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 .
Claim Objections
Claim 2 is objected to because of the following informalities: on the last line, applicant need to change “and/or” to --- or ---. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: applicant need to insert --- the --- in front of “at least one”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: on the last line, applicant need to change “and” to --- or ---. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: on the last line, applicant need to change “and” to --- or ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-15 are 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.
A broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least one oil for inhibiting trihydroxystearin crystallization”, and the claim also recites “preferably triisostearin” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
By the same logic, the terms: (i) “preferably at least one metal” and “preferably at least one metal oxide selected from oxides of titanium, chromium, zinc, tin, alumina, cerium, and/or iron” as recited in claim 2; (ii) “preferably triisostearin” as recited in claim 6; (iii) “preferably about 5% to about 40% by weight with respect to the total weight of the composition” as recited in claim 7; (iv) “preferably the surface treating agent comprising at least one of . . . and mixtures thereof” as recited in claim 10; (v) “preferably passivated” as recited in claim 11; (vi) “preferably coated with a coating agent, preferably the coating agent comprising . . . and mixtures thereof” as recited in claim 12; (vii) “preferably passivated or coated with hydrated silica and/or hydrogen dimethicone” as recited in claim 13; and (viii) “preferably from 5 nm to 250 nm, preferably from 10 nm to 100 nm, preferably from 20 nm to 50 nm” as recited in claim 14 render instant claims indefinite.
Claim 4 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.
The term “stable” in claim 4 is a relative term which renders the claim indefinite. The term “stable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 8 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.
(i) Applicant need to change “the at least one UV absorbing system” to --- the UV absorbing system --- (since there is insufficient antecedent basis for the limitation “the at least one UV absorbing system” in the claim). (ii) Furthermore, The term “essentially” in claim 8 is a relative term which renders the claim indefinite. The term “essentially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Instant 112(b) rejection can be overcome by changing claim 8 to recite --- . . . wherein the UV absorbing system consists essentially of the at least one physical ultraviolet (UV)-attenuating material. ---.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MINTEL (“Specialised Anti-Dandruff Shampoo”, Mei Si Bio-Technology, Record ID: 10722756, XP093361916, Apr. 2023, 5 pages).
The shampoo formulation (an O/W emulsion) disclosed in MINTEL includes trihydroxystearin and triisostearin (instant at least one oil for inhibiting trihydroxystearin crystallization). Since the shampoo formulation contains instant trihydroxystearin and instant at least one oil for inhibiting trihydroxystearin crystallization, such formulation would naturally be stable. The shampoo formulation disclosed in MINTEL does not contain any organic UV filter. Thus, MINTEL teaches instant claims 1 and 3-6.
Claim(s) 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chadwick et al (US 2020/0246251 A1) (with Hasegawa et al (WO 2011/030720 A1) and its English translation, which is being cited here merely to support the Examiner’s assertion that PEG-20 glyceryl triisostearate is triisostearin).
In Example 1 (see [0099] and Table 2), Chadwick teaches a topical skin composition prepared as a water-in-oil emulsion cleanser formulation having the following ingredients:
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As shown above, Chadwick’s formulation contains 0.8 wt.% of trihydroxystearin and 15 wt.% of PEG-20 glyceryl triisostearate. As evidenced by Hasegawa et al (see the last 3 lines in the paragraph under “(First step: preparation of coating liquid 111)” on pg.5-6 of English translation), PEG-20 glyceryl triisostearate is a triisostearin. Present specification states ([0065]) that the at least one oil for inhibiting trihydroxystearin crystallization is present in a trihydroxystearin crystallization inhibiting-effective amount, such as, for example, 1-50 wt.% (or 10-30 wt.%) based on the total weight of the composition. Since PEG-20 glyceryl triisostearate (triisostearin) is present in Chadwick’s formulation shown above in the amount of 15 wt.% (based on the total weight of the formulation), Chadwick’s PEG-20 triisostearate would naturally inhibit trihydroxystearin crystallization. Thus, Chadwick teaches a water-in-oil emulsion composition comprising instant trihydroxystearin and instant at least one oil for inhibiting trihydroxystearin crystallization. Chadwick’s formulation shown above does not contain any organic UV filters. Thus, Chadwick teaches instant claims 1 and 3-6 (since Chadwick teaches instant emulsion composition comprising instant trihydroxystearin and triisostearin, such composition would inherently be stable).
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 2, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chadwick et al (US 2020/0246251 A1).
Chadwick teaches ([0062]-[0066]) that its inventive composition can include additional cosmetic ingredients such as UV absorbers which can be chemical or physical sunblocks. Among Examples for the physical sunblocks, Chadwick teaches titanium dioxide and zinc oxide. It would be obvious to one skilled in the art to further include zinc oxide or titanium dioxide as a sunblock in Chadwick’s formulation shown above with a reasonable expectation of providing skin protection from harmful UV radiation. Thus, Chadwick renders obvious instant claims 2, 8 and 9.
Claim(s) 7 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chadwick et al (US 2020/0246251 A1) in view of Itagaki et al (US 2016/0045411 A1).
As discussed above, Chadwick teaches using zinc oxide as a physical sunblock (UV absorber) but does not teach that such zinc oxide is surface-treated. Itagaki teaches (see claim 1, [0001], [0024]) the use of a silicon oxide-coated zinc oxide in a cosmetic requiring an UV ray-screening function in order to suppress the elution of zinc ions from zinc oxide particles. The silicon oxide-coated zinc oxide is formed by coating the surfaces of zinc oxide particles with a silicon oxide coating, wherein the average particle diameter of the zinc oxide particles is in a range of 1 nm -50 nm. Itagaki teaches ([0113]) that silicone resin is used for such surface treatment, and among examples for such silicone resin, Itagaki teaches hydrogen dimethicone (which Itagaki uses in its Example 10). Since Chadwick already teaches the use of zinc oxide (as an UV absorber) in its formulation, it would be obvious to one skilled in the art to use zinc oxide particles (having the particle size of 1-50 nm) that are surface-treated with hydrogen dimethicone as the UV absorber in Chadwik’s formulation with a reasonable expectation of suppressing the elution of zinc ions from zinc oxide particles. Thus, Chadwick in view of Itagaki renders obvious instant claims 10-13. As to instant claims 14 and 15, the particle size 1-50 nm (for the zinc oxide particles) as taught by Itagaki overlaps with instant range(s) of claims 14 and 15, thus rendering instant ranges prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, Chadwik in view of Itagaki renders obvious instant claims 14 and 15. As to instant claim 7, Chadwik does not teach the amount of zinc oxide that can be used in its formulation. Itagaki teaches ([0027]) that the zinc oxide particles is preferably used in the amount of 50-90 wt.%. Such range overlaps with instant range (at least 5 wt.% based on the total weight of the composition) of claim 7, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Chadwik in view of Itagaki renders obvious instant claim 7.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice .
/SIN J LEE/
Primary Examiner, Art Unit 1613
June 27, 2026
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