DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
The affidavit-traversing rejections by Declaration under 37 C.F.R. § 1.132, Specification amendment, Claims amendment and Arguments/Remarks filed 10 April 2026, in response to the Office Correspondence dated 17 December 2025, are acknowledged.
The listing of Claims filed 10 April 2026, have been examined. Claims 1, and 3-13 are pending. Claims 1, 9, 10, 12 and 13 are amended, claim 2 is canceled, and no new claims have been added.
Information Disclosure Statement
The Information Disclosure Statement (IDS), filed 25 February 2026, is acknowledged and has been considered.
Response to Amendment
The amendments filed have been entered. The applicant has amended the amended mathematical expression in claim 1 to recite “F = (d²/c), where F = cumulative fiber length indicator (µm²/mass%), d = average fiber diameter (µm), and c = fiber content weight percent (mass%)”. This amendment addresses the previously identified ambiguity concerning the structural form of the equation and clarifies that the fiber content is relative to the total weight of the film-forming composition. Accordingly, the prior 35 U.S.C. § 112(b) rejection of claims 1, 9, and 10 based on ambiguity of mathematical expression is withdrawn.
The applicant has amended claim 12 to recite drying and amended claim 13 to specify a dried film. Those amendments overcome the prior indefiniteness concern that mere application did not necessarily produce a distinct film. Accordingly, the prior 35 U.S.C. § 112(b) rejection of claims 12 and 13 on that ground is withdrawn. The examiner still would like to note however, while the recitation of “drying the film-forming composition applied to the skin surface to produce the film” adds a procedural step for a “method for manufacturing a film”, the only steps are applying and drying. The claim does not clarify what distinguishes the claimed “film” from the mere residue of an evaporated composition, as the claim lacks any limitation as to how drying is achieved (e.g., ambient drying, forced air, heat, reduced pressure) or the degree of drying required to constitute a “film”. Likewise, the product-by-process limitation of claim 13 does not define the film by structural characteristics (e.g., thickness, porosity, tensile strength, morphology) and “has been dried” does not confer any structural distinction from a film that was never “dried” but simply formed by solvent evaporation.
The rejection of claims 1 and 3-13 under 35 U.S.C. § 112(b) for indefiniteness of “nonvolatile oil containing an ultraviolet absorber” is maintained. The record continues to support two materially different interpretations, wherein the ultraviolet absorber is dissolved in a separate nonvolatile oil vehicle, or the ultraviolet absorber itself constitutes the nonvolatile oil. These alternatives define different compositional scopes and materially affect claim boundaries, as detailed further in the Response to Arguments below.
The applicant argues principally that Sano does not teach or suggest the claimed F range, Sano does not teach the claimed UV absorber/nonvolatile oil mass ratio, and the newly submitted declaration allegedly demonstrates unexpected results. These arguments have been considered but are not persuasive, as outlined below in the Response to Arguments. Thus, the rejection of claims 1 and 3-13 under 35 U.S.C. § 103 over Sano, and the rejection of claims 4 and under 35 U.S.C. § 103 over Sano in view of Sasaoka are maintained.
In addition, based on the new amendments to the claims, claims 9 and 13 are newly objected to, as set forth below.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 17 December 2025, since the art which was previously cited continues to read on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 1, and 3-13 are 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, regards as the invention.
The specification paragraph [0009] indicates that the nonvolatile oil may be only the oil-soluble ultraviolet absorber in a liquid state at 25°C and 1 atm, thus specifying that the ultraviolet absorber feature may be the nonvolatile oil feature (i.e., one chemical entity in the composition). Thus, clarification of the wording is required as to what particular meaning is intended (e.g., “A film-forming composition comprising components (a) and (b): (a) an ultraviolet absorbing oil mixture, wherein the ultraviolet absorbing oil mixture contains an oil-soluble ultraviolet absorber dissolved in a nonvolatile liquid oil; and (b) a fiber…”).
The recitation of "a mass ratio of the ultraviolet absorber to a total of the nonvolatile oil is 0.3 or more and 1 or less" is ambiguous because the phrase "a total of the nonvolatile oil" could be interpreted as either the total amount of all nonvolatile oil components (including the ultraviolet absorber if it is itself a nonvolatile oil) or the total amount of nonvolatile oil excluding the ultraviolet absorber. The specification at ¶[0028] indicates the ratio is (a1)/(a), where (a1) is the ultraviolet absorber and (a) is the total nonvolatile oil (including the absorber and any additional oil). However, the claim language "to a total of the nonvolatile oil" does not clearly convey which interpretation controls. This lack of clarity renders the metes and bounds of the claim uncertain.
Dependent claims 3-13 are included in this rejection because they do not cure the defect noted above.
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.
Claims 1-13 are rejected under 35 U.S.C. § 103 as being unpatentable over Sano et al. (JP2020105119A; published 09 July 2020; the English translated version, EP3903886A has been published after the priority date of the present application and is only cited as a faithful translation of the prior art JP2020105119A, hereinafter referred to as “Sano”).
Sano teaches a skin cosmetic comprising a thickening stabilizer and cellulose nanofibers having an average fiber diameter of 10 to 1000 nm (0.01-1 µm; claim 1), a preferably 0.1-5 mass % (¶[0057]) or 0.01-3 mass% (¶[0059] and claim 4) and an average fiber length of 0.3-200 µm (¶[0038]), manufacturing a non-sticky, flexible, film on skin surface after application of the film-forming composition (¶[0007], ¶[0019] and ¶[0099]), that may be dispersed in an oil component ([¶0057]) preferably with a 1-50 mass % (¶[0064]), which may include a nonvolatile oil (i.e., all listed oils in ¶[0063] with the explicit exception of the cyclomethicones decamethylcyclopentasiloxane and octamethylcyclotetrasiloxane) and may comprise oil-soluble ultraviolet absorbers (¶[0062], ¶[0073] and ¶[0075]), preferably with a content mass 1-40 mass % (¶[0078]), wherein the ultraviolet protector is used to protect skin or the cosmetics per se against ultraviolet rays [expected technical effect sunscreen] (¶[0073]).
The average fiber diameter taught by Sano (i.e., 0.01-1 µm; claim 1) overlaps with the instant claim range of 0.1-7 μm and is taught by Sano to be a factor that may be adjusted by selection, pretreatment, or defibration (¶[0035]). In the discussion section, Sano notes that using an average fiber diameter that is too small results in skin tightness and poor film flexibility of the composition (¶[0107]) as presented by the use of CNF-C in Comparative Example 4 which was not an issue using the in higher diameter fibers in Example 1 of CNF-A, in Example 2 of CNF-B, and in Comparative Example 6 of MFC Table 4 (page 15). Thus, Sano provides motivation to increase the average fiber diameter range claimed as 0.01-1 µm (claim 1) to adjust to that of a higher average fiber diameter as in the instant claimed range of 0.1-7 μm.
The fiber mass % in the film-forming composition of Sano (i.e., 0.01-5 mass %; ¶[0057], ¶[0059] and claim 4) overlaps with the instant claimed mass % range of 0.5-10. Sano teaches that the fiber mass % can be adjusted by adding a solvent (¶[0057]), wherein a content too low can cause poor skin resilience and film-forming function and a content too high can result in poor spreadability of the composition and low film flexibility (¶[0059]). Thus, Sano provides motivation to increase the fiber mass % by adjusting it from the 0.01-5 mass % taught (¶[0057], ¶[0059] and claim 4) to that of a higher fiber mass % such as the 0.5-10 mass % of the instant claimed range, given that Examples 1 and 2 using the CNF-A and CNF-B, respectively, in Table 3 (page 13) had room for further improvement of skin resilience.
Sano does not explicitly disclose numerically, F=(d2/c), where: F= cumulative fiber length indicator (μm2/mass %), d=average fiber diameter (μm), and c= fiber content weight percent (mass %), wherein the exact numerical F value ranges from 0.005-7 μm2/mass %, however the claimed mathematical relationship (F) is a readily calculated mathematical consequence resulting from selecting the fiber diameter and mass % content ranges taught by Sano. The average fiber diameter taught by Sano (i.e., 0.01-1 µm; claim 1) and the fiber 0.01-5 mass % (¶[0057], ¶[0059] and claim 4) provides an F parameter that can range from 0.00002-100 μm2/mass %. The instant claim 1 selected range is a narrower range encompassed within the range that would result from the diameter and fiber content ranges taught by Sano.
In the example section Table 2 (page 14), Sano teaches using 0.5 mass % CNF-A fibers (used in inventive Example 1) with an average fiber width of 0.0508 μm calculated to yield an F value of 0.00516 μm2/mass %, CNF-B fibers (used in inventive Example 2) with an average fiber width of 0.2857 μm calculated to yield an F value of 0.163 μm2/mass %, MFC fibers (used in Comparative Example 6) with an average fiber width of 16.2 μm calculated to yield an F value of 524.88 μm2/mass %, and CNF-C fibers (used in Comparative Example 4) with an average fiber width of 0.003-0.01 μm calculated to yield an F value of 0.000018-0.0002 μm2/mass %. Wherein, for characterizing cellulose fibers, one skilled in the art would recognize the terms average cellulose fiber width and diameter are often used interchangeably in the art for ease since the diameter reflects the average width along the length of the fiber (although the cellulose fibers are not perfectly cylindrical/are irregular).
Thus, the calculated F parameter from the inventive Examples 1 and 2 are encompassed within the instant claim 1 range of 0.005-7 μm2/mass % and the calculated F value for inventive Example 2 using the CNF-B fibers (i.e., 0.163 μm2/mass %) is encompassed within the range of instant claims 9 and 10. Further, Sano expressly teaches adjustment of the average fiber diameter/width, and mass % to optimize the composition properties to achieve desired film properties as discussed above, motivating such selection of the specific instant claimed range of 0.005-7 μm2/mass %. More so, as the inventive examples (Example 1 and 2) falling within the instant claimed F value range provided the best overall balance performance results and (see page 15, Tables 3 and 4), whereas F values below 0.0002 μm2/mass % (CNF-C fibers; Comparative Example 4) and above 524.88 μm2/mass % (MFC fibers; Comparative Example 6) resulted in performance benefit tradeoffs (see page 15, Table 3 and 4). Thus, it would be a matter of routine experimental optimization from overlapping known fiber diameters and loadings taught by Sano, when applying the optimization principles also taught by Sano, to arrive at the narrower F value of the instant claimed ranges.
Sano teaches that the average fiber length can be adjusted by selection, pretreatment, or defibration (¶[0040]). The average fiber length range of 0.3-200 µm taught by Santo (¶[0038]) strongly overlaps with the instant claimed average fiber length of 20-300 μm. Santo teaches that lower average fiber lengths may result in poor film function and skin resilience (¶[0038]) and average fiber lengths above 200 µm may result in fiber entanglement and aggregation issues leading to a rough texture of the composition and the formation of eraser-like crumbs (¶[0039]).
The example embodiments in the instant specification Table 2, 3, and 4 all use an average fiber length of 50 μm (instant specification ¶[0145]), or 3 μm in Example 5A and 5 μm in Example 6A (instant specification Table 5, ¶[0160]). In the absence of any examples in the instant specification testing the higher limit of the instant claimed range of 200-300 μm with unexpected results, any relationship demonstrating the criticality of this higher limit, or evidence of a linkage of the higher limit of the instant claimed range to a particular effect, and given the instant specification notes 150 μm or less is particularly preferably to mitigate aggregation and a range of 40-150 μm is particularly preferably for a smooth even, uniform film formation, adhesion and durability (instant specification ¶[0060]), arriving at the instant claimed range is a matter of routine experimental optimization from that of the range taught by Sano.
While Sano does not explicitly specify the fiber of the component having an aspect ratio (average fiber length/average fiber diameter) of 15 or more, the average fiber length range of 0.3-200 µm taught by Santo (¶[0038]) and the average fiber diameter taught by Sano (i.e., 0.01-1 µm; claim 1) yield an aspect ratio range from 0.3-20,000, which encompasses the instant claimed range of 15 or more. Furthermore, Sano teaches both average fiber length and average fiber diameter may be adjusted by fiber selection, pretreatment, or defibration (¶[0035] and ¶[0040]). Selection within the calculated aspect ratio range taught by Sano of 15-20,000 would be a matter of routine experimental optimization.
Sano teaches a nonvolatile oil composition component ([¶0057] and ¶[0063]) containing an ultraviolet absorber (¶[0062], ¶[0073] and ¶[0075]) preferably with a 1-50 mass %, wherein adjusting the oil component below 1 mass% may result in poor flexibility of the composition film and a content of the oil component above 50 mass % may have a stickier texture and lower skin resilience (¶[0064]). Sano specifically teaches in the examples of Table 1, the use of the nonvolatile oils 3% diisostearyl malate, 20% ethylhexyl palmitate, and 2% dimethicone/vinyldimethicone crosspolymer dimethicone KSG-16 (Shin-etsu Chemical Co., Ltd.) totaling 25% total nonvolatile oil content and 8% ultraviolet absorber hydrogen dimethicone-treated fine particle titanium oxide (¶[0101], page 12) for a total of 33 mass %, which is encompassed in the instant claimed range of 0.5-90 mass % for component (a).
In the absence of any examples in the instant specification testing the higher limit of the instant claimed range of 50-90 mass % or the lower limit of 0.5-1 mass % showing unexpected results, any relationship demonstrating the criticality of this higher or lower limit, or evidence of a linkage of the higher or lower limit of the instant claimed range to a particular effect, and given the instant specification teaches an oil component content of 10-40 mass % is particularly preferably for film uniformity and desirable use impression (no oily and sticky feelings) (instant specification ¶[0024]), arriving at the instant claimed range is a matter of routine experimental optimization from that of the range taught by Sano.
The mass ratio of the ultraviolet absorber to a total of the nonvolatile oil calculated from the examples in Table 1 of Santo, totaling 25% total nonvolatile oil content and 8% ultraviolet absorber (¶[0101], page 12; encompassing the ultraviolet absorber range limitations of instant claims 8 and 9) is 0.32 for all examples, which is encompassed within the instant claim 2 range of 0.1-1. Santo also teaches adjustable nonvolatile oil composition components ([¶0057] and ¶[0063]), preferably with a 1-50 mass % (¶[0064]) and ultraviolet absorbers, preferably with a content mass 1-40 mass % (¶[0078]), thus resulting a calculated mass ratio of the ultraviolet absorber to a total of the nonvolatile oil ranging from 0.02-1, which encompasses the instant claim 2 and 10 range.
Sano teaches a particularly preferably 5-25 mass % of ultraviolet protector, and that lower ultraviolet protector levels can be insufficient providing the protective effect from ultraviolet and a content above 40 mass % may impair the spreadability of the composition (¶[0078]). One of skill in the art specifically seeking to formulate a composition with the objective of providing a primary ultraviolet ray sunscreen film protection attribute would be motivated to choose a higher ultraviolet absorber mass % from the teachings of Sano to ensure the ultraviolet absorber concentration is high enough to provide adequate desired protection, along with optimization of the nonvolatile oil content to balance the higher ultraviolet absorber concentration for optimal film properties while maintain desirable spreadability and formulation stability. Thus, adjusting the mass ratio of the ultraviolet absorber to total nonvolatile oil from the teachings of Sano to that of the instant claim 2 and 10 ranges is a matter of routine experimental optimization for a skilled formulator in the art that would yield predictable results with a reasonable expectation of success.
Sano discloses fibers treated with film-forming polymer emulsion (aqueous dispersion of a water-insoluble polymer) selected from the water-insoluble polymer (meth)acrylic resins alkyl acrylate copolymer emulsion and alkyl methacrylate copolymer emulsion (¶[0083]). In addition, powders may be used in the embodiment of the invention including the classic (meth)acrylic resin polymethylmethacrylate (PMMA; ¶[0067]). Sano also teaches that the water retention of the fibers may be adjusted by pretreatment or defibration of the raw fiber material pulp (¶[0046]) and that aqueous dispersion slurry of cellulose nanofibers may be used (¶[0037]). Further, cellulose fibers CNF-C, Rheocrysta™ (DKS Co., Ltd.; a cellulose nanofibril suspension treated to become compatible with hydrophobic materials, wherein the CNFs are integrated within a water-insoluble polymer matrix) was used as a raw material for testing in the specification (¶[0100]). Thus, embodiments of the invention integrating (meth)acrylic resins alkyl acrylate copolymer, alkyl methacrylate copolymer or polymethylmethacrylate into the cellulose fibers are taught by Sano.
In summary, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to adjust fiber diameter, fiber mass % concentration, fiber length as well as the mass % concentration of the ultraviolet absorber and nonvolatile oil components of the fiber-reinforced film-forming systems containing ultraviolet absorbers in nonvolatile oils taught by Sano, as Sano expressly teaches adjusting these parameters to achieve desired film properties (e.g., lack of sticky texture, skin resilience, smoothness of finish, lack of skin tightness, film flexibility and skin texture), motivating such selection of parameter optimization. One of skill in the art would have a reasonable expectation of success in making these routine optimization changes to arrive at the predictable effective concentration or ratio ranges of the instant claimed invention, given these parameters are directly or indirectly taught as result-effective variables by Sano.
Claims 1-5 are rejected under 35 U.S.C. § 103 as being unpatentable over Sano et al. (JP2020105119A; published 09 July 2020; the English translated version, EP3903886A has been published after the priority date of the present application and is only cited as a faithful translation of the prior art JP2020105119A, hereinafter referred to as “Sano”), in view of Sasaoka et al. (JP2020090487A; published 11 June 2020, hereinafter referred to as “Sasaoka”).
Sano renders the limitations of instant claims 1-3 obvious, as described above, from which instant claims 4 and 5 depend. Said claims 4 and 5 are also considered obvious under 35 USC § 103(a) over Sano for the reasons set forth above, however, alternatively, by way of differing interpretation of Sano, the specific limitations of instant claims 4 and 5, wherein the fibers more explicitly comprise water-insoluble (meth)acrylic resin polymer, is taught by Sano in view of Sasaoka.
Sasaoka teaches a cosmetic composition for forming fibers of a water-insoluble polymer (claim 1), as a polyester or an acrylic resin such as PMAA resin (¶[0028]-[0029]), with an average fiber diameter of 50 to 10,000 nm (0.05-10 µm; claim 1), and length of 10-100 μm or more (¶[0035]) having skin film-forming capability (claim 9) dispersed in a liquid preparation containing a liquid oil and polyol between and on the surface of the fibers (claim 1).
On this basis, it would have been prima facie obvious to one of ordinary skill in the art prior, to the instant effective filing date, to readily conceive substituting the use of a polyester or an PMAA resin fiber as taught by Sasaoka for the cellulose fiber material disclosed in the invention of Sano. One would have a reasonable expectation of success in making the change, since both fiber types were known for the same purpose of use in film forming of cosmetic compositions. One would be motivated to tailor the fiber composite formulation by modifying or replacing cellulose fibers, which are hydrophilic in an unmodified state, with PMAA resin fibers to achieve the expected technical effect of increased interfacial compatibility with hydrophobic components resulting in better ingredient dispersion and increased product stability via the prevention of phase separation, as well as enhanced film formation and durability via the more tightly interconnected fiber network compared to a simple unmodified cellulose fiber. Substituting cellulose fibers taught by Sano with PMAA resin modified cellulose fibers or replacing them with PMAA resin fibers, taught by the invention of Sasaoka, represents predictable optimization to enhance film forming strength and performance characteristics and product properties, such as better compatibility and stability with hydrophobic composition components.
New Claim Objections
The following new objections are made from the previous Office Correspondence dated 17 December 2025, as the applicant's amendment necessitated the new grounds of objections presented below based on the amendments to the claims.
Claims 9 and 13 are objected to because of the following informalities:
Claim 9 is objected to for reciting "wherein a content of the ultraviolet absorber" which should be "wherein the content of the ultraviolet absorber”. There is a lack of clarity regarding which "content" is being referenced (e.g., absolute content or content relative to component (a)).
Claim 13 is objected for reciting "A film comprising the film-forming composition according to claim 1 which has been dried", which can introduce ambiguity as to whether "which" refers to the film or the composition and should recite "A film comprising the film-forming composition according to claim 1, wherein the film has been dried" instead.
Response to Arguments
The applicant’s Declaration under 37 C.F.R. § 1.132 and Arguments/Remarks of the reply, filed 10 April 2026, have been fully considered.
Regarding the “a nonvolatile oil containing an ultraviolet absorber” 35 U.S.C. § 112(b) rejection, the applicant argues that one of ordinary skill would understand this phrase to mean a mixture in which an ultraviolet absorber is dissolved in a nonvolatile oil. The argument is not persuasive. The claim language still reads “a nonvolatile oil containing an ultraviolet absorber”, while the specification indicates that the nonvolatile oil may itself be an oil-soluble ultraviolet absorber in liquid form. Thus, the record continues to support two materially different interpretations, wherein the ultraviolet absorber is dissolved in a separate nonvolatile oil vehicle, or the ultraviolet absorber itself constitutes the nonvolatile oil. These alternatives define different compositional scopes and materially affect claim boundaries. Under Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), the claims must inform, with reasonable certainty, those skilled in the art of the scope of the invention. The presently amended claims do not do so. Accordingly, claims 1 and 3-13 remain rejected under 35 U.S.C. § 112(b) as indefinite on this ground.
Regarding the rejections under 35 U.S.C. § 103 as being unpatentable over the prior art, the applicant’s recalculation of Sano is not persuasive. The applicant argues that Sano’s Example 1 (F ≈ 0.0001) and Example 2 (F ≈ 0.0041) fall below the claimed range of 0.005-7 µm²/mass%, and that Sano provides no teaching or suggestion of the F value. The applicant calculates the F values of Sano Examples 1 and 2 using 20 wt% fiber content and concludes that the examples fall below the claimed range. That calculation is not consistent with the disclosure relied upon in the prior Office Correspondence.
Sano expressly teaches that average fiber diameter (0.01-1 µm) and fiber content (0.01-5 mass%) are result-effective variables that can be adjusted to optimize film properties. As noted in the prior Office Correspondence, Sano’s Table 2 comparative examples show that F values below 0.0002 (CNF-C) and above 524.88 (MFC) result in performance tradeoffs, whereas Example 2 (F ≈ 0.163, well within Applicant’s claimed range) provides the best overall balance. In Table 2 of Sano uses 0.5 mass% CNF-A and 0.5 mass% CNF-B in the finished cosmetic composition, yielding CNF-A (0.0508 µm, 0.5 mass%) yielding F ≈ 0.00516 µm²/mass%; CNF-B (0.2857 µm, 0.5 mass%) yielding F ≈ 0.163 µm²/mass%. Both values fall within claim 1, and the latter falls within claims 9 and 10. Thus, the claimed F range of 0.005-7 is a narrow, optimally performing subset of the broader range that would have been obvious to one of skill seeking to optimize Sano’s own teaching. Routine optimization of known variables does not confer patentability (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). The applicant appears to derive the 20 wt% figure from raw material dispersion or stock fiber slurry concentration rather than fiber content in the final film-forming composition, which is the quantity expressly recited in amended claim 1. Accordingly, the applicant’s calculation does not rebut the prior factual findings.
The claimed F parameter remains an inherent mathematical consequence of known result-effective variables. Sano expressly teaches adjustment of fiber diameter, fiber content, and fiber length, to optimize film properties including flexibility, resilience, texture, and film quality. The claimed parameter F=d2/c is not a separately manipulated structural feature, but merely a mathematical expression derived directly from two known compositional variables already taught as adjustable in the prior art. Where the prior art recognizes the relevant variables as affecting performance, discovering an optimum or workable subrange ordinarily constitutes routine optimization (see In re Aller, 220 F.2d 454 (CCPA 1955) and In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)). The applicant’s assertion that Sano does not expressly discuss “F” as a named parameter is not controlling. The law does not require prior art to recognize the identical mathematical label where the underlying variables and their optimization are already taught.
The applicant argues that Sano does not teach a UV absorber to total nonvolatile oil mass ratio of 0.3-1. The argument is not persuasive. As set forth in the prior Office Correspondence, Sano’s Example 1 and 2 compositions contain 8 wt% UV absorber (titanium oxide) and 25 wt% total nonvolatile oil, yielding a ratio of 8/25, which equals 0.32, which falls within the amended claim 1 range of 0.3-1. Thus, the amended limitation is not newly distinguishing over the reference. Further, Sano also teaches that UV absorber content can be 1-40 mass% and oil content 1-50 mass%, providing a calculated ratio range of 0.02-1 that fully encompasses the applicant’s claimed range. Sano expressly teaches adjustable ranges for both oil and UV absorber components and teaches optimization of film properties and UV protective function. Selection of a value within overlapping disclosed ranges would have been obvious absent persuasive evidence of criticality. One of skill would be motivated to adjust these parameters to achieve adequate UV protection while maintaining spreadability and film properties, as expressly taught by Sano (¶[0078]). No unexpected result is demonstrated.
Regarding the applicant’s Declaration under 37 C.F.R. § 1.132 and the accompanying data (Examples A, B and Comparative Examples A, B) are given consideration but are deemed insufficient to overcome the prima facie obviousness rejection. First, the data table provided on page 10 of the applicant’s Arguments/Remarks made in an amendment, filed 10 April 2026, is illegible and as such, was not considered further. Without sufficiently accessible underlying factual data, the Office cannot reliably determine exact compositions, whether all variables other than the allegedly critical variables were controlled, and whether the comparisons are truly commensurate with the scope of the claims (see MPEP § 716.02). The Declaration of Tatsuya Fujimoto Table A was barley legible, but the declaration has been considered. However, the declaration is not accorded persuasive evidentiary weight sufficient to overcome the prima facie case of obviousness.
First, the showing is not commensurate in scope with the claims. Claim 1 broadly covers, among other things fiber diameter of 0.1-7 µm, fiber content of 0.5-10 mass%, F of 0.005-7, UV absorber/nonvolatile oil ratio of 0.3-1, any nonvolatile oil, any ultraviolet absorber, and broad fiber chemistries. The declaration appears to present only a small number of narrowly selected examples near one boundary of the claimed range. A limited showing at isolated points does not establish unexpected results across the breadth of the entire claimed genus (see In re Grasselli, 713 F.2d 731 (Fed. Cir. 1983)).
Second, the boundary-value comparison is weak. The applicant relies principally on 0.0044 (comparative) versus 0.005 (claim boundary). A difference immediately adjacent to the claimed lower boundary, without robust statistical treatment or broader data, does not persuasively establish criticality of the full claimed range. The present showing is more consistent with expected optimization behavior of known result-effective variables.
Third, there is no showing of unexpected results. The applicant must show that the claimed results are unexpected compared to the closest prior art. The Declaration compares only examples within the claimed range (Examples A, B) to those outside the claimed range (Comp. A, B). This shows only that the claim ranges are operative, not that they are unexpectedly superior to Sano’s teachings. Applicant provides no comparative data against Sano’s Example 2 (which has an F value of 0.163 and a UV absorber/oil ratio of 0.32, both within the applicant’s claimed ranges). Without a side-by-side comparison showing that the applicant’s composition is unexpectedly better than Sano’s most relevant embodiment, no objective indicia of nonobviousness are established (see In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011)).
Fourth, the data fails to establish criticality. The Declaration does not demonstrate that the entire claimed range is critical. Comparative Example A (F=0.0044, slightly below the claimed 0.005) showing deterioration does not prove that F=0.005 is a critical lower bound, it simply shows that very low F values are less effective. This is consistent with Sano’s teaching that too-small fibers (CNF-C) cause skin tightness. Similarly, Example B’s low ratio of 0.08 showing deterioration only demonstrates that very low ratios are poor, not that the 0.3 lower bound is critical or unexpected. There is no showing, for example, that an F value of 0.004 (just below the claim) is unexpectedly worse than an F value of 0.005 (just above the claim), rather than gradually declining in performance as Sano would predict.
Further, the Declaration admits that the critical parameters are F value and UV absorber/oil ratio. Sano teaches overlapping ranges for all variables. The Declaration itself shows that performance deteriorates outside the claimed ranges, which is precisely what Sano would predict, as Sano teaches that adjusting fiber diameter, fiber content, and oil/UV absorber ratios affects film properties. The applicant’s own Declaration thus confirms that the claimed invention is a routine optimization of Sano, not an unexpected breakthrough. Wherein the applicant’s own evidence demonstrates that the claimed ranges are merely optimal sub-ranges of a broader prior art disclosure, the claim is obvious (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)).
The rejection of claims 1 and 3-13 under 35 U.S.C. § 103 over Sano is maintained. The applicant’s amendments do not overcome the rejection because Sano still teaches overlapping fiber diameter and loading ranges; Sano still teaches adjustable result-effective variables; Sano still discloses an example UV absorber/nonvolatile oil ratio within the claimed range; and the claimed F remains a mathematical consequence of known adjustable variables. The rejection of claims 4 and 5 under 35 U.S.C. § 103 is likewise maintained. The applicant’s arguments directed to claim 1 do not separately rebut the prior articulated rationale for incorporating water-insoluble polyester or (meth)acrylic fibers taught by Sasaoka into the film-forming compositions of Sano. Claims 9 and 10 additionally recite a narrower F range, aspect ratio limitations, and higher UV loading requirements. These limitations remain within ranges either expressly taught, mathematically encompassed, or obtainable by routine optimization from Sano’s teachings. The applicant has not demonstrated criticality across the full breadth of these narrower ranges.
The applicant’s traverse of the rejection over Sano in view of Sasaoka is unpersuasive. Sasaoka expressly teaches cosmetic film-forming fibers comprising water-insoluble polymers including (meth)acrylic resins and polyester resins, with average fiber diameters (0.05-10 µm) and lengths (10-100+ µm) overlapping the applicant’s claimed ranges. One of skill would be motivated to substitute Sano’s cellulose fibers (which may require hydrophobic treatment) with Sasaoka’s PMMA or polyester fibers to improve compatibility with the nonvolatile oil phase and enhance film integrity. This is a predictable substitution of one known fiber for another in a known film-forming cosmetic composition, yielding predictable results. No unexpected synergy is shown.
Conclusion
No claims are allowed.
The applicant's amendment necessitated the new ground(s) of objection presented herein. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). The 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 (87 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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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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