DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-10 are pending and under current examination.
Withdrawn Claim Rejections
All claim rejections under 35 U.S.C 102 have been withdrawn in view of the amendments to the claims filed 11/7/2025.
All claim rejections under 35 U.S.C 103 over Tajima, iKeda, Viola, and Batilo have been withdrawn in view of the amendments to the claims filed 11/7/2025.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
Applicants amendments to the claims filed 11/7/2025 have necessitated the new grounds of rejection below.
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 1-3 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Iwama (U.S. Patent No. 8,999,300, issue date: 4/7/2015).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Iwama teaches a cosmetic or external skin preparation that may be in the form of an oil-in-water emulsion (col. 30 line 9). The composition may include surfactants such as polyglyceryl-2 stearate (col. 17 line 24), glyceryl stearate, glyceryl palmitate, and glyceryl oleate (col. 17 lines 19-20), oleyl alcohol, stearyl alcohol, arachyl alcohol, behenyl alcohol, batyl alcohol (col. 13 lines 15-18), and a thickener such as cellulose and derivatives thereof (col. 19 line 16).
Regarding claims 2 and 3, Iwama teaches that the composition may include batyl alcohol (col. 13 line 18).
Regarding claim 7, Iwama teaches a cosmetic or external skin preparation that may be in the form of an oil-in-water emulsion (col. 30 line 9).
Regarding claim 8, Iwama teaches that the cosmetic or external skin preparation may be in the form of a cream or sol (water dispersion) (col. 6 lines 10-11).
Regarding claims 9 and 10, Iwama teaches that the cosmetic or external skin preparation is capable of achieving an excellent feel in use that includes excellent permeation into the skin and the hair, excellent stretching on the skin and the hair, and less stickiness and crinkles (col. 6 lines 11-14). The composition is evaluated for feel in use by applying the composition to the skin (col. 33 lines 37-39).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1-3 and 7-10, Iwama doesn’t teach a single embodiment or example meeting all limitation of the invention of claims 1-3 and 7-10.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1-3 and 7-10, within the broader scope of Iwama all of the limitations of the invention of claims 1-3 and 7-10 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Iwama and arrive at this conclusion because such was contemplated by Iwama.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Iwama (U.S. Patent No. 8,999,300, issue date: 4/7/2015), as applied to claims 1-3 and 7-10, and further in view of Nguyen (U.S. Patent Application No. 2012/0058061, publication year: 2012).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Iwama renders obvious the relevant limitations of claim 1 as described above.
Regarding claims 4 and 5, Iwama teaches that the composition may include a thickener such as cellulose and derivatives thereof (col. 19 line 16).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 4 and 5, Iwama does not teach that the composition may include a cellulose thickener comprising an alkyl group of 10 to 30 carbon atoms or hydroxypropyl methyl cellulose stearoxy ether. However, this deficiency is cured by Nguyen.
Nguyen teaches that hydroxypropylmethylcellulose stearoxy ether is a thickener [0015] suitable for inclusion in an emulsion, cream, or gel cosmetic [0053].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional thickeners used in emulsion cosmetics. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iwama (U.S. Patent No. 8,999,300, issue date: 4/7/2015), as applied to claims 1-3 and 7-10, and further in view of Nobata (JP2003055641A, publication year: 2003, citations refer to machine translation).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Iwama renders obvious the relevant limitations of claim 1 as described above.
Regarding claim 6, Iwama teaches that the composition may include a thickener such as guar gum, locust bean gum, quince seed, carrageenan, galactan, gum arabic, tara gum, tamarind, furcelleran, karaya gum, Abelmoschus manihot, cara gum, gum tragacanth, pectin, pectic acid and salts thereof including a sodium salt thereof, alginic acid and salts thereof including a sodium salt thereof, and mannan; starches such as rice starch, corn starch, potato starch, and wheat starch, xanthan gum, dextran, succinoglucan, curdlan, hyaluronic acid and salts thereof, pullulan, gellan gum, chitin, chitosan, agar-agar, and brown algae extract (col. 19 lines 5-15).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 6, Iwama does not teach the inclusion of a polysaccharide thickener that contains a rhamnose or fucose as a constituent monosaccharide of a side chain. However, this deficiency is cured by Nobata.
Nobata teaches a polysaccharide thickener for use in cosmetics [0052]. The polysaccharide thickener comprises a main chain composed of glucose, glucuronic acid, and rhamnose with fucose bonded to the side chain (Claim 3).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (the polysaccharide of Iwama and the polysaccharide of Nobata for the purpose of thickening an emulsified cosmetic). See MPEP 2144.06(II).
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 1-10 over Tajima, iKeda, Viola, and Batilo under 35 U.S.C. 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Arguments that may be relevant to the current grounds of rejection are addressed as follows:
On page 10, applicant argues that the data provided in the specification and the additional comparative data provided in the remarks confirm that the presence of polyglyceryl-2-stearate is essential to achieve a good stability at 45oC and 50oC and that one of ordinary skill in the art would not have been motivated to specifically use polyglyceryl-2 stearate in a composition comprising the other elements of the claimed invention.
The additional comparative data not already present in the instant specification is not properly submitted on the record with an appropriate affidavit or declaration. MPEP 716.01(c) indicates that the arguments cannot take the place of evidence in the record. Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. MPEP 2145 further states that “[a]n assertion of what seems to follow from common experience is just argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness” (citing In re Geisler, 116 F.3d 1465,43 USPQ2d 1362 (Fed. Cir. 1997).
In the interest of compact prosecution, the Examiner has considered the data in the specification as well as the comparative examples provided in the remarks.
Please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected properties amounts to an increased stability when a composition contains polyglyceryl-2 stearate in addition to the other components of the claimed composition. However, Thibodeau (U.S. Patent Application No. 2016/0022567, publication year: 2016, cited in the IDS filed 1/29/26) teaches that an emulsion comprising polyglyceryl-2 stearate, glycerol stearate, and stearyl alcohol [0088-0091] was stable for 1 month at 50oC while compositions that did not contain polyclyceryl-2 stearate did not demonstrate the same stability (Table 8 and [0118-0119]). Therefore the evidence of unexpected results is not unexpected or unobvious over the prior art.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to an increase in stability of the emulsion; therefore the difference is of practical significance. However, there is no numerical data and no statistical analysis supporting the claims of increased stability. Therefore, the differences are not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The evidence of unexpected results asserts that polyglycerol-2 stearate is able to produce a stable emulsion in combination with glyceryl stearate and stearyl alcohol at only one mixing ratio. However, the claims embrace polyglyceryl-2 stearate in combination with any ester of a fatty acid and glycerin and any monohydric alcohol of 16 to 22 carbon atoms at any concentration. It would follow that any amount of polyclyceryl-2 stearate is able to stabilize the emulsion at any concentration and in combination fatty acid ester and any monohydric alcohol embraced by the claims. Therefore, because the evidence of unexpected results only demonstrates increased stability with one concentration of polyglycerol-2 stearate in combination with only fatty acid ester and one monohydric alcohol, the evidence of unexpected results is not in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617