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 .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 11 February 2026, in response to the Office Correspondence dated 24 October 2025, are acknowledged.
The listing of Claims filed 11 February 2026, have been examined. Claims 1-17 are pending. Claims 1 and 3 are amended and are supported by the originally-filed disclosure. New claims 12-17 have been added and no claims have been canceled.
Response to Amendment
The applicant has amended the dependency of claim 3 to depend from claim 2, which is proper under 37 CFR 1.75(c). Accordingly, the prior objection to claim 3 (improper dependency on claim 1) is withdrawn.
For the reasons set forth below, the rejection of claims 1-11 under 35 U.S.C. § 103 is maintained, and new claim objections and rejections under 35 USC § 112(b) and 35 U.S.C. § 103 are made for the newly added claims 12-17.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 24 October 2025, since the art which was previously cited continues to read on the amended/newly cited limitations.
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.
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 1-11 are rejected under 35 U.S.C. § 103 as being unpatentable over Ju et al. (KR20230050971A; published 17 April 2023, hereinafter referred to as “Ju”) in view of Ryoung et al. (KR20200056210A; published 22 May 2020, hereinafter referred to as “Ryoung”).
Ju teaches a transparent oil gel cosmetic composition for sunscreen (Abstract) comprising a caprylic/capric triglyceride, dextrin palmitate and bemotrizinol [bis-ethylhexyloxyphenol methoxyphenyltriazine] (claims 2 and 3). Caprylic/capric triglyceride maybe used as part of the first thickening agent at 7 to 11% by weight based on the total weight of the composition (claim 2 and 6) and as the oil component at 10 to 50% by weight based on the total weight of the composition (page 2, second to last paragraph), when combined may result in >50% but <75% total caprylic/capric triglyceride. The additional UV filter silica is included at 10-20% of the composition (page 3, paragraph 2).
In addition, “There are no particular limitations on the use and formulation of the cosmetic composition for sunscreen of the present invention, and the cosmetic composition may be used as a dispersant, extender pigment, colorant, antioxidant [“active agent”], preservative, pH adjuster, humectant, lubricant, hydrocarbon oil, vegetable oil, if necessary.” (page 3, paragraph 4).
Ju does not teach wherein the composition is a stick (claims 1-11), the use of wax as a lipophilic gelling agent (claim 4) or ≤10% by weight relative to the total weight of composition of additional UV filters.
Ryoung teaches balm type, wax type or oil balm type cosmetic compositions by applying the same composition methods directly to an oil phase (Abstract) containing the active whitening ingredient and antioxidant ascorbic acid (claim 1, 9 and 11) 40-80% hydrogenated vegetable oil and 5-20% by weight of ester oil, in which a stick product is formed (Experimental Example 1 Usability evaluation; page 4). Wherein the vegetable oil may be selected from coconut oil and palm kernel oil (claim 4; ~11-16% caprylic/capric triglycerides and ~7% caprylic/capric triglycerides, respectively; see evidentiary reference Acme-Hardesty: https://www.acme-hardesty.com/overview-mct-oil-medium-chain-triglycerides/) and the ester oil caprylic/capric triglyceride (claim 5). The oil balm formulation containing wax is disclosed (claim 7 and 8). Ryoung teaches the addition of, “The cosmetic composition or external preparation for skin is a common auxiliary agent such as oil, polyalcohol, wax, antioxidant, stabilizer, solubilizer, component providing moisturizing and conditioning effect, thickener, sunscreen, protective agent, pigment, pigment, and fragrance Or, it may further include a carrier.” (page 3, paragraph 10). Ryoung however does not require one or more UV filters, therefore additional UV filters maybe 0%, or ≤10% by weight relative to the total weight of composition.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Ryoung in making active ingredient oil balms or wax balms for cosmetic compositions that may contain a sunscreen with the teachings of a transparent oil gel sunblock of Ju to make the invention of Ju into a stick form rather than a gel product. One would be motivated to change a sunblock formulation from a gel to a stick format to offer greater convenience, mess-free application, and portability to increase consumer desirability. Since Ryoung teaches oil balms one would have a reasonable expectation of success in making the change. Ryoung does not require UV filter compositions to practice the invention, thus it would be obvious to exclude additional UV filters in the formulation.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 24 October 2025, as the Applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
Claim Objections
Claims 12 and 13 are objected to because of the following informalities:
Claims 12 and 13 recite “a super saturated amount”, which should be “a supersaturated amount” (one word). Appropriate correction is advised.
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 Applicant regards as his invention.
Claims 12-16 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, regards as the invention.
Claim 12 and 13 recite, “wherein bemotrizinol is present in the composition in a super saturated amount”; claims 14 and 15 recite, “wherein bemotrizinol recrystallization in the composition is inhibited”; and claim 16 recites, “wherein the at least one lipophilic gelling agent is at least one sugar fatty acid ester gelling agent, and the at least one sugar fatty acid ester gelling agent is present in the composition in an amount sufficient to inhibit bemotrizinol recrystallization in the composition”. These claims are indefinite because they fail to inform a person of ordinary skill in the art, with reasonable certainty, of the scope of the claimed subject matter (see Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)) for the reasons set forth below.
The specification at ¶[0041] defines “supersaturated amount” relative to the expected solubility of bemotrizinol in the solvent system at ambient temperatures. However, the claims do not specify which solvent(s), at what temperature, or by what measurement supersaturation is determined. Without such parameters, the term is ambiguous. Examples 1-3 do not identify whether bemotrizinol is supersaturated. A person of ordinary skill would not know with reasonable certainty whether a given composition falls within the claim.
The specification at ¶[0042] defines recrystallization inhibition by comparison to a composition lacking the lipophilic gelling agent. The claims, however, do not recite any comparative composition, threshold, or metric (e.g., % reduction, time period, temperature). Thus, the claim language is purely subjective and indefinite.
Regarding, “amount sufficient to inhibit” in claim 16, the specification provides guidance (¶[0042]-[0043]), but the claim does not incorporate any objective test, standard, or endpoint. The specification does not identify any critical concentration or threshold at which inhibition occurs. No working example correlates a specific amount of sugar fatty acid ester to inhibition of bemotrizinol recrystallization. One of ordinary skill could not determine, without undue experimentation, whether a given amount of sugar fatty acid ester gelling agent is “sufficient” to achieve the recited result.
To overcome this rejection, the applicant is advised to amend these claims to recite objective, measurable parameters (e.g., “no recrystallization detectable by polarized light microscopy after 4 weeks at 25°C.”) or to delete the indefinite language.
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.
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, and 12-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Ju et al. (KR20230050971A; published 17 April 2023, hereinafter referred to as “Ju”), in view of Ryoung et al. (KR20200056210A; published 22 May 2020, hereinafter referred to as “Ryoung”) and in further view of Ansmann and Kawa (DE-19956605-A1; published 25 November 1999, hereinafter referred to as “Ansmann”)
Ju and Ryoung teach the limitations of instant claims 1 and 7, as described above, from which instant claims 12-17 depend. Instant claims 12 and 13 add the limitation wherein bemotrizinol is present in the composition in a supersaturated amount.
As discussed above for instant claims 1 and 7, Ju teaches a transparent oil gel sunscreen cosmetic composition (Abstract) comprising a caprylic/capric triglyceride as an oil component, dextrin palmitate as a thickening agent, and bemotrizinol [bis-ethylhexyloxyphenol methoxyphenyltriazine] as a sunscreen agent (claims 2 and 3). One of ordinary skill would recognize that when a UV filter is dissolved in an oil phase at concentrations near or above its solubility limit, supersaturation is inherently achieved. Ju teaches bemotrizinol at levels up to 35 wt% (page 2, last paragraph), which would exceed solubility in many solvents, leading to supersaturation. However, Ju does not explicitly state that bemotrizinol is present in a supersaturated amount.
Ansmann teaches that alkyl- and/or alkenyl-oligoglycoside fatty acid esters act as solubility aids and stabilizers for UV light filters, allowing incorporation of larger amounts of UV filters without destabilization (page 2, first and fourth paragraph). The reference explicitly contemplates formulations where UV filters are present at levels that would otherwise exceed solubility (i.e., supersaturated) (page 2, first and second paragraph).
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the missing limitation of including the sunscreen agent of Ju (bemotrizinol) at a supersaturated level motivated by and taught by Ansmann. Combining Ju’s composition with Ansmann’s teaching of sugar ester stabilizers to stabilize supersaturated UV filters in oil-based systems to achieve higher UV protection would have been obvious to realize higher UV filter loading while maintaining stability.
Instant claims 14 and 15 add the limitation wherein bemotrizinol recrystallization is inhibited in the composition. Ju teaches a transparent oil gel that remains stable without oil separation or crystallization, having high transparency (page 5, Experimental Example 1. Confirmation of transparency and stability of compositions; stability evaluation at −10°C, 4°C, 25°C, 45°C for 3 months; see also Drawings pictures with no visible recrystallization). However, Ju does not explicitly measure or claim inhibition of recrystallization of bemotrizinol.
Ansmann explicitly teaches that sugar fatty acid esters stabilize UV filters and prevent their recrystallization (page 7, Examples section, first paragraph). The reference further teaches that alkyl and / or alkenyl oligoglycoside fatty acid ester stabilizers used in the invention for the production of sunscreen are aimed at improving storage stability and preventing chemical reactions that lead to degradation (i.e., inhibit recrystallization) of other market formulations (page 2, first 3 paragraphs).
Instant claim 16 adds the limitation wherein at least one sugar fatty acid ester lipophilic gelling agent is present in the composition in an amount sufficient to inhibit bemotrizinol recrystallization in the composition. Neither Ju or Ryoung explicitly teach this limitation. As discussed previously, Ansmann teaches the use of alkyl- and/or alkenyl-oligoglycoside fatty acid esters (sugar fatty acid esters) as stabilizers for UV filters in sunscreen compositions in the amounts of 1-20 wt% (page 2, Alkyl and / or alkenyl oligoalycoside fatty acid esters paragraph). These amounts are taught as being sufficient to improve solubility and stability (i.e., to inhibit recrystallization; page 7, Examples section, first paragraph). While Ansmann does not explicitly name the sunscreen species of bemotrizinol, the reference generically covers the genus of triazine derivatives as UV filters (page 3, first paragraph). However, Ju explicitly teaches the combination of bemotrizinol with dextrin palmitate (a sugar fatty acid ester) in an oil gel composition (claims 2-3).
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the sugar fatty acid esters (which include dextrin palmitate and related compounds) of Ansmann, in an effective amount taught by Ansmann, to the sunscreen formulation taught by Ju, containing bemotrizinol and dextrin palmitate and modified by Ryoung for a stick format, to stabilize UV filters and inhibit recrystallization. The combination yields the claimed composition where the sugar fatty acid ester is present in an amount sufficient to inhibit recrystallization, a predictable result of applying Ansmann’s stabilizer teachings to Ju’s formulation.
The motivation to do so is also taught by Ansmann, wherein it was recognized in the art at the time of the invention that sunscreen formula instability (resulting in recrystallization) is a common problem in supersaturated UV filter systems. Ansmann provides a direct solution with the use of sugar fatty acid esters (which included dextrin palmitate). Combining this teaching with Ju’s composition would have been obvious to improve long-term stability.
Instant claim 17 adds the limitation of including from about 7.7-19% by weight with respect to the total weight of the composition dextrin palmitate in the composition. Ju teaches the addition of thickeners including dextrin palmitate at 7-11 wt% (claim 6) or 3-6 wt% (claim 7). Ju does not teach or suggest amounts of >11-19 wt%. Ansmann teaches that the genus of sugar fatty acid esters in amounts of 1-20 wt% (page 2, Alkyl and / or alkenyl oligoalycoside fatty acid esters paragraph) improve UV filter stability. Dextrin palmitate is a species of sugar fatty acid ester (dextrin is an oligosaccharide; palmitate is a C16 fatty acid). One of ordinary skill would recognize that dextrin palmitate behaves similarly to other sugar fatty acid esters in terms of gelation and stabilization properties.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add higher concentrations of sugar esters (up to 19 wt% of the instant claim) to a sunscreen formulation such as taught by Ju and modified by Ryoung to be in stick format, because Ansmann teaches they are useful in certain formulations (e.g., emulsions, sunscreens) to achieve stability and transparency. One of ordinary skill would have been motivated to optimize the dextrin palmitate concentration in Ju’s composition to achieve a stick format, which requires higher structural integrity than a gel with the teachings of Ryoung of stick/oil balm compositions requiring sufficient wax/gelling agent to maintain solid form (Experimental Example 1: balm type, wax type or oil balm type cosmetic compositions). Combining Ju’s UV filter system with Ryoung’s stick-forming technology would lead one to increase the gelling agent concentration above Ju’s preferred 3-6% range, into the 7.7-19% range claimed. This is a predictable optimization rather than an inventive step (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
The applicant has not provided any evidence of unexpected results or criticality for the claimed ranges or functional limitations. The combination of these references teaches or suggests every limitation of claims 12-17 to one of ordinary skill in the art.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 11 February 2026, have been fully considered but are not persuasive. The applicant argues that the prior art combination does not render the claims obvious, primarily because Ju allegedly teaches away from using more than 6% dextrin palmitate. However, claims 1-11 are rejected under 35 U.S.C. § 103 as unpatentable over Ju in view of Ryoung for the reasons previously provided, which are incorporated herein by reference.
The applicant asserts that Ju teaches a strict upper limit (≤6%) for dextrin palmitate, allegedly discouraging higher amounts, the amended claims require >6% dextrin palmitate, which is said to be non-obvious. The newly added claims recite functional effects (supersaturation and recrystallization inhibition) allegedly not taught or suggested by the prior art, wherein Ryoung allegedly does not provide motivation to exceed Ju’s stated limit.
The applicant cites Ju, which states that above 6% dextrin palmitate, the composition becomes “too stiff and sticky”. The applicant’s characterization of Ju as teaching a strict upper limit is not supported. Ju discloses dextrin palmitate at 3-6% as a preferred or exemplified range, noting increased stiffness at higher levels. However, such disclosure constitutes optimization guidance to achieve a qualitative preference, not an absolute teaching away. A statement that a property (e.g., stiffness) increases does not discourage modification where such property may be desirable in another format (e.g., stick compositions).
Teaching away requires a clear statement that the combination cannot work or that the proposed modification would destroy operability (see DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)). Ju does not state that compositions with >6% dextrin palmitate are inoperative, only that they are stiffer and stickier. Stiffness and stickiness may be desirable or acceptable in stick compositions, which require structural integrity. Indeed, Ju’s own disclosure of a “transparent oil gel” does not exclude stick formats, and one of ordinary skill would recognize that higher gelling agent concentrations are routine in stick formulations.
Importantly Ryoung explicitly teaches solid, balm, and stick formats, where increased structural rigidity (e.g., higher gellant content) is expected and often required. One of ordinary skill in the art would recognize that increasing gelling agent concentration is a routine formulation adjustment when transitioning from a gel to a stick. Accordingly, modifying Ju to include >6% dextrin palmitate represents routine optimization of a result-effective variable, consistent with In re Aller, 220 F.2d 454 (CCPA 1955).
The applicant asserts that no motivation exists to exceed 6%. This argument is not persuasive. Ryoung teaches oil stick and wax balm compositions requiring sufficient gelling/wax content to maintain solid form structural integrity, use of wax and oil structuring systems, and broad inclusion of thickeners and gelling agents. One of ordinary skill, seeking to convert Ju’s gel into a stick composition, as motivated by Ryoung and consumer convenience, would have reason to increase the structurant dextrin palmitate above Ju’s preferred range to achieve stick hardness for mechanical stability. The modification is consistent with known formulation principles in cosmetic science. The motivation remains to improve form factor (stick), application convenience, and product stability. This is a predictable optimization, not an inventive leap (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), wherein predictable variations of known work are obvious).
The applicant argues that Ju does not teach supersaturation or recrystallization inhibition, which are newly added limitation in newly added claims 12-16. However, these are results of increasing gelling agent concentration in a supersaturated solution. Ju already teaches bemotrizinol in an oil-gel matrix. One of ordinary skill would recognize that increasing the gelling agent (dextrin palmitate) reduces molecular mobility, thereby inhibiting recrystallization of supersaturated solutes. This is a predictable physical-chemical effect, not a new property. No unexpected results have been demonstrated by objective evidence (e.g., comparative examples). The claimed ranges (7.5-30% in claim 1, and 7.7-19% in claim 17) are simple variations of Ju’s 3-6% range modified for the stiffness required for a stick format and a matter of routine optimization.
Conclusion
No claims are allowed.
The applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 (87 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 REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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