DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 19, 2026, has been entered.
Previous Rejections
Applicant’s arguments, filed May 19, 2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 6, 7, and 17 are cancelled.
Claims 21 and 22 are newly added.
Claims 1 – 5, 8 – 16, and 18 – 22 are examined here-in.
Claim Objections
Claims 2, 12, 15, 18, 21, and 22 are objected to because of the following informalities:
Each of these claims recites the transition phases “further comprises” or “further comprising” prior to reciting amounts and ranges of ingredients identified in the claim from which it depends. For clarity, the Examiner suggests changing the transition phrase “further comprises” or “further comprising” to “comprises” or “comprising”, because “further comprises” implies additional ingredients that were not recited in the claim from which the current one depends.
As an example, claim 2 is currently as follows.
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The Examiner recommends the following modification.
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Appropriate correction is required.
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 non-obviousness.
Claims 1 – 5, 8 – 16, and 18 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Carle 2020 (US 2020/0297600 A1, of record), Carle 2021 (WO 2021/243359 A1, of record) and Sverdlove (US 10,973,749, of record).
Carle 2020 teaches compositions and methods for topical application to the skin (abstract). Carle teaches applying a composition to the skin and allowing it to remain on to moisturize the skin (paragraph 0028).
Carle 2020 teaches the composition contains glycerin in the amount of 1 – 10% by weight (claim 7).
Carle 2020 teaches the composition contains dimethicone in the amount of 0.01 - 15% by weight (claim 8).
Carle 2020 teaches the composition contains hydroxyacetophenone in the amount of 0.01 – 5% by weight (claim 8).
Carle 2020 teaches the composition contains caprylyl glycol, hexylene glycol, and ethylhexylglycerin (paragraphs 0018, 0021, 0079, 0084, Tables 15, 17, claim 6).
Carle 2020 teaches the composition contains ammonium acryloyldimethyltaurate/VP copolymer in the amount of 0.1 – 10% by weight (paragraphs 0018 – 0020, 0100, Tables 15, 16, claims 6 and 7).
Carle 2020 teaches the composition contains tocopherol in the amount of 0.01 – 1% by weight (paragraphs 0018, 0021, 0079, 0084, 0086, 0146, 0165, Tables 6, 9, 15, 17, and claim 6).
Carle 2020 teaches the composition contains butylene glycol (paragraph 0019, Tables 8, 16, 17, claims 7, 8, 10).
Carle 2020 teaches the composition may contain Helianthus annus seed oil and Butyrospermum parkii butter as moisturizing agents (paragraphs 0083 – 0084). Carle 2020 teaches Butyrospermum parkii butter in a possible range of 0.0001 to 10% in a moisturizing composition (paragraph 0120, Table 10).
Carle 2020 teaches some ingredients, such as essential oils, are insoluble in water, but are soluble in alcohols, ethers, oils, or other organic solvents (paragraph 0097). Carle 2020 teaches that there are many essential oils suitable for inclusion in a cosmetic composition, the variety and extent of which is known to those of skill in the art (paragraph 0098).
Carle 2020 teaches the composition contains glyceryl stearate and stearic acid (paragraphs 0017, 0019, 0021, Tables 6, 10, 14, 16, 17, claims 7, 8).
Carle 2020 teaches the composition contains caprylic triglyceride in the amount of 0.01 – 5% by weight (paragraph 0019, Tables 10, 16, 17, claim 8).
Carle 2020 teaches the composition contains petrolatum (paragraphs 0081, 0084, Tables 7, 11).
Carle 2020 teaches the composition contains silica (paragraphs 0017, 0018, 0095, 0105, Tables 14, 15, claims 6, 7).
Carle 2020 teaches the composition contains water in the amount of 25 – 98% (paragraph 0010, claim 16).
Carle 2020 does not teach the composition includes cetearyl ethylhexanoate, isostearyl alcohol, betaine, or dipropylene glycol.
Carle 2021 teaches missing elements of Carle 2020.
Carle 2021 teaches topical compositions and methods to increase skin hydration (abstract).
Carle 2021 teaches betaine, cetearyl ethylhexanoate, and dipropylene glycol are ingredients to increase skin moisture content (paragraphs 0014 – 0017).
Carle 2021 teaches cetearyl ethylhexanoate should be included in the amount of 1 to 10% by weight of the composition (paragraph 0015).
Carle 2021 teaches that some ingredients, such as essential oils, are insoluble in water, but are soluble in alcohols, ethers, oils, or other organic solvents (paragraph 0066). Carle 2021 teaches that there are many essential oils suitable for inclusion in a cosmetic composition, the variety and extent of which is known to those of skill in the art (paragraph 0067).
A person of ordinary skill in the art would be motivated to modify the moisturizing composition of Carle 2020 by adding moisturizing agents including betaine, cetearyl ethylhexanoate, and dipropylene glycol because Carle 2021 teaches these ingredients increase skin moisture content (paragraphs 0014 – 0017). Therefore, the combination of Carle 2020 and Carle 2021 is prima facie obvious according to MPEP 2143(i)(a) as combining prior art elements according to known methods to yield predictable results.
The combination of Carle 2020 and Carle 2021 does not teach isostearyl alcohol.
Sverdlove teaches the missing element of Carle 2020 and Carle 2021.
Sverdlove teaches a cosmetic composition and methods for treating the skin (abstract, column 1 lines 6 - 10).
Sverdlove teaches the composition should contain a fatty compound, which may aid in the solubility of certain actives (column 2 lines 25 – 45, column 4 lines 30 – 31, column 8 lines 57 – 60). While Sverdlove suggests ceramide as an active compound solubilized by fatty compounds, a person of ordinary skill in the art has the expertise to recognize that any compound with a long hydrophobic chain would behave similarly. More broadly, a person of skill in the art would expect any non-aqueous compound to be more soluble when mixed with a fatty compound, as taught by Sverdlove.
Sverdlove teaches isostearyl alcohol is a saturated liquid fatty alcohol suitable for inclusion in the composition in the amount of 0.1 – 25% (column 8 lines 58 – 60, column 10 lines 5 – 28). A person of ordinary skill in the art would be motivated to include isostearyl alcohol in a cosmetic composition to help solubilize organic compounds.
The combination of Carle 2020, Carle 2021, and Sverdlove renders instant claims 1 – 5, 8 – 16, and 18 – 22 prima facie obvious as combining prior art elements according to known methods to yield predictable results. As noted above, a person of ordinary skill in the art would be motivated to modify the moisturizing composition of Carle 2020 by adding moisturizing agents including betaine, cetearyl ethylhexanoate, and dipropylene glycol because Carle 2021 teaches these ingredients increase skin moisture content (paragraphs 0014 – 0017). Then, a person of ordinary skill in the art would be motivated to modify the combination of Carle 2020 and Carle 2021 by adding isostearyl alcohol because Sverdlove teaches these inclusion of a fatty alcohol helps to solubilize non-aqueous ingredients (column 2 lines 25 – 45, column 4 lines 30 – 31, column 8 lines 57 – 60, column 10 lines 5 - 28). Carle 2020 and Carle 2021 each teach the inclusion of non-aqueous ingredients that would benefit from a solubility enhancer, as illustrated with the discussion of essential oils (Carle 2020 paragraphs 0097 – 0098, Carle 2021 paragraphs 0066 – 0067). Therefore, the combination of Carle 2020, Carle 2021, and Sverdlove is prima facie obvious according to MPEP 2143(i)(a) as combining prior art elements according to known methods to yield predictable results.
Carle 2020’s teaching for applying a composition containing glycerin, dimethicone, hydroxyacetophenone, caprylic triglyceride, petrolatum, butylene glycol, Helianthus annus seed oil, Butyrospermum parkii butter, glyceryl stearate, and stearic acid to moisturize the skin (abstract, paragraphs 0017, 0019, 0021, 0028, 0081, 0084, Tables 6, 7, 8, 10, 11, 14, 16, 17, claims 7, 8, 10) in combination with Carle 2021’s teaching for cetearyl ethylhexanoate and betaine as moisturizing agents (paragraphs 0014 – 0017), further combined with Sverdlove’s teaching for isostearyl alcohol (column 8 lines 58 – 60, column 10 lines 5 – 28) reads on claims 1 and 11.
Notably, the recitation “wherein the skin is moisturized” in claim 1 does not further limit the active method steps of “topically applying”. According to MPEP 2111.04, "a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim" and "a whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited".
In this case, claim 1 includes the term "wherein", rather than "whereby", however, in the instant case it appears that these terms are synonymous, performing the same grammatical function. The wherein clause for claim 1 does not inform the artisan of how the “topically applying” step is performed; rather, the wherein clause merely expresses the intended result of a process step (i.e. the skin is moisturized. Therefore, as addressed in MPEP 2111.04, the wherein clause does not add to the patentability of the claim because it simply expresses the intended result of a process step.
Carle 2020’s teaching that the composition contains glycerin in the amount of 1 – 10% by weight, dimethicone in the amount of 0.01 - 15% by weight, and hydroxyacetophenone in the amount of 0.01 – 5% by weight (claims 7, 8) overlaps on the instantly claimed amounts of 3 – 7% glycerin, 0.5 – 4.5% dimethicone, and 0.1 – 0.5% hydroxyacetophenone as recited in claims 2 and 12. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Carle 2020’s teaching that the composition contains caprylyl glycol, hexylene glycol, and ethylhexylglycerin (paragraphs 0018, 0021, 0079, 0084, Tables 15, 17, claim 6) reads on instant claim 3 and 13.
Carle 2020’s teaching that the composition contains ammonium acryloyldimethyltaurate/VP copolymer in the amount of 0.1 – 10% by weight (paragraphs 0018 – 0020, 0100, Tables 15, 16, claims 6 and 7) reads on claims 4, 14, and 15. Carle’s teaching overlaps on the instantly claimed amount of 0.5 – 1.5% as recited in claim 15.
Carle 2020’s teaching that the composition contains tocopherol (paragraphs 0018, 0021, 0079, 0084, 0086, 0146, 0165, Tables 6, 9, 15, 17, and claim 6) reads on instant claims 5 and 16.
Carle 2020’s teaching that the composition contains silica (paragraphs 0017, 0018, 0095, 0105, Tables 14, 15, claims 6, 7) in combination with Carle 2021’s teaching that the composition contains dipropylene glycol (paragraphs 0014 – 0017) reads on instant claims 8 and 19.
Carle 2020’s teaching for a method of applying a cream composition to the skin and letting it remain to moisturize the skin (abstract, paragraph 0028, Table 17) reads on instant claims 9 and 10.
Carle 2020, Carle 2021, and Sverdlove’s teaching that the composition should include cetearyl ethylhexanoate in the amount of 1 to 10% by weight of the composition (Carle 2021 paragraph 0015), caprylic triglyceride in the amount of 0.01 – 5% by weight (Carle 2020 paragraph 0019, Tables 10, 16, 17, claim 8), isostearyl alcohol in the amount of 0.1 – 25% (Sverdlove column 8 lines 58 – 60, column 10 lines 5 – 28), and petrolatum in the example amount of 2.5% (Carle 2020 paragraphs 0081, 0084, Tables 7, 11, Carle 2021 paragraphs 0058, 0059, Table 10) reads on instant claim 18. Cetearyl ethylhexanoate in the amount of 1 to 10% by weight of the composition, caprylic triglyceride in the amount of 0.01 – 5% by weight, isostearyl alcohol in the amount of 0.1 – 25%, and petrolatum in the example amount of 2.5% overlap on the instantly claimed amounts of 5 to 9% by weight cetearyl ethylhexanoate, 3 to 6% by weight caprylic triglyceride, 1 to 4% by weight isostearyl alcohol, and 1 to 4% by weight petrolatum as recited in claim 18. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Carle 2020’s teaching that the composition contains water in the amount of 25 – 98% (paragraph 0010, Table 17, claim 16) overlaps on the claimed range of 60 to 95% water, reading on instant claim 20.
Carle 2020’s teaching that the composition may contain Helianthus annus seed oil and Butyrospermum parkii butter as moisturizing agents, with an example of Butyrospermum parkii butter in a possible range of 0.0001 to 10% in a moisturizing composition (paragraphs 0083, 0084, 0120, Table 10) reads on instant claims 21 and 22. Although Carle 2020 does not expressly teach an amount for moisturizing agent Helianthus annus seed oil, a person of ordinary skill in the art would reason that because Helianthus annus seed oil and Butyrospermum parkii butter are both taught as moisturizing agents, it would be reasonable to include Helianthus annus seed oil in the same range of 0.0001 to 10% that is taught for Butyrospermum parkii butter. Therefore, the teaching for Butyrospermum parkii butter in a range of 0.0001 to 10% in a moisturizing composition (paragraphs 0083, 0084, 0120, Table 10) overlaps on the claimed range of 0.1 to 0.9% by weight as recited in claims 21 and 22, and would also be expected to be suitable for Helianthus annus seed oil, overlapping on the claimed amount of 1.0 to 5.0% by weight recited in claims 21 and 22. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Examiner’s Reply to Attorney Arguments Dated May 19, 2026
Applicant argues that there is “no rationale as to why the compositions of Carle 2020 and Carle 2021, alone or in combination, would require a fatty alcohol ingredient to help solubilize non-aqueous ingredients”, and thus there is no motivation to combine Carle 2020 and Carle 2021 with Sverdlove (Remarks page7). Applicant argues “the compositions of Carle 2020 and Carle 2021 appear to work just fine, and there is no apparent reason to make any modifications, much less motivate a person of ordinary skill in the art to include an additional – and unnecessary – solubilizing agent” (Remarks page 7). These arguments are not persuasive because, as discussed in the body of the rejection above, Carle 2020 and Carle 2021 each teach the inclusion of non-aqueous ingredients that would benefit from a solubility enhancer, as illustrated with the discussion of essential oils (Carle 2020 paragraphs 0097 – 0098, Carle 2021 paragraphs 0066 – 0067). Furthermore, it is within the expertise of a person of ordinary skill in the art to recognize that the addition of isostearyl alcohol, as taught by Sverdlove, in order to solubilize ingredients would be advantageous because it enables easy inclusion of water-insoluble ingredients, of which there are many in the art of cosmetics. The expectation of some advantage is rationale for combining references according to MPEP 2144(II). Carle 2020 and Carle 2021 suggest that the enhanced solubility of essential oils is desirable, and it is within the expertise of a person of ordinary skill in the art to recognize that there are many additional cosmetic ingredients that would benefit from the inclusion of a solubility enhancer such as isostearyl alcohol.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
