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 06/04/2026 is acknowledged.
Claims 16 and 18-36 are pending.
Claims 1-15 and 17 are canceled.
Claims 16 and 25 are amended.
Claims 28-35 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 16, 18-27, and 36 are under consideration in the instant Office action to the extent of the elected species, i.e., the emulsifier is polyglycerol esters of fatty acids, and that the oil-in-water emulsion comprises a thickening agent being the combination of xanthan gum and polyacrylic acid, an emollient being dimethicone, a skin care component being cetearyl ethylhexanoate, and a vitamin being vitamin E.
REJECTIONS WITHDRAWN
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 16, 18-24, 26-27, and 36 over Ehlis et al in view of Ikebe et al, Cosmetics Info, and Franke and of claim 25 over Ehlis et al in view of Ikebe et al, Cosmetics Info, and Franke and further in view of Kuromiya et al set forth in the Office action dated 12/09/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the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 16, 18-27, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Ehlis et al (EP 3556748 A1, published 10/23/2019, cited in Notice of References Cited dated 02/11/2025) in view of Ikebe et al (WO 2010/113795A1, published 10/07/2010, cited in Notice of References Cited dated 02/11/2025), Cosmetics Info (“Cetearyl Ethylhexanoate”, published 03/14/2014 determined using Wayback Machine, cited in Notice of References Cited dated 12/09/2025), Franke (KR 100560092 B1, published 03/10/2006, cited in Notice of References Cited dated 12/09/2025), and Kuromiya et al (JP 2012153622 A, published 08/16/2012, cited in Notice of References Cited dated 02/11/2025).
Ehlis et al teach a UV absorber mixture that can be used on human skin and in cosmetic and pharmaceutical applications to protect against UV radiation (See entire document, e.g., Abstract, [0018]). Ehlis et al teach a cosmetic or pharmaceutical composition comprising from 5 to 50% by weight of an oil phase, from 30 to 90% by weight of a water phase, and from 1 to 20% by weight of an emulsifier, where weight is based on the total weight of the composition, and wherein the oil phase comprises 1-70% by weight of the UV absorber mixture (e.g., [0020]). The composition can be formulated into a variety of preparations including skin-care preparations (e.g., [0023]), where the formulation may exist in the form of an oil-in-water emulsion (e.g., [0024]). Ehlis et al teach that when the composition is in the form of an oil-in-water emulsion, the composition comprises from 0.1 to 70% by weight of the UV absorber mixture, from 1 to 60% by weight of at least one oil component, from 0 to 30% by weight of at least one emulsifier, from 10 to 90% by weight of water, from 0 to 88.9% by weight of further cosmetically tolerable adjuvants, where weight is based on the total weight of the composition (e.g., [0051]).
The oil phase can comprise any oil suitable for cosmetic formulations, for example one or more hydrocarbon oils, a wax, a natural oil, a silicone oil, a fatty acid ester or a fatty alcohol (e.g., [0034]). Any conventional emulsifier can be used in the composition (e.g., [0054]), and suitable examples include diisostearoyl polyglyceryl-3-diisostearates, polyglyceryl-3-diisostearates, triglyceryl diisostearates, polyglyceryl-2-sesquiisostearates, polyglyceryl dimerates, mixtures of compounds from a plurality of those substance classes are also suitable; partial esters based on linear, branched, unsaturated or saturated C6-C22 fatty acids, ricinoleic acid and also 12-hydroxystearic acid and on glycerol, polyglycerol, pentaerythritol, dipentaerythritol, sugar alcohols (e.g. sorbitol), alkyl glucosides (e.g. methyl glucoside, butyl glucoside, lauryl glucoside) and also polyglucosides (e.g. cellulose), for example polyglyceryl-2-dihydroxystearates or polyglyceryl-2-diricinoleates (e.g., [0055]). The composition may include further cosmetically tolerable adjuvants and additives such as thickeners including xanthan gum, polymers including polyacrylic acid, and silicone compounds including dimethicone (e.g., [0062], [0066], [0068], Example B3). Secondary light-protective substances of the antioxidant type, which interrupt the photochemical reaction chain triggered when UV radiation penetrates the skin or hair, can be used, including vitamin E in the form of vitamin E acetate (e.g., [0074]). Hydrotropic agents, including ethanol, can be added to the composition in order to improve flow behavior (e.g., [0075]).
Ehlis et al do not teach the amount of hydrophobic agents, which include ethanol, in the composition, do not teach the composition comprising cetearyl ethylhexanoate, and do not teach a weight ratio of the aqueous and oil phases.
These deficiencies are made up for in the teachings of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al.
Ikebe et al teach a cosmetic oil-in-water emulsion comprising 5-50% by mass of ethanol (See entire document, e.g., [0006], [0015]). Ikebe et al teach that by blending in 5-50% by mass of ethanol and a hydrophilic thickener into the oil-in-water emulsion, the stability of the emulsion is increased (e.g., [0013]). Ikebe et al teach that suitable thickeners to be used in the emulsion is not particularly limited, and include xanthan gum and carboxyvinyl polymer (i.e., cross-linked form of polyacrylic acid) (e.g., [0016]-[0020]).
Cosmetics Info teaches that cetearyl ethylhexanoate is used in the formulation of a wide variety of cosmetics and personal care products acting as a lubricant on the skin's surface to give it a soft and smooth appearance, imparting water-repelling characteristics to cosmetics and personal care products, improving spreadability, and improving dry skin conditions (See entire document). Franke teaches skin care formulations, in the form of emulsions, that are suitable for the prevention and treatment of dry, sensitive skin, or as a therapeutic or therapeutic adjuvant for eczema or psoriasis skin, and exhibit good aesthetics (See entire document, e.g., Abstract). The oil phase of the skin care formulations comprises cetearyl octanoate (i.e., synonymous with cetearyl ethylhexanoate) from 1 to 8% by weight (e.g., First Par. of Page 3 and Bottom of Page 3 of English translation).
Kuromiya et al teach a composition for use on skin that imparts moistness, smoothness, and a refreshing feeling to the skin (See entire document, e.g., [0002], [0009], [0048]). The composition of Kuromiya et al is in the form of an oil-in-water emulsion, where the weight ratio of aqueous phase:oil phase is 1 to 30:1 (e.g., [0092]). Kuromiya et al teach that the amount of the oil phase in the oil-in-water emulsion composition can be adjusted according to the purpose of use of the composition (e.g., [0101]). The composition of Kuromiya et al is taught to comprise an oil phase comprising an oily substance e.g., low-viscosity liquid fat, solid fat, wax, hydrocarbon oil, and synthetic ester oil, an aqueous phase, water-soluble organic solvent e.g., ethanol, thickener, and vitamin E (e.g., [0033], [0051], [0054], [0071]).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Ehlis et al, Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al, to provide a skin-care composition in the form of an oil-in-water emulsion comprising from 0.1 to 70% by weight of an UV absorber mixture, from 1 to 60% by weight of at least one oil component, from 0 to 30% by weight of at least one emulsifier, from 10 to 90% by weight of water, and from 0 to 88.9% by weight of further cosmetically tolerable adjuvants, where weight is based on the total weight of the composition, wherein the weight ratio of the water phase to oil phase is between 1:1 and 30:1, wherein the at least one oil component comprises one or more hydrocarbon oils, a wax, a natural oil, a silicone oil, a fatty acid ester and/or a fatty alcohol, wherein the at least one emulsifier comprises diisostearoyl polyglyceryl-3-diisostearates, polyglyceryl-3-diisostearates, triglyceryl diisostearates, polyglyceryl-2-sesquiisostearates, polyglyceryl dimerates, mixtures of compounds from a plurality of those substance classes, partial esters based on linear, branched, unsaturated or saturated C6-C22 fatty acids, ricinoleic acid, 12-hydroxystearic acid and on glycerol, polyglycerol, pentaerythritol, dipentaerythritol, sugar alcohols (e.g. sorbitol), alkyl glucosides (e.g. methyl glucoside, butyl glucoside, lauryl glucoside) and/or polyglucosides (e.g. cellulose), for example polyglyceryl-2-dihydroxystearates or polyglyceryl-2-diricinoleates, and wherein the further cosmetically tolerable adjuvants comprise thickeners being xanthan gum, carboxyvinyl polymer (i.e., cross-linked form of polyacrylic acid), and dimethicone, a secondary light-protective substance being vitamin E acetate, a hydrotropic agent being ethanol from 5-50 mass%, a lubricant being cetearyl ethylhexanoate from 1 to 8% by weight.
One of ordinary skill in the art would have been motivated to include 5-50% by mass of ethanol and to include thickeners including xanthan gum and carboxyvinyl polymer in order to provide added stability to the oil-in-water emulsion as is taught by Ikebe et al. Further, ethanol is taught in Ehlis et al to adjust the flow behavior of oil-in-water emulsions. One of ordinary skill in the art would have been motivated to include 1 to 8% by weight of cetearyl ethylhexanoate to act as a lubricant on the skin's surface in order to give it a soft and smooth appearance, imparting water-repelling characteristics to cosmetics and personal care products, improving spreadability, and improving dry skin conditions as is taught by Cosmetics Info and Franke. One of ordinary skill in the art would have been motivated to include the aqueous phase and oil phase in a weight ratio between 1:1 and 30:1 in order to provide a composition with physical parameters that are desirable for use on skin, such as moistness, smoothness, and a refreshing feeling as taught by Kuromiya et al. There would have been a reasonable expectation of success in making the aforementioned modifications to the composition of Ehlis et al because Ehlis et al teach that the composition is compatible with ethanol and cosmetically tolerable adjuvants, and because all of Ehlis et al, Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al teach cosmetics/emulsions for use on the skin for which the cosmetics/emulsions of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al comprise many of the same components as the composition of Ehlis et al.
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)). In the case where the claimed ranges "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)).
Regarding instant claim 36, because the modified oil-in-water emulsion composition of Ehlis et al in view of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al is the same as the oil-in-water emulsion of the instant claims, the modified oil-in-water emulsion composition of Ehlis et al in view of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al necessarily has an antiviral effect when topically applied to the skin against an enveloped virus belonging to the group consisting of Poxviridae, Paramyxoviridae, Filoviridae, Orthomyxoviridae, Astroviridae, and Coronaviridae. 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 (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Thus, the modified oil-in-water emulsion composition of Ehlis et al in view of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al renders obvious instant claims 16, 18-27, and 36.
Response to Applicant’s Arguments
Applicant’s arguments filed on 06/04/2026 have been considered.
Applicant argues that neither Ehlis nor Ikebe teach or suggest the use of cetearyl ethylhexanoate in an oil-in-water emulsion and that because cetearyl ethylhexanoate is a hydrophobic oily liquid it would not be expected to be able to be readily incorporated into aqueous-based mixtures such as oil-in-water emulsions without separating into distinct separate layers. Applicant argues that Cosmetics Info generally describes the use of cetearyl ethylhexanoate in cosmetic formulations, but does not teach or suggest incorporating cetearyl ethylhexanoate in an oil-in-water emulsion. Applicant argues that Franke does not teach or suggest incorporating cetearyl ethylhexanoate in an oil-in-water emulsion and, instead, only discloses water-in-oil emulsions containing cetearyl ethylhexanoate where the aqueous phase is dispersed in a larger oil phase. Applicant argues that because cetearyl ethylhexanoate is a hydrophobic oily liquid, one skilled in the art could expect that cetearyl ethylhexanoate could be incorporated into a water-in-oil emulsion where the oil phase forms a larger portion of the emulsion than the aqueous phase, however, there is no teaching in Franke that would allow one skilled in the art to predict that cetearyl ethylhexanoate could be successfully incorporated into an oil-in-water emulsion, especially where the aqueous phase is 2.0 to 15.0 times greater (by weight) than the oil phase, and that Franke excludes "lower alcohols", such as ethanol, from their emulsion which is in contrast to the presently amended claims which require 15.0 to 30.0 wt.-% of ethanol. Applicant argues that one skilled in the art would not have predicted
that Franke, which discloses incorporating cetearyl ethylhexanoate in a water-in-oil emulsion
and which excludes ethanol, could have been combined with the aqueous-based oil-in-water
emulsions of Ehlis and Ikebe to successfully arrive at each and every limitation of the presently
amended claims. Applicant argues that Kuromiya does not teach or suggest that cetearyl ethylhexanoate could be successfully incorporated into an oil-in-water emulsion.
The above arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the Examiner agrees that neither Ehlis nor Ikebe teach or suggest the use of cetearyl ethylhexanoate in an oil-in-water emulsion, and as can be seen in the rejection under 35 USC 103 above, one of the deficiencies of the teaching of Ehlis et al is that they do not teach the composition comprising cetearyl ethylhexanoate, which is cured by the teachings of Cosmetics Info and Franke. The arguments regarding the secondary references not teaching specific limitations of the claimed invention are not found persuasive because it is not a requirement that each secondary reference teach every limitation of the claimed invention, but rather the rejection under 35 USC 103 is based on the combined teachings of Ehlis et al, Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al and not each of their individual teachings considered separately. For example, the teaching of Kuromiya et al is not relied upon for the fact it would have been prima facie obvious to incorporate cetearyl ethylhexanoate into an oil-in-water emulsion as argued by Applicant, but rather, and as can be seen in the rejection under 35 USC 103 above, the teaching of Kuromiya et al is relied upon for the fact it would have been prima facie obvious to include the aqueous phase and oil phase in the composition of Ehlis et al in a weight ratio between 1:1 and 30:1 and that one of ordinary skill in the art would have been motivated to do in order to provide a composition with physical parameters that are desirable for use on skin, such as moistness, smoothness, and a refreshing feeling. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Examiner directs Applicant to the above rejection under 35 USC 103, which explains in detail why a person of ordinary skill in the art would have looked to each of the teachings of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al from the teaching of Ehlis et al and would have made each of the modifications to the composition of Ehlis et al discussed therein based on the teachings of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al.
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.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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