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 .
Priority
This Application filed on 03/07/2023 is 371 of PCT/IB2021/058174 filed on 09/08/202 foreign priority to ITALY 102020000021223 filed on 09/08/2020.
DETAILED ACTION
The Office Action is in response to the Applicant's reply filed October 3, 2025 to the restriction requirement made on August 28, 2025.
Applicant's election without traverse of the species (a) hydrogenated polydecene; (b) trihydroxystearin; (c) bis-octyldodecyl dimer dilinoleate/propanediol copolymer; (d) xylitol; and (e) trimethylglycine (betaine) in the reply filed on October 3, 2025 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement(s) (IDS) filed on 10/3/25 is in compliance with the provisions of S7 CFR 1.97. Accordingly, the IDS is being considered by the Examiner.
The rejections are as below:
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.
The term “sufficiently high boiling point” in claim 1 is a relative term which renders the claim indefinite. The term “sufficiently high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claims 5-8, the phrase "such as" “such” and “as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The term “higher molecular weight” in claim 5 is a relative term which renders the claim indefinite. The term “higher” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 6 and 8 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. The claims have some limitations with parenthesis. It unclear if Applicant intends those to be specific limitations of the claim. Correction is required.
Claim 9 is 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. It appears that the components of claim 9, refer to component (d) rather than (c). Correction is required.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Patel et al. (WO2020086755A1 - IDS) in view of Wolf et al. (US 6132737 A).
Patel et al. teaches a sunscreen formulation comprising bis-octyldodecyl dimer dilinoleate/propanediol copolymer and octyldodecyl/glyceryl hydroxy stearate dilinoleate dimethicone copolymer. Suitable humectants may include moisturizing humectants (such as glycerin, hydroxyethyl urea, betaine (trimethylglycine), sodium PC A, sodium-L-Lactate and propanediol), polymeric thickeners, natural gums, olefin resins, waxes, and any combination thereof. Examples of polyols may include glycerol, pentaerythritol, sorbitol, and trimethylolpropane.
While the reference teaches olefin resins and waxes (a); and a complex containing an ester of glycerin and hydroxystearic acid (b); and sorbitol (d), the reference does not specify the hydrogenated polyisobutene (a), trihydroxystearin (b), and xylitol (d) of the species election.
Wolf et al. teaches a sunscreen formulation wherein thickening agents, including thickener or gelling agents, include substances which that can increase or control the viscosity of a composition. Thickeners include those that can increase the viscosity of a composition without substantially modifying the efficacy of the active ingredient within the composition. Thickeners can also increase the stability of the compositions. In certain aspects, thickeners include hydrogenated polyisobutene (a) or trihydroxystearin (b), or a mixture of both [0063] . Non-limiting examples of moisturizing agents that can be used with the compositions of the present invention include amino acids, chondroitin sulfate, diglycerin, erythritol, fructose, glucose, glycerin, glycerol polymers, glycol, 1,2,6-hexanetriol, honey, hyaluronic acid, hydrogenated honey, hydrogenated starch hydrolysate, inositol, lactitol, maltitol, maltose, mannitol, natural moisturizing factor, PEG-15 butanediol, polyglyceryl sorbitol, salts of pyrollidone carboxylic acid, potassium PCA, propylene glycol, sodium glucuronate, sodium PCA, sorbitol, sucrose, trehalose, urea, and xylitol (d). [0048]
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate hydrogenated polyisobutene (a), trihydroxystearin (b), and xylitol into the sunscreen of Patel et al. The motivation to incorporate hydrogenated polyisobutene (a), trihydroxystearin (b), and xylitol is because Patel et al. teaches olefin resins and waxes (a); and a complex containing an ester of glycerin and hydroxystearic acid (b); and sorbitol; and Wolf et al. teaches a sunscreen formulation wherein thickening agents can increase or control the viscosity of a composition. Thickeners includes those that can increase the viscosity of a composition without substantially modifying the efficacy of the active ingredient within the composition. Thickeners can also increase the stability of the compositions. Thickeners include hydrogenated polyisobutene or trihydroxystearin, or a mixture of both [0063] . Additionally, moisturizing agents can be used with the compositions include amino acids, inositol, lactitol, maltitol, maltose, mannitol, sorbitol, sucrose, trehalose, urea, and xylitol. [0048] Therefore, a skilled artisan would have had reasonable expectation of successfully achieving similar efficacy and results. The recitation “which when applied to the skin or mucosa produces a breathable non-occlusive protective effect, having a water vapour transmission rate and occlusivity similar to that of vernix caseosa” and “for use in treating skin afflicted with a skin disorder selected from atopic dermatitis and wounds” of claims 1 and 10-11 are not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Conclusion
No claims allowed.
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/LAYLA SOROUSH/Primary Examiner, Art Unit 1622