ice 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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated January 13, 2026 is acknowledged.
Claims 1, 2 and 4-12 are pending.
Claim 3 is cancelled.
Claims 1 and 2 are currently amended.
Claims 8-12 are new.
Claims 1, 2 and 4-12 as filed on January 13, 2026 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, some of the previous claim rejections under 35 USC 112(d) are withdrawn.
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Maintained Grounds of Rejection: Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites component (D) is 38 to 85 wt% water, however, claim 1 from which claim 4 depends recites component (D) is 40 to 90 wt% aqueous component (which encompasses water). Because claim 4 recites a different embodiment of component (D) and because the range of claim 4 extends outside the range of claim 1, claim 4 fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments: Claim Rejections - 35 USC § 112(d)
Applicant’s arguments at page 5 of the Remarks have been fully considered but they are not persuasive.
Applicant’s position that an aqueous component of claim 1 may comprise additional ingredients such as lower alcohols citing to paragraph [0021] of the instant specification is acknowledged but not found persuasive because the content of the specification is not read into the claims, because the claims during examination must be given their broadest reasonable interpretation (see MPEP 2111) and because in the limit when the aqueous component of claim 1 does not comprise additional ingredients such as lower alcohols the aqueous component must comprise 40 to 90 wt% water. Claim 4 is not properly further limiting of that which is claimed. Further, Applicant’s claim interpretation is flawed. Arguendo, “[w]hen the aqueous component is 40%, the water content is selected to be 38 to 40 wt%” as reasoned by Applicant is incorrect because claim 4 actually states component (D) is water. Applicant may consider, for example, re-drafting claim 4 to further limit “the aqueous component” as apparently intended.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 7, 9, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Konishi (WO 2019/004048 A1, published January 3, 2019, IDS reference filed November 13, 2023, as evidenced by the Google translation, of record).
Regarding claims 1, 2, 4, 5, 7, 9 and 11
Konishi teaches a water break-type sunscreen cosmetic (makeup) product and exemplifies an embodiment comprising (title; abstract; claims; pages 8 and 9, Example 7):
3.5 wt% crosslinked polyether modified silicone,
0.2 wt% alkyl branched polyether modified silicone (non-crosslinked),
5 wt% ethylhexyl methoxycinnamate (UV absorber),
2 wt% ethylhexyl salicylate (UV absorber),
0 wt% dimethylpolysiloxanes,
3 wt% diphenylsiloxyphenyl trimethicone,
q.s. or 52.8 wt% water, and
15 wt% fine particle zinc oxide (powder, metal oxide, inorganic).
Konishi teaches the crosslinked polyether modified silicone is KSG-330 which comprises the crosslinked product and triethylhexanoin (page 9, Example 7). Alternatives to KSG-330 include KSG-210 which is (dimethicone / (PEG-10 / 15)) crosspolymer which is a swelling product containing silicone or other (non-silicone) oil and include dimethicone / (PEG-10 /15) crosspolymer (page 2, lower half, 2nd full paragraph under “[(A) component]”). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). See MPEP 2131.02 III.
Regarding claim 12
Konishi teaches water break refers to a phenomenon in which a water-in-oil type emulsion is broken by a shear force at the time of applying a cosmetic, and an aqueous phase as an internal phase pops out as water droplets (page 2, 3rd full paragraph).
The above teachings therefore anticipate the claims.
Response to Arguments: Claim Rejections - 35 USC § 102
Applicant’s arguments at pages 6-8 of the Remarks have been fully considered but they are not persuasive.
Applicant’s argument that KSG-330 differs from KSG-210 is unpersuasive because it is self-evident from Konishi that KSG-330 contains a different crosspolymer than does KSG-210.
Applicant’s citation to paragraph [0005] of the instant specification in support of the apparent argument that crosspolymers such as those sold under the name KSG-330 yield a heavier touch is unpersuasive because these crosspolymers are not excluded from the claimed compositions.
Applicant’s argument that KSG-210 comprises dimethicone is unpersuasive because such is disclosed in Konishi. The rejection has been updated as necessitated by Applicant’s amendment to clarify that the silicones of Konishi need not be sourced from Shin-Etsu. That is, Konishi teaches dimethicone/(PEG-10/15) crosspolymer per se as component (a).
Applicant’s citation to paragraph [0012] of the instant specification in support of the apparent argument that dimethicone/(PEG-10/15) crosspolymer does not have branched chains is unpersuasive because Konishi teaches the same dimethicone/(PEG-10/15) crosspolymer as instantly claimed.
Therefore, the rejection over Konishi is properly maintained in modified form as necessitated by Applicant’s amendments.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 2, 4, 5, 7 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Konishi (WO 2019/004048 A1, published January 3, 2019, IDS reference filed November 13, 2023, as evidenced by the Google translation, of record).
The teachings of Konishi have been described supra with regard to the anticipation of claims 1, 2, 4, 5, 7, 9, 11 and 12. Konishi further teaches a water break-type sunscreen cosmetic (makeup) product comprising (title; abstract; claims; Examples):
0.1 to 4 wt% of partially cross-linked polyether-modified silicones such as (dimethicone / (PEG-10 / 15)) crosspolymer (page 2, lower half, 2nd full paragraph under “[(A) component]”),
0.5 to 2 wt% of non-cross-linked silicone activators (surfactant) (section “[(B) component]” bridging pages 2 and 3; page 5, item (5) identifying components (a) and (b) as surfactants), as required by instant claim 7,
50 to 85 wt% aqueous component comprising 5 to 85 wt% water (page 3, top half, 2nd full paragraph under “[(C) component]”), as required by instant claim 4,
0.1 to 21 wt% hydrophobized UV scattering agent (powder) inclusive of a metal oxide having an average particle size of 200 nm or less (finely divided in defined at paragraph [0031] of the instant specification) (page 3, lower half, 2nd full paragraph under “[(D) component]”), as required by instant claims 2, 9, and
5 to 30 wt% of an oil having a viscosity of 1 to 30 mm2/s at 25 ºC inclusive of silicone oils inclusive of diphenylsiloxyphenyl trimethicone (page 4, top half, 2nd full paragraph under “[(E) Ingredient]”; Example 7), as required by instant claim 5.
In the case where the claimed ranges "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). See MPEP 2144.05. Water break refers to a phenomenon in which a water-in-oil type emulsion is broken by a shear force at the time of applying a cosmetic, and an aqueous phase as an internal phase pops out as water droplets (page 2, 3rd full paragraph), as required by instant claim 12.
The composition may optionally further comprise powders other than component (d) inclusive of pigments inclusive of silicone-treated color pigments in an amount from 0.5 to 15 wt% or/and UV absorbers (page 4, middle, 3rd full paragraph under “[(F) component]”; paragraph bridging pages 4 and 5; page 5, item (6); Examples), as required by instant claim 9. The sun cream of Example 7 comprises 5 wt% ethylhexyl methoxycinnamate and 2 wt% ethylhexyl salicylate. The compositions may be a W/O emulsion (page 5, 1st paragraph after item (7)).
Regarding the amount of ultraviolet absorber (B) as required by claims 1, 2, 4, 5, 7 and 9-12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the water break-type sunscreen cosmetic products of Konishi to further comprise organic UV absorbers because Konishi embraces the presence of organic UV absorbers in the sunscreen cosmetic products and it would have been obvious to include such organic UV absorbers in an amount of 7 wt% because Konishi exemplifies an embodiment of sunscreen product comprising 5 wt% ethylhexyl methoxycinnamate and 2 wt% ethylhexyl salicylate. Additionally or/and alternatively, it would have been prima facie obvious to optimize the content of additional organic UV absorbers in the sunscreen products of Konishi in order to provide the desired UV protection. It is prima facie obvious to optimize such result-effective variables within prior art conditions or through routine experimentation. See MPEP 2144.05.
Regarding the exclusion (0 wt%) of cyclic or linear dimethylsiloxanes as required by instant claims 1, 11 and the inclusion (up to 1.9 wt%) of cyclic or linear dimethylsiloxanes as required by instant claims 1, 10, while Konishi exemplifies dimethylpolysiloxanes and cyclopentasiloxane as alternatively suitable embodiments of component (e), the compositions of Konishi require neither. Optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123. Additionally or/and alternatively, (dimethicone / (PEG-10 / 15)) crosspolymer is commercially available under the tradename KSG-210 (page 2, lower half, 2nd full paragraph under “[(A) component]”) which comprises about 25% of the crosspolymer and about 75 wt% 6 cSt PDMS (1 cSt = 1 mm2/s) (page 6, Note 1 under 2nd table) which implies the compositions may optionally comprise about 3 * (0.1 to 4 wt%) linear dimethylsiloxanes presuming the 0.1 to 4 wt% of component (a) is specified as dry weight or about 0.75 * (0.1 to 4 wt%) linear dimethylsiloxanes presuming the 0.1 to 4 wt% of component (a) is specified as a solvated gel. Regarding the weight ratio (C)/(B) of less than 0.5 as required by instant claim 10, Konishi renders obvious a ratio of 0 when C = 0 and Konishi renders obvious ratios about (0.3 to 12) / 7 presuming component (a) is specified as dry weight and presuming the organic UV absorbers of Konishi read on component (B) as instantly claimed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Konishi (WO 2019/004048 A1, published January 3, 2019, IDS reference filed November 13, 2023, as evidenced by the Google translation, of record) as applied to claims 1, 2, 4, 5, 7 and 9-12 above, and further in view of O’Lenick et al. “The quest for D5 replacements,” Household and Personal Care TODAY 3:40-43, 2009, of record.
The teachings of Konishi have been described supra.
Konishi does not teach 0.1 to 20 wt% ethyl methicone as required by claim 6.
This deficiency is made up for in the teachings of O’Lenick.
O’Lenick teaches ethyl methicone as a replacement for cyclomethicones inclusive of cyclopentasiloxane in cosmetics (title; abstract; page 43, lhc). Cyclomethicones have come under increased environmental scrutiny as have low molecular weight dimethicones because these dimethicones are often prepared using cyclotetrasiloxane (abstract; paragraph bridging pages 43 and 44).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute ethyl methicone as taught by O’Lenick for the optional cyclopentasiloxane or low viscosity dimethylpolysiloxane alternatively suitable embodiments of component (e) of Konishi because ethyl methicone is an art-recognized replacement for cyclomethicones inclusive of cyclopentasiloxane in cosmetics. One would have been motivated to do so because cyclomethicones and other low viscosity dimethylpolysiloxane substitutes have come under increased environmental scrutiny. The combined teachings of Konishi in view of O’Lenick therefore render obvious water break-type sunscreen cosmetic products comprising 5 to 30 wt% of an oil having a viscosity of 1 to 30 mm2/s at 25 ºC inclusive of silicone oils inclusive of diphenylsiloxyphenyl trimethicone or/and ethyl methicone.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Konishi (WO 2019/004048 A1, published January 3, 2019, IDS reference filed November 13, 2023, as evidenced by the Google translation, of record) as applied to claims 1, 2, 4, 5, 7 and 9-12 above, and further in view of Udagawa et al. (JP 2019-014670 A, published January 31, 2019, as evidenced by the Google translation).
The teachings of Konishi have been described supra.
Konishi does not teach component (A) is swollen with its own weight or more of an oil other than component (C) that is liquid at 25 ºC.
This deficiency is made up for in the teachings of Udagawa.
Udagawa teaches an oily cosmetic comprising a gel composition of an organopolysiloxane elastomer which is dispersed / swollen in an oil solution in advance and is partially or completely crosslinked by an oxyethylene group; exemplary elastomers include dimethicone / (PEG-10 / 15) crosspolymer and oils are not particularly limited so long as they are liquid (title; abstract; claims; page 2, 3rd full paragraph). Exemplary oils include methylpolysiloxane (dimethicone) or hydrocarbon oils (page 2, 3rd full paragraph). The elastomer comprises 4 to 40 wt% of the gel (page 2, 3rd full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the partially cross-linked polyether-modified silicones of Konishi inclusive of (dimethicone / (PEG-10 / 15)) crosspolymer to further comprise a liquid oil such as a hydrocarbon as taught by Udagawa in a total weight greater than the crosspolymer in order to swell the crosspolymer into a gel. There would be a reasonable expectation of success because Konishi teaches the dimethicone / (PEG-10 / 15)) crosspolymer may be sourced commercially as products comprising dimethicone.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments at pages 8-10 of the Remarks have been fully considered but they are not persuasive.
Applicant’s citation to the instant specification in support of an apparent allegation of an unexpected result is unpersuasive because the content of the specification has already been considered as part of the Graham analysis. Comparative Example 3 of Table 1 employs 3 wt% KSG-210. Although it is not entirely clear whether the 0.1 to 4 wt% of dimethicone / (PEG-10/15) crosspolymer embraced by Konishi is disclosed on a dry or wet basis, the instant claims likewise embrace an amount of 0.1 to 4 wt% and it is self-evident that amounts on the lower end of this range fall within the scope of the instant claims. There is also limited nexus of the exemplary compositions of Table 1 with the genus of compositions claimed. See MPEP 716 for information regarding allegations of secondary considerations.
Applicant’s statement that KSG-270 not equivalent to KSG-330 is unpersuasive because KSG-270 is an obvious variant of KSG-210 taught by Konishi and it is self-evident from Konishi that KSG-330 contains a different crosspolymer than does KSG-210. Furthermore, KSG-270 is not claimed.
Therefore, the rejections over Konishi are properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sakuta (JP 2006-213730, as evidenced by the Google translation) teaches cosmetics comprising a) a silicone compound and b) an oil agent except silicone; linear volatile silicones are known to irritate skin (title; abstract; claims; page 2).
Valverde (FR 3,045,325, as evidenced by the Google translation) teaches an emulsion comprising at least one emulsifying silicone elastomer inclusive of dimethicone /PEG-10/15-crosspolymer, hydrophobic coated pigments and less than 30 wt% of an oily phase comprising at least one silicone oil inclusive of caprylyl methicone and at least one liquid lipophilic organic UV filter (title; abstract; claims).
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 ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600