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 the Claims
Acknowledgement is made of the response filed on June 16, 2025. In that response, claims 1 and 10-12 were amended and claims 13-20 were added. Applicant elected without traverse Group I, claims 1-4 and 10-12 in the reply filed on November 18, 2024. Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Claims 1-4 and 10-20 are treated on the merits in this action. 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
Claim 3 is objected to because of the following informalities: “sultanates” and use of both comma and semicolon in a series.
Claim 4 is objected to because of the following informalities: inconsistency between the C10-C20 notations.
Claim 18 is objected to because of the following informalities: octocrylene does not appear to require capitalization.
Appropriate corrections are 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 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.
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, 2, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Banker (US 4330338).
Banker teaches aqueous dispersion of a water insoluble polymer, specifically ethyl cellulose having a degree of substitution between 2.44 and 2.58, e.g., 2,58 (col.4 ll.28-31, Examples 1, 2, 10; see title; abstract; col.6 ll.3-7, col.7 l.43-col.8 l.20; claims 1, 5). “The essentially submicron size of the polymeric particles in the remaining aqueous phase gives rise to a latex having on the order of … preferably 40 percent to 50 percent solids loading with low viscosities and …” (col.6 ll.3-7). Example 10 comprises ten parts ethyl cellulose, 1 part cetyl alcohol, and 0.5 parts sodium lauryl sulfate (SLS), at 10 cps (Example 10, col.). The polymer particle is “0.1 to 10 microns, and up to 15 to 20 microns, even sized particles” (col.3 ll.1-6, col.5 l.64-col.6 l.2; claim 1). The dispersions form a stable emulsion aided by surfactants other than sodium lauryl sulfate (col.3 l.56-col.4 l.12) at 0.1 to 10 % by weight (col.3 l.56-col.4 l.12, col. 4 ll.36-40), and cetyl or other C12 or higher alcohols at up to 10% by weight of the emulsion (col.4 ll.13-27, col. 4 ll.40-43, Example 2).
Banker does not specifically disclose an example dispersion of claim 1, i.e., comprising a surfactant other than SLS. However it would have been prima facie obvious to one having ordinary skill in the art at the time of the filing to prepare Banker’s dispersion in Examples 2 or 10, comprising ethyl cellulose and cetyl alcohol, with a surfactant other than the SLS that were used in those examples as recited in the instant claims. The skilled person would have been motivated to do so because Banker expressly teaches that various other specific surfactants are suitable for its dispersion, e.g., cetyl pyridinium chloride and others (col.3 l.56-col.4 l.12).
Regarding claim 14, Banker teaches “…preferably 40 percent to 50 percent solids loading” of ethyl cellulose. “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments”, and “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. MPEP §2123 (citations omitted). Therefore the skilled person could devise Banker’s latex that comprises about 35 wt.% solids, which is close to the preferred 40 wt.%.
Claims 1-4 and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Banker (US 4330338) as applied to claims 1, 2, and 13-17, and further in view of Geffroy (US 2013/0280197).
Banker does not specifically teach the surfactants or application to sunscreen compositions recited in claims 3, 4, 10-12, and 18-20.
Geffroy teaches skincare, e.g., sunscreen, compositions comprising water, ethylcellulose having a degree of substitution with ethoxy groups between 2.5 and 2.6 in the form of particles, a hydrocarbon-based non-volatile oil that is preferably a C12-C16 alcohol, and a stabilizer (title; abstract; claims 1, 7; paras. 0001-06. 0015-23, 0051-78, 0759). Geffroy teaches the surfactants recited in instant claims 3 and 4 (paras. 0405-13).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Banker and Geffroy and devise sunscreen compositions comprising ethyl cellulose particles, as recited in the instant claims. The skilled person would have been motivated to do so because both references are drawn to aqueous dispersions comprising ethyl cellulose particles, surfactants, and non-volatile alcohols, and Geffroy teaches that the dispersion can form personal care compositions that are stable over time and improve the gloss and/or wear property of cosmetic products (para.0036).
Regarding claims 11, 12, and 18-20, Banker teaches titanium dioxide (Example 9), and Geffroy teaches the same (para.0735), as well as adding other sunscreen agents (para. 0759). Regarding “…that retains its SPF rating longer when submerged in water as compared with…” in claims 11 and 19, and “…having a reduced amount of SPF agent…and …have equivalent SPF ratings” in claims 12 and 20, the following is noted.
Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive.
MPEP §2103(I)(C) (emphases added); see also MPEP § 2111.04. Here the above claim phrases suggest but do not recite the structural features of the composition that attain the sunscreen characteristics recited. Such structural features would include the actual components and their relative concentrations, among others. Thus they do not limit the scope of the claim and are not afforded patentable weight. Furthermore a person skilled in the art of sunscreen compositions would recognize retention of SPF rating after submersion in water and achieving an SPF rating using less sunscreen active is desirable. No express teaching is required as the skilled artisan is not an automaton. However merely reciting that which is desirable, e.g., “a sunscreen lotion comprising the composition of claim 1 that retains its SPF rating for 100 hours when submerged in water…”, without also disclosing and reciting in the claim that which achieves the desirable feature, is not afforded patentable weight.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 10-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that in claims 11 and 12, the “wherein” has been removed, and the claims recite physical, measurable characteristics. (Remarks, 11, June 16, 2205.)
The rejection above addresses these characteristics; however the analysis remains similar as before. Whether a claim phrase merits patentable weight does not turn on whether the phrase contains “wherein…”.
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 H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614