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 .
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.
Claim Status
Claims 1-11 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6 and 9-11, in the reply filed on 03/12/2026 is acknowledged.
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/12/2026.
Accordingly, claims 1-6 and 9-11 are examined on the merits herein.
Priority
The instant application claims foreign priority to EP22305611.0 filed on 04/26/2022 as reflected in the filing receipt dated on 05/10/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/25/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities:
Claim 1 recites the limitation “hiigh” in line 1, which is a typographical error and should read “high”.
Claim 1 recites the limitation “wherein the emulsion is stabilized by stabilizing system” in lines 3-4, which contains a grammatical error and should read “wherein the emulsion is stabilized by a stabilizing system”.
Claim 1 recites the limitation “(c) a polyglyceryl fatty acid ester” in line 7, which contains an extraneous space between the terms “(c)” and “a polyglyceryl fatty acid ester” which should be removed.
Claim 11 recites the limitation “a skin care or a makeup product”, which contains a grammatical error and should read “a skin care product or a makeup product”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-6 and 9-11 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 1 recites an emulsion comprising “at least 74% by volume of an aqueous internal phase” and an oily external phase. It is unclear how the emulsion can comprise an aqueous phase in a range of at least 74% by volume, which encompasses embodiments wherein the aqueous phase is present in an amount of 100% by volume, and also comprise an oily phase. Therefore, the scope of the claim is indefinite.
Claims 3-6 and 9-11 are rejected by virtue of their dependency on claim 1, as they do not resolve the ambiguity in question.
Claim 1 recites an emulsion comprising a stabilizing system representing ““at least 3.2% by weight of the emulsion” and aqueous and oily phases. It is unclear how the emulsion can comprise a stabilizing system in a range of at least 3.2% by weight, which encompasses embodiments wherein the stabilizing system is present in an amount of 100% by weight, and also comprise aqueous and oil components. Therefore, the scope of the claim is indefinite.
Claims 2-6 and 9-11 are rejected by virtue of their dependency on claim 1, as they do not resolve the ambiguity in question.
Claim 1 (line 7), claim 3 (line 3), claim 4 (lines 3-4, 7, and 10), claim 5 (lines 3-4), claim 6 (lines 3-4), and claim 10 (line 2) each recite limitations followed by the term “preferably”, which introduces a narrower statement of the range/limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claims are considered indefinite because there is a question or doubt as to whether the feature following the term is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting any limitation following the term “preferably” as merely exemplary of the remainder of the claim, and therefore not required.
Claims 2-6 and 9-11 are rejected by virtue of their dependency on claim 1, as they do not resolve the ambiguity in question.
Claim 4 recite the limitations “% by weight of lecithin”, “% by weight of sodium acrylate copolymer”, and “% by weight of polyglyceryl fatty acid ester”. It is unclear whether the mass unit represents the % by weight of the component relative to the total weight of the emulsion or relative to the weight of the stabilizing system. Based on the examples provided in Applicant’s instant specification, which comprise the stabilizing system components in combined amounts greater than 3.2% by weight of the total emulsion, and the fact that the combined amount of stabilizing system components as recited in the claim equals 3.2% by weight when considering the lowest end of each component range, the Examiner is interpreting the mass unit to represent the % by weight of the component relative to the total weight of the emulsion.
Claim 10 recites the limitation “composition…comprising active agents…”. The limitation lacks sufficient antecedent basis because the claim depends from claim 9, which does not recite active agents. The term “further” should be added to the claim so as to properly further limit claim 10. The Examiner recommends amending the claim to read “composition…further comprising active agents…”.
Claim 11 is rejected by virtue of its dependency on claim 10, as it fails to resolve the ambiguity in question.
Claim 10 recites the plural term “active ingredients” followed by the limitation “preferably vitamin C”, which is a singular component. Because of the inclusion of the “preferably” clause, it is unclear whether multiple active ingredients are required or whether only one active ingredient is required, which is preferably, but not required to be, vitamin C. Therefore, the scope of the claim is indefinite. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean that more than one active ingredient is required.
Claim 11 is rejected by virtue of its dependency on claim 10, as it fails to resolve the ambiguity in question.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foshan Wensente Intellectual Property Services Co. Ltd., hereinafter “Foshan” (CN107149559A; published: 09/12/2017; PTO-892) as evidenced by Beauty Society (webpage, <https://beautysociety.com/our-products/our-ingredients/>, p. 1-5; archived: 03/01/2021; PTO-892).
Foshan, throughout the reference, teaches a water-in-oil titanium dioxide dispersion comprising: 5 – 40 wt.% of titanium dioxide; 5 – 30 wt.% of an oil phase; 0.5 – 5 wt.% of one or more emulsifiers; 0.1 – 5 wt.% of one or more reverse emulsifiers; and water to balance (Abstract and Claims).
In an exemplary embodiment, the composition comprises: 5 wt.% titanium dioxide; 2 wt.% dioctyl carbonate; 3 wt.% isohexadecane; 0.5 wt.% cetyl PEG/PPG-10/1 polydimethylsiloxane; 5 wt.% SEPIPLUS 400; and 84.5 wt.% water (Paragraph 0071).
Regarding claims 1-3: While Foshan is silent as to the total volume of the composition, the reference teaches that the aqueous phase B comprises water and, optionally, polyols (Paragraphs 0022 and 0084). One of ordinary skill in the art would recognize that the density of water is approximately 1 g/mL and therefore its concentration in wt.% and vol.% are the same. For example, based on a 100 mL emulsion, the aqueous internal phase of Foshan, which only comprises water, would represent 84.5 vol.% of the water-in-oil emulsion, which lies within and thus reads on the instantly claimed ranges.
Because Foshan discloses a water-in-oil emulsion comprising at least 74% by volume of an aqueous internal phase, and an oily external phase, the prior art meets the limitation “high internal phase emulsion”.
Regarding the instantly claimed stabilizing system: Foshan teaches a limited list of 14 suitable reversing emulsifiers, including SEPIPLUS 400 and Lecigel™, which is composed of sodium acrylate copolymer and lecithin (Paragraphs 0054-0068). Therefore, an ordinarily skilled artisan before the effective filing date of the claimed invention could at once envisage an embodiment wherein Lecigel™ is the reversing emulsifier rather than SEPIPLUS 400.
Foshan further teaches a limited list of 16 suitable emulsifiers, including cetyl PEG/PPG-10/1 polydimethylsiloxane, polyglyceryl-3 diisostearate, and polyglyceryl-2 dihydroxystearate (Claim 8). Therefore, an ordinarily skilled artisan before the effective filing date of the claimed invention could at once envisage an embodiment wherein polyglyceryl-3 diisostearate and/or polyglyceryl-2 dihydroxystearate is the emulsifier rather than cetyl PEG/PPG-10/1 polydimethylsiloxane.
The Examiner notes that 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.
The combined amount of reversing emulsifier and emulsifier is 5.5 wt.%, which lies within and thus reads on the instantly claimed ranges.
Regarding the limitation “wherein the emulsion is stabilized by [a] stabilizing system”: Foshan teaches that the reversing emulsifier significantly enhances the stability of the water-in-oil system (Paragraphs 0040 and 0090), and thus clearly meets the limitation. Still, the Examiner notes that "[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Note: MPEP 2112.01.
Regarding claim 5: While Foshan is silent as to the total volume of the composition, the reference teaches that oil phase A comprises oily components (e.g., dioctyl carbonate and isohexadecane), emulsifier, and reversing emulsifier (Paragraph 0083). The only component in the composition other than the oil phase A and the aqueous phase B is titanium dioxide, which is recognized by Foshan as a powder and thus would not contribute to the volume of the composition (Paragraph 0004). Therefore, an ordinarily skilled artisan would reasonably conclude that, based on a 100 mL emulsion for example, the oil external phase of Foshan represents 15.5 vol.% of the water-in-oil emulsion, which lies within and thus reads on the instantly claimed range.
Regarding claim 6: The composition of Foshan does not require silicone compounds and thus meets the claim limitation.
Regarding claim 9: Foshan teaches that the composition can be added to a matrix or carrier to make a cosmetic such as a whitening cream, sunscreen, sun lotion, and mud film (Paragraph 0028 and Claim 10).
Regarding claims 10-11: In an exemplary embodiment, Foshan teaches that the mud film further comprises sodium hyaluronate and allantoin (Paragraph 0092-0093), which are active ingredients routinely used in skin care products as evidenced by Beauty Society (Pages 3 and 4). From the teachings of Foshan, an ordinarily skilled artisan before the effective filing date of the claimed invention could at once envisage an embodiment wherein the water-in-oil composition as described above is incorporated into a mud film (i.e. skin care product) comprising the active ingredients sodium hyaluronate and allantoin.
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.
Claims 1-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Foshan Wensente Intellectual Property Services Co. Ltd., hereinafter “Foshan” (CN107149559A; published: 09/12/2017; PTO-892), as applied to claims 1-3, 5-6, and 9-11 above, and as evidenced by Beauty Society (webpage, <https://beautysociety.com/our-products/our-ingredients/>, p. 1-5; archived: 03/01/2021; PTO-892).
Foshan anticipates the invention(s) of claims 1-3, 5-6, and 9-11 as discussed in detail above and further incorporated herein.
Regarding claim 4: While Foshan is silent as to the exact concentrations of lecithin and sodium acrylate, because the combined amount of two ingredients is 5 wt.% of the composition, each ingredient is necessarily present in an amount greater than 0 wt.% but less than 5 wt.%, which substantially overlaps and thus renders obvious the instantly claimed ranges for each ingredient. Regarding the instantly claimed amount of polyglyceryl fatty acid, because Foshan teaches that the emulsifier can range from 0.5 – 5 wt.%, which substantially overlaps and thus renders obvious the instantly claimed range, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the total concentration of polyglyceryl-3 diisostearate and/or polyglyceryl-2 dihydroxystearate within the prior art range in order to achieve a desired level of emulsification and dispersion.
It is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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). Given that Applicant did not point out the criticality of the individual concentrations of ingredients in the instantly claimed stabilizing system, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Claims 1-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Foshan Wensente Intellectual Property Services Co. Ltd., hereinafter “Foshan” (CN107149559A; published: 09/12/2017; PTO-892), as applied to claims 1-6 and 9-11 above, and further in view of Beauty Society (webpage, <https://beautysociety.com/our-products/our-ingredients/>, p. 1-5; archived: 03/01/2021; PTO-892).
Foshan as evidenced by Beauty Society teaches the invention(s) of claims 1-6 and 9-11 as discussed in detail above and further incorporated herein.
In the interest of compact prosecution, claim 10 is further rejected herein to demonstrate that the optional limitation wherein the instantly claimed active ingredients preferably comprise vitamin C is also obvious in view of the cited references.
Beauty Society teaches the use of ascorbate, a bioavailable non-acid vitamin C, in skin care to help improve elasticity and ascorbyl phosphate, a time-released vitamin C, to repair and reverse sun damage (Page 3).
Regarding claim 10: 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 mud film of Foshan by further including the ascorbate and/or ascorbyl phosphate of Beauty Society to create a skin care product that imparts advanced benefits to the skin, such as improved elasticity and/or repair and reversal of sun damage. An ordinarily skilled artisan would reasonably expect success in modifying the prior art composition as proposed because all ingredients are known in the art to be safe and useful for skin care.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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