DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed January 12, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
A corrected annotated IDS (November 6, 2024), indicating consideration of line 23, is included. As noted on the document, the European Search Report of line 23 was previously considered with the annotation dating 9/17/2025, but was not initialed due to a typographical error. This oversight has now been corrected.
Claim Status
Claims 2, 7 – 9, and 13 are cancelled.
Claims 1, 3 – 6, 10 – 12, and 14 – 16 are examined here-in.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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 non-obviousness.
Claims 1, 3 – 6, 10 – 12, and 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ricard (US 2012/027981 A1, of record) in view of Ayana (JP-2020063228-A, citations to English translation by EspaceNet).
Ricard teaches a cosmetic composition containing a physiologically acceptable medium, pigments, and thickening agents (abstract). Ricard teaches the cosmetic composition may be an oil-in-water emulsion (paragraph 0190).
Ricard teaches the pigment can be titanium dioxide coated with aluminum (paragraph 0100), a polymeric thickening agent may be an acrylamide and sulfonic acid polymer (paragraph 0177), an oil compound such as polyglyceryl triisostearate (paragraphs 0284 – 0286), and a dextrin fatty acid ester (paragraphs 0182 – 0185).
Ricard teaches the titanium oxide pigment may be in the amount of 10 to 25% by weight (paragraphs 0100 – 0101).
Ricard teaches a polymeric thickening agent of cross-linked anionic copolymers of acrylamide and AMPS (i.e. ammonium polyacryldimethyltauramide, a polymer with a sulfo group and methacrylamide) (paragraph 0177).
Ricard teaches polyglyceryl triisostearate (which has a clogP value greater than 10) in the amount of 1 to 20% by weight (paragraphs 0284 – 0288).
Ricard teaches the inclusion of non-volatile hydrocarbon, silicone, or fluorinated oil in an amount ranging from 4 to 30% by weight (paragraphs 0205 – 0206, 0213 – 0214).
Ricard teaches the composition may be a sunscreen (paragraph 0022).
Ricard does not teach an oil that is dipentaerythrityl tri-polyhydroxystearate or polyhydroxystearic acid, or total amount of the oil components is between 10 and 27.3 mass%.
Ayana teaches the missing element of Ricard.
Ayana teaches an oil-in-water cosmetic emulsion that has a good feel, good water resistance, and high SPF (page 2 lines 4 – 5). Avery teaches that a challenge with blending high levels of UV-shielding powders with common dispersants is a feeling of stickiness (page 1 lines 20 – 28).
Ayana teaches an oil-in-water emulsion contains polyhydroxystearic acid as a dispersant (page 2 lines 10, 16, page 6 lines 21 – 24), emphasizing that polyhydroxystearic acid has the benefit of a small amount resulting in good dispersion (page 6 lines 22 – 23).
Ayana teaches polyhydroxystearic acid gives the composition a unique ability to maintain high SPF after application to the skin, because unlike many dispersants, polyhydroxystearic acid has water resistance that prevents the composition from running off due to sweat (page 5 lines 15 – 18).
Ayana teaches the amount of polyhydroxystearic acid is between 0.2 and 5.0 mass% (page 5 lines 20 – 22).
Claims 1, 3 – 6, 10 – 12, and 14 – 16 are rendered prima facie obvious over the combination of Ricard and Ayana, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results (MPEP 2143(i)(a)). A person of ordinary skill in the art would be motivated to use polyhydroxystearic acid in the composition of Ricard because Ayana teaches polyhydroxystearic acid is a dispersant that can be used in small amounts to yield satisfying results and that it lends water resistant qualities to compositions (page 5 lines 15 – 18, page 6 lines 22 – 23). This combination is prima facie obvious as combining prior art elements (e.g., titanium oxide, water-soluble polymer containing sulfonic acid, a compound with one or more hydroxy groups and two or more fatty acid groups, polyhydroxystearic acid, a dextrin fatty acid ester, and a surfactant) according to known methods to yield predictable results (MPEP 2143(I)(a)).
Ricard’s teaching for a composition containing titanium dioxide coated with aluminum (paragraph 0100), an acrylamide and sulfonic acid polymer (paragraph 0177), polyglyceryl triisostearate (paragraphs 0284 – 0286), and a dextrin fatty acid ester (paragraphs 0182 – 0185) in combination with Ayana’s teaching for polyhydroxystearic acid as a dispersant (page 6 lines 22 – 23) reads on instant claim 1.
Ricard’s teaching for titanium oxide pigment in the amount of 10 to 25% by weight (paragraphs 0100 – 0101) overlaps on the instantly claimed amount of 6 to 12 mass % as recited in claim 1. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i). Additionally, Ricard teaches that aluminum acyl glutamate and aluminum stearoyl glutamate are examples of titanium oxide coated with a hydrophobic agent (paragraph 0100), but also teaches NAI-C33-7001-10 by the supplier Miyoshi Kasei, which is a pigment coated with disodium stearoyl glutamate and aluminum hydroxide (image of technical datasheet attached). Titanium oxide coated with a disodium stearoyl glutamate and aluminum hydroxide reads on alumina/stearic acid-treated titanium oxide description recited in the instant specification on pages 4 – 6, sections 0009 – 0011.
Ricard’s teaching for an acrylamide and sulfonic acid polymer (paragraph 0177) reads on element B) a water-soluble polymer having a unit of sulfonic acid of claim 1.
Ayana’s teaching for polyhydroxystearic acid as a dispersant in the amount of 0.2 – 5.0 mass % (page 5 lines 15 – 18, page 6 lines 22 – 23) reads on C1) an oil compound whose molecule includes one or more hydroxy groups and two or more fatty acid groups, selected from dipentaerythrityl tri-polyhydroxystearate and polyhydroxystearic acid of claim 1.
Ricard’s teaching of polyglyceryl triisostearate (paragraphs 0284 – 0286) reads on C2a) “an oil that is liquid at 25 °C other than component C1” of claim 1.
Ricard’s teaching for a dextrin fatty acid ester (paragraphs 0182 – 0185) reads on element E) a dextrin fatty acid ester as recited in claim 1.
With regards to instant claim 1’s recitation “a total amount of the component (C1) and the component (C2a) is 10 mass% or more and 27.3 mass% or less”, Ayana’s teaching for polyhydroxystearic acid as a dispersant in the amount of 0.2 – 5.0 mass % (page 5 lines 19 – 21, page 6 lines 20 – 21) in combination with Ricard’s teaching for polyglyceryl triisostearate in the amount of 1 to 20% by weight (paragraphs 0284 – 0288) overlaps on the instantly claimed amount of 10 to 27.3 mass % as recited in the claim. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Ricard’s teaching for a polymeric thickening agent of cross-linked anionic copolymers of acrylamide and AMPS (i.e. ammonium polyacryldimethyltauramide, a polymer with a sulfo group and methacrylamide) in the amount of 0.3 to 15% by weight (paragraphs 0177, 0185), reads on instant claims 3 – 5.
As noted above, Ayana’s teaching for polyhydroxystearic acid (page 5 lines 15 – 18, page 6 lines 22 – 23) reads on element C1). Ricard’s teaching for the inclusion of non-volatile hydrocarbon, silicone, or fluorinated oil (paragraphs 0205 – 0206, 0213 – 0214), reads on a second oil C1) that is not from the group of dipentaerythrityl tri-polyhydroxystearate and polyhydroxystearic acid, reading on claim 6.
Ayana’s teaching for polyhydroxystearic acid as a dispersant in the amount of 0.2 – 5.0 mass % (page 5 lines 15 – 18, page 6 lines 22 – 23) which reads on C1 and Ricard’s teaching for polyglyceryl triisostearate in the amount of 1 to 20% by weight (paragraphs 0284 – 0288) which reads on C2a reads on the claimed mass ratio of 0.02 to 1 recited in instant claim 10. For example, polyhydroxystearic acid (C1) in the amount of 5 mass% and polyglyceryl triisostearate (C2a) in the amount of 20% by weight, results in a (C1) / ((C1) + (C2a)) mass ratio of 0.2.
Ricard’s teaching for titanium oxide pigment in the amount of 10 to 25% by weight (paragraphs 0100 – 0101), which reads on component (A), and a polymeric thickening agent of cross-linked anionic copolymers of acrylamide and AMPS in the amount of 0.3 to 15% by weight (paragraphs 0177, 0185), which reads on component (B) in combination with Ayana’s teaching for polyhydroxystearic acid as a dispersant in the amount of 0.2 – 5.0 mass % (page 5 lines 15 – 18, page 6 lines 22 – 23) which reads on C1) reads on the claimed mass ratio of ((A)+(B))/(C1) from 0.3 to 25 as recited in instant claim 11. For example, titanium oxide (A) in the amount of 10% by weight, a polymeric thickening agent (B) in the amount of 10%, and polyhydroxystearic acid (C1) in the amount of 5% by weight results in an ((A)+(B))/(C1) mass ratio of 4.
Ricard’s teaching to include surfactants in the composition (paragraph 0302) reads on instant claim 12.
Ricard’s teaching that the composition may be a sunscreen (paragraph 0022) reads on instant claim 14.
Ricard’s teaching for dextrin fatty acid ester in the amount of 0.3 to 15% by weight (paragraphs 0182 – 0185) reads on instant claims 15 and 16. The taught amount of 0.3 to 15% by weight (paragraphs 0182 – 0185) overlaps on the instantly claimed amounts of 0.1 to 5 mass % and 0.3 to 2 mass %, as recited in claims 15 and 16, respectively.
Examiner’s Reply to Attorney Arguments Dated January 12, 2026
Applicant argues that Ricard does not teach the use of the alumina/stearic acid-treated titanium oxide recited in amended claim 1 (Remarks page 6). The Examiner disagrees, because as discussed above, Ricard teaches that aluminum acyl glutamate and aluminum stearoyl glutamate are examples of titanium oxide coated with a hydrophobic agent (paragraph 0100), but also teaches NAI-C33-7001-10 by the supplier Miyoshi Kasei, which is a pigment coated with disodium stearoyl glutamate and aluminum hydroxide. Titanium oxide coated with a disodium stearoyl glutamate and aluminum hydroxide reads on alumina/stearic acid-treated titanium oxide description recited in the instant specification on pages 4 – 6, sections 0009 – 0011. Specifically, the instant specification states “The component (A) is a titanium oxide particle coated with a surface treatment agent including aluminum… As specific examples of the surface treatment agent including aluminum, a surface treatment agent including alumina and/or aluminum hydroxide is preferable…” (emphasis added). Furthermore, the alumina/stearic acid-coated titanium oxide microparticles of examples is identified as MT-100TV manufactured by TAYCA corporation (paragraph 0059), which according to the Tayca Corporation description is titanium dioxide coated with aluminum hydroxide and stearic acid (image attached).
Applicant alleges unexpected results , stating “simultaneous improvements in both the SPF evaluation and surface smoothness” for examples 1 – 7, 9, and 21 (Remarks page 6).
As an initial matter, the Examiner notes that a proper side-by-side comparison to the closest prior art as required by MPEP 716.02(e) does not appear to have been made. Applicant compares examples 1 – 7, 9, and 21 to the remaining examples, alleging that the unique combination of ingredients and amounts as claimed results in an unexpected SPF evaluation of 3 or more and a surface smoothness of 3 or more (Remarks page 6).
The Examiner disagrees that these results are unexpected in view of the teachings of the prior art Ricard and Ayana, discussed above. Specifically, Ayana teaches an oil-in-water cosmetic emulsion that includes titanium oxide and polyhydroxystearic acid, reporting the composition has a good feel, good water resistance, and high SPF (page 2 lines 4 – 5). Avery teaches that a challenge with blending high levels of UV-shielding powders with common dispersants is a feeling of stickiness (page 1 lines 20 – 28), however, polyhydroxystearic acid as a dispersant works particularly well because a small amount results in good dispersion (page 2 lines 10, 16, page 6 lines 21 – 24, page 6 lines 22 – 23), thus the “stickiness” associated with high levels of dispersants is avoided. Furthermore, Ayana teaches polyhydroxystearic acid gives the composition a unique ability to maintain high SPF after application to the skin, because unlike many dispersants, polyhydroxystearic acid has water resistance that prevents the composition from running off due to sweat (page 5 lines 15 – 18).
Finally, and purely arguendo, even if Applicant has in fact shown unexpected results (of which the Examiner is not persuaded at this time), the Examiner notes that Applicant’s alleged showing is in regards to SPF evaluation and surface smoothness as related to alumina/stearic acid coated titanium oxide, dipentaerythrityl tripolyhydroxystearate or polyhydroxystearic acid, and total amount of oil components which does not appear to be “reasonably representative” of the claims in their current scope. See MPEP 716.02(d). The Applicant has allegedly demonstrated higher SPF evaluation and surface smoothness as a result of 6 – 12 mass% alumina/stearic acid coated titanium oxide, dipentaerythrityl tripolyhydroxystearate or polyhydroxystearic acid, and total amount of oil components in a range of 10 to 27.3 mass%, however if this is in fact true it would only have been shown for alumina/stearic acid coated titanium oxide in an amount of 10 mass% and a total amount of oil components in a range from 25.35 – 27.3 mass% (Examples 1 – 7, 9, and 21). It is unclear that a composition containing alumina/stearic acid coated titanium oxide in an amount of 10 mass% and a total amount of oil components in a range from 25.35 – 27.3 mass% would be reasonably representative of the varying amounts recited in claim 1, thereby falling within the broader scope of what is presently claimed.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612