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 .
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.
Claim Status
Applicant’s amendment of 11/07/2025 is acknowledged. Claim 1 is amended, and claims 7-9 are new. Claims 1-9 are currently pending.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 05/27/2025. The election is maintained and claims 4-6 remain withdrawn. Accordingly, claims 1-3 and 7-9 are examined on the merits herein.
Priority
The instant application is a 371 of PCT/JP2021/032376 filed on 09/03/2021 and claims foreign priority to JP2020-161951 filed on 09/28/2020 as reflected in the filing receipt dated on 11/02/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Withdrawn Objections and Rejections
Applicant’s amendments to the claims have overcome/rendered moot the previous 112(b) rejections. Thus, the rejections are hereby withdrawn.
The double patenting rejection over copending Application No. 19/144,057 is withdrawn due to Applicant’s cancellation of the relevant copending claims.
Applicant’s amendment and introduction of new claims have prompted the new/revised grounds of rejection presented herein under 112(b), 102, and 103, and on the grounds of nonstatutory double patenting. Applicant’s arguments insofar as they pertain to the revised grounds of rejection are addressed herein.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation “emulsified composition…contains humectants, inorganic pigments, or ultraviolet absorbers”. The limitation lacks sufficient antecedent basis because the claim depends from claim 1, which does not recite the listed components. The term “further” should be added to the claim so as to properly further limit claim 1. The Examiner recommends amending the claim to read “emulsified composition…further contains…”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203).
Kojima discloses an emulsion composition comprising water, an oil component, α-cyclodextrin, and gel-forming components such as agar, galactomannan or a combination of glucomannan and xanthan gum, carrageenan, furcelleran, gellan gum, and native gellan gum (Claim 1).
In Kojima’s Experimental Example 6 (Paragraphs 0057-0059, Tables 21 and 22), the emulsion composition comprises: locust bean gum, xanthan gum, α-cyclodextrin, water, and an oil component.
Regarding claim 1: Water and α-cyclodextrin read on the same recited in the instant claim. Locust bean gum and xanthan gum each read on the instantly claimed at least one water-soluble gelling agent. The oil component meets the limitation “fat” as recited in the instant claim.
Regarding claim 2: As evidenced by Kojima’s Tables 21 and 22 (machine translation of original cited document provided below), the oil component of Experimental Example 6 includes sesame oil and castor oil, which are both edible vegetable oils and, thus, meet the claim limitation.
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Regarding claim 3: Kojima’s disclosure that emulsifiers are generally used to make emulsified cosmetics such as hand creams (Paragraph 0008) anticipates the claim limitation.
It is noted that the recitations “for skin” in instant claim 1 and “hand cream” in instant claim 3 are intended uses of the claimed composition. 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. Since the structure of the emulsion composition of Kojima is capable of performing the intended uses, then it meets the claims. Note: MPEP 2111.02.
Regarding claim 7: As evidenced by Kojima’s Table 21, the emulsion composition does not comprise a synthetic surfactant and/or a polyoxyethylene glycol and, thus meets the claim limitation.
Regarding claim 9: Kojima further teaches that the physical properties of Experimental Example 6 were measured in the same manner as in Experimental Example 1 (Paragraph 0057), wherein gloss and texture properties are investigated when the emulsion is dried (Paragraph 0020; see also Abstract, Claim 2, and Paragraph 0001 for further evidence of Kojima explicitly disclosing dried forms of the W/O emulsion). Therefore, the dried form of the emulsion composition meets the claim.
Response to Arguments
Applicant’s arguments submitted on 11/07/2025 with respect to rejections under 35 U.S.C. 102 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Applicant argues that the instant claims cannot be anticipated by Kojima because the presently claimed invention does not include a gel with a three-dimensional matrix, further asserting that the water-soluble gelling agents selected from carboxymethyl cellulose, xanthan gum, locust bean gum, guar gum, and tamarind gum include hydrocolloids that do not form gels and are not suggested for use in Kojima. Applicant’s arguments have been considered but are not found to be persuasive. As discussed in the prior art rejections of record, Kojima explicitly teaches at least one embodiment wherein locust bean gum and xanthan gum are the gel-forming components of choice and, thus, anticipates the instantly claimed feature.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., Applicant’s instantly claimed composition allegedly not including a gel with a three-dimensional matrix) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, the Examiner respectfully points out that although Applicant provides no evidence to support the allegation that the presently claimed invention does not rely on a three-dimensional matrix gel as required by Kojima, the instant claims are directed to a product, not a process of making the product. As such, Applicant’s arguments regarding differences in preparing the emulsion do not carry patentable weight, as both Applicant’s method and Kojima’s method each result in an emulsified composition comprising all ingredients as instantly claimed. Absent further structural limitations, the disclosure of Kojima fully anticipates Applicant’s emulsified composition.
In view of the foregoing, the prior art rejections of record are maintained.
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.
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 1-3 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203), as applied to claims 1-3, 7, and 9 above, and further in view of TruKid (webpage, <https://www.trukid.com/pages/sun-care>; archived: 07/21/2019; PTO-892).
Kojima teaches the invention(s) of instant claims 1-3, 7, and 9 as discussed in detail above and further incorporated herein.
However, Kojima does not explicitly teach that the emulsion composition contains humectants, inorganic pigments, or ultraviolet absorbers as recited in instant claim 8.
TruKid teaches that physical blockers, such as titanium dioxide, are routinely used in skincare products due to their strong ultraviolet (UV) light absorbing capabilities and resistance to discoloration under UV light, which enhances its stability and ability to protect the skin from UV light, while also being less likely to cause skin irritation than chemical UV absorbers (Page 4).
Regarding claim 8: Because Kojima teaches that emulsifiers are generally used to make hand creams, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsion composition of Kojima by further including a UV absorber, such as the titanium dioxide taught by TruKid, to impart the added benefit of protecting the skin from UV light without causing skin irritation.
An ordinarily skilled artisan would reasonably expect success in modifying the composition of Kojima with the prior art teachings as proposed because titanium dioxide is known in the art to be safe for use in skincare products, and Kojima explicitly teaches that its compositions may include additives such as minerals, pigments, functional ingredients, etc. (Paragraph 0016).
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 1-3 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/842,973 in view of Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203) and TruKid (webpage, <https://www.trukid.com/pages/sun-care>; archived: 07/21/2019; PTO-892 of instant action).
App. ‘973 claim 1 discloses an acidic emulsified composition comprising water, fat and oil, cyclodextrin, a water-soluble gelling agent, and a water-soluble organic solvent, and claim 3 recites a method for producing the acidic emulsified composition. App. ‘973 claims 2 and 4 recite that the composition further comprises an acidic substance. App. ‘973 claim 5 recites a method wherein the emulsified composition is dried.
The emulsified composition does not comprise a synthetic surfactant and/or a polyoxyethylene glycol and, thus meets the instant claim limitation.
Acidic substances are known in the art to be used in emulsified cream cosmetic compositions, such as those used for skin, as evidenced by Kojima which references an emulsion composition comprising hyaluronic acid (Paragraph 0003 and 0006).
However, the claims of App. ‘973 do not recite that the cyclodextrin is α-cyclodextrin or that the water-soluble gelling agent is selected from the group consisting of carboxymethyl cellulose (CMC), xanthan gum, locust bean gum, guar gum, and tamarind gum as recited in instant claim 1, that the fat and oil is an edible vegetable oil as recited in instant claim 2, that the composition is a hand cream as recited in instant claim 3, or that the composition contains humectants, inorganic pigments, or ultraviolet absorbers as recited in instant claim 8.
The teachings of Kojima and TruKid are as set forth above and further incorporated herein.
Regarding instant claim 1: It would have been obvious to one of ordinary skill in the art to modify the emulsion recited in the claims of App. ‘973 by using xanthan gum and/or locust bean gum as the water-soluble gelling agent and α-cyclodextrin as the cyclodextrin because Kojima teaches that these components are known in the art to form an emulsified composition when combined.
Regarding instant claim 2: It would have been obvious to one of ordinary skill in the art to modify the emulsion recited in the claims of App. ‘973 by using an edible vegetable oil, such as sesame oil or castor oil as the fat and oil component because Kojima teaches that these oils are suitable for forming stable emulsions in cosmetics, chemical products, pharmaceuticals, and foods (Paragraph 0013).
It is noted that the recitations “for skin” in instant claim 1 and “hand cream” in instant claim 3 are intended uses of the instantly claimed composition. 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. Since the structure of the emulsified composition recited in the claims of App. ‘973 is capable of performing the intended uses, as evidenced by Kojima, then it meets the claims. Note: MPEP 2111.02.
Regarding instant claim 8: Because Kojima teaches that emulsifiers are generally used to make hand creams, it would have been obvious to one of ordinary skill in the art to modify the emulsion composition taught by the combination of App. ‘973 claims and Kojima by further including a UV absorber, such as the titanium dioxide taught by TruKid, to impart the added benefit of protecting the skin from UV light without causing skin irritation.
An ordinarily skilled artisan would reasonably expect success in modifying the composition recited in the claims of App. ‘973 with the prior art teachings as proposed because all ingredients are known to be useful in formulating emulsified compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/730,641 in view of Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203) and TruKid (webpage, <https://www.trukid.com/pages/sun-care>; archived: 07/21/2019; PTO-892 of instant action).
App. ‘641 claims 1 and 2 recite an emulsified composition comprising water, fat and oil, cyclodextrin, and at least one water-soluble gelling agent selected from the group consisting of carboxymethyl cellulose (CMC), xanthan gum, locust bean gum, guar gum, and, tamarind gum, among others. App. ‘641 claims 4-6 recite a re-emulsified composition comprising the emulsified composition of claim 2. App. ‘641 claim 7 recites a method for producing the emulsified composition, and claims 11-15 recite methods for producing the re-emulsified composition. App. ‘641 claims 3 and 8-10 recite dried forms of the composition.
The claims of App. ‘641 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-5 of copending Application No. 18/842,973 in view of Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203) and TruKid (webpage, <https://www.trukid.com/pages/sun-care>; archived: 07/21/2019; PTO-892 of instant action), which is discussed in detail above.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/697,189 in view of Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203) and TruKid (webpage, <https://www.trukid.com/pages/sun-care>; archived: 07/21/2019; PTO-892 of instant action).
App. ‘189 claims 1-5 recite a liquid emulsion composition comprising water, an oil and fat, a cyclodextrin, a water-soluble gelling agent, and a dextrin. App. ‘189 claim 6 recites that the water-soluble gelling agent is one or more selected from the group consisting of carboxymethyl cellulose, tamarind gum, xanthan gum, locust bean gum, and guar gum, among others. App. ‘189 claims 7-8 recite a method for producing the liquid emulsion composition, and claims 9-10 recite a kit for producing the liquid emulsion composition.
The claims of App. ‘189 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-5 of copending Application No. 18/842,973 in view of Kojima et al. (JP2016204311A; published: 12/08/2016; IDS of 03/27/20203) and TruKid (webpage, <https://www.trukid.com/pages/sun-care>; archived: 07/21/2019; PTO-892 of instant action), which is discussed in detail above.
Regarding instant claim 9: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dry the liquid emulsion composition because Kojima teaches that emulsions comprising the same ingredients can be dried to achieve desirable effects such as low adhesion, good spreadability, and excellent gloss without stickiness (Paragraph 0001).
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 7-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-16 of copending Application No. 18/273,894 in view of Eufic (webpage, <https://www.eufic.org/en>; published: 03/06/2013; PTO-892 of instant action) as evidenced by Kitchen Pantry Scientist (webpage, <https://kitchenpantryscientist.com/emulsions-mayonnaise-and-vinaigrette>, published: 06/12/2018; PTO-892 of 08/08/2025).
App. ‘894 claims 1-7, 9, and 16 recite a mayonnaise-style dressing comprising water, an oil or fat, a cyclodextrin, a water-soluble gelling agent, and an emulsifying agent, and claims 8 and 11-15 recite a method for producing the mayonnaise-style dressing. App. ‘894 claim 3 recites that the oil or fat is one or more selected from a group consisting of various edible vegetable oils, claim 4 recites that the cyclodextrin is α-cyclodextrin, claim 5 recites that the water-soluble gelling agent is one or more selected from the group consisting of carboxymethyl cellulose, tamarind gum, xanthan gum, locust bean gum, and guar gum, among others.
The emulsified composition does not comprise a synthetic surfactant and/or a polyoxyethylene glycol and, thus meets the instant claim limitation.
While the claims of App. ‘894 recite a mayonnaise-style dressing rather than an emulsified composition for skin, the structure of mayonnaise is known in the art to be an emulsion, as evidenced by Kitchen Pantry Scientist (Title and Page 1). It is noted that the recitations “for skin” in instant claim 1 and “hand cream” in instant claim 3 are intended uses of the instantly claimed composition. 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. Since the structure of the composition recited in the claims of App. ‘894 is capable of performing the intended uses and comprises no ingredients which make it incompatible with skin, then it meets the claims. Note: MPEP 2111.02.
However, the claims of App. ‘894 do not expressly recite that the composition contains humectants, inorganic pigments, or ultraviolet absorbers.
Eufic teaches that white and brown sugars are used as sweeteners to counteract acidic or bitter tastes in mayonnaise, etc. and are also humectants, which are important for food preservation (Pages 2-3).
Regarding instant claim 8: It would have been obvious to one of ordinary skill in the art to modify the mayonnaise-style dressing recited in the claims of App. ‘894 by further including white and/or brown sugars as humectants because Eufic teaches that these sugars are beneficial for counteracting acidic or bitter tastes in mayonnaise and also serve as a food preservative.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of App. ‘894 with the prior art as proposed because white and brown sugars are known in the art to be useful in formulating mayonnaise-based compositions.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted on 11/07/2025 with respect to rejections on the grounds of nonstatutory double patenting have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Applicant states that to the extent any double patenting rejection above is still applicable in view of the remarks and amendments presented above, Applicant will address such rejection in the event it is later presented. Because all rejected copending claims remain obvious in view of the prior art for the same reasons as applied to the rejections under 102, as discussed in detail in the Response to Arguments above, the double patenting rejections of record are maintained.
Conclusion
No claim is 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 CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616