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
The Applicant’s reply filed on 2/20/26 is acknowledged. Claims 1-4 are pending. Claims 1 and 4 have been amended. Claims 1-4 are under consideration.
Rejections Withdrawn
The rejection of Claims 1-4 under 35 U.S.C. 103 as being unpatentable over Kubota et al. (WO 2018/030326; translation provided herein) as evidenced by Ataman Chemicals (“Trimethylol Hexyllactone Crosspolymer” <https://www.atamanchemicals.com/ trimethylol-hexyllactone-crosspolymer_u32279/>) is withdrawn in view of the amended claim(s).
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
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.
Claims 1-4 are 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the powder" in line 15. There is insufficient antecedent basis for this limitation in the claim. A powder is not recited in claim 1. In addition, because a powder is not included in the composition, the claimed range of “90% or more of the sum of the mass of the composition minus the mass of the powder” is unclear. It is unclear how much hydrophilic liquid medium, oily liquid medium, and aqueous solidifying agent are required to be present.
Claims 2-4 are rejected as depending from indefinite claim 1 and not clarifying.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ujimoto et al. (WO 2020/032242, cited in IDS; using US equivalent 2021/0338552 as translation) as evidenced by Shin Etsu (“KSP-100”).
Ujimoto et al. teach an oil-based cosmetic having ultraviolet protection effects (e.g. abstract). Ujimoto et al. teach that the cometic is in the form of a solid (e.g. Claim 11; Examples). Ujomoto et al. teach that the composition comprises:
5-40 wt% of an ultraviolet protectant, including ethylhexyl methoxycinnamate (i.e. an oily liquid medium that separates when mixed with water at 1:1) (e.g. Claim 1, paragraphs 0024 and 0041; Examples); and
1-30 wt% of an alkylene oxide derivative and a polyhydric alcohol, including the specific combination of polyethylene glycol 400 and PEG/PPG-9/2 dimethyl ether (i.e. hydrophilic liquid medium and aqueous solidifying agent) (e.g. paragraphs 0070, 0071; Claims 1, 5).
Regarding Claims 1 and 4, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claim 2, Ujimoto further teaches the inclusion of a powder including KSP-100 by Shin-Etsu (e.g. paragraph 0079) and other oils (e.g. paragraph 0076), and as evidenced by Shin Etsu, KSP-100 is an oil absorbing powder (e.g. page 1).
Regarding Claim 3, Ujimoto et al. teach that the hardness of the solid is 5-300N, which overlaps with the claimed range. 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) (MPEP 2144.05.I). Ujimoto also exemplify values of 15, 148 and 207, which are within the claimed range (e.g. paragraphs 0083 and 0109).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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