DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant's election with traverse of polyglyceryl-10 laurate, polyglyceryl-2 triisostearate, titanium dioxide, and isononyl isononanoate in the reply filed on 23 January 2026, is acknowledged. The traversal is on the grounds that “it should be no undue burden on the Examiner to consider all claims in the single application” and “because at least generic claim 1 should be in condition for allowance, this Election of Species Requirement should also be overcome and withdrawn”. This is not found persuasive because, regarding the first quote above, no restriction between claims was required and all claims are being considered, therefore the argument is considered moot. Regarding the second quote, claim 1 is not found to be in condition for allowance (vide infra), therefore this argument is also not found to be persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-8 are pending and under consideration in the instant Office Action, to the extent of the following elected species:
the specific polyglycerol ester-based emulsifier is polyglyceryl-10 laurate;
the specific polyglycerol ester-based coemulsifier is polyglyceryl-2 triisostearate;
the specific sunscreen agent is titanium dioxide; and
the specific fat is isononyl isononanoate
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Taiwanese Patent Application No. 111131376, filed on 19 August 2022, has been received.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 18 August 2023, was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Pambou (U.S. Patent Application Publication No. US 2019/0314255 A1, published on 17 October 2019).
Pambou teaches a cleansing concentrate composition for use in cosmetic compositions that comprises two or more emulsifiers, an emollient, a preservative system, and an aqueous solvent (Abstract). A first emulsifier in the composition is taught to have a hydrophilic-lipophilic balance (HLB) between 1-9 and in one embodiment may be polyglyceryl-10 laurate (claims 1 and 7-8). A second emulsifier in the composition is taught to have an HLB between 9-16 and in one embodiment may be the polyglyceryl fatty ester polyglyceryl-2 triisostearate (claims 1 and 6, para. [0061]). The two emulsifiers are taught to be present in a ratio from 1:10 to 10:1, which encompasses the ratios recited in instant claims 1 and 4-5 (claim 5). Finally, Pambou teaches their cleansing concentrate to be useful as a base for other cosmetic compositions, such as skincare lotions, creams, and gels (para. [0098-0100]), and may comprise sun-protectants and/or UV-protectants (claims 9 and 19). This is interpreted as being equivalent to a suncare product and sunscreen cosmetic.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Pambou and the instant claims is that Pambou does not teach the specific combination of components as claimed in a single embodiment (e.g., a cosmetic composition with sun-protection that comprises polyglyceryl-10 laurate and polyglyceryl-2 triisostearate in the recited ratios), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Pambou, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[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.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Pambou, to arrive at an invention such as the one being sought.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Pambou (U.S. Patent Application Publication No. US 2019/0314255 A1, published on 17 October 2019) as applied to claims 1-7 above, and further in view of Naden et al. (U.S. Patent Application Publication No. US 2008/0057008 A1, published on 6 march 2008, hereafter referred to as Naden).
Pambou has been described above, and particularly relevant to instant claim 8, also teaches that their cleansing concentrate is typically used in an amount of 0.5-30% w/w of the total composition, which encompasses the range recited in instant claim 8 (para. [0098-0100]), and that the composition may comprise an ester oil as an emollient (claim 9).
Pambou does not teach titanium dioxide as a sun-protectant nor isononyl isononanoate as a fatty component. These deficiencies are offset by the teachings of Naden.
Naden teaches a dispersion comprising metal oxide particles for use in a sunscreen product that “exhibits effective UV protection, transparency, and improved skin feel” (Abstract). Metal oxides are taught to be useful in protecting users’ skin for the sun and a preferred metal oxide used in cosmetic compositions is taught to be titanium dioxide (para. [0002-0010]). Naden further teaches that their invention exhibits improved skin feel compared to conventional sunscreens when the metal oxide is used in conjunction with a polar material and a non-polar material (para. [0008-0009]) and [0038] and claim 19). Preferred polar materials are taught to include, among other species, isononyl isononanoate (para. [0033] and claims 17, 19, and 21).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Naden to use titanium dioxide as the sun-protectant and isononyl isononanoate as an oily emollient in the invention of Pambou because combining prior art elements according to known methods yields predictable results. Pambou rendered obvious a cosmetic composition comprising a cleansing concentrate that contains two emulsifiers, one with an HLB of 1-9 that may be polyglyceryl-10 laurate and the other 9-16 that may be polyglyceryl-2 triisostearate, in a ratio from 1:10 to 10:1, alongside water, a sun-protectant, and an oily emollient. Further, Pambou taught that their cleansing concentrate is typically used in an amount of 0.5-30% w/w of the total composition.
In view of the teachings of Naden, an ordinary artisan would be motivated to use titanium oxide as the sun-protectant because Naden teaches it to be a preferred metal oxide for use in a cosmetic that provides users protection from the sun. In addition, Pambou did not teach a specific sun-protectant and the teachings of Naden provide missing information that an ordinary artisan would require. Further in view of the teachings of Naden, the person of ordinary skill would be motivated to use isononyl isononanoate as an oily emollient in the composition of Pambou because the species is an ester oil, which Pambou teaches to be an appropriate sub-genus of emollient for their invention. In addition, Naden teaches isononyl isononanoate to be an emollient that is compatible with titanium dioxide and that provides users with an improved skin feel, which the ordinary artisan would recognize as desirable in a cosmetic composition that provides sun protection. As a result, there is a reasonable expectation of success in arriving at the invention of claim 8 in view of the teachings of Pambou and further in view of the teachings of Naden.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617