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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated October 28, 2025 is acknowledged.
Claims 19-38 are pending.
Claims 1-18 are cancelled.
Claims 19, 20, 22, 24, 26, 29, 32 and 34 are currently amended.
Claims 36-38 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 19-35 as filed on October 28, 2025 are currently pending and under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn and all previous claim rejections under 35 USC 103 over Goutayer are withdrawn.
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
New Grounds of Rejection Necessitated by Amendment
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 of this title, 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 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 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 19-35 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. (WO 2019/093780, published May 16, 2019, as evidenced by the Google translation) in view of Roudot et al. (US 2017/0304658, published October 26, 2017, of record).
Lim teaches a bigel type cosmetic (not an emulsion) comprising an aqueous gel comprising a hydrophilic gelling agent comprising an acrylic copolymer and an oil gel (title; abstract; claims; page 3, lower half, paragraph starting “As used herein, the term “bi gel type cosmetic composition” means …”). The aqueous gel and the oil gel are mixed in a weight ratio of 7:2 to 3:7 (last claim), as required by instant claim 30. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
The acrylic copolymer includes 2-acrylamidomethylpropanesulfonic acid and may be present from 0.2 to 1 wt% of the aqueous gel (claim 3; page 4, top half), as required by instant claims 22, 23.
The hydrophilic gelling agent may further comprise a hydrophilic gelling agent selected from natural polymers inclusive of carrageenan; the natural polymer may be present from 0.1 to 4 wt% of the aqueous gel (claims; page 4, last two full paragraphs; page 5, first four full paragraphs), as required by instant claims 20, 21.
The oil gel may comprise an amino acid based compound selected from dibutyl lauroyl glutamide or/and dibutyl ethylhexanoyl glutamide; the amino acid based compound may be present from 5 to 50 wt% of the oil gel (claims; page 5, middle), as required by instant claims 24, 25. The oil included in the gel is not limited and includes inter alia higher fatty alcohols such as octyldodecanol (page 6, 7th full paragraph), as required by instant claim 33. The exemplary oil gels comprise 29.25 wt% octyldodecanol and the exemplary cosmetics have a water gel to oil gel weight ratio of 7:3 (implies the cosmetic comprises 3*(29.25 wt%)/10 ~= 9 wt% octyldodecanol) (page 7), as required by instant claims 33, 34. The exemplary water gels comprise 10 wt% propanediol (alcohol), as required by instant claims 33, 34.
The exemplary oil gels may further comprise 2.25 wt% dextrin palmitate (page 7), as required by instant claims 26, 27.
The cosmetic may further comprise additives such as a soothing accelerator (page 6, 5th full paragraph), as required by instant claim 35.
Lin does not teach at least one UV screening agent as required by claim 19.
Lin does not teach a third lipophilic gelling agent chosen from (C10-C30) alkyl polyacrylates as required by claim 28.
Lin does not teach 0.2 to 5 wt% of the third gelling agent as required by claim 29.
Lin does not teach the UV screening agent is lipophilic as required by claim 31.
Lin does not teach the UV screening agent within the oily phase as required by claim 32.
These deficiencies are made up for in the teachings of Roudot.
Roudot teaches gel / gel compositions comprising an aqueous phase gelled with at least one non-starch hydrophilic gelling agent selected from inter alia natural polymers such as carrageenan or/and AMPS copolymers, an oily phase gelled with at least one agent selected from inter alia semicrystalline polymers or/and dextrin esters, and at least one UV screening agent (title; abstract; claims; paragraphs [0023], [0055], [0073], [0118], [0254]). The at least one UV screening agent may be liposoluble organics or/and may be totally present in the gelled oily phase (claims 10, 11), as required by instant claims 31, 32. Semicrystalline polymer gelling agents include (C10-C30) alkyl polyacrylates and may be present from 0.1 to 30 wt% in the oily phase (paragraphs [0550], [0573], [0577]), as required by instant claims 28, 29. Dextrin ester gelling agents include dextrin palmitate and may be present from 0.1 to 30 wt% in the oily phase (paragraphs [0578], [0582], [0585]).
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 bigel type cosmetic of Lim to further comprise at least one UV screening agent as taught by Roudot in order to reap the expected benefit of sun protection. There would be a reasonable expectation of success because Lim embraces the presence of additives.
Regarding claims 28 and 29, 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 oil gel of the bigel type cosmetic of Lim in view of Roudot to further comprise additional oil gelling agents inclusive of semicrystalline polymer gelling agents inclusive of (C10-C30) alkyl polyacrylates in amounts from 0.1 to 30 wt% as taught by Roudot in order to gel the oily phase. There would be a reasonable expectation of success because Roudot evidences semicrystalline polymer gelling agents inclusive of (C10-C30) alkyl polyacrylates to be an art recognized obvious variant of dextrin palmitate as included within the exemplary formulations of Lim.
Regarding claims 31 and 32, 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 sun protective bigel type cosmetic of Lim in view of Roudot to comprise liposoluble organic UV screening agents or/and to include the UV screening agent within the gelled oily phase as taught by Roudot because such is suitable for UV screening agents within gel/gel compositions.
Response to Arguments
Applicant's arguments have been considered but are substantially moot in light of the new grounds of rejection necessitated by amendment.
Applicant’s allegation of unexpected results articulated at page 11 of the Remarks is acknowledged but not found persuasive because the content of the as-filed specification has already been considered as part of the Graham analysis. Table 3 on page 58 of the specification is not a comparison to the prior art. See MPEP 716.02 for information regarding allegations of unexpected results. The exemplary compositions of Table 1 on page 55 have limited nexus with the genus of compositions embraced by the claims as previously presented or currently amended.
Applicant’s position that it would not have been obvious to select specifically the gelling agents claimed is noted but unpersuasive because there is no need to select specifically the gelling agents claimed when the claims embrace all gelling agents. Nonetheless, Lim as newly applied is in possession of gels comprising the combination of gelling agents as set forth in claim 1.
Conclusion
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 ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner , Art Unit 1600