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 .
THIs office action is in response to the reply filed 11/20/2025.
Response to Arguments
The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The arguments in the response filed 11/20/2025 will be addressed below to the extent they apply to the current rejections.
Regarding the 112(b), Applicant’s arguments are persuasive.
Regarding the 103 rejection, in summary, Applicant argues that the silicone of Candau does not overlap with the vesicle forming substance recited in claim 1. Candau requires at least one ethylcyclohexylene molecule and include -OR and there is no teaching or motivation to remove these groups.
This is not persuasive as Applicant is arguing limitations that are not recited by the instant claims. Instant claim 1 simply recites a generic polyoxyalkylene-modified silicone, it does not recite a silicone of a specific formula. While Candau teaches an ethylcyclohexylene molecule as an optional group and teaches -OR there is no need to remove these groups as the instant claims do not exclude a polyoxyalkylene-modified silicone having these groups.
Applicant argues that Candau expressly teaches minimizing or eliminating emulsifying surfactants ( [0095]), and claim 37 limits them to "not more than 1% by weight." In contrast, claim 1 requires a vesicle-forming amphiphilic substance functioning as an emulsifier.
This is not persuasive as Candau expressly teaches adding in a water-soluble silicone comprising at least one terminal or pendent monovalent polyoxyalkylene groups which reads on the claimed vesicle forming substance.
Modified/Maintained 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.
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.
Claim(s) 1, 3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Candau (US 2004/0228814) and JPS6110503.
Candau discloses photoprotective compositions suited for the protection of the skin, lips and/or hair, wherein the composition comprises a water-soluble compound comprising at least one terminal or pendent monovalent polyoxyalkylene groups (Abs).
The water-soluble silicones are preferably selected from compounds of formula I
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139
413
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wherein R5 is methyl and
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105
509
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wherein R6 can H, methyl or acetyl (Candau – claims 25 and 27). While Candau does not teach the silicone to be vesicle forming, the instant claims teach the vesicle forming amphiphilic substance to be a polyoxyalkylene-modified silicone and Candau teaches a polyoxyalkylene-modified silicone, thus the limitations of the claims have been met.
Candau teaches that the compositions are cosmetics which can be formulated as O/W emulsions [0094 and 0206].
Regarding claim 1(b): Candau teaches that the composition can comprise one or more UVA and/or UVB active sunscreen agents [0105]. Suitable agents include octocrylene (i.e. a β,β-diphenyl acrylate derivative, component (B).
Regarding claim 3: Candau teaches that one or more UVA and/or UVB active sunscreen agents can be used and these include ethylhexyl methoxycinnamate. These screening agents can be used in amounts ranging from 0.1-30%, as such it would be obvious to use octocrylene and ethylhexyl methoxycinnamate in a total amount ranging from 0.1-30% which provides an amount of ethylhexyl methoxycinnamate that overlaps with the claimed “1% by mass or less.”
Regarding claim 6: Candau teaches that the composition can be formulated as a cream [0094].
Candau teaches that additional mineral screening agents such as titanium oxide and zinc oxide (coated or uncoated) can be added (Candau – claim 33 and [0196]).
However Candau does not teach the composition to comprise an amino acid surface treated pigment, component (c).
JP’503 discloses cosmetic compositions containing improved pigments. JP’503 teaches that conventional pigments have a hydrophilic surface, which makes them poorly miscible and dispersible in oil-based base materials, making it difficult to obtain a cosmetic composition that is uniform and smooth to the touch [0001]. JP’503 teaches that when pigments were treated with N-mono long-chain acyl basic amino have a number of advantages over untreated pigments such as excellent dispersion and miscibility in oil based materials, homogenous product and smooth feel without roughness, good adherence to the skin and does not cause makeup to come off (pg. 3). Suitable pigments for treatment include titanium dioxide and zinc oxide (pg. 2 and 4).
It would have been prima facie obvious to modify the teaching of Candau with those of JP’503 before the effective filing date of the claimed invention. One of skill in the art would have been motivated to use the amino acid surface treated titanium dioxide or zinc oxide of JP’503 as the coated pigment of Candau as JP’503 teaches that the amino-acid treatment provides the pigment with improved dispersibility and miscibility and also improves the properties of the composition itself as discussed above. One of skill in the art would have a reasonable expectation of success as Candau teaches the use of coated pigments and both references discuss cosmetic compositions.
Regarding claim 7: While the prior art doesn’t teach the pigment (C) to be used for coloring, this is a recitation of intended use intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. As the prior art makes obvious a pigment (C) having the claimed structure, the pigment of the prior art is capable of being used for coloring absent factual evidence to the contrary.
Claim(s) 1, 3, 4 and 6-7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Candau (US 2004/0228814) and JPS6110503, as applied to claims 1, 3 and 6-7 above, and further in view of Franklin (US 2002/0072506).
As discussed above, Candau and JP’503 make obvious the limitations of claims 1, 3 and 6-7, however, they do not teach the all the limitations as required by instant claim 4.
Candau makes obvious component (A) being an polyoxyalkylene-modified silicone as discussed above. Candau teaches the dispersing aqueous phase of the composition can comprise a mixture of water and polyhydric alcohols such as propylene glycol or a mixture of water and lower alcohols such as ethanol [0104], reading on component (D). Candau exemplified the use of 4% propylene glycol (dihydric) [0214].
Candau teaches that surfactants commonly used in cosmetics and dermatology can be used [0202] and teaches that small amounts of emulsifying surfactants can also be used.
However, Candau does not specify the use of anionic surfactants.
Franklin discusses cosmetic formulations in the form of emulsions [0069] and teaches that emulsion compositions generally include emulsifying surfactants which can be anionic, cationic, zwitterionic and/or nonionic surfactants [0074].
It would have been prima facie obvious to modify the teaching of the above references with those of Franklin before the effective filing date of the claimed invention. One of skill in the art would have been motivated to use as the emulsifying surfactant of Candau, surfactant which are commonly known in the cosmetic arts art to form emulsions such as an anionic surfactants with a reasonable expectation of success as its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan to formulate a cosmetic composition comprising commonly used surfactants.
Regarding claim 8: While the prior art doesn’t teach the pigment (C) to be used for coloring, this is a recitation of intended use intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. As the prior art makes obvious a pigment (C) having the claimed structure, the pigment of the prior art is capable of being used for coloring absent factual evidence to the contrary.
Claim(s) 1,3, 5 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Candau (US 2004/0228814) and JPS6110503, as applied to claims 1, 3 and 6-7 above, and further in view of JP2002128677.
As discussed above, Candau and JP’503 make obvious the limitations of claims 1, 3 and 6-7, however, they do not teach the composition to have a whitening agent as required by instant claim 5.
JP’677 discloses sunscreen preparations for skin which have both a whitening effect and a sunscreen effect and is highly stable against light and heat [0001]. JP’677 teaches that whitening agents are added to sunscreen agents as they help prevent spots and freckles caused by sunburn, however when whitening agents are added to sunscreen such as zinc oxide, there are problems in terms of stability, such as discoloration due to light and heat [0002]. JP’677 teaches that the problem can be resolved by combining the whitening agent and hydrophobically treated zinc oxide (JP’677 – claim 1).
It would have been prima facie obvious to modify the teaching of the above references with those of JP677 before the effective filing date of the claimed invention. One of skill in the art would have been motivated to add a whitening agent as taught by JP’677 as these are known to be effectively combined with sunscreen agents to prevent spots and freckles caused by sunburn. One of skill in the art would have a reasonable expectation of success as the above references make obvious photoprotective compositions comprising hydrophobically treated pigments such as zinc oxide.
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613