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 Claims
The amendments and arguments filed on 03/24/2026 are acknowledged and have been fully considered. Claims 1 and 3-15 are now pending. Claims 1, 3-7, 11-13, and 15 are amended; claims 14-15 are withdrawn; claims 2 and 16 are cancelled.
Claims 1 and 3-13 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
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 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.
Claims 1 and 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tolbert (2016) in view of WO 2014097972 A1 (Hamazaki, 2014; as submitted on IDS of 06/10/2022). [emphasis added to reflect newly presented claims]
In regards to claims 1 and 9, Tolbert teaches an organic sunscreen comprising 2-ethylhexyl salicylate (a lipophilic UV filter) and hollow silica particles (see Tolbert, abstract). It is taught that the sunscreens are dispersed in lotions or cosmetics (i.e. non-pulverulent) (see Tolbert, introduction). Further, the hollow silica particles are taught to have various diameters, such as 743 nm, 809 nm, and 761 nm (i.e., 0.743 µm, 0.809 µm, and 0.761 µm, respectively), however it can be seen in figure 1 that, while not a large amount, there are particles of 1500 nm and larger (i.e., 1.5µm) (see Tolbert, page 3166, physical encapsulation of 2-ethylhexyl salicylate via microemulsion polymerization; figure 1), among others (see Tolbert, page 3166, covalently incorporated salicylate particles via Sol-Gel Polymerization; 2.4 particle preparation procedures). Further, the amount of the 2-ethylhexyl salicylate is taught to be from 8.5-28.77 mg/g (i.e., 0.85-2.877% by weight of the total composition) (see Tolbert, Table 2). More specifically, only looking at the examples wherein the hollow silica particles are present (i.e., E-Sal and cap-E-Sal), the amount of the 2-ethylhexyl salicylate is 8.5-8.64 mg/g (i.e., 0.85-0.864 % by weight). Further, the particles are taught to be non-porous (see Tolbert, page 3166, column 2, paragraph 2; page 3167, column 2 whole).
In regards to claim 4, the BET surface area of the particles is taught to be 6 m2/g, 9 m2/g, 12 m2/g, 13 m2/g, among others depending on the type of particle (see Tolbert, 3164-3164, 2.4 particle preparation procedures). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 5-7, specifically to the limitations of the void ratio, the oil absorption capacity, and the specific gravity, the teachings of Tolbert renders it obvious to arrive at the composition as instantly claimed. As the teachings of the prior art arrives at the composition as claimed, the properties applicant discloses and/or claims would necessarily follow absent evidence to the contrary.
In regards to claim 8, the particles are taught to comprise 2-ethylhexyl salicylate, a UV-B filter, and curcumin, a UV-A filter (see Tolbert, page 3170, 3.6 In vitro SPF and UVAPF determination; page 3171, column 1).
The teachings of Tolbert are silent on the composition being in the form of a water-in-oil emulsion, the amount of the at least one lipophilic organic UV filter in an amount of 5% by weight or more relative to the total weight of the composition, the amount of the hollow silica particle, the use of inorganic fillers, and the size of the at least one hollow silica sphere particle having an average primary particle size of 1.5µm or more and of 50 µm or less.
In regards to these deficiencies, Hamazaki teaches a composition comprising at least one organic UV filter and spherical porous silica particles (see Hamazaki, abstract; page 1, lines 4-7). It is taught that the composition is in the form of an oil-in-water emulsion, or water-in-oil emulsion or a cream or cream gel (see Hamazaki, page 13, lines 19-30). It is also taught that the amount of the silica particles in the composition is from 0.01 to 10% by weight relative to the total weight of the composition (see Hamazaki, page 12, lines 20-22). Further, Hamazaki teaches that the composition comprises fillers (see Hamazaki, page 12, lines 26-31) and specifically teaches in example 1, the use of silica and titanium dioxide in an amount of 6% by weight relative to the total composition (see Hamazaki, example 1). Looking at claim 7, it is taught that the amount of titanium dioxide to the silica is from 1-50% by weight relative to the total weight of the spherical particle (i.e. the silica). As such at most, the amount of titanium dioxide is 3% of the total composition by weight.
In regards to claims 1 and 11, specifically the amount of lipophilic organic UV filter, it is taught that the at least one organic UV filter is a combination of UV-A and UV-B screening agents (see Hamazaki, page 5, lines 10-14). Specifically it is taught that ethylhexyl salicylate is the UV-B screening agent (see Hamazaki, page 6, line 29; page 8, lines 5-6). It is also taught that the amount of UV filter in the composition is from 1 to 50% by weight and more preferably from 10 to 30% relative to the total weight of the cosmetic composition (see Hamazaki, page 9, lines 20-24). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further, it is taught that the silica particles have a mean particle size from 0.5 to 20µm with a specific surface of at least 50 m2/g (see Hamazaki, page 12, lines 8-22). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1 and 3-13, 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 formulate the composition as instantly claimed as both Tolbert and Hamazaki teach similar compositions for similar uses. "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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Further, it would be obvious to one with ordinary skill in the art to use the hollow silica particles of Tolbert instead of the porous silica particles of Hamazaki as the hollow silica particles are known to reduce leaching of the sunscreen and have decrease levels of photodegradation (see Tolbert, page 3168, 3.4 Sunscreen leaching analysis; page 3171, Conclusions). Further, in regards to the form of the emulsion, it is taught that the composition is prepared according to techniques that are well known in the art, such as being in the form of an oil-in-water or water-in-oil emulsion (see Hamazaki, page 13, lines 19-30). Also, in regards to the particle size of the silica spheres, it would be obvious to one with ordinary skill in the art to use the particle size as taught by Hamazaki as it is known in the art to work successfully in commercial products, which are listed in Hamazaki (see Hamazaki, page 12, 8-19). As such, one with ordinary skill in the art is able to easily envisage the composition of Tolbert in a water-in-oil emulsion. One with ordinary skill in the art would be motivated to combine the teachings of Tolbert with the teachings of Hamazaki according to the known method of making a sunscreen product using a lipophilic organic UV filter and hollow silica sphere particles (see Tolbert, Experimental procedures) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s arguments that the amounts of Tolbert do not overlap with the claim limitations, it is first appreciated that applicant discussed that the other examples presented in Table 2 do not contain the hollow silica particle, however "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As such, a different embodiment of the teachings of the art does not preclude one of ordinary skill in the art to easily envisage a composition with the higher amounts of 2-ethylhexyl salicylate. That being said, the rejection is made over Tolbert in view of Hamazaki. Hamazaki teaches that the at least one organic UV filter is a combination of UV-A and UV-B screening agents (see Hamazaki, page 5, lines 10-14). Specifically it is taught that ethylhexyl salicylate is the UV-B screening agent (see Hamazaki, page 6, line 29; page 8, lines 5-6). It is also taught that the amount of UV filter in the composition is from 1 to 50% by weight and more preferably from 10 to 30% relative to the total weight of the cosmetic composition (see Hamazaki, page 9, lines 20-24). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Again, as these amounts overlap with the claimed amounts, there is no argument of routine optimization presented.
In regards to applicant’s arguments that Hamazaki provides reasoning that the non-greasy sensation is due to the porous silica structure, it is pointed out that there are other examples than those pointed out by applicant, such as comparative examples 3-5, which do have the Sunsphere H-33 silica and still have low scores for the non-greasy sensation. This shows that there is more to the benefit discussed in the art than just the porous silica. Tolbert provides motivation for replacing the porous silica with nonporous silica as the nonporous hollow silica particles are known to reduce leaching of the sunscreen and have decrease levels of photodegradation (see Tolbert, page 3168, 3.4 Sunscreen leaching analysis; page 3171, Conclusions). As such, one with ordinary skill in the art would be motivated to combine the teachings of Tolbert with the teachings of Hamazaki according to the known method of making a sunscreen product using a lipophilic organic UV filter and hollow silica sphere particles (see Tolbert, Experimental procedures) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
In regards to applicant’s argument that Tolbert does not disclose the hollow silica particles as nonporous, it is pointed out that Tolbert discloses “Adsorption-desorption isotherms of E-Sal, cap-E-Sal, and hollow SiO2 particles without sunscreen are reversible and convex over the entire pressure range, with an indistinct monolayer-multilayer N2 adsorption point consistent with nonporous particles with weak adsorbent-adsorbate interactions (type III isotherm).” (see Tolbert, page 3166, column 2, paragraph 2), “As such, it can be deduced that the B-Curc particles are nonporous such as the previously prepared salicylate and unmodified silica particle samples.” (see Tolbert, page 3167, column 2), and “Since all prepared particle samples were determined to be nonporous,…2-ethylhexyl salicylate from the particle core.” (see Tolbert, page 3168, paragraph bridging columns 1-2). As such, the particles are disclosed as nonporous.
The claims remained rejected over the prior art as described above.
Conclusion
No claims 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 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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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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