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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 3, 2026 has been entered.
Status of Claims
Claims 8, 23 and 28 are pending. Claims 1-7, 9-22 and 24-27 are canceled. Claim 8 is amended.
Claims 8, 23 and 28 are examined on their merits in light of the elected species of 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane and ethylhexyl methoxycinnamate.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
New Objections/New Rejections
Claim Objections
Claim 8 is objected to because of the following informalities: the recitation of “W/O type”. This term appears to be an abbreviation. The full name should be spelled ut the first time this term appears in the claim, or it cannot be clear what exactly this term stands for. Appropriate correction is required.
Claim Rejections - 35 USC §112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8, 23 and 28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation “W/O type”. This phrase is vague and confusing and it is not clear what “W/O type” means. It is unclear whether it means a water-in-oil emulsion or an oil-in-water emulsion or a composition that is similar to an emulsion but not an actual emulsion.
This phrase is not defined nor explained in the specification and cannot be determined by reference to any other claims. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claims.
Claims 23 and 28 are rejected as depending from claim 8 without providing any further clarification as to what the “W/O type” is.
Rejections Maintained
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
The rejection of claims 8, 23 and 28 under 35 U.S.C. 103 as being unpatentable over Nielson et al. US 2004/0258646 (12/23/2004) in view of Auguste et al. US 2004/0197284 (10/7/2004) as evidenced by the instant specification is maintained.
Nielson teaches oil-in water-emulsions containing interface active substances and ascorbic acid that have excellent usability, stability and bioavailability. (See Abstract, [0021]). Nielson teaches that its emulsions are advantageous and comprise fats, oils , waxes and other fatty substances. (See [0067]). Nielson teaches that its emulsions are ideal for cosmetic or dermatological preparations and can incorporate antioxidants and are particularly suitable for the treatment or prevention of UV light-induced skin damage or skin aging effects. (See [0031]).
Nielson teaches that beeswax is a naturally occurring emulsifier. (See [0101]). Beeswax is called for in instant claim 23. Beeswax is an oily substance that is solid at 25˚C as evidenced by the instant specification at [0024]. An oily substance that is solid at 25˚C is called for in instant claims 8 and 23.
Nielson teaches that its preparations can be present in various forms and can be a water-in-oil emulsion, an oil-in-water emulsion, a water-in-oil microemulsion or an oil-in-water microemulsion. (See [0059]). A water-in-oil emulsion is called for in instant claim 8.
Nielson teaches that octamethyltetrasiloxane can be advantageously included as the silicone oil to be used, but that other silicone oils can also advantageously be used in the invention. (See [0081]). Nielson teaches that an additional silicone oil such as dimethylpolysiloxane can be used in the invention. (See [0073]). Dimethylpolysiloxane is called for in instant claim 28.
Nielson teaches that UV absorbers can be used in its compositions. (See [0148]) One such UV absorber is 2-ethylhexyl methoxycinnamate. (See [0152]). 2-ethylhexyl methoxycinnamate is an organic UV absorber as called for in instant claim 8.
Nielson teaches octomethyltetrasiloxane but does not expressly teach 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane. This deficiency is made up for with the teachings of Auguste.
August teaches a composition comprising a volatile silicone fatty phase comprising a volatile silicone oil. (See Abstract). August teaches that its composition can be used for making up and caring for human keratin materials. (See Abstract). 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane is a volatile silicone oil that is taught to be suitable in this invention. (See [0113]). August teaches that 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane has a desirable evaporation profile that allows the user to properly and uniformly apply the cosmetic. (See [0003], [0037]).
Auguste teaches that its composition may be in the form of an emulsion or an anhydrous composition. (See [0206]). Auguste teaches a water-in-oil emulsion in Example 1.
3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane is called for in instant claim 8. With respect to the properties called for in instant claim 8, boiling point and viscosity, of 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane, 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane is the exact same substance as that claimed and it has a boiling point in a range of 205 to 255 ˚C and a viscosity of less than 5 mm2/s at 25 ˚C as evidenced by the specification in [0012], [0026], [0028] and [0030]. A composition having the same components as those claimed will necessarily have the same properties as those claimed. See MPEP 2112.01[R-3]: “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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention making the Nielson composition of an oil-in water-emulsion containing beeswax, dimethylpolysiloxane, octamethyltetrasiloxane, surface active substances and ascorbic acid to select 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane as the octamethyltetrasiloxane as taught by August in order to have a octametyltetrasiloxane with a desirable evaporation profile for a cosmetic and in light of Nielson’s teaching that octamethyltetrasiloxanes are advantageous in its composition.
There would be an expectation of success because Nielson teaches that octamethyltetrasiloxanes are preferred for use in its compositions, so the 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane taught by August would be expected to work well in the Nielson composition. 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), MPEP 2144.07.
There would also be a reasonable expectation of success because Nielson teaches that its invention can be a water-in-oil emulsion and August teaches that its invention can be a water-in-oil emulsion. Therefore, the claimed invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because the prior art is suggestive of the claimed invention.
Response to Arguments
Applicants’ remarks filed May 15, 2026 have been fully considered and are found to be unpersuasive as described below.
Applicants note the amendment to the claims and point out where support can be found for them. Please note that support can be found for nonhydrous in the nonaqueous compositions of Examples 6, 7 and 17.
Claim Rejections under 35 USC Sec. 103
Applicants state that they are reiterating their arguments advanced previously.
With respect to the obviousness rejection Applicants argue that Nielson teaches octomethyltetrasiloxane but does not expressly teach 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane. Applicants note that octamethyletrasiloxanes are outside the scope of the claimed organosiloxane.
Applicants acknowledge that August describes “3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane”, which is within the scope of component (A) of amended claim 8. However, there is no suggestion that the combination of components (A) 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane and components (B) an organic ultraviolet absorber and/or an oily component can provide excellent solubility and compatability, especially for a cosmetic.
Applicants assert that Table 1 of the specification demonstrates the superior effects of the cosmetic that are achieved only by the limited components (A) and (B). These superior effects are excellent solubility and compatibility, and a cosmetic with a light touch, good spread, good feel, good stability and excellent water repellency.
Applicants further assert that without the present disclosure a person skilled in the art would not have combined Nielson and Auguste but even if combined the result would not be the instantly claimed invention.
Applicants assert that the instant claims are drawn to a W/O type or nonaqueous composition, but Nielson is drawn to an oil-in-water emulsion which is opposite to a W/O type emulsion. Applicants then further assert that a person of ordinary skill in the art would not have combined Nielson and Auguste because Auguste is not an oil-in-water emulsion.
Response
Applicants arguments have been carefully reviewed but are not found to be persuasive. Applicants’ assert that the instant claims are drawn to a W/O type or nonaqueous composition, but Nielson is drawn to an oil-in-water emulsion is unpersuasive, respectfully, because it is incorrect. Nielson teaches that its preparations can be present in various forms and can be a water-in-oil emulsion, an oil-in-water emulsion, a water-in-oil microemulsion or an oil-in-water microemulsion. (See [0059]).
Since Nielson obviously expressly teaches that its composition form can be a W/O type emulsion, a person of ordinary skill in the art would combine the teachings of Nielson with those of Auguste.
With respect to Applicants reiterating their arguments, the response to these arguments is also reiterated. Applicants’ arguments that the prima facie obviousness case is not made because there is no suggestion that the combination of components (A) 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane and components (B) an organic ultraviolet absorber and/or an oily component can provide excellent solubility and compatibility is not found to be persuasive because it is not necessary that the prior art recognize this.
As described in the rejection it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention making the Nielson composition of an water-in-oil emulsion containing beeswax, dimethylpolysiloxane, octamethyltetrasiloxane, surface active substances and ascorbic acid to select 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane as the octamethyltetrasiloxane as taught by August in order to have a octametyltetrasiloxane with a desirable evaporation profile for a cosmetic and in light of Nielson’s teaching that octamethyltetrasiloxanes are advantageous in its composition.
There would be an expectation of success because Nielson teaches that octamethyltetrasiloxanes are preferred for use in its compositions, so the 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane taught by August would be expected to work well in the Nielson composition. 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), MPEP 2144.07. There would also be a reasonable expectation of success because Nielson teaches that its invention can be a water-in-oil emulsion and August teaches that its invention can be a water-in-oil emulsion.
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 is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
With respect to Applicant’s assertion of superior effects, many of these effects appear to be suggested by the prior art. Namely, Nielson teaches that its composition has excellent usability, stability and bioavailability that is suitable for the treatment or prevention of UV light-induced skin damage or skin aging effects. Additionally, August teaches that its composition has a pleasant feel upon contact with the skin and a lasting effect on the skin. (See [0003-5]).
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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