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 Amendments
Status of Claims
The amendment, filed on 13 July 2026, is acknowledged.
Claim 1 has been amended.
Claims 2-6 have been cancelled.
Claims 1 and 7-8 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the specific polysaccharide (A) is a polysaccharide containing a sulfate group extracted from Aphanothece sacrum;
the specific hydrophilization treatment is coating a part or all of a surface of the inorganic powder with silica and hydrous silica; and
the specific inorganic powder (B) is zinc oxide and/or titanium oxide.
37 C.F.R. 1.121 Manner of making amendments in application.
Guidelines for making amendments to claims in an application are provided in 37 C.F.R. 1.121.(c) and further in CFR 1.121(c)(2) it is specified that “[t]he text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters.”
It is noted that the word “treatment” recited in instant claim 1 as submitted on 23 October 2023, was deleted and replaced with the word “treated” in the amendment submitted on 13 July 2026. To comply with 37 C.F.R. 1.121, the word “treatment” should have been struck-through, because it possesses more than five consecutive characters, and the word “treated” should have been underlined. In the interest of compact prosecution, Applicant’s cooperation is requested.
Objections Withdrawn
Objections to Specification
Applicant’s amendment to the title has overcome the objection set forth in the Office Action mailed on 29 April 2026. Accordingly, the relevant objection is withdrawn.
Objections to Claims
Applicant’s amendment to claim 1 has overcome the objection to the claim set forth in the Office Action mailed on 29 April 2026. Accordingly, the relevant objection is withdrawn. Applicant’s cancellation of claims 3-5 have rendered moot the objections set forth in the Office Action mailed on 29 April 2026.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejection of claim 2 under 35 U.S.C. § 112 is rendered moot in view of Applicant’s cancellation of the claim.
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 2-6 under 35 U.S.C. § 103 is rendered moot in view of Applicant’s cancellation of the claims.
Maintained Rejections
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 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kanagawa University et al. (Japanese Patent Application No. JP 2008-007491, published on 17 January 2008, cited in the IDS filed on 23 October 2023, references to English translation, hereafter referred to as Kanagawa) in view of Doi et al. (Biol. Pharm. Bull. 2018, 41, 1554., hereafter referred to as Doi).
Kanagawa teaches cosmetic product that provides anti-ultraviolet properties, which is interpreted as equivalent to a sunscreen cosmetic (Abstract). The product contains “fine particles of titanium oxide” coated on the surface with hydrous silicic acid, otherwise known as hydrous silica, a higher alcohol, oily components, and a polysaccharide (claims 1-2). The coating on the TiO2 is taught to prevent loss of uniform UV protection due to sweating (pg. 3, Description, para. 3-6). The polysaccharide is taught to be present in an amount from 0.01-1% w/w and the coated TiO2 is taught to be present in amount from 1-20% w/w, which is equivalent to coated TiO2 being present in an amount of 1-2,000 parts by weight for every 1 part by weight of the polysaccharide (claims 1 and 4).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the quantities of coated TiO2 and polysaccharide. The range taught by Kanagawa encompasses the range recited in instant claim 4 and therefore renders the recited range obvious.
Kanagawa does not teach the specific polysaccharide to be a polysaccharide with a sulfate group with a weight-average molecular weight (MW) of 3.5-20x106 derived from Aphanothece sacrum. This deficiency is offset by the teachings of Doi.
Doi teaches the unique physical and physiological characteristics of the polysaccharide Sacran, which is isolated from the alga Aphanothece sacrum (Suizenji-nori), and its impact on the skin of individuals who apply the polysaccharide to their skin (Abstract). Rough skin is taught to be characterized by low hydration and high levels of water loss, which Doi contrasts with atopic dermatitis (AD), a “substantially allergic disease” in which patients possess lower epidermal barrier function (pg. 1554, left col., para. 1). Sacran is taught to be “a polysaccharide isolated from the alga Aphanothece sacrum (Suizenji-nori)…composed of 11 kinds of saccharides, including sulfate and carboxylic acid groups” (pg. 1554, left col., para. 2) with a molecular weight from 16-29x106, which overlaps with the range recited in instant claim 2 (pg. 1559, left col., final para.). Sacran is additionally taught to have higher water-retention than hyaluronic acid, to be able to form a film that can “decrease the water evaporation rate”, and to “improve skin conditions both in healthy subjects and in patients with AD” (pg. 1554, left col., para. 2 - right col., para. 1). After mimicking the effects of rough skin and AD in patients, Doi used a composition comprising sacran to improve skin conditions and found that the mechanism includes “trapping” molecules that impart negative effects (pg. 1559, right col., para. 2-7).
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 Doi to use the polysaccharide sacran in the cosmetic composition of Kanagawa because combining prior art elements to impart a known benefit yields predictable results. Kanagawa teaches a cosmetic composition that is equivalent to a sunscreen comprising titanium oxide coated in hydrous silica and a polysaccharide in amounts that overlap with the ranges recited in instant claim 5. In view of the teachings of Doi, a person of ordinary skill would be motivated to use a sacran as a polysaccharide in the invention of Kanagawa because Doi teaches the polysaccharide to be a superior skin moisturizer that treats not only rough, dry skin but also atopic dermatitis, which the ordinary artisan would recognize as desirable in a cosmetic composition that is intended to be applied to the skin of users. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-8 in view of the teachings of Kanagawa and Doi.
Response to Arguments
The Applicant’s arguments, filed on 13 July 2026, have been fully considered but are not persuasive.
In response to applicant's arguments against the Kanagawa and Doi references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues in the penultimate para. of pg. 8 that the Kanagawa reference does not teach “the specific combination of components recited in amended claim 1” and similarly argues in para. 2 of pg. 9 that the Kanagawa reference teaches a different polysaccharide than the one recited in the instant claims. The rejection under 35 U.S.C. § 103 presented in the previous Office Action and maintained above did not argue that the specific combination of all claimed components in a single embodiment, as required for anticipation, was taught by the Kanagawa reference. Instead, the relevant rejections state that the use of the recited polysaccharide in the invention of Kanagawa would be obvious in view of the teachings of the Doi reference and the argument is not found to be persuasive.
Applicant argues in the para. that spans the bottom of pg. 8 and top of pg. 9 that the Kanagawa reference does not address “the problem described in the present application”. Guidelines on analogous and nonanalogous art are provided in MPEP § 2141.01(a). “In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)” (bold added for emphasis). The Kanagawa reference is directed to an anti-ultraviolet cosmetic product. Applicant’s argument is found to be unpersuasive because an anti-ultraviolet cosmetic product is considered to be reasonably pertinent to sunscreen cosmetic comprising an aqueous dispersion as recited in the instant claims, therefore the Kanagawa reference is considered analogous art to the instant application and appropriate to use in a rejection under 35 U.S.C. § 103.
In the antepenultimate para. of pg. 10, Applicant argues that the Doi reference “does not teach or suggest the amended claim 1 combination as a whole”. The rejection under 35 U.S.C. § 103 presented in the previous Office Action and maintained above did not argue that the specific combination of all claimed components in a single embodiment, as required for anticipation, was taught by the Doi reference. Instead, the relevant rejections state that the use of the recited polysaccharide in the invention of Kanagawa would be obvious in view of the teachings of the Doi reference and the argument is not found to be persuasive.
From the final para. of pg. 10 to para. 2 of pg. 11, Applicant argues that the claimed inventive concept does not occur when using sacran with “untreated titanium oxide or untreated zinc oxide”, but only when using sacran with “hydrous silica-treated titanium dioxide or hydrous silica-treated zinc oxide”. The Kanagawa reference teaches a cosmetic composition that is equivalent to a sunscreen comprising titanium oxide coated in hydrous silica and a polysaccharide in amounts that overlap with the ranges recited in instant claim 5 and the Doi reference teaches the benefits of applying sacran, “a polysaccharide isolated from the alga Aphanothece sacrum (Suizenji-nori)…composed of 11 kinds of saccharides, including sulfate and carboxylic acid groups” with a molecular weight from 16-29x106 Da, to the skin. As argued above, the combination of the Kanagawa reference and Doi reference renders obvious the recited cosmetic composition, including sacran and hydrous silica-treated titanium dioxide.
In the final para. of pg. 11, Applicant argues that the teachings of Doi do not provide a reason to modify the invention taught by Kanagawa and would not provide a reasonable expectation of success. The Examiner disagrees because, as argued above and presented here in brief for convenience, a person of ordinary skill in the art would be motivated to use a sacran as a polysaccharide in the invention of Kanagawa because Doi teaches the polysaccharide sacran to be a superior skin moisturizer that treats not only rough, dry skin but also atopic dermatitis, which the ordinary artisan would recognize as desirable in a cosmetic composition that is intended to be applied to the skin of users.
Further, MPEP § 2143 states that an acceptable rationale for supporting a conclusion of obviousness with a reasonable expectation of success may be “[s]imple substitution of one known element for another to obtain predictable results”. Kanagawa teaches the use of a polysaccharide in a cosmetic composition and Doi teaches the polysaccharide sacran with a molecular weight of 16-29x106 Da, therefore both elements are known. Doi teaches that sacran has benefits to users when applied topically and Kanagawa teaches a cosmetic composition that is intended to be applied topically. Therefore, the combination of the teachings of the Kanagawa and Doi references would motivate a person of ordinary skill in the art to substitute sacran for the polysaccharide in the composition taught by Kanagawa and to have a reasonable expectation of success in doing so.
Applicant also argues in this para. that the combination of the teachings of the Kanagawa and Doi references would not solve the problem addressed by the instant application. This is not found to be persuasive because “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” See MPEP § 2144.IV. and In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
In para. 2-3 of pg. 12, Applicant argues that the Kanagawa reference addressed an emulsified cosmetic while the instant application addressed a “dispersion-stability problem”. This is not found to be persuasive because, as stated above, a reference that is from the same field of endeavor as the claimed invention (even if it addresses a different problem), is considered to be analogous art and appropriate to use in a rejection under 35 U.S.C. § 103 (see MPEP § 2141.01(a)). In addition, it is not necessary that the prior art suggest a combination to “achieve the same advantage or result discovered by applicant.” See MPEP § 2144.IV.
In the para. that spans the bottom of pg. 12 and top of pg. 13, Applicant argues that the Kanagawa reference does not teach the polysaccharide recited in the instant application. This argument was not made in the previous Office Action. The rejection under 35 U.S.C. § 103 presented in the previous Office Action and maintained above states that the use of the recited polysaccharide in the invention of Kanagawa would be obvious in view of the teachings of the Doi reference and the argument is not found to be persuasive.
Finally, in para. 2 of pg. 13 Applicant reiterates their argument that the claimed inventive concept does not occur when using “the tested polysaccharides with hydrous silica-treated inorganic powder” or when using sacran with “untreated inorganic powder”, but only when using sacran with “hydrous silica-treated titanium dioxide or hydrous silica-treated zinc oxide”. As stated above, the Kanagawa reference teaches a cosmetic composition that is equivalent to a sunscreen comprising titanium oxide coated in hydrous silica and a polysaccharide in amounts that overlap with the ranges recited in instant claim 5 and the Doi reference teaches the benefits of applying sacran to the skin. As argued above, the combination of the Kanagawa reference and Doi reference renders obvious the recited cosmetic composition, including sacran and hydrous silica-treated titanium dioxide.
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.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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