-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 .
Applicant’s response dated September 8, 2025 is acknowledged.
Priority
This application is a 371 of PCT/JP2020/036600 filed on 09/28/2020, which claims
foreign priority in Japanese application JP2019-183252 filed on 10/03/2019.
Claim Status
Claims 1-16 are pending and examined. Claims 1, 4, 5, 11, 13, and 15 were amended.
New Claim Rejections – 35 USC § 112
Necessitated by Amendment
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 4, 5, 11, 13, and 15 were amended “wherein the unmodified cellulose comprises cellulose in which hydroxyl groups on the surface of the cellulose has not been modified prior to defibration and cellulose that has not been mixed with carboxylated cellulose prior to defibration”. The limitation “cellulose that has not been mixed with carboxylated cellulose prior to defibration” is not supported in the application as filed.
Depending claims are rejected because the claims depend from a base claim that contains new matter which is not excluded by the dependent claims.
In the remarks dated September 8, 2025, applicant cited paragraphs 8, 37, 51, and 101 of the specification for support. These paragraphs and the rest of the application were fully reviewed, however they do not provide support to the limitation.
Maintained and Modified Claim Rejections — 35 USC § 103
Necessitated by Amendment
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Florence (EP 1057477 Al Published December 6, 2000 — English language translation appended thereto).
The claims encompass an emulsion and a method of making an emulsion.
The teachings of Florence are related to an oil in water (O/W) emulsion comprising cellulose fibers of length above one micron and ratio of length to diameter above 30 (Abstract). The purpose of cellulose fibrils is for stabilization of the emulsion (page 2 first paragraph in the Description). The objective is to produce a stable O/W emulsion containing no emulsifying surfactant conventionally used in O/W emulsions (page 3 first full paragraph). Fibril diameter ranges from 2 to 100 nm (page 3 eight full paragraph). The composition contains 0.05-20% of active material by weight of cellulose nanofibrils relative to the total weight of the composition (page 4 third full paragraph). The oily phase of the composition represents from 10 to 40% by weight relative to the total weight of the composition (page 4 fourth full paragraph). The oily phase can consist of all fatty substances and in particular oils (page 4 fifth full paragraph). Oils include 2-ethylhexyl palmitate, isopropyl myristate, isononyl isononanoate, cetearyl octanoate, and fatty acids (page 4 sixth full paragraph). In one embodiment, the composition comprises 15% by weight of mineral oil (page 4 nineth full paragraph). The aqueous phase generally constitutes from 60 to 90% by weight relative to the total weight of the composition (page 4 tenth full paragraph). Page 6 teaches 3 examples of compositions prepared by making an aqueous phase followed by adding an oily phase thereto. Example 1 specifically teaches using cellulose nanofibrils.
Regarding claim 1, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed an oil in water emulsion comprising 10-40 wt. % of on oil phase dispersed in 60-90 wt. % of an aqueous phase wherein the oil phase comprises a mineral oil in the concentration of 15 wt. relative to the total weight of the composition, and isopropyl myristate, with a reasonable expectation of success because Florence teaches an oil in water emulsion comprising 10-40 wt. % of on oil phase dispersed in 60-90 wt. % of an aqueous phase wherein the oil phase comprises a mineral oil in the concentration of 15 wt. relative to the total weight of the composition, and isopropyl myristate.
The claimed emulsion is obvious because the O/W emulsion taught by Florence contains all of the claimed elements. Mineral oil meets the limitation that requires an oil component. The aqueous phase meets the limitation that requires an aqueous dispersion medium. Isopropyl myristate meets the limitation that requires an emulsifier, as evidenced by dependent claim 2 which states that the emulsifier is selected from a fatty acid ester and isopropyl myristate is a fatty acid ester. Additionally, Florence teaches fatty acids in the oil phase, which also meet the limitation that requires an emulsifier as evidenced by claim 2 which states that the emulsifier comprises a fatty acid. The examiner acknowledges that Florence teaches that compositions do not comprise conventional emulsifying surfactants, however the claimed emulsifiers are defined as fatty acids and fatty acid esters which are present in Florence’s compositions. Thus, Florence meets the claimed emulsifier limitations. Cellulose nanofibers meet the limitation that requires cellulose nanofibers. The claim describes the cellulose nanofibers as being obtained by defibrating unmodified cellulose, which is a product by process limitation. Florence’s
nanofibrillar cellulose could have been obtained by the claimed process absent evidence to the contrary. Florence teaches that nanofibers stabilize the emulsion.
The oil phase contains the mineral oil and isopropyl myristate and the oil phase is present in a concentration of 10-40 wt. % relative to the total weight of the composition. Mineral oil is present in a concentration of 15 wt. %, thus isopropyl myristate would have been present as the remainder of the oil phase, which would be present in a concentration of up to 25 wt. % as long as the total concentration of oil phase does not exceed 40 wt. %. The claimed range of emulsifier is obvious because it overlaps with the prior art range.
Regarding claim 2, Florence teaches fatty acids and fatty acid esters.
Regarding concentration ranges of cellulose nanofibers in claims 1, 3, 4, 5, and 6, it would have been obvious to have formed the composition by including cellulose nanofibers in the composition in a concentration of 0.05-20% of active material by weight relative to the total weight of the composition because Florence teaches said concentration range as suitable for making the emulsion. It would have been reasonable to interpret Florence’s teaching of active material when referring to cellulose nanofibers to mean cellulose nanofibers that do not contain water. The claimed concentration ranges of a solid content of the cellulose nanofibers and a content of the cellulose nanofibers in terms of absolute dry solid are obvious because the claimed ranges overlap with 0.05-20 wt. %.
The composition contains 10-40 wt. % of on oil phase comprising isopropyl myristate and 15 wt. % is mineral oil. Thus, isopropyl myristate is present in a concentration of up to 25 wt. %. The claimed concentration range of emulsifier is obvious because it overlaps with a range of up to 25 wt. %. The claimed content of cellulose nanofibers being more than 2 mass % of the
content of emulsifier is obvious because Florence teaches ranges of the cellulose nanofibers and emulsifier which overlaps with the claimed range.
Regarding claim 4, it would have been obvious to have formed a cosmetic composition with the emulsion, with a reasonable expectation of success because Florence teaches that the emulsion can constitute a cosmetic composition (page 5 fifth full paragraph).
Regarding claim 5, it would have been obvious to have formed the emulsion by preparing the oil phase, preparing the aqueous phase, combining the two phases, and homogenizing to form the emulsion, with a reasonable expectation of success because Florence teaches preparing an oil phase, preparing an aqueous phase, combining the phases, and homogenizing.
It would have been obvious to have added the cellulose nanofibers to the aqueous phase because Florence teaches adding cellulose nanofibers to the aqueous phase. The claim describes the cellulose nanofibers as being obtained by defibrating unmodified cellulose, which is a product by process limitation. Florence’s nanofibrillar cellulose could have been obtained by the claimed process absent evidence to the contrary.
It would have been obvious to have added isopropyl myristate, or fatty acids, to the oil phase with a reasonable expectation of success because isopropyl myristate is described as an oily component.
Combining prior art elements according to known methods to obtain predictable results supports obviousness.
Claim 7 requires the cellulose fibers to have a degree of crystallinity of at least 55%. It would have been obvious to have used cellulose fibrils having a degree of crystallinity of 50% or less, with a reasonable expectation of success because Florence teaches cellulose fibers having a preferred degree of crystallinity of 50% or less (page 3). The claimed range of the degree of
crystallinity “at least 55%” is obvious over Florence’s preferred range of “50% and less” because end points of the ranges are close enough in number that a person skilled in the art would have expected the ranges to have the same properties. MPEP 2144.05. Paragraphs 0064-0067 of the specification address degree of crystallinity, which is described by preferred ranges of 50% or higher, 55% or higher, 90% or lower, and 86% or lower. With the degree of crystallinity of the CNF within the above range, the cellulose nanofibers are hardly affected physically or chemically by materials other than cellulose used in the emulsification, and maintenance of the emulsion stability is facilitated. Florence teaches that cellulose fibers were used to stabilize oil- in-water emulsions without surfactant, and the emulsion remains stable over time at room temperature or higher (page 3). In view of these teachings, it is apparent that degree of crystallinity of cellulose fibers is not a critical feature. The specification recites preferred ranges, but does not provide any evidence that any one of the ranges is critical. Furthermore, Florence teaches that cellulose fibrils are preferably amorphous, that is, they preferably have a lower crystallinity level or equal to 50%. This is a teaching of a preferred embodiment. Everywhere else in the reference, cellulose fibrils are not limited by a degree of crystallinity. Under broadest reasonable interpretation of Florence, it would have been reasonable to interpret cellulose fibrils to encompass embodiments of cellulose fibrils having a degree of crystallinity greater than 50% because a reference is not limited by its preferred embodiments.
Claims 1, 4, and 5 were amended to describe the unmodified cellulose as a product by process requiring “wherein the unmodified cellulose comprises cellulose in which hydroxyl groups on the surface of the cellulose has not been modified prior to defibration and cellulose that has not been mixed with carboxylated cellulose prior to defibration”. Florence teaches obtaining the cellulose fibrils by ether mechanical or chemical extraction from plants or algae or by bacterial fermentation (bottom of third page). The cellulose fibrils can be used as which or modified (paragraph bridging pages 3-4). In view of this teaching, it is apparent that Florence intended to use cellulose fibrils as they are or the fibrils can be modified. Therefore, it would have been obvious to have used unmodified cellulose fibrils where the cellulose is as is, which meets the claimed product by process that excludes cellulose fibrils modified at surface hydroxyl groups and cellulose mixed with carboxylate cellulose prior to defibration.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Florence as applied to claims 1-7 above, and further in view of Nuopponen (US 2018/0094081 A1 Published April 5, 2018).
The claims further define the compositions of claims 8 and 9 and the method of claim 5.
Florence does not teach a degree of polymerization of the cellulose fibers.
The teachings of Nuopponen are related to nanofibrillar cellulose and uses thereof (Abstract). The nanofibrillar cellulose is suitable for use in or as a cosmetic (paragraph 0015). A nanofibrillar cellulose has an average degree of polymerization greater than 1000. Preferably the average degree of polymerization (DP) of the nanofibrillar cellulose is greater than 1150 or 1200, preferably greater than 1300 or 1400, more preferably greater than 1500, 1600, 1700, or 1800 (paragraph 0049).
The teachings of Florence and Nuopponen are related to nanofibrillar cellulose intended for use in cosmetic compositions, and it would have been obvious to have combined them because they are in the same field of endeavor. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have selected nanofibrillar cellulose having a degree of polymerization of greater than 1000, with a reasonable expectation of success because it was known from Nuopponen that nanofibrillar cellulose having a degree of polymerization greater than 1000 is suitable for use in a cosmetic composition. The claimed range are obvious because they overlap with greater than 1000. The selection of a known material based on its suitability for its intended purpose supports obviousness.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Collin (US 2002/0192251 Al Published December 19, 2002).
The claims encompass an emulsion and a method of making thereof.
The teachings of Collin are related to cosmetic compositions comprising cellulose fibrils (Abstract). The term cellulose fibrils includes both nanofibrils and microfibrils (paragraph 0016).
The composition comprises cellulose fibrils in a concentration from 0.01 to 5% by weight with respect to total weight of the composition (paragraph 0022). The aqueous medium of the composition can essentially consist of water (paragraph 0034). The water is present in a concentration of 10-60 wt. % (paragraph 0035). The composition comprises one or more oils (paragraph 0045). The composition comprises an emulsifier in a concentration of 2-30 wt. % (paragraph 0065). Surfactants include nonionic surfactants comprising fatty acids, esters of fatty acids and sucrose (paragraphs 0066 and 0067). Use is made of surfactants which can made O/W emulsion (paragraph 0069).
Regarding claim 1, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed an oil in water emulsion comprising an oil, an aqueous phase, a nonionic emulsifier in a concentration of 2-30 wt. %, and 0.01 to 5% by weight of cellulose nanofibers, with a reasonable expectation of success because Collin teaches a composition comprising an oil, an aqueous component, a nonionic emulsifier in a concentration of 2-30 wt. %, and 0.01 to 5% by weight of cellulose nanofibers where Collin specifically teaches using an emulsifier that forms an O/W emulsion. The claimed composition is obvious because Collin’s composition contains all of the claimed components. The claimed amount of emulsifier is obvious because it overlaps with 2-30 wt. %. The claimed amount of cellulose nanofibers is obvious because it overlaps with 0.01 to 5% by weight. The claim describes the cellulose nanofibers as being obtained by defibrating unmodified cellulose, which is a product by process limitation. Collin’s cellulose nanofibers could have been obtained by the claimed process absent evidence to the contrary. It would have been reasonable to expect the cellulose nanofibers to stabilize the emulsion because Collin’s composition is structurally the same as claimed composition.
Regarding claim 2, it would have been obvious to have selected an emulsifier from fatty acids and esters of fatty acids and sucrose, with a reasonable expectation of success because Collin teaches these as suitable nonionic emulsifiers.
Regarding claims 1, 3, 4, and 6, it would have been obvious to have added cellulose nanofibers in a concentration of 0.01 to 5% by weight with respect to total weight of the composition, with a reasonable expectation of success because Collin teaches said concentration range as suitable for cellulose nanofibers in the composition. The claimed concentration ranges are obvious because they overlap with 0.01-5 wt. %. The emulsifier is present in a concentration of 2-30 wt. % with respect to the total weight of the composition. The claimed content of cellulose nanofibers being more than 2 mass % of the content of emulsifier is obvious because Collin teaches ranges of the cellulose nanofibers and emulsifier which overlaps with the claimed range. This statement was modified by removing claim 5 because claim 5 is not rejected over Collin and it was included in this statement by error.
Regarding claim 4, it would have been obvious to have formed a cosmetic composition comprising an emulsion described above, with a reasonable expectation of success because Collin teaches a cosmetic composition comprising said emulsion.
Claim 7 requires the cellulose fibers to have a degree of crystallinity of at least 55%. It would have been obvious to have used cellulose fibrils having a crystallinity level of 50% or less, with a reasonable expectation of success because Collin teaches cellulose fibers having a preferred degree of crystallinity of 50% or less (paragraph 0017). The claimed range of the degree of crystallinity “at least 55%” is obvious over Collin’s range of “50% and less” because end points of the ranges are close enough in number that a person skilled in the art would have expected the ranges to have the same properties. MPEP 2144.05. Paragraphs 0064-0067 of the specification address degree of crystallinity, which is described by preferred ranges of 50% or
higher, 55% or higher, 90% or lower, and 86% or lower. With the degree of crystallinity of the CNF within the above range, the cellulose nanofibers are hardly affected physically or chemically by materials other than cellulose used in the emulsification, and maintenance of the emulsion stability is facilitated. The specification recites preferred ranges, but does not provide any evidence that any one of the ranges is critical. In view of these teachings, it is apparent that degree of crystallinity of cellulose fibers is not a critical feature. Furthermore, Collin teaches that cellulose fibrils are preferably amorphous, that is, they preferably exhibit a degree of crystallinity of less than or equal to 50%. This is a teaching of a preferred embodiment. Everywhere else in the reference, cellulose fibers are not limited by a degree of crystallinity. It would have been reasonable to interpret “cellulose fibrils” to encompass embodiments of cellulose fibrils having a degree of crystallinity greater than 50% because a reference is not limited by its preferred embodiments.
Claims 1 and 4 were amended to describe the unmodified cellulose as a product by process requiring “wherein the unmodified cellulose comprises cellulose in which hydroxyl groups on the surface of the cellulose has not been modified prior to defibration and cellulose that has not been mixed with carboxylated cellulose prior to defibration”. Collin teaches obtaining the cellulose fibrils by ether mechanical or chemical extraction from plants or algae or by bacterial fermentation (paragraph 0018). The cellulose fibrils can be provided as such or modified (paragraph 0019). In view of this teaching, it is apparent that Collin intended to use cellulose fibrils as they are or the fibrils can be modified. Therefore, it would have been obvious to have used unmodified cellulose fibrils where the cellulose is as is, which meets the claimed product by process that excludes cellulose fibrils modified at surface hydroxyl groups and cellulose mixed with carboxylate cellulose prior to defibration.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Collin as applied to claims 1-4, 6, and 7 above, and further in view of Nuopponen (US 2018/0094081 Al Published April 5, 2018).
The claims further define the compositions of claims 1 and 4. This statement was modified by removing claim 5 because claim 5 was included in the statement by mistake.
Collin does not teach a degree of polymerization of the cellulose fibers.
The teachings of Nuopponen are related to nanofibrillar cellulose and uses thereof (Abstract). The nanofibrillar cellulose is suitable for use in or as a cosmetic (paragraph 0015). A nanofibrillar cellulose has an average degree of polymerization greater than 1000. Preferably the average degree of polymerization (DP) of the nanofibrillar cellulose is greater than 1150 or 1200,
preferably greater than 1300 or 1400, more preferably greater than 1500, 1600, 1700, or 1800 (paragraph 0049).
The teachings of Collin and Nuopponen are related to nanofibrillar cellulose intended for use in cosmetic compositions, and it would have been obvious to have combined them because they are in the same field of endeavor. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have selected nanofibrillar cellulose having a degree of polymerization of greater than 1000, with a reasonable expectation of success because it was known from Nuopponen that nanofibrillar cellulose having a degree of polymerization greater than 1000 is suitable for use in a cosmetic composition. The claimed ranges are obvious because they overlap with greater than 1000. The selection of a known material based on its suitability for its intended purpose supports obviousness.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Collin as applied to claims 1-4, 6, and 7 above, and further in view of Florence.
The claim encompasses a method of making an emulsion.
The teachings of Collin are relied upon as summarized above. Collin does not teach the claimed steps.
The teachings of Florence are relied upon for method steps and Florence’s teaches are relied upon as summarized above.
The teachings of Collin and Florence are related to emulsions comprising cellulose nanofibers and it would have been obvious to have combined them because they are in the same field of endeavor.
Collin teaches that the compositions can be manufactured by known processes used generally in the cosmetics field, all within the skill of the ordinary artisan (paragraph 0141). It would have been obvious to have looked to the teachings of Florence because Florence provides a known process for making an emulsion suitable for use in cosmetics. It would have been obvious to have formed Collin’s emulsion by preparing an oil phase, preparing an aqueous phase, combining the two phases, and homogenizing to form the emulsion, with a reasonable expectation of success because Florence teaches preparing an oil phase, preparing an aqueous phase, combining the phases, and homogenizing.
It would have been obvious to have added the cellulose nanofibers to the aqueous phase because Florence teaches adding cellulose nanofibers to the aqueous phase. The claim describes the cellulose nanofibers as being obtained by defibrating unmodified cellulose, which is a product by process limitation. Collin’s nanofibrillar cellulose could have been obtained by the claimed process absent evidence to the contrary.
It would have been obvious to have added the nonionic emulsifier to the oil phase, the aqueous phase, or the emulsifying because the emulsifier is added to the composition and it is necessarily added to the oil phase, to the aqueous phase, or during emulsifying.
Claim 5 was amended to describe the unmodified cellulose as a product by process requiring “wherein the unmodified cellulose comprises cellulose in which hydroxyl groups on the surface of the cellulose has not been modified prior to defibration and cellulose that has not been mixed with carboxylated cellulose prior to defibration”. Florence teaches obtaining the cellulose fibrils by ether mechanical or chemical extraction from plants or algae or by bacterial fermentation (bottom of third page). The cellulose fibrils can be used as which or modified (paragraph bridging pages 3-4). Collin teaches the same at paragraphs 0018 and 0019. In view of these teaching, it is apparent that Florence and Collin intended to use cellulose fibrils as they are or the fibrils can be modified. Therefore, it would have been obvious to have used unmodified cellulose fibrils where the cellulose is as is, which meets the claimed product by process that excludes cellulose fibrils modified at surface hydroxyl groups and cellulose mixed with carboxylate cellulose prior to defibration.
Combining prior art elements according to known methods to obtain predictable results supports obviousness.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Collin and Florence as applied to claims 1-7 above, and further in view of Nuopponen (US 2018/0094081 Al Published April 5, 2018).
The claim further defines the method of claim 5.
Florence does not teach a degree of polymerization of the cellulose fibers.
The teachings of Nuopponen are related to nanofibrillar cellulose and uses thereof (Abstract). The nanofibrillar cellulose is suitable for use in or as a cosmetic (paragraph 0015). A nanofibrillar cellulose has an average degree of polymerization greater than 1000. Preferably the average degree of polymerization (DP) of the nanofibrillar cellulose is greater than 1150 or 1200, preferably greater than 1300 or 1400, more preferably greater than 1500, 1600, 1700, or 1800 (paragraph 0049).
The teachings of Nuopponen and Collin modified by Florence are related to nanofibrillar cellulose intended for use in cosmetic compositions, and it would have been obvious to have combined them because they are in the same field of endeavor. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have selected nanofibrillar cellulose having a degree of polymerization of greater than 1000, with a reasonable expectation of success because it was known from Nuopponen that nanofibrillar cellulose having a degree of polymerization greater than 1000 is suitable for use in a cosmetic composition. Claimed degree of polymerization range is obvious because it overlaps with greater than 1000. The selection of a known material based on its suitability for its intended purpose supports obviousness.
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Florence, Nuopponen, and Sakai (WO 2018/168393 A1 Published September 20, 2018 — English language translation appended thereto).
The teachings of Florence and Nuopponen are relied upon as summarized above.
Florence and Nuopponen do not teach a pulp viscosity of the cellulose nanofibers.
The teachings of Sakai are related to cellulose nanofibers (Abstract). Page 7 of the translation describes pulp viscosity of cellulose nanofibers in the range of 1.5 to 7.0 cps and states that a higher pulp viscosity means a higher degree of cellulose polymerization.
Regarding claim 11, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed an oil in water emulsion comprising 10-40 wt. % of on oil phase dispersed in 60-90 wt. % of an aqueous phase wherein the oil phase comprises a mineral oil in the concentration of 15 wt. relative to the total weight of the composition, and isopropyl myristate, with a reasonable expectation of success because Florence teaches an oil in water emulsion comprising 10-40 wt. % of on oil phase dispersed in 60-90 wt. % of an aqueous phase wherein the oil phase comprises a mineral oil in the concentration of 15 wt. relative to the total weight of the composition, and isopropyl myristate.
The claimed emulsion is obvious because the O/W emulsion taught by Florence contains all of the claimed elements. Mineral oil meets the limitation that requires an oil component. The aqueous phase meets the limitation that requires an aqueous dispersion medium. Isopropyl myristate meets the limitation that requires an emulsifier, as evidenced by dependent claim 2 which states that the emulsifier is selected from a fatty acid ester and isopropyl myristate is a fatty acid ester. Additionally, Florence teaches fatty acids in the oil phase, which also meet the limitation that requires an emulsifier as evidenced by claim 2 which states that the emulsifier comprises a fatty acid. The examiner acknowledges that Florence teaches that compositions do not comprise conventional emulsifying surfactants, however the claimed emulsifiers are defined as fatty acids and fatty acid esters which are present in Florence’s compositions. Thus, Florence meets the claimed emulsifier limitations. Cellulose nanofibers meet the limitation that requires
cellulose nanofibers. The claim describes the cellulose nanofibers as being obtained by defibrating unmodified cellulose, which is a product by process limitation. Florence’s nanofibrillar cellulose could have been obtained by the claimed process absent evidence to the contrary. Florence teaches that nanofibers stabilize the emulsion.
The oil phase contains the mineral oil and isopropyl myristate and the oil phase is present in a concentration of 10-40 wt. % relative to the total weight of the composition. Mineral oil is present in a concentration of 15 wt. %, thus isopropyl myristate would have been present as the remainder of the oil phase, which would be present in a concentration of up to 25 wt. % as long as the total concentration of oil phase does not exceed 40 wt. %. The claimed range of emulsifier is obvious because it overlaps with the prior art range.
It would have been further obvious to have selected cellulose nanofibers having a degree of polymerization greater than 1000 with a reasonable expectation of success because it was known from Nuopponen that cellulose nanofibers having a degree of polymerization greater than 1000 are suitable for use in cosmetics. The selection of a known material based on its suitability for its intended purpose supports obviousness. Nuopponen also teaches that nanofibrillar cellulose having high degree of polymerization was obtained (paragraph 0036). In view of this teaching, the skilled artisan would have interpreted a degree of polymerization greater than 1000 as a high degree of polymerization. Florence and Nuopponen do not teach pulp viscosity of the nanofibrillar cellulose. However, it would have been obvious to have used nanofibrillar cellulose having a pulp viscosity in the range of 1.5-7.0 cps, with a reasonable expectation of success because Sakai teaches nanofibrillar cellulose having a pulp viscosity in the range of 1.5-7.0 cps and teaches that nanofibrillar cellulose having a higher degree of polymerization also means that the nanofibrillar cellulose has a higher pulp viscosity. According to Noupponen, a degree of
polymerization greater than 1000 is considered a high degree of polymerization. Therefore, it would have been obvious to the skilled artisan to use nanofibrillar cellulose having degree of polymerization greater than 1000 and a pulp viscosity in the upper end of the 1.5-7.0 range. The claimed pulp viscosity range is obvious because it overlaps with 1.5-7.0 cps.
The composition contains 10-40 wt. % of on oil phase comprising isopropyl myristate and 15 wt. % is mineral oil. Thus, isopropyl myristate is present in a concentration of up to 25 wt. %. The claimed concentration range of emulsifier in claims 11, 13, and 15 is obvious because it overlaps with a range of up to 25 wt. %.
Regarding claim 13, it would have been obvious to have formed a cosmetic composition with the emulsion, with a reasonable expectation of success because Florence teaches that the emulsion can constitute a cosmetic composition (page 5 fifth full paragraph).
Regarding claim 15, it would have been obvious to have formed the emulsion by preparing the oil phase, preparing the aqueous phase, combining the two phases, and homogenizing to form the emulsion, with a reasonable expectation of success because Florence teaches preparing an oil phase, preparing an aqueous phase, combining the phases, and homogenizing.
It would have been obvious to have added the cellulose nanofibers to the aqueous phase because Florence teaches adding cellulose nanofibers to the aqueous phase. The claim describes the cellulose nanofibers as being obtained by defibrating unmodified cellulose, which is a product by process limitation. Florence’s nanofibrillar cellulose could have been obtained by the claimed process absent evidence to the contrary.
It would have been obvious to have added isopropyl myristate, or fatty acids, to the oil phase with a reasonable expectation of success because isopropyl myristate is described as an oily component.
Degree of polymerization ranges in claims 12, 14, and 16 are obvious because they overlap with greater than 1000.
Claims 11, 13, and 15 were amended to describe the unmodified cellulose as a product by process requiring “wherein the unmodified cellulose comprises cellulose in which hydroxyl groups on the surface of the cellulose has not been modified prior to defibration and cellulose that has not been mixed with carboxylated cellulose prior to defibration”. Florence teaches obtaining the cellulose fibrils by ether mechanical or chemical extraction from plants or algae or by bacterial fermentation (bottom of third page). The cellulose fibrils can be used as which or modified (paragraph bridging pages 3-4). In view of this teaching, it is apparent that Florence intended to use cellulose fibrils as they are or the fibrils can be modified. Therefore, it would have been obvious to have used unmodified cellulose fibrils where the cellulose is as is, which meets the claimed product by process that excludes cellulose fibrils modified at surface hydroxyl groups and cellulose mixed with carboxylate cellulose prior to defibration.
Combining prior art elements according to known methods to obtain predictable results supports obviousness.
Response to Arguments
In the remarks dated September 9, 2025, the applicant traversed the rejections in view of claim amendments and stated that Florence and Collin teach cellulose fibrils that are alternatively mixed with a carboxylated cellulose or fibrils in modified form by carboxylic acids.
Applicant’s arguments were fully considered but are not persuasive because Florence and Collin both teach using cellulose fibrils in unmodified form and alternatively as modified. Therefore, it would have been obvious to use fibrillated cellulose as is without further modification, which meets the claimed product by process limitations that exclude certain modified celluloses. Neither Florence nor Collin require modified cellulose as excluded by instant claims.
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 Alma - Pipic whose telephone number is (571)270-7459. The examiner can normally be reached M-F 9:00am-5:00pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALMA PIPIC/
Primary Examiner, Art Unit 1617