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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 July 2026 has been entered.
Priority
The instant application was filed 14 September 2023. The Applicant does not claim priority to any other documents. Therefore, the effective filing date of the instant application is 14 September 2023.
Examiner’s Note
The Applicant's amendments and arguments filed 16 July 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 16 July 2026, it is noted that claim 1 has been amended, claims 36 and 37 have been canceled, and no new claims have been added. Support for the amendment can be found from previously canceled claims. No new matter has been added.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1, 5, 24-28, 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montoya et al. (US 2020/0345595 A1), specialchem.com, newdirectionsaromatics.com, and Baier (US 20130195911 A1).
Regarding claim 1, Montoya teaches a skin-tightening oil-in-water emulsion composition (entire teaching; abs) comprising (a) 0.1-20% (para. 86) sodium acrylates crosspolymer-2 (para. 85), (b) squalane (para. 42), and (d) up to 10% (paras. 20, 73) of ammonium acryloyldiethyl taurate/VP copolymer and (e) about 0.3-9% (para. 73) of hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer (para. 20). The composition may comprise (f) 50-90% of water (abs). The composition further includes (b) Babassu oil (Orbignya oleifera seed oil) (para. 60) and (c) glycerin (para. 19). Hydrophobic compounds in the composition may be in an amount of 1-15% (para. 11), where such compounds include squalane (para. 42) and babassu oil. Polyols, such as glycerin, may be in an amount of about 0.1-25% (paras. 70, 71). The composition may have a viscosity of about 500 to about 1,000,000 cPs (para. 73), wherein the viscosity is the result of the thickening agents used (para. 73).
Regarding claim 5, the composition may comprise 50-90% of water (abs).
Regarding claims 24 and 25, the composition may further include a hydrophobic emollient, such as isodecyl neopentanoate (para. 47) (pg. 13 of instant specification).
Regarding claims 26 and 27, the composition may include polyurethane as a film former (para. 76).
Regarding claim 28, the amount of film former may be from about 0.1-20% (para. 77).
Regarding claims 30-32, the composition does not require silicone, PEG, or alcohol.
Montoya does not teach hydrogenated lecithin or mango seed butter in claim 1. Montoya does not teach an exact combination of the ingredients in claim 1.
Specialchem.com teaches that hydrogenated lecithin is versatile and commonly used in cosmetics for hydrating properties and may mix well with oil and water-based ingredients (pg. 1).
Newdirectionsaromatics.com teaches that mango butter (same as mango seed butter) softens and soothes the skin (pgs. 5-6).
In regards to selecting the combination of ingredients in claim 1, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Montoya teaches a skin-tightening oil-in-water emulsion composition (entire teaching; abs) comprising (a) 0.1-20% (para. 86) sodium acrylates crosspolymer-2 (para. 85), (b) squalane (para. 42), (d) up to 10% (paras. 20, 73) of ammonium acryloyldiethyl taurate/VP copolymer and (e) about 0.3-9% (para. 73) of hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer (para. 20), (f) 50-90% of water (abs), (b) Babassu oil (Orbignya oleifera seed oil) (para. 60), and (c) glycerin, whereas the claimed invention is directed towards a cosmetic composition comprising sodium acrylates crosspolymer-2, squalane, mango seed butter, Orbignya oleifera seed oil, glycerin, water, squalane, hydrogenated lecithin, ammonium acryloyldimethyltaurate/VP copolymer, hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, and water. Since Montoya teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Since Montoya does not specifically teach hydrogenated lecithin in claim 1, one of ordinary skill in the art would have been motivated to use specialchem.com’s teaching that hydrogenated lecithin is hydrating and mixes well with oil and water-based ingredients. A skilled artisan would have been led to combine the teachings because Montoya teaches an oil-in-water emulsion to treat skin imperfections and specialchem.com teaches that hydrogenated lecithin may improve compositions with their hydrating properties. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Since Montoya does not specifically teach mango seed butter in claim 1, one of ordinary skill in the art would have been motivated to use newdirectionsaromatics.com’s teaching that mango seed butter softens and soothes the skin. A skilled artisan would have been led to combine the teachings because Montoya teaches an oil-in-water emulsion to treat skin imperfections and specialchem.com teaches that hydrogenated lecithin may improve compositions with their moisturizing and anti-aging properties. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
In regards to the amounts of mango seed butter and hydrogenated lecithin in claim 1, Baier teaches 1% of hydrogenated lecithin and 1% of mango seed butter (Example 1) in their oil-in-water emulsion for skin (para. 52, abs). That being said and in lieu of objective evidence of unexpected results, the amounts can be viewed as a variable that achieves the recognized result of successfully making the cosmetic composition, which a skilled artisan would have been easily motivated to modify and adjust. The optimum or workable range of amounts can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration, such as unexpected results, that would render the optimized amounts of mango seed butter and hydrogenated lecithin as nonobvious.
Claim(s) 1, 5, 24-28, 30-32, 34, 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu (WO 2008070368 A2), Montoya et al. (US 2020/0345595 A1), specialchem.com, newdirectionsaromatics.com, and Baier (US 20130195911 A1), as evidenced by ewg.org.
Regarding claim 1, Yu teaches a skin oil-in-water emulsion (para. 123) composition (abs; entire teaching) that may comprise (a) 0.1-10% (para. 142) of sodium acrylates crosspolymer (interpreted as sodium acrylates crosspolymer-2, evidenced by ewg.org, pg. 2), (b) 0.01-10% of perhydrosqualene (squalane) (para. 141), (c) 0.01-30% of glycerin (para. 142), (d) 0.1-10% of ammonium acryloyldimethyltaurate/VP copolymer (para. 142), (e) 0.1-10% of hydroxyethylacrylate/sodium acryloyldimethyl taurate (para. 142), and (f) 30-90% of water (para. 121).
Regarding claim 5, the composition may comprise 30-90% of water (para. 121).
Regarding claims 24 and 25, the composition may include a hydrophobic emollient, such as olive oil, in an amount of 0.01-10% (para. 141).
Regarding claims 26-28, the composition may comprise 0.01-30% of methylpropanediol (para. 142).
Regarding claims 30-32 and 34, the composition does not require silicone, alcohol, PEG, or sodium silicate.
Regarding claim 35, the composition may include 0-5% of a preservative (para. 140).
Yu does not teach the viscosity limitation in claim 1. Yu does not teach hydrogenated lecithin or mango seed butter in claim 1. Yu does not teach an exact combination of ingredients in claim 1.
Specialchem.com teaches that hydrogenated lecithin is versatile and commonly used in cosmetics for hydrating properties and may mix well with oil and water-based ingredients (pg. 1).
Newdirectionsaromatics.com teaches that mango butter (same as mango seed butter) softens and soothes the skin (pgs. 5-6).
In regards to selecting the combination of ingredients in claim 1, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Yu teaches a skin oil-in-water emulsion (para. 123) composition (abs; entire teaching) that may comprise (a) 0.1-10% (para. 142) of sodium acrylates crosspolymer (interpreted as sodium acrylates crosspolymer-2, evidenced by ewg.org, pg. 2), (b) 0.01-10% of perhydrosqualene (squalane) (para. 141), (c) 0.01-30% of glycerin (para. 142), (d) 0.1-10% of ammonium acryloyldimethyltaurate/VP copolymer (para. 142), (e) 0.1-10% of hydroxyethylacrylate/sodium acryloyldimethyl taurate (para. 142), and (f) 30-90% of water (para. 121), whereas the claimed invention is directed towards a cosmetic composition comprising sodium acrylates crosspolymer-2, squalane, mango seed butter, Orbignya oleifera seed oil, glycerin, water, squalane, hydrogenated lecithin, ammonium acryloyldimethyltaurate/VP copolymer, hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, and water. Since Yu teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Regarding the viscosity limitation in claim 1, Montoya teaches that their composition, which includes similar ingredients to Yu’s composition, may have a viscosity of about 500 to about 1,000,000 cPs (para. 73). The viscosity is a result of the thickening agents used in the composition (para. 73). Furthermore, 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). MPEP 2144.05 (I).
Since Yu does not teach hydrogenated lecithin in claim 1, one of ordinary skill in the art would have been motivated to use specialchem.com’s teaching that hydrogenated lecithin is hydrating and mixes well with oil and water-based ingredients. A skilled artisan would have been led to combine the teachings because Yu teaches an oil-in-water emulsion to treat skin aging and specialchem.com teaches that hydrogenated lecithin may improve compositions with their hydrating properties. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Since Yu does not teach mango seed butter in claim 1, one of ordinary skill in the art would have been motivated to use newdirectionsaromatics.com’s teaching that mango seed butter softens and soothes the skin. A skilled artisan would have been led to combine the teachings because Yu teaches an oil-in-water emulsion to treat skin aging and specialchem.com teaches that hydrogenated lecithin may improve compositions with their moisturizing and anti-aging properties. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
In regards to the amounts of mango seed butter and hydrogenated lecithin in claim 1, Baier teaches 1% of hydrogenated lecithin and 1% of mango seed butter (Example 1) in their oil-in-water emulsion for skin (para. 52, abs). That being said and in lieu of objective evidence of unexpected results, the amounts can be viewed as a variable that achieves the recognized result of successfully making the cosmetic composition, which a skilled artisan would have been easily motivated to modify and adjust. The optimum or workable range of amounts can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration, such as unexpected results, that would render the optimized amounts of mango seed butter and hydrogenated lecithin as nonobvious.
Response to Arguments
Applicant's arguments filed 16 July 2026 have been fully considered but they are not persuasive.
The Applicant argues against the inherency theory for arriving at the viscosity recitation (Remarks, pgs. 4-5).
Applicant’s argument is not found persuasive. Montoya’s composition may have a viscosity of about 500 to about 1,000,000 cPs (para. 73), wherein the viscosity is the result of the thickening agents used (para. 73). 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). MPEP 2144.05 (I).
The Applicant argues that Formulations 3 and 6 in Table 4 are as possible as Formulation 5. However, Formulations 3 and 6 do not satisfy the viscosity limitation in amended claim 1 (Remarks, pgs. 6-7).
Applicant’s argument is not found persuasive. Table 4 of the instant specification shows 0.6% of Aristoflex AVC (interpreted as component (d)) for Formulations 3, 5, and 6, 1% of Sepinov EMT 10 (interpreted as component (e)) for Formulations 3, 5, and 6, and 0% of Barcril AV (interpreted as component (a)) for Formulation 3, 0.5% of Barcril AV for Formulation 5, and 1% of Barcril AV for Formulation 6. The amounts of Barcril AV for Formulations 3 and 6 fall outside of the claimed range for component (a) in claim 1, and, therefore fall outside the claimed viscosity range. Therefore, Formulations 3 and 6 are considered outside the scope of the claim and would expectedly not have the desired viscosity range.
The Applicant is reminded that the teachings of KSR are actually an endorsement and expansion of the flexible and expansive approach to obviousness, which clearly invites continued reliance on such broad and flexible analyses concerning the utility of selecting alternative embodiments of components providing art-recognized utility, with no substantial change in the overall utility of a composition so formulated. See KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395-96 (U.S.2007) (“the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”; “When a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious”; “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions” exemplified by the holdings of cases such as Merck v. Biocraft.
Furthermore, Montoya’s composition may have a viscosity of about 500 to about 1,000,000 cPs (para. 73), wherein the viscosity is the result of the thickening agents used (para. 73), which overlaps with the claimed viscosity range.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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