DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 April 2026, has been entered.
Response to Amendments
Status of Claims
Claims 21, 23, 26, and 37 are amended.
Claims 21-38 and 41-43 are pending and under consideration in the instant Office Action, to the extent of the following elected species:
the specific emollient caprylic/capric triglycerides;
the specific humectant glycerin;
the specific emulsifier cetyl polyethylene glycol (PEG)/polypropylene glycol (PPG)-10/1-dimethicone and lauryl PEG-8 dimethicone; and
the specific other ingredient is a preservative.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejection of claims 21-38 under 35 U.S.C. § 112 is withdrawn in view of Applicant’s remarks in the section titled “Section 112 Rejection” spanning pg. 7-8, in which Applicant persuasively argued that they have written support in the specification (see MPEP § 2163.B.) for the limitation 3.0-6.0% w/w dimethicone.
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 21-38 and 41-43 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendment to claim 21 and in favor of the new grounds of rejection below.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 15 April 2026, and 8 June 2026, were filed after the mailing date of the Final Office Action on 16 October 2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 21-22, 24-38 and 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over Lademann et al. (WIPO International Publication No. WO 2019/043450 A2, published on 7 March 2019, provided by Applicant in IDS filed on 20 September 2022, hereafter referred to as Lademann) in view of Spaulding et al. (U.S. Patent Application Publication No. US 2017/0189293 A1, published on 6 July 2017, hereafter referred to as Spaulding).
Lademann teaches a cosmetic composition that possesses antioxidant properties, one or more sunscreen agents, and provides users light protection of the skin (Abstract and pg. 2, lines 3-6). The composition is taught to possess UVA and UVB filters, which are organic compounds that absorb radiation in the wavelength ranges of UVA and UVB, and one or more pigments, which may be titanium dioxide, zinc oxide, or other metal oxides, in addition to other components (pg. 3, lines 1-13 and pg. 6, lines 30-35). The amount of metal oxide in the composition is taught to be 2-30% relative to the total weight of the composition, which encompasses the range of “about 3.0 wt. % to about 20.0 wt. %” in instant claim 21 (pg. 3, lines 5-7 and claim 1). Titanium and zinc oxide are also taught to serve a double purpose, acting as both pigments and “mineral filters” which reflect light in the visible and UV ranges and offer additional light protection to the skin (pg. 17, lines 23-37).
One of the additional components taught to be in the cosmetic composition is a plant extract, which can serve as both a radical scavenger and humectant (claim 1 and pg. 20, lines 19-21). The compositions are taught to contain plant extracts in an amount of 0.1-5% w/w, overlapping with the range recited in instant claim 29 (claim 2). In Example 8, a cosmetic composition formulated as a non-foaming sun protection lotion is taught to comprise the plant extracts green tea, Scutellaria Baicalensis, and Saussurea Involucrata as humectants and radical scavengers, as well as the humectant propylene glycol in an amount of 5% w/w.
The formulation in Example 8 further comprises the emollients caprylic/capric triglycerides at an amount of 10% w/w, falling within the range recited in instant claim 26, and 6% w/w C12-C15 alkyl benzoate, falling within the range recited in instant claims 21, 26, and 41. It also comprises water in an amount of 41% w/w, falling within the range of “30.0 wt. % or more” recited in instant claim 21. Two additional components are arachidyl glucoside (3.5% w/w) and myristyl glucoside (1.5%), totaling 5% w/w of the formulation (Example 8). Lademann teaches emulsifiers may be used in their compositions, including polyglucosides (pg. 10, lines 31-36), indicating Example 8 contains 5% w/w of emulsifiers, falling within the range of “about 2.0 wt. % to about 10 wt. %” recited in instant claim 21. Finally, in Example 6 a sun protection milk formulation, which is determined to be equivalent to a non-foaming lotion, is taught to comprise 5% w/w dimethicone, a preservative, and no starches, pectins, or gums. The teaching of 5% w/w dimethicone falls within the range of “about 3.0 wt. % to about 6.0 wt. %” recited in instant claim 21.
Lademann does not teach glycerin as a humectant, the mixture of cetyl polyethylene glycol (PEG)/polypropylene glycol (PPG)-10/1 dimethicone and lauryl PEG-8 dimethicone as an emulsifier, or an octyldodecyl citrate crosspolymer as a film former nor the amount of the film former in their composition. These deficiencies are offset by the teachings of Spaulding.
Spaulding teaches a photoprotective cosmetic composition that comprises one or more photoactive agents and a synergistic combination of polymers, which can provide a substantially complete film, in the form of a liquid that is dispensed via bottle, pump, or spray (Abstract). The composition provides protection from UVA and UVB radiation, which are known to damage or harm the skin, by forming a film that comprises one or more photoactive agents (para. [0006] and [0011]). Examples of photoactive agents include, among others, metal oxides such as zinc oxide and titanium dioxide and comprise “about 0.1 wt. % to about 40 wt. %” of the composition (para. [0051-0052]).
The synergistic combination of polymers is taught to comprise an alkyl dimethicone, a polymer with ester linkages, or a phenyl silicon or styrene (para. [0013]). In one embodiment, the alkyl dimethicone is taught to be lauryl PEG-8 dimethicone (trade name SILUBE® J208-612) (para. [0053]). In another embodiment, the polymer with ester linkages may be octyldodecyl citrate cross polymer (trade name COSMOSURF® CE-100) (para. [0060]). The combination of polymers is taught to comprise “about 0.1 wt. % to about 5 wt. %” of the alkyl dimethicone, polymer with ester linkages, and phenyl silicon or styrene, rendering obvious the range recited in instant claim 35 (claim 24).
Additional components that are taught to be in the composition include the emollient capric/caprylic triglycerides (trade name DERMOL M5), the emulsifier cetyl PEG/PPG-10/1 dimethicone (trade name ABIL® EM-90), and the humectant glycerin (trade name Emery 917) (para. [0060] and [0113]). The combination of lauryl PEG-8 dimethicone and cetyl PEG/PPG-10/1 dimethicone is taught to also act as an emulsifier (claim 14). Finally, the composition is taught to further comprise water, an emulsifier, an emollient, a humectant, a film former, and a preservative, or any combinations thereof (claim 13).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the range of quantities of metal oxide, emollient, emulsifiers, and dimethicone and the amounts of propylene glycol, caprylic/capric triglycerides, C12-C15 alkyl benzoate, and additional components taught by the Lademann reference and the range of quantities of film former taught by the Spaulding reference.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Lademann, Spaulding, and Caswell to arrive at the claimed invention because simple substitution of one known element for another in related inventions produces predictable results. Lademann teaches compositions which, in some embodiments, comprise ZnO and/or TiO-2- as pigments and UV protectants, plant extracts, caprylic/capric triglycerides as an emollient, dimethicone, C12-15 alkyl benzoates, and water, in quantities that overlap with or fall within the ranges recited in the instant claims, and formulated as non-foaming lotions.
One of ordinary skill in the art would be motivated in view of the teachings of Spaulding to substitute the humectant glycerin, the mixture of cetyl polyethylene glycol (PEG)/polypropylene glycol (PPG)-10/1 dimethicone and lauryl PEG-8 dimethicone as an emulsifier, and an octyldodecyl citrate crosspolymer as a film former in the invention of Lademann because Spaulding taught the components to work in a photoprotective cosmetic composition and that the polymers worked in synergy to form a protective film while also acting as an emulsifier. An artisan would desire an effective composition, including a synergistic mixture of polymers that display multiple functions at amounts that produce a total of 3.0-6.0% w/w organosilicone compounds, and it would have been obvious for them to substitute the components taught by Spaulding into the invention of Lademann to produce an optimized product. As a result, there is a reasonable expectation of success in arriving at the invention of claims 21-22, 24-38 and 41-43 in view of the teachings of Lademann and Spaulding.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Lademann (WIPO International Publication No. WO 2019/043450 A2, published on 7 March 2019, provided by Applicant in IDS filed on 20 September 2022) in view of Spaulding (U.S. Patent Application Publication No. US 2017/0189293 A1, published on 6 July 2017) as applied to claims 21-22, 24-38 and 41-43 above, and further in view of Caswell (Cosmetics & Toiletries 2001, 116 (9), 49.).
Lademann and Spaulding have been described above, and particularly relevant to claim 23, Spaulding teaches that the ester C12-15 alkyl benzoates (trade name FINSOLV® TN) may be present in an amount of 20-60% w/w (para. [0060-0061]).
Lademann and Spaulding do not teach a motivation for C12-15 alkyl benzoate to be present in an amount from 20-60% w/w. This deficiency is offset by the teachings of Caswell.
Caswell teaches guidelines on developing sunscreen formulations (pg. 49, left col., para. 1-3). Sunscreen actives are taught to be the component that prevent skin damage from UV radiation via absorbing or reflecting UV radiation or reducing skin inflammation (pg. 49, Interaction between UV and sun-screen actives). Caswell teaches that, once a sunscreen active(s) has been chosen, the next step is to pick an appropriate solvent that solubilizes and stabilizes the sunscreen active(s) (pg. 54, Sunscreen Active Solvents, para. 1). The “best starting point” for selecting a solvent is taught to be benzoate esters, in particular C12-15 alkyl benzoates (pg. 54, Sunscreen Active Solvents, para. 2).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Caswell with the invention rendered obvious by the teachings of Lademann and Spaulding to arrive at the invention of claim 23 because simple substitution of one known element for another in related inventions produces predictable results. Lademann and Spaulding rendered obvious compositions which comprise ZnO and/or TiO-2- as pigments and UV protectants, plant extracts, caprylic/capric triglycerides as an emollient, dimethicone, glycerin as a humectant, a mixture of cetyl polyethylene glycol (PEG)/polypropylene glycol (PPG)-10/1 dimethicone and lauryl PEG-8 dimethicone as an emulsifier, an octyldodecyl citrate crosspolymer as a film former, and water, in quantities that overlap with or fall within the ranges recited in the instant claims, and formulated as non-foaming lotions.
One of ordinary skill in the art would be motivated in view of the teachings of Caswell to use C12-15 alkyl benzoates in the larger amount, as taught by Spaulding, because Caswell teaches the species to be the best starting point for solubilizing and stabilizing sunscreen actives in a sunscreen composition. Landemann teaches one discrete quantity of C12-15 alkyl benzoates to use in a composition, while Spaulding teaches an appropriate range to use in sunscreen compositions. An ordinary artisan would desire their sunscreen composition to be stable and would therefore be motivated to use C12-15 alkyl benzoates in the range taught by Spaulding. As a result, there is a reasonable expectation of success in arriving at the invention of claim 23 in view of the teachings of Lademann and Spaulding and further in view of the teachings of Caswell.
Response to Arguments
The Applicant’s arguments, filed on 15 April 2026, have been fully considered but are not persuasive.
In the first two para. of the section titled “Section 103 Rejection” beginning on pg. 9, Applicant argues that neither the Lademann nor Spaulding reference teach an organosilicone compound consisting of dimethicone in an amount from 3-6% w/w. The Examiner disagrees and directs the Applicant to Example 6 of the Lademann reference which teaches 5% w/w dimethicone (also, vide supra).
In the para. that spans the bottom of pg. 8 and top of pg. 9, Applicant reiterates their argument from the response filed on 12 August 2025, that the claimed composition demonstrates unexpected and surprising results. As stated in the Final Office Action mailed on 16 October 2025, guidelines on determining whether results are expected or unexpected are provided in MPEP § 716.02. To demonstrate that results are unexpected and significant, the Applicant must provide evidence that establishes “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims”. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e).
Example 1 is compared to Comparative Example 1, which is a commercially available mineral sunscreen lotion (para. [0048]) that comprises 11% w/w ZnO and TiO2 and no C12-15 alkyl benzoate (para. [0049]). Example 1 is a composition comprising:
≥15.0% w/w C12-15 alkyl benzoate (para. [0049]);
one or more other emollients selected from plant-derived oil, dimethicone, glyceryl stearate, and/or butyloctyl salicylate in an amount from 0.1-6.0% w/w (para. [0049]);
glycerin and/or stearyl/octyldodecyl citrate crosspolymer in an amount from 1.5-7.5% w/w (para. [0050]);
an emulsifier that may be cetyl PEG/PPG-10/1 dimethicone, lauryl PEG-8 dimethicone, and/or caprylic/capric triglyceride and stearalkonium bentonite and propylene carbonate in an amount from 2.0-10.0% w/w (para. [0050]);
VP/eicosane copolymer or stearyl/octyldodecyl citrate crosspolymer in an amount <4.0% w/w (para. [0050]);
water in an amount of ≥30.0% w/w (para. [0051]);
an additional ingredient selected from phenoxyethanol and ethylhexylglycerine, sodium chloride, alcohol, extracts, bismuth oxychloride and mica and iron oxide, mica and iron oxides and TiO2, ethylhexyl methoxycrylene, and/or polyhydrostearic acid in an amount from 0.01-5.0% w/w (para. [0051]); and
11.5% w/w ZnO and/or TiO2 (Table 2).
Table 2 presents a comparison of sensory attributes of Example 1 and Comparative Example 1, using a numerical rating system based upon ASTM E 1490 – 03 Standard Practice for Descriptive Skinfeel Analysis of Creams and Lotions (para. [0048]).
The comparison of Example 1 and Comparative Example 1 is not a persuasive demonstration of unexpected and surprising results. The only comparison of the two compositions allowed by the information provided is of the relative concentrations of ZnO/TiO2, which is approximately equal, and the relative concentrations of C12-15 alkyl benzoate, which is ≥15.0% w/w in Example 1 and 0% w/w in Comparative Example 1 – no analysis regarding the additional ingredients has been presented. The only conclusion that can be drawn from Table 2 is that the inclusion of C12-15 alkyl benzoate at a concentration of ≥15.0% w/w appears to increase the rub-in, spreadability, and sticky/tackiness attributes and decrease the thickness, though no analysis has been provided that would demonstrate the attribute changes did not arise from other ingredients increasing/decreasing in concentration. Further, the instant spec. discloses that “a rating difference of greater than one (1) point signifies a statistically significant change” (para. [0053]) but does not provide a statistical analysis to support this assertion.
The Applicant has also not demonstrated unexpected results commensurate in scope with the claimed invention. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d). Only one example outside the claimed range has been provided (Comparative Example 1) and the concentration of C12-15 alkyl benzoate in Example 1 is only stated as ≥15.0% w/w, which encompasses values outside of the claimed range of 5.0-30.0% w/w and therefore does not demonstrate the criticality of the claimed range. Therefore, Applicant has failed to demonstrate unexpected and surprising results and the argument is found to be unpersuasive.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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