DETAILED ACTION
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 .
Status of Claims
Claims 1-3, 5, 7-9, 11-14 and 18-23 are pending. Claims 4, 6, 10, 15-17 and 24-25 are canceled. Claims 1 and 11-14 are amended.
Claims 11-12 remain withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-3, 5, 7-9, 13-14 and 18-23 are examined on their merits.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 1-3, 5, 7-9, 13-14 and 18-25 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Claim Rejections - 35 USC § 103
In light of the cancelation of the claim the rejection of claim 25 under 35 U.S.C. 103 as being unpatentable over Doyle et al. US 2008/0317688 (12/25/2008)(1/17/2023 IDS) in view of Knopf et al. US 2005/0265936 (12/1/2005) and Ao et al. US 2015/0335569 (11/26/2015) as evidenced by the specification as applied to claims 1-3, 5, 7-10, 13-14 and 18-24 and further in view of Allef et al. WO 2011/012395 (2/3/2011) is withdrawn as moot.
Double Patenting
In light of the cancelation of claim 25 the provisional rejection of claims 1-3, 5, and 7-9 and 13-25 on the basis of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent Appn. No. 18/274607 in view of Knopf et al. US 2005/0265936 (12/1/2005), Ao et al. US 2015/0335569 (11/26/2015) and Allef et al. WO 2011/012395 (2/3/2011) is withdrawn.
Rejections Maintained/New 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 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.
The rejection of claims 1-3, 5, 7-10, 13-14 and 18-24 under 35 U.S.C. 103 as being unpatentable over Doyle et al. US 2008/0317688 (12/25/2008)(1/17/2023 IDS) in view of Knopf et al. US 2005/0265936 (12/1/2005) and Ao et al. US 2015/0335569 (11/26/2015) as evidenced by the specification is maintained.
Doyle et al. (Doyle) teaches a combined body wash and sunscreen formulation containing effective amounts of a solar protective system which includes octyl methoxycinnamate, octyl salicylate and titanium dioxide and a surfactant mixture. (See Abstract and [0014]). The surfactant mixtures can comprise glyceryl stearate, PEG-100 Stearate, and potassium cetyl phosphate. (See Doyle claim 7). Glyceryl stearate is a nonionic surfactant as evidenced by the specification at [0064]. A non-ionic surfactant is called for in instant claim 1. An anionic surfactant is potassium cetyl phosphate as evidenced by the specification at [0063]. An anionic surfactant is called for in instant claim 1. Potassium cetyl phosphate is an alkyl phosphate salt as called for in instant claim 13. The composition cleanses the body and confers SPF protection of 12 or greater. (See [0014] and claim 11). A SPF of 12 or greater overlaps with the SPF Factor ranging from 30 to 80 called for in instant claim 21.
There is water as a solvent in the formulation. Water as a solvent is called for in instant claim 1e. (See claim 7 and [0022]). Glyceryl stearate is called for in instant claims 1c and claim 14. Titanium dioxide is called for in instant claim 1b. The solar protective system taught in Doyle reads on the UV-filter system called for in instant claim 1a. Octyl salicylate is a salicylic compound as called for in instant claim 2. PEG-100 stearate is called for in instant claim 1c.
The solar protective system which is a UV absorbing component can be present in an amount of about 5 to 20%. (See Doyle claim 10b). About 5 to about 20% overlaps with the from 10% to 50% by weight called for in instant claim 3. When the higher amounts of the ingredient ranges given in Doyle claim 7 are selected the balance of water is 1.05% (the remaining ingredients being present in an amount of 98.95%.) 1.5% falls within the from 0.1% to 10% called for in instant claim 7.
The titanium dioxide can be present in an amount of 1% by weight. This is substantially free of since it is less than 2%. (The instant specification defines substantially free of to be less than 2% by weight at [0047]).
Doyle also teaches an oil-in-water emulsion as called for in instant claim 10. (See [0032-0036]). Doyle also teaches that a fragrance can be part of the composition. (See [0026, Doyle claim 2]). A fragrance is called for in instant claim 8. It is present in the composition in an amount of 1.1 to 1.5 wt% which falls within the between 0.1% by weight to 15% by weight called for in instant claim 9. (See Doyle claim 2). The mixture of surfactants reads on the surfactant system called for in instant claim 1c and the mixture of surfactants are present in an amount of from 5 to 40%. (See Doyle claim 10). 5 to 40% overlaps with the from 0.5% to 15% by weight called for in instant claim 1c. Titanium dioxide is present in an amount of from 0.10 to 1.0%. 1% overlaps with the from 1% to 35% called for in claim 1b.
Doyle does not teach wherein the sunscreen formulation has a pH of 5.5 to 6.8, or wherein the composition further comprises the organic filler silica, isononyl isononanoate, xanthan gum or iron oxide. These deficiencies are found in the teachings of Knopf et al. and Ao et al.
Knopf. et al. (Knopf) teaches a cleansing and moisturizing sunscreen formulation that comprises a sunscreen, a structurant and an emulsion comprising a homogenized mixture of wax and alcohol components, at least one of which is a surfactant. (See Abstract). Knopf teaches stearyl alcohol. (See Knopf claim 8). The Knopf composition also teaches water. (See [0017]). Knopf teaches that its composition has a pH of 5.5 to 6.5. (See [0028]). 5.5 to 6.5 overlaps with the pH of 5.5 to 6.8 called for in instant claim 22. Knopf teaches ultrafine iron oxide, iron oxid with a diameter of 100 nanometers or less. (See [0038])
Knopf teaches that wetting agents and emulsifiers such as stearyl alcohol are incorporated into the network and are desirable because they aid in building viscosity of the formulation and aid in producing a high yield value. (See [0006]). Additionally, stearic alcohol aids in skin occlusiveness for increased moisturization. (See [0006]).
Ao et al. (Ao) teaches a cosmetic composition comprising a film-forming polymer having a contact angle of at least 85 degrees, wax and optical particle. (See Abstract). The cosmetic composition can be a sunscreen. (See Ao [0057], [0061] and claim 16). The cosmetic composition may comprise ester emollients such as isononyl isononanoate. (See [0048]). Isononyl isononanoate is called for in instant claim 1d and claim 16. Isononyl isononanoate has a carbon chain of at least six carbons in which none of the six carbons is a carbonyl carbon or a hydrophilic moiety bonded directly to the six carbons as evidenced by the specification at [0068 –0070]. Isononyl isononanoate has a carbon chain of at least six carbons in which none of the six carbons is a carbonyl carbon or a hydrophilic moiety bonded directly to the six carbons is called for in instant claims 1, 16 and 17.
Ao teaches that its sunscreen composition can comprise silica as called for in instant claim 18. Silica can be present in an amount of from 0.05% to 10% which overlaps with the 0.1 to 10% called for in instant claim 20. Ao teaches that its composition can also include 0.05 to 10% xanthan gum as called for in instant claim 23. (See [0062]). 0.05 to 10% overlaps with the 0.1% to 4% called for in instant claim 23.
Ao teaches that its composition can comprise iron oxide as called for in instant claim 1. (See [0037]). The iron oxide can be from 5 nanometers to 1 micron. (See [0039]). This overlaps with the uncoated iron oxide particles having a particle size of 1 to 100 microns called for in instant claim 1.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention making the Doyle combined body wash and sunscreen formulation containing (a) a UV filter system: 3,3,5- Trimehylcyclohexyl-2-hydroxybenzoate, octyl methoxycinnamate, Benzophenone-2, octyl salicylate (b) a skin tone color system comprising titanium dioxide in an amount of 1% by weight; (c) a surfactant system comprising glyceryl stearate and PEG-100 Stearate, potassium cetyl phosphate, and a water solvent to have the pH be a pH of 5.5 to 6.5 as taught by Knopf in order to have an effective pH for a sunscreen formulation as taught by Knopf. There would be a reasonable expectation of success because both Doyle and Knopf are directed to cleansing sunscreens.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention making the Doyle combined body wash and sunscreen formulation containing (a) a UV filter system: 3,3,5- Trimehylcyclohexyl-2-hydroxybenzoate, octyl methoxycinnamate, Benzophenone-2, octyl salicylate (b) a skin tone color system comprising titanium dioxide in an amount of 1% by weight; (c) a surfactant system comprising glyceryl stearate and PEG-100 Stearate, potassium cetyl phosphate, and a water solvent to add 0.05% to 10% silica, isononyl isonanoate, iron oxide and 0.05% to 10% xanthan gum as taught by Ao in order to thicken the composition to the desired thickness of a sunscreen composition as taught by Ao.
Double Patenting
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 1-3, 5, and 7-9 and 13-23 are provisionally rejected on the basis of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent Appn. No. 18/274607 in view of Knopf et al. US 2005/0265936 (12/1/2005) and Ao et al. US 2015/0335569 (11/26/2015).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims are directed to a composition comprising ascorbic or a salt thereof; sulfamic acid, one or more crosslinking agents and optionally a preservative wherein the composition has a pH of from about 2.45 to about 4.5.
The claims of U.S. Patent Appn. No. 18/274607 are also directed to a sunscreen comprising from 5/0 to 6.5% of a pigments selected from titanium dioxide, from 1.7 to 1.9% of glyceryl stearate and PEG-100 stearate, from 1.4 to 1.6% of potassium cetyl phosphate and from 15.0 to 25.0% of one UV filter that comprises ethylhexyl salicylate and that comprises a fragrance.
The claims of U.S. Patent Appn. No. 18274607 differ from those of the instant application in that the composition does not comprise stearyl alcohol, silica, xanthan gum, isononoyl isononanoate, alkyl polyglucosides and fatty alcohols mixture or water solvent or amphoacetates. These deficiencies are remedied by the teachings of Knopf, and Ao.
The teachings of Knopf are described supra. It would have been obvious to one of ordinary skill in the art making the composition of U.S. Patent Appn. No. 18/274607 to add water and stearyl alcohol in order to aid in building viscosity of the formulation and aid in producing skin occlusiveness for increased moisturization as taught by Knopf.
The teachings of Ao are described supra. It would have been obvious to one of ordinary skill in the art making the composition of U.S. Patent Appn. No. 18/274607 to
add 0.05% to 10% silica and 0.05% to 10% xanthan gum as taught by Ao as well as isononyl isononanoate in order to thicken the composition to the desired thickness of a sunscreen composition as taught by Ao.
This is a provisional nonstatutory double patenting rejection because the claims are not yet patented.
Claims 1-3, 5, and 7-9 and 13-23 are directed to an invention not patentably distinct from claims 1-18 of commonly assigned U.S. Patent Appn. No. 18/274607. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent Appn. No. 18/274607, discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Remarks
Applicants’ arguments of April 16, 2026 have been fully considered and are found to be partly persuasive and partly unpersuasive as described further below.
§112 Rejections
Applicants assert that their amendments to claim 1 have addressed the indefiniteness rejections and clarified the claim.
Response
In light of the amendments to the claims, the indefiniteness rejections are withdrawn above.
Obviousness Rejections
Applicants assert that the claims are not obvious because Doyle, Knop and Ao do not teach the claimed invention. Applicants assert that the amended claims provide synergy between the pearl agents coated with titanium dioxide and iron oxide presented in the skin tone color system and the oily phase containing the UV-filter system with high SPF performance.
Applicants assert that Doyle teaches a body wash with sunscreen but does not teach a cosmetic because a body wash washes the body and mostly is washed away from the body during use. Applicants note that Doyle teaches the sunscreen portion of the composition as not as easily washing off the body.
Applicants assert that Knopf teaches a cleansing foaming sunscreen lotion but does not teach a skin tone color system. Applicants note that Knopf mentions iron oxide once as a UV agent but does not mention it as part of a skin tone color system.
Applicants note that Ao mentions iron oxide as an optical particle but does not mention it as part of a skin tone color system. Applicants assert that since Doyle’s composition is intended to be washed off skin but Ao’s composition is intended to be applied to and remain on skin, they serve a conflicting purpose such that a skilled artisan would not look from to Ao from Doyle.
Applicants assert that there is no disclosure that would lead an artisan to combine a UV-filter system with a skin tone color system of claim 1 in a manner to form a stable oil-in-water emulsion.
Response
Applicants’ arguments are not found persuasive. Applicants’ assertion that since Doyle’s composition is intended to be washed off skin but Ao’s composition is intended to be applied to and remain on skin, they serve a conflicting purpose is not found to be persuasive because Applicants’ themselves admit that Doyle teaches the sunscreen portion of the composition as not as easily washing off the body. Thus, the sunscreen portion is intended to be applied to the body and remain on the body just as Ao’s composition is. This is the entire purpose of a sunscreen body wash – the sunscreen remains applied. Applicants’ arguments regarding Doyle are unpersuasive - Doyle is a sunscreen and that is a cosmetic composition.
A skilled artisan would absolutely look from Doyle to Knopf and Ao because they are all sunscreen compositions. Indeed, this would give rise to a reasonable expectation of success in combining their teachings. Furthermore, it is very common for cosmetics to have a skin tone system and a sunscreen as well. This is an extremely common feature of foundations and tinted moisturizers, so, respectfully, Applicants argument that they are not combined by skilled artisans is unpersuasive.
With respect to Applicants’ assertion that the amended claims provide synergy between the pearl agents coated with titanium dioxide and iron oxide presented in the skin tone color system and the oily phase containing the UV-filter system with high SPF performance, this is not found persuasive because no such language is found in the claims.
Double Patenting Rejections
Applicants note that the obviousness type double patenting rejection is provisional and request that it be held in abeyance.
Response
Applicants request to hold the double patenting rejection in abeyance until there is an indication of allowability of claims is noted. Applicant is reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejection is maintained as no action regarding this rejection has been taken by applicants at this time.
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 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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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