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 .
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, 3, and 6 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 “a maximum amount of oil which is capable of being absorbed by the (B) lipophilic porous powder is greater than or equal to 100 percent by mass with respect to the (B) lipophilic porous powder”. This property of the lipophilic porous powder is not constant across different varieties of oil. Oga et al. discuss this phenomenon in their teachings of prior work to produce oil absorbing polymers (see JP-H06166725 - English translation referenced for citations, abstract). Here they detail absorbing polymers that absorb different oils, such as polar and non-polar oil, to differing degrees (see paragraph 5). In addition, Covabead® LH85 Technical Data Sheet (2013 – henceforth Covabead® LH85 TDS) details different levels of oil absorption of a crosslinked methyl methacrylate porous powder when tested with two different oils (see Tachon et al. - US PGPub No. 2015/0174048 – previously cited, see paragraphs 91-92). Since a single embodiment of the lipophilic porous powder could be both inside and outside the scope of the claims, depending on the oil employed for assessment, the metes and bounds of the claim are unclear.
Claims that are rejected but are not explicitly elaborated upon are also indefinite because they depend from an indefinite claim, but do not add clarity.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Kruse et al. (previously cited) in view of Tachon et al., Nishijima et al. (previously cited), Luettig et al. (previously cited) as evidenced by Ito et al. (previously cited) and Ramadan et al. (previously cited) as evidenced by Covabead® LH85 TDS.
Kruse et al. teach an oil in water cosmetic composition for improving and beautifying skin (see paragraphs 1-2; instant claim 9). An example is detailed that includes water at 41.1 wt%, dimethicone/vinyl dimethicone crosspolymer, methyl methacrylate crosspolymer (polymethyl methacrylate crosspolymer) at 1 wt%, glycerin, glyceryl stearate citrate (surfactant), cetyl alcohol (polar oil), butylene glycol at 7 wt%, and ethanol at 5 wt% (see paragraph 40 and paragraph 71 table formulation 1; Ramadan et al. paragraphs 98 and 102; instant specification paragraph 25; instant claim 1). Ito et al. describe glycerin as a water soluble thickener (see paragraph 8; instant claim 3). The water, butylene glycol, and ethanol together compose an aqueous medium in the composition at 53.1 wt% of the composition (as calculated by the examiner; see instant specification paragraphs 37-38). The ratio of methyl methacrylate crosspolymer to aqueous medium is 0.019 (as calculated by the examiner; instant claim 7). In addition, to glyceryl stearate citrate, Kruse et al. also teach other oil-in-water surfactants and they include PEG-20 glyceryl stearate (see paragraph 26). The methyl methacrylate crosspolymer is not explicitly described to be porous and a polyoxyethylene fatty acid glyceryl having an HLB ranging from 9 to 17 is not exemplified.
Tachon et al. teach pore hiding cosmetic compositions that include oil absorbing fillers to achieve this end (see abstract and paragraph 7). Crosslinked polymethylmethacrylate is particularly preferred in this role (see paragraph 78). Tachon et al. teach and exemplify porous crosslinked polymethylmethacrylate sold under the name Covabead® LH85 as an envisioned variety (see paragraphs 91-92 and example 1). Covabead® LH85 TDS details that this powder is a spherical methyl methacrylate crosspolymer and has a maximum oil absorption capacity of greater than 100 wt% for multiple oils (see sections 1 and 3; instant claim 1). Tachon et al. further teach the inclusion of this porous crosslinked polymethylmethacrylate filler as opposed to non-porous polymethylmethacrylate because it provided superior pore hiding, skin brightening, durability, and color when tested (see example 1 sample F1 vs sample F5). They go on to teach the oil absorbing filler component present at 0.1 to 20 wt% of the composition and water at 1 to 80 wt%, yielding a ratio of lipophilic powder to water of 0.00125 to 0.25 (see paragraphs 128 and 144). Silicone elastomers are also paired with the oil absorbing filler and are preferably silicone crosspolymers (see paragraphs 7 and 62). Tachon et al. also teach that the composition may be an oil-in-water emulsion (see paragraph 136).
Nishijima et al. teach oil-in-water preparations for skin that include a surfactant (see page 1 lines 13-15 and page 2 lines 82-85). These surfactants have an HLB of 8 to 14 and are envisioned to include polyoxyethylene mono fatty acid glyceryl compounds such as PEG-20 glyceryl stearate which has an HLB of 14 and PEG-15 glyceryl stearate which has an HLB of 13 (see page 4 lines 161-169). Luettig et al. teach that glyceryl stearate citrate has an HLB of 13 (see paragraph 67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the Covabead® LH85 porous crosslinked polymethyl methacrylate of Tachon et al. as the methyl methacrylate crosspolymer (porous lipophilic powder) of Kruse et al. because 1) it was known for use in cometic compositions, 2) it provides several benefits over other varieties of methyl methacrylate crosspolymers, and 3) it was known to be included with crosslinked siloxane elastomer in cosmetic preparations. This choice would have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome and as the application of the same technique to a similar product in order to yield the same improvement. Adjusting the proportions of the crosslinked porous polymethyl methacrylate powder within the range taught by Tachon et al. would follow. A proportionate adjustment of the other components or the water that is taught to QS the composition to accommodate the change would yield a range of ratios of crosslinked porous polymethylmethacrylate powder to aqueous medium that overlaps the claimed range. The teachings of Tachon et al. yield an overlapping range with this ratio range. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990)” (see MPEP 2144.05). It additionally would have been obvious to exchange PEG-15 glyceryl stearate for the glyceryl stearate citrate of Kruse et al. because a similar polyoxyethylene mono fatty acid glyceryl is also an envisioned surfactant taught by Kruse et al. and they have the same HLB value. This modification would have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome. Therefore claims 1 and 3 are obvious over Kruse et al. in view of Tachon et al., Nishijima et al., and Luettig et al. as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS.
Claims 1, 3, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kruse et al. in view of Tachon et al., Nishijima et al., and Luettig et al. as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS as applied to claims 1 and 3 above, and further in view of Flösser-Muller et al. (previously cited) as evidenced by Spaulding et al. (previously cited).
Kruse et al. in view of Tachon et al., Nishijima et al., and Luettig et al. as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS render obvious the limitations of instant claims 1 and 3. The modified example of Kruse et al. includes the UV filter, ethylhexyl triazone. A UV absorber that is also a polar oil is not exemplified.
Flösser-Muller et al. teach various UVB filters for topical application that include ethylhexyl salicylate and ethylhexyl triazone (see paragraphs 1 and 59). Ethylhexyl salicylate is a polar oil that is also a UV absorber (see Spaulding et al. paragraph 30 and instant specification paragraphs 59 and 61; instant claim 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to exchange ethylhexyl salicylate for the ethylhexyl triazone of the modified Kruse et al. composition because Flösser-Muller et al. teach them as alternative UVB filters. This modification would have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome. Therefore claims 1, 3, and 6 are obvious over Kruse et al. in view of Tachon et al., Nishijima et al., Luettig et al., and Flösser-Muller et al. as evidenced by Ito et al., Ramadan et al., Covabead® LH85 TDS, and Spauling et al.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Kruse et al. in view of Tachon et al., Nishijima et al., and Luettig et al. as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS as applied to claims 1 and 3 above, and further in view of Tachon et al. (US PGPub No. 2015/0190320 – henceforth Tachon B).
Kruse et al. in view of Tachon et al., Nishijima et al., and Luettig et al. as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS render obvious the limitations of instant claims 1 and 3, where an overlapping range of ratios of lipophilic porous powder to aqueous medium with that instantly claimed is detailed by Tachon et al. An instantly claimed ratio of lipophilic porous powder to aqueous medium is not explicitly exemplified.
Tachon B also teach pore hiding cosmetic compositions that include oil absorbing agent to achieve this end and also include a silicone elastomer (see abstract and paragraph 7). Porous crosslinked polymethylmethacrylate powder is taught as advantageous in this role and exemplified as that sold under the name Covabead® LH85 (see paragraphs 349 and 359-360 and table 4). Example 2 details an emulsion with Covabead® LH85 at 4 wt%, butylene glycol at 2 wt%, silicone elastomer, surfactant, oils, and water at 21 wt%. Alcohol is also listed as an ingredient, but its variety is not detailed such that it is clear whether it is water soluble. If only the water and butylene glycol are considered as the aqueous medium, the example provides a ratio of its lipophilic porous powder oil absorbing agent to aqueous medium of 0.17 (as calculated by the examiner). If the alcohol is considered part of the aqueous medium, the ratio becomes 0.15 (as calculated by the examiner). Tachon B also details a comparative composition that contains a non-porous polymethacrylate polymer powder with a lower oil absorption capacity than the Covabead® LH85, whose oil absorption capacity is detailed to be 120 ml/100 g (see paragraph 428 and table 4). The comparative composition produces an inferior performance in terms of pore hiding effect (see paragraphs 428-434 and table 4). Silicone elastomers paired with the oil absorbing filler are preferably silicone crosspolymers (see abstract and paragraphs 321 and 327). They go on to teach the oil absorbing agent component present at 2 to 20 wt% of the composition (see paragraph 368). Tachon et al. also teach that the composition may be an oil-in-water emulsion (see paragraph 382).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a ratio of components in light of Tachon B in the modified composition of Kruse because of the similarity in components and recognized benefit of the lipophilic porous powder in particular. Specifically, a ratio of the lipophilic porous powder to aqueous medium of about 0.15 would have been obvious. Therefore claims 1 and 3 are obvious over Kruse et al. in view of Tachon et al., Nishijima et al., Luettig et al., and Tachon B as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS.
Claims 1, 3, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kruse et al. in view of Tachon et al., Nishijima et al., Luettig et al., and Tachon B as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS as applied to claims 1 and 3 above, and further in view of Flösser-Muller et al. as evidenced by Spaulding et al.
Kruse et al. in view of Tachon et al., Nishijima et al., Luettig et al., and Tachon B as evidenced by Ito et al., Ramadan et al., and Covabead® LH85 TDS render obvious the limitations of instant claims 1 and 3. The modified example of Kruse et al. includes the UV filter, ethylhexyl triazone. A UV absorber that is also a polar oil is not exemplified.
Flösser-Muller et al. teach various UVB filters for topical application that include ethylhexyl salicylate and ethylhexyl triazone (see paragraphs 1 and 59). Ethylhexyl salicylate is a polar oil that is also a UV absorber (see Spaulding et al. paragraph 30 and instant specification paragraphs 59 and 61; instant claim 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to exchange ethylhexyl salicylate for the ethylhexyl triazone of the modified Kruse et al. composition because Flösser-Muller et al. teach them as alternative UVB filters. This modification would have been obvious as the simple substitution of one known element for another in order to yield a predictable outcome. Therefore claims 1, 3, and 6 are obvious over Kruse et al. in view of Tachon et al., Nishijima et al., Luettig et al., Tachon B, and Flösser-Muller et al. as evidenced by Ito et al., Ramadan et al., Covabead® LH85 TDS, and Spauling et al.
Response to Arguments
Applicant's arguments filed February 4, 2026 have been fully considered. In light of the amendment to the claims and remarks, the rejection over Kruse et al. in view of others is modified. The applicant’s arguments are unpersuasive.
The applicant argues that the behavior of the composition of table 2 in the specification which are devoid of the instantly claimed polar oil are still representative of the claimed composition because the lipophilic porous powder thickens the continuous phase of the claimed emulsion. This assertion is possible, perhaps under some circumstances, but there is no evidence to support its validity. The applicant is asserting that an unexpectedly superior outcome occurs; however, the demonstrated outcome is not shown to occur in claimed compositions nor has any evidence been provided that shows that the difference between the tested compositions and the claimed compositions has no impact on the presence of the phenomenon touted by the applicant as unexpected. The impact of the oil proportion on the viscosity of an oil-in-water emulsion cannot be ignored in all cases, given that the oil proportion can vary from very low levels such as less than 1 wt% to levels where it composes the majority of the composition. Therefore the showing does not include the claimed polar oil or limit its proportions in any way; thus it is not commensurate in scope with the current claims and is insufficient to overcome the prima facie case of obviousness.
The applicant also argues that Kruse et al. do not suggest increasing the ratio of crosslinked polymethyl methacrylate relative to water in their composition. While true, the teachings of Kruse et al. are not the sole source of guidance for the proportion of polymethyl methacrylate powder that is useful/beneficial to include in compositions that follow from their teachings. The rejections previously and currently rely upon a secondary reference to speak to the utility of the crosslinked polymethyl methacrylate, its porosity characteristics, and proportions that were known to be useful in cosmetic compositions like that of Kruse. Also, according to MPEP 2144 IV, “[t]he 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. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).” Therefore the combination of prior art teachings still point to the obviousness of including porous crosslinked polymethyl methacrylate at a claimed ration relative to the aqueous medium also present in the composition.
The applicant argues that the overlapping teachings of Tachon et al. are broad teachings that do not suggest the instantly claimed ratio of lipophilic porous powder to aqueous medium or the applicant’s observation about viscosity. As noted above, the applicant’s observation about viscosity has not been made on claimed compositions and the prior art is not required to recognize the same benefits as the applicant in order to render the claimed invention obvious. More than half the range of ratios of lipophilic porous powder to aqueous medium that results from the teachings of Tachon et al. meets the instantly claimed ratio range limitation. Thus the teachings are not excessively broad beyond the instantly claimed range. The applicant argues that the claimed ratio of lipophilic porous powder to aqueous medium is not mere routine optimization within an overlapping range. Tachon B illustrate that ratios in the claimed scope had already been employed for similar compositions that include crosslinked siloxane elastomers, surfactant and oil. Thus in the absence of persuasive evidence of unexpected results that is commensurate in scope with the claims, the claimed product remain obvious in light of Tachon et al. as well as Tachon B
Conclusion
No claim is 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 CARALYNNE E HELM whose telephone number is (571)270-3506. The examiner can normally be reached Mon-Fri 9-5.
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/CARALYNNE E HELM/Examiner, Art Unit 1615
/MELISSA S MERCIER/Primary Examiner, Art Unit 1615