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 .
Status of the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 08-Aug-2026. Claims 1-5 are pending in the current office action. Claim 1 has been amended by the applicant and Claims 6 is cancelled.
Response to Amendment
The amendment, filed on 08-Aug-2026, is acknowledged.
Status of the Rejection
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
All 35 U.S.C. § 102 rejections from the previous office action are withdrawn.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Modified Rejection Based on Applicant Amendment
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 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Suginaka et al. (US 20070274932A1, Published 29-Nov-2007) (hereinafter Suginaka) in view of Min-young et al. (KR20200092705A, Published 10-Aug-2021) (hereinafter Min-young).
With regards to Claim 1 recites A water-in-oil sunscreen cosmetic comprising:(A) an ultraviolet absorbing agent containing octocrylene, and (B) a dihydric alcohol having an inorganic-organic balance (IOB) of 2.0 or lower, wherein a blended percentage of ethylhexyl methoxycinnamate relative to a total blended amount of component (A) is 15% or less, a blended amount of an ultraviolet scattering agent is 5% by mass or less relative to the overall amount of the cosmetic, the water-in-oil sunscreen cosmetic has a viscosity of 1000 mPa-s or lower, and wherein the cosmetic is an aerosol-type cosmetic. Suginaka teaches a composition, example 1, comprising Octocrylene (2.25 wt%), Pentylene glycol (3 wt%) (IOB = IV/OV = 200/100 = 2.0), and does not contain Ethylhexyl methoxycinnamate (page 15, paragraph 200, Example 1). Although Suginaka does not explicitly recite the final viscosity of the water in oil emulsion mixture, Example 1 discloses a water-in-oil sunscreen emulsion comprising KSG 320, Abil EM-90, and isopropyl lauroylsarconsinate, and such compositions inherently possess viscosities within the claimed range in the instant application.
However, Suginaka does not teach that the composition of Example 1 is an aerosol type cosmetic. For this reason, Min-young et al. is added.
Min-young teaches Example 1, which contains the formulation for an aerosol sunscreen composition comprising octocrylene and butylene glycol (Page 7). Both references are directed to sunscreen compositions, indicating the teachings are compatible.
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to formulate the composition of Suginaka as an aerosol, as aerosol delivery systems are well-known in the art for sunscreen application. The combination of Suginaka and Min-young would have yielded predictable results. For the foregoing reason, claim 6 is rendered obvious by the teachings of the prior art.
Claim 2, depends on Claim 1, recites the limitation of the composition excludes ethylhexyl methoxycinnamate. Suginaka does not recite ethylhexyl methoxycinnamate (page 15, paragraph 200, Example 1).
Claim 3, depends on Claim 1, recites the limitation of the composition excludes an ultraviolet scattering agent. Suginaka does not recite ultraviolet scattering agent (page 15, paragraph 200, Example 1).
Claim 4, which depends on Claim 1, further recites that the dihydric alcohol comprises of dipropylene glycol. Suginaka teaches a water in oil emulsion composition containing sunscreen actives, but does not teach dipropylene glycol in Example 1 (page 15, paragraph 200). However, Suginaka teaches the use of dipropylene glycol as a skin conditioning agent for use in the composition (Page 9, paragraph 115).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to substitute pentylene glycol with dipropylene glycol, as both are well-known dihydric alcohols used in cosmetic compositions as skin conditioning agents, and are recognized as functionally equivalent ingredients. Such substitution would have yielded predictable results in maintaining the moisturizing and solvent properties of the composition.
Claim 5, depends on Claim 1, recites the limitation of comprising (C) hydrophobized silica. Suginaka teaches Aerosil R972 (0.1 wt%) which is a hydrophobized silica (page 15, paragraph 200, Example 1).
Response to Arguments
The Applicant’s arguments, filed on 08-Aug-2026, have been fully considered but are not persuasive.
Argument 1: Claim(s) 1-3, and 5 are novel over Suginaka (US20070274932A1) (hereinafter Suginaka) because claim 1 is amended to recite aerosol limitation.
Applicant argue that claim 1 has been amended to incorporate the aerosol limitation of cancelled claim 6, which was not relied upon in the 35 USC § 102(a)(1) over Suginaka, concluding that the claims are therefore novel over Suginaka.
Accordingly, the rejection is withdrawn. A new rejection under 35 USC § 103 is set forth above.
Argument 2: Claim 4 is not obvious because substituting dipropylene glycol for pentylene glycol does not lead to an aerosol type composition.
Applicant argues that even if one of ordinary skill substituted dipropylene glycol for pentylene glycol in Suginaka’s Example 1, this substitution would not result in an aerosol type water in oil sunscreen cosmetic, because Suginaka does not teach or suggest an aerosol product.
Accordingly, the rejection withdrawn in view of the amendments to the claim. A new rejection under 35 USC § 103 is set forth above.
Argument 3: No motivation to combine Suginaka and Min-young because Suginaka teaches a finger applied shear-triggered mechanism incompatible with aerosol delivery.
Applicant argues that Suginaka teaches that the water in oil emulsion is designed to be spread with the fingers, such that finger shear stress breaks the emulsion and releases the aqueous phase, producing a “water-splash sensation during spreading or rubbing upon the skin”. The applicant argues that this design requirement is incompatible with aerosol delivery and that there is therefore no motivation to combine Suginaka with Min-young’s aerosol teaching.
This argument is carefully considered, but the Examiner respectfully disagrees and finds the argument not persuasive. In order for the closest prior art’s motivation to teach away from the combination, the prior art must discourage the proposed modification. Applicant recites Suginaka’s paragraph 72, and Suginaka does not discourage aerosol or spray delivery in any respect; rather, paragraph 72 describes a sensory benefit of the composition. The water splash sensation that arises from finger shear stress during the manual spreading of the composition on the skin after it has been dispensed. Nothing in this passage addresses or teaches away the manner for which the composition is packaged or dispensed from its container.
Further, the applicant’s argument blurs the method of dispensing (i.e. a propellant driven delivery from a pressurized container) with the method of application (i.e. finger shear stress from manual spreading or rubbing on skin). These are not mutually exclusive, aerosolized sunscreen products are routinely rubbed into the skin by hand after being dispensed from the container, and the applicant has not identified any teachings in Suginaka indicating that a composition dispensed via an aerosol value could not subsequently undergo the finger shear induced phase separation. Therefore, the applicant has not shown any incompatibility between Suginaka’s disclosed sensory mechanism and the aerosol dispensing of Min-young.
Furthermore, aerosol dispensing is a well known and art recognized form of spreading a topical composition across the skin that distributes the product as a mist or spray over the application area rather than by initial contact and manual spreading with the fingers. Suginaka expressly teaches that its water in oil composition is designed to be spread as discussed above to provide a desirable sensory benefit. Formulating Suginaka’s composition as an aerosol as taught by Min-young would not disrupt this mechanism because the composition would ultimately still be distributed and worked into the skin by rubbing after being dispense from the aerosol container.
Lastly, the motivation to combine does not need to originate from the primary reference itself, Min-young demonstrates that octocrylene containing water-in-oil sunscreen compositions employing a dihydric alcohol such as butylene glycol are formulated and dispensed as aerosols in the cosmetic art. A person having ordinary skill in the art would have recognized that the known benefits of aerosol dispensing and would have had a reasonable expectation of success in applying the known packaging format to Suginaka’s composition since Min-young demonstrates the general compatibility of this class of aerosol delivery. For the foregoing reasons, the Applicant’s arguments do not overcome the combination of Suginaka and Min-young.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENHAN LI whose telephone number is (571)272-9143. The examiner can normally be reached Monday-Friday 7:30 am-5 pm EST.
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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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/W.L./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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