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 .
Response to Amendment
The amendment filed 02/23/2026 has been entered. Claims 1-2, 4, 6, 19-20, 23-27 are amended. No new material was added. The objection to the claims 1, 4, 6 and 1-20 and the specification are withdrawn in light of the amendment. Also, the rejection of claims 25-27 under 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in light of the amendment.
The Applicant's arguments filed 02/03/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 16-27 are rejected under 35 U.S.C. 103 as being unpatentable over Pesaro et al. (EP 2774481B1) in view of Herve et al. (WO0239972A1; published 23 May 2002; IDS of record 3 March 2022).
Applicant Claims
The (broadest) independent claim 1 is drawn to a topical composition comprising 1,4-di(benzoxazole-2-yl)benzene, at least one compound selected from the group consisting of hydroxyacetophenone, 1-3-propandiol and benzoic acid or a salt thereof, wherein the 1,4-di(benzoxazole-2-yl)benzene is present in an amount of 0.1 to 20 wt% based on the total weight of the composition whereas independent claims 25 and 27 are drawn to process of using the composition of the claim 1.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Pesaro et al. teaches or suggests an antimicrobial mixture for personal care or cosmetic composition comprising (a) the acetophenone derivatives, namely 4-hydroxyacetophenone (4HAP), which is also commonly known as p-hydroxyacetophenone, as a first antibacterial agent and (b) at least one secondary antibacterial agent selected from benzoic acid, 1, 3-propanediol, etc. (see claims 1, 4-6; para. [0022]-[0026]; abstract; entire), wherein the mixture contains components (a) and (b) in a weight ratio of about 1:99 to about 99:1, preferably about 20:80 to about 80:20 and more preferably about 40:60 to about 60:40 (para. [0024]); wherein the acetophenone derivative or its mixtures with additional antimicrobial agent or preservatives is present in amounts of rom about 0.01 to about 10, preferably about 0.05 to about 5 and more preferably about 0.1 to about 1% b.w-calculated on the total composition (para. [0026]); wherein the acetophenone derivative and the claimed composition displays synergically intensified antimicrobial action against a large number of Gram-positive bacteria (e.g., S aureus, S epidermidis, etc..), Gram-negative bacteria (E. Coli, P. Aeruginosa, etc…), molds and yeasts (e.g., Candida abicans, Malassezia furfur, A brasilensis), which in particular renders possible preservation and antimicrobial treatment of a large numbers of cosmetic formulation (para. [0014] and examples 1, 5, tables 5-7); and its use in a method for preserving a personal care/cosmetic composition and a method for fighting micro-organism (para. [0016], [0115]-[0116], claims 2 and 11-13). Pesaro discloses that the performance of the acetophenone derivatives or the mixtures are improved by adding certain hydroxy compounds selected from 1,3-propanediol, etc…in an amount of 1 to 25, preferably 2 to 2 and more preferably about 5 to 10% b.w.-calculated on the total mixtures (para. [0025]); the composition is applied to human skin at concentration of 0.01 to about 10, preferably about 0.05 to about 5 and more preferably 0.1 to about 1% based on the total weight of the cosmetic or pharmaceutical product which comprises the mixture (para. [0117]-[0119]); the personal or cosmetic composition may advantageously further contain UV-absorbing agents and UV filters including known organic filters such as aminobenzoic acid derivatives, salicylic derivatives, cinnamic derivatives, benzophenone derivatives, dibenzoylmethane derivatives, triazine derivatives, benzylidenecamphor derivaitves, etc.. and inorganic pigment as a secondary sun protection agent such as zinc and titanium oxide (see para. [0040]-[0053]); the formulation containing UV filters/UV filtering pigments are particularly suitable for protecting the skin and hair (para. [0050]); the preparations can be in the form of W/O, O/W emulsion or gel (para. [0049], [0069]-[0070], [0097][0098]); and the preparation can be prepared with auxiliaries and additives (para. [0027]) such as surfactants (para. [0028]), emulsifiers (para. [0029]), thickening agent (para. [0033]), oils (para. [0038]). and carriers including water (para. [0033] and [0072]).
As a specific embodiment, Pesaro et al. discloses Tables 5-7 show a composition comprising 4HAP and 1,3-propanediol where the ratio of 4HAP and 1.3-propanediol is 1:2, 1:4, 1:10 wherein Table V, XVIII, XXVIII are prepared in cosmetic lotion, gel or cream containing benzoic acid, respectively.
With respect to the limitations recited in method claims 25-27, it is interpreted that Pesaro’s method for preserving a cosmetic composition and/or fighting microorganism when it is applied topically to skin and/or hair makes obvious the claimed method a non-therapeutic topical method of treating the skin and/or the scalp recited in claim 25 and a method of inhibiting or delaying microbial breakdown of a topical cosmetic composition recited in claim 27.
With respect to the recited functional property of “maintain a healthy skin homeostasis and/or a skin microbiome balance” in claim 25, the instant specification discloses that “a cosmetic application is conceivable, for example, for maintaining a healthy skin homeostasis and/or for balancing the skin microbiome by reducing the number of unwanted microbes such as E. Coli, P. Aeruginosa, S. aureus, A. brasilensis, and/or C. albicans on the skins (page 10, lines 1-5). Similarly, Pesaro teaches that the hydroxyacetophenone such as 4-hydroxyacetophenone (4HAP) is effective in inhibiting activity of E. Coli, P. Aeruginosa, S. aureus, A. brasilensis, and/or C. albicans, therefore it is interpreted that Pesaro’s teaching makes obvious the instant claimed invention.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims (MPEP §2141.012)
Pesaro et al. do not teach the use of 1,4-di(benzoxazole-2-yl)benzene in claim 1, the specific concentration of 1,4-di(benzoxazole-2-yl)benzene recited in claims 1, 2, and 16 and the specific weight ratio of ,4-di(benzoxazole-2-yl)benzene to hydroxyacetophenone, 1,3-propanediol or benzoic acid recited in claims 6, 23 and 24.
Herve et al. teaches the use of insoluble organic UV filters and their use in cosmetics [pg.1, line 13] including a composition for protecting human epidermis or hair (i.e., topical use) from ultraviolet rays [pg. 7, lines 319-320] ), comprising the insoluble organic UV filters such as 1,4- phenylene-bis-(2-benzoxazolyl) (which is 1,4-di(benzoxazole-2-yl)benzene), surfactants, stabilizing agents, preservatives, among other formulation adjuvants [pg. 6, lines 285-289] and may be in the form of an oil-in-water, water-in-oil type emulsion [pg. 7, lines 309-311] or a gel [pg. 7, line 325] (limitation of claims 1, 8 and 9), wherein the cosmetic composition comprises 0.1 to 15 wt% of the insoluble UV filter [pg. 4, lines 163-165] which is overlapping with the instant claim range recited in claims 1-2 and 16. Herve teaches that the insoluble organic UV filters makes it possible to overcome the disadvantages of soluble organic filters and insoluble mineral filters of the prior art and are more effective sunscreens than state of the art soluble organic filters/mineral filters [pg. 2, lines 75-82; pg. 3, line 121; pg. 4, line 163-pg. 6, line 275] while effectively protect the skin, lips or hair as well other photosensitive materials against the adverse effects of UV radiation with the use of soluble organic filters or insoluble mineral compounds such as zinc oxide or titanium oxide [pg. 1, line 23- pg. 2, line 82].
Finding of Prima Facie Obviousness Rationale and Motivation
Based on the teachings above, one having ordinary skill in the art at the time of the invention was made would have been motivated to modify the teaching of Pesaro as taught by Herve with ample motivation to overcome the disadvantages of conventional soluble organic filters and inorganic mineral filters/pigments of the prior art and are more effective sunscreens than state of the art mineral filters while effectively protect the skin, lips or hair as well other photosensitive materials against the adverse effects of UV radiation.
Pesaro and Herve are considered to be analogous to the claimed invention, because Pesaro, Herve and the instant invention are in the same field of topical cosmetics composition that is useful for skin and hair (e.g., O/W or W/O type emulsion or gel). It would have been primary facie obvious to one of ordinary skill in the art at the time of the invention was made to have arrived at the claimed invention based on the teaching of Pesaro and Herve in combination under the meaning of 36 USC 103 as explained above.
Consistent with this reasoning, it would have been obvious to have selected various
combination of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
With respect to the specific amount of hydroxyacetophenone, 1,3-propanediol or benzoic acid based on the total weight of the composition recited in claims 3-5 and 17-22, as discussed above, Persaro teaches or suggests that the acetophenone derivative alone or its mixtures with additional antimicrobial agent/preservatives is present in amounts of rom about 0.01 to about 10, preferably about 0.05 to about 5 and more preferably about 0.1 to about 1% b.w.-calculated on the total composition which overlaps with the instantly claimed range. Therefore, the reference makes obvious the claimed ranges. That being said and in lieu of objective evidence of unexpected results, the amount can be viewed as a variable that achieves the recognized result of successfully making the oral film composition. The optimum or workable range of the concentration can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (IDB). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272
In addition, based on the above teachings, it is considered obvious that one could make a topical composition of 1,4- phenylene-bis-(2-benzoxazolyl) with any of the above antimicrobial/preservative agents within the ratios as limited by instant claims 6, 23 and 24. One having ordinary skill in the art would have been arrived at the claimed invention with a reason expectation of success as discussed above.
Response to Arguments
Applicant’s arguments filed on 02/23/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “Neither Pesaro et al nor Herve et al teach or suggest that an antimicrobial mixture may be achieved by the conjoint presence of 1,4-di(benzoxazole-2’-yl)benzene with at least one of the hydroxyacetophenone, 1,3-propanediol and/or benzoic acid or a salt thereof”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As discussed above 103 rejection, one having ordinary skill in the art at the time of the invention was made would have been motivated to modify the teaching of Pesaro as taught by Herve with ample motivation to overcome the disadvantages of conventional soluble organic filters and inorganic mineral filters/pigments of the prior art and are more effective sunscreens than state of the art mineral filters while effectively protect the skin, lips or hair as well other photosensitive materials against the adverse effects of UV radiation.
Conclusion
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 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.
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/BRIAN-YONG S KWON/ Supervisory Patent Examiner, Art Unit 1613