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 .
Claim Status
Applicants’ amendments and arguments filed 12/05/2025 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 1 is amended.
Claims 1-2 are examined on the merits.
Claim Interpretation
Although the reference is silent to ‘a core-shell particle is formed in which said (B) forms the core and said (C) forms the shell with phase separation’, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. /n re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same particle is being formed by the production method in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, the references teaches, either expressly or inherently, each and every limitation of the instant claims.
Maintained and Updated Rejections
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Arakawa et al. (WO2016204124A1, published 12/22/2016, Google English translation, hereafter Arakawa) as evidenced by Beiersdorf AG (DE202006021303U1, published 09/25/2015, English translation by PE2E search, hereafter Beiersdorf) and as evidenced by Helmenstine (Helmenstine, A. (2020, August 20). What is room temperature?. Science Notes and Projects. https://sciencenotes.org/what-is-room-temperature/, hereafter Helmenstine).
As evidenced by Beiersdorf, homomenthyl salicylate, 2-ethylhexyl-2-cyano-3,3-diphenylacrylate (also known as Octocrylene), and 2-ethylhexyl 2-hydroxybenzoate are liquid at room temperature (abstract).
As evidenced by Helmenstine, the U.S Environmental Protection Agency (EPA) defines room temperature as 20 to 25oC (page 3, paragraph).
Arakawa teaches a cosmetic emulsion for protection against ultraviolet radiation comprising components (A), (B), (C), (D), and (E) (title and claim 1). Arakawa claims the emulsification step includes heating of preferably 60-120 oC (page 9, paragraph 5). Arakawa claims component (C) is 1 to 40% by mass of a liquid oil containing an oil-soluble ultraviolet absorber, component (D) is 0.01 to 6% by mass of a solid oil agent, and component (E) is water (claim 1 and abstract). Arakawa teaches the oil-soluble ultraviolet absorbers include homomenthyl salicylate, octyl salicylate, 2-ethylhexyl paramethoxycinnamate, octocrylene, amyl benzoate, and 2-ethylhexyl paradimethylaminobenzoate (page 6-7, last paragraph and first paragraph, respectively). Further, Arakawa teaches the oil-soluble ultraviolet absorber is preferably 60% or more, more preferably 65% or more, or 70% or more of the total component (C) (page 7, paragraph 4). Arakawa further teaches the content of the oil-soluble ultraviolet absorber in the ultraviolet protective cosmetic is preferably 6 to 20% by mass (page 7, paragraph 4). Arakawa teaches the UV protective cosmetic of the present invention is dispersed in α-gel particles encapsulating an oil-soluble UV absorber and has good storage stability (page 2, detailed description, paragraph 3). Arakawa teaches the solid oil agent is solid at 25 oC (page 10, paragraph 9 and page 7, paragraph 8). Arakawa teaches example solid oils to be: candelilla wax (melting point: 66-71 ° C.), rice wax (melting point: 77-86 ° C.), sunflower wax (Melting point: 65-80 ° C.), plant wax such as carnauba wax (melting point: 80-86 ° C.), tree wax (melting point: 50-56 ° C.); beeswax (melting point: 62/65 ° C.), whale wax (melting point: Animal waxes such as 42-52 ° C; mineral waxes such as montan wax (82-95 ° C), ozokerite (melting point: 66-78 ° C); microcrystalline wax (melting point: 60-90 ° C), paraffin (40 -70 ° C), petroleum waxes such as ceresin (60-80 ° C); hydrogenated castor oil (melting point: 85 ° C), hydrogenated jojoba oil (melting point: 66-70 ° C), 12-hydroxy stearate (melting point: 75-78 ° C.), stearamide (mp: 101 ° C.), a silicone wax (melting point 28-80 ℃), polyethylene wax (melting point: 94-152 ℃) and synthetic waxes (page 7, paragraph 8). Further, Arakawa teaches the addition of a hydrophobic amphiphile at 1-10% of the composition (claim 1). Arakawa teaches the hydrophobic amphiphile can be a linear saturated fatty acid or a mono fatty acid both having 10 to 24 carbon atoms (page 13, paragraph 3). Arakawa teaches the composition may further comprise a component (F) water soluble polymer which can be polyvinyl alcohol (page 8, paragraphs 5-6). Arakawa teaches the component (F) is preferably 0.3% of the total composition or preferably 0.3 to 1.5% of the composition (page 8, paragraph 8). Further, Arakawa teaches the emulsification step involves heating and mixing of the components and then a cooling process in which the obtained emulsion is mixed with a device (page 9, paragraph 5). Arakawa continues teaches the cooling process forms a solid oil agent and teaches the solidifying is 0.5 ° C./second (page 9, paragraph 5). Further, Arakawa teaches It is preferable to cool to below the solidification temperature of the oil component by such a cooling step (page 9, paragraph 5). Arakawa teaches the gel particle product encapsulates a soluble ultraviolet absorber that is dispersed and have excellent storage stability, a high UV protection, a good feeling of use, and no skin irritation (page 2, paragraph 7). Arakawa teaches an emulsification step of mixing the composition containing components (A) to (D) with water under heating (E) to form an emulsion (page 2, paragraph 4). Lastly, Arakawa teaches when the ultraviolet protective cosmetic of the present invention includes the component (F), the method for producing the ultraviolet protective cosmetic includes a liquid mixture obtained by mixing a part of the component (E) and the component (F) in advance, and then cooling (page 9, paragraph 4). Arakawa further elaborates teaching it is preferable to include a step of mixing the emulsion obtained in the step (page 9, paragraph 4).
Arakawa does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Arakawa with a reasonable expectation of success to obtain the method and composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method and composition of the instant claims with predictable results.
Response to Applicant’s Arguments
Applicant’s arguments filed on 12/05/2025 have been considered by the examiner.
In regards to the 35 USC § 103 rejection, Applicant argues that the instant steps claim the emulsification of components (B), (C), and (D) are emulsified in the presence of (A). Applicant argues that this results in a core-shell structure in which the oil-soluble UV absorber is incorporated into the particle center and the solid oil is phase separated near the water phase. Applicant then argues that component (F) (polyvinyl alcohol) of Arakawa is taught to be incorporated after the emulsion is formed in contrast to the instant claims.
In regards to Applicant’s argument that the emulsification step of components (B), (C), and (D) with (A) results in a core-shell structure, it is first noted that Arakawa teaches an emulsification step of mixing the composition containing components (A) to (D) with water under heating (E) to form an emulsion (page 2, paragraph 4). Further, it is noted that as worded, both the instant claims teach the same method of producing a composition. As outlined above and reiterated here, although the reference is silent to ‘a core-shell particle is formed in which said (B) forms the core and said (C) forms the shell with phase separation’, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. /n re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same particle is being formed by the production method in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, the references teaches, either expressly or naturally, each and every limitation of the instant claims. Further, it is noted that Arakawa teaches the UV absorber is encapsulated within the gel product which results in excellent storage stability, a high UV protection, a good feeling of use, and no skin irritation (page 2, paragraph 7). In regards to Applicant’s argument that polyvinyl alcohol is not added during the emulsion, Applicant is reminded that the rejection is a U.S.C. 103 rejection which means Arakawa is taken as a whole. As outlined above, Arakawa teaches when the ultraviolet protective cosmetic of the present invention includes the component (F), the method for producing the ultraviolet protective cosmetic includes a liquid mixture obtained by mixing a part of the component (E) and the component (F) in advance, and then cooling (page 9, paragraph 4). Arakawa further elaborates teaching it is preferable to include a step of mixing the emulsion obtained in the step (page 9, paragraph 4). Thus, Applicants reference to one embodiment in which component (F) is added after the emulsion is not indicative of the reference as whole and further according to MPEP 2141.02 “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives...” and MPEP 2123 “[d]isclosed exampled and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”.
In summary, the examiner is not persuaded by Applicant’s arguments. The rejection of record is maintained and updated to account for claim amendments.
Conclusion
No claims 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 ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611
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