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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “[Chem. 1]” following “…by Formula (1):” appears out of place.
Claim 2 is objected to because of the following informalities: “wherein in Formula (1) of the component (A)” should not have a line break after “wherein”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Sasa (JP 2020-180103A; citations are to the translation filed 04/29/2024).
Sasa teaches a lotion comprising (A) 1-(2-hydroxyethyl)-2-imidazolidinone and 1-(2-hydroxyethyl)-2-pyrrolidone, each at 0.1%, (B) PEG-10 dimethicone at 0.01%, (C ) oils including castor oil (0.01%), squalane (0.1%), oils of avocado, olive fruit, jojoba seed (each at 0.1%), and dimethicone, among others, (D) water at 47.3%, and (E ) ethanol at 3% (Example 18, paras.0076-78). PEG-10 has a straight-chain silicone skeleton and an HLB value below 10 according to the disclosure (Specification para.[0013]).
Sasa also teaches a sunscreen cosmetic comprising (A) 1-(2-hydroxyethyl)-2-imidazolidinone and 1-(2-hydroxyethyl)-2-pyrrolidone, each at 0.1%, (B) PEG-9 polydimethylsiloxyethyl dimethicone at 1%, (C ) oils including 1,3-butylene glycol, cyclopentasiloxane, dimethicone, and isododecane (5%, 4%, 4%, 4%, respectively), (D) water at 39.7%, and (E ) ethanol at 4% (paras.0133-34, Example 38, Table 27; see title; abstract).
While Sasa does not appear to expressly state the compositions of Examples 18 and 38 as oil-in-water emulsions, it does state Example 32 is an oil-in-water makeup composition (paras.0118, 0120, Table 21-2). Table 21-2 lists water concentrations which is similar and lower than the respective water concentrations in Examples 18 and 38. Therefore Examples 18 and 38 would have been oil-in-water emulsions.
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.
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sasa (JP 2020-180103A; citations are to the translation filed 04/29/2024) in view of Yamaguchi (US 2016/0220457).
Sasa does not specifically teach using PEG-12 dimethicone in claim 7.
Yamaguchi is drawn to cosmetic emulsions and teaches silicon-type surfactants, specifically including the PEG-10 dimethicone and PEG-9 polydimethylsiloxyethyl dimethicone in Sasa’s Examples 18 and 38 (title; abstract; paras.0047-48). Yamaguchi further teaches PEG-12 dimethicone as another suitable silicon-type surfactant (para.0047).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to modify the teachings of Sasa and use PEG-12 dimethicone as recited in the instant claim 7. The skilled person would have been suggested to do so because Yamaguchi teaches both PEG-10 dimethicone and PEG-9 polydimethylsiloxyethyl dimethicone as equialents of PEG-12 dimethicone. Substituting equivalents known for the same purpose, where the equivalency has been recognized in the prior art, presents strong evidence of obviousness; an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. MPEP §2144.06 (II) (citations omitted).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614