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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 26, 2026 has been entered.
Claims 19-22 and 24-39 are pending.
Claims 1-18 and 23 are cancelled.
Claims 19-22 and 24-27 are currently amended.
Claim 39 is new.
Claims 36-38 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s Supplemental Response filed June 29, 2026 is acknowledged.
Claim 19 is further amended.
Claims 19-22, 24-35 and 39 as filed on June 29, 2026 are under consideration.
Withdrawn Objections / Rejections
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Objections
Claim 19 is objected to because of the following informalities: “polyvinyl pyrrolidone” should presumably recite “vinyl pyrrolidone” consistent with the disclosure of Aristoflex® at page 10, lines 28-31 of the instant specification. Appropriate correction is required.
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 19-22, 25-35 and 39 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, of record) 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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
The acrylic copolymer includes 2-acrylamidomethylpropanesulfonic acid and vinylpyrrolidone such as for example the copolymer ammonium acryloyldimethyltaurate / vp copolymer and may be present from 0.2 to 1 wt% of the aqueous gel (claim 3; page 4, top half), as required by instant claim 22.
The hydrophilic gelling agent may further comprise a hydrophilic gelling agent selected from natural polymers inclusive of xanthan gum; 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 claim 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 claim 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 specifically teach 0.4 to 2 wt% of the at least one second lipophilic gelling agent chosen from esters of dextrin and a C14-C18 fatty acid as required by claim 26.
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.
Lin does not teach 15 to 50 wt% non-encapsulated organic UV screening agent as required by claim 39.
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 xanthan gum or/and AMPS copolymers such as copolymers of AMPS and of vinylpyrrolidone such as ammonium acryloyldimethyltaurate / vp copolymer, 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], [0120], [0122]-[0126], [0254], [0320], [0324], [0550]-[0585]). 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. Liposoluble UV screening agents can be fully dissolved or made miscible in molecular form in a fatty phase (non-encapsulated) and may be present from 0.1 to 50 wt% (paragraphs [0696], [0698], [0700], [0759], [0845]), as required by instant claim 39. 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]), as required by instant claim 26.
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 claim 26, 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 amount of the dextrin palmitate of the bigel type cosmetic of Lim in view of Roudot within the range of 0.1 to 30 wt% as taught by Roudot because this range is suitable for gelling. There would be a reasonable expectation of success because the amount exemplified by Lin falls within this range.
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, 32 and 39, 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 0.1 to 50 wt% 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.
Claim 24 is 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, of record) in view of Roudot et al. (US 2017/0304658, published October 26, 2017, of record) as applied to claims 19-22, 25-35 and 39 above, and further in view of Xu et al. (WO 2014/153706 A1, published October 2, 2014, of record).
The teachings of Lim and Roudot have been described supra.
They do not specifically teach 0.1 to 1 wt% of the at least one first lipophilic gelling agent chosen from dibutyl lauroyl glutamide and dibutyl ethylhexanoyl glutamide as required by claim 24.
This deficiency is made up for in the teachings of Xu.
Xu teaches a transparent composition comprising 0.1 to 15 wt% of at least one organogelator of N-acryl glutamic acid diamide that is preferably lauroylglutamic acid dibutylamide (INCI name dibutyl lauroyl glutamide) or/and N-2-ethylhexanoyl glutamic acid dibutylamide (dibutyl ethylhexanoyl glutamide), 0.1 to 15 wt% of at least one ester of dextrin fatty acid that is preferably a C14-C18 fatty acid such as dextrin palmitate, and at least one non volatile oil phase (title; abstract; claims, in particular 1, 6-12; page 5, lines 11-22; Examples). The transparent composition is a gel having good stability (page 1, lines 3-7; page 2, lines 6-8). The composition may further comprise UV screening agents (page 13, lines 10-18).
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 amount of the amino acid based compound of the oil gel of the bigel type cosmetic of Lim in view of Roudot within the range of 0.1 to 15 wt% as taught by Xu because this amount is suitable for gelling when used in combination with dextrin palmitate. There would be a reasonable expectation of success because the range of Xu overlaps the range of Lim and because Lim exemplifies embodiments comprising dextrin palmitate in combination with the amino acid based compound selected from dibutyl lauroyl glutamide or/and dibutyl ethylhexanoyl glutamide.
Response to Arguments
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s statements at page 7 of the Remarks that Lim does not teach or suggest certain features of claim 19 as amended is unpersuasive as set forth in the modified grounds of rejection over Lim. Lim expressly teaches xanthan gum which is a species of polysaccharide “produced by microorganisms” as evidenced at least by paragraph [0124] of Roudot. Lim expressly teaches AMPS/VP. Lim expressly teaches amino acid based compounds selected from dibutyl lauroyl glutamide or/and dibutyl ethylhexanoyl glutamide. And Lim exemplifies embodiments of oil gel further comprising dextrin palmitate.
Applicant’s citation to the examples of Lim as not employing a polysaccharide produced by microorganisms is acknowledged but not found persuasive because (1) the instant claims do not preclude the presence of polysaccharides not produced by microorganisms and (2) Lim teaches inter alia xanthan gum is a suitable alternative natural polymer.
Applicant’s statement that the acryloyldimethyltaurate / VP copolymer of Lim is a different compound than the AMPS/VP newly claimed is unpersuasive because the instant specification in the paragraph bridging pages 10 and 11 evidences the contrary.
Applicant’s statement that Roudot fails to disclose the specific combination of gelling agents instantly claims is acknowledged but not found persuasive because (1) the instant claims do not exclude any gelling agents and (2) Roudot is not relied upon for anticipating the claims. Furthermore, Xu is re-applied as necessitated by Applicant’s amendments. Xu expressly teaches the amino acid gelling agents and Xu expressly teaches the amino acid gelling agents in combination with dextrin esters.
Applicant’s rehashed allegation of unexpected results articulated at page 8 of the Remarks is acknowledged but remains unpersuasive for reasons of record. 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. See MPEP 716.02 for information regarding allegations of unexpected results.
Therefore, the rejections over Lim are properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lanzendorfer et al. (US 2002/0155076) teaches gel creams comprising up to 5 wt% ammonium acryloyldimethyltaurate / vp copolymers and exemplifies embodiments comprising xanthan gum (e.g., 0.2 wt%) and Aristoflex® AVC (e.g., 1 wt%) (title; abstract; claims; Examples).
Nakamura et al. (JP S60-193911 A, as evidenced by the Google translation) teaches dextrin fatty acid esters inclusive of dextrin palmitate in amounts of 0.3 to 15 wt% improve the UV absorption effect and water resistance of sunscreens (title; abstract; claim; page 2, 1st full paragraph).
L’Alloret (EP 1,468,670 A1, as evidenced by the Google translation) teaches photoprotective compositions comprising 0.01 to 20 wt% AMPS polymer inclusive of copolymers of AMPS and vinylpyrrolidone such as ammonium acryloyldimethyltaurate / vp copolymer (title; abstract; claims).
Touati et al. (WO 2018/225768 A1, as evidenced by US 2021/0077365) teaches emulsified sunscreens comprising a UV absorber and 0.5 to 15 wt% of an oil phase thickener inclusive of dextrin fatty acid esters inclusive of dextrin palmitate or/and amino acid-base gelling agents inclusive of dibutyl lauroyl glutamide; when the amount of thickener is too high the viscosity is too high and the sunscreens are difficult to spread and when the amount of thickener is too low the UV protection effects are not improved (title; abstract; claims; paragraphs [0023]-[0038]).
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
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