DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after February 13, 2026, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 13, 2026 has been entered.
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 04/24/2022 in the matter of Application N° 18/250,350. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after April 24, 2022, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1-9 and 12-16 represent all claims currently under consideration.
Information Disclosure Statement
Three Information Disclosure Statements, filed on 11/27/2024, 02/15/2024, and 04/24/2023 are acknowledged and have been considered.
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 1-9 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Niimi et al., (WO2020110716), in view of Bo-Sik Kim et al. The Improvement of Skin Whitening of Phenylethyl Resorcinol by Nanostructured Lipid Carriers Bo-Sik Kim 1, Young-Guk Na 1, Jae-Hwan Choi 2, Inhye Kim 3, Eunji Lee 3, Sung-Yeon Kim 4, Jae-Young Lee 1 and Cheong-Weon Cho 1. Received: 1 August 2017; Accepted: 23 August 2017; Published: 28 August 2017.
Regarding claim 1, Niimi et al. teach a composition comprising at least one oil, at least one first polyglyceryl fatty acid ester having an HLB of 13 or more and at least one second polyglyceryl fatty acid ester having an HLB value of 10 or less and water. These teachings meet the limitations of claim 2 and most of the limitations of claim 1.
Niimi et al. teach the amounts of the first polyglycerol fatty acid ester to be 0.01% to 15% (See page 10, lines 20-23). Niimi et al. teach wherein the amounts of the second polyglycerol fatty acid ester to be 0.01% to 10% (See page 11, lines 41-44).
Niimi et al do not teach the presence of a skin care active ingredient.
Bo-Sik et al. disclose wherein Phenylethyl resorcinol (4-(1-Phenylethyl)1,3-benzenediol) (PR). Is a skin-lightening compound recognized for its ability to inhibit tyrosinase activity. It has been demonstrated to function as an effective whitening and brightening agent in skincare formulations, hair-lightening compositions, and cosmetic products (See Abstract and Introduction).
It would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to add the skin care active ingredient of Bo-Sik et al. to the composition of Niimi et al. because Niimi et al. teach that their composition is useful for treating skin and the Phenylethyl resorcinol of Bo-Sik et al. would clearly be expected to enhance treatment of the skin.
Regarding claim 3, Niimi et al. teach 2 to 4 glycerol units can make up the first polyglyceryl fatty acid ester (See pg. 2, lines 5 and 6, and claim 5).
Regarding claim 4, Niimi et al. teach the first polyglyceryl fatty acid ester’s fatty acid moiety can have 12 or less carbon atoms (See pg. 2, lines 8-9 and claim 6).
Regarding claim 5, Niimi et al. teach the amounts of the first polyglycerol fatty acid ester to be 0.01% to 15% (See page 10, lines 20-23).
Regarding claim 6, Niimi et al. teach the second polyglyceryl fatty acid ester can contain 2 to 4 glycerol units (See pg. 2, lines 15-16, and claim 8).
Regarding claim 7, Niimi et al. teach the second polyglyceryl fatty acid ester’s fatty acid moiety can have 14 or more carbon atoms (See pg. 2, lines 18-19, and claim 9).
Regarding claim 8, Niimi et al. teach wherein the amounts of the second polyglycerol fatty acid ester to be 0.01% to 10% (See page 11, lines 41-44).
Regarding claim 9, Niimi et al. teach the weight ratio of (the total amounts of the first polyglyceryl fatty acid ester(s) and the second polyglyceryl fatty acid ester(s))/the amount of the oil(s) in the composition according to the present invention may be 1. (See pg. 2, lines 25-29).
Regarding claim 12, Niimi et al. teach the presence of oil, see the abstract.
Regarding claim 13, Niimi et al. teach the amount of the oil(s) in the composition may range from 0.01 % to 20% by weight. (See pg. 2, lines 1-3).
Regarding claim 14, Niimi et al. teach that their composition is in the form of a nano-or micro-emulsion, (see page 15, line 1).
Regarding claim 15, Niimi et al. teach the present invention relates to a cosmetic process for treating a keratin substance (See page 16, lines 15-29).
Regarding claim 16, applicant argues that paragraph 0047 of Niimi discloses oil as an optional component and therefore inherently discloses a composition that may or may not contain oil. Niimi et al. affirmatively teaches compositions comprising at least one oil as a structural component of the emulsion system. Where a reference consistently describes oil as part of the essential composition, the mere characterization of oil as “optional” in a general disclosure does not constitute a teaching or suggestion of a specifically oil-free embodiment unless such embodiment is expressly described or exemplified. Furthermore, Niimi’s et al. emulsion system relies on the presence of oil as part of the dispersed phase. Removal of oil would materially alter the structural nature of the composition. No explicit oil-free embodiment is described or enabled in Niimi et al. An optional disclosure does not automatically render every conceivable absence of that component expressly taught or inherently disclosed. See MPEP 2112 (Inherency requires inevitability, not possibility). Accordingly. Niimi et al. does not teach or suggest an oil-free composition. However, the elimination of oil from an emulsion type cosmetic composition represents a routine formulation modification that would have been within the ordinary skill of a cosmetic formulator, particularly in view of the well-known development of oil-free cosmetic compositions for consumers seeking lighter skin feel or reduced comedogenicity.
Response to Arguments
Applicant’s arguments filed February 13, 2026 have been fully considered but they are not persuasive.
Niimi et al. discloses a cosmetic composition comprising at least one oil, at least one first polyglyceryl fatty acid ester having an HLB of 13 or more, at least one second polyglyceryl fatty acid ester having an HLB of 10 or less and water. Niimi et al. further teaches the first polyglyceryl fatty acid ester in an amount of 0.01% to 15% by weight and the second polyglyceryl fatty acid ester in an amount of 0.01% to 10% by weight, which correspond exactly to the presently claimed ranges. Thus, Niimi et al. teaches every limitation of claim 1 except the specifically recited skin care active ingredient.
Bo-Sik et al. disclose wherein Phenylethyl resorcinol (4-(1-Phenylethyl)1,3-benzenediol) (PR). Is a skin-lightening compound recognized for its ability to inhibit tyrosinase activity. It has been demonstrated to function as an effective whitening and brightening agent in skincare formulations, hair-lightening compositions, and cosmetic products. It is well established that the substitution or addition of one known skin care active for another known skin care active, each used for treating skin conditions, constitutes the predictable use of prior art elements according to their established functions. The skin care actives recited in claim 1 (e.g., Phenylethyl resorcinol (4-(1-Phenylethyl)1,3-benzenediol) (PR).) were well known in the cosmetic arts for improving skin tone, and texture, prior to the effective filing date.
Niimi et al. teaches that its composition is suitable for skin treatment applications. Esteves teaches incorporating known skin care actives into polyglyceryl ester-containing cosmetic systems for improving skin condition. Accordingly, one of ordinary skill in the art would have been motivated to incorporate a known skin care active (such as those recited in claim 1) into the Niimi et al. composition in order to enhance or modify the skin treatment benefits, with a reasonable expectation of success. The modification merely involves the addition of a known active ingredient to a known cosmetic base formulation for its intended purpose. This represents the predictable use of prior art elements and does not require undue experimentation.
No claim is allowed.
Conclusion
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615