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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/30/2026 has been entered.
Response to Amendment
The Amendment filed 07/30/2026 has been entered. Applicant’s amendments are in response to the Final Office Action mailed 04/30/2026. Applicant’s claims have been amended in the following manner: independent claims 1 and 13 have been modified by narrowing the range of the D50 for the white particles to 0.3 to 3 um (micron) (supported by Applicant’s Specification at pg 4). The amendment prompts a new ground of rejection incorporating Takanuki to address the particle size limitations (where Lindemann is no longer required to teach particle size).
The Examiner further acknowledges the following:
Claims 1-3 and 5-14 are pending.
Claims 1-3 and 5-14 are presented for examination and rejected as set forth below.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5-7, 10-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer (US 20170112736A1), as evidenced by IFST (2017), and in further view of Takanuki (WO2014203913A1) and Ricard (US 20180243177 A1).
Applicant’s claims are directed to a composition (i.e., an O/W emulsion, described as an oily phase dispersed in a continuous aqueous phase) comprising (i) 2-10 wt% white particles (ii) an anionic terpolymer (with specified limitations) and (iii) an emulsifier system comprising (a) an alkyl phosphate salt (b) a polyoxyethylene oxide C12-24 fatty acid ester, and (c) a glyceryl C12-C24 fatty acid ester. In claim 1, a new limitation of “a volume average particle size (D50) of the white particles is from 0.3 to 3 um” is featured. Note that the brightening or whitening effect is an intended use that generally does not add patentable weight for the composition.
Meyer teaches a cosmetic composition which is useful for lightening skin and hair [0001], including whitening (Table 5), preferably applied topically to keratin fibers [0271], that also provides sun protection (abstract) and avoids skin irritation [0012].
Regarding claims 1-3: Meyer teaches a composition comprising inorganic pigments in 0.5-10 wt% such as titanium dioxide, silica, and mixtures thereof (reads on white particles of claim 1(i)) [0141-0142], anionic polymers (reads on claim 2(ii)) [0200], mono-, di and trialkyl phosphates and mono-, di- and/or tri-PEG-alkyl phosphates and salts thereof (reads on alkyl phosphate salt of claim 1(iii)(a)) [0176], polyethylene glycol (reads on polyoxyethylene oxide) monoester and diesters of C12-22 fatty acids (reads on claim 1(iii)(b)) [0169, 0197] such as PEG-3 distearate (pg 18, Table 5, composition 12), and polyol (reads on glyceryl) fatty acid esters or monoglycerides (reads on claim 1(iii)(c)) [0194] such as glyceryl stearate (pg 18, Table 5, composition 8). With respect to the amount of inorganic pigments, "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Meyer teaches the composition can be prepared as oil-in-water type (O/W) emulsion (reads on an emulsion that comprises an oily phase dispersed in a continuous aqueous phase, as evidenced on pg 2 by IFST under ‘characterizing emulsions’, which defines the structure of an O/W emulsion generally) [0137] and the composition is useful for lightening skin and hair [0001] preferably applied topically to keratin fibers [0271]. In addressing the content of the continuous aqueous phase (which will be principally made of water), Meyer teaches that the O/W emulsion [0259] can contain up to 99 wt% water [0261] (thus, Meyer’s water range within an O/W emulsion encompasses the instant continuous aqueous phase range of 70-90 wt% because IFST teaches O/W emulsions to have continuous aqueous phases), and Meyer demonstrates an O/W emulsion that contains 84.65 wt% water in Table 3.2 (i.e., reads within the instant range of 75-90 wt% for the continuous aqueous phase) that is used to study the depigmentation of skin [0281-0282].
Regarding claim 6: Meyer teaches monoalkyl phosphates and mono-PEG-alkyl phosphates and salts thereof [0176] and potassium cetyl phosphate, where the teachings read on formula (II) (pg 19, Table 5, compositions 5 and 6).
Regarding claim 7: Meyer teaches the composition comprises surfactants such as the alkyl phosphate salts in 0.5 to 5 wt%, a range overlapping and therefore rendering obvious that of the instant claims [0164].
Regarding claim 10-11: Meyer teaches glyceryl stearate in 2 wt% (pg 18, Table 5, composition 8).
Regarding claim 14: Meyer teaches a cosmetic process to lighten skin and hair by applying the composition topically to keratin fibers [0271].
In summary, Meyer teaches an O/W emulsion composition comprising titanium dioxide, an anionic polymer, potassium cetyl phosphate, PEG monoester and diesters of fatty acids, and glyceryl stearate. Meyer teaches anionic polymers in the composition in general [0200]. However, Meyer does not teach the specified anionic polymer of the “wherein” clause (instant claim 1), the volume average particle size (D50) of the white particles is from 0.3 to 3 um (instant claim 1 and 18), and amount required of the anionic terpolymer (instant claim 5).
Takanuki teaches O/W emulsions (pg 1, paragraph 4; pg 23, “Galenical Forms”), comprising refractive particles (Takanuki – claim 1) that may be white or colored (pg 11, “Pigment”), such as titanium dioxide, zinc oxide, and/or iron oxide, where the titanium oxide as pigments have a particle size of 0.1 um or more (reads on the range of 0.3-3 um of instant claims 1 and 18, by encompassing that range) (pg 11, paragraph 6). With regard to the numerical range, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). Furthermore, Takanuki teaches mica and boron nitride as lamellar pearlescent agent fillers (pg 15, paragraph 1), where micas have sizes of 2-200 um (diameter) and a thickness of 0.1-5 um (height) (i.e., for a circular plate, the mean average volume is derived from the cylindrical formula (V = (pi) (r^2)(h), that leads to an average volumetric particle size range of 0.314 um to 157,000 um, that further overlaps the instant D50 range of 0.3-3 um) (pg 15, paragraph 1), because a major form of mica and boron nitride particles/crystals is a plate-like shape (pg 14, “lamellar particles”). Finally, Takanuki teaches compositions that incorporate these particles have optical effects (Table 1, see component (b) boron nitride in Ex 1 vs Comp Ex 1).
Ricard teaches an aqueous gel for caring for keratin materials (abstract), that improves brightness of the skin [0010-0011, 0039]. Ricard incorporates an anionic terpolymer used according to the invention is a linear or branched and/or crosslinked terpolymer, of at least one monomer (1) bearing an acid function in free form, which is partially or totally salified with a nonionic monomer (2) chosen from N,N-dimethylacrylamide and 2-hydroxyethyl acrylate and at least one polyoxyethylenated alkyl acrylate monomer (3) of formula (I) [0366]. The associative anionic polymer can be used in 0.1-8 wt% of solids [0435], a range overlapping and therefore rendering obvious that of the instant claims. Ricard establishes that these kinds of anionic associative polymers are known to be useful in topical cosmetics [0435].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to select the more than 1 um particle size taught for metal oxide pigments and/or lamellar pearlescent agent fillers of Takanuki for the general teaching of metal oxide particles and/or the generic inorganic pigment teaching by Meyer (who is silent on particle size of inorganic pigments), because Takanuki teaches suitable particles sizes for pigments such as titanium dioxide (mean particle size is 0.1 um or more) and lamellar pearlescent agents (mean volumetric average particle size is 0.314 um to 157,000 um) (i.e., the pearlescent quality affects the final coloration of the skin), for O/W emulsion sun protection topical cosmetic products. For example, Takanuki teaches that compositions that incorporate these particles have optical effects (Table 1, see component (b) boron nitride in Ex 1 vs Comp Ex 1). Thus, selection of Takanuki’s ingredients and/or particle size is nothing more than the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Furthermore, compared to Takanuki, Meyer teaches incorporation of metal oxide particles and/or the generic inorganic pigment teaching for topical cosmetic products that protect the skin, that also affect the appearance of the skin after application of product [0002-0019].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the anionic polymers used by Meyer with the anionic terpolymers in the amounts described by Ricard. The selection of Ricard’s anionic polymer is simply the selection of a component known to be useful as the generic component taught by the primary reference Meyer [0200]. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Because Meyer teaches generically anionic polymers containing acids and acrylate esters [0200], it would be obvious to a person of ordinary skill in the art to apply Ricard’s anionic terpolymers to Meyer’s teachings. Furthermore, Ricard is interested in cosmetic preparations that avoid discomfort [0052], while Meyer’s cosmetic compositions are non-irritating to skin [0012].
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer (US 20170112736A1), Takanuki (WO2014203913A1), and Ricard (US 20180243177 A1), as evidenced by IFST (2017), as applied to claims 1-3, 5-7, 10-11, and 14 above, and in further view of Mendrok-Edinger (US 20140328777 A1).
As discussed above, the Prior Art teaches a cosmetic composition, which is useful for lightening skin and hair preferably applied topically to keratin fibers, including an O/W emulsion comprising titanium dioxide (of a specified particle size), an anionic terpolymer (as specified by instant claim 1), potassium cetyl phosphate and salts thereof, PEG monoester and diesters of fatty acids such as glyceryl stearate. Meyer also teaches PEG monoester and diesters of fatty acids [0162, 0169] generally as surfactants for the purpose of emulsification. However, they do not teach the specified PEG substances and amounts (instant claims 8-9), and all of the compositional amounts (instant claims 12-13).
Mendrok-Edinger teaches a sunscreen composition for topical use (abstract) that can be in the form of an O/W emulsion [0044]. Mendrok-Edinger teaches the O/W emulsifier PEG-100 stearate (reads on 100 units of PEG and stearic acid is a C18 fatty acid of instant claim 8) [0046] in 0.5-5 wt% (reads on instant claim 9) [0048].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to combine the O/W emulsifiers of Mendrok-Edinger with the teachings of Meyer and Ricard. Mendrok-Edinger teaches the above O/W emulsifiers to be useful in topical sunscreen compositions. The selection of these O/W emulsifier components disclosed by Mendrok-Edinger is simply the selection of a component known to be useful as a generic component taught by Meyer [0162, 0169].
With respect to the totality of instant claims 12-13 (i.e., instant ratios and amounts): Meyer teaches a composition comprising inorganic pigments in 0.5-10 wt% such as titanium dioxide and silica [0141-0142], alkyl phosphate salts [0176] such as potassium cetyl phosphate (pg 19, Table 5, compositions 5 and 6) in 0.5-5 wt% [0164], and glyceryl stearate in 2 wt% (pg 18, Table 5). Ricard teaches terpolymers defined by their structural monomers [0366-370] in an amount of 0.1 -8 wt% [0435]. Mendrok-Edinger teaches PEG-100 stearate in 0.5-5 wt% [0046-0048]. Furthermore, the “weight ratio R” of instant claim 12 is about 1:0.1-10:0.4-4 based on the teachings of Meyer and Mendrok-Edinger. In this case, the amounts taught by the combined prior art teachings, which relate to topical cosmetic compositions, encompass the ratios and amounts found in the instant claims 12-13, and thus, render the instant claims obvious. "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Response to Arguments
Applicant’s arguments, see pg 8-11, filed 07/30/2026, with respect to the 103 rejection of claims 1-3 and 5-14 under rejection have been fully considered and are persuasive. Therefore, the 103 rejection has been withdrawn. However, upon further consideration and in view of applicant’s amendments to the claims, a new ground of rejection is made in view of the additional reference Takanuki (WO2014203913A1) (where Lindemann is no longer required to teach particle size).
With regard to the arguments as a whole, the arguments are based on the amended claim set, which is addressed by modifying the 103 rejection. Thus, many of the arguments are moot, based on the modified rejection presented above. Elements of the remaining arguments will be addressed, when possible.
On page 8-9, Applicant summarizes the new amendment to the claims, and the current state of the Application.
On page 9-10, Applicant argues that Meyer does not teach the newly amended instant range of 0.3 to 3 um, and additionally, Lindemann only teaches a particle size range of 5 to 50 um. To better address the particle size limitation amended into the claim set, the Examiner updated the search in order to find Art that reads on the amended particle size range (i.e., Takanuki), and therefore, has written a new ground of rejection, that is prompted by amendment (see 103 rejection for explanation of the Art and rationale for combination).
On page 11, Applicant concludes, and the claims remain under rejection by obviousness.
Correspondence
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/R.P./Examiner, Art Unit 1614 9/3/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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