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. This is the first office action on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements filed September 25, 2023 and September 23, 2025 have been reviewed.
Election/Restrictions
Applicant’s election of phenylbenzimidazole sulfonic acid as the water-soluble UV screening agent and PEG/PPG-18/18 Dimethicone as the linear polyoxyalkylenated polydimethylmethylsiloxane emulsifying surfactant with traverse in the reply dated January 23, 2026 is noted.
The traversal is on the basis that no extra burden related to search and examination of water-soluble UV screening agents and/or linear polyoxyalkylenated polydimethylmethylsiloxane emulsifying surfactants other than the elected species would exist given the common functionality and properties of non-elected species for both types of compounds.
Applicants’ traversal is not found to be persuasive because there is no PCT requirement that a search burden be established.
Claims 1-24 are examined on their merits in light of the elected species of phenylbenzimidazole sulfonic acid and PEG/PPG-18/18 Dimethicone.
Claim Objections
Claim 10 is objected to for consistency of claim language. Claim 10 should read “the at least one water soluble UV screening agents”. Appropriate correction is required.
Claim 14 is objected to for consistency of claim language. Claim 14 should read “corresponds” at line 2. Appropriate correction is required.
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 the applicant regards as his invention.
Claims 6-12 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 is rejected under 35 USC 112(b) for reciting “and more particularly a mixture of isododecane and of dodecamethylpentasiloxane”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claims 6 recites the broad recitation “at least one volatile hydrocarbon oil and/or at least one volatile silicone oil”, and the claims also recite “and more particularly a mixture of isododecane and of dodecamethylpentasiloxane” which is the narrower statement of the range/limitation.
Regarding claim 6, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 6 is unclear because it is unclear what is called for. For the purposes of this office action claim 6 will be interpreted using the broader phrase as the limitation.
Claim 7 is rejected under 35 USC 112(b) for reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation
In the present instance, claim 7 recites the broad recitation “from 5% to 40% by weight”, and the claim also recites “more preferentially ranging from 10% to 30% by weight” which is the narrower statement of the range/limitation. The claim also recites “more preferentially still ranging from 12% to 25% by weight” which is the narrowest statement of the range/limitation.
Regarding claim 7, this broad and then narrow phrases renders the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 7 is unclear because it is unclear what is called for. For the purposes of this office action claim 7 will be interpreted using the broader phrase as the limitation.
Claim 7 is also rejected under 35 USC 112(b) for reciting the limitation “the volatile oil(s)” and depends from claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 does not recite volatile oils. However, claim 6 does recite volatile oils.
For the purposes of this office action, it will be assumed that claim 7 is referring to the volatile oils in claim 6.
Claim 8 is rejected under 35 USC 112(b) for reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation.
In the present instance, claim 8 recites the broad recitation “from 20% to 60% by weight”, and the claim also recites “preferably ranging from 30% to 60% by weight” which is the narrower statement of the range/limitation. The claim also recites “more particularly from 12% to 25% by weight” which is the narrowest statement of the range/limitation.
Regarding claim 8, this broad and then narrow phrases renders the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 8 is unclear because it is unclear what is called for. For the purposes of this office action claim 8 will be interpreted using the broader phrase as the limitation.
Claim 9 is also rejected under 35 USC 112(b) for reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation.
In the present instance, claim 9 recites the broad recitation “the water-soluble UV screening agent is chosen from Terepthalylidene Dicamphor Sulfonic Acid, Disodium Phenyl Dibenimidazole Tetrasulfonate, Phenylbenzimidazole Sulfonic Acid and their mixtures”, and the claim also recites “more particularly Phenylbenzimidazole Sulfonic Acid” which is the narrower statement of the range/limitation.
Regarding claim 9, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 9 is unclear because it is unclear what is called for. For the purposes of this office action claim 9 will be interpreted using the broader phrase as the limitation.
Claim 9 is also rejected under 35 USC 112(b) for reciting the limitation “the water-soluble UV screening agent” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “at least one water-soluble UV screening agent” in lines 5-6. The phrase “at least one water-soluble UV screening agent” encompasses multiple UV screening agents, so it is unclear whether just one, more than one, or all of the one or more UV screening agents are referred to in claim 9.
It is suggested that claim 9 be amended to recite “the at least one water-soluble UV screening agent”.
Claim 10 is rejected under 35 USC 112(b) for reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation.
In the present instance, claim 10 recites the broad recitation “from 0.1% to 10% by weight”, and the claim also recites “more preferentially ranging from 1% to 8% by weight” which is the narrower statement of the range/limitation. The claim also recites “more preferentially still from 2% to 5% by weight” which is the narrowest statement of the range/limitation.
Regarding claim 10, this broad and then narrow phrases renders the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 10 is unclear because it is unclear what is called for. For the purposes of this office action claim 10 will be interpreted using the broader phrase as the limitation.
Claim 11 is rejected under 35 USC 112(b) for reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation.
In the present instance, claim 11 recites the broad recitation “where the inorganic base is chosen from alkali metal cation bases and alkaline earth metal cation bases”, and the claim also recites “more particularly is sodium hydroxide” which is the narrower statement of the range/limitation.
Regarding claim 11, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 11 is unclear because it is unclear what is called for. For the purposes of this office action claim 11 will be interpreted using the broader phrase as the limitation.
Claim 11 is also rejected under 35 USC 112(b) for reciting the limitation “the inorganic base” in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “at least one inorganic base” in line 9. The phrase “at least one inorganic base” encompasses multiple inorganic bases, so it is unclear whether just one, more than one, or all of the one or more inorganic bases are referred to in claim 11.
It is suggested that claim 11 be amended to recite “the at least one inorganic base”.
Claim 12 is rejected under 35 USC 112(b) for reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation.
In the present instance, claim 12 recites the broad recitation “-their mixtures”, and the claim also recites “more particularly chosen from a trimethylsiloxysilicate resin” which is the narrower statement of the range/limitation.
Regarding claim 12, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 12 is unclear because it is unclear what is called for. For the purposes of this office action claim 12 will be interpreted using the broader phrase as the limitation.
Claim 12 is also rejected under 35 USC 112(b) for reciting the limitation “the hydrophobic film-forming polymer” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “at least one hydrophobic film-forming polymer” in line 11. The phrase “at least one hydrophobic film-forming polymer” encompasses multiple hydrophobic film-forming polymers, so it is unclear whether just one, more than one, or all of the one or more hydrophobic film-forming polymer are referred to in claim 12.
It is suggested that claim 9 be amended to recite “the at least one hydrophobic film-forming polymer”.
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.
Claims 1-24 are rejected 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).
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 siylate 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.
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/SARAH ALAWADI/ Primary Examiner, Art Unit 1619