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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 11/12/2025 has been entered.
Status of the Claims
Claims 3, 4, 7-10, 13, 18-30, and 32 have been cancelled in a previous communication.
Claims 1, 2, 5, 6, 11, 12, 14-17, 31, and 33-44 are pending and under current examination.
All rejections not reiterated have been withdrawn.
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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 5, 12, 14-16, 31, and 33-43 are rejected under 35 U.S.C. 103 as being unpatentable over Aubrun et al. (FR 2904220; publication date: 02/01/2008; cited in the IDS filed on 12/06/2019; citing the English human translation obtained provided to the USPTO in June, 2020).
In example 8 on page 14 of the French document and the last paragraph of page 26 of the English translation, Aubrun discloses an anhydrous composition comprising 4 % of the photoactive agent octocrylene, 28 % isododecane and 45.95 % ethylhexyl palmitate, which is a ratio of aliphatic hydrocarbon to ester of 1:1.6 (limitations of instant claims 1, 2, 5, 33-35, 37, 39, 40, and 41).
With regard to instant claims 1, 36, 38, and 40, these claims exclude the presence of preservatives and surfactants, whereas Aubrun’s example 8 contains these ingredients. It would have been prima facie obvious to formulate a composition without them; however, because the surfactants and preservatives are optional ingredients: Page 13 states that the composition “can also contain additives” (i.e. the additives are optional) and lists surfactants on page 13. Preservatives are considered optional because they are not included in every example according to the invention (see example 3 on page 22 of the human translation. They are not central to the invention of Aubrun as indicated by their presence in a list of items that “can be included” in the composition and their absence from the description of the key elements of Aubrun’s invention (see page 4 of the human translation “the goal of the present invention, therefore is an oily compound for topical application that includes at least one oil and at least one hydrocarbon compound having a melting point greater than or equal to 30ºC, said compound existing in the form of solid particles”. Nowhere in the document are surfactants described as essential to the operation of Aubrun’s invention. Therefore, the examiner does not consider the language recited in the instant claims excluding surfactants and preservatives to patentably define over the prior art.
With regard to independent claim 38, the example composition cited above contains isododecane; however, Aubrun discloses isohexadecane as another choice for the hydrocarbon (page 11, last line); therefore it would be prima facie obvious to use isohexadecane in the composition of example 8 because this is contemplated by Aubrun.
With regard to claim 38, the claim excludes “other aliphatic hydrocarbons” [besides those expressly required by the claim]. Aubrun’s example 8 contains paraffin, which is an aliphatic hydrocarbon; however, paraffin is described by Aubrun as falling within the genus of hydrocarbon compounds (page 6 describes hydrocarbon compounds in general and page 9 indicates that paraffins and acid amides that include at least 12 carbon atoms are preferred with the acid amides being especially preferred). It would have been prima facie obvious to exchange the paraffin in Aubrun’s example 8 with an acid amide having at least 12 carbons because these substances serve the same purpose in the invention and because the acid amide is the most preferred species of hydrocarbon. Acid amides are not aliphatic hydrocarbons. Please refer to MPEP 2144.06(II). This reasoning is also applicable to independent claims 1, 36, and 40.
With regard to instant claims 1, 36, and 38, the composition is compatible with the skin and eyes including the interior of the eyelids and is therefore non-irritating to skin and eyes (the examiner interprets “compatible with the interior of the eyelids” to embrace causing no lacrimation).
With regard to instant claim 1, Aubrun does not disclose the effect of the composition on wet skin in terms of causing whiteness; however, all the structural limitations of instant claim 1 are taught by Aubrun therefore the examiner considers this property to be inherent in the composition that anticipates the instant claims. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972). Moreover, one having ordinary skill in the art could select ingredients that do not cause whiteness.
With regard to instant claim 1, the composition disclosed by Aubrun contains a compound in the form of solid particles (page 2, first full para). The examiner construes this composition to meet the limitation of instant claim 1 requiring that the composition be single phase or homogeneous in view of the instant specification. For example, page 2 states “the photoprotective composition does not have separate phases that could comprise without limitation, a water phase, an emulsion phase, and/or an oil phase”; see also page 7. The specification also states on page 8 “homogeneity can be achieved with liquids that are not a single phase”, which the examiner interprets to read on compositions having more than one state of matter. The examiner’s interpretation is further supported in view of instant claim 2, which allows for solids such as titanium dioxide particles to be present in the composition that is “a single phase or homogeneous”. Thus, the examiner interprets the language “single phase or homogeneous” not to exclude single phase or homogeneous vehicles having solid particles therein.
With regard to instant claim 12, the composition of example 8 contains an emollient (PEG-20 glyceryl triisostearate).
With regard to instant claim 14, Aubrun discloses using polydimethylsiloxanes (i.e. dimethicone page 13).
With regard to instant claim 15, Aubrun discloses using mineral oil (page 11).
With regard to instant claim 16, Aubrun discloses using propane (page 18).
With regard to instant claim 31, the composition may contain isononyl isononanoate (page 11).
With regard to instant claim 43, Aubrun discloses using paraffin, which is a wax (page 11).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Aubrun et al. (FR 2904220; publication date: 02/01/2008; cited in the IDS filed on 12/06/2019; citing the English human translation provided to the USPTO June 2020) as applied to claims 1, 2, 5, 12, 14-16, 31, and 33-43 above, and further in view of Bonda et al. (US 7,799,317; issue date: 09/21/2010; of record).
The relevant disclosure of Aubrun is set forth above. Aubrun discloses a composition comprising octocrylene (see example 8 noted above), and Aubrun does not disclose an example composition comprising these specific sunscreens required by instant claim 6 in combination; however such was known in the prior art:
Bonda discloses an example sunscreen composition containing 3 % avobenzone, 4 % oxybenzone, 0.75 % bemotrizinol (i.e. bis-ethylhexyloxyphenol methoxyphenol triazine), 5 % octisalate, 6.5% homosalate, and 2.5 % octocrylene (Table V, col 25, lines 40-50).
It would have been prima facie obvious to use the specific combination of sunscreens required by instant claim 6 in amounts falling within the ranges recited in the instant claims. One of ordinary skill in the art would have been motivated to select these particular ingredients because Bonda has disclosed that these particular agents were known to be effective as a combination. With respect to the limitations recited in instant claim 6 regarding the amount of each agent, it is noted that all of the sunscreens disclosed by Bonda are present in amounts falling within the ranges required by claim 6, with the exception of oxybenzone; however Bonda discloses that oxybenzone is useful in the composition in amounts of 6% or less (col 6, lines 41-42). This range overlaps with the range required by instant claim 6 for this ingredient. Please refer to MPEP 2144.05.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Aubrun et al. (FR 2904220; publication date: 02/01/2008; cited in the IDS filed on 12/06/2019; citing the English human translation provided to the USPTO in June 2020) as applied to claims 1, 2, 5, 12, 14-16, 31, and 33-43 above, and further in view of SaNogueira et al. (US 2005/0152931; publication date: 07/14/2005; of record).
The relevant disclosure of Aubrun is set forth above. Aubrun is silent with respect to including a booster in the composition; however, adding boosters to sunscreen compositions was known in the prior art:
SaNogueira discloses that certain sunscreen additives can boost the SPF of the composition and photostabilize the photoactive agent (para 0026).
It would have been prima facie obvious to add a booster to Aubrun’s composition. One of ordinary skill in the art would have been motivated to do so in order to improve sun protection provided by the composition. The skilled Artisan would have had a reasonable expectation of success because SaNogueira discloses that such compounds were known in the art at the time the instant invention was filed and this would merely require adding a booster to Aubrun’s composition.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Aubrun et al. (FR 2904220; publication date: 02/01/2008; cited in the IDS filed on 12/06/2019; citing the English human translation provided to the USPTO in June 2020) as applied to claims 1, 2, 5, 12, 14-16, 31, and 33-43 above, and further in view of Gonzalez et al. (US 2005/0136014; publication date: 06/23/2005; of record).
The relevant disclosure of Aubrun is set forth above. Aubrun’s preferred embodiment is in the form of an aerosol spray foam; however Aubrun discloses that the composition may be formulated in other ways (page 20). Aubrun is silent with respect to formulating the composition as a stick or lip balm.
Gonzalez discloses that sunscreen compositions may be formulated as aerosol sprays, aerosol foams, or as balms or sticks (claim 26).
It would have been prima facie obvious to formulate Aubrun’s composition as a stick or balm because these are well known alternatives to spray or aerosol foams.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Aubrun et al. (FR 2904220; publication date: 02/01/2008; cited in the IDS filed on 12/06/2019; citing the English human translation provided to the USPTO in June 2020) and Gonzalez et al. (US 2005/0136014; publication date: 06/23/2005; of record) as applied to claims 1, 2, 5, 12-16, 31, and 33-44 above, and further in view of Birkel et al. (US 2008/0020004; publication date: 01/24/2008; of record).
The relevant disclosure of Aubrun is set forth above. Aubrun’s preferred embodiment is in the form of an aerosol spray foam and the range in amount of propellant in the composition is up to 20% (page 10). Thus, Aubrun discloses a range in ratio of composition to propellant outside the range required by the instant claims.
As noted above, Gonzalez discloses that sunscreens may be formed as either aerosol foams or aerosol sprays.
With respect to instant claim 17, Birkel discloses that the propellant may be used in aerosol spray compositions in amounts ranging from 15-85% by weight (para 0071). This would give one a starting point for routine optimization of spray force for Aubrun’s composition, therefore the examiner does not consider the range in ratio of propellant to composition (i.e. concentrate within the spray container) to patentably define over the cited prior art; see MPEP 2144.05).
Response to Arguments
Applicant's arguments filed 09/30/2024 have been fully considered but they are not persuasive.
On page 7, Applicant cites In re Koller to support the position that Paraffinco I and Paraffinco II, although post-filing publications, provide evidence that demonstrates the preservative properties or characteristics of paraffin. Applicant cites the following statements: "Paraffinco II" states that "Paraffin wax has antimicrobial properties" "and can create a protective barrier over wounds, promoting healing and preventing infection". Applicant argues that "Paraffinco II" clearly demonstrates that paraffin "has antimicrobial properties" and independently "can create a protective barrier...preventing infection." Accordingly, it should be acknowledged that "Paraffinco II" similarly characterizes paraffin as a preservative with "antimicrobial properties" that also "can create a protective barrier...preventing infection." On page 8, in response to the Examiner’s position that if a preservative effect was required from the paraffin, no discussion is made by Aubrun of this or a need to account for loss of preservative activity if paraffin is exchanged for another hydrocarbon compound, lending further support to the examiner's position that the preservative is not an essential element of Aubrun's invention, Applicant argues Aubrun describes this very relationship in its Examples. Aubrun teaches in every example composition, and not merely in certain example compositions, to use a preservative either as a general category of substance or as a specifically named substance; namely, "Preservatives" or "Paraffin."
While the examiner does not contest the decision in In re Keller, in this case, the reasoning underlying Applicant’s position requires one having ordinary skill to have understood paraffin to be a preservative at the time of the instant invention, and at the time when the Aubrun disclosure was made. Per Applicant’s reasoning that preservatives are required by Aubrun, Aubrun would have had to consider paraffin to provide a preservative effect to their invention. Applicant is arguing that one having ordinary skill would have understood that each of Aubrun’s example compositions contains either a “preservative” generically or “paraffin”. The evidence of record does not establish that one having ordinary skill would have interpreted all of Aubrun’s example compositions to contain a substance that provides a preservative effect because the documents Applicant has filed to support this (Paraffinco I and Paraffinco II) were both filed after the effective filing date of the instant application and after the publication of Aubrun.
It is also important to consider what is excluded by the language “wherein the photoprotective composition is free of preservatives”, recited in the instant claims. The instant specification indicates that a preservative is a substance that prevent bacterial growth (e.g. see para 0028, in which the composition lacks any detectable bacteria even though it does not contain a preservative [therefore the activity of a preservative, i.e. preventing bacterial growth, is not required in some embodiments of the instant invention]. That Paraffinco I describes paraffin as stabilizing consistency, extend shelf life or protect from degradation, fails to establish that paraffin provides protection from bacterial growth. Stabilizing consistency, extending shelf life or protecting from degradation are not particularly attributable to an antimicrobial effect of paraffin within the composition during storage. Therefore, in the instant application the term “preservative” can be construed to embrace antimicrobial agents; however, the examiner does not construe the scope of the term “preservative” to extend beyond the property described in the instant specification. For this reason as well, paraffin is not excluded by the phrase “wherein the photoprotective composition is free of preservatives”.
The foregoing notwithstanding, the examiner maintains her opinion that one having ordinary skill would not have interpreted Aubrun’s invention to require a preservative for reasons of record. Regarding the substance of the websites, Appellant has cited Paraffinco II as stating “Paraffin wax has antimicrobial properties and can create a protective barrier over wounds, promoting healing and preventing infection”. The examiner does not find this statement to be persuasive of the position that one having ordinary skill would have considered paraffin to fall within the scope of “preservative” in the cosmetic formulations art. As the examiner established previously on the record, paraffin forms a physical barrier to microbes and provides protection to produce [and to wounds] in this manner. This fails to establish that paraffin would also preserve a cosmetic formulation from microbial overgrowth. Appellant cites Paraffinco I as stating “Paraffin wax contributes to the stability and longevity of cosmetic products, ensuring they remain effective and safe for use over time. Preservatives: Its inclusion in formulations helps to stabilize the consistency and extend the shelf life of products, protecting them from degradation.” The examiner acknowledges that the company Paraffinco characterizes the substance paraffin as a preservative; however, the properties it is described to provide to the composition are to stabilize consistency, extend shelf life, and protect from degradation. The instant specification characterizes preservatives as substances that prevent bacterial growth (e.g. see para 0028, in which the composition lacks any detectable bacteria even though it does not contain a preservative [therefore the activity of a preservative, i.e. preventing bacterial growth, is not required in some embodiments of the instant invention]. In paragraph 0087, the specification states “Preferably, a small amount of at least one preservative may be included in order to account for inadvertent contamination, such as when a consumer opens and closes a container holding photoprotective composition therein. Upon opening, microbial contamination can occur.” Thus, the term preservative, as used in the instant application, refers to a substance that prevents or retards bacterial growth. The Paraffinco I website in stating that paraffin can stabilize consistency, extend shelf life or protect from degradation, fails to establish that paraffin provides protection from bacterial growth. Stabilizing consistency, extending shelf life or protecting from degradation are not particularly attributable to an antimicrobial effect of paraffin within the composition during storage.
Finally, one having ordinary skill in the art would not have read Aubrun to require preservatives in their invention for a variety of reasons. Aubrun describes paraffin as one choice for a hydrocarbon compound on pages 7-9. Although paraffin is preferred, the acid amides that include at least 12 atoms of carbon are more preferred (page 9, lines 14-17). Thus, it would have been prima facie obvious to substitute any of the more preferred hydrocarbon compounds disclosed by Aubrun for the paraffin present in example 3. If a preservative effect was required from the paraffin, no discussion is made by Aubrun of this or a need to account for loss of preservative activity if paraffin is exchanged for another hydrocarbon compound, lending further support to the examiner’s position that the preservative is not an essential element of Aubrun’s invention. See also MPEP 2123(II): Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
On pages 8 and 9, Applicant points out the amendment to claim 38, which now recites in part “at least one photoactive agent; isohexadecane in an amount greater than 0 wt. % and less than or equal to 40 wt. %, wherein said photoprotective composition excludes any other aliphatic hydrocarbon; and ethylhexyl palmitate in an amount of 20 wt. % to 60 wt. %, wherein said photoprotective composition causes substantially no lacrimation and causes substantially no dermal irritation, and wherein said photoprotective composition is free of preservatives and surfactants.” On page 9, Applicant asserts that Aubrun fails to teach the claimed composition.
The examiner respectfully disagrees for the reasons set forth in the rejection. It would have been obvious to replace the aliphatic hydrocarbon paraffin with the most preferred hydrocarbon of Aubrun’s invention, the acid amide having at least 12 carbons. Acid amides are not aliphatic hydrocarbons (i.e. hydrocarbons containing only C and H) because they also contain oxygen and nitrogen atoms.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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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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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617