DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 3-4 are withdrawn.
Claims 1-2 and 5 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 03/03/2026 was entered.
Claims 1-2 and 5 were amended, and the drawings were removed. No new material was added.
Applicant’s amendments have overcome the previous objections and rejections under 35 U.S.C. 112(b) of the claims.
Claims 1-2 and the specification are newly objected to due to the amendments.
Claims 1-2 and 5 are newly rejected under 35 U.S.C. 112(b) and rejected under 35 U.S.C. 103 due to the amendments.
Response to Arguments
Applicant’s amendments filed 03/03/2026, were sufficient to overcome the rejections of claims 1-2 and 5 under 35 U.S.C. 112(b) presented in the Office Action mailed 11/26/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claims 1-2 and 5 are considered to have an effective filing date of 12/22/2021.
Specification
The disclosure is objected to because of the following informalities: paragraphs 026-030, 039-042, and 051 refer to Figures which were deleted from the application.
Appropriate correction is required.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
New Claim Objections
Claims 1-2 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, “lignin a cosmetic” should read “lignin to a cosmetic”, and “mixtures of” should read “a mixture of”.
Regarding claim 2, “composition TiO2” should read “composition of TiO2”.
New 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 1-2 and 5 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the recitation of “for a cosmetic product” and “adding a dry lignin of high molecular weight to the composition to a cosmetic product” renders the claim indefinite, because it is not clear if the “lignin composition associated with ZnO and TiO2 is a “a cosmetic product”, if “a cosmetic product” is an ingredient in the composition, or if these are two separate “cosmetic products”.
Regarding claims 1 and 5, the claims recite the limitations "said product" and “the product”. There is insufficient antecedent basis for this limitation in the claim. It is not clear which “cosmetic product” referenced above is being referred to.
Regarding claims 1 and 5, the claims recite the limitation "weight of nanostructured lignin". There is insufficient antecedent basis for this limitation in the claim. There is no nanostructured lignin recited in the composition as claimed. For the purpose of examining the prior art, this limitation has been interpreted to read “by weight of the lignin composition”.
Regarding claims 2 and 5, each claim is dependent on the rejected claim 1 and does not cure its deficiencies, and therefore is deficient for the same reasons as above.
New 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 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over SenGupta (US 6716418 B2; IDS reference, 08/22/2023), further in view of Valverde (WO 2017102359 A1) and Kanji (EP 1579845 B1), and as evidenced by Widsten (Cosmetics, 2020) and PubChem (Octyltriethoxysilane). SenGupta and Valverde were cited previously by the Examiner as relevant prior art.
Regarding claim 1, SenGupta teaches a method of manufacturing a gel for use in a cosmetic composition (i.e., obtaining a composition for a cosmetic product) comprising dissolving a polymer and dispersing a particulate material (SenGupta, claim 89). SenGupta teaches a cosmetic composition can comprise lignin as the polymer (SenGupta, claim 84) and a dispersion (i.e., suspension) of a mixture of TiO2 and ZnO as the particulate material (SenGupta, claim 87). SenGupta teaches dissolving the polymer in a liquid (SenGupta, claim 89), suggesting the polymer is a solid (i.e., a dry lignin). While SenGupta does not specify a mixture of a suspension of ZnO and a dispersion of TiO2 as claimed, SenGupta does teach a dispersion (i.e., suspension) of a mixture of TiO2 and ZnO. Selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04(IV)(C).
SenGupta exemplifies a composition wherein lignin is present in 0.05-60% by weight of the composition (SenGupta, table I), which overlaps the claimed range; titanium dioxide and zinc oxide are present in 0-65% by weight (SenGupta, table I), which encompasses the claimed range of each; Finsolv TN in 2.5% by weight (SenGupta, table X), which is C12-15 alkyl benzoate as evidenced by SenGupta, example 16. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
SenGupta teaches a composition that when added as a component in a cosmetic formulation can improve the efficacy of sunscreen actives used as UV filters (i.e., boosts blue light protection), and that such compositions can be topical and function as an antioxidant (i.e., protects the skin against external oxidizing agents; SenGupta, claim 1).
While SenGupta does not specify that the cosmetic composition has coloring for black skin, the colors of lignin-based sunscreens typically range from brown to black and are useful for individuals with darker skin tones (Widsten, page 3, “Effect of Lignin Color on Its Suitability to Sunscreens”), as evidenced by Widsten. Therefore, because the composition of SenGupta contains lignin, it would be reasonable to expect composition to have coloring for black skin.
SenGupta teaches functional oils in 0-40% by weight (SenGupta, table I), does not specify butyloctyl salicylate or dodecamethylpentasiloxane. Valverde, however, teaches compositions for caring for skin (Valverde, page 1, lines 4-5) which can comprise lignins (Valverde, page 13, page 39) in about 1.5% by weight (Valverde, page 14, line 25); polar oils such as butyloctyl salicylate (Valverde, page 69, line 14), C12-C15 alcohol benzoates (Valverde, page 68, line 36), and dodecamethylpentasiloxane (Valverde, page 66, line 15) in 0.5-60% by weight (Valverde, page 74, line 32) which encompasses the claimed range of each component. Valverde teaches dispersions may be combined (i.e., mixed) with zinc oxide and titanium oxide for use in cosmetic products (Valverde, page 132, lines 18-20).
SenGupta teaches the use of surface-modifiers (SenGupta, column 7, lines 31-49), does not specify triethoxycaprylylsilane. Valverde teaches a coating in 0.1 to 20% by weight of a coating relative to a pigment (i.e., 0.1 to 20% of the amount of ZnO and TiO2, which would result in an amount of 0-13% by weight of the composition as taught by SenGupta; Valverde, page 79, lines 30-31), and teaches the coating is a surface agent (i.e., surface-modifier; Valverde, page 79, lines 33-37) and can be Prosil 9202 (i.e., triethoxycaprylylsilane as evidenced by PubChem; Valverde, page 81, lines 1-3).
SenGupta and Valverde do not teach an organo polysiloxane-modified polyglycerin. Valverde, however, does teach an organopolysiloxane elastomer (Valverde, page 51, line 12) present in from 2-10% by weight (Valverde, page 55, lines 33-36), which encompasses the claimed range. Kanji teaches a cosmetic composition comprising a polyglycerolated silicone elastomer that comprises an organopolysiloxane (Kanji, claim 2), and teaches the cosmetic composition can be a sunscreen composition (Kanji, page 35, paragraph 0390).
SenGupta, Valverde, and Kanji are considered to be analogous to the claimed invention, because SenGupta, Valverde, Kanji, and the instant invention are in the same field of sunscreen compositions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of SenGupta to include the specific oils taught by Valverde, because SenGupta teaches oils offer functional benefits to cosmetic products (SenGupta, column 10, lines 40-45), while Valverde teaches specific oils used in the field. Further, it would have been prima facie obvious to modify the composition of SenGupta and Valverde to include a specific organopolysiloxane elastomer as taught by Kanji, because SenGupta teaches emulsification and stabilization as preferred functional properties of cosmetic products (SenGupta, column 8, lines 23-30), while Kanji teaches a silicone emulsion which provides improved feel and stability (Kanji, page 2, paragraph 0001).
Regarding claim 2, SenGupta, Valverde, and Kanji together teach all the elements of the current invention as applied to claim 1. As stated above, SenGupta and Valverde teach titanium dioxide. SenGupta further teaches the particulate material has a particle size of less than or equal to about 20 micron (SenGupta, claim 102), which encompasses the claimed range. Kanji further teaches nanopigments of titanium oxide ranging from 5 nm to 100 nm in size (Kanji, page 38, paragraph 0408), which overlaps the claimed range.
Regarding claim 5, SenGupta, Valverde, and Kanji together teach all the elements of the current invention as applied to claim 1. As above, SenGupta exemplifies a composition wherein lignin is present in 0.05-60% by weight of the composition (SenGupta, table I), which overlaps the claimed range.
Conclusion
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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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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