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 .
This office action is in response to the reply filed 6/17/2025.
Response to Arguments
All of Applicant’s arguments filed 6/17/2025 have been filly considered. In view of the amendments new rejections are presented below which address the limitation of “does not comprise any oil soluble UV filters.”
In summary, on pages 6-7, Applicant argues that Uvinul A plus is oil soluble and all of the working examples of Goppel comprise oil soluble UV filters, however the instant claims require the composition to not comprise any oil soluble UV filters.
Applicant’s arguments are not persuasive. While Uvinul A plus is oil soluble as discussed in the rejection below, it’s prima facie obvious to use other equivalent benzophenone derivatives, such as benzophenine-4 which filters both UVA and UVB. While the working examples all comprise oil soluble UV filters, the teachings of Goppel are not limited to the working examples. As demonstrated by Goppel’s claims the compositions of Goppel comprises at least one hydroxybenzophenone and/or its derivative and at least one further UV filters substance which can be a water soluble UV filter, thus the use of one UV filter, specifically a water soluble UV filters, along with one hydroxybenzophenone derivative is obvious as mixtures are not required.
Applicant remarks that the technical problem of obtaining homogenous and transparent aqueous compositions are solved by the present invention and the claims are commensurate in scope with Examples 1-3 of the instant specification.
Applicants are reminded that they bear the burden of explaining any data they proffer as evidence of unexpected results. The data presented in Example 1-3 is not persuasive as applicant has not established what was unexpected about the results obtained. Applicant must establish and explain what would have been expected by a skilled artisan and then establish what was unexpected, this is lacking. Even though Applicant claims the data is commensurate in scope with the instant claims, the Examiner disagrees, for example, all the examples utilize a combination of 8% phenylbenzimidazole sulfonic acid and 10% terephthalylidene dicamphor sulfonic acid (3.3% AM), disodium phenyl dibenzimidazole is never tested. Very specific amounts are used for all the tested ingredients, however, none of the base claims recite any amounts. In table 1 multiple variables are changed between the inventive and comparative examples, for example, both the concentration and type of thickening agent changes. When establishing unexpected results the inventive composition and the comparative should be tested in substantially the same conditions with only 1 variable changing. While examples 2-3 establish that the inventive composition is transparent and homogenous, there is no comparative data provided, so applicant are simply showing a property of the claimed composition, but there is no evidence that this property is unexpected superior.
Terminal Disclaimer
The terminal disclaimer filed on 6/16/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application 17/783804 has been reviewed and is accepted. The terminal disclaimer has been recorded.
New 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(s) 1, 4-6, 8, 10-12 and 16-17 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goppel (EP 1310237), Shah (US 2014/0186411) and Traynor (US 2017/0157021). Shah and Traynor are newly cited.
Goppel discloses cosmetic sunscreen compositions comprising (a) at least one hydroxybenzophenone and/or its derivative and (b) at least one acrylamide polymer, acrylamide copolymer, its derivative and/or an acrylamide polymer, acrylamide copolymer or its derivative (Abs).
Goppel teaches that the one or more hydroxybenzophenones or its derivative are used in the range of 0.1-10% (pg. 21). A preferred hydroxybenzophenones is Uvinul A plus (pg. 8), which is an is an oil soluble UV filters.
Regarding claim 1: Goppel teaches the cosmetic to comprise at least one further UV filter substance, such as water-soluble UV filters (pg. 21), selected from a finite number of options. As Goppel teaches “at least one” the addition of only water-soluble UV filters as the further UV filter substance is prima facie obvious with a reasonable expectation of success.
Goppel teaches that advantageous water soluble UV filters for use include phenylbenzimidazole sulfonic acid (reading on the claimed UVB filter) and terephtalidene dicamphor sulfonic acid (reading on claimed UVA filter) (pg. 13), therefore the use of these two UV filters is prima facie obvious.
Goppel further teaches the cosmetic to comprise ingredients commonly used in cosmetic, including thickening agents (pg. 21).
Regarding claims 1 and 10-11: A preferred thickening agent is Aristoflex AVC which reads on a copolymer of acrylamido-2-methyl propane sulfonic acid and vinylpyrrolidone (pg. 10).
Regarding claim 12: Goppel exemplifies the use of anionic thickening agents such as acrylates/C10-30 alkyl acrylate crosspolymer to be used in amounts of as low as 0.1% and as high as 0.5% (pg. 16, examples 1 and 3-5), therefore it would have been obvious to use the other taught anionic polymers, such as Aristoflex AVC, in the exemplified amounts with a reasonable expectation of success. As the prior art makes obvious the claimed concentration of thickening agents, it is considered to read on “is present as an active material.
Regarding claim 1 and 8: Goppel teaches that suitable thickening agents include polyacrylates such as carbopol 980 (pg. 10) as evidenced by pg. 6 of the originally filed disclosure, Carbopol 980 is a crosslinked homopolymer of acrylic acid.
Regarding claims 1 and 21-22: Goppel teaches adding fillers such as starch and starch derivatives (i.e. modified starch) (pg. 10), therefore it would have been prima facie obvious to use a non-modified starch such as the taught tapioca starch with a reasonable expectation of success to formulate a composition that is free of modified starches.
Regarding claims 4 and 19-20: Goppel teaches that the additional UV substances are added in amounts ranging from 0.1-30% (pg. 14) which overlap with the claimed ranges.
Regarding claim 5-6: Goppel teaches that fillers that improve feeling on the skin, such as polyols can be added (pg. 9). The working examples of Goppel show that polyols can be effectively used in amounts as low as 2.5% and as high as 7.5%, which reads on the claimed “at least 1%” (pg. 16, examples1-2 and 4-5).
Regarding claim 16: Goppel teaches that suitable thickening agents of use include xanthan gum and exemplifies its use in amounts as low as 0.15% and as high as 0.5% which overlaps with the claimed ranges (pg. 16, examples 2-3 and 5).
Regarding claim 17: Goppel teaches that the composition can comprise water (see working examples) and can be formulate as oil-free formulations (pg. 22), reading on 0% of an oily phase.
However, Goppel does not teach the composition to be free of oil soluble UV filters.
Shah teaches photoprotective compositions and teaches that suitable sunscreen active ingredients include benzophenone derivatives such as Uvinul A plus, benzophenone-4 (i.e. water-soluble) [0098].
Traynor teaches benzophenone-4 to be a UVB/UVA sunscreen active and Uvinul A plus is a UVA active [0029].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Goppel with those of Shah and Traynor. A skilled artisan would have been motivated to use benzophenone-4 (selected from a finite number of options) as the benzophenone derivative of Goppel as this agents not only blocks UVA, but also blocks UVB. One of skill in the art would have a reasonable expectation of success as Goppel teaches using benzophenone derivatives and Uvinul A Plus is taught by the prior art to be an equivalent benzophenone derivatives suitable for use in sunscreen formulations.
Claim(s) 1, 4-6, 8, 9, 10-12 and 16-17 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goppel (EP 1310237), Shah (US 2014/0186411) and Traynor (US 2017/0157021), as applied to claims 1, 4-6, 8, 10-12 and 16-17 and 19-22 above, and further in view of Zhu (US 2014/0356403).
As discussed above, Goppel teaches the limitations of claims 1, 4-6, 8, 10-12 and 16-17 and 19-22, however, Goppel does not teach the thickening agent to be a crosslinked copolymers of (meth) acrylic acid and C1-C6 alkyl acrylate.
Zhu teaches color changing composition (i.e. a cosmetic) for caring for and/or making up keratin materials (Abs and [0002]). Zhu teaches Carbopol 980, Carbopol 1382, Aristoflex AVC, and Carbopol Aqua SF-1 (as evidenced by pg. 8 of the originally filed discloses, this is a crosslinked methacrylic acid/ethyl acrylate copolymer, reading on instant claim 9) to be hydrophilic carboxyvinyl and polyacrylamide gelling agents [0266 and 0273].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Goppel with those of Zhu. A skilled artisan would have recognized Carbopol Aqua SF-1 to be a functional equivalent hydrophilic gelling agent to Carbopol 980, Carbopol 1382 and Aristoflex AVC as taught by Zhu, as such it would have been prima facie obvious to use Carbopol Aqua SF-1 as the thickening agent in the composition of Goppel as its prima facie obvious to substitute one art recognized equivalent for another as they are both taught to be equivalents for the same purpose (thickening agents in cosmetic compositions).
Conclusion
No claims are allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613