion (page 3, lines 16-19).
Regarding claim 42, claim 42 discloses the same components in the sunscreen composition of claim 28, with the addition of silica. Liu discloses the composition can additionally comprise at least one filler of organic or mineral nature. Examples of filled include silica and silica based fillers (page 18, line 12 through page 19, line 28).
Regarding claim 44, the emulsion type composition can be in the form of a cream (page 8, lines11-13).
Regarding claim 47, as noted above, the composition is applied to keratin materials, in particular the skin of the face (abstract) in the form of a sun protection composition (page 8, lines 8-10).
Liu does not disclose the use of avobenzone or the inclusion a glucoside into the emulsifier blend.
Huerta discloses a sunscreen composition that has at least one sunscreen agent and at least one glucoside emulsifier. The composition is disclosed as a stable oil in water emulsion (abstract).
The at least one sunscreen agent is disclosed to include avobenzone (claim 2) amongst a Markush grouping of overlapping agents disclosed by Liu.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have used any of the sun screen active agents, including avobenzone in place of the dibenzolymethane derivatives, cinnamic derivatives, benzophenone derivatives (page 20, lines 1-4) disclosed by Liu since Huerta discloses them to be functional equivalents.
Additionally, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have included the glucoside of Huerta in to the composition of Liu since Huerta discloses the inclusion of a glucoside imparts an enhanced soft, silky feel to the composition (claim 1).
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (WO 2014/012230; cited on IDS dated November 4, 2022), as evidenced by Paula’s Choice Skincare (Bismuth Oxychloride, accessed online November 20, 2024) and Unilong (Carbopol 980, accessed March 30, 2026), in view of Huerta et al. (US 7,416,719) as applied to claims 28, 30, 32-37, 39-40 and 47-50 above, and further in view of KR20040021695 (hereinafter referred to as KR695).
The combination of Liu and Huerta is discussed above.
The combination does not disclose the formulation is in the form of a gel lotion.
KR695 discloses a cosmetic compositions. The compositions can be in the form of gel moisturizers (gel lotions).
It would have been obvious to prepare a formulation as a gel moisturizer, as disclosed by KR695 since it is discloses that the type of formulation provides a cosmetic composition having excellent moisture retention properties and high temperature stability in an emulsifying system mainly composed of an oil in water type emulsion.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argue:
*Carbopol 980 is not an emulsifier; Unilong does not establish otherwise in the context of Liu Example 1.
The Examiner disagrees. As noted in the Unilong product information sheet, Carbopol 980 is a known emulsifier and would retain its functionality regardless of its use in the composition. Applicant’s attention is directed to MPEP 2112.01 II which states "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
The skilled artisan when looking at the art as a whole would consider all teachings of the prior art. Since the prior art of Unilong discloses the Carbopol 980 has emulsifier properties, the skilled artisan would consider it to be an emulsifier. There has been no evidence made of record to negate such a teachings, including the technical data sheet of Lubrizol (which has not be cited on a 1449).
*Liu example 1 already contains a true emulsifier in Amphisol K, there was no need, and the Examiner has identified no articulated reason to attribute additional emulsifying functionality to Carbopol 980 in its composition.
The teachings relied on in Liu are not limited to only Example 1. It is unclear why Applicant is focusing only on the disclosure of Example 1. Applicant is reminded of MPEP 2123 I which discloses The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Even if the teachings were limited to Example 1, it is unclear why Applicant is taking the position that only one of each type of component could be included. For example, only 1 emulsifier. When reviewing Example 1, it is noted that glycerin and propylene glycol are both known humectants; and triethanolamine also known emulsifier, surfactant, and pH adjuster. Applicant’s attention is directed to MPEP 2144.06 I, which states it has been held that combinations of two or more compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is to be used for the very same purpose. In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). As the court explained in Crockett, the idea of combining them flows logically from their having been individually taught in prior art.
*There is no articulated motivation to substitute avobenzone for the dibenzoylmethane derivative of Liu. Liu and Huerta are directed to compositions with materially different optical and sensorial objectives.
Both Liu and Huerta are drawn to oil in water emulsion formulations. While Liu discloses pearlescent nacres, as noted by Applicant, he additionally discloses numerous organic and inorganic UV sunscreen agents in the UV-A and UV-B region can be added to the formulation. The composition is not limited to only containing pearlescent nacres, as alleged by Applicant in the remarks. Avobenzone is a known UV-A sunscreen agent and is a known functional equivalent to the agents disclosed. It is also known within the art to include both pearlescent nacres and additional UV-A and UV-B sunscreen agents, as taught by Liu.
*The is no articulated motivation to add a glucoside emulsifier to Liu’s example 1.
As noted above, the teachings of Liu’s formulation are not to only Example 1. Additionally, as noted above, glucoside emulsifiers are taught to be added into sunscreen formulations, and are disclosed to provide an enhanced soft, silky feel to the skin upon application, which provides suggestion and motivation to incorporate a glucoside emulsifier into the formulation of Liu.
*KR695 is directed to humectant compositions and is materially different from those of a sunscreen composition of the type taught by Liu. The Examiner has identified no teaching in KR695, and none exists, that would have motivated a person of ordinary skill in the art to convert the scattering-pigment sunscreen of LIU into the form of a gel-lotion humectant. The Examiner's reasoning rests on the unsupported generalization that "the type of formulation provides a cosmetic composition having excellent moisture retention properties." Moisture retention is not a recognized objective of LIU; the proffered motivation is therefore not "rational" within the meaning of MPEP § 2143.
Applicant’s attention is directed to MPEP 2144 which discloses the rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000). Liu need not disclose the desire to add additional humectant components into the formulation, as alleged by Applicant.
Additionally, KR695 is replete with reference to a gel moisturizer, for example, page 12, Example 22, and claims recited on pages 28-29 of the machine translation document provided to Applicant on October 2, 2025.
Conclusion
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 MELISSA S MERCIER whose telephone number is (571)272-9039. The examiner can normally be reached M-F 6:30 am to 4 pm EST.
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, Robert A Wax can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA S MERCIER/Primary Examiner, Art Unit 1615
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