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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 29, 2025 has been entered.
Claims 1-5 are pending.
Claim 1 is currently amended.
Claims 1-5 as filed on August 29, 2025 are under consideration.
Withdrawn Objections / Rejections
In view of the approval on August 9, 2025 of the Terminal Disclaimer filed July 31, 2025, all previous double patenting rejections are obviated.
In view of the amendment of the claims, all previous claim rejections under 35 USC over Takanuki are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 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 of this title, 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 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Maningat et al. (US 2006/0280714, published December 14, 2006) in view of Tie et al. (WO 2016/184419, published November 24, 2016, as evidenced by the Google translation) and Nicoll et al. (US 5,188,831, published February 23, 1993).
Maningat teaches aluminum starch octenylsuccinate granules with a diameter of 4.5 to 8.9 microns suitable for use in sunscreens (title; abstract; claims; Example 5). The exemplary sunscreen comprises ethylhexyl methoxycinnamate (ultraviolet protectant, absorbing agent) and 2 wt% aluminum starch octenylsuccinate (Example 5), as required by instant claims 3, 5. Compositions may comprise 0.5 to 10 wt% of the aluminum starch octenylsuccinate (claims 4-7). Aluminum starch octenylsuccinate is an aesthetics control agent used to mitigate greasiness and drag associated with products containing high levels of occlusive agents or organic-based UV absorbers and has also been reported to enhance SPF (paragraph [0004]).
Maningat does not teach silica having a particle size of 0.3 to 1 micron as required by claim 1.
Maningat does not teach 0.2 to 2 wt% of the silica as required by claim 2.
Maningat does not teach the amount of powder (C) is greater than the amount of silica (B) as required by claim 4.
These deficiencies are made up for in the teachings of Tie and Nicholl.
Tie teaches an active high-purity silica sunscreen having a particle size of 0.01 to 0.5 microns and a sunscreen comprising 1 to 15 wt% of the silica (title; abstract; claims). The silica has the function of effectively absorbing UV rays (page 2, middle). Tie exemplifies an embodiment of silica having an average particle diameter of 0.5 microns (Example 5).
Nicholl teaches sunscreens containing titanium dioxide particles (title; abstract; claims). The sunscreens may further comprise organic sunscreens to further enhance sun protection, however, organic sunscreens can only be applied to the skin in amounts within imposed safety limits (claims 5, 6; columns 6-7, “Organic sunscreens”; column 1, “Background and prior art”). The sunscreens may further comprise other inorganic sunscreens such as silica (column 7, “Other organic sunscreens”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sunscreen compositions of Maningat inclusive of the exemplary sunscreen to further comprise additional sunscreen actives inclusive of silica having a particle size of 0.01 to 0.5 microns such as 0.5 microns in amounts from 1 to 15 wt% as taught by Tie because it is known to combine sunscreen actives inclusive of silica and organic sunscreens in order to further enhance sun protection. There would be a reasonable expectation of success because Maningat embraces all sunscreens.
Regarding the amount of powder (C) is greater than the amount of silica (B) as required by claim 4, the combined teachings of the prior art render obvious render obvious ratios ranging from 0.5/15 to 10/1 which encompasses ratios as instantly claimed. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant's arguments have been considered but are substantially moot in light of the new grounds of rejection necessitated by amendment.
Applicant’s citation to the data within the instant specification remains unpersuasive for reasons of record. See MPEP 716 for information regarding allegations of unexpected results. Applicant has not articulated a rationale as to why the properties of the exemplary compositions are extrapolatable across the genus of compositions claimed.
Applicant’s allegation that silica having a particle diameter of 0.3 to 1 microns improves UV protection is also unpersuasive because silica is an art-recognized sunscreen agent as evidenced at least by Tie and by Nicholl as newly applied. Silica is also an art-recognized sunscreen booster as further evidenced by at least Josso as newly made of record. Silica is also an art-recognized oil absorber, known to improve the texture of oily compositions as further evidenced at least by Eitrich as newly made of record. The totality of the evidence of record weighs toward the prima facie obviousness of the generic compositions claimed. See MPEP 716.01.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Enomoto et al. (US 2017/0135920) teaches porous silica particles having a diameter of 0.5 to 25 microns and exemplifies embodiments having diameters of 300, 550 and 1000 nm (title; abstract; claims; Table 1, Examples 1-6; Table 3).
Martino et al. (US 5,256,404) teaches sunscreens comprising aluminum starch octenylsuccinate (title; abstract; claims; Example 3).
Josso (EP 1,421,931 A2, as evidenced by the Google translation) teaches spherical particles of porous silica having an average particle size of 0.5 to 20 microns as an agent for increasing SPF (title; abstract; claims).
Eitrich et al. (EP 3,437,625 A1, as evidenced by the Google translation) teaches cosmetic compositions comprising a spherical silica having an average size of 4 to 6 microns and at least one UVA range absorbing organic UV filter; the silica absorbs oil, reducing sand adherence (title; abstract; claims).
Tsubata (JP 2018-087146 A, as evidenced by the Google translation) teaches cosmetic compositions comprising at least one first spherical silicone powder having an average size of 7 microns or more and at least one second spherical silicone powder having an average size of 3, preferably 1, microns or less (title; abstract; claims).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner , Art Unit 1600