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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 29 April 2025 has been entered.
Priority
The Applicant does not claim domestic benefit or foreign priority. Therefore, the effective filing date of the instant application is 28 April 2022.
Examiner’s Note
Applicant's amendments and arguments filed 10 April 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous office actions are hereby withdrawn.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. In the Applicant’s response, filed 10 April 2026, it is noted that no claims have been amended or canceled. Claims 19 and 20 have been newly added. Support for the new claim can be found in para. 26 of the specification. No new matter has been added.
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.
Claim(s) 1-9, 13-15, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inokuchi et al. (US 20100330132 A1), azom.com, and Chen et al. (Tannic acid: a crosslinker leading to versatile functional polymeric networks: a review, RSC Adv., 2022), as evidenced by myskinrecipes.com.
Inokuchi et al. teach a cosmetic composition and method of making the composition comprising an oil phase (a) and an aqueous phase (b), which may be in the form of a W/O/W or O/W/O multiple emulsion (entire teaching, para. 100), addressing the exterior fatty phase and interior aqueous phase of claim 1. The amount of water may be in an amount of 1-95% (para. 80), which addresses the amount of water in claim 1. The composition in the form of a multiple emulsion with an oil phase and aqueous phase is interpreted as comprising an internal fatty phase, addressing claim 7. The composition may include ethanol (c) (para. 81) in the amount of 0.1-98% (para. 81), pigments (f) (para. 20), tannic acid (d) (compound X) as a skin conditioning agent (para. 96), film-forming agent (para. 82), a surfactant (para. 53) such as polyglyceryl monoisostearate (e) (compound Y) (para. 230) in an amount of 3% and has a HLB value of around 5 as evidenced by myskinrecipes.com, and humectants (para. 88), addressing claims 1-6, 8, 9, and 13. The emulsion composition comprising (1) 0.1-95% (para. 72) tannic acid (compound X), (1) 3% polyglyceryl monoisostearate (compound Y), a fatty phase as the fatty compound, pigment(s), and ethanol addresses the limitations of claims 14 and 15. Skin conditioning agents are additives that may be used singly or in combination as desired (para. 72), where another additive such as fragrance (para. 88) may be used in an amount which is enough (para. 230), which is interpreted to address the weight limitation of claim 8. Additionally, Inokuchi et al. teach that depending on the composition, the various components, such as additives, may be in an amount of 0.1-95% (para. 72). The composition meant for skin is interpreted as cosmetically or dermatologically acceptable, addressing the limitation in claims 1 and 14.
Inokuchi does not teach an exact combination of a fatty phase, water phase, polyglyceryl monoisostearate, tannic acid, pigments, humectants, and ethanol in claim 1. Inokuchi also does not specifically teach that the (3) viscosity, yield stress, and shear modulus would be higher than other emulsions that lack compound X or Y in claims 1 and 18, or the limitation regarding the (2) hydrogen bonding in claims 1 and 14.
Azom.com suggests that emulsion cosmetics that have a higher viscosity may prevent suspended particles from settling and provides good stability (pg. 1). Higher yield stress may also resist settling and will be more stable (Figure 3, pg. 2).
In regards to selecting a combination of a fatty phase, water phase, polyglyceryl monoisostearate, tannic acid, pigments, humectants, and ethanol, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various
combination of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Inokuchi teaches a topical skin composition comprising ethanol, pigments, tannic acid, a film-forming agent, and polyglyceryl monoisostearate, whereas the claimed invention is directed towards an emulsion composition comprising compound X and compound Y, a pigment, a fatty phase, an internal aqueous phase, and a C2-C5 alcohol. Since Inokuchi teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
In regards to the limitation of (2) hydrogen bonding forming between the polyphenol compound X and compound Y in claims 1 and 14, Chen teaches that tannic acid easily hydrogen bonds due to its polyhydric phenol structure (pg. 7690). Additionally, it is noted that “products of identical chemical composition cannot have mutually exclusive properties.” 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) (see MPEP 2112.01 (II)).
Since Inokuchi does not specifically teach that their composition has (3) higher rheological properties in claims 1 and 18, one of ordinary skill in the art would have been motivated to increase the viscosity, yield stress, and shear modulus of their composition using azom.com’s teaching. Azom.com’s teaching suggests that having higher rheological properties can increase the stability and provide more favorable storage and textural properties of the emulsion compositions. Additionally, the limitation that the viscosity, yield stress, and shear modulus are higher in comparison to the emulsion composition which lacks compounds X, Y, and both X and Y in instant claims 1 and 18 is interpreted as a functional property of the composition. Since the properties cannot be separated from the composition and if the components are present, then the composition will necessarily have the effect, based on the broadest reasonable interpretation of a system claim having a structure that performs a function (see MPEP 2111.04 II).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, thus addressing the weight % in instant claims 3, 8, and 15. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
Claim(s) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inokuchi et al. (US 20100330132 A1), azom.com, Chen et al. (Tannic acid: a crosslinker leading to versatile functional polymeric networks: a review, RSC Adv., 2022), and Ali et al. (Relationship between sensorial and physical characteristics of topical creams: A comparative study on effects of excipients, International Journal of Pharmaceutics, 2022) (available online 21 December 2021), as evidenced by myskinrecipes.com.
In regards to claim(s) 1-9, 13-15, 18, Inokuchi et al., as applied supra, is herein applied in its entirety for its teachings of a multiple emulsion cosmetic composition comprising a fatty phase and an aqueous phase.
Inokuchi et al. do not teach shear modulus and yield stress values for their emulsion composition in claims 10-12, 16, and 17.
Ali et al. teach yield stress values and shear modulus values for different topical cosmetic creams (entire teaching, pg. 2). The yield stress values range from at least 16.8 Pa and the shear modulus values (G’) range from at least over 400 Pa (pg. 8, Table 4).
In regards to claims 10-12, it would have been prima facie obvious to a person of ordinary skill in the art to use the emulsion composition comprising a fatty phase, aqueous phase, ethanol, tannic acid, polyglyceryl monostearate, and a pigment from Inokuchi et al. with the teaching that typical shear modulus and yield stress values may be at least 400 Pa and 16.8 Pa, respectively, for cosmetic compositions such as topical creams. A person of ordinary skill in the art would have been motivated to combine these teachings because Inokuchi et al. demonstrate an emulsion cosmetic composition comprising aqueous and fatty phases and Ali et al. demonstrate various cosmetic compositions with different values for rheological properties, such as shear modulus and yield stress, that are representative of several types of topical creams. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
In regards to claims 16 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the emulsion composition/method comprising a fatty phase, aqueous phase, ethanol, tannic acid, polyglyceryl monostearate, and a pigment from Inokuchi et al., with the teaching of a shear modulus value and a yield stress value for topical cosmetic creams from Ali et al. to obtain an emulsion composition and method with these particular rheological parameters. A person of ordinary skill in the art would have been motivated to combine these teachings because Inokuchi et al. show that their invention is directed towards a water and oil cosmetic emulsion, and Ali et al. demonstrate a shear modulus value of over 400 Pa and a yield stress value over 16.8 Pa for use in a cosmetic topical cream, thus addressing instant claims 16 and 17. Further, section 2144.06 of the MPEP states the following: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
Claim(s) 1-9, 13-15, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (JP 2016020326 A; machine translation cited), Inokuchi et al. (US 20100330132 A1), azom.com, and Chen et al. (Tannic acid: a crosslinker leading to versatile functional polymeric networks: a review, RSC Adv., 2022), as evidenced by myskinrecipes.com.
Fukushima et al. teach an (a, b) oil-in-water or water-in-oil emulsion (pg. 17) skin composition and method of making said composition (abs, pg. 18) that may comprise (c) ethanol (pg. 17), tannic acid (d) (compound X) (pg. 17), (e) polyglyceryl monoisostearate (compound Y) (HLB value of around 5 as evidenced by myskinrecipes.com) (pg. 10), and (f) pigments (pg. 14). In one embodiment, the amount of water content of the formulation may be 20-95% (pg. 17), thus far addressing claims 2, 4-7, 13, and partially claims 1 and 14. The composition may further include a thickener (pg. 13), which is interpreted as a rheology modifier, addressing claim 9. The pH range for the composition may be from 3-8 (pg. 18), addressing claims 19 and 20.
Fukushima does not specifically teach the amounts of components in claims 1, 3, 8, 14, and 15. Fukushima does not teach an exact combination of a fatty phase, water phase, polyglyceryl monoisostearate, tannic acid, pigments, humectants, and ethanol in claim 1. Fukushima also does not specifically teach that the (3) viscosity, yield stress, and shear modulus would be higher than other emulsions that lack compound X or Y in claims 1 and 18, or the limitation regarding the (2) hydrogen bonding in claims 1 and 14.
Azom.com suggests that emulsion cosmetics that have a higher viscosity may prevent suspended particles from settling and provides good stability (pg. 1). Higher yield stress may also resist settling and will be more stable (Figure 3, pg. 2).
In regards to selecting a combination of a fatty phase, water phase, polyglyceryl monoisostearate, tannic acid, pigments, rheology modifier, and ethanol, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various
combination of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Fukushima teaches an emulsion skin composition comprising ethanol, pigments, tannic acid, a rheology modifier, and polyglyceryl monoisostearate, whereas the claimed invention is directed towards an emulsion composition comprising compound X and compound Y, a pigment, a fatty phase, an internal aqueous phase, and, optionally, a C2-C5 alcohol. Since Fukushima teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
In regards to the limitation of (2) hydrogen bonding forming between the polyphenol compound X and compound Y in claims 1 and 14, Chen teaches that tannic acid easily hydrogen bonds due to its polyhydric phenol structure (pg. 7690). Additionally, it is noted that “products of identical chemical composition cannot have mutually exclusive properties.” 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) (see MPEP 2112.01 (II)).
Fukushima does not specifically teach that their composition has (3) higher rheological properties in claims 1 and 18, but does teach a moderate viscosity and flexibility to spread, along with a viscosity range of 1000-200,000 mPas (pgs. 10-11). Therefore, one of ordinary skill in the art would have been motivated to increase the viscosity, yield stress, and shear modulus of their composition using azom.com’s teaching. Azom.com’s teaching suggests that having higher rheological properties can increase the stability and provide more favorable storage and textural properties of the emulsion compositions. Additionally, the limitation that the viscosity, yield stress, and shear modulus are higher in comparison to the emulsion composition which lacks compounds X, Y, and both X and Y in instant claims 1 and 18 is interpreted as a functional property of the composition. Since the properties cannot be separated from the composition and if the components are present, then the composition will necessarily have the effect, based on the broadest reasonable interpretation of a system claim having a structure that performs a function (see MPEP 2111.04 II).
In regards to the amounts of components in claims 1, 3, 8, 14 and 15, Inokuchi teaches 1-95% of water (para. 80), 0.1-98% of ethanol (para. 81), pigments (para. 20), 0.1-95% of tannic acid (compound X) (para. 72), 3% of polyglyceryl monoisostearate (compound Y) (para. 230). That being said and in lieu of objective evidence of unexpected results, the amounts can be viewed as a variable that achieves the recognized result of successfully making the emulsion composition, which a skilled artisan would have been easily motivated to modify and adjust based on the broad teachings of Inokuchi. The optimum or workable range of amounts can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration, such as unexpected results, that would render the optimized amounts of components as nonobvious.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (JP 2016020326 A; machine translation cited), Inokuchi et al. (US 20100330132 A1), azom.com, Chen et al. (Tannic acid: a crosslinker leading to versatile functional polymeric networks: a review, RSC Adv., 2022), and Ali et al. (Relationship between sensorial and physical characteristics of topical creams: A comparative study on effects of excipients, International Journal of Pharmaceutics, 2022) (available online 21 December 2021), as evidenced by myskinrecipes.com..
In regards to claim(s) 1-9, 13-15, 18-20, Fukushima et al., as applied supra, is herein applied in its entirety for its teachings of a multiple emulsion cosmetic composition comprising a fatty phase and an aqueous phase.
Fukushima does not teach shear modulus and yield stress values for their emulsion composition in claims 10-12, 16, and 17.
Ali et al. teach yield stress values and shear modulus values for different topical cosmetic creams (entire teaching, pg. 2). The yield stress values range from at least 16.8 Pa and the shear modulus values (G’) range from at least over 400 Pa (pg. 8, Table 4).
In regards to claims 10-12, it would have been prima facie obvious to a person of ordinary skill in the art to use the emulsion composition comprising a fatty phase, aqueous phase, ethanol, tannic acid, polyglyceryl monostearate, and a pigment from Fukushima with the teaching that typical shear modulus and yield stress values may be at least 400 Pa and 16.8 Pa, respectively, for cosmetic compositions such as topical creams. A person of ordinary skill in the art would have been motivated to combine these teachings because Fukushima teaches an emulsion cosmetic composition comprising aqueous and fatty phases and Ali teaches various cosmetic compositions with different values for rheological properties, such as shear modulus and yield stress, that are representative of several types of topical creams. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
In regards to claims 16 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the emulsion composition/method comprising a fatty phase, aqueous phase, ethanol, tannic acid, polyglyceryl monoisostearate, and a pigment from Fukushima with the teaching of a shear modulus value and a yield stress value for topical cosmetic creams from Ali to obtain an emulsion composition and method with these particular rheological parameters. A person of ordinary skill in the art would have been motivated to combine these teachings because Fukushima show that their invention is directed towards a water and oil cosmetic emulsion, and Ali teaches a shear modulus value of over 400 Pa and a yield stress value over 16.8 Pa for use in a cosmetic topical cream, thus addressing instant claims 16 and 17. Furthermore, section 2144.06 of the MPEP states the following: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
Response to Arguments
Applicant's arguments filed 10 April 2026 have been fully considered but they are not persuasive.
The Applicant argues that one of ordinary skill in the art would not have been led to use Chen’s teaching because Inokuchi uses tannic acid as an active agent and Chen uses tannic acid as a complexing crosslinker for other compounds (Remarks, pgs. 6-7).
Applicant’s argument is not found persuasive. In regards to Inokuchi’s use of tannic acid from a long list of options, it is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Furthermore, Chen teaches that tannic acid is able to “complex or crosslink macromolecules,” which includes hydrogen bonding and other types of bonding and interactions (pg. 7690). Therefore, Chen does not exclusively use tannic acid as a crosslinking or complexing agent. It is also broadly interpreted that tannic acid will easily hydrogen bond due to its polyhydric phenol structure and that this type of interaction will inherently and necessarily occur in the presence of polyglyceryl monoisostearate. Additionally, it is noted that “products of identical chemical composition cannot have mutually exclusive properties.” 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) (see MPEP 2112.01 (II)).
The Applicant argues that the art does not teach or suggest the limitations recited in instant claim 1 (Remarks, pgs. 8-9).
Azom.com’s teaching is used to generally teach that emulsion cosmetics that have a higher viscosity may prevent suspended particles from settling and provides good stability (pg. 1). Higher yield stress may also resist settling and will be more stable (Figure 3, pg. 2). Therefore, one of ordinary skill in the art would have been sufficiently motivated to increase the viscosity, yield stress, and shear modulus of their composition using azom.com’s teaching. Azom.com’s teaching suggests that having higher rheological properties can increase the stability and provide more favorable storage and textural properties of the emulsion compositions. Additionally, the limitation that the viscosity, yield stress, and shear modulus are higher in comparison to the emulsion composition which lacks compounds X, Y, and both X and Y in instant claims 1 and 18 is interpreted as a functional property of the composition. Since the properties cannot be separated from the composition and if the components are present, then the composition will necessarily have the effect, based on the broadest reasonable interpretation of a system claim having a structure that performs a function (see MPEP 2111.04 II).
The Applicant teaches that the art does not provide motivation to modify Inokuchi’s composition containing both compounds X and Y to result in the claimed invention (Remarks, pg. 9).
Applicant’s argument is not found persuasive. As stated previously, Chen’s teaching is broadly interpreted such that tannic acid will easily hydrogen bond due to its polyhydric phenol structure and that this type of interaction will inherently and necessarily occur in the presence of polyglyceryl monoisostearate. It is also further noted that “products of identical chemical composition cannot have mutually exclusive properties.” 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) (see MPEP 2112.01 (II)).
In regards to the rheological properties and shear modulus, a skilled artisan would have been sufficiently motivated to increase the viscosity, yield stress, and shear modulus of their composition using azom.com’s teaching. Azom.com’s teaching suggests that having higher rheological properties can increase the stability and provide more favorable storage and textural properties of the emulsion compositions. Furthermore, the limitation that the viscosity, yield stress, and shear modulus are higher in comparison to the emulsion composition which lacks compounds X, Y, and both X and Y in instant claims 1 and 18 is interpreted as a functional property of the composition. Since the properties cannot be separated from the composition and if the components are present, then the composition will necessarily have the effect, based on the broadest reasonable interpretation of a system claim having a structure that performs a function (see MPEP 2111.04 II).
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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