DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after July 14, 2023, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 11/06/2025 in the matter of Application N° 18/261,512. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after July 14, 2023, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1-15 represent all claims currently under consideration.
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.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Keita et al. (WO2017187977) in view of Tajima et al. (CA2708434C), and Hougaz (US20090061001A1), and Zhen et al. (CN103458862A), and Yuji et al. (JP5904629B2).
Regarding claims 1, 3, 5, 7, and 13, Keita et al. teach a water in-oil emulsified cosmetic with the unique ability to improve color uniformity and color development more than right after application through contact with water comprising an Organically modified clay mineral. The water-in-oil type emulsified cosmetic, which comprises (A) an organic modified clay mineral, (B) an oily phase-thickener other than the organic modified clay mineral (A), (C) a nonvolatile liquid oil component other than a silicone oil, (D) a silicone-type surfactant having an HLB of less than 8, and (E) a coloring material, is characterized in that the weight ratio [(A)+(B)]/(C) is 0.04 or more and less than 0.68 (See abstract and claim 1)The water-in-oil emulsified cosmetic according to any one of claims 1 to 3, wherein the amount of non-volatile liquid oil other than silicone oil is 3% by mass or more (See claim 3). The water-in-oil emulsified cosmetic according to any one of claims 1 to 5, wherein the blending amount of the coloring material is 0.3% by mass or more (See claim 5). Plant hardened oils include hardened castor oil (See paragraph 23). The compounding quantity of a component is 0.1-3 mass% with respect to the total amount of water-in-oil type emulsified cosmetics, more preferably, it is 0.2-2 mass% (See Paragraph 18). Examples of polar oils with IOB ≥ 0.3, these oils often contain esters, alcohols, or ether groups that increase polarity, which include the non-volatile liquid oil other than the ultraviolet absorber contained in the component (C) includes, for example, ester oil, and isopropyl myristate (See paragraph 30). In addition, all compounding quantities are represented by the mass% with respect to the total amount of water-in-oil type emulsified cosmetics, such as Isopropyl myristate 3 (See paragraph 87). The non-volatile liquid oil other than the ultraviolet absorber contained in the component (C) includes, ester oil such as diisostearyl malate; (See paragraph 31).
Tajima et al. teach by choosing a surfactant based on the necessary HLB of the functional oil-based agents or granule surface characteristics, the emulsification and dispersion of functional granules agents into water were carried out. Additionally, depending on whether O/W or W/O type emulsions were to be generated, the surfactant’s necessary HLB value as an emulsifier had to be specifically selected; the amphiphilic substance capable of self-assembly is selected from among polyoxyethylene hardened castor oil derivatives represented by the general formula, wherein the average number of added ethylene oxide molecules is 5 to 15, dialkyldimethylammonium halides wherein the chain length of the alkyl or alkenyl is 8 to 22, and particles made from phospholipids or phospholipid derivatives (See abstract).
Hougaz discloses wherein the sun’s detrimental effects, especially its ultraviolet radiation, can be absorbed or blocked by the sunscreen agents that can be utilized in the composition of the present invention. more typically, blocking and or absorbing radiation in the 290 to 400 nm wavelength region. More typically, the sunscreen agents are all agents that have been approved for use in sunscreen formulations by one or more regulatory authority. Suitable sunscreen agents include, for example Ethylhexyl Salicylate and octocrylene (See paragraph 0030 and claim 13).
Therefore, it would have been obvious to one of ordinary skill in the art before the instant effective filing date to incorporate the teachings of Tajima et al. teaches the emulsification and dispersion of functional granule agents into water were performed, together with the required HLB of the functional oil-based agents or granule surface features. Additionally, the surfactant’s required HLB value as an emulsifier had to be carefully chosen based on whether an O/W or W/O type emulsion was to be produced. into the teachings of Keita et al. which teach a water-in-oil emulsified cosmetic that contains an organically modified clay mineral and has the special ability to enhance color development and homogeneity more than immediately after application. The emulsified cosmetic of the water-in-oil kind, which contains an organic modified clay mineral. Other than the organic modified clay mineral, the water-in-oil type emulsified cosmetic also contains an oily phase-thickener. A silicone-type surfactant with an HLB of less than eight, or, alternatively, a nonvolatile liquid oil component.
Therefore, It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instant application, to incorporate the sunscreen agents explicitly taught by Hougaz, including ethylhexyl salicylate and octocrylene, into a water-in-oil emulsified cosmetic system as taught by Keita et al. while selecting appropriate surfactants based on HLB principles as taught by Tajima et al, with a reasonable expectation of success.
Regarding claim 2, Keita et al. teach a nonvolatile liquid oil other than silicone oil, Silicone interface with HLB less than 8 (See paragraph 8, and Abstract). A silicone-based surfactant (hereinafter simply referred to as “component (D)”) is particularly limited as long as it has a silicone skeleton (polysiloxane structure) and has an HLB of less than 8. polyglycerin-modified silicone, and / or polyglycerin-alkyl co-modified silicone are preferably used. One suitable example of such a polyoxyalkylene / alkyl-modified silicone is KF-6038 (lauryl PEG-9 polydimethylsiloxyethyl dimethicone, manufactured by Shin-Etsu Silicone (See paragraph 42). Examples of the polyglycerin-modified silicone include linear polyglycerin-modified silicones (= siliconized polyglycerin at both ends) [Wherein, R 1 represents a linear or branched alkyl group having 1 to 12 carbon atoms or a phenyl group, R 2 represents an alkylene group having 2 to 11 carbon atoms, and p is 10 to 120. And q is 1-11] (See paragraph 43).
Regarding claims 4, and 8, Tajima et al. teach the amphiphilic substance capable of self-assembly is selected from among polyoxyethylene hardened castor oil derivatives represented by the general formula, wherein the average number of added ethylene oxide molecules is 5 to 15 (See abstract and 0011).
Regarding claim 9, Keita et al. teach water-in-oil type emulsified cosmetic that has unprecedented properties of, after being in contact with water, sweat, etc., showing an improved coloration effect and improved color uniformity in comparison with the state immediately after application (See abstract). protecting skin and hair from UV damage is one of the most important issues in skin care, body care, and hair care. Recently, it has been severe in outdoor activities such as swimming in the swimming pool, the sea, and winter skiing. It is considered that it is important to protect from ultraviolet rays not only in ultraviolet conditions but also in daily life (See paragraph 3). The water-in-oil emulsified cosmetic according to any one of claims 1 to 7, wherein the non-volatile liquid oil other than the silicone oil contains an ultraviolet absorber (See claim 8).
Regarding claim 10, Keita et al. teach silicone surfactant with HLB less than 8>. Instead, for example, alkyl-modified silicone is more preferable (See paragraph 37). In the general formula, R is an alkyl group having 1 to 3 carbon atoms (See paragraph 38).
Regarding claims 11, and 12, Keita et al. teach other from the UV absorber that is part of the component, the non-volatile liquid oil contains things like vegetable oil, hydrocarbon oil, ester oil, high molecular weight polyoxyalkylene glycol, and similar substances. Squalane and other hydrocarbon oils are particular instances (See paragraph 32).
Zhen et al. teach examples of non-volatile non-polar hydrocarbon-based oils that may be mentioned include hydrocarbon-based oils such as squalene, linear or branched chain hydrocarbons such - Polydecene and hydrogenated polydecene, such as Puresyn 150 sold by Mobil Chemicals (MM = 9200 g/mol), and mixtures of them. As polydecenes such as Puresyn 10 and mixtures thereof (See paragraph 33). - Polydecene and hydrogenated polydecene, such as Puresyn 150 sold by Mobil Chemicals (MM = 9200 g/mol), and mixtures of them (See Paragraph 33). According to one embodiment, the non-volatile non-polar oils suitable for use in the present invention may be selected from polydecenes, and/or squalane and mixtures thereof (See paragraph 36).
Regarding claim 14, Keita et al. teach Volatile silicone oils include silicone oils that are volatile at room temperature and are conventionally used in cosmetics, such as volatile cyclic silicone oils (volatile). The blending amount of the volatile oil is usually about 1 to 40% by mass with respect to the total amount of the water-in-oil emulsified cosmetic (See paragraph 33 and 34).
Regarding claim 15, Yuji et al. teach other oils used in the solid cosmetic composition of the present invention are not limited as long as the effects of the present invention are not impaired. For example, (Wax-Free) jojoba oil, waxes such as squalene, petrolatum, microcrystalline wax Hydrocarbons such as isopropyl myristate (See paragraph 21). Examples of the humectant include, but are not limited to, glycerin. These can be used alone or in combination of two or more. In particular, it is preferable to include glycerin as a moisturizing agent from the viewpoints of a moisturizing effect and a feeling of use. (See paragraph 11).
Response to Arguments
Applicant's arguments filed November 06, 2025 have been fully considered but they are not persuasive. Applicant asserts that neither Keita, Tajima, Zhen, nor Yuji describes or suggests the use of ethylhexyl salicylate or octocrylene, and therefore the claimed composition is not taught or suggested by the prior art. However, this argument is not persuasive because the rejection now relies on Hougaz for the specific agents, not Keita or Tajima.
Hougaz discloses sunscreen compositions comprising agents capable of absorbing or blocking harmful ultraviolet radiation, particularly in the 290-400 nm wavelength range. Hougaz further teaches that suitable sunscreen agents include those approved for use by regulatory authorities and expressly lists Ethylhexyl salicylate and Octocrylene. Thus, Hougaz explicitly teaches the very agents applicant alleges are absent from the prior art. Accordingly, the claimed use of ethylhexyl salicylate and/or octocrylene is expressly disclosed in the closest prior art reference.
One of ordinary skill in the cosmetic formulation art at the time of the invention would have been motivated to utilize the UV-absorbing sunscreen agents explicitly taught by Hougaz (ethylhexyl salicylate and octocrylene), and incorporate them into a water-in-oil emulsified cosmetic system as taught by Keita, while selecting appropriate surfactants based on HLB values as taught by Tajima. The combination merely applies known sunscreen agents (Hougaz) within a known cosmetic W/O emulsion system (Keita), using conventional emulsification principles (Tajima). Formulators routinely optimize sunscreen compositions by selecting appropriate oil-phase UV filters, suitable W/O or O/W emulsion systems, proper surfactants based on HLB requirements. The modification would have yielded predictable results, namely a stable W/O sunscreen-containing cosmetic composition capable of absorbing UV radiation in the 290-400 nm range.
Applicant’s argument that Keita and Tajima do not disclose ethylhexyl salicylate or octocrylene is unpersuasive because the rejection does not rely on Keita or Tajima for those agents. Hougaz expressly discloses ethylhexyl salicylate and octocrylene as suitable sunscreen agents. The combination relies on Hougaz for the sunscreen actives and Keita/Tajima for emulsion structure and formulation principles. A reference need not disclose every element independently where the combined teachings render the claimed invention obvious. The proper inquiry is whether the reference collectively would have suggested the claimed subject matter to one of ordinary skill in the art.
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instant application, to incorporate the sunscreen agents explicitly taught by Hougaz, including ethylhexyl salicylate and octocrylene, into a water-in-oil emulsified cosmetic system as taught by Keita et al. while selecting appropriate surfactants based on HLB principles as taught by Tajima et al, with a reasonable expectation of success.
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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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615