DETAILED ACTION
Claims 1-20 are pending and under consideration on the merits.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/30/2026 has been entered.
Status of the Rejections
The 103 rejections are withdrawn and replaced with new rejections over new combinations of references already of record.
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.
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. Applicant is 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.
Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as unpatentable over Qian et al. (CN109160519; published 1.08.2019) and as evidenced by the English translation thereof (of record), and in view of Yano et al. (US Pat. Pub. 2010/0069237), and Canham et al. (US Pat. Pub. 2011/0229540),
As to claims 1, 3, and 5-8, Qian discloses a sun care composition comprising hollow mesoporous silica particles (“nanospheres”) loaded with a sunscreen active (paragraph 2). The particles have a size within the 150-400 nm range recited by claim 6 (see Figure 1 of the original document). Qian further teaches that the particles serve as carriers for the sunscreen active by loading the active onto the particles including into the pores of the particles, and that expanding the pore volume increases the particle’s loading capacity (paragraphs 11 and 17). Qian further teaches specific embodiments of particles having a surface area of about 496 m2/g, which is below the 600-1200 range of claim 7 (see Table I of the original document at paragraph 53 and paragraph 56 of the translation). Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
As to claims 1, 3, and 5-8, Qian does not further expressly disclose that the composition comprises an oil phase comprising the sunscreen active and an aqueous phase mixed with the oil phase and comprising the hollow mesoporous silica nanospheres as recited by claim 1, nor the weight % amount of the particles in the composition (claims 1, 3, and 5), the shell thickness of the particles (claim 1), that the sunscreen active is present in the amount of greater than about 10 wt% (claims 1 and 14), that their surface area is within the range of claim 7, or their pore size within the range of claim 8. Additionally, the Qian particle size range discussed above is with respect to the diameter of the entire particle as opposed to the diameter of the hollow cavity of the particles as recited by claim 1.
Yano discloses mesoporous hollow silica particles for use as a carrier for functional organic compounds (paragraphs 1-2), and teaches that the particles have a diameter of most preferably 0.05-3 microns (i.e., 50-3000 nm)(paragraph 19) and a shell thickness of most preferably 70 to 400 nm (paragraph 68), which overlaps the range of claim 1. Yano teaches particle diameters and shell thicknesses that can result in a hollow cavity diameter that is within the range of claim 1. For example, the use of a particle diameter of 300 nm and a shell thickness of 70 nanometers would be within the ranges taught by Yano and would result in a hollow cavity of 230 nm, which is within the range taught by claim 1.
Canham discloses cosmetic formulations comprising mesoporous silicon particles as carriers for the delivery of active ingredients (paragraphs 1, 6, 15) in the amount of 0.1-10 wt% (paragraph 81) which encompasses the amounts recited by claims 1, 3, and 11-12, the particles having a surface area of 50 to 5000 m2/g, which overlaps the range of claim 7 (paragraph 17). The particles have a pore size of 2-50 nm (paragraph 15), which encompasses the range of claim 8, and have a diameter of 100-500 nm (paragraph 51), which encompasses the range of claim 6. Canham teaches that the silicon may be loaded with sunscreens (paragraph 72). Canham teaches that the mesoporous silica may be loaded with the active in amounts that can exceed 15 wt% (paragraph 77). Canham further teaches that the formulation may contain a vehicle to act as a carrier for the mesoporous silicon particles such as a water in oil or an oil in water emulsion (paragraph 83).
As to claims 1, 3, and 5-8, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the sun care composition of Qian by 1) selecting a thickness of the shell of the mesoporous hollow silica particles and a hollow cavity diameter to be within the ranges recited by claims 1 and 14, because Qian is silent about the shell thickness and hollow cavity diameter which would have led the skilled artisan to search the art of mesoporous hollow silica particles for information on suitable shell thicknesses which would have led to Yano, which expressly teaches that mesoporous hollow silica particles for use as a carrier suitably have a shell thickness that may be within the range of claims 1 and 14 along with particle diameters that would result in a cavity diameter within the range of claim 1, such that the skilled artisan reasonably would have expected that shell thicknesses and cavity diameters within the claimed ranges would be suitable for the Qian mesoporous hollow silica particles, and 2) by selecting an amount of sunscreen active that is within the range recited by claim 1, because the amount of sunscreen active is a result effective variable that will affect the sun protection ability of the composition and the skilled artisan would have been motivated to use high amounts of sunscreen within the recited range when higher SPF protection was desired and with a reasonable expectation of success in light of Canham’s teaching that mesoporous silica particles can be loaded with an active in amounts within the recited range such as 15 wt%, and 3) by selecting amounts of the silica particles and their surface area and pore size that are within the ranges recited by the present claims, because Canham expressly teaches that mesoporous silica particles for use as carriers for a sunscreen active in a cosmetic formulation suitably may be present in amounts within the presently claimed ranges and suitably may possess surface areas and pore sizes that are within the presently claimed ranges, such that the skilled artisan reasonably would have expected that these amounts, surface areas, and pore sizes also would be appropriate for the mesoporous silica particle loaded with a sunscreen in the Qian suncare composition. In cases where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It further would have been prima facie obvious to formulate the composition as an oil in water or water in oil emulsion comprising an oil phase comprising the sunscreen active mixed with an aqueous phase comprising the mesoporous silica nanospheres, because Canham further teaches that sunscreen compositions comprising a sunscreen active and mesoporous silica particles as carriers for active ingredients may be formulated as contain a water in oil or an oil in water emulsion as a vehicle to act as a carrier for the mesoporous silicon particles, such that the skilled artisan reasonably would have expected that the Qian sun care composition comprising silica particles also could be formulated as an emulsion wherein the oil soluble sunscreen active is present in the oil phase and the silica particles in the aqueous phase.
Claims 2, 4, 9-13, and 14-20 are rejected under 35 U.S.C. 103 as unpatentable over Qian et al. (CN109160519) and as evidenced by the English translation thereof in view of Yano et al. (US Pat. Pub. 2010/0069237), and Canham et al. (US Pat. Pub. 2011/0229540) as applied to claims 1, 3, and 5-8 above, and further in view of Hueber et al. (US Pat. Pub. 2016/0206527).
The teachings of Qian, Yano, and Canham are relied upon as discussed above, but they do not further expressly disclose that the sunscreen active is a mixture of ethylhexyl methoxycinnamate, ethylhexyl salicylate, and butyl methoxydibenzoylmethane (claim 2), and further comprises 2-ethylhexyl-2-cyano-3,3 diphenylacrylate (claims 4 and 17), or that the SPF factor of the composition is more than 25% higher than a comparative composition without the nanospheres (claims 10, 13, 16, and 19), or that the composition further comprises one of the ingredients recited by claim 9.
Hueber discloses sun care compositions comprising silica particles and a UV filter active such as ethylhexyl methoxycinnamate, ethylhexyl salicylate, and butyl methoxydibenzoylmethane, or 2-ethylhexyl-2-cyano-3,3 diphenylacrylate, wherein more than one of these actives may be used in combination (paragraphs 59-60 and 62-63). The composition may further comprise additives recited by claim 9, such as antioxidants, de-foaming agents, surfactants, emulsifier, preservatives, moisturizers, silicones, or oils (paragraphs 35-36, 38, 56).
As to claims 2, 4, and 17, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the sun care composition of Qian, Yano, and Canham as combined supra by selecting a mixture of ethylhexyl methoxycinnamate, ethylhexyl salicylate, butyl methoxydibenzoylmethane, and 2-ethylhexyl-2-cyano-3,3 diphenylacrylate as the UV sunscreen active instead of, or in addition to, the sunscreen active in the Qian composition, because Hueber teaches that all of these substances are UV filters that are suitable for use in combination in sun care compositions, such that the skilled artisan reasonably would have expected that they could serve as the sunscreen actives in the Qian composition. Such a modification is merely the substitution of one known element for another according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143.
Regarding claim 9, it further would have been prima facie obvious to incorporate antioxidants, de-foaming agents, surfactants, emulsifier, preservatives, moisturizers, silicones, or oils as additional ingredients in the sun care composition, because Hueber expressly teaches that these ingredients are suitable additives for sun care compositions.
The resulting modified prior art composition is viewed as possessing an SPF within the scope of claims 10, 16, and 19, because it comprises the same ingredients as the present claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Response to Applicant’s Arguments
Applicant’s arguments center on the Yang reference, but these arguments are moot in light of the new grounds of rejection which do not rely on Yang.
Conclusion
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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