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
Applicant’s amendment of 06/30/2026 is acknowledged. Claims 1, 3-6, and 10-11 are amended. Claims 1-11 are currently pending.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 01/12/2026. The election is maintained and claims 7-8 remain withdrawn. 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.
Previous Rejections/Objections
Applicant’s arguments filed 06/30/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are reiterated and only modified necessitated by Applicant’s amendment to the claims. They constitute the complete set of rejections and/or objections presently being applied to the instant application. Applicant’s arguments insofar as they pertain to the present grounds of rejections and/or objections are addressed herein.
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, 9, and 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 of 03/31/2026).
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 74% to 90% 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 claims 9 and 11: 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), which each read on the instantly claimed cosmetic composition in the form of a skin care product.
Response to Arguments
Applicant’s arguments submitted on 06/30/2026 with respect to rejections under 35 U.S.C. 102 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but were not found to be persuasive.
Applicant argues that Foshan does not disclose a composition comprising the specific combination of elements as recited in claim 1, nor does the reference disclose replacing SEPIPLUS 400 and cetyl PEG/PPG-10/1 polydimethylsiloxane in Example 1 with the claimed materials while retaining the other claim-relevant properties. The Examiner respectfully disagrees. MPEP 2131 explicitly states 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)) (emphasis added). In Kennametal, the Federal Circuit held that the prior art reference’s express contemplation of a claimed element provided sufficient evidence that a person skilled in the art would immediately envisage a claimed combination in view of a limited number of combination possibilities, even though the reference did not explicitly disclose the specific combination as arranged in the claim.
In the instant case, Foshan expressly contemplates the use of Lecigel (i.e., lecithin and sodium acrylate copolymer), among a limited number of reverse emulsifiers. Foshan also claims a finite number of suitable emulsifiers, including multiple polyglyceryl fatty acid esters (e.g., polyglyceryl-3 diisostearate and polyglyceryl-2 dihydroxystearate). Though Foshan describes an embodiment comprising SEPIPLUS 400 as the reverse emulsifier and PEG/PPG-10/1 polydimethylsiloxane as the emulsifier by way of example, the Examiner maintains that based on the limited number of possibilities disclosed by Foshan, an ordinarily skilled artisan could readily envision an embodiment wherein Lecigel is the reverse emulsifier and a polyglyceryl fatty acid ester is the emulsifier.
In response to Applicant’s argument that Foshan does not disclose replacing the reversing emulsifier or the emulsifier while maintaining claim-relevant properties, this argument was not found to be persuasive. Foshan discloses a limited number of specific emulsifiers and reverse emulsifiers, not broad or generic classes of these components. Clearly, Foshan considers each of these specifically disclosed compounds suitable for forming a stable water-in-oil emulsion as described in the reference. While Applicant has provided no objective evidence to support the assertion that the disclosed combination would not retain emulsion stability, Foshan, in contrast, teaches that the reverse emulsifier is responsible for significantly enhancing the stability of the water-in-oil system (Paragraphs 0040 and 0090, previously cited). Thus, an ordinarily skilled artisan would reasonably conclude that any of the specifically disclosed reverse emulsifiers of Foshan would maintain the claim-relevant property of emulsion stability.
In view of the foregoing, the 102 rejections of record are maintained.
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, 9, and 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 of 03/31/2026).
Foshan anticipates the invention(s) of claims 1-3, 5-6, 9, and 11 for the reasons 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 of 03/31/2026), as applied to claims 1-6, 9, and 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 of 03/31/2026).
Foshan teaches the invention(s) of claims 1-6, 9, and 11 as discussed in detail above and further incorporated herein.
However, Foshan does not expressly teach that the cosmetic composition further comprises vitamin C as recited in claim 10.
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 cosmetic composition of Foshan, wherein each disclosed form (e.g., whitening cream, sunscreen, sun lotion, and mud film) falls within the scope of a skincare product, 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.
Response to Arguments
Applicant’s arguments submitted on 06/30/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but were not found to be persuasive.
Applicant argues that the Office does not provide an articulated reason why one of ordinary skill in the art would have replaced the stabilizing materials in Foshan’s Example 1 with the particular combination of stabilizers while preserving the required high internal phase emulsion and stability properties. The Examiner notes that the argument is analogous to those made concerning the rejections under 35 U.S.C. 102 and was not found to be persuasive for the reasons discussed in detail above.
Applicant further argues that the emulsifiers of Foshan are specifically selected to stabilize highly concentrated titanium dioxide dispersions, and thus nothing in Foshan would suggest to the skilled artisan to combine the claimed compounds with a reasonable expectation of achieving a stable water-in-oil high internal phase emulsion. This argument was not found to be persuasive. One of ordinary skill in the art could readily envision the claimed combination of stabilizers within a water-in-oil emulsion having the same aqueous internal phase and oily external phase as instantly claimed. Thus, an ordinarily skilled artisan would reasonably expect that the property Applicant claims would flow naturally from the structure of the composition disclosed within the prior art. Further, as discussed above, Foshan explicitly teaches that the reversing emulsifier was found to significantly stabilize the water-in-oil system, not just the titanium dioxide component as alleged by Applicant.
Regarding Applicant’s argument that Foshan does not render obvious the amounts recited in claim 4, the Examiner respectfully disagrees. The amount of reverse emulsifier in the composition of Foshan is 5 wt.%. While the reverse emulsifier Lecigel comprises two components, lecithin and sodium acrylate copolymer, these would each be present in an amount of greater than 0 wt.% within the disclosed 5 wt.%, which overlaps and thus renders obvious the instantly claimed ranges of 0.2 to 4 wt.% lecithin and 1.5 to 5 wt.% sodium acrylate copolymer. See MPEP 2144.05. 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). Further, it is generally noted that differences in concentration will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration is critical. Because Applicant has not provided such evidence and, moreover, because the components of the instantly claimed stabilizing system are known to significantly stabilize high internal phase water-in-oil emulsions when present at similar concentrations, a prima facie case of obviousness exists.
In view of the foregoing, the 103 rejections of record are maintained.
Conclusion
No claim is allowed.
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 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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