DETAILED ACTION
This action is in response to papers filed on 06/26/2026. Claims 1, 2, 4 and 9 of Enomoto et al., 18/700,297 (04/11/2024) are pending examination on the merits: claim 1 is amended, claims 3, 5-8 are cancelled. Claims 1, 2, 4, and 9 are rejected.
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 .
Priority
This application is a 371 of PCT/JP2022/040303 filed 10/28/2022, and claims foreign priority to JAPAN 2021-184263 filed11/11/2021.
Withdrawn Claim Rejections - 35 USC § 112
The rejection of Claims 1, 2, 4 and 9 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in view of Applicant’s amendment to claim 1 further defining the scope of item (B).
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.
Claims 1-2, 4, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hayase et al., EP2662068B1 (“Hayase”).
Regarding claim 1, Hayase teaches an oil-in-water emulsion for application on the skin in Example 14 (i.e., sunscreen moisturizing essence, para [0054], pp. 13-14, Table 5) comprising:
Nicotinamide (0.1%) (p. 14, line 7)
Xanthan gum (0.05%) (p. 13, line 50)
Chlorphenesin (0.05%) (p. 14, line 21)
Purified water in a balanced amount (p.14, line 29)
While the amended claim 1 recites that:
Component A blended is between 0.5 to 8 mass%
Component B blended is between 0.3 to 3 mass%
Component C blended is between 0.1 and 1 mass%, all with respect to the total amount of the cosmetic.
Obviousness may be found where the claimed ranges do not overlap with the prior art but are merely close. Since the proportions are sufficiently similar (c.f., component (C) 0.05% is very similar in magnitude to 0.1%), one skilled in the art would reasonably expect them to exhibit the same or substantially similar properties. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP § 2144.05(I). Moreover, all the components claimed in Applicant’s formulation are present in Hayase’s formulation.
Applicant however argues on page 4 of Applicant’s Remarks that the composition was developed based on a discovery that browning and an unpleasant odor caused by the Maillard reaction between components (A) and (B) are suppressed by component (C) and references paragraph [0020] of the instant Specification. In the instant Specification component (C) is preferably 0.05 to 3 mass%, and more preferably 0.1 to 1 mass% with respect to the total amount of the cosmetic which overlaps with Hayase’s teachings of 0.05 mass% of component (C). Nonetheless, Applicant further argues that one of ordinary skill in the art “would have recognized that the low content levels of each component in Hayase’s moisturizing essence are due to the reasons stated above” (c.f., page 4 of Applicant’s Remarks), which is unclear to the Examiner. Applicant argues that the present invention instead increases the amounts of components (A) and (B) to arrive at the claimed invention, which Applicant argues is superior in nature compared to the comparative examples of the instant Specification.
In response to Applicant’s arguments, the Examiner respectfully acknowledges Applicant’s arguments but the arguments are not found to be persuasive. In the comparative examples of the instant Specification (c.f., Table 1 on page 7 of the instant Specification), Component (C) is not present at all. In Hayase’s teachings, Component C is very much present at 0.05 mass%, which is close to the 0.1% to 1 mass% claimed by Applicant, and is thus expected to act in a similar capacity as in Applicant’s formulations. In the formulations, according to Table 1, no unpleasant odor was observed when component (C) is present; however, when it is absent, an odor is observed. Furthermore, Applicant has not disclosed any criticality in terms of amount in any of the Examples provided by the disclosure. The rejection is maintained.
Regarding claim 2, Hayase teaches the cosmetic composition of claim 1. Hayase teaches Nicotinamide (0.1%) as part of a sunscreen formulation in Table 5, Example 14 (p. 14, line 7).
Regarding claim 4, Hayase teaches the cosmetic composition of claim 1. Hayase teaches Xanthan gum (0.05%) as part of a sunscreen formulation in Table 5, Example 14 (p. 13, line 50). "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 2112.01(II). Claims 4 is obvious.
Regarding claim 9, Hayase teaches the cosmetic composition of claim 1. In Example 14 (i.e., sunscreen moisturizing essence, para [0054], pp. 13-14, Table 5), Hayase teaches that the compositions of the invention are oil-in-water emulsion compositions (c.f., Hayase claim 1, and Title). The claim is obvious.
To one of ordinary skill in the art, selecting nicotinamide as an active agent, xanthan gum as a thickener/stabilizer, chlorphenesin as a preservative, and water as a carrier would have been considered a routine formulation design. A person of ordinary skill in the art would have selected these components because each perform a known and complementary function in topical/aqueous compositions. Thus, selecting a subset of known components from a finite list to function in the composition in the manner these components are well-known to function and achieve a workable formulation would have been within the routine skill of a person of ordinary skill in the art. Moreover, Hayase provides a finite number of identified, predictable solutions in Example 14, and a person of skill in the art would have had reason to pursue these known options with a reasonable expectation of success and yielding predictable results. This is consistent with the principles set forth in KSR. Furthermore, the claimed invention recites “comprising language” and, thus, does not exclude other components of Hayase’s formulation. For these reasons, claims 1-9 are rejected as obvious over Hayase et al.
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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/C A/Examiner, Art Unit 1622
September 9, 2026
/JAMES H ALSTRUM-ACEVEDO/
Supervisory Patent Examiner, Art Unit 1622
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