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 .
Status of Claims
Claims 1-24 are pending. Claims 1-15, 18 and 22 are amended.
Claims 1-24 are examined on their merits in light of the elected species of phenylbenzimidazole sulfonic acid and PEG/PPG-18/18 Dimethicone.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Objections/Rejections Withdrawn
Claim Objections
In light of the amendments to the claims the objection to claim 10 is withdrawn.
In light of the amendments to the claims the objection to claim 14 is withdrawn.
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 6-12 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Rejections 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
The rejection of claims 1-24 under 35 U.S.C. 103 as being unpatentable over Alloret et al. FR 2983719 (6/22/2006) in view of Deeth et al. WO 2011/137212 (11/3/2011) and Cho et al. US 2016/0374929 (12/29/2016) is maintained.
Alloret et al. discloses a cosmetic water-in-oil emulsion comprising in a cosmetically acceptable medium a) at least one dispersed discontinuous aqueous phase, and at least one dispersing continuous oily phase containing one volatile oil and one nonvolatile oil with a UV filter, a lipophilic ethylenic polymer and solid particles. (See Abstract). Alloret teaches that its composition is photoprotective with a good level of UV filtration, excellent cosmetic qualities such as a non-sticky effect after application to skin. (See page 4). Alloret teaches that the oily phase varies from 10 to 70 % by weight which overlaps the from 20% to 95% as called for in instant claim 4. Alloret teaches that its aqueous phase contains water and optionally other solvent miscible with water. (See page 31). The aqueous phase can be present in an amount of from 10 to 90% by weight. (See page 31). 10 to 90% overlaps with the at least 20 wt% called for in instant claim 8.
This composition can be a water-in-oil emulsion having a nonvolatile oil which can be a mixture of dimethicone and PEG-PPG-18/18 dimethicone 2%, terepthalidine dicamphor sulfonic acid 6%, aluminum hydroxide mixed with titanium dioxide, butyl methoxydibenzoylmethane and stearic acid 78%, and acrylates/polytrimethylsiloxymethacrylate copolymer 13% (See Example 2 and claim 1). The composition further comprises isododecane 9.45% and 17.75% water. (See Examples 1 and 2). Acrylates/polytrimethylsiloxymethacrylate is a silicone-acrylate copolymer as called for in instant claim 12. 13% acrylates/polytrimethylsiloxymethacrylate copolymer falls within the from 0.5% to 15% called for in instant claim 13. Dimethicones are called for in instant claim 2. The dimethicone can be present in an amount of 0.5% which falls within the 0.5 wt% to 20% by weight called for in instant claim 5. Isododecane is an additional oil that is volatile called for in instant claim 6. 9.45% falls within the 5 to 40% called for in instant claim 7.
The composition may comprise an emulsifying surfactant such as PEG/PPG-18/18 dimethicone. (See page 32 and Examples 1-3). PEG/PPG-18/18 dimethicone is the elected species of emulsifying surfactant called for in instant claims 16 and 17 and which fall within the formula of claim 14 and meet the requirements of claim 15. PEG/PPG-18/18 dimethicone is present in an amount of 0.5 wt% in Example 3. 0.5 wt% falls within the from 0.1% to 10% by weight called for in instant claim 18. Silsesquioxane covered powders are taught on page 26. Silsequioxane is a nonemulsifying organopolysiloxane elastomer called for in instant claim 21.
Alloret teaches that its organic UV filter is phenylbenzimidazole sulfonic acid, which is the elected organic UV filter (See Alloret claim 14). Alloret teaches that the particles can be present in an amount of from 1 to 20% by weight. (See page 26).
Alloret teaches hydrophobic silica aerogels known as silica silylate as called for in instant claim 23. (See Page 27). Alloret also teaches sodium hydroxide. (See page 10). Sodium hydroxide is called for in instant claim 11 and is an inorganic base as called for in instant claim 1.
Alloret teaches cosmetics that are applied to skin, but does not expressly teach foundation. (See claim 17). Alloret teaches that its cosmetics have a pigment as called for in instant claim 19. (See page 38). Alloret teaches that the pigment is present in an amount of from 0.1 to 10 wt%. (See page 38). 0.1 to 10 wt% overlaps with the at least 5% called for in instant claim 20. Alloret also teaches polymethyl methacrylate which is a hydrophobic film forming polymer. (See Examples 1-3 and page 25). A hydrophobic film forming polymer is called for in instant claim 1.
Alloret teaches cosmetics that are applied to skin, but does not expressly teach foundation. Alloret teaches dimethicone but does not teach the viscosity of the dimethicone. Alloret teaches silsesquioxane resin but does not teach an amount of silsesquioxane resin. This deficiency is made up with the teachings of Deeth et al. and Cho et al.
Deeth et al. (Deeth) teaches a cosmetic raw material that contains a polyether modified organopolysiloxane, a chain-form silicone oil and a special liquid oil. The special liquid oil acts to compatibilize the polyether modified organopolysiloxane and the chain-form silicone oil. The special liquid oil can be a dimethicone having a viscosity of 160 mm2/s. (See [0103]). A dimethicone having a viscosity of 160 mm2/s falls within the from 50 to 500 mm2/s called for in instant claim 3.
Deeth teaches that its cosmetic raw material can be used in a cosmetic such as an emulsified foundation. (See [0124] Formulation Example 1). A foundation is called for in instant claim 24.
Cho et al. (Cho) teaches a cosmetic composition that contains MQ silicone resin and propyl silsesquioxane resin that gives an excellent moisturizing effect and is free from any pulling. (See Abstract). The propyl silsesquioxane resin is present in the composition is present in an amount of from 0.01 to 30%. (See [0016]). Cho teaches that this range of amount of propyl silsesquioxane resin in the composition provides the composition with the excellent moisturization without the composition feeling too heavy. (See [0016]). 0.01 to 30% overlaps with the from 0.1 to 10 wt% called for in instant claim 22.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Alloret water-in-oil emulsion sunscreen cosmetic containing sodium hydroxide, 2% of dimethicone and PEG-PPG-18/18 dimethicone, silsesquioxane resin covered powders, 6% phenylbenzimidazole sulfonic acid, sodium hydroxide, silica siylate and 13% acrylates/polytrimethylsiloxymethacrylate copolymer, 9.45% isododecane and 17.75% water to have the dimethicone be a dimethicone having a viscosity of 160 mm2/s in order to take advantage of this dimethicone’s ability to compatibilize modified organopolysiloxanes and chain-form silicone oil as taught by Deeth and to take advantage of its suitability as a solvent in an emulsion sunscreen cosmetic containing silicones.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Alloret water-in-oil emulsion sunscreen cosmetic containing sodium hydroxide, 2% of dimethicone and PEG-PPG-18/18 dimethicone, silsesquioxane resin covered powders, 6% phenylbenzimidazole sulfonic acid, sodium hydroxide, silica siylate and 13% acrylates/polytrimethylsiloxymethacrylate copolymer, 9.45% isododecane and 17.75% water to have the sunscreen emulsion be in the form of a foundation as taught by Deeth in order to have a cosmetic that can make-up skin and protect it from the sun.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Alloret water-in-oil emulsion sunscreen cosmetic containing sodium hydroxide, 2% of dimethicone and PEG-PPG-18/18 dimethicone, silsesquioxane resin covered powders, 6% phenylbenzimidazole sulfonic acid, sodium hydroxide, silica silylate and 13% acrylates/polytrimethylsiloxymethacrylate copolymer, 9.45% isododecane and 17.75% water to make the silsesquioxane resin be present in an amount of from 0.01 to 30% in light of Cho’s teaching that this range of amount of silsesquioxane resin can contribute to a compositions feeling of moisturization without it being too heavy.
Response to Arguments
Applicants comments of June 29, 2026 have been considered carefully and are found to be mostly unpersuasive. Applicants note the amendments to the claims and request withdrawal of the indefiniteness rejections and objections.
Applicants assert that L’Alloret does not teach or suggest a distinction between the required compounds (a)-(c) and other similar compounds disclosed therein, but these compounds results in compositions having much better properties than could have been expected based on L’Alloret’s disclosure. Therefore, L’Alloret cannot render the claimed subject matter obvious, nor could L’Alloret be modified with sufficient legally-acceptable motivation to arrive at the claimed subject matter.
Applicants note that L’Alloret does not teach any distinction between (a) and benxophenone-4 which L’Alloret discloses are interchangeable. The stability of the compositions associated with the required neutralized sunscreen agent (a) could not have been expected from L’Alloret’s disclosure. Similarly, the stability of the compositions associated with the required surfactant (b) could not have been expected from L’Alloret’s disclosure. Finally, L’Alloret does not teach, suggest any distinction between the required nonvolatle nonphenylated silicone oil and phenylated silicone oils which L’Alloret teaches are interchangeable. An ordinarily skilled artisan would not expected a difference in blurring properties between the different phenylated and non-phenylated nonvolatile oils with respect to blurring properties based on L’Alloret.
Applicants assert that as demonstrated in their examples, improved stability properties are associated with the unique combination of ingredients in the claimed composition. Nothing in L’Alloret would lead to the selection of the required ingredients in the claimed composition. Furthermore, nothing in Deeth or Cho would lead one of ordinary skill in the art to the specific selection or to any expectation of obtaining improved properties by making these selections. The combination of required ingredients in the claimed composition is unique and their resulting properties could not have been expected from the asserted art.
Applicants’ arguments have been carefully considered and are not found to be persuasive.
Applicants arguments that combination of required ingredients in the claimed composition is unique and their resulting properties could not have been expected from the asserted art is not found to be persuasive because the combination of required ingredients in the claimed composition is not unique and the resulting properties don’t have to be expected in order for there to be a prima facie case of obviousness.
Applicants’ assertion that there is a lack of recognition of the properties of the ingredients in L’Alloret is not found to be persuasive because there does not need to be any recognition of these particular properties in order for there to be a prima facie case of obviousness. It should be noted that Applicants’ arguments are that the properties of these components are not taught but there is recognition by Applicants that the components themselves are expressly taught. For a prima facie case of obviousness the elements must be taught and there must be a motivation to combine the elements. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).
In the instant case, it would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Alloret water-in-oil emulsion sunscreen cosmetic containing sodium hydroxide, 2% of dimethicone and PEG-PPG-18/18 dimethicone, silsesquioxane resin covered powders, 6% phenylbenzimidazole sulfonic acid, sodium hydroxide, silica siylate and 13% acrylates/polytrimethylsiloxymethacrylate copolymer, 9.45% isododecane and 17.75% water to have the dimethicone be a dimethicone having a viscosity of 160 mm2/s in order to take advantage of this dimethicone’s ability to compatibilize modified organopolysiloxanes and chain-form silicone oil as taught by Deeth and to take advantage of its suitability as a solvent in an emulsion sunscreen cosmetic containing silicones.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Alloret water-in-oil emulsion sunscreen cosmetic containing sodium hydroxide, 2% of dimethicone and PEG-PPG-18/18 dimethicone, silsesquioxane resin covered powders, 6% phenylbenzimidazole sulfonic acid, sodium hydroxide, silica siylate and 13% acrylates/polytrimethylsiloxymethacrylate copolymer, 9.45% isododecane and 17.75% water to have the sunscreen emulsion be in the form of a foundation as taught by Deeth in order to have a cosmetic that can make-up skin and protect it from the sun.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Alloret water-in-oil emulsion sunscreen cosmetic containing sodium hydroxide, 2% of dimethicone and PEG-PPG-18/18 dimethicone, silsesquioxane resin covered powders, 6% phenylbenzimidazole sulfonic acid, sodium hydroxide, silica silylate and 13% acrylates/polytrimethylsiloxymethacrylate copolymer, 9.45% isododecane and 17.75% water to make the silsesquioxane resin be present in an amount of from 0.01 to 30% in light of Cho’s teaching that this range of amount of silsesquioxane resin can contribute to a compositions feeling of moisturization without it being too heavy.
Applicant is reminded that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, it is not necessary that the inherent properties of a prior art reference be recognized in order to render a subsequent invention obvious. As stated in MPEP 2145: “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”
Applicants’ assertion of unexpected results is not found to be persuasive for the reason that the results are not commensurate in scope with the claims. Claim 1 is broader than the Examples tested. The Examples show only certain compounds tested, but claim 1 covers (a) a water soluble organic UV screening agent comprising at least one benzylidenecamphorsulfonic acid group and/or at least one water -soluble organic UV screening agent comprising at least one benzoxazole sulfonic acid group, (c) covers at least one inorganic base capable of partially or completely neutralizing the water-soluble organic UV screening agent and e) at least one linear polyoxyalkylenated polydimethylmethylsiloxane emulsifying surfactant with an HLB less than or equal to 8.0. In short, claim 1 is far broader than the example compositions that were tested for stability in the specification on which these assertions of unexpected results are based.
All showings of secondary considerations of obviousness must be commensurate in scope with the claims. Unexpected results must be commensurate in scope with the claims which the evidence is offered to support. See In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 196 (CCPA 1980). See MPEP 716.02(d).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
