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 the Claims
Claims 36-55 are pending and under current examination. Claims 1-35 are canceled.
Withdrawn Claim Rejections
All rejections under 35 U.S.C.112(b) are withdrawn in view of the amendments to the claims filed 6/24/2026.
All rejections under 35 U.S.C. 112(d) are withdrawn in view of the amendments to the claims filed 6/24/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 36, 37, 39-41, and 45-47 are rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock (U.S. Patent Application No. 2009/0047226, publication date: 2/19/2009, of record) in view of Humblebee and Me (A Quick Guide to Cetearyl Alcohol & Liquid Oil Ratios, available 2018, of record), as evidenced by My Tree Says (HLB Values of Oils/Lipids, available 5/29/2019, of record ).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 36 and 45, Teckenbrock teaches a cosmetic oil-in-water emulsion [0015] that may contain hydroxypropyl starch phosphate as a polysaccharide [0042] and citronellol, linalool, or limonene as a perfume in the composition. Mixtures of different odorants that together produce an attractive fragrance note are used [0177]. The polysaccharide is present from 0.01 to 1.0 wt.% [0047]. Teckenbrock also teaches that the oil-in-water emulsions are characterized in that it contains at least one nonionic emulsifier having an HLB value in the range of 3 to 6 [0059]. It is noted that Teckenbrock is silent with regards to carbomers, parabens, methylisothiazolinone, and DMDM hydantoin and therefore reads on the “free from carbomers, … parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin…” limitation of instant claim 26. The cosmetic composition embraced by Teckenbrock may also contain polyacrylates as a carrier for monomers, oligomers and polymers of amino acids in preferred embodiments [0108]. The Examiner interprets the term “preferred embodiments” in Teckenbrock to encompass an embodiment of the composition that does not contain polyacrylates. Polyethylene glycol ethers and esters are listed in a large group of suitable oil-in-water emulsifiers for the composition [0068], but are not a required component of the invention. The Examiner therefore interprets the teachings of Teckenbrock to encompass an embodiment of the composition that does not contain polyethylene glycol ether and polyethylene glycol esters. Teckenbrock also teaches that the shelf stability of the oil-in-water emulsions can be increased by the addition of at least one nonionic emulsifier with an HLB value in the range from 12 to 18 [0063].
Regarding claim 37, Teckenbrock teaches a cosmetic oil-in-water emulsion [0015] that may contain citronellol, linalool, or limonene as a perfume in the composition. Mixtures of different odorants that together produce an attractive fragrance note are used [0177].
Regarding claim 39, Teckenbrock teaches that the fragrance component is present in a total quantity from 0.00001-4wt%, based on the entire composition [0183].
Regarding claim 40, Teckenbrock teaches that the cosmetic composition may optionally [0017] contain 3-(4'-methylbenylidene)-D,L-camphor, 2-hydroxy-4-methoxybenzophenone, cinnamic acid esters, diphenylacrylic acid esters, salicylic acid homomethyl ester as UV filtering substances [0160]. The Examiner interprets the term “preferred embodiments” in Teckenbrock to encompass an embodiment of the composition that does not contain 3-(4'-methylbenylidene)-D,L-camphor, 2-hydroxy-4-methoxybenzophenone, cinnamic acid esters, diphenylacrylic acid esters, salicylic acid homomethyl ester, or polyethylene glycol ethers or esters.
Regarding claim 41, it is noted that Teckenbrock is silent with regards to mineral oils, silicone oils, and mineral waxes and therefore reads on the “free from mineral oils, silicone oils, and mineral waxes” limitation of instant claim 41.
Regarding claim 46, Teckenbrock teaches that the composition may contain xanthan gum [0042].
Regarding claim 47, it is noted that Teckenbrock is silent with regards to atranol, chloroatranol and hydroxyisohexyl 3-cyclohexene carboxaldehyde and therefore reads on the “does not contain atranol, chloroatranol and hydroxyisohexyl 3-cyclohexene carboxaldehyde ” limitation of instant claim 47.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 36 and 45, Teckenbrock does not teach the inclusion of glyceryl stearate SE, sodium cetearyl sulfate, cetearyl alcohol, dicaprylyl ether, or cetyl palmitate. However, this deficiency is cured by Humblebee & Me and My Tree Says.
Humblebee & Me teaches that cetearyl alcohol is used to stabilize emulsions (pg. 4). My Tree Says teaches that cetearyl alcohol has an HLB value of 15.5 (pg. 2).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 36 and 45, based on these teachings , it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (the emulsifiers listed by Teckenbrock and cetearyl alcohol for the purpose of stabilizing an oil-in-water emulsion). See MPEP 2144.06 (II).
Claims 38, 42, and 48-50 are rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock (U.S. Patent Application No. 2009/0047226, publication date: 2/19/2009, of record) in view of Humblebee and Me (A Quick Guide to Cetearyl Alcohol & Liquid Oil Ratios, available 2018, of record), as evidenced by My Tree Says (HLB Values of Oils/Lipids, available 5/29/2019, of record), as applied to claims 36, 37, 39-41, and 45-47 above, and further in view of Pruns (U.S. Patent Application No. 2018/0243189, publication year: 2018, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 38, Teckenbrock teaches that perfumes, perfume oils, or perfume oil constituents can be used as fragrance components [0177].
Regarding claim 42, Teckenbrock teaches that the composition may include benzyl alcohol as a fragrance [0181]. The fragrance may be present from 0.00001 to 4 wt.% [0183].
Regarding claims 48-50, Teckenbrock teaches the relevant limitations of claim 36 as described above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 38, Teckenbrock does not teach the inclusion of coumarin. However, this deficiency is cured by Pruns.
Pruns teaches an oil-in-water cosmetic emulsion [0036] that may contain perfume substances including linalool, coumarin, d-limonene, and hydroxycitronellol [0232].
Regarding claim 42, Teckenbrock does not teach the inclusion of 4-hydroxyacetophenone. However, this deficiency is cured by Pruns.
Pruns teaches an oil-in-water cosmetic emulsion [0036] may contain 0.01 to 10% by weight 4-hydroxyacetophenone [0044]. Pruns also teaches that a product with 4-hydroxyacetophenone is protected against phase separation for a longer time and/or at higher temperatures than a product without 4-hydroxyacetophenone [0039]. If the product with 4-hydroxyacetophenone contains a perfume component or a cosmetic fragrance component this agent is protected against chemical decomposition for a longer time and/or at higher temperatures and/or at a higher dose of light than a product without 4-hydroxyacetophenone [0041].
Regarding claims 48-50, Teckenbrock does not teach the inclusion of dicaprylyl ether or cetyl palmitate in the oil-in-water emulsion. However, this deficiency is cured by Pruns.
Pruns teaches an oil-in-water cosmetic emulsion [0036]. The oily phase may contain dicaprylyl ether [0136] and cetyl palmitate [0135]. The oil phase may contain any mixtures of the oil and wax components [0135].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 38, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (the perfumes taught by Teckenbrock and the coumarin taught by Pruns for the purpose of perfuming a cosmetic oil-in-water emulsion). See MPEP 2144.06 (II).
Regarding claim 42, it would have been prima facie obvious to one of ordinary skill in the art of filing to include 4-hydroxyacetophenone in the composition disclosed by Teckenbrock in a composition within the range embraced by the instant claims. One would have understood in view of Pruns that 4-hydroxyacetophenone may be added to a cosmetic oil-in-water emulsion at weight in order to increase the stability of the emulsion and the fragrance components within. It would have been obvious to include such a component in the oil-in-water emulsion taught by Teckenbrock. One of ordinary skill in the art of filing would have been motivated to include 4-hydroxyacetophenone in order to impart increased stability to the emulsion and fragrance components contained within the emulsion. The artisan of ordinary skill in the art would have had reasonable expectation of success because Pruns teaches that a cosmetic oil-in-water emulsion may contain 4-hydroxyacetophenone at concentrations of 0.01 to 10% by weight.
Regarding claims 48-50, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (the oil phase of Teckenbrock and the oil phase of Pruns as the oily phase of a cosmetic oil-in-water emulsion). See MPEP 2144.06 (II).
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock (U.S. Patent Application No. 2009/0047226, publication date: 2/19/2009, of record) in view of Humblebee and Me (A Quick Guide to Cetearyl Alcohol & Liquid Oil Ratios, available 2018, of record), as evidenced by My Tree Says (HLB Values of Oils/Lipids, available 5/29/2019, of record), as applied to claims 36, 37, 39-41, and 45-47 above, and further in view of Lawan et. al. (Journal of Health Research, pg. 1-3; publication year: 2009, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Teckenbrock teaches that phenoxyethanol may be present in the composition as a germ-inhibiting or antimicrobial substance [0078]. Teckenbrock also teaches that preservatives may be included in the composition [0203].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Teckenbrock does not teach that ethylhexylglycerin may be included in the composition or a weight percentage of phenoxyethanol that may be present in the composition. However, this deficiency is cured by Lawan.
Lawan teaches that ethylhexylglycerin is a cosmetic preservative (pg. 1 Abstract).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to include ethylhexylglycerin in the cosmetic composition embraced by Teckenbrock. One would have understood in view of Lawan that ethylhexylglycerin is suitable for inclusion in cosmetics as a preservative. It would have been obvious to include ethylhexylglycerin as a preservative in the cosmetic composition embraced by Teckenbrock. The artisan of ordinary skill would have had reasonable expectation of success because Teckenbrock teaches that preservatives may be included in the cosmetic composition. See MPEP 2144.07.
The weight percentage of ethylhexylglycerin and phenoxyethanol is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage in order to best achieve the desired results as such would provide advantageous preservative effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Teckenbrock teaches that the composition may contain additives such as preservatives and that phenoxyethanol may act as a germ-inhibiting substance [0078]. Lawan teaches that ethylhexylglycerin is a cosmetic preservative (pg. 1 Abstract). The Examiner considers it prima facie obvious to optimize the weight percentage, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of ethylhexylglycerin and phenoxyethanol would have a direct effect on the preservation of the cosmetic emulsion and therefore be an optimizable variable.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock (U.S. Patent Application No. 2009/0047226, publication date: 2/19/2009, of record) in view of Humblebee and Me (A Quick Guide to Cetearyl Alcohol & Liquid Oil Ratios, available 2018, of record), as evidenced by My Tree Says (HLB Values of Oils/Lipids, available 5/29/2019, of record ), as applied to claims 36, 37, 39-41, and 45-47 above, and further in view of Burgo (U.S. Patent Application No. 2019/0241491, publication year: 2019, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Teckenbrock teaches that the cosmetic composition may contain germ-inhibiting or antimicrobial substances [0078] or preservatives [0203].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Teckenbrock does not teach that the inclusion of a diol substance in the cosmetic composition. However, this deficiency is cured by Burgo.
Burgo teaches that bio-1,2-alkanediols such as 1,2-octanediol and 1,2-decanediol [0010] may be used as alternative preservation systems for use in personal care compositions [0002]. The alternative preservation systems include consumer-friendly, paraben-free materials that move away from traditional preservation or antimicrobials towards “natural” and “sustainable” formulations [0009].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to include 1,2-octanediol or 1,2-decanediol in the cosmetic composition embraced by Teckenbrock. One would have understood in view of Burgo that 1,2-octanediol and 1,2-decanediol may act as a preservative in personal care formulations. It would have been obvious to include 1,2-octanediol or 1,2-decanediol as a preservative or antimicrobial agent in the cosmetic composition embraced by Teckenbrock. One would have been motivated to include 1,2-octanediol or 1,2-decaneciol in the cosmetic composition embraced by Teckenbrock in order to move away from traditional preservation or antimicrobials and towards “natural” and “sustainable” formulations [0009]. The artisan of ordinary skill would have had reasonable expectation of success because Teckenbrock teaches that antimicrobial agents and preservatives may be included in the cosmetic composition. See MPEP 2144.07.
Claims 48-54 are rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock (U.S. Patent Application No. 2009/0047226, publication date: 2/19/2009, of record) in view of Humblebee and Me (A Quick Guide to Cetearyl Alcohol & Liquid Oil Ratios, available 2018, of record), as evidenced by My Tree Says (HLB Values of Oils/Lipids, available 5/29/2019, of record), as applied to claims 36, 37, 39-41, and 45-47 above, and further in view of Riedel (U.S. Patent Application No. 2003/0165551, publication year: 2003, of record), as evidenced by CosmetoScope (Glyceryl Stearate SE, available 2/29/2020, of record) .
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Teckenbrock teaches that the cosmetic composition may contain germ-inhibiting or antimicrobial substances [0078] or preservatives [0203].
Regarding claims 48-54, Teckenbrock teaches the relevant limitations of claim 36 as described above. Teckenbrock also teaches that the oil-in-water emulsions may contain at least one nonionic emulsifier having an HLB in the range from 3 to 6 [0058] and at least one nonionic emulsifier having an HLB value in the range from 12 to 18 [0063].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 48-50 and 54, Teckenbrock does not teach the inclusion of dicaprylyl ether or cetyl palmitate in the oil-in-water emulsion. However, this deficiency is cured by Riedel.
Riedel teaches a cosmetic oil-in-water emulsion [0001]. The oily phase may contain dicaprylyl ether [0091] and cetyl palmitate [0090]. The oil phase may contain any mixtures of the oil and wax components [0090].
Regarding claims 51-54, Teckenbrock does not teach the inclusion of glyceryl stearate SE or sodium cetearyl sulfate. However, this deficiency is cured by Riedel and CosmetoScope. Riedel teaches a cosmetic oil-in-water emulsion [0001]. The cosmetic emulsion may contain one or more O/W emulsifiers including sodium cetylstearyl sulphate and glyceryl stearate SE [0098]. In order to be able to ensure the metastability of emulsions, emulsifiers are usually necessary [0013]. CosmetoScope teaches that glyceryl stearate SE has an HLB value of 5.8 and is suitable to prepare oil in water emulsions (pg. 2).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 48-50 and 54, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (the oil phase of Teckenbrock and the oil phase of Riedel as the oily phase of a cosmetic oil-in-water emulsion). See MPEP 2144.06 (II).
Regarding claims 51-54, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (the emulsifiers listed by Teckenbrock and the glyceryl stearate SE and/or sodium cetearyl sulfate taught by Riedel for the purpose of stabilizing a cosmetic oil-in-water emulsion). See MPEP 2144.06 (II).
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock (U.S. Patent Application No. 2009/0047226, publication date: 2/19/2009, of record) in view of Humblebee and Me (A Quick Guide to Cetearyl Alcohol & Liquid Oil Ratios, available 2018, of record) and AkzoNobel R&D (O/W Emulsion for Ethnic Hair Car, publication date: 4/1/2009, of record), as evidenced by My Tree Says (HLB Values of Oils/Lipids, available 5/29/2019, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
All of the relevant limitations of the instant claim 55 have been rendered obvious as set forth in the rejection of claim 36 above except the method of stabilizing the odor of a cosmetic O/W emulsion.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Teckenbrock does not teach a method for stabilizing the odor of stabilizing the odor of a cosmetic O/W emulsion. However, this deficiency is cured by AkzoNobel R&D.
AkzoNobel R&D teaches that hydroxypropyl starch phosphate stabilizes emulsion cosmetics (pg. 1, third paragraph).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing that the hydroxypropyl starch phosphate that may be present in the cosmetic composition embraced by Teckenbrock serves to stabilize the emulsion itself, and therefore stabilizes the odor of the emulsion. One would have understood in view of AkzoNobel R&D that hydroxypropyl starch phosphate may be used in cosmetic compositions to help stabilize emulsions. It would have been obvious that stabilizing an emulsion by addition of hydroxypropyl starch phosphate would also serve to stabilize the odor of the emulsion since the perfumes are contained within the emulsion. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Teckenbrock teaches that hydroxypropyl starch phosphate may be present in the cosmetic emulsion. See MPEP 2144.07.
Furthermore, the cosmetic emulsion embraced by Teckenbrock is substantially identical in composition to the cosmetic emulsion embraced by the instant claim, therefore the function of the hydroxypropyl starch phosphate in stabilizing the odor of the emulsion is inherent in the cosmetic emulsion embraced by Teckenbrock. See MPEP 2112.01 (I).
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
On page 7, Applicant argues that Teckenbrock teaches away from the claimed emulsifier system. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (II) which states that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” and that in order to teach away the prior art reference must “criticize, discredit or otherwise discourage” the claimed invention. In re Fulton, 391 F3d 1195, 1201 (Fed. Cir. 2004). In the instant case, Teckenbrock teaches that the shelf stability of the oil-in-water emulsions can be further increased by the addition of at least one nonionic emulsifier having an HLB value in the range from 12 to 18 [0063]. Therefore, one of ordinary skill in the art of filing would have reasonably concluded in view of the teachings of Teckenbrock, Humblebee and My Tree Says that cetearyl alcohol may be included as the nonionic emulsifier having an HLB value in the range from 12 to 18.
On page 8, Applicant argues that the rejection over Teckenbrock in view of Humblebee and My Tree Says rests on impermissible hindsight. This is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On page 8, Applicant argues that every exemplified emulsion of Teckenbrock contains a polyethylene glycol ether and/or ester and that the references do not render obvious the deliberate exclusion of polyethylene glycol ethers and esters and other recited classes. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (I), which states “a references may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” and a “reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component”. In the instant case, Teckenbrock teaches polyethylene glycol ethers and esters in a large group of suitable oil-in-water emulsifiers for the composition [0068], but are not a required component of the invention. The Examiner therefore interprets the teachings of Teckenbrock to encompass an embodiment of the composition that does not contain polyethylene glycol ether and polyethylene glycol esters.
On page 9, Applicant argues that Teckenbrock does not disclose the inclusion of hydroxypropyl starch phosphate for the purpose of stabilizing the odor of a perfumed emulsion. This is not found persuasive. In response to applicant's argument that the prior art does not disclose the fragrance stabilization rendered by the inclusion of hydroxypropyl starch phosphate, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, Teckenbrock teaches that the cosmetic oil-in-water emulsion [0015] that may contain hydroxypropyl starch phosphate as a polysaccharide [0042]. Therefore, one of ordinary skill in the art of filing could have reasonably concluded that the oil-in-water emulsion may contain hydroxypropyl starch phosphate, regardless of the intended purpose.
On page 9, Applicant argues that the specification demonstrates that incorporation of hydroxypropyl starch phosphate confers a fragrance stabilizing benefit that is neither taught nor suggested by the art of record. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to increased odor stability of an emulsion that comprises hydroxypropyl starch phosphate. However, Nielsen (EP1389459, publication year: 2004, citations refer to machine translation) teaches that hydrocolloids such as hydroxypropyl starch phosphate leads to the stabilization of cosmetic emulsions and may interact with perfumes present in the cosmetic emulsions (pg. 2, ninth paragraph). The hydroxypropyl starch phosphate are used for emulsion stabilization and thickening with simultaneously sufficient and satisfactory availability of specific active ingredients which are incorporated into the emulsions (pg. 2, final paragraph). One of ordinary skill in the art would have understood in view of the teachings of Nielsen that the addition of hydroxypropyl starch phosphate would stabilize an emulsion and a perfume contain within. Therefore, the differences are not unexpected or unobvious.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to increased fragrance stability and are therefore of practical significance. However, there is no data provided demonstrating the odor-stability or the criticality of the concentration of hydroxypropyl starch phosphate to the recited odor-stability. Therefore, the evidence of unexpected results are not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The independent claim 36 embraces a cosmetic O/W emulsion that contains perfumes selected from any tertiary alcohol, any acyclic terpinol, and any benzopyrone at any concentration and any concentration of components i-iii. In order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate odor stability at any concentration of perfume for any species of tertiary alcohol, acyclic terpinol, and any benzopyrone. However, the evidence of unexpected results is limited to a single concentration of linalool, limonene, and undisclosed perfume and a single concentration of components i-iii. Furthermore, the instant claim 37 recites that the perfume comprise at least three of linalool, limonene, citronellol and coumarin. The evidence of unexpected results only explicitly includes two of these species-linalool and limonene. The independent claim 55 embraces any concentration of hydroxypropyl starch phosphate effective in stabilizing the odor of the emulsion. However, the evidence of unexpected results only includes a single concentration of hydroxypropyl starch phosphate. Therefore, the evidence of unexpected results is not in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
On page 9, Applicant argues that the cited non-patent web pages Humblebee and My Tree Says do not qualify as the type of references to which a person of ordinary skill in the art of cosmetic emulsion formulation would have looked. This is not found persuasive. In response to applicant's argument that Humblebee and My Tree Says are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Humblebee is directed to cosmetic formulations and My Tree Says is directed to the HLB value of emulsifiers for use in cosmetic formulations. Therefore, the references can be considered to be in in the field of the inventor’s endeavor (cosmetic formulation).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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