DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 46-54, 56-57 and 62 are pending and represent all claims currently under consideration.
Claims 55, 58-61, and 63-69 are withdrawn.
Response to Amendment
The amendment filed 06/23/2026 has been entered.
Claims 1-45 were canceled. Claims 46-69 were added. No new material was added.
Applicant’s amendments have overcome the previous objections to the specification.
The previous objections to claims 2, 10, and 12; rejections of claims 2, 4, 6, and 10 under 35 U.S.C. 112(b); rejections of claims 1-2 and 5-6 under 35 U.S.C. 102; and rejections of claims 1-12 under 35 U.S.C. 103 are moot, because the claims were canceled.
Claims 47-52 and 56-57 are newly objected to due to the amendment.
Claims 47-48 and 52 are newly rejected under 35 U.S.C. 112(b) due to the amendment.
Claims 46-54, 56-57, and 62 are newly rejected under 35 U.S.C. 103 due to the amendment.
Response to Arguments
Applicant's arguments, see Remarks (page 17, B), filed 06/23/2026, with respect to the parenthetical recitations of “(v/v)” and “(molecular weight 1000)” have been fully considered but they are not persuasive. Applicant argues that this notation provides greater precision or clarity in each case. This argument is not persuasive, because it is unclear whether the limitations in parentheses are part of the claimed invention or describing an example or preference. Regarding the percentage, the Examiner suggests amending the claim to read a “at a ratio of <1.0% v/v” to remove any ambiguity. Regarding the molecular weight, the Examiner suggests amending the claim to read “polyethylene glycol 1000”, which appears to be a common notation as evidenced by Sigma Aldrich, and which would clearly state which compound is being claimed.
Applicant’s arguments, see Remarks (pages 17-20), filed 06/23/2026, with respect to the rejection(s) of claim(s) 1-2 and 5-6 under 35 U.S.C. 102 have been fully considered and are persuasive due to the amendments. Therefore, the rejection has been withdrawn.
Applicant’s arguments, see Remarks (pages 20-25), filed 06/23/2026, with respect to the rejection(s) of claim(s) 1-2, 5-9, and 12 under 35 U.S.C. 103 have been fully considered and are persuasive due to the amendments. Therefore, the rejection has been withdrawn.
Applicant’s arguments, see Remarks (pages 25-26), filed 06/23/2026, with respect to the rejection(s) of claim(s) 3-4 and 10 under 35 U.S.C. 103 have been fully considered and are persuasive due to the amendments. Therefore, the rejection has been withdrawn.
Applicant’s arguments, see Remarks (pages 26-27), filed 06/23/2026, with respect to the rejection(s) of claim(s) 11 under 35 U.S.C. 103 have been fully considered and are persuasive due to the amendments. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Willien, Gupta, and Schumann, as evidenced by PubChem and TCI.
Applicant argues that Willien does not disclose a PMMA matrix having a UV absorber dispersed therein, and instead teaches a particle having a UV absorber on its surface (Remarks, page 18, “A”). This argument is not persuasive, because Willien teaches composite particles “A” comprising at least one particulate UV-screening (i.e., ultraviolet light-absorbing) agent and at least one inorganic or organic material (Willien, claim 1), wherein the particles “A” comprise a material which is poly(methyl methacrylate) (Willien, claim 8) and the at least one particulate UV-screening agent is a triazine (Willien, claim 10). Willien further teaches bis-ethylhexyloxyphenol methoxyphenyl triazine (i.e., bemotrizinol as defined by PubChem) as a preferred additional organic screening agent (Willien, pages 33-34). Willien teaches the composite particles “A” comprise a matrix and the particles of the particulate UV-screening agent are placed in the inclusions of the matrix (Willien, page 4, lines 15-19), suggesting the bemotrizinol is dispersed in the PMMA matrix as claimed.
Applicant argues that Willien does not disclose Bemotrizinol (Remarks, pages 18-20, “B”), and states that Tinosorb S (i.e., bemotrizinol) is disclosed in a laundry list of over 30 conventional dissolved organic sunscreen cofilters without any teaching into the claimed structure (Remarks, page 19). This argument is not persuasive, because at stated above, Willien teaches bis-ethylhexyloxyphenol methoxyphenyl triazine as a preferred additional organic screening agent (Willien, pages 33-34), which is bemotrizinol as evidenced by PubChem. Bis-ethylhexyloxyphenol methoxyphenyl triazine is disclosed in a finite list of 21 preferential screening agents (Willien, pages 33-34), and it would therefore have been prima facie obvious to one of ordinary skill in the art to utilize the compound as claimed.
Applicant further argues that Tinosorb S is never disclosed in any working example of Willien, never incorporated into a composite particle, and never identified as a candidate for incorporation into a polymer matrix (Remarks, pages 19-20). This argument is not persuasive, because the teachings of a reference are not limited to its working examples. Willien teaches bis-ethylhexyloxyphenol methoxyphenyl triazine as a preferred additional organic screening agent (Willien, pages 33-34), and teaches the composite particles “A” comprise a matrix, and the particles of the particulate UV-screening agent are placed in the inclusions of the matrix (Willien, page 4, lines 15-19), as stated above.
Applicant argues that Willien does not disclose the required particle size range (Remarks, page 20, “C”). This argument is not persuasive, because Willien teaches the composite particles “A” are constituted of particles “A1” having a mean size (i.e., diameter) of 0.1-0.4 micrometers (i.e., 100-400 nm; Willien, claim 11), which lies within the claimed range.
Applicant argues that Gupta provides no teaching directed to intradermal particle formulations, biocompatibility of its stabilizers for human tissue contact, or incorporation of photostabilizers into polymer matrix particles for dermal implantation, and lists only a generic field of use of cosmetics (Remarks, pages 25-26). This argument is not persuasive, because it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Willien, Gupta, and the instant invention are in the same field of UV-absorbing cosmetics as stated in the rejection below. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Willien to have included a specific stabilizer as taught by Gupta, because Willien teaches stabilizers (Willien, page 46, lines 41-46), and Gupta teaches specific stabilizers which can inhibit degradation from sunlight (Gupta, column 1, lines 16-24).
Priority
This application is a 371 of PCT/US21/47941, which claims benefit to PRO 63/071,782.
Claims 46-54, 56-57 and 62 are considered to have an effective filing date of 08/28/2020.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12 in the reply filed on 06/23/2026 is acknowledged (Remarks, page 9, A). The traversal is on the ground(s) that the provisional election of Group I was not confirmed in the Applicant’s previous response filed 12/01/2025 (Remarks, pages 9-10, B-I), claims 21-45 from the Applicant’s previous response filed 12/01/2025 were not directed to inventions previously restricted from Group I (Remarks, pages 10-11, B-II), the notice of noncompliant amendment improperly applies domestic restriction practice standards to a national phase application (Remarks, pages 11-12, B-III), and the new claims 46-69 are directed to the elected Group I invention (Remarks, pages 12-14, B-IV).
Applicant’s arguments I-II from above are noted but are moot, because they are each directed toward canceled claims.
Applicant’s argument III, which states that the notice of noncompliant amendment improperly applies domestic restriction practice standards to a national phase application (Remarks, pages 11-12) is acknowledged. For notice of record, the phrase “independent and distinct” was inadvertently stated in the Notice mailed 02/23/2026. It is very clear that the lack of unity was based on 35 U.S.C. 371 per 37 CFR 1.475.
Regarding Applicant’s argument IV, the restriction requirement has been updated below to address the amendment.
The requirement is still deemed proper and is therefore made FINAL.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 46-54, 56-57 and 62, drawn to an ultraviolet light-absorbing particle;
Group II, claims 55 and 58-61, drawn to an ink or pigment;
Group III, claims 63-66, drawn to a kit; and
Group IV, claims 67-69, drawn to a device for application.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The groups lack unity of invention because even though the inventions of these groups require the technical feature of an ultraviolet light-absorbing particle comprising a PMMA matrix having bemotrizinol dispersed therein, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Willien (WO 2014009097 A1; IDS reference, 02/22/2023). As stated in the rejection below, Willien teaches composite particles “A” comprising at least one particulate UV-screening (i.e., ultraviolet light-absorbing) agent and at least one inorganic or organic material (Willien, claim 1), wherein the particles “A” comprise a material which is poly(methyl methacrylate) (Willien, claim 8), the at least one particulate UV-screening agent is a triazine (Willien, claim 10), and the composite particles “A” are constituted of particles “A1” having a mean size (i.e., diameter) of 0.1-0.4 micrometers (i.e., 100-400 nm; Willien, claim 11), which lies within the claimed range. Willien further teaches bis-ethylhexyloxyphenol methoxyphenyl triazine (i.e., bemotrizinol as defined by PubChem) as a preferred additional organic screening agent (Willien, pages 33-34). Willien teaches the composite particles “A” comprise a matrix and the particles of the particulate UV-screening agent are placed in the inclusions of the matrix (Willien, page 4, lines 15-19), suggesting the bemotrizinol is dispersed in the PMMA matrix as claimed.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Applicant confirmed the election with traverse of Group I, claims 1-12 in the reply filed on 06/23/2026 (Remarks, page 9, A), which pertains to new claims 46-54, 56-57 and 62.
Information Disclosure Statement
The information disclosure statements filed 07/30/2025 and 07/28/2026 have been considered.
New Claim Objections
Claims 47-52 and 56-57 are objected to because of the following informalities. Appropriate correction is required.
Regarding claims 47 and 49-52, a comma should follow the recitation of “particle of claim 46”.
Regarding claim 48, a comma should follow the recitation of “particle of claim 47”.
Regarding claim 52, “at ratio” should read “at a ratio”.
Regarding claim 56, a comma should follow the recitation of “particle of claim 50”.
Regarding claim 57, a comma should follow the recitation of “particle of claim 56”.
New Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 47-48 and 52 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 47, the claim recites the limitation "the UV-absorber bemotrizinol". There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, this limitation has been interpreted to read “photodegradation of bemotrizinol”. Claim 48 is dependent on the rejected claim 47 and does not cure its deficiencies, and therefore is deficient for the same reason.
Regarding claim 52, the parenthetical recitations of “(v/v)” and “(molecular weight 1000)” render the claim indefinite because it is unclear whether the limitation in parentheses are part of the claimed invention or describing an example or preference. See MPEP § 2173.05(d).
Regarding claim 52, the recitation of “added at a ratio of 10%-30%” is unclear, because this “%” is not defined by the claim or in the specification. It is unclear if the “%” is intended to refer to a wt%, vol%, or wt/vol%.
New 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.
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.
Claims 46, 49-51, 54, and 56-57 are rejected under 35 U.S.C. 103 as being unpatentable over Willien (WO 2014009097 A1; IDS reference, 02/22/2023), as evidenced by PubChem (Bemotrizinol). Willien was cited previously by the Examiner.
Regarding claim 46, Willien teaches composite particles “A” comprising at least one particulate UV-screening (i.e., ultraviolet light-absorbing) agent and at least one inorganic or organic material (Willien, claim 1), wherein the particles “A” comprise a material which is poly(methyl methacrylate) (Willien, claim 8), the at least one particulate UV-screening agent is a triazine (Willien, claim 10), and the composite particles “A” are constituted of particles “A1” having a mean size (i.e., diameter) of 0.1-0.4 micrometers (i.e., 100-400 nm; Willien, claim 11), which lies within the claimed range. Willien further teaches bis-ethylhexyloxyphenol methoxyphenyl triazine (i.e., bemotrizinol as defined by PubChem) as a preferred additional organic screening agent (Willien, pages 33-34). Willien teaches the composite particles “A” comprise a matrix and the particles of the particulate UV-screening agent are placed in the inclusions of the matrix (Willien, page 4, lines 15-19), suggesting the bemotrizinol is dispersed in the PMMA matrix as claimed. “Suitable for intradermal use” is a recitation of intended use. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. Willien teaches the structure of the instant claim and teaches the composition can be used in a great number of treatments and as an anti-sun product (Willien, page 48, lines 23-28). Therefore, the composition of Willien is expected to be suitable for intradermal use absent evidence to the contrary.
Willien is considered to be analogous to the claimed invention, because both Willien and the instant invention are in the same field of anti-sun products. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Willien under the meaning of 35 U.S.C. 103.
Regarding claim 49, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches the composition comprises an active agent such as vitamins (Willien, page 47, lines 30-36).
Regarding claim 50, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches the composition comprises an aqueous phase (i.e., water; Willien, claim 1).
Regarding claim 51, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches the composition further comprises additives such as thickeners and surfactants (Willien, page 46, lines 41-47).
Regarding claim 54, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches the particles can be in the form of an oily dispersion (Willien, page 39, lines 16-17), and further teaches the composition may comprise a content of pigments (i.e., a pigment formulation; Willien, page 30, lines 37-38).
Regarding claim 56, Willien teaches all the elements of the claimed invention as applied to claim 50. As above, Willien teaches the composition comprises an aqueous phase (i.e., water; Willien, claim 1). Willien further teaches the aqueous phase contains water and optionally another water-soluble organic solvent (Willien, page 39, lines 39-46), which can be preferably ethanol (i.e., an antiseptic agent as defined by the instant claim 57; Willien, page 40, lines 8-9).
Regarding claim 57, Willien teaches all the elements of the claimed invention as applied to claim 56. As above, Willien teaches the composition comprises an aqueous phase (i.e., water; Willien, claim 1), and teaches the aqueous phase contains water and optionally another water-soluble organic solvent (Willien, page 39, lines 39-46), which can be preferably ethanol (Willien, page 40, lines 8-9).
Claims 47-48 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Willien (WO 2014009097 A1; IDS reference, 02/22/2023) as applied to claims 46, 49-51, 54, and 56-57, further in view of Gupta (US 6348591 B1). The references were cited previously by the Examiner.
Regarding claim 47, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches the composition further comprises additives such as stabilizers (Willien, page 46, lines 41-46) but does not specifically teach a photo-stabilizer. Gupta teaches ultraviolet light absorbers and stabilizers for inhibiting degradation from sunlight (i.e., photodegradation; Gupta, column 1, lines 23-24) and teaches these additives can be used in a wide variety of materials including cosmetics (Gupta, column 7, lines 43-45).
Willien and Gupta are considered to be analogous to the claimed invention, because Willien, Gupta, and the instant invention are in the same field of UV-absorbing cosmetics. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Willien to have included a specific stabilizer as taught by Gupta, because Willien teaches stabilizers (Willien, page 46, lines 41-46), and Gupta teaches sunlight causes degradation of various materials and stabilizers can inhibit degradation from sunlight (Gupta, column 1, lines 16-24).
Regarding claim 48, Willien teaches all the elements of the claimed invention as applied to claim 47. As above, Willien teaches the composition comprises additives such as stabilizers (Willien, page 46, lines 41-46) but does not specifically teach a photo-stabilizer as claimed. Gupta teaches a preferable stabilizer is a 2,2,6,6-tetraalkylpiperidine derivative of the following formula wherein J is an alkyl (i.e., an alkylated analog of 2,2,6,6,-tetramethylpiperidine):
PNG
media_image1.png
125
140
media_image1.png
Greyscale
(Gupta, column 47, lines 45-58). As above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Willien to have included a preferred stabilizer as taught by Gupta, because Gupta teaches sunlight causes degradation of various materials and such stabilizers can inhibit degradation from sunlight (Gupta, column 1, lines 16-24).
Regarding claim 52, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches the aqueous phase comprises 1-30% of a water-soluble organic solvent which can be glycerol (Willien, page 40, lines 9-17), which encompasses the claimed range of 10-30% of glycerol. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I). Willien further teaches the use of hydrophilic thickeners (i.e., thickeners that would be in the aqueous layer with the glycerol; Willien, page 47, line 8). Willien teaches the composition further comprises additives such as stabilizers and surfactants (Willien, page 46, lines 41-47) and teaches surfactants including polyols (Willien, page 46, line 12) in a concentration of 1-50% by weight (Willien, page 28, line 20), but does not specifically teach a polyvinyl alcohol surfactant to stabilize the particle and does not teach a (v/v) amount. Gupta teaches polymeric materials for stabilizing against degradation from UV radiation (Gupta, column 27, lines 54-57) to include polyvinyl alcohol (Gupta, column 28, line 7), but does not teach a (v/v) amount. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Willien to have included a specific stabilizer as taught by Gupta, because Gupta teaches sunlight causes degradation of various materials (Gupta, column 1, lines 16-24) and stabilizers such as polyvinyl alcohol (Gupta, column 28, line 7) can inhibit degradation from sunlight (Gupta, column 1, lines 16-24).
Claims 53 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Willien (WO 2014009097 A1; IDS reference, 02/22/2023) as applied to claims 46, 49-51, 54, and 56-57, further in view of Schumann (Journal of the American Academy of Dermatology, 2011; IDS reference, 09/13/2024), and as evidenced by TCI (Xanthene Dyes). Willien was cited previously by the Examiner.
Regarding claim 53, Willien teaches all the elements of the claimed invention as applied to claim 46. Willien teaches compositions having organic pigments such as xanthene dyes (i.e., a fluorescent dye as evidenced by TCI; Willien, page 30, lines 16-20), and teaches application in cosmetic treatments of the skin (Willien, page 48, lines 22-24). Schumann teaches UV light tattoos (i.e., a tattoo formulation) composed of PMMA microspheres (i.e., particles) and a fluorescent dye which is excited with UV light to reveal fluorescence (i.e., a fluorescent dye is a tattooable ultra-violet sensor; Schumann, page e124). Willien further teaches the particles and the pigment are hybridized (i.e., the particle is incorporated into a formulation including a sensor; Willien, page 37, lines 43-46). “tattoo formulation” is considered to be a recitation of intended use. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. In the instant case, Willien teaches the structure of the instant claim including a fluorescent dye (i.e. a ultra-violet sensor). Schumann further teaches that particles comprising PMMA and fluorescent dye are known to be utilized in tattoo formulations, suggesting it would also be obvious to utilize the composition of Willien in a tattoo formulation as claimed.
Willien and Schumann are considered to be analogous to the claimed invention, because Willien, Schumann, and the instant invention are in the same field of UV-sensitive PMMA particle compositions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the composition of Willien to comprise a tattooable ultraviolet sensor, because Willien teaches a combination of a PMMA particle and a fluorescent dye, which is known to be used in UV light tattoos as taught by Schumann.
Regarding claim 62, Willien teaches all the elements of the claimed invention as applied to claim 46. As above, Willien teaches compositions having organic pigments such as xanthene dyes (i.e., a fluorescent dye as evidenced by TCI; Willien, page 30, lines 16-20), and teaches application in cosmetic treatments of the skin (Willien, page 48, lines 22-24). Schumann teaches UV light tattoos composed of PMMA microspheres (i.e., particles) and a fluorescent dye which is excited with UV light to reveal fluorescence (i.e., a fluorescent dye is a tattooable ultra-violet sensor; Schumann, page e124). Willien further teaches the particles and the pigment are hybridized (i.e., combined; Willien, page 37, lines 43-46). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the composition of Willien to comprise a tattooable ultraviolet sensor, because Willien teaches a combination of a PMMA particle and a fluorescent dye, which is known to be used in UV light tattoos as taught by Schumann.
Conclusion
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 CHASITY P JANOSKO whose telephone number is (703)756-5307. The examiner can normally be reached 7:30-3:30 ET.
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, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
Prosecution Insights