DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 26 May 2026, is acknowledged.
Claims 1, 6-7, and 11 have been amended.
Claims 2 and 8 have been cancelled.
New claim 16 has been added.
Claims 1, 3-7, and 9-16 are pending in the instant Office Action.
Newly submitted claim 16 is directed to a species that is independent or distinct from the species originally elected for the following reasons: In the Response to Election/Restriction received on 18 December 2025, Applicant elected the separation inhibitor (C) to be an ester of polyhydric alcohol and condensed hydroxy fatty acid (subgenus C-2 in amended claim 1) without traverse. Newly submitted claim 16 further limits subgenus C-2 to be selected from a Markush group that was not previously recited in the claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 16 is withdrawn from consideration as being directed to a non-elected species. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 1, 3-7, and 9-15 are under consideration in the instant Office Action, to the extent of the following previously elected species:
the specific oil containing a phytosterol derivative is an oil containing steradiene;
the specific liquid silicone oil is dimethicone;
the specific separation inhibitor is an ester of a polyhydric alcohol and a condensed hydroxy fatty acid;
the specific powder is a coloring powder; and
the specific solid oil and/or lipophilic gelling agent is a synthetic wax and/or dextrin palmitate/2-ethylhexanoate.
Objections Withdrawn
Objections to Specification
Applicant’s amendment to the title, submitted on 26 May 2026, has overcome the objection set forth in the Office Action mailed on 23 January 2026. Accordingly, the relevant objection is withdrawn.
Objections to Claims
Applicant’s amendment to claim 7, submitted on 26 May 2026, has overcome the objection to the claim set forth in the Office Action mailed on 23 January 2026. Accordingly, the relevant objection is withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejection of claim 6 under 35 U.S.C. § 112 is withdrawn in view of Applicant’s amendment to the claim. The rejections of claims 2 and 11 under 35 U.S.C. § 112 are rendered moot in view of Applicant’s cancellation of claim 2.
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 2 and 8 under 35 U.S.C. § 103 is rendered moot in view of Applicant’s cancellation of the claims. The rejections of claims 1, 3-7, and 9-15 under 35 U.S.C. § 103 are withdrawn and made anew.
New Grounds of Objection
Claim Objections
Claim 11 is objected to for reciting “the separation inhibitor (C) comprises an ester of polyhydric alcohol and condensed hydroxy fatty acid”. Claim 1, from which claim 11 has been amended to depend, already recites an ester of polyhydric alcohol and condensed hydroxy fatty acid to be sub-genus C-2. To improve consistency, Applicant should amend claim 11 to recite “the separation inhibitor (C) comprises (C-2) an ester of polyhydric alcohol and condensed hydroxy fatty acid” (bold added for emphasis).
Appropriate correction is required.
Rejections Made Anew
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 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, 3-7, and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kose Corp. (Japanese Patent No. JP 2014-177453 A, published on 25 September 2014, provided by Applicant in the IDS filed on 22 June 2023, references to English translation, hereafter referred to as Kose) in view of Yokozeki Yushi Kogyo KK (Japanese Patent No. JP 2018-131404 A, published on 23 August 2018, provided by Applicant in the IDS filed on 22 June 2023, references to English translation, hereafter referred to as Yokozeki).
Kose teaches oil-based cosmetic compositions with durable colors, good gloss, and stability, comprising silicone compounds, one or more liquid silicone oils, organopolysiloxane polymer, and colorants (Abstract). In addition to the components above, Kose teaches their composition to comprise a hydrocarbon and/or ester oil having a refractive index >1.47 at 25 °C, which in one embodiment is dimerlinoleic acid di(phytosteryl/isostearyl/cetyl/stearyl/benehyl), which is equivalent to an oil containing a phytosterol derivative (A) in instant claim 1 (pg. 4, lines 38-41). The hydrocarbon and/or ester oil is taught to be present in an amount from 1-30% w/w, which enables the composition to have durable gloss and prevents secondary-adhesion following application by the user (pg. 4, lines 46-47). The one or more liquid silicone oils in the composition may be dimethylpolysiloxane, which is equivalent to dimethicone, the component (B) recited in the instant claims (pg. 3, line 32), and may be present in an amount from 10-90% w/w (pg. 3, line 18). The ranges taught by Kose result in a ratio of component (A): component (B) from 1/90 to 3/1, which significantly overlaps with the range recited in instant claim 6.
Kose further teaches the composition to comprise one or more lipophilic surfactants, including polyoxyethylene hydrogenated castor oil, the ester of the polyhydric alcohol polyethylene glycol and the condensed hydroxy fatty acid hydrogenated castor oil (pg. 4, lines 25-28) and a dipentaerythritol fatty acid ester (pg. 6, Example 10), which both fall within the elected genus as evidenced by instant spec. para. [0032-0033]. The lipophilic surfactant is taught to be present in an amount from 0.01-15% w/w (pg. 4, line 36). The colorant is taught to be inorganic, such as TiO2, ZnO, or Al2O3, or organic, such as red No. 226, blue No. 404, or yellow No. 401, and are present in an amount from 0.001-40% w/w (pg. 4, lines 7-23). In addition to the above components, Kose teaches that oily components may be present, including Fischer-Tropsch wax, which is a synthetic wax as evidenced by para. [0052] of the instant spec. (pg. 4, lines 48-49 and 52-55). Finally, Kose teaches that the cosmetic can be formulated as a liquid, paste, or solid and is “substantially free of water”, with any water content ≤0.1% w/w (pg. 5, lines 5-9). These teachings are interpreted as an oil-in-oil emulsion cosmetic composition.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the quantities of oil containing a phytosterol derivative, liquid silicone oil, and separation inhibitor, as well as the ratio recited in instant claim 6. In each instance, the range of values taught by Kose either encompasses or significantly overlaps with the recited range and therefore renders them prima facie obvious.
Kose does not teach the oil containing a phytosterol derivative to contain the specific derivative steradiene. This deficiency is offset by the teachings of Yokozeki.
Yokozeki teaches a transparent oily composition for topical skin application that contains a phytosterol derived from vegetable oil (Abstract). Phytosterols are taught to be components of vegetable oils, such as soybean and rapeseed oil, which are useful in cosmetic compositions, in part due to their ability to impart gloss (pg. 1, final two para.). In particular, the phytosterol derivative steradiene is found to have desirable properties for use in cosmetic compositions that are applied to the skin of users, including imparting “excellent gloss” (pg. 2, lines 10-13). In addition, Yokozeki teaches steradiene to be “superior in safety” due to its derivation from vegetable oil, to impart UV-C absorption and moisturizing abilities to compositions, and for being easy to handle in cosmetic compositions (pg. 2, lines 19-23 and pg. 8, lines 21-26). The oil containing steradiene is taught to have a refractive index of ≥1.50 at 40 °C and is a liquid at 25 °C (pg. 7, lines 18-24). Steradiene is taught to be suitable for use in emulsions in amounts from 1-40% w/w, and is preferably present in an amount of ≥95% w/w of the oil in the composition (pg. 8, lines 28-36 and Abstract).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Yokozeki to use oil comprising steradiene in the invention of Kose because combining prior art elements according to known methods to impart a known benefit yields predictable results. Kose teaches an oil-based cosmetic composition comprising an oil containing phytosterol derivatives, dimethicone, and an ester of a polyhydric alcohol and a condensed hydroxy fatty acid in amounts that significantly overlap with those recited in the instant claims, as well as coloring powders and a synthetic wax. In view of the teachings of Yokozeki, an ordinary artisan would be motivated to substitute oil containing steradiene for the oil containing dimerlinoleic acid di(phytosteryl/isostearyl/cetyl/stearyl/benehyl) because Yokozeki teaches steradiene to impart properties to cosmetic compositions that the ordinary artisan would identify as desirable and to be safe and stable in cosmetic compositions. The quantity of oil containing steradiene taught by Yokozeki significantly overlaps with the quantity of oil containing phytosterol derivatives taught by Kose, and one or ordinary skill would reasonably expect the substitution of oil containing steradiene to produce a stable composition with the desired properties. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-14 in view of the teachings of Kose and Yokozeki.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kose (Japanese Patent No. JP 2014-177453 A, published on 25 September 2014, provided by Applicant in the IDS filed on 22 June 2023, references to English translation) in view of Yokozeki (Japanese Patent No. JP 2018-131404 A, published on 23 August 2018, provided by Applicant in the IDS filed on 22 June 2023, references to English translation) as applied to claims 1-14 above, and further in view of Yamasaki et al. (U.S. Patent No. 9,987,210 B2, published on 5 June 2018, hereafter referred to as Yamasaki).
Kose and Yokozeki have been described above, and particularly relevant to claim 15, Kose teaches that a strong cosmetic film is desirable following application (pg. 2, lines 11-16 and 35) and that thickness and high viscosity are important to the film (pg. 3, lines 1-8).
Kose and Yokozeki do not teach the inclusion of dextrin palmitate/2-ethylhexanoate as a thickening agent. This deficiency is offset by the teachings of Yamasaki.
Yamasaki teaches a cosmetic conditioning oil composition containing one or more oils and an oil thickener which improves conditioning benefits when applied to the hair and/or skin (Abstract). The composition of Yamasaki is taught to form a thin lubrication film following application which can provide “improved conditioning benefits” while resisting removal via rinsing due to the oil thickener (col. 2, lines 35-50). The thickener of Yamasaki’s invention is taught to be compatible with natural and synthetic oils, including dimethicone (col. 3, lines 9-10 and 28). In one embodiment, the preferred oil thickener is dextrin palmitate/ethylhexanoate, with the Tradename Rheopearl TT® (col. 4, lines 35-39 and Examples 2-3, 6, and 9).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to use dextrin palmitate/ethylhexanoate as a thickener in the composition rendered obvious by the teachings of Kose and Yokozeki because combining prior art elements according to known methods to impart a known benefit yields predictable results. Kose and Yokozeki rendered obvious an oil-based cosmetic composition comprising an oil containing steradiene, dimethicone, and an ester of a polyhydric alcohol and a condensed hydroxy fatty acid in amounts that significantly overlap with those recited in the instant claims, as well as coloring powders and a synthetic wax. In view of the teachings of Yamasaki, a person of ordinary skill would be motivated to add dextrin palmitate/ethylhexanoate to the composition as a thickener because Yamasaki teaches the thickener to form films that provide improved conditioning while resisting removal via rinsing and that the thickener is compatible with natural and synthetic oils, including dimethicone. An ordinary artisan would recognize that the improved conditioning properties are desirable in a cosmetic composition, would desire a component that improves film formation and durability, and would be motivated to use dextrin palmitate/ethylhexanoate in the composition rendered obvious above because Yamasaki teaches that it is compatible with dimethicone, the specific liquid silicone oil taught by Kose. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 15 in view of the teachings of Kose and Yokozeki and further in view of the teachings of Yamasaki.
Response to Arguments
The Applicant’s arguments, filed on 26 May 2026, have been fully considered but are not persuasive.
On pg. 7 of the remarks Applicant argues that the Kose reference does not teach that the silicone oil of their invention is incompatible with oil containing a phytosterol derivative. Regarding the teaching of incompatibility, “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). See MPEP § 2145.II. Kose teaches an oil-based cosmetic comprising the elected species of dimethicone mixed with an oil containing a phytosterol derivative and a separation inhibitor, described as a surfactant by Kose, that is the elected species of an ester of a polyhydric alcohol and a condensed hydroxy fatty acid (vide supra). The lack of teaching incompatibility between two components by Kose does not obviate the teaching of a composition comprising the elected dimethicone and ester of a polyhydric alcohol and a condensed hydroxy fatty acid mixed with an oil containing a phytosterol derivative and the argument is found unpersuasive.
In addition, Kose teaches the inclusion of a surfactant to improve the uniformity of their composition (pg. 4, lines 25-26). While Kose does not explicitly state that the surfactant is used to make incompatible components compatible, surfactants are known in the art to be used to combine otherwise immiscible components into a uniform mixture, and “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). See MPEP § 2144.01. The inclusion of a surfactant in the composition is considered an implicit disclosure that some components may be incompatible and that the surfactant is present to address potential incompatibility.
From para. 3-4 of pg. 7, Applicant cites Samples 3-1 to 3-3 in Table 1 of the instant spec. to argue that Kose teaches “phenyl-modified silicone oils…are compatible with [oil containing a phytosterol derivative] (A)”. The silicone oil used in Sample 3-1 is a dimethicone having a kinematic viscosity at 25 °C of 2 mm2/s (as evidenced by para. [0103] of the instant spec.) and is taught by Kose as one embodiment of the dimethicone in their invention (Kose, pg. 3, lines 9-10). However, Applicant appears to have missed that Kose teaches other embodiments of the dimethicone, such as one with kinematic viscosities of 20, 100, 1000, and 3000 mm2/s (Kose, pg. 3, lines 9-10) which Applicant discloses as being incompatible in Samples 2-1 to 2-4 (as evidenced by Table 1 and para. [0095-0101] of the instant spec.). As a result, Applicant’s argument is not found to be persuasive.
In response to Applicant's argument in para. 1 of pg. 8 that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Kose, prior to the filing of the instant application, taught the use of dimethicone, an ester of a polyhydric alcohol and a condensed hydroxy fatty acid, and an oil containing a phytosterol derivative in an oil-based cosmetic composition. No information was gleaned from the Applicant’s disclosure to arrive at this invention and the argument of improper hindsight reasoning is not persuasive.
Applicant additionally referred to the phrase “pick-and-choose” from the interview held on 16 April 2026 in para. 1 of pg. 8 and states the phrase was used to refer to “the many types of dimethylpolysiloxanes and phenyl-modified silicone (B) disclosed in Kose and the selection thereof to assertedly render the claim obvious”. Applicant appears to have misunderstood the use of the phrase “pick-and-choose” in relation to the rejection under 35 U.S.C. § 103 made in the previous Office Action. Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). The statement to which Applicant is referring from the interview held on 16 April 2026 was referring to the instant invention “picking and choosing” elements taught by the prior art, in this instance the Kose reference, and that a demonstration of superior and/or unexpected results is one potential path to overcoming the obviousness rejection. However, as Applicant explicitly stated in the final para. of pg. 9, an argument of superior and/or unexpected results is not being made and the argument is found to be unpersuasive.
In para. 2 of pg. 8, Applicant argues that “the claimed incompatibility is clearly not inherent…as demonstrated by, e.g., Table 1” (emphasis quoted). The support from Table 1 of the instant spec. is not apparent and Applicant has not provided an explicit argument that the incompatibility is not inherent to the silicone oil, therefore the argument is found to be unpersuasive.
Applicant directs the reader to Table 3 in the final para. of pg. 8 and argues that a composition comprising “a phenyl-modified silicone oil according to Kose” produces a cosmetic composition with “poor results”. However, the silicone oil to which Applicant is referring is one embodiment taught by Kose; Applicant appears again to have missed the embodiment taught by Kose that is a dimethicone with a kinematic viscosity of 1000 mm2/s (Kose, pg. 3, lines 9-10), identical to the silicone oil in Table 3 of the instant spec. and on pg. 9 of the remarks. As a result, Applicant’s argument is not found to be persuasive.
The penultimate para. of pg. 8 states that “Kose does not recognize that the claimed incompatibility of the silicone oil with the oil containing a phytosterol derivative (A) has any effect on cosmetic properties” and the final para. of pg. 9 states that “the Examiner has not satisfied the burden of showing that one of ordinary skill in the art would appreciate that Kose teaches that a silicone oil must be incompatible with oil containing a phytosterol derivative”. As stated above and repeated here in brief, “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). See MPEP § 2145.II. The lack of teaching incompatibility between two components by Kose does not obviate the teaching of a composition comprising the elected dimethicone and ester of a polyhydric alcohol and a condensed hydroxy fatty acid mixed with an oil containing a phytosterol derivative. Further, the burden of showing “one of ordinary skill in the art would appreciate that Kose teaches that a silicone oil must be incompatible with oil containing a phytosterol derivative” does not lie with the Office and the argument is found unpersuasive.
In the section spanning pg. 10 titled “Separation Inhibitor”, Applicant argues that sorbitan sesquioleate is not a condensed hydroxy fatty acid “as noted in the interview [on 16 April 2026]” and defines a condensed hydroxy fatty acid as “a compound formed by the esterification of two identical fatty acids” in a dehydration condensation reaction. Regarding sorbitan sesquioleate, Kose teaches the species as one embodiment of surfactants and teaches other embodiments that render obvious the preferred embodiments disclosed in instant spec. para. [0032-0033] (vide supra).
Regarding Applicant’s definition of a condensed hydroxy fatty acid, this definition does not have support in the original disclosure. The closest disclosure is found in instant spec. para. [0032], which states that a condensed hydroxy fatty acid is “a condensation product of a hydroxy fatty acid”, wherein the species other than the hydroxy fatty acid participating in the condensation reaction is not specified, and that “[a] degree of condensation of the product is usually greater than 1”, which allows for degrees of condensation that are exactly 1 or less than 1. In addition, there is not a broadly accepted plain meaning for a “condensed hydroxy fatty acid” in the art. Therefore, the phrase is given the broadest reasonable interpretation in light of the specification, as described in MPEP § 2111, and the polyoxyethylene hydrogenated castor oil and a dipentaerythritol fatty acid ester taught by Kose (vide supra) are considered to fall within the elected genus in view of the preferred embodiments outlined in instant spec. para. [0032-0033]. As a result, Applicant’s arguments are not found to be persuasive.
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 Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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