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
Applicant’s Request for Reconsideration dated June 26, 2026 is acknowledged.
Claims 1-5 as filed on August 29, 2025 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Maintained Grounds of Rejection: 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, of record) in view of Tie et al. (WO 2016/184419, published November 24, 2016, as evidenced by the Google translation, of record) and Nicoll et al. (US 5,188,831, published February 23, 1993, of record).
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 fully considered but they are not persuasive.
Applicant’s citation to paragraph [0009] and Examples 1-6 of the specification remains unpersuasive for reasons of record. Notably, the claims at broadest embrace all amounts and any UV protection. The cited references need not teach that which is not claimed. Applicant’s citation the inferior UV protection of Comparative Examples 6-9 is unpersuasive because the instant claims embrace any amount of any UV protecting agent and any UV protection rating. Furthermore, the citation to the inferior texture of Comparative Examples 1, 4 and 5 is unpersuasive because the instant claims embrace any texture. See MPEP 716 for information regarding allegations of unexpected results.
Applicant states there is no motivation to combine Maningat with Tie to achieve “the aforementioned surprising effects” of the combination and further states Nicoll does not cure this deficiency. This line of argument is unpersuasive because it is prima facie obvious to combine equivalents for the same purpose, e.g., it is prima facie obvious to combine one sunscreen with another in order to obtain a third sunscreen. See MPEP 2144.06 and 2144.07. Any results that flow from the combination are latent to the prior art. See MPEP 2145 II and 2112.
Therefore, the totality of the evidence of record weighs toward the prima facie obviousness of the generic compositions claimed and the rejection over Maningat is properly maintained and made again. See MPEP 716.01.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rodriguez et al. “Silicon microspheres as UV, visible and infrared filters for cosmetics,” Cosmetics & Toiletries 125(9):42-50, 2010
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.
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
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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