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 December 4, 2025 is acknowledged.
Claims 1-9 and 15-25 are pending.
Claims 10-14 are cancelled.
Claims 1, 7, 9, 15 and 21 are currently amended.
Claims 22-25 are new.
Claims 1-9 and 15-25 as filed on December 4, 2025 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn, and all previous claim rejections under 35 USC 112(b) are withdrawn.
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Objections
Claims 20 is objected to because of the following informalities: claim 20 should end with a period. See MPEP 608.01(m). Each claim begins with a capital letter and ends with a period. Appropriate correction is required.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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 1-7, 9 and 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Matsubara et al. (WO 2016/152872 A1, published September 29, 2016, as evidenced by the Google translation, of record) in view of Aratani et al. (US 2011/0129672, published June 2, 2011, of record) and Johncock et al. (US 2019/0374454, published December 12, 2019).
Matsubara teaches a cosmetic additive comprising hollow silica particles having an average particle size of 0.1 to 30 microns and an outer shell thickness of 5 to 500 nm (title; abstract; claims), as required by instant claims 2, 16. 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). See MPEP 2144.05. These particles preferably (but not necessarily) comprise organic groups, the carbon content of which is preferably 3 wt% or higher (abstract; claims 1-3). The carbon content brings about hydrophobicity, however, excessive carbon decreases the strength of the shell leading to breakage (page 3, 4th – 6th full paragraphs). The particles may be fired as necessary after washing and drying, removing the organic components (less than 3 wt%, 0 wt%) (page 6, 1st full paragraph). Matsubara further teaches hollow silica particles having no organic group (0 wt%) (page 6, lower half). Regarding the less than 2 wt% organic substances as required by instant claims 1, 15, preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123.
The shape of the particles is not limited and may be spherical or spindle (aspherical, having a long axis and a short axis); it is preferable that the particles is spherical including a true sphere and ellipsoid (aspherical, having a long axis and a short axis) (page 2, lower half).
Matsubara further teaches cosmetics inclusive of sunscreen agents and cosmetic components inclusive of UV absorbers (page 6, lower half through page 7). Cosmetic components also include inter alia oils (paragraph bridging pages 6 and 7), as required by instant claims 9, 21. Matsubara, as a whole, is drawn to cosmetics for making wrinkles inconspicuous (e.g., abstract).
Matsubara does not specifically teach the short axis is greater than 400 nm and greater than about 5 wt% of at least one sunscreen active as required by claims 1, 7, 15.
Matsubara does not specifically teach the long axis is at least 1.25 times greater than the short axis as required by claims 3, 15.
Matsubara does not specifically teach the long axis is greater than 500 nm as required by claim 4.
Matsubara does not specifically teach the void long axis is greater than 350 nm as required by claims 5, 17.
Matsubara does not specifically teach the void short axis is less than 1100 nm as required by claims 6, 18, 19.
Matsubara does not specifically teach the long axis is at least 1.5 times greater than the short axis as required by claim 20.
Matsubara does not teach two or more sunscreen actives as required by claims 22, 25.
Matsubara does not teach three or more sunscreen actives as required by claim 23.
Matsubara does not teach a mixture of avobenzone, octocrylene, homosalate, zinc oxide, titanium dioxide and octisalate as required by claim 24.
These deficiencies are made up for in the teachings of Aratani and Johncock.
Aratani teaches non-spherical hollow fine particles having a spindle shape as a whole with a major axis and a minor axis, the average length of the major axis being 0.1 to 30 microns and the ratio of the average length of the minor axis to the average length of the major axis being 0.3 to 0.8 (implies the ratio major/minor is 1/0.3 to 1/0.8 or about 3.33 to 1.25) (title; abstract; claims), as required by instant claims 3-6, 17-20. Aratani further teaches cosmetics (e.g., title; paragraph [0037]).
Johncock teaches compositions for protection against UV radiation comprising at least 3.5 wt% diethylhexyl 2,6-naphthalte and at least one UV filter selected from the group consisting of octisalate, homosalate, avobenzone and octocrylene; the compositions optionally further comprise one or more of zinc oxide or/and titanium dioxide; diethylhexyl 2,6-naphthalte is a well-known photostabilizer for avobenzone (title; abstract; claims, in particular 1, 3; paragraphs [0012], [0076], [0077]), as required by instant claims 22-25. UV rays can cause damage to the skin; very frequent and unprotected irradiation of the skin by sunlight leads to a loss of skin elasticity and wrinkles (paragraphs [0003], [0089]). The total amount of oil soluble UV filters is in the range of 0.1 to 55 wt% and the total amount of micro fine pigments inclusive of zinc oxide and titania is 0.1 to 35 wt% (paragraphs [0078], [0086]).
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 hollow silica particles of Matsubara to comprise a major axis and a minor axis, the average length of the major axis being 0.1 to 30 microns and the ratio of the average length of the minor axis to the average length of the major axis being 0.3 to 0.8 (implies the ratio major/minor is 1/0.3 to 1/0.8 or about 3.33 to 1.25) as taught by Aratani in order to take the shape of a spindle suitable for cosmetics. There would be a reasonable expectation of success because Matsubara expressly teaches the hollow silica particles may take the shape of a spindle. The combined teachings of the prior art therefore render obvious hollow silica spindle particles having a minor axis the average length being 0.3 to 0.8 times 0.1 to 30 microns, e.g., from 0.03 to 24 microns (30 to 24,000 nm).
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 cosmetics of Matsubara in view of Aratani for making wrinkles inconspicuous to comprise UV absorbers in amounts from 0.1 to 55 wt% when the UV absorbers are oil soluble or/and in amounts from 0.1 to 35 wt% when the UV absorbers are micro fine pigments as taught by Johncock in order to provide protection against UV damage and wrinkles. There would be a reasonable expectation of success because the cosmetics of Matsubara may comprise UV absorbers.
Regarding the SPF boost ratio (as exemplified in paragraphs [0027], [0068] of the instant specification) as required by claim 7, because the combined teachings of the prior art render obvious compositions as instantly claimed, the compositions of the prior art are also characterized by a boost ratio as instantly claimed because a chemical composition and its properties are inseparable. See MPEP 2112.
Regarding claims 5, 17 which recite the void long axis is greater than 350 nm, the combined teachings of Matsubara and Aratani render obvious hollow silica spindle particles having a major axis of 0.1 to 30 microns (100 to 30,000 nm) and an outer shell thickness of 5 to 500 nm. The void axis = major axis – 2 * (shell thickness).
Regarding claims 6, 18, 19 which recite the void short axis is less than 1100 nm, the combined teachings of Matsubara and Aratani render obvious hollow silica spindle particles having a minor axis of 0.03 to 24 microns (30 to 24,000 nm) and an outer shell thickness of 5 to 500 nm. The void axis = minor axis – 2 * (shell thickness).
Regarding claims 22-25, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute UV absorbers as taught by Johncock inclusive of octisalate, homosalate, avobenzone and octocrylene and optionally one or more of zinc oxide or/and titanium dioxide for the UV absorbers in the compositions of Matsubara in view of Aratani and Johncock because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Matsubara et al. (WO 2016/152872 A1, published September 29, 2016, as evidenced by the Google translation, of record) in view of Aratani et al. (US 2011/0129672, published June 2, 2011, of record) and Johncock et al. (US 2019/0374454, published December 12, 2019) as applied to claims 1-7, 9 and 15-25 above, and further in view of Ghosh Dastidar et al. (US 2016/008256, published January 14, 2016, of record).
The teachings of Matsubara, Aratani and Johncock have been described supra.
They do not teach hollow polystyrene spheres as required by claim 8.
This deficiency is made up for in the teachings of Ghosh Dastidar.
Ghosh Dastidar teaches photo-protective compositions which provide high sun protection factor (SPF) comprising specific non-ionic surfactants that interact synergistically with hollow microspheres (title; abstract; claims; paragraphs [0043], [0044]). The hollow microspheres may comprise polystyrene (claims 4-6), as required by instant claim 8. The compositions have an SPF of at least 20 (claim 15).
Regarding claim 8, 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 agents of Matsubara in view of Aratani and Johncock comprising UV absorbers in amounts from 0.1 to 55 wt% when the UV absorbers are oil soluble or/and in amounts from 0.1 to 35 wt% when the UV absorbers are micro fine pigments and hollow silica spindle particles to further comprise specific non-ionic surfactants and hollow polystyrene microspheres as taught by Ghosh Dastidar in order to provide high sun protection.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kalla et al. (US 2007/0036736, published February 15, 2007) in view of Jansen et al. (US 2016/0030313, published February 4, 2016, of record).
Kalla teaches hollow silica particles and cosmetic compositions thereof (title; abstract; claims; Figure 1). The hollow silica particles have a substantially uniform particle size averaging from about 200 to about 700 nm, such as 500 nm (claims 22-24; paragraph [0018]). The hollow silica particles are substantially spherical (encompasses non- or a-spherical, having a long and a short axis) (claim 25). The hollow silica particles comprise a shell having a substantially constant thickness from about 10 to 30 nm (claim 26; paragraph [0025]). The hollow silica particles are prepared using a polymer template core that is eliminated from the particle by heating from about 525 to 900 ºC (abstract; claim 1; paragraphs [0027], [0028]). The cosmetic compositions may further comprise ingredients inclusive of sunscreens (paragraph [0036]).
Kalla does not specifically teach the short axis is greater than 400 nm and greater than about 5 wt% of at least one sunscreen active as required by claim 7.
These deficiencies are made up for in the teachings of Jansen.
Jansen teaches cosmetic compositions comprising substantially spherical particles, meaning the particles have an aspect ratio (i.e., ratio of major axis to minor axis) of from 1:1 to 2:1 (title; abstract; claims; paragraph [0046]). The compositions further comprise a liquid UV agent; UV actives absorb skin damaging UV radiation (abstract; paragraphs [0003], [0005], [0037]-[0042]). The UV agents are added to provide a desired SPF (paragraph [0039]). Example 2 comprises 4.5 wt% octisalate, 4.0 wt% homosalate, 2.6 wt% octocrylene and 3 wt% avobenzone (Table 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the substantially spherical hollow silica particles of Kalla have an aspect ratio from about 1:1 to 2:1 as taught by Jansen because this tolerance is taught in the cosmetic arts for spherical or substantially spherical. There would be a reasonable expectation of success because Kalla does not define the tolerance required to fall within the scope of substantially spherical. The combined teachings of Kalla and Jansen therefore render obvious hollow silica particles having for example a minor axis ranging from about 200 to about 700 nm, such as 500 nm and a major axis ranging from about 1 to 2 times the minor axis.
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 compositions of Kalla to further comprise liquid UV agents in an amount sufficient to provide a desired SPF inclusive of a combination of UV agents comprising 4.5 wt% octisalate, 4.0 wt% homosalate, 2.6 wt% octocrylene and 3 wt% avobenzone as taught by Jansen in order to provide protection against skin damaging UV radiation. There would be a reasonable expectation of success because Kalla embraces the presence of sunscreens within the compositions.
Regarding the SPF boost ratio (as exemplified in paragraphs [0027], [0068] of the instant specification) as required by claim 7, because the combined teachings of the prior art render obvious compositions as instantly claimed, the compositions of the prior art are also characterized by a boost ratio as instantly claimed because a chemical composition and its properties are inseparable. See MPEP 2112.
Claims 1, 3-6, 9, 15, 20-23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Kalla et al. (US 2007/0036736, published February 15, 2007) in view of Jansen et al. (US 2016/0030313, published February 4, 2016, of record) and Eng et al. (CN 102686207 A, published September 19, 2012, as evidenced by the Google translation).
Kalla teaches hollow silica particles and cosmetic compositions thereof (title; abstract; claims; Figure 1). The hollow silica particles have a substantially uniform particle size averaging from about 200 to about 700 nm, such as 500 nm (claims 22-24; paragraph [0018]). The hollow silica particles are substantially spherical (encompasses non- or a-spherical, having a long and a short axis) (claim 25), as required by instant claims 6, 18, 19. The hollow silica particles comprise a shell having a substantially constant thickness from about 10 to 30 nm (claim 26; paragraph [0025]). The hollow silica particles are prepared using a polymer template core that is eliminated from the particle by heating from about 525 to 900 ºC (0 wt% residual organics) (abstract; claim 1; paragraphs [0027], [0028]). The cosmetic compositions may further comprise ingredients inclusive of sunscreens (paragraph [0036]). The cosmetic compositions may further comprise colorants inclusive of pigments (claims 33, 34), as required by instant claims 9, 21.
Kalla does not specifically teach the short axis is greater than 400 nm, less than 2 wt% organic substances and greater than about 5 wt% of at least one sunscreen active as required by claims 1, 15.
Kalla does not specifically teach the long axis is at least 1.25 times greater than the short axis as required by claims 3, 15.
Kalla does not specifically teach the long axis is greater than 500 nm as required by claim 4.
Kalla does not specifically teach the void long axis is greater than 350 nm as required by claim 5.
Kalla does not specifically teach the long axis is at least 1.5 times greater than the short axis as required by claim 20.
Kalla does not teach two or more sunscreen actives as required by claims 22, 25.
Kalla does not teach three or more sunscreen actives as required by claim 23.
These deficiencies are made up for in the teachings of Jansen and Eng.
Jansen teaches cosmetic compositions comprising substantially spherical particles, meaning the particles have an aspect ratio (i.e., ratio of major axis to minor axis) of from 1:1 to 2:1 (title; abstract; claims; paragraph [0046]), as required by instant claims 3, 15, 20. The compositions further comprise a liquid UV agent; UV actives absorb skin damaging UV radiation (abstract; paragraphs [0003], [0005], [0037]-[0042]). The UV agents are added to provide a desired SPF (paragraph [0039]). Example 2 comprises 4.5 wt% octisalate, 4.0 wt% homosalate, 2.6 wt% octocrylene and 3 wt% avobenzone (Table 2), as required by instant claims 22, 23, 25.
Eng teaches powdery compositions comprising hydrophobic or hydrophobized silica particles; these particles may contain 0.1 to 15 wt% carbon due to reaction with a surface modifier (title; abstract; claims; page 4, last full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the substantially spherical hollow silica particles of Kalla have an aspect ratio from about 1:1 to 2:1 as taught by Jansen because this tolerance is taught in the cosmetic arts for spherical or substantially spherical. There would be a reasonable expectation of success because Kalla does not define the tolerance required to fall within the scope of substantially spherical. The combined teachings of Kalla and Jansen therefore render obvious hollow silica particles having for example a minor axis ranging from about 200 to about 700 nm, such as 500 nm and a major axis ranging from about 1 to 2 times the minor axis, e.g., a major axis ranging from about 200 to 1400 nm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the substantially spherical hollow silica particles of Kalla or/and of Kalla in view of Jansen possess a carbon content of less than 0.1 wt% as taught by Eng absent specific hydrophobization. There would be a reasonable expectation of success because absent specific hydrophobization it is understood from Kalla that the hollow silica particles thereof are prepared by a process which eliminates polymers (e.g., carbon) via heat to condense silica per se.
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 compositions of Kalla to further comprise liquid UV agents in an amount sufficient to provide a desired SPF inclusive of a combination of UV agents comprising 4.5 wt% octisalate, 4.0 wt% homosalate, 2.6 wt% octocrylene and 3 wt% avobenzone as taught by Jansen in order to provide protection against skin damaging UV radiation. There would be a reasonable expectation of success because Kalla embraces the presence of sunscreens within the compositions.
Regarding claims 5, 17 which recite the void long axis is greater than 350 nm, the combined teachings of Kalla and Jansen render obvious hollow silica particles having a major axis ranging from about 1 to 2 times the minor axis, e.g., a major axis ranging from about 200 to 1400 nm, and thickness from about 10 to 30 nm. The void axis = major axis – 2 * (shell thickness).
Claims 2 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kalla et al. (US 2007/0036736, published February 15, 2007) in view of Jansen et al. (US 2016/0030313, published February 4, 2016, of record) and Eng et al. (CN 102686207 A, published September 19, 2012, as evidenced by the Google translation) as applied to claims 1, 3-6, 9, 15, 20-23 and 25 above, and further in view of Matsubara et al. (WO 2016/152872 A1, published September 29, 2016, as evidenced by the Google translation, of record).
The teachings of Kalla, Jansen and Eng have been described supra.
Kalla further teaches the desired shell thickness is a balance between being thin enough to allow for removal of the core while being thick enough to withstand mechanical manipulation (paragraph [0025]).
They do not teach a shell thickness greater than about 50 nm as required by claims 2, 16.
This deficiency is made up for in the teachings of Matsubara.
The teachings of Matsubara have been described supra. Matsubara teaches a cosmetic additive comprising hollow silica particles having an average particle size of 0.1 to 30 microns and an outer shell thickness of 5 to 500 nm (title; abstract; claims), as required by instant claims 2, 16. A thickness of 5 nm provides sufficient strength and a thickness of less than 500 nm reduces the density and provides good feel upon cosmetic application (page 2, last full paragraph; page 3, first full paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the hollow silica particles of Kalla to have a thickness of 5 to 500 nm as taught by Matsubara because this range is suitable for cosmetic applications. There would be a reasonable expectation of success because the range of Matsubara is consistent with the range of Kalla and because Matsubara and Kalla independently recognize the need to balance shell strength with application properties.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kalla et al. (US 2007/0036736, published February 15, 2007) in view of Jansen et al. (US 2016/0030313, published February 4, 2016, of record) and Eng et al. (CN 102686207 A, published September 19, 2012, as evidenced by the Google translation) as applied to claims 1, 3-6, 9, 15, 20-23 and 25 above, and further in view of Ghosh Dastidar et al. (US 2016/008256, published January 14, 2016, of record).
The teachings of Kalla, Jansen and Eng have been described supra.
They do not teach hollow polystyrene spheres as required by claim 8,
This deficiency is made up for in the teachings of Ghosh Dastidar.
The teachings of Ghosh Dastidar have been described supra. Ghosh Dastidar teaches hollow microspheres comprising polystyrene (claims 4-6), as required by instant claim 8.
Regarding claim 8, 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 cosmetic compositions of Kalla in view of Jansen and Eng comprising liquid UV agents in an amount sufficient to provide a desired SPF inclusive of a combination of UV agents comprising 4.5 wt% octisalate, 4.0 wt% homosalate, 2.6 wt% octocrylene and 3 wt% avobenzone and hollow silica particles to further comprise specific non-ionic surfactants and hollow polystyrene microspheres as taught by Ghosh Dastidar in order to provide high sun protection.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kalla et al. (US 2007/0036736, published February 15, 2007) in view of Jansen et al. (US 2016/0030313, published February 4, 2016, of record) and Eng et al. (CN 102686207 A, published September 19, 2012, as evidenced by the Google translation) as applied to claims 1, 3-6, 9, 15, 20-23 and 25 above, and further in view of Johncock et al. (US 2019/0374454, published December 12, 2019).
The teachings of Kalla, Jansen and Eng have been described supra.
They do not teach a zinc oxide and titanium dioxide as required by claim 24.
This deficiency is made up for in the teachings of Johncock.
The teachings of Johncock have been described supra. Johncock teaches compositions for protection against UV radiation comprising at least 3.5 wt% diethylhexyl 2,6-naphthalte and at least one UV filter selected from the group consisting of octisalate, homosalate, avobenzone and octocrylene; the compositions optionally further comprise one or more of zinc oxide or/and titanium dioxide (title; abstract; claims, in particular 1, 3; paragraphs [0012], [0076], [0077]), as required by instant claim 24. In order to achieve the desired protection from UV radiation, a mixture of UV filters with varying concentrations may be employed (paragraph [0005]).
Regarding claim 24, 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 cosmetic compositions of Kalla in view of Jansen and Eng comprising liquid UV agents in an amount sufficient to provide a desired SPF inclusive of a combination of UV agents comprising 4.5 wt% octisalate, 4.0 wt% homosalate, 2.6 wt% octocrylene and 3 wt% avobenzone and hollow silica particles to further comprise one or more of zinc oxide or/and titanium dioxide as taught by Johncock because it is known to employ a mixture of UV filters with varying concentrations in order to achieve the desired protection from UV radiation.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s question as to why one would combine Matsubara and Aratani at page 5 is acknowledged but not found persuasive because Aratani merely evidences one skilled in the art would understand the term “spindle” as taught by Matsubara.
Applicant’s statement that neither Matsubara nor Aratani disclose sunscreens at page 6 is not found persuasive because Matsubara expressly embraces sunscreen agents (sunscreens) as the skin cosmetic as set forth in the rejection.
Applicant’s citation to the carbon content of the particles of Matsubara at page 6 is not found persuasive because the actual teaching of Matsubara is a preference for organic groups. Preferences do not render non-obvious the non-preferred embodiment. Nonetheless, a supplemental ground of rejection is newly applied herewith to render obvious limitations newly claimed.
Applicant’s citation to the SPF improvement of L’Alloret at pages 6-7 as not meeting the newly claimed ratio is moot in view of the modified grounds of rejection as necessitated by Applicant’s amendments. However, the disclosure of L’Alloret suggests the instant Applicant fails to comply with 35 USC 112 because the SPF “boost” observed by L’Alloret due to the inclusion of 2 wt% silica is substantially less than the “boost” newly claimed as disclosed for 3 wt% silica (e.g., paragraphs [0027], [0068]). Applicant’s citation to the data within the instant specification is noted, however, a single comparative example does not suggest written description support in fact exists for the genus of compositions claimed. Notably, Comparative Batch A comprising 17 wt% of sunscreen agents (e.g., Table 2, reproduced in part):
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only has an SPF of 5 (e.g., Table 4). Applicant’s characterization of the SPF of Comparative Batch A is as “non-trivial” at page 7 is not fully understood. The exemplified “boosts” are not applicable to compositions comprising greater than about 5 wt% of any sunscreen active in any composition as newly claimed. Nonetheless, in view of the fact that silica is an art-recognized SPF booster, the instant claims remain rejected under 35 USC 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu et al. (WO 2021/102873) teaches sunscreen compositions comprising at least one UV-filter and at least one SPF booster in the form of hollow silica (title; abstract; claims).
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 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
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600
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