DETAILED ACTION
This office action is in response to the Applicant’s filing dated November 20th, 2024.
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 .
Priority
This application is a 371 of PCT/EP2023/061468 filed on May 2nd, 2023; and claims benefit of foreign priority of PCT/CN2022/096614 filed on June 1st, 2022.
Status of Claims
Claims 19-36 are pending in the instant application. Acknowledgement is made of Applicant’s remarks and amendments filed on November 20th, 2024. Acknowledgment is made of Applicant’s cancelation of claims 1-18; and the addition of new claims 19-36.
Claim Objections
Claim 38 is objected to because of the following informalities: the claim does not end with a period. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 19-28, 31-36 and 38 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Burgo et al (US 2021/0363086 A1).
Regarding claims 19-26 and 31-36, Burgo teaches sunscreen O/W emulsion compositions, Examples 5, 8 and 9, comprising of 2.50% of the Branched Alkyl, alkenyl and alkynyl Glyceryl Ether (herein referred to as BAGE) glyceryl caprylate, 8.00% octocrylene, 2.50% neopentyl glycol diheptanoate, 3.00% avobenzone (butyl methoxydibenzolmethane) and 0.4% xanthan gum; the oil phase totals 34% of the emulsions and the water phase totals 66% of the emulsions (page 4, paragraph [0037]; page 7, paragraph [0065]; page 15, Table 7).
Regarding claims 27-28, Burgo further teaches glyceryl stearate is a suitable emulsifier to use in BAGE compositions, disclosing an example wherein glyceryl stearate makes up 4.0% of the O/W emulsion (page 6, paragraph [0057]; page 23, paragraph [0121] and Table 15).
Regarding claim 38, which is directed to a method of reducing the development of foam and/or diminishing whitish residue of a cosmetic emulsion composition, such a limitation of the instant claim fails to patentably distinguish the instant claim over the cited prior art because such a limitation merely states the purpose or intended use of the cosmetic emulsion composition, while the body of the claim fully and intrinsically sets forth all of the limitations of the invention; namely incorporating into the emulsion glyceryl caprylate and (i) neopentenyl glycol heptanoate, isodecyl neopentanoate, triheptanoin, diisopropyl adipate and squalane and/or (ii) octocrylene. The body of the claim is met by the prior art as discussed in the above rejection and would be reasonably expected to be capable of performing the intended use as instantly claimed, absent factual evidence to the contrary and further absent any apparent structural difference between the composition of the prior art and that of the instant claim.
MPEP § 2112.02(II) states:
“If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See also Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.2d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 378, 42 USPQ2d 1550, 1554.
Thus, the teachings of Burgo anticipate the emulsion composition and method of instant claims 19-28, 31-36 and 38.
Claims 19-21, 24, 31-32, 34 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nioh et al (EP 3391872 B1).
Regarding claims 19-21, 24, 31-32, 34 and 37, Nioh teaches the O/W emulsion composition Example 12 comprising 0.05% glyceryl caprylate and 20.0% squalane, 0.3% xanthan gum; and the composition is free of any silicones, synthetic polymers, polyalkoxylated compounds, polyethylene glycols or polyethylene derivatives; the oil phase totals 20% of the emulsion and the water phase totals 80% of the emulsion (page 16, paragraphs [0153-0154] and Table 2).
Thus, the teachings of Nioh anticipate the emulsion composition of instant claims 19-21, 24, 31-32, 34 and 37.
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.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Burgo et al (US 2021/0363086 A1); in view of Doucet et al (US 2012/0251602 A1).
Regarding claims 29-30, Burgo anticipates the O/W emulsion composition and method of claims 19-28, 31-33, 35-36 and 38 as described in the above rejection.
Burgo does not expressly teach that the O/W emulsion composition further comprises at least one emollient selected from coco glycerides, isopropyl myristate, isopropyl palmitate, isopropyl stearate and myristyl myristate.
Doucet teaches a sunscreen O/W emulsion composition, Example 4, comprising octocrylene and 3.0% isopropyl palmitate in the same oil phase, further disclosing isopropyl palmitate as a preferred ester for use in the oil phase (page 3, paragraph [0048]; page 4, paragraphs [0062-0066]).
It would have been prima facie obvious to a person of ordinary skill in the art to further include isopropyl palmitate in the O/W emulsion composition of Burgo, because Doucet teaches that isopropyl palmitate is a preferred oil phase ester emollient, and demonstrates that isopropyl palmitate is suitable for incorporation into O/W emulsion compositions comprising octocrylene. One of ordinary skill in the art would therefore have had a reasonable expectation of success in incorporating isopropyl palmitate in the Burgo O/W emulsion composition as a conventional oil phase emollient component. Accordingly, the inclusion of isopropyl palmitate would have represented the predictable use of a known emollient according to its established function yielding no more than predictable results.
“[T]he rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Taken together, all of this would result in the emulsion composition of instant claims 29-30 with a reasonable expectation of success.
Conclusion
Claims 19-36 are rejected.
No claim is allowed.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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