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 .
Note
The Non-Final Office Action mailed on 02/10/2026 is hereby rescinded. The Non-Final Office Action mailed on 02/10/2026 is replaced with this instant Office action.
Claim Status
Applicant’s election of Group I (composition of claims 1-13) and the species of: a) uv filter substances: titanium dioxide and zinc oxide uv filters; emulsifier: cetyl phosphate; further ingredients present: caprylic/capric triglycerides, ethylhexylglycerin, xanthan gum and glyceryl stearate (encompassing claims 9-12); surface coating of uv filter substances with triethoxycaprylylsilane, in the reply filed on 12/18/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 5 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/18/2025. Examiner notes that since claim 5 is most preferably the micronized methylene bis-benzotriazylyl tetramethylbutylphenol, which is an unelected species, the claim is currently withdrawn with claims 14-15 which are directed to a method and a use of bis-ethylhexyloxyphenol methoxyphenyl triazine.
Claims 1-4 and 6-13 are being examined to the extent of the species elections: uv filter substances (instant claims 1 and 4): titanium dioxide and zinc oxide UV filters (pigmentary filters); emulsifier: cetyl phosphate (instant claim 8); further ingredients present: caprylic/capric triglycerides, ethylhexylglycerin, xanthan gum and glyceryl stearate (instant claims 9-12); surface coating of uv filter substances with triethoxycaprylylsilane (instant claims 6-7).
Information Disclosure Statements
Information Disclosure Statements (IDS) filed on 07/31/2023 and 06/09/2025 and 02/24/2026 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112(b)-indefinite
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 2-4 and 6-12 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation from 0.4-10 wt %, and the claim also recites preferably from 0.8-5 wt%, most preferably from 1 to 5 wt% which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Here, it is unclear what range the ethylhexyloxyphenol methoxyphenyl triazine can be present in view of the multiple different ranges set forth in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation from 0.5-25 wt %, and the claim also recites preferably from 1-20 wt%, most preferably from 2 to 15 wt% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Here, it is unclear what range the two or more pigmentary Uv-filters can be present in view of the multiple different ranges set forth in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation at least two inorganic UV filters and the claim also recites preferably at least one titanium dioxide UV- filter and at least one zinc oxide UV-filter which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Here, it is unclear whether titanium dioxide or zinc oxide are required by the claim.
Claim 6 recites the limitation "the inorganic UV-filters” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 6 depends from claim 4 which recites “at least two inorganic UV filters”. Therefore, it is unclear if “the inorganic UV filters” is referring to the at least two or more UV filters required by claim 4. It is suggested that claim 6 can recite “the at least two inorganic UV filters” are surface coated”.
Claim 7 recites the limitation "the inorganic UV-filters” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 7 depends from claim 1 which recites “two or more pigmentary UV-filters”, however claim 1 does not recite an inorganic UV filter. It is believed that claim 7 meant to depend from claim 4, however the claim should recite “the at leat two inorganic UV-filters” if it is meant to depend from claim 4.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation in the presence of an O/W emulsifier, and the claim also recites preferably in the presence of a cetyl phosphate emulsifier, most preferably in the presence of potassium cetyl phosphate which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Here, it is unclear whether potassium cetyl phosphate is required to meet the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation one or more of butylene glycol, dicaprylate/dicaprate, phenethyl benzoate, C12-C15 alkyl benzoate, dibutyl adipate, diisopropyl sebacates, dicaprylyl carbonate, di-C12-13 alkyl tartrates, hydrogenated castor oil dimerates, triheptanoin, C12-13 alkyl lactates, C16-17 alkyl benzoates, propylheptyl caprylates, caprylic/capric triglycerides, diethylhexyl 2,6-naphthalate, octyldodecanol, ethylhexyl cocoatesdibutyl adipate, and the claim also recites preferably of butylene glycol, dicaprylyl carbonate phenethyl benzoate, C12-C15 alkylbenzoate, caprylyl carbonate, capric/caprylic triglyceride, and most preferably of butylene glycol, phenethyl benzoate, and C12-C15 alkylbenzoate which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims It is unclear which ingredients must be present in view of the broad recitation of one or more ingredients followed by preferably and most preferably.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation one or more of ethanol, phenoxyethanol, and ethylhexylglycerin, and the claim also recites preferably of phenoxyethanol and ethylhexylglycerin which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Here, it is unclear whether phenoxyethanol and ethylhexylglycerin are required by the claim or if the claim allows just one of ethanol, phenoxyethanol or ethylhexylglycerin.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation of one or more of xanthan gum, crosslinked acrylate/C10-C30 alkyl acrylate polymer, hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, and the claim also recites preferably xanthan gum which is the narrower statements of the range/limitation. Here, it is unclear whether xanthan gum is required by the claim or if the claim allows just one of xanthan gum, crosslinked acrylate/C10-C30 alkyl acrylate polymer, or hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation one or more of behenyl alcohol, cetyl alcohol, cetearyl alcohol, stearyl alcohol and glyceryl stearate, the claim also recites preferably of behenyl alcohol, stearyl alcohol and cetearyl alcohol which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims It is unclear whether all of behenyl alcohol, stearyl alcohol and ceteryl alcohol are required by the claim, or if the claim allows for a selection from behenyl alcohol, cetyl alcohol, cetearyl alcohol, stearyl alcohol and glyceryl stearate.
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.
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 1-4, 9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 20190183767).
Claim 1 recites a sunscreen composition containing as UV-filters solely a combination of the UV-filter substances i) bis ethylhexyloxyphenol methoxyphenyl triazine (BEMT) and (ii) two or more pigmentary UV-filters. The elected species of the pigmentary UV- filters are titanium dioxide and zinc oxide. The further ingredients present elected include: caprylic/capric triglycerides (instant claim 9), xanthan gum (instant claim 11) and glyceryl stearate (instant claim 12).
Schlossman et al. teach sunscreen compositions which comprise bis ethylhexyloxyphenol methoxyphenyl triazine (BEMT), zinc oxide, xanthan gum, capric/capric triglycerides and glyceryl stearate, and silica at 3% by weight, see paragraph [0065] at Table 1. The BEMT can comprise 1.4% by weight, see paragraph [0065] at Table 1. The SPF of the sunscreen product at Table 1 is 38.89, thus meets the limitation having an SPF of at least 20. The zinc oxide can be present at 7.15% by weight, see Table 1.
Schlossman at Table 1 does not expressly teach the inorganic UV filter of titanium dioxide.
However, although Table 1 does not contain titanium dioxide, Schlossman et al. teaches that to meet an SPF of 30 or higher ZnO is often used along with inorganic UV filters such as titanium dioxide, see paragraph [0005] and claims 23-24. Examples of inorganic UV filter compounds are silica or titanium dioxide, see paragraphs [0051]-[0052]. Table 1 of Schlossman teaches silica.
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 substitute the silica inorganic UV filter at Table 1 for titanium dioxide.
One or ordinary skill in the art would have been motivated to do so because Schlossman et al. teach that one or more inorganic filters can be added where suitable inorganic UV filters include titanium dioxide or silica and that to achieve an SPF of 30 or higher ZnO is mixed with titanium dioxide.
There would have been a reasonable expectation of success because both silica and titanium dioxide are taught as suitable UV filters, and Schlossman et al. teach that titanium dioxide is often combined with zinc oxide to increase the SPF of sunscreen formulations.
Regarding instant clam 2, BEMT is exemplified at 1.4% by weight, and Schlossman et al. teach that the BEMT can be present from 0.5-1.5% by weight which renders obvious the claimed range of from 0.4-10% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding instant claim 3, the substitution of silica for titanium dioxide at Table 1 is 3% by weight, and the amount of BEMT is 1.4% by weight. This amount of 3% together with the ZnO present at 7.15% by weight overlaps and renders obvious the claimed range of from 0.5-25% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding instant claim 4, Schlossman et al. teach a combination of ZnO with titanium dioxide UV filters, see claims 1 and 24.
Accordingly, the teachings of Schlossman et al. render instant claims 1-4, 9 and 11-13 obvious.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 20190183767) as applied to claims 1-4, 9 and 11-13 above, and further in view of Lu et al. (Characterization of titanium dioxide and zinc oxide nanoparticles in sunscreen powder by comparing different measurement methods) and Suma et al. (WO2021220453).
As noted above, the elected species for surface coatings of the UV filters titanium dioxide and zinc oxide is triethoxycaprylylsilane.
Schlossman et al. teach that the ZnO can be coated with silanes, see paragraph [0030], and claim 12
However, Schlossman et al. do not expressly teach wherein the inorganic UV filters of zinc oxide and titanium dioxide are surface coated with triethoxycaprylylsilane.
Lu et al. teach that coatings of triethoxycaprylylsilane or trimethoyloctylsilane help to improve the dispersion of titanium dioxide nanoparticles and enhance compatibility with other ingredients, see section 3.2.
Lu does not teach also coating zinc oxide particles with the triethoxycaprylylsilane coating.
However, Suma et al. teach the surface modification of zinc oxide with silanes, see abstract. The surface modification of zinc oxide renders the particles easily dispersible and provides transparency and uv shielding properties to the cosmetic product, see pages 3- 6. Examples of silanes include triethoxycaprylylsilane (n-octyltriethoxysilane), see page 11. Silanes such as triethoxycaprylylsilane are preferable due to the compatibility with oil phases with a wide range of polarity, see page 11.
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 coat the zinc oxide and titanium dioxide UV filters of Schlossman et al. with triethoxycaprylylsilane.
One of ordinary skill in the art would have been motivated to do so because both Lu and Suma recognize that surface coatings with triethoxycaprylylsilane enable the zinc oxide or titanium dioxide particles to have improved dispersion.
There would have been a reasonable expectation of success because Schlossman et al. teach formulating emulsions with the UV filter particles, see paragraph [0059].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 20190183767) as applied to claims 1-4, 9, and 11-13 above, and further in view of Takakura et al. (WO2012081446).
The teachings of Schlossman et al. are discussed above. Schlossman et al. teach that the composition can take the form of an emulsion (paragraph [0059]), however Schlossman et al. do not expressly teach an O/W emulsion having the emulsifier of potassium cetyl phosphate.
Takakura et al. teach that low viscosity oil in water emulsions (O/W) give the product a fresh feeling with no stickiness or oiliness which provides excellent feel and stability, see abstract and pages 3-6. The preferred anionic emulsifier is potassium cetyl phosphate (alkyl phosphate) and is an essential component, see paged 4-5 and 8.
It would have been prima facie obvious to provide the sunscreen product of Schlossman et al. as a low viscosity O/W emulsion having potassium cetyl phosphate emulsifier.
One of ordinary skill in the art would have been motivated to do so because Takakura et al. teach that O/W emulsions having potassium cetyl phosphate with UV absorbers provide for emulsions which give a fresh feel when applied and no stickiness or oiliness, thus providing excellent feel and stability.
There would have been a reasonable expectation of success because Schlossman et al. and Takakura et al. teach sunscreen formulations and Schlossman et al. teach that the sunscreen formulation includes emulsions.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 20190183767) as applied to claims 1-4, 9, and 11-13 above, and further in view of Kuttler et al. (United States Patent Publication 20220168209).
The teachings of Schlossman et al. are discussed above.
Schlossman et al. do not teach the presence of ethylhexylglycerin in the sunscreen product.
However, Kuttler et al. teach sunscreen compositions including emulsions which comprise preservatives that prolong the shelf life of the product including ethylhexylglycerin, see paragraph [0027]. The composition can take the form of an emulsion, see paragraph [0023].
It would have been prima facie obvious to provide ethylhexylglycerin as the preservative in the sunscreen formulation of Schlossman et al.
One of ordinary skill in the art would have been motivated to do so because ethylhexylglycerin is taught to prolong the shelf life of sunscreen products.
There would have been a reasonable expectation of success given Schlossman et al. teach that the sunscreen formulation can further contain preservatives, see paragraph [0060].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 7-11 and 13 of copending Application No. 18/254537 (reference application) in view of Schlossman et al. (US 20190183767).
Claims 1-4 and 6-13 directed to an invention not patentably distinct from claims 1-2, 4-6, 7-11 and 13 of commonly assigned Application No. 18/254537.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because:
Both the instant claims and that of Application ‘537 recite compositions which comprise bis-ethylhexyloxyphenol methoxyphenyl triazine together with a UV filter that is inclusive of zinc oxide or titanium dioxide. The BEMT of Application ‘537 is present in overlapping ranges to the instantly claimed range. Application ‘537 recites the inorganic filters can be present from 0.5-25% by weight which overlaps the instantly claimed ranges. Both Applications surface coat the inorganic UV filter compound including having zinc oxide coated with triethoxycaprylylsilane. Both Applications further contain a potassium cetyl phosphate emulsifier for an O/W emulsion, caprylic/capric triglycerides, ethylhexylglycerin, xanthan gum and glyceryl stearate. Both the instant claims and that of Application ‘537 have an SPF that is at least 20.
The difference between the instant claims and that of Application ‘537 is that the instant claims contain two UV filters such as a mixture of zinc oxide and titanium dioxide whereas Application ‘537 claims them in the alternative.
However, Schlossman et al. teach that to meet the performance requirement of SPF, zinc oxide is often used along with other sunscreens such as titanium dioxide, see paragraph [0005].
It would have been obvious to combine both zinc oxide and titanium dioxide of Application ‘537 to impart the desired SPF properties of 30 or more to the sunscreen formulation with a reasonable expiation of success given Application ‘537 prefers an SPF of at least 20 (claim 13).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application 18254537 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-4 and 6-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4,7,8, 9,12 and 13 of U.S. Patent No. 10709649 in view of Schlossman et al. Schlossman et al. (US 20190183767), Deshayes et al. (United States Patent Publication 20180110706), Lu (Characterization of titanium dioxide and zinc oxide nanoparticles in sunscreen powder by comparing different measurement methods) and Suma et al. (WO2021220453).
Claims 1-4 and 6-13 directed to an invention not patentably distinct from claims 1-4,7,8,9,12 and 13 of commonly assigned Patent No 10709649.
Specifically, both the instant claims and that of Patent ‘649 claim an emulsion oily phase in water phase (o/w) comprising Uv filter substances and cetyl phosphate emulsifier. The UV filter substance includes bis-ethylhexyloxyphenol methoxyphenyl triazine and can be present from 1-40% by weight which overlaps the instantly claimed range. Both the instant claims and that of Patent ‘649 claim the presence of glyceryl stearate.
The difference between the instant claims and that of Patent ‘649 is the inclusion of zinc oxide and titanium dioxide with bis-ethylhexyloxyphenol methoxyphenyl triazine, the presence of xanthan gum, ethylhexylglycerin, capric/caprylic glycerides, a triethoxycaprylylsilane coating and the SPF being at least 20, and the total amount of the titanium dioxide and zinc oxide present.
Schlossman et al. teach that to meet the performance requirement of SPF, zinc oxide is often used along with other sunscreens such as titanium dioxide, see paragraph [0005]. From Table 1 the additional UV filters can be present at 10.15% by weight 3% by weight (silica or titanium dioxide), and ZnO present at 7.15% by weight.
Deshayes et al. teach o/w sunscreen formulations which comprise preservatives including ethylhexylglycerin, see paragraphs [0050]-[0053]. The formulation further comprises caprylic/capric triglycerides as a suitable cosmetic oils for the oily phase, see paragraph [0038]. The emulsion preferably contains xanthan gum with the ethylhexylglycerin, caprylic/capric triglycerides and cetearyl alcohol, see Table 7.
Lu et al. teach that coatings of triethoxycaprylylsilane or trimethoyloctylsilane help to improve the dispersion of titanium dioxide nanoparticles and enhance compatibility with other ingredients, see section 3.2.
Suma et al. teach the surface modification of zinc oxide with silanes, see abstract. The surface modification of zinc oxide renders the particles easily dispersible and provides transparency and uv shielding properties to the cosmetic product, see pages 2 and 5-6. Examples of silanes include triethoxycaprylylsilane, see page 11. Silanes such as triethoxycaprylylsilane are preferable due to the compatibility with oil phases with a wide range of polarity, see page 11.
It would have been obvious to combine the UV filter substance includes bis-ethylhexyloxyphenol methoxyphenyl triazine of Patent ‘649 with zinc oxide and titanium dioxide present in about 10.15% by weight (Table 1 of Schlossman) to impart the desired SPF properties of above 30 to a sunscreen formulation. It would have additionally been obvious to coat the zinc oxide an titanium dioxide with triethoxycaprylylsilane to improve the dispersion of the UV filters.
It would have been obvious to include ethylhexylglycerin, caprylic/capric triglycerides and xanthan gum with the sunscreen emulsion of Patent ‘649. One of ordinary skill in the art would have been motivated to do so because Deshayes exemplifies such excipients for an O/W emulsion to impart preservative, thickening and suitable oils for the oily phase of a sunscreen emulsion.
There would have been a reasonable expectation of success because Schlossman and Deshayes like Patent ‘649 are to sunscreen emulsions containing UV filter components.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Patent No 10709649 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-4 and 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-13 of copending Application No. 18289461 (reference application) in view of Lu et al. (Characterization of titanium dioxide and zinc oxide nanoparticles in sunscreen powder by comparing different measurement methods).
Although the claims at issue are not identical, they are not patentably distinct from each other because: both the instant claims and that of Application ‘461 recite compositions which comprise bis-ethylhexyloxyphenol methoxyphenyl triazine BEMT together with a UV filter that is inclusive of zinc oxide or titanium dioxide. The BEMT of Application ‘461 is present in overlapping ranges to the instantly claimed range. Application ‘461 recites the uv filters can be present from 0.5-25% by weight which is the same as the instantly claimed ranges. Both Applications surface coat the inorganic UV filter compound including having zinc oxide coated with triethoxycaprylylsilane. Both Applications further contain a potassium cetyl phosphate emulsifier for an O/W emulsion, caprylic/capric triglycerides, ethylhexylglycerin, xanthan gum and glyceryl stearate. Both the instant claims and that of Application ‘461 have an SPF that is at least 20.
Application ‘461 does not claim the elected species to coating of the titanium dioxide with triethoxycaprylylsilane.
Lu et al. teach that coatings of triethoxycaprylylsilane or trimethoyloctylsilane help to improve the dispersion of titanium dioxide nanoparticles and enhance compatibility with other ingredients, see section 3.2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to also coat the titanium dioxide UV filters of Application ‘461 et al. with triethoxycaprylylsilane.
One of ordinary skill in the art would have been motivated to do so because both Lu recognizes that surface coatings with triethoxycaprylylsilane enable titanium dioxide particles to have improved dispersion.
It would have been obvious to combine both zinc oxide and titanium dioxide of Application ‘461 to impart the desired SPF properties of 30 or more to the sunscreen formulation with a reasonable expectation of success given Application ‘461 prefers an SPF of at least 20 (claim 12) and combines coated zinc oxide and titanium dioxide UV filters.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Currently, no claims are allowed and claims 1-4 and 6-13 are rejected.
Correspondence
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619