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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/7/2026 has been entered.
Status of the Claims
Claims 1-3, 5, and 7-10 are pending and under current examination. Claims 4 and 6 are cancelled.
Withdrawn Claim Rejections
All rejections pertaining to claims 4 and 6 are moot because the claims are cancelled in the amendments to the claims filed 7/7/2026.
All rejections not reiterated have been withdrawn.
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 9-10 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.
Claim 9 recites the limitation "making-up the keratinic materials" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 10, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined 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 1-3, 5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Thibodeau (U.S. Patent Application No. 2016/0022567, publication year: 2016, cited in the IDS filed 1/29/2026) in view of INCI Decoder-Hydroxypropyl Methylcellulose Stearoxy Ether (available 7/16/2019) and INCI Decoder-Batyl Alcohol (available 8/19/2019).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1-3 and 5, Thibodeau teaches O/W emulsions [0053] produced from waxes comprising polyglyceryl-2 stearate, glycerol stearate, and pure stearyl alcohol [0088]. The composition may comprise a thickener such as hydroxyethyl cellulose or hydroxypropyl cellulose [0077]. The composition can also include a moisturizer [0076]. The resulting emulsion is stable for at least 1 month at about 50oC [0067].
Regarding claim 7, Thibodeau teaches that the composition may be utilized in a method for reducing and/or preventing skin barrier function or disruption, or for accelerating skin barrier function recovery or repair comprising administering to the composition to the skin [0024].
Regarding claim 8, Thibodeau teaches that the compositions can be in the form of creams, milks, gel creams, fluid lotions, and vaporizable fluid lotions [0072].
Regarding claims 9 and 10, Thibodeau teaches that the composition may be utilized in a method for reducing and/or preventing skin barrier function or disruption, or for accelerating skin barrier function recovery or repair comprising administering to the composition to the skin [0024].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1-3 and 5, Thibodeau does not teach that the composition may include a compound having at least two alcoholic hydroxyl groups and an alkyl group of 16 to 22 carbon atoms or 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 and INCI Decoder-Hydroxypropyl Methylcellulose Stearoxy Ether and INCI Decoder-Batyl Alcohol.
INCI Decoder-Hydroxypropyl Methylcellulose Stearoxy Ether teaches that hydroxypropyl methylcellulose stearoxy ether is a viscosity controlling agent for cosmetics (pg. 1). INCI Decoder-Batyl Alcohol teaches that batyl alcohol is an emulsion stabilizer and emollient (pg. 1).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1-3 and 5, 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 moisturizers and thickeners used in cosmetics. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 7/7/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the Iwama and Nguyen references have been considered but are moot because the new ground of rejection does not rely on the Iwama or Nguyen references for any teaching or matter specifically challenged in the argument.
On page 5, Applicant argues that the inventive composition is unexpectedly particularly stable for 1 month at 50oC and for 3 months at 45oC. This is not found persuasive. In response, 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 results amounts to emulsion stability for 1 month at 50oC and for 3 months at 45oC only when the emulsion contains polyglyceryl-2 stearate and hydroxypropyl methyl cellulose stearoxy ether. However, as described in the obviousness rejection above, Thibodeau teaches O/W emulsions [0053] produced from waxes comprising polyglyceryl-2 stearate, glycerol stearate, and pure stearyl alcohol [0088]. The composition may comprise a thickener such as hydroxyethyl cellulose or hydroxypropyl cellulose [0077]. The composition can also include a moisturizer [0076]. The resulting emulsion is stable for at least 1 month at about 50oC [0067]. Furthermore, Yanai et. al. (Journal of Dispersion Science and Technology, pg. 40-45, publication year: 2017) teaches that that the introduction of hydrophobic stearyl oxy-hydroxypropyl groups to higher molecular weight hydroxypropyl methyl cellulose provides greater protective colloidal effects to emulsion than original hydroxypropyl methyl cellulose. Emulsions prepared with hydroxypropyl methyl cellulose stearoxy ether showed greater stability (pg. 45, Conclusion). Therefore, it would have been obvious to one of ordinary skill in the art that a composition that comprises polyglyceryl-2 stearate and hydroxypropyl methyl cellulose stearoxy ether would have greater stability than a composition that comprises unmodified hydroxypropyl methyl cellulose.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to increased stability of the emulsion at elevated temperatures; therefore the differences are of practical and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The amended claim 1 embraces any ester of a fatty acid of 16 to 22 carbon atoms and glycerin and any monohydric alcohol of 16 to 22 carbon atoms, any compound having at least 16 to 22 carbon atoms and no phosphorous atom, and any cellulose thickener comprising an alkyl group of 10 to 30 carbon atoms as well as any amount of components A, B and C. In order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate emulsion stability for each and every species of the claim at each and every amount of each claimed species. However, the evidence of unexpected results is limited to a single concentration of a single species of each component A, B, and C. Therefore, the evidence of unexpected results is not commensurate in 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.
Response to Declaration
Declarant’s arguments filed 7/7/2026 have been fully considered but they are not persuasive.
On page 3, Declarant argues that the presence of polyglyceryl-2 stearate and of a cellulosic thickener as recited by the amended claim 1 is essential to achieve good stability at 45oC and 50oC. This is not found persuasive. As described in the response to arguments above, while the data presented in the declaration do demonstrate the criticality of polyglyceryl-2 stearate and hydroxypropyl methyl cellulose stearoxy ether to the stability of the emulsion at elevated temperatures, these results are not unexpected in view of the teachings of Thibodeau and Yanai. Furthermore, the evidence of unexpected results is not in commensurate scope with the claims and the applicant has provided no side-by-side comparison to the closest prior art to establish unexpectedly superior performance. Therefore, the evidence of unexpected results is not persuasive.
Conclusion
No claims are allowed.
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
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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