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 1-20 are pending. Claims 5-6 and 8 are amended.
Claims 12-17 and 20 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-11 and 18-19 are examined on their merits.
Previous Rejections
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
Objections/Rejections Withdrawn
Claim Objection
In light of the amendments to the claims the objection to claim 6 is withdrawn.
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 6 and 8 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Rejections Maintained
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 rejections of claims 1-11 and 18-19 under 35 U.S.C. 103 as being unpatentable over Cox et al. WO 2010/003843 (1/14/2010) in view of Acker et al. GB 2445832 (7/23/2008) as evidenced by https://gsrs.ncats.nih.gov/ginas/app/ui/substances/M3264QAY87 (“NIH”) are maintained.
Cox et al. (Cox) teaches surfactant containing rise-off cosmetic and personal care products which contain at least one film former and at least one beneficial substance that can be a UV filter substance for cleaning the skin and simultaneously providing a beneficial effect on the skin such as UV absorption. (See Abstract). Cox teaches that the composition can be formulated as an emulsion. (See final paragraph of page 18). This is a cosmetic emulsion as called for in instant claim 19.
Cox teaches particularly preferred UV filter substances include dispersed particulate metal oxides such as titanium dioxide and zinc oxide in an amount of 0.1 to 15 wt%. (See second paragraph on page12). Zinc oxide is called for in instant claim 2 and its dispersion is called for in instant claim 18. The particles should have a size of about 100 nm or about 200 nm. (See second paragraph of page 19 and second paragraph of page 12). 200 nm falls within the at least 100 nm to at most 15 micrometers called for in instant claim 18. Zinc oxide is an inorganic, sunscreen-active material as called for in instant claims 1 and 18. 0.1 to 15 wt% overlaps with the at least 1 and at most 90 wt% called for in instant claim 3.
Cox teaches surfactants in an amount of about 0.1 to 30% by weight. Cox teaches that an anionic surfactant can be used. (See Cox claim 14). An anionic surfactant is called for in instant claim 8. A surfactant is called for in instant claims 1 and 18. About 0.1 to 30% by weight surfactant overlaps with the at least 0.001 wt% and at most 50 wt% surfactant called for in instant claim 9.
Cox teaches that in a particularly preferred embodiment at least one anionic film former or a mixture of film formers is used, wherein the anionic film former is a polyester-5 having a glass transition temperature of about 35 to about 38 degrees Celsius. A polyester-5 with a glass transition temperature of about 35 to about 38 ˚Celsius is called for in instant claim 6(ii). Cox teaches that the polyester-5 film former is used in an amount of 5 to 20 wt%. 5 to 20 wt% overlaps with the at least 0.001 wt% and at most 50 wt% called for in instant claim 7(ii). Cox teaches that polyesters are desirable film formers in sunscreen compositions and anionic polymers such as polyesters with glass transition temperatures of from about 35 to about 65 ˚C are generally preferred. (See page 5, first paragraph).
Cox teaches a blend of film-forming polymers but does not teach a polyester-5 with a glass transition temperature of approximately 51-55 ˚C. Cox does not teach lecithin or polyglyceryl-3-laurate. These deficiencies are made up with the teachings of Acker et al.
Acker et al. teaches cosmetic compositions comprising an organic UV absorbing agent , N,N-dimethylcapramide and a cosmetically or pharmaceutically acceptable carrier and water. (See Abstract). Acker teaches that surfactants are part of its compositions. Acker also teaches that lipophilic solubilizing emollients are good solvents for organic UV absorbers and emollient esters are good emollients and solvents. Glyceryl esters are emollients and important emulsifiers.(See page 19). One such glyceryl ester is polyglyceryl-3 laurate. (See page 22, lines 1-5). Polyglyceryl-3 laurate is called for in instant claims 8 and 10. Acker teaches that its composition contains from 1 to 30 % by weight of an emulsifier. (See page 39). 1 to 30% overlaps with the at least 0.001 to at most 40 wt% called for in instant claim 9.
Acker also teaches lecithin as a component, although Acker describes it as a super-fatting agent. (See page 39, lines 20-30). Lecithin is called for in instant claim 10. Lecithin is exemplified in an amount of about 1% to 10%. (See page 54). 1% to 10% lecithin to 1 to 30% polyglyceryl-3 laurate overlaps with the 2:3 to 3:2 ratio range called for in instant claim 10.
Acker teaches polyester-5. (See page 58 Example1). Polyester-5 has a glass transition temperature of 51-56 ˚Celsius as evidenced by NIH. 51-56 ˚Celsius is at least 35 ˚C and at most 70 ˚Celsius as called for in instant claim 5.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Cox composition of 0.1 to 15 wt% dispersed 200 nm zinc oxide particles in a cosmetic emulsion with 0.1 to 30 wt% anionic surfactant and a blend of film-forming polymers each in an amount of 5 to 20 wt%, one of which is a polyester-5 with a glass transition temperature of about 35 to about 38 ˚C to have the other film-forming polymer in the blend to be a regular polyester-5 with the regular glass transition temperature of about 51 to about 56 ˚C in light of Cox’s teaching that polyesters are desirable film formers in sunscreen compositions and anionic polymers such as polyesters with glass transition temperatures of from about 35 to about 65 ˚C are generally preferred. (See page 5, first paragraph).
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Cox composition of 0.1 to 15 wt% dispersed 200 nm zinc oxide particles in a cosmetic emulsion with 0.1 to 30 wt% anionic surfactant and a blend of film-forming polymers in an amount of 5 to 20 wt%, one of which is a polyester-5 with a glass transition temperature of about 35 to about 38 ˚C to add 1% to 10% lecithin to 1 to 30% polyglyceryl-3 laurate taught by Acker in order to have an emollient emulsifier and a super-fatting agent that is moisturizing in the composition as taught by Acker.
With respect to the difference between the first glass transition temperature and the second glass transition temperature of from 2 ˚C to 30 ˚C, the difference between the polyester-5 with a glass transition temperature of about 35 to about 38 ˚C and the regular polyester-5 with the regular glass transition temperature of about 51 to about 56 ˚C taught by Acker is 51-35 = 16 which falls within the from 2 ˚C to 30 ˚C range called for in instant claim 4.
Response to Arguments
Applicants’ comments of March 16, 2026 have been fully reviewed and are found to be mostly unpersuasive for the reasons described below.
Applicants note the amendments to the claims and requests the withdrawal of the claim objections and rejections in light of these amendments. In light of the amendments the objection and rejection are withdrawn above.
Applicants assert that the cited prior art fails to render the claimed subject matter obvious because it the cited prior art fails to teach any motivation for and or benefit to the two different glass transition temperatures recited in claim 1 and the Office relies on hindsight. Applicants assert that the mere disclosure of polyesters is insufficient motivation.
Applicants assert that there is no indication that the specific polyester-5 of NIH is the same as that disclosed in Cox, so this limitation is not taught by the rejection. Applicants also argue that the modification of Acker with the polyester-5 of NIH would destroy the utility of Acker and make it unsuitable because, absent the second water-soluble polymer the composition of Acker would not be flexible and/or spread on the users skin since the glass transition temperature of the first water soluble polymer is greater than the temperature of the users skin.
Applicants assert that the Office fails to address the limitation of the amount of the first water-soluble polymer in claim 7.
Applicants assert that the reference to 200 nm in Cox is specific to emulsion, not to particulate inorganic sunscreen active materials. Applicants also argue that Cox teaches away from when particulate material are utilized, they must have a diameter of less than 100 nm.
Applicants’ arguments have been carefully reviewed and the obviousness arguments are not found to be persuasive.
Applicants’ assert that the cited prior art fails to teach any motivation for and or benefit to the two different glass transition temperatures recited in claim 1 and the Office relies on hindsight is not found to be persuasive. Respectfully, Applicants assertion that the mere disclosure of polyesters is insufficient motivation misinterprets the motivation. As stated in the rejection it is Cox’s teaching that polyesters are desirable film formers in sunscreen compositions and anionic polymers such as polyesters with glass transition temperatures of from about 35 to about 65 ˚C are generally preferred. (See page 5, first paragraph). The Cox reference itself expressly teaches the desirability of the polyester-5. Applicants’ argument is contradicted by the express language of the Cox reference itself. This is the same reason why hindsight cannot have been used in making the rejection - because the motivation to combine the teachings of the reference comes from the language of the reference itself. Hindsight has not been used in making any obviousness rejections; this is evident in that all of the claimed elements are taught or suggested in the prior art references themselves and so is the motivation to combine them. Significantly, all of the reasons for combining the teachings of Cox in view of Acker are based on the express teachings of the references themselves.
As described in the rejection there is motivation to combine the teachings of the prior art references and combine two different glass transition temperatures. Specifically, it would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Cox composition of 0.1 to 15 wt% dispersed 200 nm zinc oxide particles in a cosmetic emulsion with 0.1 to 30 wt% anionic surfactant and a blend of film-forming polymers each in an amount of 5 to 20 wt%, one of which is a polyester-5 with a glass transition temperature of about 35 to about 38 ˚C to have the other film-forming polymer in the blend to be a regular polyester-5 with the regular glass transition temperature of about 51 to about 56 ˚C in light of Cox’s teaching that polyesters are desirable film formers in sunscreen compositions and anionic polymers such as polyesters with glass transition temperatures of from about 35 to about 65 ˚C are generally preferred. (See page 5, first paragraph).
The teachings of the prior art references do not need to be combined for the same reason as Applicants have. Applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result covered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ.
Applicants’ arguments that the glass transition temperature of polyester-5 would render the Cox composition unsatisfactory for its intended purpose is not found to be persuasive because it is contradicted by the language of the prior art reference itself. Cox teaches that polyesters are desirable film formers in sunscreen compositions, so much so that anionic polymers such as polyesters with glass transition temperatures of from about 35 to about 65 ˚C are generally preferred. A glass transition material is the temperature range where amorphous materials transition from a rigid, glassy state to a soft and more flexible state. It is not a phase change such as melting but more of a gradual transition. It is often used to determine a substances suitability for a particular application.
Respectfully, Applicants appear to misunderstand the rejection. Acker is not being modified by NIH. It is the Cox composition that is being modified with Acker’s teaching of it polyester-5. NIH is cited as evidence of what the typical glass transition temperature of polyester-5 is. Since Acker does not indicate that the polyester-5 that it is citing is unusual in any way, it is a normal polyester-5 with a normal glass transition temperature. Therefore, there would not be a rendering of Acker’s composition as unsuitable to be used on skin due to inflexibility because Acker’ composition is not the composition being modified. Thus, Applicants’ argument is unpersuasive.
Applicants’ argument that the Office fails to address the limitation of the amount of the first water-soluble polymer is also not found to be persuasive because it is taught to be present in the amount of 5 to 20 wt% in the rejection, specifically the statement of prima facie obviousness.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Cox composition of 0.1 to 15 wt% dispersed 200 nm zinc oxide particles in a cosmetic emulsion with 0.1 to 30 wt% anionic surfactant and a blend of film-forming polymers in an amount of 5 to 20 wt%, one of which is a polyester-5 with a glass transition temperature of about 35 to about 38 ˚C to have the other film-forming polymer in the blend to be a regular polyester-5 with the regular glass transition temperature of about 51 to about 56 ˚C in light of Cox’s teaching that polyesters are desirable film formers in sunscreen compositions and anionic polymers such as polyesters with glass transition temperatures of from about 35 to about 65 ˚C are generally preferred. (See page 5, first paragraph).
Applicants’ argument that that the reference to 200 nm in Cox is specific to emulsion, but cannot be used for particulate inorganic sunscreen active materials is not found to be persuasive because it is contradicted by the language of Cox. Cox expressly teaches a preference for particle size of from 10 nm to 300 nm for derivatives of benzoxazole. (See page 11). Therefore, Cox cannot teach away from when particulate material are utilized, they must have a diameter of less than 100 nm. Additionally, the size of 200 nm cannot be just for emulsion since Cox expressly teaches that it is preferable for particulate material too, since Cox expressly teaches a preference for particle size of from 10 nm to 300 nm for derivatives of benzoxazole.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Cox composition of 0.1 to 15 wt% dispersed 200 nm zinc oxide particles in a cosmetic emulsion with 0.1 to 30 wt% anionic surfactant and a blend of film-forming polymers in an amount of 5 to 20 wt%, one of which is a polyester-5 with a glass transition temperature of about 35 to about 38 ˚C to add 1% to 10% lecithin to 1 to 30% polyglyceryl-3 laurate taught by Acker in order to have an emollient emulsifier and a super-fatting agent that is moisturizing in the composition as taught by Acker.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/ Supervisory Patent Examiner, Art Unit 1619