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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/16/2025 has been entered.
Election/Restrictions
Claims 11 and 21-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/4/2024.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/496488, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. US’488 does not provide support for the monomer concentrations listed in claims 3 and 4, as such these claim will receive an effective filing date of 1/11/2022. The remaining claims have an effective filing date of 3/23/2017.
Response to Arguments
All of Applicant’s arguments filed 9/16/2025 have been fully considered.
112 Rejections
In view of the amendments to the claims the 112(a), 112(b) and 112(d) presented in the previous office action have been withdrawn as the issues have been resolved.
103 Rejections
Applicant argues that Rigoletto uses the terpolymer in blended form, however, in the current application it is used independently , not in a blended form.
This is not persuasive as Applicant are arguing limitations which are not recited by the instant claims. The claims recite “comprising” language which permits the inclusion of other polymers and allows the terpolymer to be used in blended form.
Applicant argues that Rigoletto does not teach the viscosity of the polymer and this is critical to the rheological and sensory properties in the examples, does not teach the pH as claimed and does not teach composition with improved water resistance, etc.
This is not persuasive as Applicant is arguing the Rigoletto reference individually when the rejection is based on a combination of references. The combination of references makes obvious the limitations discussed above. MacMillan makes obvious the claimed pH. Regarding the viscosity and the listed properties as discussed below the monomer ratios of Rigoletto overlap with the ranges recited by instant claims 3-4 and overlapping ranges are prima facie obvious absent evidence of criticality. While Rigoletto is silent to the viscosity of the composition as the prior art makes obvious a composition having the claimed polymer and makes obvious the claimed monomer concentration ranges, the polymer claimed and the polymer made obvious by the prior art are expected to have the same properties of viscosity and MW as recited by the instant claims. Regarding the listed properties, the instant specification shows that the use of the claimed terpolymer in the claimed amounts is responsible for this effect, therefore as the prior art makes obvious the structural limitations claimed, the composition claimed and the composition of the prior art are expected to have the same properties absent evidence to the contrary. With respect to Applicant comments regarding “critical to rheological and sensory properties demonstrated in the examples,” Applicant are reminded that they bear the burden of explaining any data they proffer as evidence of unexpected results or critical (MPEP 716.02(b)). Applicant direct the Examiner to the examples, but do not point to which examples on pages 27-36 support their assertion, Applicant have not met their burden.
Applicant remarks that the claimed pH ranges are outside of the those disclosed by MacMillan as such the claimed pH ranges teach away from Macmillan’s teaching.
This is not persuasive as the instant claims are directed to a variety of pH ranges in the alternative and one of the alternatives presented in the claims overlap with the ranges of MacMillan and overlapping ranges are prima facie obvious absent evidence of criticality.
Applicant argues that there is no clear rationale to combine the teachings of Simonnet with Rigoletto and MacMillan as the references relate to different formulations with separate functional goals and the rejections provide no obvious reason or supporting guidance to support the rejection.
This is not persuasive as the rejection provides a specific motivation and expectation of success for combining the references. As discussed below, the examiner states “It would have been prima facie obvious to a person of skill in the art before the effective filing date of the claimed invention to modify the teachings of Simonnet with those of Rigotello and add 0.1-3% of the blend of (a) a terpolymer of polyvinylpyrrolidone, acrylic acid and lauryl methacrylate; and (b) a copolymer of acrylate and steareth-20 methacrylate as thickening and/or gelling agent as Rigoletto teaches that the blend exhibits synergistic theological and viscosity effects on the composition and allows for low levels of the polymers in hair care without affecting other attributed of the physical properties of the product or its performance on hair. One of skill in the art would have a reasonable expectation of success as both Simonnet and Rigoletto teach compositions, such as gels, suitable for use on hair or skin and Simonnet teaches that thickening and gelling agents can be added along with any other ingredient commonly used in cosmetics or dermatologics (Simonnet – claim 34)” and “It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Simonnet and Rigotello above with those of MacMillan and add a buffer to the compositions of Simonnet and Rigotello in amounts sufficient to ensure that the composition made obvious above has a pH ranging from 3.5-10, which overlaps with the claimed pH ranges, as MacMillan teaches that irritation can be encountered at pH below 3.5 and stability is affected at pH above 10. Absent evidence to the contrary one of skill in the art would have a reasonable expectation of success as both Simonnet, Rigotello and Macmillan teaches cosmetic composition suitable for topical application.” It seems Applicant is arguing that the references are nonanalogous, however they are all directed to the same field of invention (i.e. cosmetic composition suitable for topical application).
Applicant remarks that Cole does not cure the deficiencies of the Simonnet, Rigoletto and MacMillan.
This is not persuasive for the reasons already discussed above.
New 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 1-10 and 12-20 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 and 12 recite “cosmetically/dermatologically acceptable additive” the use of “/” renders the claim indefinite as its unclear if “/” is meant to be “and,” “or” or “and/or”. For purposes of examination “cosmetically/dermatologically” is interpreted as “cosmetically and/or dermatologically”.
Claims 2-10 and 13-18 are rejected in view of their dependency on claim 1 or 12 as they do not resolve the deficiencies of the claims identified above and thus are rejected for the same reasons.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 6 and 16 recites “film formers/waterproofing agent”, the broad recitation film formers, and the claim also recites waterproofing which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
New Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 3-10, 12, 14 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis (US 5,900,229), as evidenced by Merriam Webster (Emulsions). Dupuis is newly cited on the 9/29/2025 IDS. Merriam Webster is newly cited.
Dupuis teaches cosmetic or dermatological compositions comprising a foaming agent which is a terpolymer consisting of 20-90% vinyl lactam, 1-55% of an unsaturated carboxylic acid and 1-20% of an alkyl acrylate or methacrylate containing at least 6 carbon atoms (Abs).
Regarding claim 1(i): Dupuis teaches that the composition can be formulated as an emulsion (col. 12, lines 30-40). As evidenced by Merriam-Websters emulsions comprise two liquids that are immiscible.
Regarding claim 1(ii), 3-5, 12(ii) and 14: Dupuis teaches the terpolymer to preferably be those chosen from 40-70% vinylpyrrolidone; 15-40% acrylic acid and 5-20% of lauryl methacrylate (col. 2, lines 25-34). The terpolymer is used in the composition in amounts ranging from 0.05-10% (col. 3, lines 25-30). The monomer ratios of Dupuis overlap with the ranges recited by instant claims 3-4 and overlapping ranges are prima facie obvious absent evidence of criticality. While Dupuis is silent to the viscosity of the composition as the prior art makes obvious a composition having the claimed polymer and makes obvious the claimed monomer concentration ranges, the polymer claimed and the polymer made obvious by the prior art are expected to have the same properties of viscosity and MW as recited by instant claims 1ii, 5, 12ii and 14.
Regarding claims 1(iii), 6, 12(iii) and 16: Dupuis teaches that cosmetically acceptable solvents such as ethanol, isopropanol, etc. can be added in amounts of less than 30%, which overlaps with the claims 0.1-20% of cosmetically acceptable skin care additive being a liquid carrier (col. 3, lines 40-55).
Claims 1 and 12 recite “free from surfactants,” Dupuis teaches that surfactants are optionally used and when used they are used in amounts that do not exceed 10% (col. 12, lines 5-10 and Dupuis – claim 18), as such it would have been prima facie obvious to formulate the composition to be free of surfactants as these are taught to be optional for use.
Regarding claim 1, 9, 12 and 18: Dupuis teaches the cosmetic to have a pH ranging from 3-10 which overlaps with the claimed ranges (col. 12, line 50).
Regarding claim 7: Dupuis teaches cosmetic compositions (Abs).
Regarding claims 8 and 17: Dupuis teaches foam compositions (Abs).
Regarding claims 12(iii): Dupuis teaches that sunscreen agents can be added in amounts of not more than 10% (col. 12, lines 5-10), as such the inclusion of a sunscreen agent is prima facie obvious.
Regarding claims 10 and 19: These claims recite a property of the claimed composition and the instant specification shows that the use of the claimed terpolymer in the claimed amounts is responsible for this effect, therefore as the prior art makes obvious the structural limitations claimed, the composition claimed and the composition of the prior art are expected to have the same properties absent evidence to the contrary.
Claim(s) 1, 2, 3-10, 12, 13, 14, 15 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis (US 5,900,229), as evidenced by Merriam Webster (Emulsions), as applied to claims 1, 3-10, 12, 14 and 16-19 above, and further in view of Simonnet (US 2004/0258644).
As discussed above, Dupuis makes obvious he limitations of claims 1, 3-10, 12, 14 and 16-19, however, Dupuis does not teach the specific inclusion of a sunscreen agent as recited by instant claim 15 and does not teach the make-up of the immiscible phases.
Simonnet discloses photoprotective oil-in-water emulsions well suited for photoprotecting the skin, lips and/or hair against the damaging effects of UV radiation (Abs).
Simonnet teaches the emulsions to be free of surfactant [0027] and teaches the oil phase to make up 0.1-45% of the total weight of the emulsion, thus the discontinuous internal phase (i.e. oil phase) and the continuous phase (i.e. water phase) are present in amounts which overlap with the ranges as recited by instant claims 2 and 13 (Simonnet – claim 17). These emulsions can be packaged as aerosols on the forms of mousses (i.e. foam) comprising propellants [0257-0258].
Simonnet teaches the emulsion to comprise 0.1-20% of 4,4-diarylbutadiene UVA sunscreening agents (Simonnet – claim 27) and further comprises 0.5-15% of an additional sunscreening agents, such as butyl methoxydibenzoylmethane (listed as a preferred organic screening agent) [0185 and 0208].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Dupuis with those of Simonnet. One of skill in the art would have been motivated to formulate the emulsion of Dupuis to be an O/W emulsion with water and oil phases in the amounts taught by Simonnet as Simonnet demonstrates that these types of emulsions are known in the art to be suitable for formulating cosmetics comprising sunscreen agents. One of skill in the art would have also been motivated to use the sunscreen agents as taught by Simonnet as Simonnet demonstrates that these types of sunscreen agents are known to be used when formulating cosmetics comprising sunscreen agents. One of skill in the art would have a reasonable expectation of success as both Dupuis and Simonnet teach cosmetic compositions which can be formulated as emulsions and comprise sunscreen agents.
Claim(s) 1, 3-10, 12, 14, 16-19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis (US 5,900,229), as evidenced by Merriam Webster (Emulsions), as applied to claims 1, 3-10, 12, 14 and 16-19 above, and further in view of Cole (US 6,444,195).
As discussed above, the prior art make obvious the limitations of claims 1, 3-10, 12, 14 and 16-19, however, they do not teach the composition to have an SPF of at least 10 as recited by instant claim 20.
Cole teaches sunscreen compositions and teaches that the UV absorbing agents can be used in amounts ranging from 0.1-30% and the total concentration of all the agents is based on the desired SPF level, for example a level ranging from 10-60.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Dupuis with those of Cole and formulate the composition of Dupuis to have a SPF ranging from 10-60 as Cole teaches that this is a desirable SPF and teaches that these can be achieved by achieved by optimizing the amounts of sunscreen agents used. One of skill in the art would have a reasonable expectation of success as both Cole and Dupuis teach composition comprising sunscreening agents.
Maintained/Modified Claim Rejections - 35 USC § 103
Claims 1-10 and 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simonnet (US 2004/0258644), Rigoletto (US 6,451,299) and MacMillan (US 3,903,256). MacMillan is newly cited.
Simonnet discloses photoprotective oil-in-water emulsions well suited for photoprotecting the skin, lips and/or hair against the damaging effects of UV radiation (Abs).
Simonnet teaches the emulsions to be free of surfactant [0027] and teaches the oil phase to make up 0.1-45% of the total weight of the emulsion, thus the discontinuous internal phase (i.e. oil phase) and the continuous phase (i.e. water phase) are present in amounts which overlap with the ranges as recited by instant claims 2 and 13 (Simonnet – claim 17).
Regarding claim 1iii, 6, 12iv and 16: Simonnet teaches that the emulsion can comprise adjuvants such as preservatives (Simonnet – claim 34) and used in an amounts of 1.2%. The composition further comprises gelling agents (reading on rheology modifying agents .
Regarding claim 7: Simonnet teach the emulsion to comprise sunscreen agents and be photoprotective (Abs), which reads on sunscreen composition.
Regarding claims 8 and 17: Simonnet teaches that the taught cosmetic compositions can be used as gels [0257] and can comprise gelling agents in amounts of 0.1-10% [0254 and 0216].
Regarding claim 12iii and 15: Simonnet teaches the emulsion to comprise 0.1-20% of 4,4-diarylbutadiene UVS sunscreening agents (Simonnet – claim 27) and further comprises 0.5-15% of an additional sunscreening agents, such as butyl methoxydibenzoylmethane (listed as a preferred organic screening agent) [0185 and 0208].
However, Simonnet does not teach the composition to comprise a terpolymer as recited by instant claims 1ii, 3-4 and 12ii.
Rigoletto discloses a personal care composition comprising a blend of (a) a terpolymer of polyvinylpyrrolidone, acrylic acid and lauryl methacrylate; and (b) a copolymer of acrylate and steareth-20 methacrylate (Abs). This blend exhibits synergistic theological and viscosity effects on the composition (Col. 1, lines 5-10). The synergistic effects allows for low levels of the polymers in hair care without affecting other attributed of the physical properties of the product or its performance on hair. These can also be used for skin care (Col. 2, lines 5-15).
Rigotello teaches the blend to present in the composition in amounts of 0.1-3%. The working examples and the claims show the weight ratio of polymers (a):(b) to be about 25:75 or 50:50 (Rigotello – claims 3, 6-7 and 9-10), which results in a concentration of terpolymer which overlaps with the claimed 0.1-10 wt.%.
Rigotello teaches the terpolymer to have a monomer ratio of 20-90%VP, 1-55% AA and 1-25% LM (Col. 2, lines 20-25), these overlap with the desired monomer ratio of 50-70% (or 55-65%) VP, 25-45% (or 30-40% AA and 1-10% (or 2-5%) LM. The monomer ratios of Rigotello overlap with the ranges recited by instant claims 3-4 and overlapping ranges are prima facie obvious absent evidence of criticality. While Rigotello is silent to the viscosity of the composition as the prior art makes obvious a composition having the claimed polymer and makes obvious the claimed monomer concentration ranges, the polymer claimed and the polymer made obvious by the prior art are expected to have the same properties of viscosity and MW as recited by instant claims 1ii, 5, 12ii and 14.
Example 1, Table 2 discloses a clear thick hair gel (reading on instant claims 7-8 and 17) composition comprising 0.5% of the terpolymer, a preservative (reading on instant claims 6 and 16), wherein the gel does not comprise a surfactant.
Rigotello further teaches that UV absorbers can be added to protect the product or UV sunscreens to protect the hair from sun damage.
It would have been prima facie obvious to a person of skill in the art before the effective filing date of the claimed invention to modify the teachings of Simonnet with those of Rigotello and add 0.1-3% of the blend of (a) a terpolymer of polyvinylpyrrolidone, acrylic acid and lauryl methacrylate; and (b) a copolymer of acrylate and steareth-20 methacrylate as thickening and/or gelling agent as Rigoletto teaches that the blend exhibits synergistic theological and viscosity effects on the composition and allows for low levels of the polymers in hair care without affecting other attributed of the physical properties of the product or its performance on hair. One of skill in the art would have a reasonable expectation of success as both Simonnet and Rigoletto teach compositions, such as gels, suitable for use on hair or skin and Simonnet teaches that thickening and gelling agents can be added along with any other ingredient commonly used in cosmetics or dermatologics (Simonnet – claim 34).
Regarding claims 10 and 19: These claims recite a property of the claimed composition and the instant specification shows that the use of the claimed terpolymer in the claimed amounts is responsible for this effect, therefore as the prior art makes obvious the structural limitations claimed, the composition claimed and the composition of the prior art are expected to have the same properties absent evidence to the contrary.
However, Simonnet and Rigoletto, do not teach the composition to have a pH recited by instant claims 1, 9, 12 and 18.
MacMillan teaches topical compositions for application to skin comprising sunscreen agents (Abs). MacMillan teaches the sunscreen compositions to have a pH in aqueous solution of not less than 3.5 nor more than about 10 as irritation can be encountered at pH’s lower than about 3.5 and the stability of various ingredients can be adversely affected at pH’s higher than about 10.0. Buffering agents, such as glycine, citric acid, etc., can be used to adjust the pH to the desired range (col. 5, lines 5-15).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Simonnet and Rigotello above with those of MacMillan and add a buffer to the compositions of Simonnet and Rigotello in amounts sufficient to ensure that the composition made obvious above has a pH ranging from 3.5-10, which overlaps with the claimed pH ranges, as MacMillan teaches that irritation can be encountered at pH below 3.5 and stability is affected at pH above 10. Absent evidence to the contrary one of skill in the art would have a reasonable expectation of success as both Simonnet, Rigotello and Macmillan teaches cosmetic composition suitable for topical application.
Claims 1-10, 12-19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simonnet (US 2004/0258644), Rigoletto (US 6,451,299) and MacMillan (US 3,903,256), as applied to claims 1-10 and 12-19 above, and further in view of Cole (US 6,444,195).
As discussed above, the prior art make obvious the limitations of claims 1-10 and 12-19, however, they do not teach the composition to have an SPF of at least 10 as recited by instant claim 20.
Cole teaches sunscreen compositions and teaches that the UV absorbing agents can be used in amounts ranging from 0.1-30% and the total concentration of all the agents is based on the desired SPF level, for example a level ranging from 10-60.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the references above with those of Cole and formulate the composition made obvious above to have a SPF ranging from 10-60 as Cole teaches that this is a desirable SPF and teaches that these can be achieved by achieved by optimizing the amounts of sunscreen agents used. One of skill in the art would have a reasonable expectation of success as both Cole and Simonnet teach sunscreen composition which protect skin from sun radiation.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached on Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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, Brian Kwon can be reached on (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613