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 .
This Office Action is in response to the Request for Continued Examination filed on 09/08/2026. Applicants' arguments, filed 09/08/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries 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.
Claim(s) 1, 2, 13-19, 21, 22 and 24, 31-38 are rejected under 35 U.S.C. 103 as being unpatentable over Baptiste et al. (WO2018099570, disclosed by applicant).
Baptiste et al. disclose a cosmetic composition blend comprising at least one TRPV1 and /or TRPV3 modulator and at least one 1,2-alkandiol having 5 to 12 carbons atoms (Abstract). Baptiste et al. disclose the at least one 1,2-alkandiol include 1,2-octanediol, 1,2-hexanediol, 1,2-nonandiol, 1,2-heptanediol, and mixtures thereof; wherein if the alkanediols are mixed in equal amounts would meet the limitation of instant claim 14 (p. 5, lines 5-10). Baptiste et al. disclose a sun protection spray comprising 1,2-alkaneiol at a concentration of 0.25%, which has a maximum water solubility of less than or equal to 10% by weight as defined in the instant specification; UV filters: homosalate, ethylhexyl methoxycinnamate and butyl methoxydibenzoylmethane at a concentration of about 12% , which meets the limitation of UV filter; perfume oil, the fatty acid ester diethylhexylnaphthalate ([0197], Table 29). Baptiste et al. disclose the said sun protection spray comprises dimethicone as an oil component at a concentration of 1% and would meet the limitation of a liquid formulation of instant claim 22.
The prior discloses compositions containing 1,2-heptanediol and mixtures of other 1.2-alkanediols and at least one solid UV filter. Together these would provide a composition as claimed instantly.
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art.
Since this modification of the prior art represents nothing more than “the predictable use of prior art elements according to their established functions” a prima facie case of obviousness exists.
The composition suggested by the reference comprises similar components therefore, it would be expected that the compositions would improve the solubility of a solid UV filter in the composition and/or improve the availability of a solid UV filter in the cosmetic.
Claim(s) 1-3, 5-8, 10, 12-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Faergemann et al. (US Patent Pub. 2009/0221716).
Faergemann et al. disclose a composition comprising at least 3 different diols; wherein the composition may be a pharmaceutical, cosmetic, antimicrobial or preservative composition (ABSTRACT). Faergemann et al. disclose the composition comprises 1,2-heptanediol, 2,3-heptandiol, 1,2-pentandiol, 1,2-hexanediol, 2,3-hexanediol, 1,2-octanediol, 2,3-octandiol, and mixtures thereof ([0018]); which meets the limitation of the diols of instant claim 6. It appears the selected diols would have a maximum water solubility of less than or equal to 10% by weight of instant claim 13. Faergemann et al. disclose the diols may be present in an amount of from about 0.5-50% v/v ([0021]); wherein when the diols are used at equal amounts the ratio of instant claims 14 would be meet. Faergemann et al. disclose the composition comprises zinc oxide which meets the limitation of instant 15 ([0028]). Faergemann et al. disclose the composition comprises antimicrobial agents and emulsifiers ([0028]). Faergemann et al. disclose the composition comprises silicon, aluminum hydroxide, olive oil and castor oil ([0028]). Faergemann et al. disclose the compositions may be in the form of creams or ointments ([0025]).
The prior discloses compositions containing 1,2-heptanediol and at least one solid UV filter. Together these would provide a composition as claimed instantly.
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art.
Since this modification of the prior art represents nothing more than “the predictable use of prior art elements according to their established functions” a prima facie case of obviousness exists.
The composition suggested by the reference comprises similar components therefore, it would be expected that the compositions would improve the solubility of a solid UV filter in the composition and/or improve the availability of a solid UV filter in the cosmetic.
Response to Arguments
Applicant argues unexpected and superior properties of the presently claimed composition. Applicant argues the data show that the use of mixture of 1,2-alkanediol and 2,3-alkanediol surprisingly results in an improved, in particular synergistically improves, solubility of the solid UV filter as compared to 1,2-alkanediol only or 2,3-alkanediol only.
It appears applicant may have shown better than expected results for a formulation comprising a mixture of 1,2-hexanediol and 2,3-hexanediol at a concentration of 69.3% and 29.7%, respectively, provided clear solutions. Instant independent claims 1 and 2 do not require an amount for each alkanediol or ratio between the two alkanediols, therefore the claims are not commensurate in scope with the showings of unexpected results.
The arguments of 35 U.S.C. 102 over Baptiste et al. are moot since the rejection is withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612
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