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 Status
Claims 1-3, 5-9 and 16-24 are pending.
Claims 8 and 23 are currently amended.
Claims 4 and 10-15 have been canceled.
Claims 1-3, 5-9 and 16-24 are currently under consideration.
Claims 1-3, 5-9 and 16-24 are rejected.
Election/Restrictions
Applicants’ election of cosmetic compositions (e.g., claim 16) and oil-in-water (O/W) emulsions (e.g., claim 22) in the reply filed 06/26/2025 and election of group I in the reply filed 01/09/2025 are acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
This Office Action is in response to Applicants’ amendments and remarks filed 06/26/2025.
Priority
This application is a 371 of PCT/EP2020/073788 filed 08/26/2020, which claims benefit to EUROPEAN PATENT OFFICE (EPO) 19196624.1 filed 09/11/2019.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 03/03/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
The listing of references in the specification is not a proper information disclosure statement (see Spec., pg. 2, line 33). 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (e.g., see Spec., pg. 11, lines 35-36). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The use of the term , which is a trade name or a mark used in commerce, has been noted in this application (e.g., see Spec., pg. 16, line 26). The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 22 is objected to because of the following informalities: the abbreviations “O/W” and “W/O” should be spelled out. 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.
Claim(s) 1, 5-6 and 8 and any/all depended claims thereof is/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.
The term “effective” in the recited phrase “antimicrobial effective amount” in line 1 of claim 1 and line 2 of claim 5, and the term “non-therapeutic” in the recited phrase “non-therapeutic amount” in line 1 of claim 6, are relative terms which render the claims indefinite. The term “effective” are 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. The units (i.e., g/L, mg/L) of the effective amount is not specified. As such, other parameters or quantities or other limitations in the claim has been rendered indefinite by the use of the/these term. It is unclear to what extent the amount would be effective. For the purposes of this office action, prior art teaching any amount will be considered to be read on the claim limitation.
Claim 8 recites “hydroxyacetophenone, and an alkanediol and benzoic acid or a salt thereof,” in lines 3-4 of claim 8. It is not clear if the species alkanediol and benzoic acid are joined together as to say that alkanediol includes benzoic acid present, or if the claim requires one compound (e.g., a hydroxyacetophenone, an alkanediol, a benzoic acid or salt thereof). As a general rule, you do not need a comma after “and”. For the purposes of the office action, prior art teaching at least one species will be considered to read on the claim.
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.
(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.
Claim(s) 1-3, 5-8 and 16-23 are rejected under 35 U.S.C. 102 (a)(1) or (a)(2) as being anticipated by Herve (WO 2002039972 A1, cited on IDS). Citations from Herve are from the machine translated document.
Herve discloses the synthesis of 1,4-phenylene-bis-(2-benzoxazolyl) of formulas (I) and (II) for use in sunscreen compositions filtering both UV-A and UV-B (pg. 4, paras. 2-3, claims 1-3) to anticipate claim 1 and claim 16 (i.e., elected cosmetic composition).
Regarding claims 1-3 and 5-6, Herve does not disclose the recited term, "antimicrobial agent". However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. Here, a 1,4-phenylene-bis-(2-benzoxazolyl) (i.e., 1,4-di(benzoxazole-2’yl)benzene) is capable of performing as a/an antimicrobial agent, antifungal and/or antibacterial (e.g., instant claim 2), inhibits the growth of a species (e.g., instant claim 3), deodorant active compound (e.g., claim 6).
Subsequent grinding afforded a size of the micronized compounds according to the examples that is 0.450 µm (pg. 10, para. 2 and 4) to anticipate claim 7.
Regarding claim 8 and claim 23 Herve discloses propylene glycol (i.e., 1,2-propanediol, alkanediol) to anticipate the “alkanediol” limitation.
Herve anticipates claims 17-22 by disclosing compositions according to Example A Cream (oil-in-water emulsion) (pg. 10, last para.) that comprise 1,4-di(benzoxazole-2-yl)benzene at 13.2 g, a polar ester oil: benzoate of C12/15 alcohols and a potassium hexadecylic alcohol phosphate surfactant (pg. 11, para. 1).
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 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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. Applicants are 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) 1-3, 5-9 and 16-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herve (WO 2002039972 A1, cited on IDS) evidenced by Vinsova (Bioorganic & Medicinal Chemistry 14, 5850-5865, pub. 06/19/2006) and Essential Wholesale and Labs (essential + labs, pub. 05/09/2016) in view of Candau (US 6,627,180 B2). Citations for Herve are from the machine translated document provided.
Herve discloses the synthesis of 1,4-phenylene-bis-(2-benzoxazolyl) of formulas (I) and (II) for use in sunscreen compositions filtering both UV-A and UV-B (pg. 4, paras. 2-3, claims 1-3) to read on the claimed 1,4-di(benzoxazole-2’-yl)benzene of instant claim 1 and the cosmetic composition (elected species) of claim 16.
Regarding claims 1-3 and 5-6, Herve does not disclose the recited term, "antimicrobial agent". However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. Here, a 1,4-phenylene-bis-(2-benzoxazolyl) (i.e., 1,4-di(benzoxazole-2’-yl)benzene) is capable of performing as a/an antimicrobial agent, antifungal and/or antibacterial (e.g., instant claim 2), inhibits the growth of a species (e.g., instant claim 3), deodorant active compound (e.g., claim 6).
In addition, as evidenced by Vinsova, benzoxazole derivatives have been known in the art to be extensively studied for their antibacterial and antifungal activity (pg. 5850, sec. 1., col. 2). One skilled in the art would know that that bacterial and fungal growth occurs in cosmetics because their formulas often contain ingredients like water, sugars, and oils, which provide a rich, nutrient-rich environment for microorganisms to thrive. As such, the skilled artisan would be motivated to incorporate benzoxazole derivatives such as 1,4-di(benzoxazole-2’-yl)benzene in an oil-in-water cosmetic composition such as those disclosed by Herve.
Regarding claim 7, Herve discloses the size of the micronized compounds according to the examples is 0.450 µm (pg. 10, para. 2 and 4).
Regarding claims 17-20, Herve teaches that the fraction of the insoluble organic compound filtering UV radiation is between 0.1% and 15% by weight and preferably between 0.2 and 10% by weight, relative to the total weight of the cosmetic composition (pg. 5, para. 6, claim 8) to read on the ranges of percentages recited. MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art.
Regarding claim 21 and claim 22, Herve provides Example A Cream (oil-in-water emulsion) (pg. 10, last para.) (to read on the O/W emulsion (elected species) of claim 22); that comprises 1,4-di(benzoxazole-2-yl)benzene at 13.2 g, a polar ester oil: benzoate of C12/15 alcohols and a potassium hexadecylic alcohol phosphate surfactant (pg. 11, para. 1) to read on claim 21.
Regarding claim 8 and claim 23, Herve discloses propylene glycol (i.e., 1,2-propanediol) to read on the “alkanediol” limitation.
With respect to claim 9 and claim 24, the propylene glycol of Herve is not 1,3-propanediol (i.e., propanediol). It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to substitute one known propylene glycol (i.e., 1,2-propandiol) of Herve with the specific 1,3-propanediol for a similar purpose of providing a cosmetic composition with improved safety. As evidenced by Essential Wholesale and Labs, propanediol has a low potential to irritate or sensitize skin and the potential for these effects are lower than that of propylene glycol, while substitutions can be made at 1:1 in formulations (pg. 2 of document). Simple substitution of one alkanediol for another is within the purview of the skilled artisan and would yield predictable results.
Specifically regarding the admixture limitation of claim 23, Herve does not explicitly teach admixing. Applicants state that 1,4-di(benzoxazol-2'-yl)benzene can also be used in admixture with traditional preservatives to improve the preservative activity thereof (see Spec., pg. 7, lines 33-34) to achieve synergistical enhancement (see Spec., pg. 8, line 2).
Candau discloses topically applicable sunscreen compositions that contain synergistically UV-A-enhancing amounts of (a) particulates of at least one insoluble organic UV-screening agent having a particle size ranging from 10 nm to 5 um, and (b) at least one UV-screening amino-substituted 2-hydroxybenzophenone compound (title, abstract, title, col. 1, lines 16-31; claims 1-2). Candau teaches 1,4-phenylenebis(2-benzoxazolyl) (i.e., 1,4-di(benzoxazole-2-yl)benzene (DBO)) micronized with particle sizes of 10 nm to 5 µm in sunscreen compositions (col. 3, line 16; col. 12, line 36; claim 22, 25) Example 2). Candau provides a specific composition formulated via simple intimate admixing of several constituents (i.e., admixture) in which 2,2'-(1,4-phenylene)bisbenzoxazole (i.e., DBO) is present at 4 g, and similar to Herve, C12/C15 alkyl benzoate and hexadecyl phosphate, potassium salt are present (col. 32, Example 2, line 40).
Candau teaches that the compositions can additionally comprise fatty substances composed of an oil; esters of fatty acids, such as derivatives of benzoic acid, (col. 30, lines 14- 35-36) and among organic solvents, of lower alcohols (col. 30, lines 50-51). Candau teaches that these compositions can be provided in particular in the form of a simple or complex emulsion (O/W, W/O, O/W/O, or W/O/W), such as a cream, a milk, a gel or a cream gel, of a powder or of a solid tube and can optionally be packaged as an aerosol and provided in the form of a foam or spray (bridging col. 30-31).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to apply the admixture taught by Candau in the composition taught by Herve with expected results. One would be motivated to do so with a reasonable expectation of success because as Herve teaches that dispersibility can be improved by making the compounds micronized (pg. 5, para. 3), Candau builds upon this by better defining the dimensions of particulates (abstract, claim 1) which would contribute to the improvement of dispersibility, absent a clear showing of evidence to the contrary. Admixing is explicitly taught by Candau in Example 1 (col 31, line 66) and Example 2 (col 32, line 22). Both references recognize hydroxybenzophenones (Herve pg. 7, para. 1; Candau, col. 28, line 42; claim 56) and C12-15 alkyl benzoate (Herve, pg. 11, Example A; Candau, col. 30, line 42). And, an artisan would understand the teaching of propanediol as the teaching of “1,3-propanediol” to indicate that the propanediol overlaps with the claimed 1,3-propanediol.
Conclusion
Claims 1-3, 5-9 and 16-24 are rejected; no claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 900-500 ET.
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/Karen Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614