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 .
This Office Action is in response to the Request for Continued Examination filed on 12/23/2025. Applicants' arguments, filed 12/23/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 103
Claim(s) 1-4 and 8-23 are rejected under 35 U.S.C. 103 as being unpatentable over Onodera (JP2017178848A, disclosed by applicant) in view of Souda et al. (EP 3646850). This rejection is maintained.
Rejection
Onodera discloses a water-in-oil composition which does not cause color unevenness or white stripes and oil separation due to a pigment in in the composition (p.3, Overview). Onodera discloses the composition comprises titanium, oxide, zinc oxide or cerium oxide which are surface treated with silicone or fluorine and are present at a concentration ranging from 15 to 30%; meeting the limitation of component (A) ([0016] and [0017]). Onodera discloses the composition comprises polyethylene glycol dihydroxystearic acid at a concentration of 0.1 to 3% by weight; meeting the limitation of component (B) ([0022]). Onodera discloses the composition comprises oil at a concentration of 35-85%; meeting the limitation of component (C) ([0024]). Onodera discloses the composition comprises water at concentration of 20%, meeting the limitation of component (D) ([Table 1]). Onodera discloses the composition comprises modified silicone ([0023]).
The prior art discloses the use of 15-30 % UV scattering agent; 0.1 to 3% dipolyhydroxystearic acid ester of a polyhydric alcohol; and 30-50% liquid oil. Thus, the prior art differs from the instant claims insofar as it does not disclose the particular endpoints recited therein, i.e. 10-50 UV scattering agent; .5-5% dipolyhydroxystearic acid ester of a polyhydric alcohol; and 3-85% liquid oil. It is well-settled, however, that even a slight overlap in range establishes a prima facie case of obviousness. Accordingly, since an overlap plainly exists here, it would have been obvious to have selected values within the overlap, consistent with the reasoning of the Peterson decision.
The overlap of ranges would provide an overlap of mass ratio of the components as claimed, i.e. (B) to (A), (A) to (C), (B) to (C) and (D) to (C).
Onodera differs from the instant claims insofar as it does not disclose a component (E) and alkyl modified silicone wax having a melting point of 60° C or more.
Souda et al. disclose compositions comprising organically modified silicones comprising alkyl modified silicone wax that impart sebum resistance, moisturizing properties and a fine texture to cosmetics and has a melting point of 60 C or more ([0105]-[0107]).
It would have been obvious before the effective filing date of the claimed invention to have used the modified silicones of Souda as the modified silicone of Onodera motivated by the desire to impart sebum resistance, moisturizing properties and a fine texture to formulation.
Arguments
Applicant’s Arguments
Applicant argues the addition of component (E) enhances both SPF and water resistance while maintaining ease of spreading. Applicant argues the prior art does not teach any correlation between alkyl-modified silicone wax and the effects of UV protection or water resistance. Applicant argues the effects of enhanced UV protection and improved water resistance from the use of alkyl-modified silicone wax could not have been predicted from the cited references and ensure the patentability of the present claims. Applicant's arguments have been fully considered but they are not persuasive.
Examiner’s Response
Souda et al. taught compositions comprising organically modified silicones comprising alkyl modified silicone wax that impart sebum resistance, moisturizing properties and a fine texture to cosmetics and has a melting point of 60 C or more ([0105]-[0107]).
The reason or motivation to modify a 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 MPEP 2144, IV.
When looking to the examples it appears the results are a case of kind and not unexpected. Example 9, which contains component (E) has low results (C) for white residue and easiness to spread. The SPF values also vary with each example. Example 6 does not contain component E has a SPF of 40.9 and Example 10 does contain component E has a SPF of 44.8, which is not an unexpected difference.
The combination of references meets the limitation of instant claims.
Conclusion
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612