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 .
Response to Arguments
Applicant's arguments filed 7/16/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record.
In view of the claims as amended, all rejections presented in the Office Action dated 4/16/2026 have been withdrawn and new rejections presented below. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn:
The objection to the specification for trademarks/trade names is maintained (see Tables).
The arguments in the response filed 7/16/2026 will be addressed below to the extent that they apply to current rejections.
Regarding Applicant’s assertion of unexpected results, this is not found persuasive. Applicant points to the viscosity of Katori and the data in Table 3 as evidence of unexpected results but has not explained why the results are unexpected or significant. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. MPEP 716.02. Each of the Example Compositions 6 through 12 comprises of four thickening ingredients: hydroxypropyl methylcellulose stearoxy ether, cellulose gum, succinoglycan, and agar, whereas Control Compositions 8 through 10 each comprise of two thickening ingredients. The data indicates a trend that that compositions comprising a greater total amount of thickening ingredients demonstrate a higher viscosity. For example, Control Compositions 8 through 10 each comprise a total of 0.6%, 0.4%, and 1.3% thickening ingredients, respectively. Examples 6 through 12 comprise between 1% to 1.6% of total thickening ingredients. It would not seem unexpected that a composition with a greater total concentration of thickening agents would have a higher viscosity.
Furthermore, the data is not commensurate with the scope of the claims. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. Applicants cite to data wherein the compositions only tested one species of volatile oil, one species of non-volatile oil, and one species of polyglyceryl surfactant . The same concentration for each was tested for all controls, and two concentrations were tested amongst all the inventive examples. The claims are much broader, both in terms of ingredients and amounts thereof. Thus, it is unclear if the claimed effect would be seen for all compositions within the scope of claim 1.
Claim Objections
Claims 18-19 and 21 are objected to because of the following informalities:
Claims 18-19 recite “wherein a mass ratio … is the composition is from 50:1 to 1:1” instead of “in the composition”.
Claim 21 recites “wherein an amount of the one or more organic ultraviolet absorbers from 1 mass % to 25 mass %”. This should read “wherein an amount of the one or more organic ultraviolet absorbers is from 1 mass% to 25 mass%”.
Appropriate correction is required.
New 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.
Claim 18 is 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 18 recites the limitation "the cellulose derivative”. There is insufficient antecedent basis for this limitation in the claim.
New 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 1-3, 12, 14, 18, 20-21, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over JP2019142825 (published 8/29/2019), in view of Nagai et al. (WO2021/060079 A1, published 4/1/2021, cited in previous Office Action), as evidenced by Typology (2026).
For ease of examination, the Examiner relied upon U.S. Publication US2022/0362129 A1 as an equivalent English translation of the Japanese WO2021/060079 A1 publication. All citations henceforth to Nagai are in the US Patent Application Publication.
Regarding claim 1, 18, and 24, JP’825 teaches an oil-in-water emulsion comprising 0.01% to 2.0% by mass of a water-soluble gelling agent, 0.01% to 1.0% by mass of a water-soluble thickener, a gemini-type anionic surfactant, and oil agent [claim 1]. The water-soluble gelling agent may be agar [0015] and the water-soluble thickener may be a hydrophobized hydroxypropyl methylcellulose such as Sangelose 90L [0018-0019] (reads on hydroxypropyl methylcellulose stearoxy ether, see instant Spec at para. 0024). These amounts overlap with and make obvious the instantly claimed amounts of agar and hydroxypropyl methylcellulose stearoxy ether (instant claims 1 and 24), and read on the ratio of agar to hydroxypropyl methylcellulose stearoxy ether claimed in instant claim 18. MPEP 2144.05. JP further teaches that the oil agent may comprise of polyglyceryl-6 octacaprylate (reads on polyglyceryl surfactant) [0025]. The oil agent may comprise of one or components [claim 7], including isoparaffin (reads on volatile hydrocarbon oil) and squalane (reads on non-volatile hydrocarbon oil) [0025]. JP’825 teaches a composition that does not comprise of polyethylene glycol surfactant [Formula Example 4]. JP’825 further teaches that polyglyceryl surfactant may be present in the amount of 1% [Formula Example 4, which recites diglyceryl monoisostearate (i.e. polyglyceryl-2 isostearate)]. This amount overlaps with and makes obvious the instantly claimed amount of polyglyceryl surfactant. MPEP 2144.05.
JP’825 does not explicitly teach the instantly claimed amounts of volatile hydrocarbon oil or the instantly claimed amounts of non-volatile hydrocarbon oil. Ngai teaches a sunscreen cosmetic comprising a volatile hydrocarbon oil [0052] and a non-volatile hydrocarbon oil [0068]. Ngai further teaches that the volatile oil may be present in the amount of 10% to 40% by weight of the composition [0055], and the non-volatile hydrocarbon oil may be present in the amount of preferably 10% or less by weight of the composition [0071]. It would be obvious to one of ordinary skill to apply the teachings of Ngai to that of JP’825 to include the volatile hydrocarbon oil and non-volatile hydrocarbon oil in the amounts taught to be suitable for a cosmetic composition. One would be motivated to make this modification as Ngai teaches that the disclosed amount of volatile hydrocarbon oil allows for the appropriate viscosity to be maintained [0055] and the disclosed amount of non-volatile hydrocarbon oil allows for reduced greasiness [0071]. The amounts taught in the prior art overlap with and make obvious the instantly claimed amounts. MPEP 2144.05.
Regarding claim 2, JP’825 does not explicitly teach that the composition is free of acrylates or acrylamide copolymers. JP’825 teaches that acrylates or acrylamide copolymers may be optionally selected as a water-soluble thickener, however, other thickeners such as hydrophobized hydroxypropyl methylcellulose are preferred to improve usability and stability [0018]. Thus, based on the teachings of JP’825, it would be obvious to formulate a composition without acrylates or acrylamide copolymers as JP’825 teaches more preferable alternatives.
Regarding claim 3, JP’825 teaches that composition is an oil-in-water emulsion that comprises of an oil and water phase [see 0037]. JP’825 further teaches that both agar and the hydroxypropyl methylcellulose stearoxy ether are water-soluble [0015; 0018], thus it would be obvious to add water-soluble compounds to the aqueous phase of the composition. Additionally, it would be obvious that the oil components such as volatile hydrocarbon oil and non-volatile hydrocarbon oil would comprise the oil phase. JP’825 teaches that after each phase is confirmed to be dissolved, the oil and aqueous phase are mixed to emulsify the composition [0038]. As evidenced by Typology, polyglyceryl-2 isostearate (as taught in Formula Example 4), is amphiphilic and dispersible in the aqueous phase. Thus, after emulsification, the surfactant would be dispersed/dissolved in the aqueous phase.
Regarding claim 12, JP’825 teaches that the composition may comprise of colorants (reads on pigments) [0026].
Regarding claim 14, JP’825 teaches that the composition may comprise of UV absorbing agents [0026] and be formulated as a sunscreen (see e.g. Formula Example 2).
Regarding claims 20-21, JP’825 teaches that the composition may comprise of organic UV absorbers such as octocrylene and ethylhexyl methoxycinnamate [0055]. JP’835 further teaches that octocrylene may be present in the amount of 1% and ethylhexyl methoxycinnamate may be present in the amount of 3% [0055]. The amounts taught in the prior art overlap with and make obvious the instantly claimed amounts. MPEP 2144.05.
Regarding claim 23, JP’825 teaches that its compositions were evaluated based on user experience during application for criteria such as ease of spreading on skin and how the composition felt on the skin (i.e. the composition was applied to a keratinous surface) [0031].
Claims 4-6, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over JP2019142825 (published 8/29/2019), in view of Nagai et al. (WO2021/060079 A1, published 4/1/2021), as applied to claims 1 and 3 above, and further in view of Katori et al. (US 2019/0290559 A1, published 9/26/2019, cited on the 6/7/2024 IDS.)
Regarding claims 4-6 and 14, JP’825 teaches that the composition may comprise of UV absorbing agents [0026] and be formulated as a sunscreen (see e.g. Formula Example 2). JP’825 teaches the inclusion of triethoxycaprylylsilane-treated titanium dioxide (hydrophobically treated titanium dioxide) but does not explicitly state that it is dispersed in the oil phase. Katori teaches an oil-in-water emulsion cosmetic comprising hydroxypropyl methylcellulose stearoxy ether [0030] and sunscreen agents. Katori further teaches that an ultraviolet scattering agent with a hydrophobic surface, such as a zinc oxide or titanium oxide powder [0014] surface treated with silicone [0016-0017] is blended into the oil phase of the emulsion [0010]. It would be obvious to one of ordinary skill, to modify the teachings of JP’825 with that of Katori, and blend a hydrophobically treated titanium oxide powder into the oil phase of the cosmetic emulsion to impart sun-protective properties, as selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07.
Regarding claim 19, JP’825 teaches that the composition may comprise of agar in the amount of 0.01% to 2.0% [0015; claim 1], and Sangelose 90L (hydroxypropyl methylcellulose stearoxy ether) in the amount of 0.01% to 1.0% [0018-0019; claim 1]. These amounts overlap with and read on the instantly claimed ratio. MPEP 2144.05.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over JP2019142825 (published 8/29/2019) and Nagai et al. (WO2021/060079 A1, published 4/1/2021, cited in previous Office Action), as applied to claim 1 above, and further in view of Pereira (US 4,981,845, issued 1/1/1991).
Regarding claim 25, JP’825 does not explicitly teach the viscosity of the disclosed composition. JP’825 teaches that the composition may optionally comprise of additional thickeners [0026], and by altering the type(s) and amounts of gelling agents and thickeners, it is possible to produce the composition in a range forms [0003], and freely adjust the resulting gel’s strength and feel [0018]. Pereira teaches a cosmetic composition comprising an oil-in-water emulsion [col. 2 lines 14-19]. Pereira further teaches that the viscosity of the emulsion will determine whether it is a lotion or cream. The viscosity may range from below 2,000 mPa·s to 100,000 mPa·s [col. 7 lines 15-22]. The instantly claimed viscosity of 28,300 mPa·s to 41,750 mPa·s would result in a composition that is a normal to thick cream [col 7, lines 21-22]. As JP’825 teaches that the composition can be appropriated adjusted for desired feel, it would be obvious to one of ordinary skill before the effective filing date of the instantly claimed invention to modify the teachings of JP’825 and Nagai with that of Pereira, to formulate a composition with the desired viscosity in order to achieve the desired texture/feel of a normal to thick cream.
Conclusion
No claims are allowed.
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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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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