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 1-34 are cancelled. Claims 35-54 are new, pending, and under examination.
Priority
This application is a 371 of PCT/IB2022/061954, filed on 12/09/2022. The application is claiming priority to U.S Provisional Application No. 63/288,983, filed on 12/13/2021.
Rejections/Objections withdrawn
All objections, 35 USC § 112(a), 35 USC § 112(b), 35 USC § 102, and 35 USC § 103 rejections imposed in the previous correspondence filed on 03/24/2026 are hereby withdrawn due to applicant’s cancellation of claims 1-34 and submission of new claims. Arguments toward the withdrawn objections and rejections are moot.
New Objections – Due to New Claims
Claims 35 (lines 3 and 10-12), 37 (lines 2 and 8-10), 47, and 49 are objected to for the use of the phrasing “at least one of a…..and…..” where the proper thing to say for these groups of options is to not use “and” and use a phrase such as “at least one of…… or a combination thereof” (Note that applicant does use this appropriate structure this in line 7 of claim 35 with “or a combination thereof”)
Claims 39 and 42 are objected to since “water dispersible pigments” represents an additional component and should be introduced with “composition further comprises”.
Claims 40 and 43 are objected to since “one or more powders” represents an additional component and should be introduced with “composition further comprises”.
Claims 41 and 44 are objected to since “one or more oil-soluble ultraviolet absorbers” represents an additional component and should be introduced with “composition further comprises”.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Rejections modified in view of substantial amendments and new claims (i.e., broadening the scope of independent claim 35 from “An oil-in-water type” emulsion to any form of emulsion having “an oil phase dispersed in an aqueous phase”): Prior art added (i.e., Chevalier et al.), prior art mappings added, obviousness statements modified.
Claims 35-46 and 51-54 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US20100322876A1) in view of Chevalier et al. (US20040142008A1) in further view of Masaki et al. (JP2017222605A).
Nguyen et al. discloses compositions and methods of using such compositions to treat keratinous substrates by forming a protective barrier on it [¶1]. Nguyen et al. teaches that the composition may be applied to keratinous substrates such as the skin [¶¶2, 3]. Nguyen et al. teaches that such protective barrier compositions are useful in cosmetic applications such as makeup, skin care and sun care products [¶2]. Nguyen et al. teaches that solvents such as water may be included in the composition at concentrations from 10-95% by weight. Nguyen et al. teaches that at least water insoluble ingredient is present in an amount from about 0.1% to about 50% by weight [¶73], and further teaches that nonpolar (i.e., water-insoluble) solvents such as behenyl alcohol may be included in the composition [¶91]. Nguyen et al. teaches that the composition may comprise solvents such as water and nonpolar solvent or mixtures thereof [¶74], with oils being suitable as the nonaqueous nonpolar organic solvent [¶89], and that the composition may also include surfactants such as emulsifiers [¶94, ¶104] ––thus suggesting the composition having the propensity to be an oil-in-water emulsion (an emulsion with oil and aqueous phases). Nguyen et al. teaches that the composition contains at least one auxiliary ingredient in an amount ranging from 0% to 50% w/w, based on the total weight of the composition [¶94]. Nguyen et al. teaches that fatty acids (which is a form of carboxylic acid [¶30]) ––such as stearic acid and behenic acid [¶33]--––can be present in such compositions at 0% to 50% w/w [62]. Nguyen et al. teaches that the composition may contain neutralizing agents including sodium hydroxide and potassium hydroxide [¶166] at concentrations ranging from 0% to 50% w/w [¶94]. Nguyen et al. teaches that the composition may contain viscosity modifiers and gelling agents such as xanthan gum [¶164] and succinoglycan [¶109] at concentrations ranging from 0% to 50% w/w [94]. Nguyen et al. teaches that the composition may contain sunscreen agents (UV absorbers and transmitters) such as zinc oxide, titanium oxide, and octocrylene (which is an organic UV absorber) at concentrations ranging from 0.001% to 20% w/w [¶131. Nguyen et al. teaches that the composition may include water dispersible pigments such as iron oxide [¶129] at concentrations ranging from 0.001% to 35% w/w [¶128]. Nguyen et al. teaches that such pigments may be surface-treated to render the particles of the powder more lipophilic (or hydrophobic) in nature [¶128]. Nguyen et al. teaches that anionic surfactants that are amphiphilic, water-soluble, non-PEGylated, and fatty alcohol-comprising, such as sodium lauryl sulfate [¶106], may be included in the composition at concentrations ranging from 0% to 50% w/w [¶94]. In all embodiments, Nguyen et al. teaches any and all Polyethylene glycol-based ingredients to be optional, which inherently suggests embodiments in which polyethylene glycol is omitted. Nguyen et al. omits the inclusion of microplastics in all embodiments. Nguyen et al. states that the composition may include preservatives such as phenoxyethanol at concentrations ranging from 0.0001% to 8% w/w [¶132]. Nguyen et al. teaches that the methods for imparting desirable properties to the keratinous substrate involve contacting the substrate with the compositions of the disclosure [¶33], with such substrates including the skin [¶2]. Chevalier et al. teaches that the composition may comprise a fatty phase.
However, Nguyen et al. does not explicitly teach the limitation of claim 35, wherein an oil phase dispersed is in an aqueous phase. Chevalier et al. also does not teach all required limitations of new claims 39-44.
Chevalier et al. discloses a composition containing fibers and an associative polyurethane useful as a care or makeup composition for keratin materials and applied topically to the skin [¶¶abstract, 2]. Chevalier et al. teaches that the composition of the invention may contain both an oily and aqueous phase, and may contain an oily continuous or outer phase (W/O), or an aqueous continuous phase (O/W), and it may be a simple emulsion (O/W or W/O emulsion) or a triple emulsion (W/O/W or O/W/O emulsion (emulsions that also have oil dispersed in water phase) or a multiple emulsion [¶42]. An emulsion is a form of dispersion. Chevalier et al. teaches that the aqueous phase may comprise any common water-soluble or water-dispersible additive [¶48]. Chevalier et al. teaches that the oily phase may also comprise any common lipo-soluble or lipo-dispersible additive [¶53]. Chevalier et al. teaches that such additives include active agents, adjuvants, basic agents, pigments, fillers, UV-screening agents [¶86,88]. Chevalier et al. teaches that fillers such as lipophilic polyethylene powders may be included in such phases [¶88]. Chevalier et al. teaches these additives can be present in concentrations ranging from 0.01% to 30% of the total weight of the composition [¶86].
However, Nguyen et al. and Chevalier et al. fail to collectively teach the presence of 0.5 mass % to 2 mass % of methylheptylglycerin and/or ethylheptylglycerin per present claims 35 and 53-54. Masaki et al. discloses a cosmetic composition which can make the skin glossy and smooth when applied to the skin, can suppress foaming when filled in a container, and is excellent in transparency and stability [¶7]. Masaki et al. teaches that the composition may include fatty acids and pH adjusting agents (e.g., neutralizers). Masaki et al. teaches that such compositions may contain a class of ingredients called glycerin mono-(termed ingredient A) ––such as ethylheptylglycerin––at concentrations ranging from 0.01% to 3% w/w to impart gloss and adjust texture [¶12, ¶13, ¶14]. Note that Masaki mentions that “Glycerin mono (C 7-9 branched alkyl) ether can be produced from glycerin and a monohydric alcohol having 7 to 9 carbon atoms. Moreover, a commercial item can be used for glycerol mono ( C7-9 branched alkyl) ether”. Regarding claims 53-54, methylheptylglycerin and ethylheptylglycerin are closely structurally related glyceryl ethers differing only in the structure/chain length of the branched alkyl substituent. In view of this close structural similarity and Masaki’s teachings of the subgenus group, a person of ordinary skill in the art would have expected methylheptylglycerin to possess properties similar to those of ethylheptylglycerin and would have found substitution of methylheptylglycerin for ethylheptylglycerin as an obvious and similar related species. See MPEP 2144.09; In re Payne and In re Wilder.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the cosmetic composition of Nguyen et al. in view of Chevalier et al. by formulating the composition as an O/W, W/O/W, or O/W/O emulsion and incorporating water-soluble/dispersible ingredients the liquid phase and lipo-soluble/dispersible ingredients in the oil phase, as taught by Chevalier et al., in order to provide a conventional cosmetic emulsion in which the respective ingredients are suitably incorporated according to their solubility and dispersibility. It would further have been obvious to a person of ordinary skill in the art to incorporate ethylheptylglycerin/methylheptylglycerin in the overlapping amount taught by Masaki et al., because Masaki et al. teaches its use in cosmetic compositions to impart gloss and texture. A person of ordinary skill in the art would have had a reasonable expectation of success because Nguyen et al., Chevalier et al., and Masaki et al. each concern cosmetic compositions employing conventional cosmetic ingredients, and Chevalier et al. and Masaki et al. expressly teach the respective emulsion arrangement, phase incorporation, and ethylheptylglycerin/methylheptylgycerin use relied upon in the proposed combination.
Claims 47-50 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US20100322876A1) in view of Chevalier et al. (US20040142008A1) in further view of Masaki et al. (JP2017222605A) in further view of Malle et al. (US20170189282A1) in further view of Kako et al. (AU2014378413C1).
Nguyen et al., Chevalier et al., and Masaki et al. collectively teach the limitations of claims 35-46 and 51-54.
However, Nguyen et al., Chevalier et al., and Masaki et al. fail to teach the limitations of present claim 47-50.
Malle et al. discloses anhydrous compositions [¶1] that may yet contain up to 5% w/w of water [¶46]. Malle et al. teaches that the compositions of the invention are cosmetic or dermatological [¶41], topically applied to keratinous material such as the skin [¶9, ¶44]. Malle et al. teaches that the composition may include hydrocarbon-based waxes such as fatty acids [¶268]. Malle et al. teaches that the composition may additionally include neutralizers [¶495]. Malle et al. teaches that the composition may have a hardness ranging from 15 kPa to 150 kPa [¶79]. Malle et al. defines the hardness of their composition to be measured as
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[¶83], with the apparatus probe spindle having a diameter of 2 mm (Area=3.14 mm2) [¶82]. Therefore, the Fmax of the composition––measured as
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––has the range of 47 to 471 mN, which falls within the stated hardness limitation of at least 4 mN.
Kako et al. discloses a skin emulsion composition [¶1]. Kako et al. teaches that the skin emulsion composition of the present invention can be used primarily in cosmetic compositions such as basic skin care including creams and lotions [¶50], externally applied to the skin [¶49]. Kako et al. teaches that the composition may include animal oils (which contain fatty acids) [¶36 and clam 2 of Kako et al. ]. Kako et al. teaches that the composition may also include neutralizers [¶34]. Kako et al. teaches that the viscosity of the composition is at least 10,000 mPa-s or more.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed inventions, to formulate the cosmetic compositions of Nguyen et al., Chevalier et al., and Masaki et al. to possess rheological properties such as hardness and viscosity within ranges disclosed by Malle et al. and Kako et al. This is because all of these references are directed to cosmetic compositions applied to keratinous substrates such as the skin. Malle et al. demonstrates that cosmetic compositions containing such fatty acids and neutralizers taught as jointly taught by of Nguyen et al., Chevalier et al., and Masaki et al. may exhibit hardness values within the calculated range corresponding to the claimed hardness limitation, while Kako et al. teaches that similar cosmetic compositions may also have viscosities overlapping with that of the present claim. A person of ordinary skill in the art would have thus recognized that hardness and viscosity are predictable formulation parameters that can be adjusted through routine optimization and modification of component concentrations and formulation structures in such cosmetic systems. Therefore, one of ordinary skills would have been motivated to adjust the viscosity and hardness of such compositions within this range to optimize the structure for its specific form and application. Accordingly, it would have been obvious to modify the cosmetic composition of Nguyen et al., Chevalier et al., and Masaki et al. in view of the teachings of Malle et al. and Kako et al. to obtain compositions having the claimed hardness and viscosity ranges, with a reasonable expectation of success because rheological properties are routinely optimized in cosmetic formulation to achieve desired stability, texture, form, and skin application properties.
Response to Arguments
Applicant’s arguments with respect to claims 35-54 have been considered but are moot because the new ground of rejection relies on a combination of prior art references due to amendment, which is different than the one applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusions
No claim is found allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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Arya A. Bazargani, Ph.D.
Patent Examiner
Art Unit 1613
/MARK V STEVENS/Primary Examiner, Art Unit 1613
Prosecution Insights