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 . Claims included in the prosecution are claims 1, 3, 4, 18-24 and 26.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/08/2026 has been entered.
Applicants' arguments, filed 06/08/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 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.
Claims 1, 3, 4, 18-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Antonelli et al. (US 6,235,297, May 22, 2001) in view of Nijakowski (US 2016/0089323, Mar. 31, 2016) and Ueda et al. (JP 2022147656 A, Oct. 6, 2022).
Antonelli et al. disclose a cosmetic composition (abstract). The composition may be a water and oil emulsion lotion (col. 2, line 36). The water and oil emulsion may be an oil-in-water emulsion (col. 2, line 41). The water and oil emulsion may be in the form of a foundation makeup composition (col. 10, lines 54-55). The foundation makeup composition may contain 0.1-70% pigments, powders, or mixtures thereof, having particle sizes of 0.02 to 100 microns (col. 11, lines 2-6). Examples of powders include spherical silica (col. 11, line 10). The oil-in-water emulsion may comprise 20-70% water (col. 10, line 44) and 0.1-99% oil (col. 2, lines 43-44).
Antonelli et al. differ from the instant claims insofar as not disclosing wherein the composition comprises lauroyl lysine.
However, Nijakowski discloses a skin smoothing composition (abstract). The composition may be in the form of an oil-in-water emulsion (claim 14). The composition can comprise a pigment powder component (¶ [0048]). Commercially available pigment powder components include lauroyl lysine: Amihope LL available from Ajinomoto (¶ [0050]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. The composition of Antonelli et al. comprises pigments. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated lauroyl lysine, such as Amihope LL, into the composition of Antonelli et al. since it is a known and effective pigment for cosmetic compositions as taught by Nijakowski.
The combined teachings of Antonelli et al. and Nijakowski do not teach wherein the spherical silica has an oil absorption of from about 1 ml/100g to about 50 ml/100g.
However, Ueda et al. disclose an oil in water emulsified cosmetic comprising a hydrophilic spherical silica powder (abstract). The oil absorption of the hydrophilic spherical silica powder is not particularly limited, but is preferably 10 ml/100 g or more and 500 ml/100 g or less (page 2 of 8 of translation).
Antonelli et al. disclose wherein the composition comprises spherical silica, but does not disclose its physical properties. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the spherical silica of Antonelli et al. to have an oil absorption of 10 ml/100 g or more and 500 ml/100 g or less since this is a known and effective physical property for spherical silicas used in oil-in-water cosmetics as taught by Ueda et al.
In regards to instant claim 1 reciting wherein the lauroyl lysine has a flat polygonal shape and a mean particle size of from about 20 microns to about 30 microns, as discussed above, it would have been obvious to one of ordinary skill in the art to have incorporated Amihope LL into the composition of Antonelli et al. As noted by the instant specification on page 7, lines 17-20, Amihope LL has a flat hexagonal shape and a mean particle size of 20-30 microns. Therefore, since it would have been obvious to one of ordinary skill in the art to have incorporated Amihope LL into the composition of Antonelli et al., a composition comprising lauroyl lysine having a flat polygonal shape and a mean particle size of from about 20 microns to about 30 microns would have been obvious.
In regards to instant claim 1 reciting a weight ratio between the silica and the lauroyl lysine of from about 5:1 to about 1:5, as discussed above, Antonelli et al. disclose 0.1-70% pigments and powders. As discussed above, spherical silica is a powder and lauoryl lysine is a pigment. The claimed weight ratio would have been obvious to one of ordinary skill in the art by one selecting an amount of silica and an amount of lauroyl lysine from this range and arriving at a ratio that overlaps with the claimed ratios. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
In regards to instant claim 1 reciting a particle size ratio between the silica and the lauroyl lysine of from about 1:2 to about 1:20, as discussed above, Antonelli et al. discloses a particle size of 0.02 to 100 microns and it would have been obvious to have incorporated Amihope LL (mean particle size of 20-30 microns) into the composition of Antonelli et al. The claimed particle size ratios would have been obvious to one of ordinary skill in the art by one selecting a particle size of silica and a particle size of Amihope LL from these ranges and arriving at a ratio that overlaps with the claimed ratios. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
In regards to instant claim 1 reciting wherein the composition is free of cellulose powder and microplastic solid particulates, as shown in Example 4 of Antonelli et al., the composition does not have cellulose powder and microplastic solid particulates.
In regards to instant claim 1 reciting 0% cetyl alcohol and stearyl alcohol, as shown in Example 4 of Antonelli et al., the composition does not have cetyl alcohol and stearyl alcohol.
In regards to instant claims 18-20, as shown in Example 4 of Antonelli et al., the composition does not comprise shea butter and behenyl alcohol, thus meeting the limitation of a composition comprising up to about, 0.5%, 0.3%, and 0.1%, which includes 0%.
Response to Arguments
Applicant argues that if a PHOSITA were to modify Antonelli’s composition to meet the low-oil limitations of amended claim 1, which requires an oil-in-water emulsion comprising from 1% to 15% of a dispersed oil phase, the solubility of Antonelli’s active ingredient would fail.
The Examiner does not find Applicant’s argument to be persuasive. Antonelli discloses a composition comprising 3-hydroxybenzoic acid in claim 1. In claim 2, Antonelli discloses wherein the composition comprises 0.1-99% oil. Thus, Antonelli’s active ingredient is suitable with an oil amount of 1% to 15% and Applicant’s argument is unpersuasive.
Applicant argues that if a PHOSITA were to modify Nijakowski’s composition to make it free of microplastic solid particulates as required by amended claim 1, Nijakowski’s essential synthetic copolymer film-formers would be entirely excluded.
The Examiner does not find Applicant’s argument to be persuasive. The rejection states wherein the composition of Antonelli is being modified and not the composition of Nijakowski. Antonelli does not disclose wherein its compositions requires microplastic solid particulates. As such, Applicant’s argument is unpersuasive.
Applicant argues that a PHOSITA seeking to formulate a high-water cosmetic composition with reduced tackiness and friction feel would have no motivation to look to the heavy, synthetic, skin-tightening film technology of Nijakowski.
The Examiner does not find Applicant’s argument to be persuasive. Antonelli discloses wherein the oil-in-water cosmetic composition comprises pigments. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Nijakowski discloses a suitable pigment for an oil-in-water emulsion cosmetic. Therefore, one of ordinary skill in the art would have incorporated the pigment of Nijakowski into the composition of Antonelli. As such, Applicant’s argument is unpersuasive.
Applicant argues that incorporating Nijakowski’s polymer-based skin-tightening materials into Antonelli’s daily exfoliating emulsion would run contrary to the standard formulation goals of a light, non-sticky daily skin care lotion or essence.
The Examiner does not find Applicant’s argument to be persuasive. The rejection states only to incorporate lauroyl lysine into the composition of Antonelli and not the other components of Nijakowski. As such, Applicant’s argument is unpersuasive.
Applicant argues that a PHOSITA would not look to Ueda at all because Ueda’s entire invention is designed around utilizing a high concentration of silica (5 mass% tor more) to absorb and structure an extremely small amount of oil (0.1 to 2.5 mass%), thereby achieving a fresh, non-sticky feel.
The Examiner does not find Applicant’s argument to be persuasive. Antonelli discloses wherein the composition may comprise up to 70% silica as a powder and wherein the amount of oil in the composition may be as low as 0.1%. Therefore, it does not appear that Ueda teaches away from Antonelli teachings such that one would not look to Ueda. As such, Applicant’s argument is unpersuasive.
Applicant argues that Antonelli’s actual O/W emulsion (Example 1) requires significantly more oil that the maximum amount disclosed in Ueda.
The Examiner does not find Applicant’s argument to be persuasive. A prior reference is evaluated for all that it reasonably suggests and is not limited to working examples. As discussed above and in the rejection, Antonelli discloses wherein the amount of oil may be from 0.1-99%. As such, Applicant’s argument is unpersuasive.
Applicant argues that a cosmetic formulator would have no motivation to import a silica from Ueda’s low-oil system (0.1% to 2.5% oil) into Antonelli’s high-oil system (25% oil/solvent). The physical and chemical requirements of the two emulsions are completely incompatible.
The Examiner does not find Applicant’s argument to be persuasive. As discussed above, Antonelli discloses wherein the amount of oil may be from 0.1-99%. As such, Ueda’s low oil system does not teach away from Antonelli ‘s composition since Antonelli’s composition may comprise a low amount of oil. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1, 3, 4, 18-24 and 26 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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