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 Claims
Amendments filed on 07/21/2026 is acknowledged.
Claims 3-4 and 9-14 remain cancelled. Claims 1 and 6 are amended.
Claims 1-2 and 5-8 are pending and being examined on the merits herein.
Priority
The instant application, filed on 11/05/2021, is a 371 of PCT/JP2020/018452, filed on 05/01/2020, and claims foreign priority to JAPAN 2019-087909, filed on 05/07/2019.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 04/21/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 07/21/2026.
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 1-2 and 5-8 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.
Claim 1 recites “0.2 to 1% by mass”. It is unclear what calculation basis the percentage is based upon, e.g., total amount of polymers, or total amount of water-soluble polymers, or total amount of the composition.
Claim 6 recites “1 : 0.01 to 500 : 0.01 to 500”. It is unclear whether the ratio reads as 1 : 0.01 (ratio of the first pair agents) to 500 : 0.01 (ratio of the second pair of agents) to 500 (as compared to last agent); or it is supposed to mean 1 (referring to first agent) : (0.01 to 500) (referring to second agent) : (0.01 to 500) (referring to third agent). For the purpose of prosecution, it is interpreted as 1: (0.01-500) : (0.01-500), which clearly shows the three component comparisons in numerical format.
Claims 2, 5 and 7-8 are rejected accordingly because they are directly or indirectly dependent upon claim 1, while they do not clarify the issue addressed above in claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Dickhof et al. (US20170100314, 04/13/2017).
Dickhof throughout the reference teaches thickened skin care cosmetic compositions that aim to strengthen or rebuild the skin's natural function as a barrier against weather and environmental influences and against the loss of endogenous substances (e.g., water, natural fats, electrolytes), and to slow the natural aging process in order to give the skin a young and healthy appearance (e.g., [0002]).
For claims 1-2 and 5, Dickhof discloses the desirable cosmetic thickened skin care formulation with high active substance content and low emulsifier content, particularly in aqueous sera and gels form, is characterized by advantageous cosmetic properties including good cosmetic parameters such as skin feel, absorption and tackiness, good cosmetic compatibility, good applicability, and low tackiness (corresponding to feeling of use), and physical stability over a long time period as well and also under rigid conditions (e.g., long storage at elevated temperatures) (e.g., [0005-0006]; [0012]) (corresponding to instant claim 5). Dickhof teaches the cosmetic composition [0016] comprising at least one thickener (e.g., [0021]; [0108]), preferably a cellulose [0039], or organic thickener xanthan gum is preferred [0040] and xanthan gum is present at preferable amount in particular of 0.2 to 1.0% by weight [0127] (corresponding to water-soluble polysaccharide in instant claim 1 with same amount range as instant claim 1); at least one cosmetically active substance (e.g., [0022]; [0109]) preferentially used in the invention as skin-lightening active substance vitamin C or ascorbic acid (known as L-ascorbic acid in the field) (e.g., [0147]; [0048]), and ascorbyl glucoside (e.g., [0048]) (the same as L-ascorbic acid 2-glucoside known in field as recited in instant claim 2). Dickhof indicates that the thickener can be selected from the suitable agents including PEG-240/HDI copolymer bis-decyltetradeceth-20 ether [0113].
MPEP 2112.01.II states "[p]roducts 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, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, being nonionic synthetic water-soluble polymer or natural water-soluble polysaccharide is the property of the compound, e.g., PEG-240/HDI copolymer bis-decyltetradeceth-20 ether or xanthan gum, which has been taught by prior art, and the property would necessarily present.
For claim 6, Dickhof specifies that ascorbic acid and/or its aforementioned preferred derivatives and/or salts can be used in the cosmetic compositions of the invention preferably in amounts of 0.01 to 5.0% by weight, more preferably of 0.02 to 4.50% by weight, particularly preferably of 0.03 to 4.0% by weight, very particularly preferably of 0.04 to 3.50% by weight, and in particular of 0.05 to 3.0% by weight, the quantitative data referring to the total weight of the compositions (e.g.,[0175]). The compositions of the invention include xanthan gum in amounts of 0.05 to 2.0% by weight, preferably of 0.1 to 1.5% by weight, and in particular of 0.2 to 1.0% by weight (e.g, [0126-0127]). The thickener, e.g., PEG-240/HDI copolymer bis-decyltetradeceth-20 ether [0113], is included in the cosmetic compositions preferably in amounts of 0.05 to 3.0% by weight, preferably of 0.1 to 2.0% by weight and in particular of 0.2 to 1.5% by weight (e.g., [0112]). Therefore, the ratio of the three components as discussed above result in the most general ratio as (0.01-5.0) : (0.05-2.0) : (0.05 -3.0), resulting in ratio ranges such as 1 : 5 : 5, or 1 : 200 : 300, and many other ratios falling within the instantly claimed range in instant claim 6. Although prior art does not directly disclose the ratio range, however, the ratio can be expected to draw directly from prior art teaching. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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 (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 1-2 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Dickhof et al. (US20170100314, 04/13/2017) in view of Ohmori et al. (US20030091603, 05/15/2003, IDS of record 08/10/2023).
Dickhof teaches a thickened skin care gel composition that comprises L-ascorbic acid as skin-lightening active ingredient, nonionic synthetic water-soluble polymer PEG-240/HDI copolymer bis-decyltetradeceth-20 ether as thickener, organic water-soluble polysaccharide xanthan gum in a particular amount of 0.2 to 1.0%, to achieve the good cosmetic properties of the composition with good skin feeling, low tackiness, good cosmetic compatibility, good applicability, and stability, as discussed and applied to claims 1-2 and 5-6 above in detail, and incorporated herein.
Dickhof does not teach the composition further comprising a polyoxyethylene dicarboxylic acid ester as recited in instant claim 7, selected from one or more of diethoxyethyl succinate, diethoxyethyl adipate, and diethoxyethyl sebacate as recited in instant claim 8.
Ohmori throughout the reference teaches skin preparations for external use that achieve superior tactile sensation during use, smoothness in particular, without a sticky sensation, while maintaining a lasting moisture retaining effect by means of blending in a humectant and a polyoxyethylene dicarboxylate (e.g., Abstract).
Ohmori teaches that the best mode for carrying out the invention defined in claims 1-3 [0026] encompasses that the composition contains L-ascorbic acid (generally called vitamin C) and its derivative, for its strong reducing function, cellular respiration action, enzyme activation action, collagen formation action, as well as the melanin reducing action [0038]; polyoxyethylene dicarboxylate (corresponding to polyoxyethylene dicarboxylic acid ester in instant claim 7) as diethoxyethyl succinate preferred (corresponding to instant claim 8) due to its tactile sensation during use, because an endermic liniment with particularly superior smoothness and without a sticky sensation which has a lasting moisture effect can be obtained [0029]; natural water-soluble polymers such as xanthan gum, dextran, and pullulan [0060].
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate the teaching of Ohmori into the cosmetic skin care composition taught by Dickhof to arrive at current invention. Because both Dickhof and Ohmori aim to improve the sensational feeling of use of the cosmetic product on the skin external use, while Ohmori specifies that polyoxyethylene dicarboxylic acid esters, such as diethoxyethyl succinate has the advantage of generating tactile sensation during use, as an endermic liniment with particularly superior smoothness and without a sticky sensation, meanwhile a lasting moisture effect can be obtained, it would have motivated artisans to add such ingredient into the skin care composition for reasonable expectation of success. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Response to Arguments
Applicant’s arguments filed on 07/21/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the unexpected advantageous results arise from the specific combination of all three components in the claims, Dickhof, and Ohmori combined teaching, used in the new ground of rejections as presented above, teaches such advantageous results from the cosmetic composition comprising the same three components as instantly claimed.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
