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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 09/19/2025 is acknowledged. Claim 4 has been canceled and new claims 7-12 have been added. Claims 1-3 and 5-12 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 09/19/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 103(a) rejections of claims 1, 2, 5, and 6 over Yabusaki (US 2019/0269598 A1) and pf claims 1-6 over Yabusaki (US 2019/0269598 A1) and Pernodet et al. (US 2016/0354303 A1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejections necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
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, 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yabusaki (US 2019/0269598 A1) in view of Pernodet et al. (US 2016/0354303 A1).
Yabusaki teaches oil-in-water emulsion compositions for skin comprising
a thickener such as acrylates/steareth-20 methacrylate and/or 0.3-0.7% by weight of a 2-acrylamido-2-propane sulfonic acid-based thickener including ammonium acryloyldimethyltaurate/beheneth-25 methacrylate crosspolymer (the claimed A in the instant claims 1, 7, and 12) (paragraph 38 and 40);
a water-soluble alcohol including batyl alcohol (the claimed B in the instant claim 1) (paragraph 49 and 51);
ultraviolet light absorbers including octyl salicylate (the claimed C in the instant claim 1) (paragraph 81);
20-40% by weight of oily component including higher alcohols such as stearyl alcohol (the claimed D in the instant claim 2) (paragraph 59, 65, 66, and 68); and
nonionic surfactants including 0.5% by weight of PEG-40 Stearate (the claimed F in the instant claim 6); and
exemplified in formulation example 2 (paragraph 138) a composition comprising
0.2% by weight of acrylates/steareth-20 methacrylate,
0.4% by weight of ammonium acryloyldimethyltaurate/beheneth-25 methacrylate crosspolymer (the claimed A in the instant claims 1, 7, and 12),
1% by weight of batyl alcohol (the claimed B in the instant claims 1, 7, and 12);
1% by weight of stearyl alcohol and 1% by weight of behenyl alcohol (the claimed D in the instant claims 2, 8, 9, and 12) and, i.e., 1:2 batyl alcohol to higher alcohol weight ratio (the instant claim 5).
Yabusaki does not specify the weight percentage of polar oil octyl salicylate (≥10% and 12-40% by weight of the claimed C in the instant claims 1, 7, and 12) and the composition comprising an alkyl-modified carboxyvinyl polymer (the claimed E in the instant claims 3 and 10-12) and the weight percentage of it (the instant claims 10 and 12).
This deficiency is cured by Pernodet et al. who teach an oil-in-water emulsion for skin (paragraph 22) (paragraph 203) comprising aqueous phase structuring agent (paragraph 108) including acrylates/steareth-20 methacrylate copolymer (paragraph 112), acrylates/C10-30 alkyl acrylate crosspolymer (paragraph 115), etc., and about 0.01-35% by weight of salicylate derivatives UVB absorbers such as octyl salicylate (paragraph 189).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Yabusaki and Pernodet et al. to specify the weight percentage of octyl salicylate being about 0.01-35%. About 0.01-35% by weight of octyl salicylate being incorporated in an oil-in-water emulsion for skin was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose. A prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection. The claimed range of polar oil octyl salicylate is ≥10% and 12-40% by weight and the range of octyl salicylate taught in the prior art is about 0.01-35% by weight and therefor, overlaps with the claimed range.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Yabusaki and Pernodet et al. to replace 0.2% by weight of acrylates/steareth-20 methacrylate copolymer example 2 (paragraph 138) taught by Yabusaki with 0.2% by weight of acrylates/C10-30 alkyl acrylate crosspolymer (the claimed E in the instant claims 3 and 10-12). Both acrylates/steareth-20 methacrylate copolymer and acrylates/C10-30 alkyl acrylate crosspolymer being suitable aqueous phase structuring agents (thickeners) being suitable aqueous phase structuring agents was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing acrylates/steareth-20 methacrylate copolymer with acrylates/C10-30 alkyl acrylate crosspolymer flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 09/19/2025, have been fully considered but they are moot in view of new ground of rejections. However, the examiner would like to address the following arguments to the extend they pertain to the new ground of rejections.
Applicants argue that Yabusaki does not teach UV absorber polar oil in any example.
However, this argument is not deemed persuasive. It is well-established that consideration of a reference is not limited to the preferred embodiments or working examples, but extends to the entire disclosure for what it fairly teaches, when viewed in light of the submitted knowledge in the art, to a person of ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)). In the instant case, Yabusaki teaches the composition including oily components, UV absorbers (paragraph 46) and ultraviolet light absorbers including octyl salicylate (the claimed UV absorber polar oil) (paragraph 81). Please refer to MPEP 2123 I:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.
Applicants argue that examples 1-6 in table 1 in the instant specification comprising ≥10% by mass of polar oil UV absorbers demonstrate better rolling test and usability test in comparison to comparative example 1.
However, this argument is not deemed persuasive.
First, both examples 1-6 and comparative example 1 comprise same polar oil UV absorbers, the difference is in batyl alcohol which is the contributing factor in the results in rolling test between examples 1-6 and comparative example 1 while example 2 (paragraph 138) taught by Yabusaki comprises 1% by weight of batyl alcohol (within the claimed 0.02-3% by weight in the instant claims 7 and 12). Thus, a person of ordinary skill in the art would add UV absorbers octyl salicylate to example 2 (paragraph 138) taught by Yabusaki and results in the alleged better rolling test, i.e., emulsion stability (usability test of comparison example 1 is A, i.e., not inferior).
Second, according to the instant specification, the contributing factor for the emulsion stability is the batyl alcohol (component B) (paragraph 20 and 21) and the emulsion stability is further improved by incorporation of (meth)acrylic acid/alkyl (meth)acrylate/(meth)acrylic acid-POE monoalkyl ether ester copolymer (component A) (paragraph 19), higher alcohol (paragraph 44-46), alkyl-modified carboxyvinyl polymer (paragraph 47 and 48), and nonionic surfactant having HLB of 10-20 (paragraph 49) while polar oil is not particularly limited and includes ester oils and the incorporation of high amount of polar oil does not worsen the emulsion stability (paragraph 22-24).
Thus, the experimental results and the disclosure in the instant specification are consistent in incorporation of batyl alcohol being the contributing factor for the emulsion stability, not the incorporation of any particular polar oil, including any ester oil and UV absorber, being the contributing factor for the emulsion stability.
Applicants argue that Yabusaki teaches oily components affecting the film forming of polyisobutene in paragraph 70.
However, this argument is not deemed persuasive. Yabusaki teaches, in paragraph 68, the content by percentage of the oily component, inclusive of polyisobutene and hydrocarbon oil, to the mass of the composition ≤70% by mass does not lower the ability of film-forming of polyisobutene while the total percentage of oily components in example 2 (paragraph 138) taught by Yabusaki is 29.75% by mass, thus addition of 0.01-35% by weight would not adversely affect the film forming of polyisobutene.
Applicants argue that the instant application is for stability of oil-in-water emulsion while the composition taught by Yabusaki is for firm feel, etc.
However, this argument is not deemed persuasive. As discussed above, incorporation of batyl alcohol is the contributing factor for the emulsion stability, the incorporation of any particular polar oil, including any ester oil and UV absorber, is not the contributing factor for the emulsion stability. The composition in example 2 (paragraph 138) taught by Yabusaki comprising 1% by weight of batyl alcohol (within the claimed 0.02-3% by weight in the instant claims 7 and 12). Thus, the composition taught by Yabusaki would inherently have the alleged emulsion stability.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614