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 .
Status of Claims
Claims 12-20 are pending. 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Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no linking or generic claim.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 14-20 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 Statements filed 2/17/2026 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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Rejections Withdrawn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 § 102
In light of the amendments to the claims the rejection of claims 14-20 under 35 U.S.C. 102(a)(1) as being anticipated by Kodashima EP 2786735 (10/8/2014) as evidenced by KR 2019/0107856 (9/23/2019) and the specification is withdrawn.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 14-20 are rejected 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.
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 19. The composition contains at least one UV absorber selected form 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 le Pham.
Le Pham teaches personal care compositions that are suitable for conditioning and moisturizing applications. (See Abstract). The personal care compositions are oil-in water emulsions that have about 1000 cps. (See top of page 4)
About 1000 cps overlaps with the 1,000 cps or less called for in instant claim 14. Le Pham teaches that consumers desire personal care composition which are easy to apply to skin and dislike compositions which form dry or filmy residues. In order to design products with high spreadability, a low formulation viscosity is preferable. (See page 1).
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 19, Kodashima is silent as to these properties. Kodashima, however, teaches all of the claimed components. Kodashima 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.
It would have been prima facie obvious to one of ordinary skill in the art before the 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 1000 cps in order to have a desirable personal care composition which is easy to apply to skin and highly spreadable as taught by Le Pham.
Response to Arguments
Applicants comments of February 18, 2026 have been considered carefully. Applicants note the amendments to the claims and where support for the amendments can be found.
Applicants note that the present invention includes an explicitly viscosity limitation with the connection between the oil phase viscosity and the heat-activated spreading mechanism that is critical in the present invention. The low viscosity is a technical features essential to the present invention’s heat-activated spreading mechanism. Applicants note tha the viscosity of the oil phase is essential for enabling the heat-activated spreading mechanism by facilitating diffusion of the composition compoennts into the pores generated when the water phase volatilizes after application to the skin resulting in a synergistic and unexpected increase in UV blocking efficiency under heat.
Kodashima is silent regarding the oil phase viscosity requirements and viscosity in general. Applicants further submits that Kodashima does not teach the viscosity limitation in the claims inherently either. Kodashima’s Preparation Example 5 contains multiple oil components, including diisopropyl sebacate, octyldodecyl myristate and zinc oxide powders, which would result in an oil phase viscosity exceeding the limits required for the inventive mechanism.
A skilled artisan would understand that the viscosity of the composition in Formulation Example 5 of Kodashima is significantly higher than the viscosity requirement claimed due to overcrowding of the oil phase, among others.
Kodashima defines a good emulsion state as one where the powder enters the inner phase (i.e. the oil phase). Applicants assert that in the Formulation Example 5, the ratio of liquid oil to solid powder leads to a thick slurry or past, rather than a low viscosity fluid.
Pointing to Formulation Example 5, Applicants also argue that a composition like Kodashima is not considered to possess the low oil phase viscosity claimed because it is overcrowded with solids.
Accordingly, Kodashima’s composition is not considered to possess the low oil phase viscosity claimed.
Applicants’ arguments have been carefully considered and are only found to be partly persuasive in light of the amendments to the claims. In light of the amendments to the claims the rejection above is withdrawn. Please see the new rejection applied above.
Applicants’ arguments that all of the compositions in Kodashima have powder filled oil phases that are more pastes than the claimed viscosity based on just Formulation Example 5 is not found to be persuasive, however. There are many more compositions disclosed in Kodashima than just Formulation Example 5. While Kodashima may not expressly teach viscosities this teaching is supplied by Le Pham in the new rejection applied above. The new rejection teaches the desired viscosity and the reasons why a formulator would wish to achieve such a viscosity.
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 1000 cps in order to have a desirable personal care composition which is easy to apply to skin and highly spreadable as taught by Le Pham.
The remainder of the arguments are moot in light of the new rejection applied above.
.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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