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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
Status of claims
The amendment filed on 11/26/2025 is acknowledged. Claims 1-36 have been canceled and new claims 37-56 have been added. Claims 37-56 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 11/26/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the claim objection of claims 18 and 19, 35 U.S.C. 102(a)(1) rejections of claims 17, 18, 20-22, 27, and 29 over Bunger et al. (US 2003/0039619 A1) and of claims 17, 18, 21, 23, 28, and 30 over Essence Sensitivity Pact SPF 50+ (11/2018, in IDS filed on 01/12/2023), and 35 U.S.C. 103(a) rejections of claims 17-22, 26, 27, and 29 over Bunger et al. (US 2003/0039619 A1) and of claims 17-22, 24-27, and 29 over Bunger et al. (US 2003/0039619 A1), Mundschau et al. (US 2017/0360681 A1), and Wiechers et al. (US 2015/0110841 A1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejections necessitated by Applicant’s amendment
The new claims necessitate the following new ground of rejections.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 37-39, 41, 44, and 45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Springer et al. (US 2009/0136437 A1) in view of Mundschau et al. (US 2017/0360681 A1).
Springer et al. teach, in No. 5.3 in table 5, a sunscreen comprising
3.0% by weight of Isolan GPS
2.0% by weight of butyl methoxydibenzoylmethane (avobenzone, the claimed component a in the instant claim 37);
without ethylenediaminetetraacetic acid (EDTA) (the instant claim 38) and without ethylhexyl methoxycinnamate, etc., (the instant claim 39).
Springer et al. also teach the formulation comprising UV light protection filter, antiperspirant active compound, dyestuff as cosmetic coloring agents, etc., (abstract and paragraph 88); wherein the UV light protection filter includes 2,4-bis-{[4-(2-ethyl-hexyloxy)-2-hydroxy]-phenyl}-6-(4-methoxyphenyl)-1,3- ,5-triazine (the instant claim 44) (paragraph 96) and the antiperspirant active compound includes aluminum chlorides (the claimed component c in the instant claim 37) (paragraph 103).
Springer et al. do not teach diisostearoyl polyglyceryl-3 dimer dilinoleate (Isolan PDI) in No. 5.3 in table 5 (the instant claim 37 and 3.0% by weight of Isolan PDI is within the claimed 0.1-5% in the instant claim 41).
This deficiency is cured by Mundschau et al. who teach both polyglyceryl-4 diisostearate/polyhydroxystearate/sebacate (Isolan GPS) and Isolan PDI being suitable water-in-oil emulsifiers in an oil-in-water emulsion (claims 1 and 8).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Springer et al. and Mundschau et al. to replace Isolan GPS in No. 5.3 in table 5 taught by Springer et al. with Isolan PDI. Both Isolan GPS and Isolan PDI being suitable water-in-oil emulsifiers in an oil-in-water emulsion was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replace Isolan GPS in No. 5.3 in table 5 taught by Springer et al. with Isolan PDI flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
The weight ratio between avobenzone and Isolan GPS (being obvious to be replaced with Isolan PDI) is calculated to be 0.67:1 (2/3 =0.67) (within the claimed 1:50-1 → 1-0.02:1 in the instant claim 45).
Claims 37-39, 41, 42, 44, and 45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Springer et al. (US 2009/0136437 A1) in view of Mundschau et al. (US 2017/0360681 A1) and Henrike et al. (US 2013/0189203 A1).
The teachings of Springer et al. and Mundschau et al. are discussed above and applied in the same manner.
Springer et al. do not specify dyestuff including iron containing pigment in the instant claim 42).
This deficiency is cured by Henrike et al. who teach cosmetic additive agent (abstract) including iron oxide pigment (paragraph 23) being used in sun protection agents (paragraph 32).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Springer et al. and Henrike et al. to specify the dyestuff taught by Springer et al. including iron oxide. Cosmetic additive agent including iron oxide pigment was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Claims 37, 38, 40, 41, 44, and 45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Springer et al. (US 2009/0136437 A1) in view of Mundschau et al. (US 2017/0360681 A1).
Springer et al. teach, in No. 5.1 in table 5, a sunscreen comprising
3.0% by weight of Isolan GPS
3.0% by weight of butyl methoxydibenzoylmethane (the claimed component a in the instant claim 37);
70.5% by weight of water;
without ethylenediaminetetraacetic acid (EDTA) (the instant claim 38) and without octocrylene (the instant claim 40).
Springer et al. also teach the formulation comprising UV light protection filter, antiperspirant active compound, dyestuff as cosmetic coloring agents, etc., (abstract and paragraph 88); wherein the UV light protection filter includes 2,4-bis-{[4-(2-ethyl-hexyloxy)-2-hydroxy]-phenyl}-6-(4-methoxyphenyl)-1,3- ,5-triazine (the instant claim 44) (paragraph 96) and the antiperspirant active compound includes aluminum chlorides (the claimed component c in the instant claim 37) (paragraph 103).
Springer et al. do not teach Isolan PDI in No. 5.1 in table 5 (the instant claim 37 and 3.0% by weight of Isolan PDI is within the claimed 0.1-5% in the instant claim 41).
This deficiency is cured by Mundschau et al. whose are discussed above and the rationale discussed above.
The weight ratio between avobenzone and Isolan GPS (being obvious to be replaced with Isolan PDI) is calculated to be 1:1 (3/3 =0.67) (within the claimed 1:50-1 → 1-0.02:1 in the instant claim 45).
Claims 37, 38, 40-42, 44, and 45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Springer et al. (US 2009/0136437 A1) in view of Mundschau et al. (US 2017/0360681 A1) and Henrike et al. (US 2013/0189203 A1).
The teachings of Springer et al. and Mundschau et al. are discussed above and applied in the same manner.
Springer et al. do not specify dyestuff including iron containing pigment in the instant claim 42).
This deficiency is cured by Henrike et al. whose are discussed above and the rationale discussed above.
Claims 37-41, 43, and 44 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bunger et al. (US 2003/0039619 A1) in view of Mundschau et al. (US 2017/0360681 A1).
Bunger et al. teach cosmetic or dermatological formulation in form of emulsion (paragraph 108) such as oi-in-water emulsifier (example 6-8) comprising
one or more UV filters including 4-(tert-butyl)-4′-methoxydibenzoylmethane,
2,4,6-tris[anilino(p-carbo-2′-ethyl-1′-hexyloxy)]-1,3,5-triazine (ethylhexyl triazone, Uvinul T150, the instant claim 44) (abstract and paragraph 72 and 92), and
emulsifiers (paragraph 111) and
exemplified 3% by weight (the instant claim 41) of Isolan PDI (the claimed component b in in the instant claim 37) as one of the components (paragraph 123 and 244).
EDTA (the instant claim 38), 3-(4-methylbenzylidene)camphor (enzacamene), 2-hydroxy-4-methoxybenzophenone (oxybenzone or benzophenone-3), 2-ethylhexyl 4-methoxycinnamate (octyl methoxycinnamate), parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers and polyethylene glycol esters (the instant claim 39), octocrylene (the instant claim 40), are not recited as must have components.
Bunger et al. do not specify the emulsion being O/W in the instant claim 43.
This deficiency is cured by Mundschau et al. whose are discussed above.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Bunger et al. and Mundschau et al. to incorporate diisostearoyl polyglyceryl-3 dimer dilinoleate into O/W emulsion comprising 4-(tert-butyl)-4′-methoxydibenzoyl methane taught by Bunger et al. Water-in-oil emulsifiers diisostearoyl polyglyceryl-3 dimer dilinoleate being incorporated into O/W emulsion was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying the emulsion being O/W flows from its having been used in the prior art for forming O/W emulsion, and from its being recognized in the prior art as useful for the same purpose.
Claims 46, 47, 52, and 54-56 are rejected under 35 U.S.C. 103(a) as being unpatentable over Giuliani et al. (US 2017/0015700 A1) in view of Mundschau et al. (US 2017/0360681 A1).
Giuliani et al. teach, in example 7, a high protection sunscreen comprising
5-19% diethylamino hydroxybenzoyl hexyl benzoate (the claimed hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate in the instant claims 46 and 54);
1-3% butyl methoxydibenzoylmethane (avobenzone, the claimed 4-(tert-butyl)-4′-methoxydibenzoylmethane in the instant claims 47 and 54);
2-8% Isolan GPS;
ethylhexyl triazone (the claimed 2,4,6-tris[anilino(p-carbo-2′-ethyl-1′-hexyloxy)]-1,3,5-triazine in the instant claim 52);
water q.b. a 100;
without ethylenediaminetetraacetic acid (EDTA) (the instant claims 55).
Giuliani et al. do not teach Isolan PDI in example 7 (the instant claims 47 and 54).
This deficiency is cured by Mundschau et al. whose are discussed above and the rationale discussed above.
The weight ratio between diethylamino hydroxybenzoyl hexyl benzoate+ avobenzone and Isolan GPS (being obvious to be replaced with Isolan PDI) is calculated to be 3-2.75:1 ((5+1)/2=3 and (19+3)/8=2.75) (within the claimed 1:25 to 3:1 → 0.04-3:1 the instant claim 56).
Claims 46, 47, 50, 52, and 54-56 are rejected under 35 U.S.C. 103(a) as being unpatentable over Giuliani et al. (US 2017/0015700 A1) in view of Mundschau et al. (US 2017/0360681 A1) and Henrike et al. (US 2013/0189203 A1).
The teachings of Giuliani et al. and Mundschau et al. are discussed above and applied in the same manner.
Giuliani et al. do not specify dyestuff including iron containing pigment in the instant claim 50).
This deficiency is cured by Henrike et al. whose are discussed above and the rationale discussed above
Claims 46, 47, and 49-53 are rejected under 35 U.S.C. 103(a) as being unpatentable over Henning et al. (US 2012/0027704 A1) in view of Mundschau et al. (US 2017/0360681 A1).
Henning et al. teach cosmetic, dermatological, pharmaceutical formulations as well as care and cleansing products (abstract), and exemplified in table 12 example 17, a W/O suns lotion comprising
3.00% by weight of isolan GPS (component b in the instant claims 46 and 49);
product 11;
10.00% by weight of ethylhexyl methoxycinnamate + diethylamino hydroxybenzoyl hexyl benzoate (i.e., <10% by weight of diethylamino hydroxybenzoyl hexyl benzoate) (component a in the instant claim 46);
bis-ethylhexyloxyphenol methoxyphenyl triazine (the claimed 2,4-bis{[4-(2-ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine in the instant claim 52); and
51.10% by weight of water;
without octocrylene (the instant claim 46) and without ethylenediaminetetraacetic acid (EDTA) (the instant claim 47).
Henning et al. also teach the formulations comprising pigments such as FeOx (the claimed iron-containing pigments in the instant claim 50) (paragraph 81 and 90).
Henning et al. do not teach Isolan PDI in example 17 in table 12 (the instant claim 46 and 3.0% by weight of Isolan PDI is within the claimed 0.1-5% in the instant claim 49) and example 17 in table 12 being an O/W emulsion (the instant claim 51).
These deficiencies are cured by Mundschau et al. whose are discussed above and the rationale discussed above.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Henning et al. and Mundschau et al. to adjust the weight percentage of water in example 17 in table 12 from 51.1% by weight to 73% by weight and thus converting the W/O emulsion of example 17 in table 12 to a O/W emulsion since Isolan GPS is known to be water-in-oil emulsifiers in an oil-in-water emulsion.
The weight ratio between diethylamino hydroxybenzoyl hexyl benzoate and Isolan GPS (being obvious to be replaced with Isolan PDI) is calculated to be <3.3:1 (<10/3 → <3.3:1).
Henning et al. do not teach the same ratio between diethylamino hydroxybenzoyl hexyl benzoate and Isolan GPS (being obvious to be replaced with Isolan PDI) (<3.3:1 vs the claimed 1:50 to 2:1 → 2-0.02:1 in the instant claim 53).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of diethylamino hydroxybenzoyl hexyl benzoate to Isolan weight ratio is 2-0.02:1 and the range of diethylamino hydroxybenzoyl hexyl benzoate to Isolan weight ratio taught in the prior art is <3.3:1 and therefor, includes the claimed range. Please refer to MPEP 2144.05.II.A:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
Claims 37-44, 46-52, 54, and 55 are rejected under 35 U.S.C. 103(a) as being unpatentable over Behler et al. (US 2012/0128601 A1).
Behler et al. teach cosmetic and/or pharmaceutical formulations (paragraph 3) in form of O/W emulsion (the instant claims 43 and 51) (paragraph 98) comprising
UV A filters including 4-tert-butyl-4'-methoxydibenzoylmethane (the claimed component a in the instant claim 37 and the claimed 1st of the component a in the instant claim 54), benzoic acid 2-[4-(diethylamino)-2-hydroxybenzoyl]hexyl ester (the claimed component a in the instant claim 46 and the claimed 2nd of the component a in the instant claim 54), and ethylhexyl triazone (the claimed 2,4,6-tris[anilino(p-carbo-2′-ethyl-1′-hexyloxy)]-1,3,5-triazine in the instant claims 44 and 52) (paragraph 130, 136, and 151);
antiperspirants including aluminum salts (component c in the instant claim 37) (paragraph 177);
a pigment including iron black (the instant claims 42 and 50) (paragraph 200, 206);
0.1-10% by weight of at least one interface-active substance (paragraph 224) including emulsifiers (paragraph 228) including Isolan PDI (the claimed component b in the instant claims 37, 46, ad 54) (paragraph 243).
EDTA (the instant claims 38 and 47), 3-(4-methylbenzylidene)camphor (enzacamene), 2-hydroxy-4-methoxybenzophenone (oxybenzone or benzophenone-3), 2-ethylhexyl 4-methoxycinnamate (octyl methoxycinnamate), parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers and polyethylene glycol esters (the instant claims 39 and 48), octocrylene (the instant claims 40 and 46), are not recited as must have components.
Behler et al. do not teach the same weight percentage of Isolan PDI (0.1-10% vs the claimed 1.0-5% in the instant claims 41 and 49).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of Isolan PDI is 1.0-5% by weight and the range of Isolan PDI taught in the prior art is 0.1-10% by weight and therefor, includes the claimed range.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 11/26/2025, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614