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 .
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.
DETAILED ACTION
Status of claims
The amendment filed on 11/13/2025 is acknowledged. Claims 1-23, 36, 40, and 42 have been canceled and claim 44 has been withdrawn. Claims 24-35, 37-39, 41, 43, and 45 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 11/13/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. The rejections are modified based on the amendments.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 24-32, 34, 37-41, and 43 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schlossman et al. (US 2009/0257966 A1) as evidenced by Zinc Oxide, Micronized (www.ulprospector.com/documents/1586446.pdf?bs=34148&b= 1014245&st=20&r=na&ind=personalcare).
Schlossman et al. teach a sunscreen composition comprising a wax-resin composite wherein said wax resin composite comprises: 0.2 to 30% of sunscreen particles such as micronized TiO2 or micronized ZnO (mean particle size has also been found to be in the range of 30-55 nm according to “Zinc Oxide, Micronized” (claims 1 and 37) and exemplified in example 10 a water-in-oil emulsion comprising 2.00% by weight of Lucentite SAN-P (thickener/stabilizer) (the claimed disteardimonium hectorite), 30.00% by weight of PM9P50M170 (containing about 38% by weight of TiO2 and 2.1% by weight of polyhydroxystearic acid, thus about 11.4% by weight of TiO2 and 0.63% by weight of polyhydroxystearic acid); and 18.7% by weight of water.
The total weight percentage of polyhydroxy stearic acid and disteardimonium hectorite is calculated to be 2.63% (2.00+0.63=2.63%).
Schlossman et al. do not teach the composition comprising propellant (the new limitation of propellant being excluded in the instant claim 24 and 43).
Schlossman et al. do not teach example 10 comprising TiO2 and ZnO.
This deficiency is cured by Schlossman et al.’s teachings of micronized TiO2 or micronized ZnO being suitable sunscreen (claim 37).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to replace 11.4% by weight of TiO2 with 11.4% by weight of a mixture of TiO2 and micronized ZnO. It is generally considered to be prima facie obvious to combine compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose. The motivation for combining them flows from both having been used individually in the prior art, and from both being recognized in the prior art as useful for the same purpose. See MPEP 2144.06 and MPEP 2141 I:
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.
“When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.”
Schlossman et al. do not teach the same total weight percentage of polyhydroxy stearic acid and disteardimonium hectorite (about 1.5-2.3% in claims 24 and 43, i.e., 1.35-2.53% based on 10% deviation according to the instant specification, 1.5-2.25% in claim 37, i.e., 1.35-2.475%, and 1.6-2.2% in claim 38, i.e., 1.44-2.42%) and the claimed rheology properties of being sprayable in claim 24 and 43, viscosity in claims 24-26 and 43, yield stress in claims 27-29, filament breakup time in claims 30-32, distribution of droplet being homogenous in claim 39, and aerosolized without requiring mixing with propellant in claim 40.
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. The claimed range of polyhydroxy stearic acid and disteardimonium hectorite is 1.35-2.53%, 1.35-2.475%, and 1.44-2.42% by weight and the range of polyhydroxy stearic acid and disteardimonium hectorite taught in the prior art is 2.63% by weight and therefor, overlaps with the claimed range. Furthermore, according to the instant specification, 0.01-15% by weight of polyhydroxy stearic acid and disteardimonium hectorite is suitable and for producing the claimed rheology properties.
Schlossman et al. are silent with regard to the being stable and being sprayable in claim 24 and 43, viscosity in claims 24-26, 41, and 43, yield stress in claims 27-29, filament breakup time in claims 30-32, distribution of droplet being homogenous in claim 39, and aerosolized without requiring mixing with propellant in claim 40 are the rheology property of a fluid, i.e., depending on its rheology modifier. With example 10 taught by Schlossman et al. being the same w/o emulsion having the same rheology modifiers and same weight percentage as claimed, example 10 taught by Schlossman et al. would have the same rheology properties and thus being sprayable, viscosity, yield stress, filament breakup time, distribution of droplet being homogenous, and aerosolized without requiring mixing with propellant. Furthermore, The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant’s own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Claim 35 is rejected under 35 U.S.C. 103(a) as being unpatentable over Schlossman et al. (US 2009/0257966 A1) as evidenced by Zinc Oxide, Micronized (www.ulprospector.com/documents/1586446.pdf?bs=34148&b=1014245&st=20&r=na&ind=personalcare), as applied to claims 24-32, 34, 37-41, and 43, and in view of Ujimoto et al. (WO 2021/131720 A1, US 2023/0050910 A1 as English translation).
The teachings of Schlossman et al. are discussed above and applied in the same manner.
Schlossman et al. do not teach additional organic sunscreen.
This deficiency is cured by Ujimoto et al. who teach an ultraviolet protection water-in-oil skin cosmetic (abstract) comprising water, disteardimonium hectorite (oil phase thickener), octocrylene, and TiO2 (example 7 in table 3 in paragraph 77 and 78).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schlossman et al. and Ujimoto et al. to add octocrylene as a ultraviolet protection agent in addition to TiO2 in the composition taught by Schlossman et al. Octocrylene being incorporated in ultraviolet protection together with TiO2 was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Claim 45 is rejected under 35 U.S.C. 103(a) as being unpatentable over Schlossman et al. (US 2009/0257966 A1) as evidenced by Zinc Oxide, Micronized (www.ulprospector.com/documents/1586446.pdf?bs=34148&b=1014245&st=20&r=na&ind=personalcare), as applied to claims 24-32, 34, 37-41, and 43, and in view of Harris et al. (US 2013/0209378 A1).
The teachings of Schlossman et al. are discussed above and applied in the same manner.
Schlossman et al. do not teach the composition further comprising hydrogenated Jojoba oil.
This deficiency is cured by Harris et al. who teach both quaternium-18 hectorite (disteardimonium hectorite) and hydrogenated Jojoba oil being suitable thickeners (paragraph 27).
It would have been prime facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to modify the composition taught by Schlossman et al. and add hydrogenated Jojoba oil taught by Harris et al. in addition to disteardimonium hectorite. It is generally considered to be prime facie obvious to substitute compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose.
Response to Applicants’ arguments:
Applicant’s argument based on the new limitation is addressed in the modified rejection above (underlie).
Conclusion
No claims are allowed.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 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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/HONG YU/
Primary Examiner, Art Unit 1614