DETAILED ACTON
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/18/2025 has been entered.
Status of Claims
Receipt of Applicant’s response, dated 11/18/2025, is acknowledged.
Claims 16 and 18-36 are pending.
Claims 1-15 and 17 are canceled.
Claims 16 and 27 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Claims 28-35 remain withdrawn from consideration as being drawn to a nonelected invention.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.
Information Disclosure Statement
The information disclosure statement (IDS) filed 11/18/2025 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objection to claim 16 set forth in the Office action dated 07/25/2025 is hereby withdrawn in light of Applicant’s amendments to the claims. The Examiner thanks Applicant for recognizing, and handling accordingly, the typographical error of “claim 1 for “claim 16” in the objection set forth in the Office action dated 07/25/2025.
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 and Sebagh and claim 25 over Ehlis et al in view of Ikebe et al and Sebagh and further in view of Kuromiya et al set forth in the Office action dated 07/25/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendment.
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, 18-24, 26-27, 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) and Cosmetics Info (“Cetearyl Ethylhexanoate”, published 03/14/2014 determined using Wayback Machine) and Franke (KR 100560092 B1, published 03/10/2006).
Note: The instant claims are being examined to the extent of the elected species of:
Polyglycerol esters of fatty acids as the species of emulsifier;
Thickening agent, emollient, skin care component, and vitamin as the additional ingredients in the emulsion;
Xanthan gum and polyacrylic acid as the species of thickening agent;
Dimethicone as the species of emollient;
Cetearyl ethylhexanoate as the species of skin care component; and
Vitamin E as the species of vitamin.
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]). The oil components can be used in an amount from 1 to 60% by weight based on the total weight of the composition (e.g., [0053]).
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]), however Ehlis et al is silent regarding the amounts of the hydrotropic agents that can be added to the composition.
Ehlis et al do not teach the amount of ethanol in the composition nor do they teach the composition comprising cetearyl ethylhexanoate.
These deficiencies are made up for in the teachings of Ikebe et al, Cosmetics Info and Franke.
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).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, in the composition of Ehlis et al to use 5-50% by mass of ethanol and a hydrophilic thickener, including xanthan gum or carboxyvinyl polymer (i.e., cross-linked form of polyacrylic acid), in order to provide added stability to the oil-in-water emulsion and to add 1 to 8% by weight of cetearyl ethylhexanoate to act 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. Furthermore, ethanol is taught in Ehlis et al to adjust the flow behavior of oil-in-water emulsions. There would have been a reasonable expectation of success because the composition of Ehlis et al is compatible with ethanol and emollients and all of Ehlis et al, Ikebe et al, and Franke teach emulsions for use on the skin.
The modified oil-in-water emulsion composition of Ehlis et al based on the teachings of Ikebe et al, Cosmetics Info, and Franke renders obvious the oil-in-water emulsion of instant claims 16, 18-24, 26-27, and 36.
The modified oil-in-water emulsion composition of Ehlis et al comprises an aqueous phase, oil phase, emulsifier, ethanol, cetearyl ethylhexanoate, emollient, and thickening agent each in overlapping amounts with the ranges of weight percentages required by the instant claims. 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)). See MPEP 2144.05.
Regarding instant claim 36, because the modified oil-in-water emulsion composition of Ehlis et al in view of Ikebe et al, Cosmetics Info, and Franke 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, and Franke 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).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Ehlis et al (as cited above) in view of Ikebe et al (as cited above), and Cosmetics Info (as cited above), and Franke (as cited above) as applied to claims 16, 18-24, 26-27, and 36 above, and further in view of Kuromiya et al (JP 2012153622 A, published 08/16/2012, cited in Notice of References Cited dated 02/11/2025).
The modified oil-in-water emulsion composition of Ehlis et al in view of Ikebe et al, Cosmetics Info, and Franke has been discussed supra.
As discussed supra, Ehlis et al teach a composition comprising from 5 to 50% by weight of an oil phase and from 30 to 90% by weight of a water phase. The teaching of these ranges of oil and water phases read on weight ratios that fall within the claimed range of instant claim 25 (e.g., a composition comprising 30% by weight of a water phase and 5% by weight of an oil phase has a weight ratio of water phase to oil phase of 6).
However, none of Ehlis et al, Ikebe et al, Cosmetics Info, nor Franke teach a specific weight ratio requirement of the aqueous phase to the oil phase being from 2.0 to 15.0.
This deficiency is made up for in the teaching of Kuromiya et al.
Kuromiya et al teach a composition for use on skin that imparts moistness, smoothness, and a refreshing feeling to the skin (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 similarly 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, to provide the modified oil-in-water emulsion of Ehlis et al in view of Ikebe et al, Cosmetics Info, and Franke with a weight ratio of the aqueous phase to oil phase between 1:1 and 30:1. One of ordinary skill in the art would have been motivated to adjust the ratio of the aqueous phase to oil phase to 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 to combine the teachings of Ehlis et al, Ikebe et al, Cosmetics Info, and Franke with the teaching of Kuromiya et al because of the commonality of the teachings relating to compositions in the form of emulsions for use on skin. Furthermore, Kuromiya et al teach a cosmetic composition for use on skin with many of the same components as the modified oil-in-water emulsion of Ehlis et al in view of Ikebe et al, Cosmetics Info, and Franke. Additional rationale to combine would have existed because the cosmetic composition of Kuromiya et al can further comprise a UV light protective agent (e.g., [0084]) and also can be used in a cosmetic product for the eye i.e., eye shadow (e.g., [0095]).
Therefore, the modified oil-in-water emulsion of Ehlis et al, in view of the teachings of Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al, renders obvious the oil-in-water emulsion of instant claim 25. 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)). See MPEP 2144.05.
Response to Applicant’s Arguments
Applicant’s arguments filed on 11/18/2025 have been considered.
Applicant argues that with the amendments to claims 16 and 27 to recite that the emulsion comprises 6 to 10 wt.-% of cetearyl ethylhexanoate, the instant claims are no longer obvious over the prior art applied in the rejections under 35 USC 103 because Sebagh teaches a maximum of 5 wt.% of cetearyl ethylhexanoate. Further, Applicant argues that there is no teaching or suggestion that more than 5 wt% cetearyl ethylhexanoate should be used in any emulsion. Applicant argues that the emulsions of Sebagh do not utilize ethanol as described in the presently amended claims, and Sebagh does not provide any reason why cetearyl ethylhexanoate, particularly more than 5 wt.% cetearyl ethylhexanoate, would be beneficial in an emulsion containing ethanol as a component.
The arguments regarding the teaching of Sebagh have been fully considered by the Examiner but are moot because the rejections under 35 USC 103 of claims 16, 18-24, 26-27, and 36 over Ehlis et al in view of Ikebe et al and Sebagh and of claim 25 over Ehlis et al in view of Ikebe et al and Sebagh and further in view of Kuromiya et al set forth in the Office action dated 07/25/2025 have been withdrawn in favor of the new grounds of rejection contained in the instant Office action that do not rely on the teaching of Sebagh. The oil-in-water emulsion composition of the new grounds of rejection contained in the instant Office action meet all of the limitations of the instant claims including a reason to use cetearyl ethylhexanoate in an amount of from 1 to 8% by weight (See the above rejection under 35 USC 103 for more details).
Applicant argues that in contrast to the presently claimed invention that maintains a high disinfectant effectiveness against virus infections while at the same time maintaining the skin barrier function and providing moisturizing properties to skin with increased evaporation time of the ethanol and prolonged contact of the skin with the ethanol, Ehlis et al instead describe a sunscreen composition used to absorb UV light but does not utilize ethanol and instead requires a mixture of oxirane compounds and hydrophenyl-triazone compounds and Ikebe describes an oil-in-water emulsion that is stable when ethanol is highly blended into the emulsion, but requires the use of a polyether-modified silicone as a surfactant in order to stably incorporate the ethanol, and accordingly, there is no teaching provided within Ehlis, Ikebe, or Sebagh as to which specific ingredients should be selected and combined together and which ingredients should be excluded to form a final composition.
The above arguments have been fully considered by the Examiner but are not found persuasive because the new grounds of rejection contained in the instant Office action is not based solely on the teaching of Ehlis et al, but rather the combined teachings of Ehlis et al, Ikebe et al, Cosmetics Info, and Franke (instant claims 16, 18-24, 26-27, and 36) and of Ehlis et al, Ikebe et al, Cosmetics Info, Franke, and Kuromiya et al (instant claim 25). Applicant is reminded that the reason or motivation to modify the 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, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Applicant has not challenged or undermined the motivation on which the rejection relies, see MPEP 2144(IV). Further, the oil-in-water emulsion of the instant claims recites components using ‘comprising’ language which is inclusive or open-ended and therefore does not exclude the presence of additional, unrecited elements, e.g., a mixture of oxirane compounds and hydrophenyl-triazone compounds and/or a polyether-modified silicone, and therefore the prior art does not need to provide a teaching for the exclusion of such components. See MPEP 2111.03.
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619