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 .
Current Status of 18/209,515
This Office action is responsive to the amended claims and Applicant remarks of 11/25/2025. Claims 1-18 are pending in the application.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, 14, and 18 in the reply filed on 11/25/2025 is acknowledged. Applicant’s election without traverse of 8-(3-(2,5-dioxo-2,5-dihydro-1H-pyrrol-1-yl)propanamido)octyl 2-cyano-3,3-diphenylacrylate (pictured below) as the species of the compound of formula (I), sunscreen as the type of composition, and a natural or synthetic polymeric support as the type of support are similarly acknowledged. The elected species is obvious over the cited references below. The Applicant identifies claims 4, 6, and 12 as being withdrawn from consideration as being directed to a non-elected species. Claims 1-3, 5, 7-11, 14, and 18 have been examined on the merits.
Elected species
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Priority
The instant application is a continuation in part of U.S. application No. 17/785, 437, which is a national stage entry of PCT/EP2020/086955, filed 12/18/2020, which claims priority to European Patent Application No. EP 19306696.6, filed 12/19/2019.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/14/2023, 01/10/2024, 11/25/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 5, 9, and 14 are objected to because of the following informalities: Claim 5 contains an indented list wherein each entry is proceeded by
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; claims 9 and 14 contain indented lists wherein each entry is proceeded by “-”. The format of these indented lists differ from claim 1. The format of the claims within the set should have a uniform format. Appropriate correction is required.
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 1-3, 5, 7-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Barg (US 2009/0156485 A1, found in IDS filed 06/14/2023) in view of Haffey (US 5087445 A).
Barg discloses a compound with an effector molecule bonded to a linker molecule ([0012]) and discloses that the effector molecule is a photoprotective moiety. The reference teaches that the photoprotective moiety is connected to a maleimide functional group through a linker ([0038], [0088]). The reference further discloses that the maleimide moiety has the following preferred structure
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where n is very particularly preferably between 2 and 8 and X is the selected from a group including O=C-NR- and -NR-C=O, where R can be H ([0090]). These teachings encompass the Mal 2 derivative of the instant application. [0090] also teaches that the module can be an ethylene glycol, polyethylene glycol, alkyl, or polyolefin radicals of varied lengths, each optionally substituted with amino acid residues. This highlights that the linker is structurally flexible and not critical to the function of the compounds. The reference teaches compositions comprising the compounds and additional excipients ([0314]) and sunscreen compositions comprising these compounds (Example 30). [0276] also discloses compositions reading on the washing composition of instant claim 14 as defined by pg. 10 lines 18-21 of the specification. Barg does not expressly disclose an acrylate moiety as the photoprotective component in these compounds, however this moiety is a known photoprotective structure in the art.
Haffey discloses photoprotection compositions suitable for use as sunscreen agents for UVA and UVB radiation (Abstract). The compounds of the reference are of the general structure X-G-Z (Col 3, line 40) where X is a UVA absorbing chromophore (Col 3, lines 43-44), Z is a UVB absorbing chromophore (Col 3, lines 55-56), and G is a covalent linking that binds these two moieties (Col 4, lines 7-11). One disclosed chromophore of Z has the following structure
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(Col 6, line 20) where A1 is selected from a group which includes -CN. This structure is analogous to the structure of A in the elected species. Some exemplary G linking groups disclosed are -O-(CH2-)n-O- and -NH-(CH2-)n-NH- (Col 7, lines 12-15).
The artisan would have experience in the field of organic chemistry, medicinal chemistry, pharmaceutical sciences, chemical engineering, or a related field. The artisan would have experience in the design, synthesis, and evaluation of small molecule compounds for topical or dermatological applications. The artisan would be familiar with established classes of photoprotective agents used in sunscreen compositions, including UV-absorbing organic chromophores, and would understand structure-property relationships governing UV adsorption properties. The artisan would have experience in routine synthetic modifications of known photoprotective moieties and would be capable of preparing and characterizing derivative compounds using conventional organic synthesis techniques.
The cited references both teach photoprotective compositions comprised on the compounds discussed above. Because of this, the artisan would have been motivated to incorporate the know UVB photoprotective group of Haffey into the scaffold of Barg to obtain a compound with the recognized photoprotective properties. The instant invention is therefore the combination of a known functional group into a known scaffold using a conventional linker moiety. This combination is rendered prima facie obvious over the teachings of the references because it is prima facie obvious to combine prior art elements according to known methods to yield predictable results. The artisan could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded no more than predictable results. MPEP 2143.A.
Additionally, Barg expressly teaches the incorporation of the photoprotective compound into topical lotion formulations for sunscreen use. The inclusion of the compound or composition in a lotion or any of the other embodiments disclosed in [0276] of Barg represents a known, conventional embodiment in the art. The claimed kit merely comprises the compound/composition with a lotion vehicle, each performing its expected function in the context of a sunscreen. The assembly of these elements into a kit does not produce a new or unexpected functional relationship, and instead represents the predictable packaging of conventional components for their intended use. Accordingly, the kit does not confer patentable distinction over the combined teachings of the references.
Claims 1 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Barg and Haffey in view of Musa (US 9289631 B2).
The teachings of Barg and Haffey are discussed above and are incorporated by reference into this rejection. The combined teachings of the references teach the limitations of claim 1. Barg and Haffey do not teach the compositions being adhered to a natural or synthetic polymeric support. However, such practice is common in the art.
Musa teaches personal care compositions where UV absorbing compounds are bound to a polymer which confers advantageous physical and UV protective properties (Abstract).
The artisan would have experience in the field of organic chemistry, medicinal chemistry, pharmaceutical sciences, chemical engineering, or a related field. The artisan would have experience in the design, synthesis, and evaluation of small molecule compounds for topical or dermatological applications. The artisan would be familiar with established classes of photoprotective agents used in sunscreen compositions, including UV-absorbing organic chromophores, and would understand structure-property relationships governing UV absorption properties. The artisan would have experience in routine synthetic modifications of known photoprotective moieties and would be capable of preparing and characterizing derivative compounds using conventional organic synthesis techniques.
The artisan would have been motivated to incorporate the photoprotective compounds of Barg and Haffey onto a polymer support as taught by Musa because Musa teaches that adherence of UV compounds to a polymer improves desirable properties of personal care compositions such as enhanced photostability, improved water resistance, and the ability to tailor broad-spectrum UV protection. Because Barg and Haffey already disclose UV protective compounds for use in similar compositions, it would have been a predictable variation to immobilize those known UV absorbers onto the polymer support of Musa to obtain the same advantages taught by Musa. Such modification represents the routine combination of known UV-absorbing compounds with a known polymer support strategy within the same field of endeavor.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-3, 5, 7-11, 14, and 18 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 19-20 and 23-25 of copending Application No. 17/785,437 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Claims 1-3, 5, 7-11, 14, and 18 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR KENNEDY ENGLISH whose telephone number is (571)270-0813. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET..
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/C.K.E./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625