DETAILED ACTION
Status of Claims
The amendments, and arguments, filed June 11, 2026, are acknowledged and have been fully considered. Claims 1-25, 27-37 and 39-41 are pending and currently under consideration. Claims 21, 32, 36-37, 39-40 have been amended; new claim 41 has been added; claim 38 has been cancelled; and claims 1-20 and 26 was previously cancelled. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Final
Withdrawn Claim Objections & Rejections
The objection to claim 39 (at par. 2-3 of the 03/11/2026 Office action) is withdrawn in light of applicant’s 06/11/2026 amendments. Applicant’s 06/11/2026 remarks at p. 6, par. 3, are acknowledged.
The rejection of claims 37-38 under 35 U.S.C. § 112 (d) or 35 U.S.C. § 112 (pre-AIA ), fourth paragraph, as not being further limiting (at par. 4-5 of the 03/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments. Applicant’s 06/11/2026 remarks at p. 6, par. 4, are acknowledged.
The rejection of claims 21-25, 27, 29-36 and 40 under 35 U.S.C. § 103 over HUGLIN (US 5,955,060) and SCHLOSSMAN (US 2016/0271027 A1) (at par. 6-25 of the 03/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments. Applicant’s 06/11/2026 remarks at p. 7, par. 1-3, are acknowledged.
The rejection of claim 28 under 35 U.S.C. § 103 over HUGLIN and SCHLOSSMAN and further in view of MULLER (US 2010/0008873 A1) (at par. 26-30 of the 03/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments.
The rejection of claims 37-39 under 35 U.S.C. § 103 over HUGLIN and ELSOM (WO 90/11067) (at par. 31-40 of the 03/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments.
The provisional nonstatutory double patenting rejections, at par. 41-49 of the 03/11/2026 Office action, are maintained in modified form, in light of applicant’s 06/11/2026 amendment
New Claim Objections – Necessitated by Amendments
The following claims are objected to because of the following informalities: Claim 36 is objected to because the claim should read: “[[M]]A method of enhancing the photostability, and/or […].”
Appropriate correction is required.
New Claim Rejections – 35 U.S.C. § 112 – Indefiniteness – Necessitated by Amendments
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 39 is rejected under 35 U.S.C. § 112 (b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or, for pre-AIA , that applicant regards as the invention.
Claim 39 is drawn to a method:
39. ([…]) A method of enhancing the photostability, and/or reducing the stickiness, and/or improving the water resistance, and/or improving the film homogeneity, and/or reducing fabric staining before and/or after washing, and/or reducing the gloss, and/or reducing the formulation yellowing, and/or improving the compatibility with the microbiome of [[a]]the sunscreen or daily care composition according to claim 21.
but appears to have omitted the recitation of an active step, for instance, the previously recited “by applying” step. Therefore, it is unclear what method/process/product applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Further clarification is required.
Modified Claim Rejections - Nonstatutory Double Patenting – Necessitated by Amendments
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 21-25, 27-37 and 39-41 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-24 of copending Application No. 18/525,934 (‘934 Application). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a sunscreen composition containing bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide in overlapping amounts thereof.
Thus, the ‘934 Application anticipates claims 21-25, 27-37 and 39-41.
Claims 21-25, 27-37 and 39-41 are provisionally rejected on the ground of nonstatutory double patenting over claims 24-25, 27-36, and 38-46 of copending Application No. 18/689,457 (‘457 Application). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a sunscreen composition containing bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide.
Thus, the ‘457 Application anticipates claims 21-25, 27-37 and 39-41.
Claims 21-25, 27-37 and 39-41 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-19 of copending Application No. 18/797,592 (‘592 Application), in view of the disclosures of HUGLIN (US 5,955,060, Issued Sep. 21, 1999; hereinafter, “Hüglin”) and SCHLOSSMAN (US 2016/0271027 A1, Publ. Sep. 22, 2016; hereinafter, “Schlossman”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a sunscreen composition containing bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide. However, to the extent that ‘592 DOES NOT RECITE the particular amounts, ratios and forms of bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide, the formulation thereof would be obvious per the disclosures of Hüglin and Schlossman, as discussed above.
Thus, the ‘592 Application per Hüglin and Schlossman render claims 21-25, 27-37 and 39-41 obvious.
Response to Arguments
Applicants’ arguments, filed on June 11, 2026 (hereinafter, referred to as “Remarks”), have been fully considered, but they are not persuasive. Since the reference applications recite the same components in overlapping amounts, then the double patenting rejections of record are maintained.
Summary/Conclusion
Claims 21-25, 27-37 and 39-41 are rejected. No claims are 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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