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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 31, 2026 has been entered.
Status of Claims
Claims 12-18 and 20 are pending. Claim 19 is canceled. Claim 14 is amended.
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no linking or generic claim.
Claims 14-18 and 20 are examined on their merits in light of the species of diethylaminohydroxybenzoylhexylbenzoate for the UV light blocking agent, polyacrylate 13 for the self-emulsifying polymer and butylene glycol for the polyol having an IOB of 5.0 or less.
Information Disclosure Statement
The Information Disclosure Statement filed 7/28/2026 has been reviewed.
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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 14-20 under 35 U.S.C. 103 as being unpatentable over Kodashima EP 2786735 (10/8/2014) in view of Le Pham WO 2013/049680 (4/4/2013) as evidenced by KR 2019/0107856 (9/23/2019) and the specification is withdrawn.
New Rejections
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/e 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 14-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kodashima EP 2786735 (10/8/2014) in view of Hachiman et al. JP 2919495 (7/12/1999) as evidenced by KR 2019/0107856 (9/23/2019) and the specification.
Kodashima is directed to a cosmetic sunscreen composition that has excellent long-term stability and a high ultraviolet protective effect. (See Abstract). The composition is formulated as oil-in-water emulsions. (See [0012], [0016], [0021]). Emulsions are called for in instant claim 14. The composition contains at least one UV absorber selected from a group of UV absorbers that includes diethyolaminohydroxybenzoylhexylbenzoate, 8%-20% by mass of a liquid oil that includes an organic UV absorber, a polyacrylamide compound and a hydrophobized fine particle metal oxide powder. (See [0022]).
Kodashima exemplifies an oil-in-water emulsified cosmetic composition that is a sunscreen that includes diethyolaminohydroxybenzoylhexylbenzoate, polyacrylate-13 and 1,3-butylene glycol. (See Formulation Example 5). Diethylaminohydroxybenzoylhexylbenzoate is the elected UV light blocking agent called for in instant claim 14. Diethylaminohydroxybenzoylhexylbenzoate is a benzophenone-based compound as called for in instant claim 17.
Polyacrylate-13 is called for in instant claim 15. (See Formulation Example 5). Polyacrylate-13 is a self-emulsifying polymer as called for in instant claim 14. Polyacrylate-13 is necessarily an aqueous thickener as called for in instant claim 18 as evidenced by KR 2019/0107856 at first paragraph on page 9 of English translation of KR 2019/0107856. Butylene glycol is called for in instant claim 16 and is necessarily a polyol having an IOB value of 5.0 or less as called for in instant claim 14 as evidenced by [0016] of the specification.
Kodashima thus teaches an emulsion sunscreen composition as called for in claim 14 containing diethylaminohydroxybenzoylhexylbenzoate, polyacrylate-13 and butylene glycol in a single embodiment. (See Formulation Example 5).
The composition is an emulsion that has an oil phase and a water phase as called for in instant claim 14.
Kodashima does not teach the viscosity of the oil phase. This deficiency is made up with the teachings of Hachiman et al.
Hachiman et al. (Hachiman) teaches water-in-oil and oil-in-water cosmetics compositions that have improved stability and good application fee. (See Abstract). The oil phase of the composition is taught to have a viscosity that is within the range of 500 cps or less. Hachiman teaches that if the viscosity of the oil phase is higher than 500 cps, stickiness if felt during application and the good application feel cannot be achieved. (See paragraph [0023] on page 4 of English translation). 500 cps or less overlaps with the 500 cps or less called for in instant claim 14.
It would have been prima facie obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention making the Kodashima cosmetic sunscreen composition oil-in-water emulsion with 8%-20% by mass of a liquid oil that includes diethyolaminohydroxybenzoylhexylbenzoate, a polyacrylamide compound and a hydrophobized fine particle metal oxide powder to formulate the oil phase to have a viscosity of 500 cps or less in order to have a desirable personal care composition which is not sticky and has good feel upon application as taught by Hachiman.
With respect to the increase in UV light blocking efficiency in claim 14, the synergistic increase in UV light blocking efficiency in claim 20 and the presence of the self-emulsifying polymer and polyol having an IOB value of 5.0 or less being present in the water phase of the emulsion and the UV blocking agent being present in the oil phase of the emulsion in claim 14, the prior art of Kodashima in view of Hachiman is silent as to these properties. Kodashima in view of Hachiman, however, teaches all of the claimed components. Kodashima in view of Hachiman teaches a composition comprising diethylaminohydroxybenzoylhexylbenzoate, polyacrylate-13 and butylene glycol. This composition would necessarily have synergistically increased UV blocking efficiency via heat-activated heat spreading of the UV blocking agent as evidenced by the specification at [0061] in the Example.
The diethylaminohydroxybenzoylhexylbenzoate would be present in the oil phase as evidenced by Table 2 of the specification. The butylene glycol and polyacrylate-13 would be present in the water phase of the emulsion as evidenced by Table 2 of the specification. Kodashima thus teaches an emulsion sunscreen composition containing diethylaminohydroxybenzoylhexylbenzoate, polyacrylate-13 and butylene glycol in a single embodiment. These components are the same as those claimed and would necessarily have the same properties. Diethylaminohydroxybenzoylhexylbenzoate would be found in the oil phase and butylene glycol and polyacrylate-13 would be found in the water phase based on these properties.
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 F2d 705, 709, 15 USQPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding the recitations of “for increasing UV light blocking efficiency of a UV light blocking agent under heat” of claim 14, this is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this instance there is no structural difference between the claimed composition and the prior art composition, since they are the same composition with the same components as described above. The prior art composition is capable of performing the intended use of increasing UV light blocking efficiency of a UV light blocking agent under heat.
Additionally, the inclusion of the statement of intended use in the body of the claim does not result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, as it is in this instance, then it meets the claim. See MPEP 2111.02.
Merely discovering and claiming a new benefit of an old process cannot render the process again patentable. Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d 628, 632-33, 2USPQ2d 1051, 1054 (Fed.Cir.), cert. Denied, 484 U.S. 827 (1987). In re Woodruff, 16 USPQ2d 1934.
Response to Arguments
Applicants comments of August 31, 2026 have been considered carefully and have been found to be partly persuasive in light of the amendments to the claims and partly unpersuasive.
Applicants note the amendments to the claims and where support for the amendments can be found. Applicants argue that Le Pham does not teach oil phase viscosity of 500 cps or less. Firstly, Le Pham discloses viscosity for the entire composition, not just the oil phase. Amended claim 14 however requires the oil phase alone to have a viscosity of 500 cps or less.
Secondly, Le Pham does not disclose a viscosity of 500 cps or less, but rather teaches a viscosity of about 1,000 to about 1,000,000 cps for the entire composition. Thus there is no overlap between the 1,000 to about 1,000,000 cps viscosity range and the 500 cps or less called for in amended claim 14.
Applicants argue that the combined references provide no motivation to achieve the claimed heat-activated UV spreading mechanism. Applicants note that Le Pham teaches low viscosity as a means of improving consumer spreadability during application of the cosmetic but not as a mechanism to facilitate post-application thermal redistribution of a UV blocking agent.
Applicants also assert that the combination of prior art does not teach the phase distribution limitation. Applicants note that Kodashima uses its polyacrylamide compound in the composition as an emulsion stability agent, not as a component designed to create polyol-filled pores for post-application thermal spreading.
Applicants argue that unexpected results support patentability. In general UV blocking efficiency is expected to decrease under heat due to film disruption and photodegradation, and the prior art teaches nothing to the contrary and nothing in the teachings of Kodashima nor Le Pham would have led a skilled artisan to predict, let alone achieve a heat-activated increase in UV blocking efficiency of the demonstrated magnitude.
Applicants’ arguments have been carefully considered and the arguments with respect to Le Pham are found to be sufficiently persuasive in light of the amendments to the claims. The rejections are withdrawn above. Please see the new rejection applied above.
Applicants’ arguments that the prior art does not provide any motivation to achieve the claimed UV-activated spreading mechanism is not found to be persuasive because the motivation to modify the reference may be for a different, yet still compelling, reason. 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).
In this instance, it would have been prima facie obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention making the Kodashima cosmetic sunscreen composition oil-in-water emulsion with 8%-20% by mass of a liquid oil that includes diethyolaminohydroxybenzoylhexylbenzoate, a polyacrylamide compound and a hydrophobized fine particle metal oxide powder to formulate the oil phase to have a viscosity of 500 cps or less in order to have a desirable personal care composition which is not sticky and has good feel upon application as taught by Hachiman.
With respect to Applicants’ arguments regarding the phase distribution limitation, the phase distribution is a result of the properties of the components, As described above, the prior art of Kodashima in view of Hachiman teaches all of the claimed components. Kodashima in view of Hachiman teaches a composition comprising diethylaminohydroxybenzoylhexylbenzoate, polyacrylate-13 and butylene glycol. The diethylaminohydroxybenzoylhexylbenzoate would be present in the oil phase as evidenced by Table 2 of the specification. The butylene glycol and polyacrylate-13 would be present in the water phase of the emulsion as evidenced by Table 2 of the specification. Kodashima thus teaches an emulsion sunscreen composition containing diethylaminohydroxybenzoylhexylbenzoate, polyacrylate-13 and butylene glycol in a single embodiment. These components are the same as those claimed and would necessarily have the same properties. Diethylaminohydroxybenzoylhexylbenzoate would be found in the oil phase and butylene glycol and polyacrylate-13 would be found in the water phase based on these properties.
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 F2d 705, 709, 15 USQPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicants’ assertion of unexpected results is not found to be persuasive because the results shown are not commensurate in scope with the claims. Claim 14 is much broader than the examples in which the unexpected results of dramatic increase in UV blocking efficiency under heat are shown.
Claim 14 is directed to any UV light blocking composition having a water and oil phase comprising any self-emulsifying polymer, any polyol having an IOB value of 5.0 or less and any UV light blocking agent wherein the oil phase has a low viscosity of 500 cps or less. However, the unexpected results are shown with only a few embodiments falling within the scope of this claim. For example, the Examples all use diethylaminohydroxybenzoylhexylbenzoate for the UV light blocking agent and butylene glycol for the polyol having an IOB value of 5.0 or less even though claim 14 covers any UV light blocking agent and any polyol having an IOB value of 5.0 or less.
All showings of secondary considerations of obviousness must be commensurate in scope with the claims. Unexpected results must be commensurate in scope with the claims which the evidence is offered to support. See In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 196 (CCPA 1980). See MPEP 716.02(d).
The remainder of the arguments are moot in light of the new rejection applied above.
Conclusion
No claims are allowed.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
