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 .
This office action is in response to the reply filed 6/17/2026.
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Claims 11 and 21-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.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 6/17/2026 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In view of the amendments to the claims the 112(a), 112(b) and 112(d) presented in the previous office action have been withdrawn as the issues have been resolved.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’s arguments regarding the 103 rejections and the Mw of the polymer are persuasive. As such all prior art rejections presented in the office action mailed 2/17/2026 are withdrawn and new rejections are presented below to address this limitation.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities:
Claim 1 recites “wherein pH of the skin” instead of “wherein a pH of the skin”.
Claim 12(iv) recites “is selected is selected”. The phrase “is selected” is duplicated.
Claim 12 recites “(d) from about pH 10 to about 12”, Applicant should delete the (d) as there are no corresponding components (a)-(c).
Appropriate correction is required.
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 1-4, 6-10 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 “relative viscosity…cps”, as evidenced by Aldrich, relative viscosity is dimensionless, thus it’s unclear how the claimed relative viscosity can be a measurement of “cps”.
Claims 2-4, 6-10 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.
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, 3-4, 6-10, 12 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis (US 5,900,229), Quadir (EP 1627664) and Kopolow (US 5,182,098), as evidenced by Merriam Webster (Emulsions) and Jennings (US 2009/0175804). Quadir, Kopolow and Jennings are newly cited.
Dupuis teaches cosmetic or dermatological compositions for treating skin or hair 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), 3-4 and 12(ii) : 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).
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.
However, Dupuis does not teach the Mw or the relative viscosity of the polymer.
Quadir teaches hair styling compositions (abs) and teaches the use of anionic fixing polymer having a weight average Mw ranging from 5000 to 5,000,000 including terpolymers of VP, acrylic acid and C1-C20 alkyl methyacrylates (i.e. lauryl methacrylate) [0099]. As evidenced by Jennings, the weight average Mw of terpolymers in cosmetics is typically expressed as daltons [0066].
Kopolow teaches terpolymer hair fixative comprising VP (abs). These terpolymers have a relative viscosity of about 2 to about 6 (Kopolow – claim 3).
It would have been prima facie obvious to modify the teachings of Dupuis with those of Quadir and Kopolow. One of skill in the art would have been motivated to formulate the terpolymer of Dupuis to have a Mw of 5000-5,000,000 daltons and a relative viscosity of between 2-6, as both Quadir and Kopolow teaches that these Mw and relative viscosities are suitable for terpolymers comprising VP which are used in hair care formulations and its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan.
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, 3-4, 6-10, 12, 13, 15 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis (US 5,900,229), Quadir (EP 1627664) and Kopolow (US 5,182,098), as evidenced by Merriam Webster (Emulsions) and Jennings (US 2009/0175804), as applied to claims 1, 3-4, 6-10, 12 and 16-19 above, and further in view of Simonnet (US 2004/0258644).
As discussed above, Dupuis makes obvious he limitations of claims 1, 3-4, 6-10, 12 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, 3-4, 6-10, 12, 16-19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dupuis (US 5,900,229), Quadir (EP 1627664) and Kopolow (US 5,182,098), as evidenced by Merriam Webster (Emulsions) and Jennings (US 2009/0175804), as applied to claims 1, 3-4, 6-10, 12 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, 3-4, 6-10, 12 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.
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.
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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
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