Just 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
The Applicant's amendments and/or arguments filed 7/20/2026 and the supplemental amendment filed 7/21/2026 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In view of the claims as amended, all rejections presented in the Office Action mailed 4/20/2026 have been withdrawn and new rejections presented below. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The arguments in the response filed 7/20/2026 will be addressed below to the extent that they apply to the current rejections.
Regarding applicant’s assertion of unexpected results, this is not found persuasive. Applicant argues that a component (D) comprising thickener having hydrophobic groups provided a desired texture and viscosity to the composition, as compared to a thickener comprising xanthan gum, thus showing unexpectedly superior effects attributable to component (D). However, applicant has merely provided data showing the results obtained using a thickener of component (D) compared to xanthan gum, and has not explained why the results are significant and unexpected, nor demonstrated that the results are unexpected compared to the closest prior art.
Additionally, the data that Applicant points to is not commensurate in scope with the claims. The compositions tested comprise of only four types of nonionic surfactant in two concentrations, one type of polar oil in two concentrations, and one water-soluble solvent in two concentrations. However, the claims are much broader, both in terms of ingredients and amounts thereof. It is unclear if the same effect would be seen for all compositions within the scope of claim 1. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). While Applicant is not required to provide data for every embodiment which falls within the scope of the claims, Applicant has provided limited data points. For example, one polar oil of component (B), octyl methoxycinnamate, is included at a 4% concentration for all tested compositions, except for a single comparative example where it is present at 8%. 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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP 716.02).
Additionally, applicant claims the desired properties are attributable to the specific thickeners of component (D). However, applicant only provides one example comprising a different thickener. Comparative Example 5 is the singular composition that comprises xanthan gum; furthermore, xanthan gum is present in the amount of 0.1%. In contrast, the tested thickeners of component (D), in Examples 17-20 and 22-26, range in concentration from 0.4% to 2%. In other words, the claimed thickeners are present in concentrations ranging from 400% to 2,000% of the concentration of xanthan gum in Comparative Example 5. Given the range in concentrations in which the thickeners were included in the tested compositions, it is unclear is the results are truly surprising, or if the results are merely due to a difference in concentration.
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. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
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 1-2, 4-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP2020002102A (published 1/9/2020, cited on the 7/26/2024 IDS) in view of Yabusaki (US 2019/0269598 A1, published 9/5/2019).
Regarding claims 1-2 and 5-6, JP’102 teaches a translucent (reads on instant claim 6) oil-in-water emulsion cosmetic [0031] comprising 6% w/w diisostearyl malate (reads on polar oil of claim 1, see instant spec para. 0017), 4.5% w/w PEG-20 hydrogenated castor oil (i.e. POE-20 hydrogenated castor oil) (reads on instant claims 1 and 2, see instant spec para. 0013 which teaches POE-20 hydrogenated castor oil as the preferred compound for component (A)), and 9% w/w glycerin (reads on water-soluble solvent, see instant spec para 0021), wherein the emulsified particle size is 132.1 nm (reads on instant claim 5) [Example 2 of Table 1]. The (A)/(B) ratio of the reference composition (4.5% PEG-20 / 6% diisostearyl malate) is 0.75 (reads on ratio of claim 1).
JP’102 teaches that the composition may comprise of a thickener but does not explicitly teach the instantly claimed thickeners. Yabusaki teaches an oil-in-water emulsion composition for skin [Abstract]. The composition may comprise of a non-ionic surfactant such as POE hydrogenated castor oil [0076], a UV absorber such as 2-ethylhexyl p-methoxycinnamate [0081], a water-soluble solvent comprising a lower alcohol [0048; 0050], and a thickener [0037]. Yabusaki further teaches that an electrostatic-repulsive thickener or associative thickener is preferred for emulsion stability [0037], and teaches suitable thickeners to include acrylate/steareth-20 methacrylate copolymer, ammonium acryloyldimethyltaurate/beheneth-25 methacrylate cross-polymer, and PEG-240/decyltetradeceth-20/HDI copolymer [0038]. It would be obvious to modify the teachings of JP’102 with that of Yabusaki, and select one of the thickeners taught by Yabusaki for inclusion in the composition of JP’102. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Furthermore, a skilled artisan would be motivated to select the disclosed thickeners for improved emulsion stability resulting from the thickeners’ electrostatic-repulsive or associative properties.
Regarding claim 4, JP’102 teaches that the composition may comprise of solvents and alcohols [0032], but does not explicitly teach lower alcohols. Yabusaki teaches that aqueous solvents suitable for an oil-in-water skin composition include water soluble lower alcohols such as ethanol and propanol [0048; 0051]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Yabusaki also teaches lower alcohols and polyhydric alcohols as equivalent water-soluble alcohols [0050]. Substitution of equivalents known for the same purpose is prima facie obvious. JP’102 teaches glycerin (i.e. a polyhydric alcohol), thus it would be obvious to substitute glycerin for a lower alcohol and arrive at the instantly claimed composition. A person of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to modify the teachings of JP’102 with that of Yabusaki to select lower alcohols as a water-soluble solvent for inclusion in the composition of JP’102.
Regarding claim 8, JP’102 teaches that the composition may comprise of surfactants [0032], but does not explicitly teach an amino-acid based ionic surfactant. Yabusaki teaches that suitable anionic surfactants for inclusion in an oil-in-water emulsion include N-acyl glutamate surfactants such as monosodium N-lauroyl glutamate [0072]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to modify the teachings of JP’102 with those of Yabusaki to select monosodium N-lauroyl glutamate as an ionic surfactant for inclusion in the composition of JP’102.
Regarding claim 9, JP’102 teaches that the composition may comprise of UV absorbers [0032]. Yabusaki teaches that a suitable UV absorbers for inclusion in an oil-in-water emulsion are 2-hydroxy-4-methoxybenzophenone (i.e. oxybenzone), and 4-methoxy-4'-t-butyldibenzoylmethane (i.e. t-butyl methoxydibenzoylmethane) [0081] (see instant spec at para 0038). The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to modify the teachings of JP’102 with those of Yabusaki to select oxybenzone or t-butyl methoxydibenzoylmethane as a UV absorbing agent for inclusion in the composition of JP’102.
Regarding claim 10, JP’102 teaches that the composition may comprise of other commonly used skincare ingredients such as oily bases [0032]. Yabusaki teaches that oily components suitable for inclusion in an oil-in-water emulsion cosmetic include candelilla wax and carnauba wax [0062]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to modify the teachings of JP’102 with those of Yabusaki to select candelilla wax or carnauba wax as an oily ingredient in the composition of JP’102. Yabusaki does not explicitly characterize candelilla wax or carnauba wax as UV protection powder enhancement component as instantly claimed, however, a composition and its properties are inseparable, thus the claimed properties are presumed to be inherent. If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
Claims 1, 3-4, 6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP2018095637A (published 6/21/2018, cited on the 7/26/2024 IDS) in view of Yabusaki (US 2019/0269598 A1, published 9/5/2019).
Regarding claims 1, 3-4, and 10, JP’637 teaches an oil-in-water emulsion sunscreen cosmetic comprising at least one oil-soluble UV absorber, dextrin fatty acid ester such as dextrin palmitate [0034] (reads on instant claim 10), and a polymer having constituent units derived from (meth)acrylic acid [claim 1], such as hydroxyethyl acrylate/sodium acryloyldimethyltaurate copolymer [0024] . The composition may further comprise a non-ionic surfactant such as POE sorbitan fatty acid esters or POE hydrogenated castor oil [0027]. The oil-soluble UV absorber may comprise of 2-ethylhexyl p-methoxycinnamate and octocrylene [claim 1] (reads on claims 1 and 3, see instant spec para. 0018). The composition may also comprise C1-C5 alcohols [0026] (reads on water-soluble solvent of claims 1 and 4). JP’637 further teaches that the non-ionic surfactant may be present in the amount of 1% w/w of the total composition [0027] and the oil-soluble UV absorber may be present in the composition in the amount of 0.6% w/w or more of the total composition [0034]. This equates to a ratio of 1.67 (reads on (A)/(B) ratio of 0.4 to 3).
JP’637 teaches that the composition may comprise of thickeners [0026] but does not explicitly teach the instantly claimed thickeners. Yabusaki teaches an oil-in-water emulsion composition for skin [Abstract]. The composition may comprise of a non-ionic surfactant such as POE hydrogenated castor oil [0076]; a UV absorber such as 2-ethylhexyl p-methoxycinnamate [0081]; a water-soluble solvent comprising a lower alcohol [0048; 0050]; and a thickener [0037]. Yabusaki further teaches that an electrostatic-repulsive thickener or associative thickener is preferred for emulsion stability [0037], and teaches suitable thickeners to include acrylate/steareth-20 methacrylate copolymer, ammonium acryloyldimethyltaurate/beheneth-25 methacrylate cross-polymer, PEG-240/decyltetradeceth-20/HDI copolymer, and hydroxyethyl acrylate/sodium acryloyldimethyltaurate copolymer [0038]. It would be obvious to modify the teachings of JP’102 with that of Yabusaki, and select one of the polymeric thickeners taught by Yabusaki for inclusion as a thickener in the composition of JP’102. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07.
Additionally, substitution of known equivalents is prima facie obvious. MPEP 2144.06.
JP’637 teaches that the inclusion of hydroxyethyl acrylate/sodium acryloyldimethyltaurate copolymer improves the stability of the composition [0024]. Yabusaki teaches hydroxyethyl acrylate/sodium acryloyldimethyltaurate and the instantly claimed thickening agents to be equivalents [0038]. Since both references teach that these polymeric thickening agents stabilize emulsions, it would be obvious to substitute the hydroxyethyl acrylate/sodium acryloyldimethyltaurate copolymer of JP’637 with any of the instantly claimed, equivalent thickening agents disclosed by Yabusaki, and arrive at the claimed composition.
Regarding claim 6, JP’637 teaches that the emulsion is transparent [0046].
Regarding claim 8, JP’637 teaches that the emulsion may comprise of anionic surfactants, but does not explicitly teach an amino-acid based ionic surfactant. Yabusaki teaches that suitable anionic surfactants for inclusion in an oil-in-water emulsion include N-acyl glutamate surfactants such as monosodium N-lauroyl glutamate [0072]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to modify the teachings of JP’102 with those of Yabusaki to select monosodium N-lauroyl glutamate as an ionic surfactant for inclusion in the composition of JP’102.
Regarding claim 9, JP’637 teaches that the emulsion may comprise of an oil-soluble UV absorbing agent such as bis-ethylhexyloxyphenol methoxyphenyl triazine and methylene bis-benzotriazoyl tetramethylbutylphenol [claim 1] (see instant spec para. 0038 which teaches the aforementioned compounds as suitable examples for component (F)).
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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