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 .
Formal Matters
Receipt of Applicant’s response, dated 12/16/2025, is acknowledged.
Claims 1 and 7-9 are pending.
Claims 2-6 are canceled.
Claims 1 and 9 are currently amended.
Claims 1 and 7-9 are under consideration in the instant Office action.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 1 and 9 set forth in the Office action dated 09/16/2025 are hereby withdrawn in light of Applicant’s amendments to claims 1 and 9. The objection to claim 6 set forth in the Office action dated 09/16/2025 is hereby withdrawn in light of Applicant’s cancelation of claim 6.
Claim Rejections - 35 USC § 112
The indefiniteness rejection set forth in the Office action dated 09/16/2025 is hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-3 and 6-9 over Kubota et al in view of Nagare and LeClerc set forth in the Office action dated 09/16/2025 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
NEW GROUNDS OF REJECTION
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.
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 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuta (US 2004/0241126 A1, published 12/02/2004) in view of Horino et al (US 5,744,126 A, published 04/28/1998).
Sakuta teaches a cosmetic composition that may be in the form of an emulsion, e.g., O/W (See entire document, e.g., Abstract, [0085], Examples 45-46, claim 26).
The composition comprises a volatile branched silicone compound (a) from 1.0 to 99.0 mass%, preferably from 5.0 to 50.0 mass% (e.g., [0027]).
The composition may comprise an oil agent (b) that may be natural fats and oils from animals and plants, semi-synthetic oils, hydrocarbon oils, higher fatty acids, higher alcohols, ester oils, glyceride oils, silicone oils, and flouorinated oils, etc., and wherein e.g. suitable ester oils include isopropyl palmitate, from 1.0 to 99.0 mass%, preferably from 1.0 to 50.0 mass%, depending on the form of the cosmetic (e.g., [0026], [0028]-[0040]). When the content of (b) is less than 1.0 mass%, the effect of (b) may be lost, and when it is more than 50.0 mass%, the effect of the silicone compound (a) may be lost (e.g., [0040]).
The composition may comprise a compound having alcoholic hydroxyl group (c), e.g., lower monoalcohols such as ethanol, propanol, and isopropanol; polyalcohols such as ethylene glycol, propylene glycol, 1,3-butylene glycol, diethylene glycol, di propylene glycol poly-ethylene glycol, isoprenol, glycerin, diglycerin, triglycerin; and sugar alcohols such as sorbitol and maltose from 0.1 to 50.0 mass%, depending on the form of the cosmetic (e.g., [0041]-[0043]). If it is less than 0.1 mass%, the effect of (c) as moisturizer, antiseptic, and antibiotics becomes insufficient and if it is more than 50.0 mass%, stickiness increases, which is unfavorable as cosmetic (e.g., [0042]).
The composition may comprise water (e) as a constituent component from 1.0 to 90.0 mass%, depending on the form of the cosmetic (e.g., [0046]). If it is less than 1.0 mass%, the cosmetic does not provide hydrated feel, and if it is more than 90.0 mass%, the affinity with skin decreases, which is unfavorable (e.g., [0046]).
The composition may comprise the following components as required; powder and coloring agents (f), surfactants (g), cross-linked organopolysiloxanes (h), silicone resins which are gummy or solid at an ambient temperatures (i), and UV protecting agents (j) (e.g., [0047]).
The powder and coloring agents (f) may be any which are commonly used in cosmetics regardless of the shape (spherical, rod-like, acicular, tubular, irregular, scaly or spindle forms), particle size (size of fume, fine particles or pigment grade), and particle structure (porous and non-porous), such as, for example, inorganic powder, organic powder, surface activating metal salt powder, colored pigments, pearl pigments, metallic powder pigments, and natural dyes and is blended approximately from 0.1 to 50 mass%, preferably from 0.5 to 30 mass%, relative to the total amount of the cosmetic, which significantly depends upon the form of the cosmetic (e.g., [0048], [0056]). Specific examples of the inorganic powders include titanium oxide and zinc oxide (e.g., [0049]). The powders can be used in the form of composite or can be subjected to treatment with common oil agents including silicone oils or silane (e.g., [0055]).
The surfactant (g) may be anionic, cationic, non-ionic or amphoteric, e.g., PEG-11 methyl ether dimethicone from 0.1 to 20 mass%, preferably from 0.5 to 10 mass%, relative to the total amount of the cosmetic (e.g., [0057], [0061], Example 65).
Sakuta does not provide motivation for selecting silicone-treated titanium oxide inorganic powder having an average particle diameter of 300 nm or more and silicone-treated zinc oxide having an average particle diameter of 200 nm or less as the powder and coloring agents (f) component.
This deficiency is made up for in the teaching of Horino et al.
Horino et al teach cosmetics, including emulsified cosmetics, containing silicone surface-modified fine particles of titanium oxide and zinc oxide, that have good dispersibility, high sustained ultraviolet light ray shielding, suppressed photochemical reactivity and catalytic activity of the ultraviolet ray shielding material and high stability (See entire document, e.g., Title, Abstract, Col. 3 Lines 20-30, (65)). The mean particle size of fine particles of zinc oxide, surface-treated with dimethyl polysiloxane or hydrogen polysiloxane, is 0.2 to 3.5 microns (e.g., Col. 3 Lines 43-46, Col. 5 Lines 54-58, claim 1) and the mean particle size of fine particles of titanium oxide, surface-treated with dimethyl polysiloxane or hydrogen polysiloxane, is 0.5 to 3.0 microns (e.g., Col. 3 Lines 43-46, Col. 6 Lines 48-52, claim 1). The amount of the composition composed of the surface-treated fine particles of titanium oxide and the surface-treated fine particles of zinc oxide is 0.5 to 12.5 wt% and preferably 1.0 to 10 wt% (e.g., Col. 3 Lines 47-50, Col. 9 Lines 6-10). If the amount is smaller than 1.0 wt.%, it is not possible to prevent skin drying or lowering of the skin function such as inflammation or skin pigmentation, and if the amount exceeds 12.5 wt%, the ultraviolet ray shielding effect is not increased in proportion to the increased amount, which is an economic disadvantage (e.g., Col. 9 Lines 10-18).
It would have been prima facie obvious to one of ordinary skill in the art before the effective date of the claimed invention, based on the teachings of Sakuta and Horino et al, to provide a cosmetic composition in the form of a O/W emulsion comprising a volatile branched silicone compound (a) of Sakuta from 1.0 to 99.0 mass%, preferably from 5.0 to 50.0 mass%, an oil agent (b) e.g. isopropyl palmitate from 1.0 to 50.0 mass%, a compound having alcoholic hydroxyl group (c) e.g., lower monoalcohols such as ethanol, propanol, and isopropanol; polyalcohols such as ethylene glycol, propylene glycol, 1,3-butylene glycol, diethylene glycol, di propylene glycol poly-ethylene glycol, isoprenol, glycerin, diglycerin, triglycerin; and sugar alcohols such as sorbitol and maltose from 0.1 to 50.0 mass%, water from 1.0 to 90.0 mass%, powder and coloring agents (f) being the combination of fine particles of zinc oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.2 to 3.5 microns and fine particles of titanium oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.5 to 3.0 microns in a total amount of from 1.0 to 12.5 wt%, and a surfactant (g) e.g. PEG-11 methyl ether dimethicone, from 0.1 to 20 mass%, preferably from 0.5 to 10 mass%.
One of ordinary skill in the art would have been motivated to use an oil content (b) of from 1.0 to 50.0 mass%, and there would have been a reasonable expectation of success, because Sakuta teaches that when the content of (b) is less than 1.0 mass%, the effect of (b) may be lost and when it is more than 50.0 mass%, the effect of the silicone compound (a) may be lost (see supra). One of ordinary skill in the art would have been motivated to use a compound having alcoholic hydroxyl group content (c) of from 0.1 to 50.0 mass%, and there would have been a reasonable expectation of success, because Sakuta teaches that when the content of (c) is less than 0.1 mass%, the effect of (c) as moisturizer, antiseptic, and antibiotics becomes insufficient and when it is more than 50.0 mass%, stickiness increases, which is unfavorable as cosmetic (see supra). One of ordinary skill in the would have been motivated to use water from 1.0 to 90.0 mass%, and there would have been a reasonable expectation of success, because Sakuta teaches that when the content of water is less than 1.0 mass%, the cosmetic does not provide hydrated feel and when it is more than 90.0 mass%, the affinity with skin decreases, which is unfavorable (see supra).
One of ordinary skill in the art would have been motivated to use the combination of fine particles of zinc oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.2 to 3.5 microns and fine particles of titanium oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.5 to 3.0 microns as the powder and coloring agents (f) because Horino et al teach that this combination leads to a cosmetic having good dispersibility, high sustained ultraviolet light ray shielding, suppressed photochemical reactivity and catalytic activity of the ultraviolet ray shielding material and high stability (see supra). One of ordinary skill in the art would have been motivated to use the aforementioned powder and coloring agents (f) in a total amount of from 1.0 to 12.5 wt% because Horino et al teach that when the amount is smaller than 1.0 wt.%, it is not possible to prevent skin drying or lowering of the skin function such as inflammation or skin pigmentation and when the amount exceeds 12.5 wt%, the ultraviolet ray shielding effect is not increased in proportion to the increased amount, which is an economic disadvantage (see supra). There would have been a reasonable expectation of success in using the combination of fine particles of zinc oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.2 to 3.5 microns and fine particles of titanium oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.5 to 3.0 microns as the powder and coloring agents (f) in a total amount of from 1.0 to 12.5 wt% because Sakuta teaches that the cosmetic composition is compatible with powder and coloring agents (f) of any size, any type including inorganic powders such as titanium oxide and zinc oxide, with or without subjection to treatment with agents including silicone oils, and to be blended in approximately from 0.1 to 50 mass%, preferably from 0.5 to 30 mass%, relative to the total amount of the composition (see supra) and Horino et al teach the compatibility of fine particles of zinc oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.2 to 3.5 microns and fine particles of titanium oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.5 to 3.0 microns as the powder and coloring agents (f) in a total amount of from 1.0 to 12.5 wt% with emulsified cosmetics (see supra).
The modified cosmetic composition of Sakuta in view of Horino et al comprising isopropyl palmitate meets the limitation of instant claim 7 because, as evidenced by Par. [0078] of the instant specification, isopropyl palmitate is an example of a suitable polar oil of the instant invention.
The modified cosmetic composition of Sakuta in view of Horino et al comprising silicone-treated zinc oxide particles meets the limitation of instant claim 9 because, as evidenced by Par. [0085] of the instant specification, zinc oxide particles are hydrophobically treated microparticles used as an ultraviolet scattering agent.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). The modified cosmetic composition of Sakuta in view of Horino et al comprising fine particles of zinc oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.2 to 3.5 microns and fine particles of titanium oxide surface-treated with dimethyl polysiloxane or hydrogen polysiloxane having mean particle size of 0.5 to 3.0 microns in a total amount of from 1.0 to 12.5 wt% and comprising PEG-11 methyl ether dimethicone as surfactant (g) from 0.1 to 20 mass%, preferably from 0.5 to 10 mass%, renders obvious the mass ratio of the pigment grade hydrophobically treated particles to the PEG(11) methyl ether dimethicone required by instant claim 1. The modified cosmetic composition of Sakuta in view of Horino et al comprising a volatile branched silicone compound (a) from 1.0 to 99.0 mass%, preferably from 5.0 to 50.0 mass%, and an oil agent (b) e.g., isopropyl palmitate from 1.0 to 50.0 mass% renders obvious the mass percent ranges of oil content of instant claim 1, volatile oil of instant claim 1, and the at least one selected from a polar oil and an ultraviolet absorber of instant claim 8.
The modified cosmetic composition of Sakuta in view of Horino et al renders obvious the cosmetic of instant claims 1 and 7-9. Because the modified cosmetic composition of Sakuta in view of Horino et al is the same as the cosmetic of instant claim 1, the modified cosmetic composition of Sakuta in view of Horino et al would necessarily partition into the dispersion medium phase and the oil droplet phase of instant claim 1 and would necessarily exhibit a tone-up effect of lightening color of the skin. 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. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Response to Applicant’s Arguments
Applicant’s arguments filed on 12/16/2025 have been considered, however are moot because they regard the teachings of Kubota et al, Nagare, and LeClerc, for which the rejection under 35 USC 103 over these references set forth in the Office action dated 09/16/2025 has been withdrawn in the instant Office action.
Conclusion
No claims are allowable.
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 KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619