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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I (claims 27-42) in the reply filed on 12/01/2025 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 Claims 43-46 are withdrawn from consideration without traverse. Claims 1-26 are cancelled.
As such, the restriction is made final.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 10/02/2023 has been considered here.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 27-28 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nn (2015; as submitted on IDS of 10/02/2023).
Nn teaches a sunscreen comprising water (i.e., an aqueous phase), ultrafine titanium dioxide (i.e., titanium dioxide particles), and xanthan gum (see Nn, product information; INCI name). It is taught that the average particle size distribution of the dispersion is 0.138 µm (i.e., 138 nm).
In regards to the limitation of the particle size being measured by transmission electron microscopy, it is pointed out that the prior art teaches a composition identical to that which is described by applicant’s instant application, but applicant’s observation that the particle size is measured using transmission electron microscopy does not give it patentable weight, since it is the same composition, as adding a characterization to a prior art invention is not patentable. Measuring of physical properties of known compositions is not patentable.
Claims 27, 30-33, and 39 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US PGPUB 20160346194 A1 (Jiao, 2016).
In regards to claims 27 and 30-33, Jiao teaches an example of a skin care composition comprising an aqueous phase composition in embodiment 7 (see Jiao, paragraphs 0074-0077). The composition is described in parts by weight out of 94.9 total parts and as such have been converted to percentages by weight for ease of comparison. The aqueous phase is taught to comprise about 1.05% of glycerin, about 5.3% of titanium dioxide, and about 0.1% of xanthan gum. These amounts overlap with the ranges of the instant claims.
In regards to claim 39, embodiment 7 is taught to be made in an emulsifying pot, as such would be understood to be an emulsion (see Jiao, paragraphs 0074-0077).
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 27, 30-35, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20160346194 A1 (Jiao, 2016).
The teachings of Jiao have been described supra in regards to claims 27, 30-33, and 39.
In regards to claim 34, Jiao further teaches that the composition comprises varying amounts of water in the different embodiments, such as 50-70 parts by weight, 60-80 parts by weight, and 75-90 parts by weight (see Jiao, paragraphs 0017, 0021, 0025). Further specifically, looking at the amounts in paragraph 0017, it would be within the purview of one with ordinary skill in the art to easily envisage a composition that falls within the limitations of the instant claims. For example, a composition comprising 70 parts of water, 2 parts of glycerol, 2 parts of caprylic/capric triglyceride, 1 part of titanium dioxide, 1 part of squalane, 0.1 part of C30-45 alkyl dimethicone or polycyclohexene oxide cross-linked polymer, 0.1 part of panthenol, 0.1 part of decamethylcyclopentasiloxane, 0.1 part of cetearyl alcohol, 0.1 part of C12-20-alkyl glucoside, 0.1 parts of sodium acrylates copolymer or mineral oil or PPG-1 trideceth-6, 0.1 part of polydimethylsiloxane, 0.1 part of PEG-20 methyl glucose sesquistearate, an appropriate amount of methylisothiazolinone, an appropriate amount of ethylhexylglycerin, 0.01 part of carbomer, 0.01 part of xanthan gum, 0.01 part of triethanolamine, and 0.01 part of disodium EDTA for a total of about 77 parts would be about 91% by weight of water. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 35, embodiment 8 teaches an example wherein the composition is described in parts by weight out of a total 110.7 parts and as such have been converted to percentages by weight for ease of comparison. The composition is taught to comprise about 0.09% of phenoxyethanol and titanium dioxide as well as 0.9% of xanthan gum (see Jiao, paragraph 0079). In regards to the teaching of the amount of phenoxyethanol, “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” One with ordinary skill in the art would reasonably expect that a composition comprising 0.09% by weight of phenoxyethanol would have the same properties as a composition comprising 0.1% by weight of phenoxyethanol.
Jiao does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Jiao with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
Claims 36 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20160346194 A1 (Jiao, 2016) as applied to claims 27, 30-35, and 39 above, and further in view of US PGPUB 20150328088 A1 (Suzuki, 2015).
The teachings of Jiao have been described supra.
The teachings of Jiao are silent on the use of citrate buffers and the composition being a water-in-oil emulsion.
Suzuki teaches sunscreen compositions in the form of water-in-oil emulsions comprising titanium dioxide in the aqueous phase (i.e., can be present in either phase) (see Suzuki, paragraphs 0007, 0016-0017). Xanthan gum is also taught as a component in the composition (see Suzuki, paragraphs 0061, 0067, 0079). The composition is taught to comprise pH adjusting agents (see Suzuki, paragraph 0026), such as citrate buffers (see Suzuki, paragraph 0089).
In regards to claims 36 and 40, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Jiao and Suzuki to formulate the instant invention as both compositions are drawn to emulsions comprising the same components for similar purposes (i.e., sunscreens). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be within the purview of one with ordinary skill in the art to use the pH adjusting agent of Suzuki in an emulsion such as that taught in Jiao as the use of pH adjusting agents are known in the art. One with ordinary skill in the art would be motivated to combine the pH adjusting agent of Suzuki with the composition of Jiao according to the known method of making a water-in-oil emulsion (see Suzuki, paragraphs 0120-0121) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claims 28-29 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20160346194 A1 (Jiao, 2016) as applied to claims 27, 30-35, and 39 above, and further in view of US PGPUB 20060194057 A1 (Pfluecker, 2006; as submitted on IDS of 10/02/2023).
The teachings of Jiao have been described supra.
The teachings of Jiao are silent on the use of magnesium sulfate, calcium chloride, and/or sodium chloride as well as the particle size or coating of the titanium dioxide particles.
Pfluecker teaches a composition comprising titanium dioxide coated with silicon dioxide in a particle size of 5 to 50 nm (see Pfluecker, paragraphs 0019-0020) and xanthan gum (see Pfluecker, paragraph 0237) in one phase of an emulsion (see Pfluecker, paragraphs 0081, 0237). Pfluecker teaches in formulation 11 that sodium chloride is used in aqueous phase (i.e., phase C) in an amount of 0.5% (see Pfluecker, paragraph 0343). This is 0.79% by weight in respect to the aqueous phase of the composition. In regards to the teaching of the amount of sodium chloride, “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” One with ordinary skill in the art would reasonably expect that a composition comprising 0.79% by weight of sodium chloride would have the same properties as a composition comprising 0.7% by weight of sodium chloride.
In regards to claims 28-29 and 37, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Jiao and Pfluecker to formulate the instant invention as both compositions are drawn to emulsions comprising the same components for similar purposes (i.e., sunscreens). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be within the purview of one with ordinary skill in the art to use the sodium chloride and the coated titanium dioxide in an emulsion such as that taught in Jiao as the use of sodium chloride is known in the art. One with ordinary skill in the art would be motivated to combine the sodium chloride of Pfluecker with the composition of Jiao according to the known method of making a water-in-oil emulsion (see Pfluecker, paragraphs 0343-0344) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claims 27-33 and 38-42 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20200038301 A1 (Deshayes, 2020; as submitted on IDS of 10/02/2023).
In regards to claims 27-32 and 41-42, Deshayes teaches a composition comprising an aqueous phase and oily phase (see Deshayes, paragraph 0065). It is taught that the ingredients can be in either phase (see Deshayes, paragraph 0065). The composition is taught to comprise zinc oxide, titanium dioxide, and mixtures thereof (see Deshayes, paragraph 0041), in an amount from 0.1 to 20 wt% (see Deshayes, paragraph 0043). It is taught that the particle size of the titanium dioxide is from about 2 nm to 100 nm (see Deshayes, paragraph 0044). The titanium dioxide is taught to be coated with silica (see Deshayes, paragraph 0046). It is also taught that the composition comprises xanthan gum in an amount 0.1 to 1 wt % (see Deshayes, paragraph 0020). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to the limitation of the particle size being measured by transmission electron microscopy, it is pointed out that the prior art teaches a composition identical to that which is described by applicant’s instant application, but applicant’s observation that the particle size is measured using transmission electron microscopy does not give it patentable weight, since it is the same composition, as adding a characterization to a prior art invention is not patentable. Measuring of physical properties of known compositions is not patentable.
In regards to claim 33, the composition is taught to comprise glycerin (see Deshayes, paragraph 0063). In Table 2, it can be seen that the amount of glycerin used is 6.00 wt.% in multiple examples (see Deshayes, Table 2). “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").” One with ordinary skill in the art would reasonably expect that a composition comprising 6 wt% of glycerin would have the same properties as a composition comprising 5 wt% of glycerin.
In regards to claims 38-40, the composition is taught to be in the form of a hydrogel (i.e., an aqueous gel) or a water-in-oil emulsion (see Deshayes, paragraph 0077).
Deshayes does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Deshayes with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20200038301 A1 (Deshayes, 2020; as submitted on IDS of 10/02/2023) as applied to claims 27-33 and 38-42 above, and further in view of US PGPUB 20150328088 A1 (Suzuki, 2015).
The teachings of Deshayes have been described supra.
The teachings of Deshayes are silent on the use of citrate buffers.
The teachings of Suzuki have been described supra.
In regards to claim 36, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Deshayes and Suzuki to formulate the instant invention as both compositions are drawn to emulsions comprising the same components for similar purposes (i.e., sunscreens). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be within the purview of one with ordinary skill in the art to use the pH adjusting agent of Suzuki in an emulsion such as that taught in Deshayes as the use of pH adjusting agents are known in the art. One with ordinary skill in the art would be motivated to combine the pH adjusting agent of Suzuki with the composition of Deshayes according to the known method of making a water-in-oil emulsion (see Suzuki, paragraphs 0120-0121) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over PGPUB 20200038301 A1 (Deshayes, 2020; as submitted on IDS of 10/02/2023) as applied to claims 27-33 and 38-42 above, and further in view of US PGPUB 20060194057 A1 (Pfluecker, 2006; as submitted on IDS of 10/02/2023).
The teachings of Deshayes have been described supra.
The teachings of Deshayes are silent on the use of magnesium sulfate, calcium chloride, and/or sodium chloride.
The teachings of Pfluecker have been described supra.
In regards to claim 37, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Deshayes and Pfluecker to formulate the instant invention as both compositions are drawn to emulsions comprising the same components for similar purposes (i.e., sunscreens). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be within the purview of one with ordinary skill in the art to use the sodium chloride in an emulsion such as that taught in Deshayes as the use of sodium chloride is known in the art. One with ordinary skill in the art would be motivated to combine the sodium chloride of Pfluecker with the composition of Deshayes according to the known method of making a water-in-oil emulsion (see Pfluecker, paragraphs 0343-0344) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Conclusion
No claims allowed.
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/A.A.A./Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611