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
Information Disclosure Statement
The information disclosure statement (IDS) filed on 01/12/2026 has been considered here. It is also noted that while the references on the IDS have been acknowledged, however the IDS itself is not complete (i.e., missing the final pages).
Status of Claims
The amendments and arguments filed on 01/12/2026 are acknowledged and have been fully considered. Claims 1-13, 15, 17-22, 24, 26-27 are now pending. Claims 14, 16, 23, 25 are canceled; claims 1-2, 15, 19, and 21 are amended; claims 22, 24, and 26-27 are withdrawn.
Claims 1-13, 15, and 17-21 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
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 15, 17-18, and 20-21 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 15, 17-18, and 20-21, the use of parenthesis causes issues with establishing the metes and bounds of the claims. For example, claim 15 reads “a nonaqueous (oil) phase”, but it is not clear if the parenthetical clause is a further limitation or an example of a nonaqueous phase. In other words, it is not clear whether the nonaqueous phase is limited to just oil or other nonaqueous phases. Claims 17-18 and 20-21 present similar issues. For purposes of search and consideration, the parenthetical clause is understood as an alternative (i.e., as “a nonaqueous or oil phase” and “a dimethicone -based gelee or wax formulation” in claims 17 and 20).
Regarding claim 17, it is not clear what the choices for the carrier component are as some of the selections are separated using semicolons, while others are separated with commas. It is not clear whether the after-sun lotion, a “chemical free” or mineral sunscreen, a sprayable anhydrous formulation, a sprayable milk, and a balm are individual choices or one large category that the carrier must be. As one with ordinary skill in the art would not understand the metes and bounds of the claim, it is indefinite. For purposes of search and consideration, the claim is understood as “wherein the carrier component is selected from a skin moisturizer formulation; an oil-in-water emulsion optionally comprising one or more sunscreen compounds; a dimethicone-based gelee or wax formulation; an after-sun lotion; a “chemical free” or mineral sunscreen; a sprayable anhydrous or oil and water formulation; a sprayable milk; and a balm.”
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive.
Applicant argues that the claims have been amended to fix the issues from the last office action, however claims 15, 17-18, and 20-21 still have the same issues. Further, it is noted that claims 17-18 and 20 have not been amended and claim 21 has been amended to remove only the “e.g.” language.
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 1-4, 7, 8, 15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20170143608 A1 (Saeki, 2017) in view of US PGPUB 20120271251 A1 (Webb).
In regards to claims 1, 4, 15, and 17-19, Saeki teaches a cosmetic skin composition in the form of a lotion, sun screen, cream, among others (see Saeki, paragraph 0082) and also teaches that the composition is in the form of an emulsion, such as oil-in-water or water-in-oil (i.e., a carrier component) (see Saeki, paragraph 0083). The composition is taught to comprise menthol (see Saeki, paragraphs 0109, 0111-0112, 0120, 0133, 0138), rubidium halide salts, specifically rubidium iodide (see Saeki, paragraph 0116), and octyl alcohol (i.e., octanol) (see Saeki, paragraph 0101).
In regard to claims 17 and 19, specifically the limitation of the carrier component “optionally contains one or more sunscreen compounds”, it is pointed out that Saeki teaches the use of sunscreens however is silent on the use of sunscreen compounds in the carrier component, however as this is optional the needs of the limitation have been met.
Saeki is silent on the amount of rubidium iodide used in the composition.
In regards to claims 1-3 and 7, Webb teaches various skin care compositions in the form of emulsions, lotions, and sunscreens (see Webb, paragraph 0163) comprising one or more alkali metal halide salts, such as rubidium iodide (see Webb, paragraph 0008) in an amount of from about 0.5 weight percent to about 30 weight percent (see Webb, paragraph 0013). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 1-3, 4, 7, 15, and 17-19, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of Saeki and Webb as both references are drawn towards skin care using similar components. Further, Saeki teaches the use of rubidium iodide, however is silent on the amount that it is used in. It would be within the purview of one with ordinary art to use the teachings of Webb as guidance for the amount of rubidium iodide used to formulate such composition. Further, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Saeki and rubidium iodide of Webb according to the known method of making a skin care composition (see Saeki, paragraph 0155-0156) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claims 5, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20170143608 A1 (Saeki, 2017) in view of US PGPUB 20120271251 A1 (Webb) as applied to claims 1-4, 7, 8, 15, 17-19 above, and further in view of EP 1283031 A2 (Ohmori, 2003).
The teachings of Saeki and Webb have been described supra in regards to claims 1, 4, 15, and 17.
The teachings of Saeki and Webb are silent on the use of DL-menthol.
In regards to claims 1-5, 7-8, and 11, Ohmori teaches a skin treatment composition used for moisturizing and an improving effect (see Ohmori, paragraph 0002). The composition comprises menthol as a refreshing agent in the amount of 0.001-20% by weight (see Ohmori, paragraphs 0025-0026). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It is taught that the menthol used in the composition is DL-menthol (see Ohmori, paragraph 0045).
In regards to claims 1-5, 7-8, 11, 15, and 17-19, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of Saeki and Webb with Ohmori as both references are drawn towards skin care using similar components. Further, Saeki teaches the use of menthol, however is silent on the amount that it is used in. It would be within the purview of one with ordinary art to use the teachings of Ohmori as guidance for the amount of menthol used to formulate such composition. Further, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Saeki and Webb and menthol of Ohmori according to the known method of making a skin care composition (see Saeki, paragraph 0155-0156) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Further, as DL-menthol is taught as a type of menthol that can be used in the composition by Ohmori, it would be obvious to one with ordinary skill in the art to simply substitute the menthol of Saeki and Webb with the DL-menthol of Ohmori to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
Claims 1-13, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20170143608 A1 (Saeki, 2017) in view of EP 1283031 A2 (Ohmori, 2003) and WO 2018175796 A1 (Stauff, 2018).
The teachings of Saeki have been described supra.
The teachings of Saeki are silent on the use of DL-menthol and n-octanol in any amount.
The teachings of Ohmori have been described supra.
Stauff teaches a composition for improving the appearance of skin (see Stauff, abstract). It is taught that the composition comprises a skin penetration enhancer, such as n-octanol (see Stauff, paragraph 0095).
In regards to claims 1-13, 15, and 17, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of Saeki with Ohmori and Stauff as all of the references are drawn towards skin care using similar components. Further, Saeki teaches the use of octanol and menthol, however is silent on the amount that they are used in. It would be within the purview of one with ordinary art to use the teachings of Stauff and Ohmori as guidance for the amount of n-octanol and menthol, respectively, used to formulate such composition. Further, one with ordinary skill in the art would be motivated to use the n-octanol of Stauff in place of the octanol of Saeki, as n-octanol is a known skin penetration enhancer, which would be useful in a topical composition. Further, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Saeki and the n-octanol of Stauff according to the known method of making a skin care composition (see Saeki, paragraph 0155-0156) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Further, as DL-menthol is taught as a type of menthol that can be used in the composition by Ohmori, it would be obvious to one with ordinary skill in the art to simply substitute the menthol of Saeki and Webb with the DL-menthol of Ohmori to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20170143608 A1 (Saeki, 2017) in view of EP 1283031 A2 (Ohmori, 2003) and WO 2018175796 A1 (Stauff, 2018) as applied to claims 1-13, 15, and 17 above, and further in view of US PGPUB 20020058056 A1 (Yahiaoui, 2002).
The teachings of Saeki, Ohmori, and Stauff have been described supra. All three references teach the use of waxes in the composition however (see Saeki, paragraph 0096; Stauff, paragraph 0108; Ohmori, paragraph 0050).
The teachings of Saeki, Ohmori, and Stauff are silent on the use of a dimethicone-based gelee or wax in the composition.
Yahiaoui teaches the use of a dimethicone wax (see Yahiaoui, paragraphs 0072, and 0084) in a topical composition (see Yahiaoui, paragraph 0070) or lotion for improving skin health (see Yahiaoui, paragraph 0027).
In regards to claim 20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of Saeki, Ohmori, and Stauff with Yahiaoui as all of the references are drawn towards skin care using similar components. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Further, as dimethicone waxes are a type of wax, which are taught to be in the compositions of Saeki, Ohmori, and Stauff, it would be obvious to one with ordinary skill in the art to simply substitute the waxes of Saeki, Ohmori, and Stauff with the dimethicone wax of Yahiaoui to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
Claims 18-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20170143608 A1 (Saeki, 2017) in view of EP 1283031 A2 (Ohmori, 2003) and WO 2018175796 A1 (Stauff, 2018) as applied to claims 1-13, 15, and 17 above, and further in view of US PGPUB 20120271251 A1 (Webb).
The teachings of Saeki, Ohmori, and Stauff have been described supra. Stauff further teaches that the composition is an after-sun lotion (see Stauff, paragraphs 0008 and 0070).
The teachings of Saeki, Ohmori, and Stauff are silent on the amount of rubidium iodide used in the composition.
The teachings of Webb have been described supra.
In regards to claim 1-13, 15, 17-19, and 21, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of Saeki, Ohmori, and Stauff with Webb as all of the references are drawn towards skin care using similar components. Further, Saeki teaches the use of rubidium iodide, however is silent on the amount that it is used in. It would be within the purview of one with ordinary art to use the teachings of Webb as guidance for the amount of rubidium iodide used to formulate such composition. Further, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Saeki, Ohmori, and Stauff with the rubidium iodide of Webb according to the known method of making a skin care composition (see Saeki, paragraph 0155-0156) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
Applicant argues that Saeki and Webb are not drawn to the same purpose and that Saeki does not teach the amount of menthol as instantly claimed. It is pointed out that the language of the claims is “the active component comprising one or more compounds independently selected from…” (emphasis added). As such, as long as one of the amounts and compounds of claim 1 are taught in the prior art, then the conditions of the claim limitations are met. In this case, the concentration of the rubidium salt is met by the combination of Saeki and Webb as discussed in the rejection. The amount of menthol is also met by the combination of Saeki and Webb in further view of Ohmori. Applicant also argues that Saeki teaches rubidium salts as a metal-containing organic compound, not a metal-containing compound however a metal-containing organic compound is a type of metal-containing compound (i.e., specie in a genus) and as such one with ordinary skill in the art would understand that the rubidium salt of Saeki would be understood as a metal-containing compound as well.
Applicant further argues that Saeki is directed towards improving skin color while Webb is drawn to other skin conditions, however it is noted that Saeki does teach that the composition comprises other skin improvement compounds such as moisturizing agents (see Saeki, paragraph 0086) anti-wrinkle agents, anti-aging agents, firming agents, among others (see Saeki, paragraph 0087). . A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023). In the instant case, Saeki is drawn towards a composition for improving skin tone while also incorporating other agents that would benefit the skin, which does overlap with the uses that are taught in Webb, e.g., cleansing and treating skin, effects of ageing, treating blemishes (see Webb, abstract).
Further in regards to the use of tocopherol phosphoric acid ester in Saeki, there is limitation in the claims that restricts the use of such compound in the instant application. The claims are written with an open transitional phrase (i.e., comprising) and as such allows for the use of other compounds in the composition.
Applicant also argues that the use of rubidium salts is different in both references, however it is noted that "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In the instant case, there is motivation to combine the references as discussed in the rejections above and as such the properties of the rubidium salt would be present and as such be expected to behave in the same manner regardless of what the uses were taught as in the prior art. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues in a similar manner against Ohmori, however it is pointed out that Ohmori is drawn to improving and moisturizing rough skin (e.g., see Ohmori, paragraph 0012), which is in line with the purposes of Saeki and Webb. The use of DL-menthol is taught as a refreshing agent in Ohmori, but as DL-menthol is taught as a type of menthol that can be used in the composition by Ohmori, it would be obvious to one with ordinary skill in the art to simply substitute the menthol of Saeki and Webb with the DL-menthol of Ohmori to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In regards to applicant’s argument against the rejection of Saeki in view of Stauff, it is noted that this rejection is withdrawn due to the amends overcoming the art. However, Stauff is still relied upon in other rejections and as such the relevant arguments will be addressed. Applicant argues that the uses of the composition of Stauff are different than those of Saeki, however the rejection is not made over just these two pieces of art and includes Ohmori. As discussed above, Ohmori does teach that the composition is used to treat and moisturize rough skin, which is in like with the uses discussed in Stauff (see Stauff, paragraph 0002 for example). Applicant further argues that the use of the n-octanol is different in Stauff than what is discussed in Saeki, however again it is pointed out that compound is still the same compound, regardless of what it is called (e.g., a penetration enhancer or anti-inflammatory agent). Despite the compounds being called different names, there is motivation to combine the art. It would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition as instantly claimed using the teachings of Saeki with Ohmori and Stauff as all of the references are drawn towards skin care using similar components. Further, Saeki teaches the use of octanol and menthol, however is silent on the amount that they are used in. It would be within the purview of one with ordinary art to use the teachings of Stauff and Ohmori as guidance for the amount of n-octanol and menthol, respectively, used to formulate such composition. Further, one with ordinary skill in the art would be motivated to use the n-octanol of Stauff in place of the octanol of Saeki, as n-octanol is a known skin penetration enhancer, which would be useful in a topical composition. Further, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Saeki and the n-octanol of Stauff according to the known method of making a skin care composition (see Saeki, paragraph 0155-0156) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
As the arguments presented by applicant against Saeki, Webb, Ohmori, and Stauff have been rebutted and the rejections maintained, the rejection over claim 13 in further view of Yahiaoui is also maintained.
Conclusion
No claims 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 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.
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/A.A.A./Examiner, Art Unit 1611
/ISIS A GHALI/Primary Examiner, Art Unit 1611