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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/13/2026 has been entered.
Applicants’ arguments, filed 03/13/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Objections
Claims 4 and 11 are objected to because of the following informalities:
Claims 4 and 11 recite “polyamide-6, 9” which is understood to be a typo of polyamide-6,9 (i.e., polyamide-6/9).
Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
1) Claims 1-7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over IP.com (water in oil emulsions comprising a high level content of active agents, 05/25/2010, The IP.com Journal, IPCOM000196033D) in view of Esposita et al. (WO 2019036775 A1, publication date 02/28/2019), Schechter (Formula Botanica, 2019 [retrieved 06/04/2026], https://web.archive.org/web/20190817175102/https:/formulabotanica.com/natural-cosmetic-waxes/) and Sayer et al. (US 2015/0209260 A1, publication date 07/30/2015).
Regarding instant claims 1, 2, 4, 7, 9, 10, 11(a) and 11(e), IP.com relates to water in oil emulsions comprising a high level content of active agents [title] and discloses an exemplary water-in-oil emulsion comprising 1% w/w Sepinov™ EMT-10 (INCI name Hydroxyethyl Acrylate (and) Sodium Acryloyldimethyl Taurate Copolymer; water-soluble or water dispersible AMPS copolymer), 6% w/w isononyl isononanoate, 2% w/w Easynov™ (INCI name Octyldodecanol (and) Octyldodecyl Xyloside (and) PEG-30 Dipolyhydoxystearate; fatty alcohol, fatty alcohol ester of sugar and hydrocarbon based nonionic surfactants, respectively) and Euxyl PE 9010 as a preservative (i.e., instant claim 9) (see second half of page 9, section 3). Additionally, “[t]he water-in-oil emulsions with a high content of inner phase and a high content of active agents comprise active agents commonly used in the cosmetic field such as … inorganic or organic sunscreens, inorganic fillers, such as mica, silica and talc, [and] synthetic fillers, such as nylons” [p. 8, para. 1].
IP.com does not disclose the specific polyamide, carnauba wax and the claimed UV filters.
Esposita relates to a sunscreen composition comprising fillers [abstract] and discloses that suitable fillers include Nylon-12 (i.e., polyamide-121) [p. 6, line 10].
Schechter discloses natural waxes can be used to improve texture, increase viscosity, add shine, improve harness/solidity, improve overall stability and adjust the melting point of cosmetic composition [p. 1, para. 1]. Schechter teaches that the effect of the wax on the composition can be adjusted by varying the ratio of wax and oil in composition [p. 4, penultimate paragraph]. Schechter discloses compositions comprising 2% w/w carnauba wax and states “[t]hese waxes [carnauba wax] certainly can be helpful to add in small percentages to formulations for jars and to produce improved stability” [p. 7, last bullet point].
Sayer relates to “metal oxide particles, a metal oxide dispersion, and in particular to the use thereof in a sunscreen product” [0001]. Sayer discloses “a particulate metal oxide comprising metal oxide core particles having a coating layer comprising an inorganic material and (i) a quaternary silane coupling agent, and/or (ii) a silane coupling agent and a hydrophobizing agent” [0007]. According to Sayer the inorganic material of the coating layer may be silicon [0019] and suitable hydrophilizing agents include fatty acids and fatty alcohols [0040]. These coated particles exhibit effective UV absorption properties and improved skin feel [abstract].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the carnauba wax of Schechter with the water-in-oil emulsion of IP.com. One would have been motivated to make this combination to achieve the improved stability that Schechter discloses carnauba wax provides cosmetic compositions. One would have had an expectation of success because Schechter discloses carnauba wax is suitable for cosmetic compositions. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
In the present case it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected Nylon-12 (polyamide-12) as the synthetic filler desired by IP.com because Esposita discloses Nylon-12 is a suitable nylon filler for cosmetic compositions.
Similarly, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the silicon coated metal oxide UV-filters of Sayer as the UV-filters desired by IP.com because Sayer discloses they are suitable for use as UV-filters in cosmetic compositions. One would have been motivated to make this selection because Sayer discloses the coated particles exhibit effective UV absorption properties and improved skin feel. One would have had an expectation of success because IP.com welcomes the addition of organic and inorganic sunscreens (UV-filters).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed ranges of AMPS copolymer (0.5-10% and 1-6%; instant claims 2 and 11(a)) and nonionic surfactant (1-10% and 1.5-6%; instant claims 7 and 11(e)) overlap with the ranges of the prior art (1% and 2%, respectively), and do a prima facie case of obviousness exists for each.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a water-in-oil emulsion comprising a water soluble or water dispersible AMPS copolymer, a polyamide (polyamide-12), a filler (e.g., mica), isononyl isononanoate, carnauba wax, a fatty alcohol nonionic surfactant and a silicon coated metal oxide UV filters. Wherein the AMPS copolymer, and the nonionic surfactant are present within the instantly claimed ranges. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. skin care composition (instant claim 10).
Regarding instant claim 3, 5, 11(b) and 11(c), IP.com discloses active agents include inorganic fillers, such as mica, silica and talc, and synthetic fillers, such as nylons [p. 8, para. 1] and that “[t]hese active agents represent from 0.010 % to 10.00 % by weight of dray matters of such water-in-oil emulsions with a high content of inner phase” [p. 8, para. 3].
Esposita teaches that fillers effect the sensory properties of sunscreen formulations [p. 1, lines 28-29].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising the inorganic filler (e.g., mica) of IP.com and the synthetic filler of Esposita, as taught above, within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the amount of mica and polyamide to effect the sensory properties of the formulation, as taught by Esposita. One would have had an expectation of success given to IP.com discloses the fillers may be present from 0.01 to 10% w/w of the composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the water-in-oil emulsion, as taught above, to comprise the mica filler and the polyamide-12 in amounts within the instantly claimed ranges.
Regarding instant claims 6 and 11(d), as discussed above, IP.com disclose 6% w/w isononyl isononanoate (see second half of page 9, section 3).
Schechter teaches that the effect of the wax on the composition can be adjusted by varying the ratio of wax and oil in composition [p. 4, penultimate paragraph]. Schechter also discloses compositions comprising 2% w/w carnauba wax and states “[t]hese waxes [carnauba wax] certainly can be helpful to add in small percentages to formulations for jars and to produce improved stability” [p. 7, last bullet point].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising the fatty compounds (carnauba wax and isononyl isononoate) within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the amount of carnauba wax and isononyl isononoate to vary the effect of the wax. One would have has an expectation of success because Shechter discloses varying the ratio of wax and oil provides different effects.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the water-in-oil emulsion, as taught above, to comprise carnauba wax and isononanoate within the instantly claimed ranges.
Regarding instant claim 11, IP.com, Esposita, Schechter and Sayer teach a water-in-oil emulsion comprising a water soluble or water dispersible AMPS copolymer, a polyamide (polyamide-12), a filler (e.g., mica), isononyl isononanoate, carnauba wax, a fatty alcohol nonionic surfactant and a silicon coated metal oxide UV filters. As discussed above the ranges of claim 11(a)-(e) would have also been obvious over the prior art. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a water-in-oil emulsion comprising a water soluble or water dispersible AMPS copolymer, a polyamide (polyamide-12), a filler (e.g., mica), isononyl isononanoate, carnauba wax, a fatty alcohol nonionic surfactant and a silicon coated metal oxide UV filters. Wherein the AMPS polymer, the polyamide, the filler and the nonionic surfactant are present within the instantly claimed ranges.
2) Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over IP.com (water in oil emulsions comprising a high level content of active agents, 05/25/2010, The IP.com Journal, IPCOM000196033D) in view of Esposita et al. (WO 2019036775 A1, publication date 02/28/2019), Schechter (Formula Botanica, 2019 [retrieved 06/04/2026], https://web.archive.org/web/20190817175102/https:/formulabotanica.com/natural-cosmetic-waxes/) and Sayer et al. (US 2015/0209260 A1, publication date 07/30/2015) as applied to claims 1-7 and 9-11 above, and further in view of Nielsen et al. (US 2004/0037797 A1, publication date 02/26/2004).
IP.com, Esposita, Schechter and Sayer, which are taught above, differ from the instant claims insofar as they do not teach a pigment.
Nielsen discloses a water-in-oil emulsion comprising a lipid phase, emulsifiers and up to 5% w/w ammonium acryloyldimethyltaurate/vinylpyrrolidone copolymers, e.g., ARISTOFLEX AVC (i.e., water-soluble or water dispersible AMPS copolymer according to the instant specification at page 12, lines 3-4) [abstract & 0017]. According to Nielsen “[t]he emulsions according to the invention can advantageously comprise dyes and/or color pigments” [0119].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the pigments of Nielsen with the composition taught by IP.com, Esposita, Schechter and Sayer. One would have been motivated to make this combination for the desirable effect of coloring the composition. One would have had an expectation of success because the compositions of IP.com and Nielsen are both water-in-oil cosmetic emulsions comprising an AMPS copolymer. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the oil in water emulsion taught by IP.com, Esposita, Schechter and Sayer, and discussed above, to comprise pigments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of U.S. Patent No. US 6,896,889 B2 in view of Chevalier et al. (US 6,896,889 B2, publication date 05/24/2005), Arkema (Orgasol 1002 ES 5 Nat1 SDS, issue date 11/10/2016, product code A12274), and Sayer et al. (US 2015/0209260 A1, publication date 07/30/2015).
The claims of ‘889 disclose a cosmetic composition which may comprise a hydrophilic gelling agent such as 2-acrylamido-2-methylpropane sulfonic acid (AMPS) copolymers [claim 20], a filler such as a polyamide, silica and pigments [claim 27 and 6], an oil phase which may comprise natural waxes [claim 8], non-ionic emulsifiers [claim 17], and active agents such as sun filters (i.e., UV filters and sunscreen) and vitamin [claim 22]. The claims of ‘889 also disclose the filler (polyamide) may be present in amounts from 1% to 10 % w/w [claim 29; instant claims 3 and 11], the silica may be present in amounts from 0.5 to 10% w/w [claim 3; instant claims 5 and 11] and the oil phase may be present in amounts from 5% to 80% w/w [claim 16; instant claims 6 and 11]. The claims also disclose the composition may be a water-in-oil emulsion [claim 13].
The claims of ‘889 do not disclose a specific non-ionic surfactant, a specific natural wax and the instantly claimed UV filters.
Sayer relates to “metal oxide particles, a metal oxide dispersion, and in particular to the use thereof in a sunscreen product” [0001]. Sayer discloses “a particulate metal oxide comprising metal oxide core particles having a coating layer comprising an inorganic material and (i) a quaternary silane coupling agent, and/or (ii) a silane coupling agent and a hydrophobizing agent” [0007]. According to Sayer the inorganic material of the coating layer may be silicon [0019] and suitable hydrophilizing agents include fatty acids and fatty alcohols [0040]. These coated particles exhibit effective UV absorption properties and improved skin feel [abstract].
Chevalier discloses sugar alkyl esters are suitable emulsifying surfactants for the composition [col. 5, lines 62-63], carnauba wax is a suitable natural wax [col. 5, line 67] and isononyl isononanoate is a suitable oil for the oil phase [col. 4, line 6].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. It would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the metal oxide particles coated with a silicone and silane compound as the UV filter because Sayer discloses they are suitable for use a UV filters. Similarly, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected a sugar alkyl ester as the nonionic surfactant and carnauba wax as the natural wax because Chevalier discloses they are suitable options.
Additionally, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the ranges disclosed in the prior art for the polyamide, the filler and carnauba wax overlap with the instantly claimed ranges (1-10%w/w, 1-15% w/w and 1-12% w/w; instant claims 3, 5 and 6, respectively). Additionally, the ranges disclosed in the prior art for the polyamide, the filler and carnauba wax also overlap with the ranges of instant claim 11 (1-6%w/w, 1.5-8% w/w and 1.5-10% w/w; respectively). Therefore, a prima facie case of obviousness exists for each range.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a cosmetic composition comprising an AMPS copolymer, a polyamide (within the instantly claimed range), a filler (silica and within the instantly claimed range), a fatty acid compound (carnauba wax), a nonionic surfactant (sugar alkyl ester), UV filters and vitamins. Additionally, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition as a sunscreen because the claims of ‘889 disclose the composition may comprise sun filters.
Regarding instant claim 2, 7 and 11, Chevalier discloses the gelling agent may be present in amounts from 0.01% to 30% w/w [col. 6, lines 15-24], and the emulsifiers (i.e., sugar alkyl esters) may be present in amounts from 0.5% to 20% w/w [col. 5, lines 51-53]. These ranges overlap with the ranges for AMPS copolymer (gelling agent) of instant claim 2 and 11 (0.5 -10% w/w and 1-6% w/w, respectively) as well as the ranges for the sugar alkyl esters of instant claims 7 and 11(1-10% w/w and 1.5-6% w/w, respectively) and therefore a prima facie case of obviousness exists for each range. See MPEP 2144.05(I).
Regarding instant claims 4 and 11, The claims of ‘889 and Chevalier do not disclose a specific polyamide. However, Chevalier does discloses suitable polyamides include those sold as “ORGASOL” [col. 6, line 31].
Arkema discloses a product under the name ORGASOL to be polyamide-6 [p. 1, Section 1, Product Information].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. It would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the polyamide-6 of Arkema as the polyamide taught by Chevalier and the claims of ‘889 because Chevalier discloses ORGASOL products are suitable polyamides.
Response to Arguments
1) On page 10 of their Remarks, Applicant argues the combination of AMPS copolymer, aliphatic polyamide, filler, carnauba wax and isononyl isononanoate, nonionic surfactant, and UV filters, as recited in amended independent claims 1 and 11, surprisingly forms a stable cosmetic composition, in the form of a water-in-oil emulsion that presents a very pleasant sensorial, skincare signature, dry touch, mate effect, pores less evident with a soft focus effect and light sensorial, as well as having the capability of reducing sebum and being easy to apply.
This argument is not persuasive. Overcoming a rejection based on unexpected results requires the combination of three different elements: (i) the results must fairly compare with the prior art, (ii) the results must truly be unexpected and (iii) the claims must be commensurate in scope. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). Applicant's showing of allegedly unexpected results does not satisfy any of these requirements.
(i) In the present case, Applicant has not compared the instant invention to the closest prior art. The closest prior art is the composition disclosed by IP.com at page 9, which comprises an AMPS copolymer as instantly claimed, nonionic emulsifiers as instantly claimed and isononyl isononanoate in a water-in-oil emulsion. See MPEP 716.02(e).
(ii) The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (MPEP 716.02(b)). In the present case, it does not appear that a stable water-in-oil emulsion would have been unexpected in view of the prior art. As discussed above, IP.com discloses a stable water-in-oil emulsion comprising an AMPS copolymer as instantly claimed, nonionic emulsifiers as instantly claimed and isononyl isononanoate. Furthermore, IP.com desires the addition of inorganic and organic sunscreens and fillers such as mica and nylons [page 8]. Accordingly, a skilled artisan would have expected the water-in-oil emulsion to remain stable upon the addition of inorganic UV-filters, polyamide fillers (nylons) and mica. Additionally Badal et al. (Pharmacognosy, Academic Press, 2017, Chapter 22) discloses “[c]arnauba wax has very good emulsification properties and excellent oil-binding capacity for ester oils and mineral oils” and so a skilled artisan would have also expected a stable emulsion upon the addition of carnauba wax. With respect to the allegedly unexpected sensory effects of the claimed invention, Nielsen teaches that water-in-oil emulsions comprising AMPS copolymers (i.e., acryloyldimethyltaurate/
vinyl-pyrrolidone copolymers) “have better effectiveness as moisture-donating
preparations, are easier to formulate, better promote skin smoothing, are characterized by better care action, better serve as vehicles for cosmetic and medicinal-dermatological active ingredients, have better sensory properties, such as, for example, the ability to be distributed on the skin or the ability to be absorbed into the skin” [0018-0024].
(iii) The "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case, the instant claims recites UV-filters consisting of silicon carbide, metal oxides and mixtures thereof, wherein the UV-filters include at least one coating. On the other hand, the examples do not discloses a coated silicon carbide or metal oxide and further disclose composition comprising organic filters, e.g., ethylhexyl salicylate, that do not appear to present as a coating. Additionally, aliphatic polyamides provide different effects. For example, polyamide-8 is film forming agent while nylon-12 (polyamide-12) is a bulking and opacifying agent, as evidenced by Paula’s Choice (polyamide-8, 2026 [retrieved 06/05/2026], https://www.paulaschoice.com/ingredient-dictionary/ingredient-polyamide-8.html?srsltid=AfmBOopERJcNyGQ6uHOEdx-tidlsi55DB7Zc079LcJ-tU_7lzefi3w0m) and SpecialChem (Nylon-12, 2023 [retrieved 06/05/2026], https://www.specialchem.com/cosmetics/inci-ingredients/nylon-12), respectively. Accordingly, the polyamide-8 of the instant examples does not reasonably represent all aliphatic polyamides as instantly claimed because polyamides have different properties.
2) On page 10 of their Remarks, Applicant argues that none of Sayer, Cinthia, or Decoster, alone or in combination, discloses, teaches, or suggests a water-in-oil composition or a fatty compound comprising carnauba wax, as recited in Applicant's amended independent claims 1 and 11.
This argument is moot in view of the new rejections set forth above.
3) On page 12 of their Remarks, Applicant argues that, with respect to the double patenting rejections, Chevalier does not claim a combination, nor would such a combination be obvious, of even any two of AMPS copolymer, polyamide particle, fatty substance, non-ionic emulsifier, or UV NUVB filter let alone a combination of all, as recited in Applicant's independent claims 1 and 11.
This argument is not persuasive. Even though each element is not combined in one embodiment, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, before the effective filling date of the claimed invention, to have selected and combined known components for their established functions with predictable results by following the teachings of the conflicting claims. MPEP 2143 and 2144.06(I).
Technological Background
The prior art made of record is considered pertinent to applicant's disclosure. National Center for Biotechnology Information (2026). PubChem Compound Summary for Nylon-12. Retrieved June 5, 2026 from https://pubchem.ncbi.nlm.nih.gov/compound/Nylon-12. NCBI is pertinent for teaching polyamide-12 is a synonym of Nylon-12.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
1 NCBI, PubChem Compound Summary for Nylon-12. Retrieved June 5, 2026 from https://pubchem.ncbi.nlm.nih.gov/compound/Nylon-12.
Prosecution Insights