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 .
DETAILED ACTION
Status of the Claims
Claims 2, 4 and 10-15 have been canceled. Claims 1, 3, 5-6, 8 and 23 have been amended. Claims included in the prosecution are claims 1, 3, 5-9 and 16-24.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) submitted on 03/20/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
Withdrawn Objections/Rejections
The objections to the specification and claim 22 are withdrawn.
In light of removing the phrase “effective amount” and term “non-therapeutic,” amending to include the 10 to 90 wt. % range of claim 1, and upon further consideration, the rejection of claims 1, 5-6 and 8 under 35 U.S.C. § 112 as being indefinite are withdrawn.
New Rejections
Applicant’s amendments have necessitated the following grounds of rejection:
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, 6, 16-18, and 21-22 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hervé et al. (WO2002039972A1, cited on the IDS). Citations from Hervé et al. are from the machine translated document provided.
Hervé et al. 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).
Hervé et al. do 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, 1,4-phenylene-bis-(2-benzoxazolyl) (i.e., 1,4-di(benzoxazole-2’yl)benzene) taught by Hervé et al., has the capability to perform as an antimicrobial agent to impart an antimicrobial effect, to inhibit growth of microbial cells selected from the group consisting of Candida albicans, Escherichia coli, Staphylococcus aureus, Pseudomonas aeruginosa, Aspergillus brasiliensis and mixtures thereof, to improve preservation of the composition, and to serve as a deodorant active compound, thereby anticipating instant claims 1, 3, 5, and 6, respectively.
Example A Cream (oil-in-water emulsion) (pg. 10, last para.) teach a 38% aqueous dispersion of 1,4-di(benzoxazole-2-yl)benzene. The dispersion is added to an O/W emulsion at 13.2% of the total cosmetic composition (pg. 11, para. 1). Here, Hervé et al. anticipate the 10 to 90 wt.% limitation of instant claim 1 and the limitations of instant claims 16-18 and 21-22 (i.e., cosmetic, 0.1-20 wt.%, 0.25-15 wt. %, 0.3-7.5 wt.%, water and oil). The antimicrobial properties, preservation properties, and deodorant properties are inherent since the instant dispersion and prior art dispersion are structurally identical.
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.
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.
Claims 1, 3, 5-9, and 16-24 are rejected under 35 U.S.C. § 103 as being unpatentable over Hervé et al. (WO2002039972A1, cited on IDS) evidenced by Vinsova et al. (Synthesis and antimicrobial evaluation of new 2-substituted 5,7-di-tert-butylbenzoxazoles. Bioorganic & Medicinal Chemistry, 14, 5850-5865, June 19, 2006, previously cited) and Essential Wholesale and Labs (Propanediol: An alternative to Propylene Glycol. essential + labs, May 9, 2016, previously cited), and further in view of Candau et al. (US6627180B2, Sep. 30, 2003, previously cited). Citations from Hervé et al. are from the machine translated document provided.
Hervé et al. disclose 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 (page 4, paragraphs 2-3, claims 1-3) to read on the claimed 1,4-di(benzoxazole-2’-yl)benzene of instant claim 1. The insoluble organic filters can be obtained by a process of grinding coarse particles in the presence of one or more suitable surfactants making it possible to improve the dispersion of the particles thus obtained in cosmetic formulations (page 9, paragraph 7). Example 1 discloses the synthesis of l,4-phenylene-bis-(2-benzoxazolyl) followed by a preparation of an aqueous dispersion (bridging pages 12-13).
Regarding the 10 to 90 wt. %, based on total weight of the aqueous dispersion of 1,4-di(benzoxazole-2’-yl)benzene limitation of claim 1, Hervé et al. disclose 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 (page 9, paragraph 9; claim 8) to additionally read on the cosmetic compositions (elected species) of instant claim 16 and read on the limitations of instant claims 17-20. The claimed range overlaps and/or lies inside the range that is disclosed by Hervé et al., a prima facie case of obviousness exists. MPEP 2144.05.
The recitation of “1,4-di(benzoxazole-2’-yl)benzene as an antimicrobial agent sufficient to impart an antimicrobial effect to the composition,” is a reciting of intended use and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from what is in the prior art. If the structure described in the prior art is capable of performing such an intended use as claimed, then it meets the requirements of the instant 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. Thus, 1,4-phenylene-bis-(2-benzoxazolyl) (i.e., 1,4-di(benzoxazole-2’-yl)benzene) disclosed in the prior art of Hervé et al. is capable of performing as an antimicrobial agent sufficient to impart an antimicrobial effect to the composition to read on instant claim 1; is sufficient to inhibit the growth of microbial cells selected from the group consisting of Candida albicans, Escherichia coli, Staphylococcus aureus, Pseudomonas aeruginosa, Aspergillus brasiliensis and mixtures thereof to read on instant claim 3, to improve preservation of the composition to read on instant claim 5, and to serve as a deodorant active compound to read on instant claim 6.
And also, as evidenced by Vinsova et al., benzoxazole derivatives have been known in the art to be extensively studied for their antibacterial and antifungal activity (page 5850, section 1., column 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 Hervé et al.
Hervé et al. disclose the particle size profile in the formulation examples provided as being 0.450 µm (Examples 1 and 2) to read on the micronized form of instant claim 7.
Hervé et al. teach propylene glycol (i.e., 1,2-propanediol) to read on the alkanediol of instant claims 8 and instant claim 23.
Regarding claim 9 and claim 24, although propylene glycol disclosed in Hervé et al. 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 Hervé et al. 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.
Hervé et al. provide Example A Cream (oil-in-water emulsion); 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 (see hexadecyl alcohol phosphate, potassium salt on page 14 of document) to read on instant claim 22 (i.e., ELECTED O/W) and instant claim 21, respectively.
Regarding the claimed invention wherein a product as a cosmetic composition comprising the aqueous dispersion, further comprising at least one compound in admixture (e.g., hydroxyacetophenone, an alkanediol, benzoic acid and a salt of benzoic acid) with the 1,4 di(benzoxazole-2’yl)benzene, Hervé et al. do not explicitly disclose the term “admixture” or admixing.
However, Candau et al. disclose 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 (claims 1-2). The 1,4-phenylenebis(2-benzoxazolyl) (i.e., 1,4-di(benzoxazole-2-yl)benzene) has particle sizes of 10 nm to 5 µm in sunscreen compositions (column 3, line 16, column 12, line 36, claims 22 and 25, Example 2). Compositions formulated via simple admixing of several constituents (i.e., admixture) where 2,2'-(1,4-phenylene)bis benzoxazole is present at 4 g, and similar to Hervé et al., C12/C15 alkyl benzoate and hexadecyl phosphate, potassium salt are also present (column 32, line 40).
Candau et al. teach compositions can additionally comprise fatty substances composed of an oil; esters of fatty acids, such as derivatives of benzoic acid, (column 30, lines 14- 35-36) and among organic solvents, of lower alcohols (column 30, lines 50-51). These compositions can be in 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 optionally packaged as an aerosol; in the form of a foam or spray (bridging col. 30-31).
Regarding claim 23 and claim 24, 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 et al. in the composition taught by Hervé et al. with expected results. One would be motivated to do so with a reasonable expectation of success because as Hervé et al. teach that dispersibility can be improved by making the compounds micronized and Candau et al. enable a better defining of the dimensions of particulates (abstract, claim 1) which would improve dispersibility and ease of formulating, absent a clear showing of evidence to the contrary. Admixing is explicitly taught by Candau et al. by Example 1 (column 31, line 66) and with Example 2 (col 32, line 22). Both Hervé et al. and Candau et al. teach hydroxy benzophenones (see Hervé, e.g., benzophenone-3 (i.e., oxybenzone, a specific hydroxy benzophenone; see Candau, column 28, line 42; claim 56) and both references teach C12-15 alkyl benzoate (see Hervé, Example A; see Candau, column 30, line 42). Also, 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.
Response to Arguments
Applicants’ arguments have been fully considered but they are not persuasive.
Applicants’ argument that 1,4-phenylene-bis-(2-benzoxazolyl) (i.e., 2,2'-(1,4-phenylene)bis(1,3-benzoxazole), i.e., 1,4-di(benzoxazole-2'-yl)benzene, i.e., CAS No. 904-39-2) is among a large number of compounds that may be compound of formula (I) taught by Herve et al. (see Remarks, page 9), the Examiner directs attention to Merck &Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Circ. 1989), which states with regards to its more than 1200 combinations: that the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious.” See In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds"); In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425, 58 CCPA 1074 (1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and it is of a class of chemicals to be used for the same purpose as appellant's additives"). In a section 103 inquiry, "the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered." In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
Applicants argue while Herve et al. disclose 1,4-phenylene-bis-(2-benzoxazolyl) as being useful for UV light filters but do not disclose the compound as exhibiting antimicrobial effects; capable of killing and/or inhibiting the growth of microbial cells such as C. albicans, E. coli, S. aureus, P. aeruginosa and A. brasiliensis (see Remarks, page 9, paragraph 3).
In addition to the discussion about intended use and the evidence provided by Vinsova et al. above, Elnima et al. (Antibacterial and Antifungal Activities of Benzimidazole and Benzoxazole Derivatives. Antimicrobial Agents and Chemotherapy, Jan. 1981, p. 29-32) states that the antimicrobial activities of imidazoles and benzimidazoles have long been established (page 29, column 1, paragraph 1). Values from the study demonstrated growth inhibition of organisms to include Candida albicans, Escherichia coli, Staphylococcus aureus, and Pseudomonas aeruginosa (Tables 1 and 2). As such, the 1,4-phenylene-bis-(2-benzoxazolyl) disclosed in the prior art of Hervé et al. would have been expected by a person of ordinary skill in the art to be capable of performing as an antimicrobial agent sufficient to impart an antimicrobial effect to the composition, thus rendering the instant claims obvious.
For these reasons, Applicants’ arguments are found unpersuasive.
Conclusion
All claims under consideration remain rejected; no claims are allowed. 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 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 Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 0830-1630.
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/Karen A Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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