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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 1, 2026 has been entered.
Claims 1, 2 and 4-14 are pending.
Claim 3 is cancelled.
Claim 1 is currently amended.
Claims 13 and 14 are new.
Claims 1, 2 and 4-14 as filed on May 1, 2026 are under consideration.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim rejections under 35 USC 102(a)(1) by Konishi are withdrawn.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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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.
Claims 4, 5, 8 and 14 are 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.
Claim 5 recites the composition further comprises (F) 0.1 to 20 wt% diphenylsiloxy phenyl trimethicone, however, claim 1 as currently amended from which claim 5 depends recites (F) 0.1 to 20 wt% diphenylsiloxy phenyl trimethicone. Claim 5 fails to further limit claim 1 and claim 5 omits the relationship between (A) and (F) newly required by claim 1.
Claim 8 recites (A) is swollen with its own weight or more of an oil other than (C), however, claim 1 as currently amended from which claim 8 depends recites (A) is swollen with part of all of component (F). Claim 8 omits the swelling oil of claim 1.
New claim 14 recites water and (D) components other than water, however, claim 1 from which claim 14 depends recites (D) is an aqueous component. Because (D) cannot be components other than water because an aqueous component minimally requires water, claim 14 fails to include all of the limitations of claim 1. Additionally, because the range of claim 14 extends outside the range of claim 1, claim 14 fails to include all of the limitations of 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)
With regard to the maintained rejection over claim 4, Applicant’s repeated and expanded arguments at pages 4-5 of the Remarks have been fully considered but they remain unpersuasive. Applicant has already been advised that claim 4 recites a different embodiment of composition than does claim 1. In the limit when the aqueous component of claim 1 does not comprise additional ingredients the aqueous component must comprise 40 to 90 wt% water. Claim 4 is limited to water and is not properly further limiting of that which is claimed. Therefore, the rejection is properly maintained and new grounds of rejection are applied infra 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 and 7-14 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) in view of Udagawa et al. (JP 2019-014670 A, published January 31, 2019, as evidenced by the Google translation, of record) and Inaba (US 2013/0287824, published October 31, 2013).
Konishi teaches a water break-type sunscreen cosmetic (makeup) product comprising (title; abstract; claims; Examples, in particular Example 7):
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 or/and inter alia water-soluble polymer compounds (page 3, top half, 1st and 2nd full paragraphs under “[(C) component]”), as required by instant claims 4, 13, 14,
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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). 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 partially cross-linked polyether-modified silicones such as (dimethicone / (PEG-10 / 15)) crosspolymer are marketed as swelling products containing silicone oil and other oils (page 2, 2nd full paragraph under “[(A) component]”).
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 9-14, 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.
Konishi does not specifically teach component (A) is swollen with part or all of component (F) as required by claim 1 as currently amended.
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 as required by claim 8.
These deficiencies are made up for in the teachings of Udagawa and Inaba.
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), silicone oils such as methylphenylpolysiloxane or hydrocarbon oils (page 2, 3rd full paragraph). The elastomer comprises 4 to 40 wt% of the gel (page 2, 3rd full paragraph).
Inaba teaches oil-based cosmetics comprising 1 to 7.5 wt% partially cross-linked polyether modified silicones inclusive of dimethicone/(PEG-10/15) crosspolymer and 3 to 75 wt% low viscosity silicone oil with a viscosity of 1 to 100 mm2/s inclusive of diphenylsiloxyphenyl trimethicone (title; abstract; claims; paragraphs [0020], [0026]). The low viscosity oil may be included as a swelling oil for the partially cross-linked polyether modified silicones (paragraph [0028]).
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 be swollen in a silicone oil inclusive of diphenylsiloxyphenyl trimethicone as taught by Inaba because cross-linked polyether-modified silicones are conventionally dispersed / swollen in oils. There would be a reasonable expectation of success because Konishi embraces the presence of silicone oils inclusive of diphenylsiloxyphenyl trimethicone in amounts ranging from 5 to 30 wt% and because Udagawa teaches the only requirement for a swelling oil is that it be liquid.
Regarding claim 8, 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 swelling products containing silicone oil and other oils.
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) in view of Udagawa et al. (JP 2019-014670 A, published January 31, 2019, as evidenced by the Google translation, of record) and Inaba (US 2013/0287824, published October 31, 2013) as applied to claims 1, 2, 4, 5 and 7-14 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, Udagawa and Inaba have been described supra.
They do 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.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s repeated arguments at pages 7-8 of the Remarks have been fully considered but they are not persuasive.
Applicant’s maintained position that Konishi does not meet original claim 3 is unpersuasive. As set forth in the Office Actions of record, Konishi anticipates original claim 3.
Applicant’s repeated citation to the Examples of the present application remains unpersuasive for reasons of record. 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 allegation of results beyond anything that could be predicted with KSG-270 is acknowledged but is not found persuasive because (1) KSG-270 is not claimed, (2) it is known in the art to swell crosspolymers in silicone oils inclusive of diphenylsiloxyphenyl trimethicone, and (3) Table 1 of the specification has limited nexus with the genus of compositions 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.
Kamata (JP 2014-201569 A, as evidenced by the Google translation) teaches O/W sunscreen cosmetics comprising a low viscosity silicone oil that is diphenylsiloxyphenyl trimethicone (title; abstract; claims).
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
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