DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 9, 2025 has been entered.
In that response, claims 1, 11, and 18 were amended, claims 3, 4, and 19 were cancelled, and claims 21-23 were added. Applicant elected without traverse Group I, claims 1-4 and 10-12 in the reply filed on November 18, 2024. Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Claims 1, 2, 10-18, and 20-23 are treated on the merits in this action. 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 1 is objected to because of the following informalities: “and has a viscosity…and a concentration…” should be clarified as pertaining to the composition (not the surfactant), and with proper line break(s). Appropriate correction is required.
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 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 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 1, 2, 10-18, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Banker (US 4330338) in view of Geffroy (US 2013/0280197) and Day Cream SPF30 (Day Cream SPF30, Mintel (June 30, 2017), Database GNPD, Database accession No. 4873355, see 12/15/2025 IDS).
Banker teaches aqueous dispersion of a water insoluble polymer, specifically ethyl cellulose having a degree of substitution between 2.44 and 2.58, e.g., 2,58 (col.4 ll.28-31, Examples 1, 2, 10; see title; abstract; col.6 ll.3-7, col.7 l.43-col.8 l.20; claims 1, 5). “The essentially submicron size of the polymeric particles in the remaining aqueous phase gives rise to a latex having on the order of … preferably 40 percent to 50 percent solids loading with low viscosities and …” (col.6 ll.3-7). Example 10 comprises ten parts ethyl cellulose, 1 part cetyl alcohol, and 0.5 parts sodium lauryl sulfate (SLS), at 10 cps (Example 10, col.). The polymer particle is “0.1 to 10 microns, and up to 15 to 20 microns, even sized particles” (col.3 ll.1-6, col.5 l.64-col.6 l.2; claim 1). The dispersions form a stable emulsion aided by surfactants other than sodium lauryl sulfate (SLS) (col.3 l.56-col.4 l.12) at 0.1 to 10 % by weight (col.3 l.56-col.4 l.12, col. 4 ll.36-40), and cetyl or other C12 or higher alcohols at up to 10% by weight of the emulsion (col.4 ll.13-27, col. 4 ll.40-43, Example 2).
Banker does not specifically teach the surfactants or sunscreens and other cosmetic compositions recited in claims 1, 10-12, 18, and 20-23.
Geffroy teaches skincare, e.g., sunscreen, compositions comprising water, ethylcellulose having a degree of substitution with ethoxy groups between 2.5 and 2.6 in the form of particles, a hydrocarbon-based non-volatile oil that is preferably a C12-C16 alcohol, and a stabilizer (title; abstract; claims 1, 7; paras. 0001-06. 0015-23, 0051-78, 0759). Geffroy teaches anionic surfactants including glutamates (paras. 0407).
Day Cream SPF30 is an anti-ageing, skin smoothing day cream with sun protection, and free of SLS (p.1 Product Description). Day Cream SPF30 comprises sodium stearoyl glutamate as well as ethyl cellulose, among other ingredients (p.4 Ingredients (Standard form)).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Banker, Geffroy, and Day Cream SPF30 and devise sunscreen or cosmetics comprising Banker’s ethyl cellulose dispersion and sodium stearoyl glutamate as recited in the instant claims. The skilled person would have been motivated to do so because the references are drawn to aqueous cosmetic compositions comprising ethyl cellulose, surfactants, and non-volatile alcohols, Banker expressly teaches that various non-SLS specific surfactants are suitable for its dispersion (col.3 l.56-col.4 l.12), Geffroy teaches that the dispersion can form personal care compositions that are stable over time and improve the gloss and/or wear property of cosmetic products (para.0036), and Day Cream SPF30 is an example aqueous formulation comprising ethyl cellulose and sodium stearoyl glutamate, and free of SLS.
Regarding claims 11, 12, 18, 20, and 21, Banker teaches titanium dioxide (Example 9), and Geffroy teaches the same (para.0735), as well as adding other sunscreen agents (para. 0759). Regarding “…having a reduced amount of SPF agent…and …have equivalent SPF ratings” in claims 12 and 20, the following is noted.
Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive.
MPEP §2103(I)(C) (emphases added); see also MPEP § 2111.04. Here the above claim phrases suggest but do not recite the structural features of the composition that attain the sunscreen characteristics recited. Such structural features would include the actual components of the sunscreen agent and other attendant components, and their relative concentrations, among others. Thus they do not limit the scope of the claim and are not afforded patentable weight.
Furthermore a person skilled in the art of sunscreen compositions would recognize retention of SPF rating after submersion in water and achieving an SPF rating using less sunscreen active is desirable. No express teaching is required as the skilled artisan is not an automaton. Merely reciting that which is desirable, e.g., “a sunscreen lotion comprising the composition of claim 1 that retains its SPF rating for 100 hours when submerged in water…”, without also disclosing and reciting in the claim that which achieves the desirable feature, is not afforded patentable weight.
Regarding claim 14, Banker teaches “…preferably 40 percent to 50 percent solids loading” of ethyl cellulose. “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments”, and “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. MPEP §2123 (citations omitted). Therefore the skilled person could devise Banker’s latex that comprises about 35 wt.% solids, which is close to the preferred 40 wt.%.
Regarding claim 22, Geffroy does not appear to expressly teach a “smooth foundation”. However its composition is “for making up and/or caring for the skin” (para.0761; see paras.0003, 0013, 0036, claim 17, 18, 21), in liquid form (para.0763), “homogeneous and gives access to a deposit that has good cosmetic properties, in particular in terms of gloss, comfort (thin, light deposit) and absence of tackiness” (para.0766; see para.0001). Official notice is taken that liquid foundations are well known in prior art for making up the skin, in liquid form. Therefore the skilled person would have been motivated based on Geffroy to formulate a homogenous liquid foundation with good gloss, comfortably thin and light deposit, without tackiness, and comprising sunscreen and pigments, moisturizers, anti-ageing agents and so on that Geffroy teaches (see, e.g., paras.0697, 0703, 0733, 0759).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 10-18, and 20-23 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.
Applicant argues regarding claims 12 and 20 that “SPF agent” is known to those skilled in the art and the Office has not therefore established prima facie obviousness. (Remarks, 9, October 9, 2025.)
In response it is noted that the issue is not that SPF agents are known in the art; rather it is whether the claims recite the features, i.e., the specific SPF agents, their concentrations, and the concentration of the aqueous dispersion, the specific alkylcellulose polymer, etc., which attain an equivalent SPF rating despite the reduced amount of the SPF agent.
CONCLUSION
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614
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