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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/03/2026 has been entered.
Status of Claims
Amendments filed on 02/03/2026 is acknowledged.
Claim 1 is amended. Claims 3-4 and 9-14 remain cancelled.
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.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 recites “range of 1:0.01 500 : 0.01 500”, which should be “range of 1 : 0.01 ~ 500 : 0.01 ~ 500”, based on previously presented claim set of 09/16/2025.
Appropriate correction is required.
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 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kurashima et al. (WO2018088312, 05/17/2018, PTO-892), in view of Yu et al. (US20090068255, 03/12/2009).
Kurashima throughout the reference teaches cosmetic compositions preferably being used in cosmetics and skin external agents that are applied to or rubbed onto skin or hair (e.g., [0158]).
Regarding instant claims 1 and 5, Kurashima teaches that the composition can be in microgel or gel like form (e.g., [0004-0005]) having preferable feeling in use with suppressed stickiness and squeakiness (e.g., [0011]). Kurashima teaches that the composition can include PEG-240/HDI copolymer bis-decyltetradeceth-20 ether copolymer (e.g., [0059]) as associative thickener, and natural water-soluble polymers including guar gum, tamarind gum, xanthan gum, locust bean gum, pullulan (e.g., [0064]; [0087]), and celluloses, e.g., methylcellulose, ethyl cellulose, carboxymethyl cellulose, hydroxyethyl cellulose, hydroxypropyl cellulose, etc. (e.g., [0064]). Kurashima exemplifies in formulations such as Example 10 ([0153], Table 4) containing 1.5% PEG-240/HDI bis-decyltetradeceth-20 ether copolymer, 0.1% xanthan gum, exhibiting A grade of stability, hair-styling capability immediately after application, re-styling capability, B grade of fairly good non-stickiness and non-squeakiness (Evaluation criteria A-D, [0130]). Kurashima further teaches that as necessary, sequestrants or antioxidant aid such as ascorbic acid (e.g., [0092]; [0099]), or skin-whitening agents such as vitamin C, ascorbic acid glucoside, arbutin, kojic acid and the like (e.g., [0101]) can be included in the composition (corresponding to L-ascorbic acid derivative in instant claim 1).
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, OEG-240/HDI being nonionic synthetic water-soluble polymer, and cellulose or xanthan gum etc. being natural water-soluble polysaccharides are the compounds’ inherent properties.
The phrases of “excellent shape retention, feeling of use, and stability” in instant claim 5 are interpreted as properties of the composition. Kurashima teaches the composition can comprise the same ingredients as instantly claimed for skin care in gel form, thus the properties of the composition would necessarily present.
Regarding instant claim 6, Kurashima exemplifies in formulations such as Example 10 ([0153], Table 4) containing 1.5% PEG-240/HDI bis-decyltetradeceth-20 ether copolymer, 0.1% xanthan gum, resulting in the nonionic synthetic water-soluble polymer to natural water-soluble polysaccharide mass ratio as 15 : 1. Kurashima indicates that the other components such as vitamins, antioxidants, sequestrants are used as appropriate and necessary within the range of not inhibiting the effect of the composition (e.g., [0070]), while ascorbic acid can be a sequestrant [0092], antioxidant aid [0099], or skin whitening agents [0101].
Kurashima does not specify the amount of ascorbic acid or its derivative in the composition, and thus fails to teach the ratio of L- ascorbic acid derivative, the nonionic synthetic water-soluble polymer, and the natural water-soluble polysaccharide on a dry solid basis in the range as instant claim 6.
Yu throughout the reference teaches skin care compositions comprising matrix metalloproteinase inhibitors inhibiting the degradation of proteins found in the skin including collagen, elastin and other basement membrane and extracellular matrix protein (e.g., Abstract).
Yu teaches that the composition can comprise thickeners or viscosity modifier agents, e.g., PEG-240/HDI Copolymer BisDecyltetradeceth-20 Ether ([0125, Pg. 28, right Col.], in the range from about 1% to about 50% by weight ([0125], Pg. 31, left Col.); polymer, resin, or film-forming agent including carboxymethyl cellulose, dehydroxanthan gum, cellulose gum ([0126-0128], Pg. 32, right Col.), hydroxypropyl xanthan gum (Pg. 33, left Col) in the range from about 0.01% to about 20% by weight [0129]; preservatives including antioxidants such as ascorbic acid (e.g., [0116], Pg. 18, left Col. bottom) in amount ranges, e.g., approximately 0.1% to 1% [0116], resulting in ratio of ascorbic acid : thickener : natural polysaccharide 1 : (1-500) : (10-200), overlapping with claimed ratio of 1 : (0.01-500) : (0.01 -500) in instant claim 6. Yu exemplifies in face mask [0230] containing ascorbic acid 0.1% and xanthan gum 0.20%, resulting ratio of 1 : 2.
It would have been prima facie obvious for a person with ordinary skill in the art to combine the teaching of Yu and Kurashima to select specific ingredients into one embodiment and implement Yu’s teaching of the relative amounts of the ingredients to arrive at current invention. Because Kurashima already teaches the relative weight ratio of nonionic synthetic water-soluble polymer to natural water-soluble polysaccharide mass ratio as 15 : 1, and teaches that ascorbic acid can be added within the range of not inhibiting the effect of the composition, while Yu not only teaches the weight ranges of each component, but also provides example of ascorbic acid and xanthan gum is used in a ratio of 1:2 in the composition, meanwhile indicating vitamin C or derivatives can help stabilizing other ingredients in the composition (e.g., [0106]).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, prior art teaches overlapping amount ratios. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kurashima et al. (WO2018088312, 05/17/2018, PTO-892) in view of Yu et al. (US20090068255, 03/12/2009) as applied to claims 1 and 5-6 above, further in view of Nijakowski (US20160089324, 03/31/2016).
Kurashima and Yu teaches a cosmetic composition can comprise nonionic synthetic water-soluble polymer PEG-240/HDI bis-decyltetradeceth-20 ether copolymer, natural water-soluble polysaccharide (e.g., xanthan gum), antioxidant aid or sequestrant (e.g., ascorbic acid), or skin whitening agent (e.g., ascorbic acid glucoside), as discussed above in great detail and incorporated herein.
Kurashima and Yu does not teach L-ascorbic acid 2-glucoside as in instant claim 2.
Nijakowski discloses personal care water gel (Claim 16) compositions that exhibit adhesion and contraction of skin to smooth and flatten wrinkles and texture imperfections (see e.g., Abstract; claim 1).
Nijakowski describes the method for improving the condition of skin using a composition comprising at least one polysaccharide thickener (Claim 10) such as xanthan gum (Claim 11), dehydroxanthan gum, cellulose derivatives, crosslinked-xanthan gum, hydroxypropyl xanthan gum, undecelenoyl xanthan gum, guar gum, and others [0031], and at least one skin care active (Claim 13) selected from the group including vitamin C or ascorbic acid compounds (Claim 14). Nijakowski further defines that particularly preferred ascorbic acid compounds include 2-O-D-glucopyranosyl-L-ascorbic acid, which is an ester of ascorbic acid and glucose and usually referred to as L-ascorbic acid 2-glucoside or ascorbyl glucoside [0057].
It would be prima facie obvious for a person with ordinary skills of art prior to filing date to incorporate L-ascorbic acid 2-glucoside based on the teaching of Nijakowski into the composition taught by Kurashima and Yu to arrive at current invention. Because Nijakowski indicates that L-ascorbic acid 2-glucoside is the preferred ascorbic acid component in the composition, artisans in the field would have the motivation to choose this component over other ascorbic acid forms for reasonable expectations 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).
Claims 1, 5-6 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kurashima et al. (WO2018088312, 05/17/2018, PTO-892) in view of Yu et al. (US20090068255, 03/12/2009) as applied to claims 1 and 5-6 above, further in view of Omori et al (JP2001240526, 09/04/2001, Record of 02/06/2025).
Kurashima and Yu teaches a cosmetic composition can comprise nonionic synthetic water-soluble polymer PEG-240/HDI bis-decyltetradeceth-20 ether copolymer, natural water-soluble polysaccharide (e.g., xanthan gum), antioxidant aid or sequestrant (e.g., ascorbic acid), or skin whitening agent (e.g., ascorbic acid glucoside), as discussed above in great detail and incorporated herein.
Kurashima further teaches anionic surfactants such as alkyl ether sulfate ester salts, e.g., polyoxyethylene (POE)-lauryl sulfate triethanolamine, POE-lauryl sulfate, phosphate ester salt such as POE-oleylether phosphate, POE-alkyl ether carboxylic acid (e.g., [0081]), and ester oils suitable for the composition, such as 2-hexyldecyl adipate, diisopropyl sebacate, 2-ethylhexyl succinate, etc. (e.g., [0110]).
Yu further teaches suitable surfactants include polyoxyethylene 2 cetyl ether, polyoxyethylene 2 stearyl ether, polyoxyethylene 2 oleyl ether, polyoxyethylene 2 oleyl ether, etc. (e.g., [0132], Pg. 35, right column, top).
Kurashima and Yu does not teach the composition comprising a polyoxyethylene dicarboxylic acid ester as recited in instant claim 7, and the polyoxyethylene dicarboxylic acid ester species selected from diethoxyethyl succinate, diethoxyethyl adipate, and diethoxyethyl sebacate as recited in instant claim 8.
Omori teaches that polyoxyethylene dicarboxylic acid ester is used as a novel compounding ingredient for skin external preparation ingredient formula [0011]. Omori points out that polyoxyethylene dicarboxylic acid ester can improve the stability of a skin external preparation (especially lotion) system [0013] and promote the effects of formulation ingredients (Abstract). Omori indicates that polyoxyethylene dicarboxylic acid ester and a moisturizing agent in composition results in good feelings of use, particularly excellent smoothness, non-sticky feeling, and long-lasting moisturizing effects as intensive studies show [0005, 0072, 0073].
Omori provides the structural formula of PDA ([0073], Claim 1), and it further defines the polyoxyethylene dicarboxylic acid ester is diethoxyethyl succinate ([0073], Claim 2), as conventionally known existing product in hair cleaning agent or hair cosmetics, or bath products [0052].
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to incorporate polyoxyethylene dicarboxylic acid ester and its species taught by Omori with the composition of Kurashima and Yu to arrive at the claimed invention. Because Omori teaches that polyoxyethylene dicarboxylic acid ester can improve the stability of the skin care formula system, the feeling of use, and Kurashima is intended to improve the stability and feeling of the composition. 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 02/03/2026 have been fully considered but are moot because of the new ground of rejections does not rely on reference Kin (US20150374641) applied in the prior art rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claim is allowed.
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
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