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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 6, 2026 has been entered.
Status of Claims
Claims 1, 4, 9, 11-13 and 15-17 are pending in this application. Claims 2-3, 5-8, 10 and 14 are canceled. Claim 17 is newly added. Claim 1 is amended.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 1, 4, 9, 11-13 and 15-16 under 35 U.S.C. 103 as being unpatentable over Kazuhisa et al. JP 05-117127 (5/14/1993) (10/4/2021 IDS) in view of WO 2017/014519 (1/26/2017)(“WO 2017”) is withdrawn.
New 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.
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, 4, 9, 11-13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kazuhisa et al. JP 05-117127 (5/14/1993) (10/4/2021 IDS) in view of WO 2017/014519 (1/26/2017)(“WO 2017”) and KR 101657630 (9/20/2016)(“KR”).
Kasuhisa et al. (Kazuhisa) teaches a fluorescent cosmetic that includes an inorganic phosphor such as a zinc oxide phosphor and also discloses an emulsion foundation that includes a zinc oxide phosphor, isostearic acid, stearic acid, and POE (10) stearyl ether. (See Abstract and (See [0005-10]). The zinc oxide phosphor reads on the zinc oxide phosphor in instant claims 1 and 17. The zinc oxide phosphor also reads on the (A) UV wavelength conversion substance called for in instant claim 1. The isostearic acid called for in claim 11 reads on the (E) dispersing agent called for in instant claim 1.
Kasuhisa teaches that by adding the zinc oxide phosphor the light resistance and safety are significantly improved in the fluorescent cosmetic. (See [0005]). This allows the fluoresce not to deteriorate while the fluorescent cosmetic is displayed in a store for a long time. The zinc oxide phosphor is present in an amount of 3% which falls within the 0.001 to 10% called for in instant claim 1. With respect to the ratio of the zinc oxide phosphor Kazuhisa teaches that the zinc oxide phosphor is present in an amount of 3% and with palmitic acid present in an amount of 2%, the ratio is 3/2 and 3/2 falls within the range of 0.3 to 100 of the blending ratio of UV wavelength conversion substance (A) to the organic oil-phase thickener (B) called for in instant claim 4.
Kazuhisa teaches that it is a cosmetic that can be an emulsion which is an emulsified cosmetic as called for in instant claim 12. Kazuhisa teaches that suitable hydrocarbons that may be included in the composition include silicone oil. (See [0009]). Kazuhisa also cites a UV absorbing agent as an example of a component that can be incorporated, it also suggests that the composition can be a sunscreen as called for in instant claim 13. A UV absorber is called for in instant claim 9. Isostearic acid is taught to be a natural pigment. (See [0009]). Isostearic acid is called for in instant claim 11.
Kazuhisa does not teach PEG-10 dimethicone and does not teach dextrin palmitate. These deficiencies are remedied by the teachings of WO 2017 and KR
WO 2017 teaches an ultraviolet blocking composition which does not contain an organic uv blocking agent and can thus be used on sensitive skin while also providing good feeling of use and spreadability. (See Abstract). The composition has a low viscosity and can exhibit high formulation stability while containing a high content or inorganic uv blocking agent. (See Abstract).
WO 2017 teaches that PEG-10 Dimethicone is a suitable silicone emulsifier of its composition. (See claim 7). PEG-10 Dimethicone can be present in an amount of from about 0.1 to 12 wt%. 0.1 to 12 wt% overlaps with the 0.1% to 20% called for in instant claim 1.
KR teaches a stick-type cosmetic sunscreen composition that is 10-20% silicone oil, 5-20% polar oil, 15-35 % organic ultraviolet blocking agent and 1-7 % of a gelling agent. The organic UV blocking agent can be octocrylene or ethylhexylmethyoxycinnamate. (See Abstract, page 2 and KR claim 1). The gelling agent can be dextrin palmitate. (See KR page 5 and claims 1-4). Dextrin palmitate is called for in instant claim 1. 1-7% overlaps with the 0.01 to 5% called for in instant claim 1. KR teaches that 1-7% gelling agent such as dextrin palmitate gives the composition appropriate strength and spreadability when applied to skin. (See page 7).
It would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the emulsion in Kazuhisa of stearic acid and POE (10) stearyl ether to use silicone oil hydrocarbon, isostearic acid as natural pigment, and use 3% zinc oxide phosphor UV absorber in order to have the emulsion cosmetic have sunscreen and UV absorption capabilities and to add 0.1 to 12% PEG-10 dimethicone taught by WO 2017 in order to have a suitable silicone emulsifier that can contribute to high formulation stability in uv blocking formulations as taught by WO 2017.
It would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the emulsion in Kazuhisa of stearic acid, POE (10) stearyl ether, silicone oil emollient, isostearic acid and 3% zinc oxide phosphor UV absorber to add 1-7% dextrin palmitate in order to have the emulsion cosmetic have a gelling agent with the ability to gel the sunscreen formulation and give the formulation strength and spreadability as taught by KR.
With respect to claim 15’s property of a cell activation effect, the prior art is silent as to this property. Kazuhisa in view of WO 2017 and KR, however, teach all of the claimed components in the same amounts (at the overlap of the ranges). Kazuhisa teaches an emulsion cosmetic with 3% zinc oxide phosphor. WO 2017 teaches from about 0.1 to 12 wt% PEG-10 Dimethicone. KR teaches an emulsion cosmetic with 1-7% dextrin palmitate.
A composition having the same components as those claimed will necessarily have the same properties as those claimed. See MPEP 2112.01[R-3]: “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
"[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020).
With respect to claim 16, Kazuhisa in view of WO 2017 and KR teaches all of the claimed components in the same amounts. Kazuhisa teaches an emulsion cosmetic with 3% zinc oxide phosphor. WO 2017 teaches from about 0.1 to 12 wt% PEG-10 Dimethicone. KR teaches an emulsion cosmetic with 1-7% dextrin palmitate. Kazuhisa also teaches that the fluorescence is in the visible region of 400 to 650 nm which overlaps with the 400 to 800 nm as called for in instant claim 16. (See [008]). Although Kazuhisa does not expressly teach the testing conditions that were used in determining that the fluorescence is in the visible region of 400 to 650 nm, the prior art teaches all of the claimed components in the same amounts. A composition having the same components as those claimed will necessarily have the same properties as those claimed. See MPEP 2112.01[R-3]: “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Additionally, the prior art teaches a composition that fluoresces. Kazuhisa teaches that its composition fluoresces, so the fluorescence is taught to be a results-effective variable and it would be no more than routine experimentation to experiment to arrive at the values claimed in claim 16. Kazuhisa teaches that it is a cosmetic which is an emulsion and an emulsion is called for in instant claim 16.
Response to Arguments
Applicants’ comments of June 12, 2026 have been considered carefully. Applicants note the amendments to the claims and where support can be found for the amendments.
Applicants note that new claim 17 further limits the UV wavelength conversion substance to those specifically used in the Examples. Applicants assert that the examples of the specification demonstrate the improved effects of the emulsifier composition when the (A) UV wavelength converting substances and (B) organic oil-phase thickeners are present in the composition in the claimed amounts. Specifically, the wavelength conversion function of the UV wavelength conversion substance was enhanced by adding the organic oil-phase thickeners. There is no teaching or suggestion of such an effect in Kazuhisa.
Kazuhisa teaches fluorescent cosmetic and improvements of the phosphors therein. The Office Action points out the use of stearic acid as a dispersant in Kazuhisa. Kazuhisa does not teach or suggest that the combination of (A) a UV wavelength converting substance and (B) an organic oil-phase thickener in the specified amounts leads to an improvement in the conversion function of the UV wavelength conversion substance. Therefore, a person of ordinary skill in the art would not arrive at the present claims based on the teachings of Kazuhisa. As amended, the present claims recite the following organic oil-phase thickeners: sucrose triacetate tetrastearate, dextrin palmitate, (behenic acid/eicosanedioic acid) glyceryl, N-lauroyl-L-glutamic acid dibutylamide and Polyamide-8. Kazuhisa does not teach or suggest the presently claimed organic oil-phase thickeners. Therefore, the combination of Kazuhisa and WO ‘519 would not lead to the presently amended claims.
Applicants also argue that a person of ordinary skill in the art would have had no motivation to combine Kazuhisa and WO ‘519. WO ‘519 teaches that silicone emulsifiers such as PEG-10 dimethicone are essential to prevent oil separation caused by the poor emulsifying power between inorganic sunscreens and silicone oil in the formulation. However, the oil phase of Example 5 of Kazuhisa (which was relied upon in the Office Action) consists of only hydrocarbon oils and ester oils and does not contain any silicone oil. Thus, a person of ordinary skill in the art would have had no motivation to add the silicone emulsifier of WO ‘519 into the emulsion of Kazuhisa.
Applicants’ arguments have been carefully considered and with respect to the prior art not teaching the recited organic oil-phase thickeners (sucrose triacetate tetrastearate, dextrin palmitate, (behenic acid/eicosanedioic acid) glyceryl, N-lauroyl-L-glutamic acid dibutylamide and Polyamide-8), the arguments are found to be persuasive in light of the amendments to the claims. The rejections above are withdrawn in light of the amendments to the claims.
The remaining arguments regarding the prior art are not found to be persuasive, however. Applicants’ arguments that a person of ordinary skill in the art would have had no motivation to combine Kazuhisa and WO ‘519 because WO ‘519 teaches that silicone emulsifiers such as PEG-10 dimethicone are essential to prevent oil separation caused by the poor emulsifying power between inorganic sunscreens and silicone oil in the formulation but the oil phase of cited Example 5 of Kazuhisa contains no silicone oil is not found to be persuasive. Kazuhisa teaches that silicone oil is a suitable conventionally known component for inclusion in its emulsion and is included in the emulsion as described in the rejection above. Specifically, Kazuhisa expressly teaches that suitable hydrocarbons that may be included in the composition include silicone oil. (See [0009]). Therefore, there would be motivation to add the silicone emulsifier PEG-10 dimethicone taught by WO ‘519 to prevent oil separation caused by the poor emulsifying power between inorganic sunscreens and silicone oil in the Kazuhisa formulation.
Applicants’ assertion of improvement of the conversion function of the UV wavelength substance is noted. However, it is not necessary that the prior art teach the same benefit or advantage that Applicants found for there to be a prima facie case of obviousness.
As described in the obviousness rejection above, it would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the emulsion in Kazuhisa of stearic acid and POE (10) stearyl ether to use silicone oil hydrocarbon, isostearic acid as natural pigment, and use 3% zinc oxide phosphor UV absorber in order to have the emulsion cosmetic have sunscreen and UV absorption capabilities and to add 0.1 to 12% PEG-10 dimethicone taught by WO 2017 in order to have a suitable silicone emulsifier that can contribute to high formulation stability in uv blocking formulations as taught by WO 2017.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. The purpose in this instance is to have an emulsion cosmetic that can fluoresce and be a sunscreen with UV absorption capabilities and to add 0.1 to 12% PEG-10 dimethicone taught by WO 2017 in order to have a suitable silicone emulsifier that can contribute to high formulation stability. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
As described in the rejection above, it would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the emulsion in Kazuhisa of stearic acid, POE (10) stearyl ether, silicone oil emollient, isostearic acid and 3% zinc oxide phosphor UV absorber to add 1-7% dextrin palmitate in order to have the emulsion cosmetic have a gelling agent with the ability to gel the sunscreen formulation and give the formulation strength and spreadability as taught by KR.
Conclusion
No claim is allowed.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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