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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 20, 2026 has been entered.
Claims 1-4 and 6-18 are pending.
Claim 5 is cancelled.
Claims 1, 6, 8-10, 13 and 15 are currently amended.
Claims 17 and 18 are new.
Claims 8 and 9 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-4, 6, 7 and 10-18 as filed on March 20, 2026 are under consideration.
Withdrawn Objections / Rejections
In view of the replacement drawings, all previous objections to the drawings are withdrawn.
In view of the substitute specification, all previous objections to the specification are withdrawn.
In view of the amendment of the claims, all previous claim objections are withdrawn, all previous claim rejections under 35 USC 112(a) are withdrawn, some of the previous claim rejections under 35 USC 112(b) are withdrawn and some of the previous claim rejections under 35 USC 112(d) are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Specification
The disclosure is objected to because of the following informalities: at page 3 (marked copy as filed March 20, 2026) the description of FIG. 4 and FIG. 5 should presumably reference Example 3 consistent with the disclosure at page 17. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
New claim 18 recites the at least one fatty compound further comprises isononyl isononanoate and stearyl alcohol and the at least one fatty compound is present from 8 to 12 wt%. Applicant’s Remarks cite to a PCT publication in support of the amendments. With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4, 83 USPQ2d 1373, 1376, n.4 (Fed. Cir. 2007). See MPEP 2163. The original disclosure (the 16 page version) discloses at page 4:
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and discloses at pages 13-14 an exemplary embodiment comprising inter alia:
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There is no basis in the original disclosure for the extrapolation of a new fatty compound component which can comprise fatty compounds other than isononyl isononanoate, stearyl alcohol and carnauba wax in an amount from 8 to 12%. There is also no apparent basis for mixing the embodiment of page 4 (e.g., as recited in claim 1 as currently amended) with the embodiment of pages 13-14.
Claim Rejections - 35 USC § 112(b)
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 13 and 14 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.
Claim 13 recites in the third to last line a clause reciting “derivatives and corresponding salts thereof”. It is unclear what potential antecedent in the claim is referenced by the term “thereof”. Claim 14 is included in this rejection because it depends from claim 13 and because it does not remedy the noted ambiguity.
Response to Arguments: Claim Rejections - 35 USC § 112(b)
Applicant’s statements at page 11 of the Remarks that the amendments address the rejections have been fully considered but they are not persuasive for the reasons set forth in the maintained / modified grounds of rejection.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6, 12, 14 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites fatty compounds, however, claim 1 as currently amended and from which claim 6 depends recites at least one fatty compound comprising 1 to 3 wt% carnauba wax. The embodiment of fatty compounds of claim 6 fails to further limit claim 1 and omits the wax of clam 1.
Claims 12, 14 and 16 recite amounts / ranges for sunscreens which differ from / omit the range of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments: Claim Rejections - 35 USC § 112(d)
Applicant’s statements at page 11 of the Remarks that the amendments address the rejections have been fully considered but they are not persuasive for the reasons set forth in the maintained / modified grounds of rejection.
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.
Claims 1-4, 6, 7, 10-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ehlis et al. (US 2011/0033400, published February 10, 2011, of record) in view of Esposito et al. (WO 2019/036774, published February 28, 2019, of record) and Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020).
Ehlis teaches sunscreen compositions comprising color pigments (title; abstract; claims). The color pigments include inorganic color pigments selected from inter alia iron oxide (claims 2, 3). The compositions comprise 0.01 to 10 wt% of the color pigments and 0.1 to 40 wt% of UV filters (claim 25), as required by instant claims 2, 4, 12, 14, 16. 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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. UV filters include inter alia butyl methoxydibenzoylmethane (oil soluble, dibenzoylmethane derivative) (claim 22; paragraph [0108]), as required by instant claims 3, 10, 11. UV filters include inter alia benzotriazoles inclusive of methylene bis-benzotriazolyl tetramethylbutylphenol (water soluble) (claims 5, 6, 22; paragraphs [0076]-[0078]), as required by instant claims 10, 13.
The compositions may be in the form of water- and oil-containing emulsions comprising from 1 to 60 wt% of at least one oil component (paragraph [0172]). O/W emulsion Examples B1 comprise inter alia 2 wt% glyceryl stearate (and) PEG-100 stearate and 1.5 wt% potassium cetyl phosphate (paragraph [0209]).
The compositions may further comprise inter alia preservatives (paragraphs [0173], [0188]; Examples B1), as required by instant claim 6. Ehlis further teaches typical ingredients include waxes (paragraph [0188]).
Although 2 wt% glyceryl stearate (and) PEG-100 stearate as disclosed by Ehlis is considered sufficiently close to render obvious 1.9 wt% glyceryl stearate (and) PEG-100 as instantly claimed (MPEP 2144.05) and as required by claim 1, in the alternative, Esposito teaches sunscreen compositions comprising an emulsifying system comprising a mixture of glyceryl stearate (and) PEG-100 stearate, potassium cetyl phosphate and stearyl alcohol (title; abstract; claims). The emulsifying system is present from 0.1 to 5 wt% (claim 3). The amount of glyceryl stearate (and) PEG-100 stearate is between about 0.1 to 10, preferably about 1.8 to 5 wt% and the amount of potassium cetyl phosphate is about 0.1 to 10, preferably about 1 to 5 wt% (pages 6-7, “Emulsifying System”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsions of Ehlis comprising 0.01 to 10 wt% of color pigments inclusive of iron oxide and 0.1 to 40 wt% of UV filters inclusive of butyl methoxydibenzoylmethane or/and methylene bis-benzotriazolyl tetramethylbutylphenol to further comprise the emulsifying system of Esposito comprising 0.1 to 5 wt% of a mixture of glyceryl stearate (and) PEG-100 stearate, potassium cetyl phosphate and stearyl alcohol and comprising about 1.8 to 5 wt% of the glyceryl stearate (and) PEG-100 stearate and about 1 to 5 wt% of the potassium cetyl phosphate because this emulsifying system is suitable for sunscreen compositions. There would be a reasonable expectation of success because Ehlis exemplifies an embodiment falling within this genus.
Ehlis does not teach 1 to 3 wt% of Copernicia cerifera (carnauba) wax as required by claim 1.
Ehlis does not specifically teach an SPF of 50 to 60 as required by claim 7.
Ehlis does not teach 1.5 to 2.5 wt% of Copernicia cerifera (carnauba) wax as required by claim 17.
These deficiencies are made up for in the teachings of Esposito and Birjandi-Nejad.
The teachings of Esposito have been described supra. Esposito further teaches it is desirable to formulate a sunscreen with a high SPF rating; the SPF ranges from 40 to 90 and includes values such as 50 (page 2, lines 26-28; page 4, lines 12, 13 and 22-33), as required by instant claim 7.
Birjandi-Nejad teaches water-resistant and/or photoprotective compositions comprising 0.1 to 10 wt% of non-solubilized micronized waxes inclusive of carnauba (title; abstract; claims; paragraphs [0001], [0004], [0013], [0073], [0077], [0082]), as required by instant claim 17. The waxes improve the aesthetics and/or sun protection factor of the sunscreen composition (claim 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsions of Ehlis comprising 0.01 to 10 wt% of color pigments inclusive of iron oxide and 0.1 to 40 wt% of UV filters inclusive of butyl methoxydibenzoylmethane or/and methylene bis-benzotriazolyl tetramethylbutylphenol or/and to modify the emulsions of Ehlis in view of Esposito further comprising the emulsifying system of Esposito to further comprise 0.1 to 10 wt% non-solubilized micronized wax inclusive of carnauba wax as taught by Birjandi-Nejad in order to impart water-resistance to the photoprotective emulsions. There would be a reasonable expectation of success because the compositions of Ehlis may further comprise waxes. Additionally, it would have been prima facie obvious to optimize the wax content in order to improve the aesthetics and/or sun protection factor. It is prima facie obvious to optimize such result-effective variables within prior art conditions or through routine experimentation. See MPEP 2144.05.
Regarding claim 7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsions of Ehlis to have a high SPF rating such as an SPF of 50 as taught by Esposito in order to provide adequate protection against the sun. There would be a reasonable expectation of success because the emulsions of Ehlis are sunscreens and because Ehlis does not limit the efficacy thereof.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ehlis et al. (US 2011/0033400, published February 10, 2011, of record) in view of Esposito et al. (WO 2019/036774, published February 28, 2019, of record) and Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020) as applied to claims 1-4, 6, 7, 10-14 and 17 above, and further in view of Gaudry (WO 2017/000050, published January 5, 2017, of record).
The teachings of Ehlis, Esposito and Birjandi-Nejad have been described supra.
They do not specifically teach silica-coated titanium dioxide sunscreen having a particle size from about 2 to 7 microns as required by claim 15.
This deficiency is made up for in the teachings of Gaudry.
Gaudry teaches sunscreen compositions in the form of an oil-in-water emulsion comprising one or more oil-soluble organic sunscreen inclusive of butyl methoxydibenzoylmethane, one or more water-soluble organic sunscreen inclusive of methylene bis-benzotriazolyl tetramethylbutylphenol, one or more silica-coated titanium dioxide sunscreen, one or more powder, one or more fatty component and an emulsifier system (title; abstract; claims; page 7, lines 7-10; page 9, line 33). The oil-soluble organic sunscreen may be present from 3 to 25 wt%, the water-soluble organic sunscreen may be present from 0.1 to 10 wt%, and the silica-coated titanium dioxide sunscreen may be present from 1 to 10 wt% (claims 2-4). The silica-coated titanium dioxide has a particle size from 2 to 7 microns and a composition of silica:titania of about 55:45 (claim 6; page 11, lines 25-31), as required by instant claim 15. Oil-soluble sunscreens tend to contribute to the greasy feel of sunscreen compositions; the sunscreen compositions comprising additional sunscreens may be expected to be less greasy (page 2, lines 3-13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the UV filter component of the emulsions of Ehlis in view of Esposito and Birjandi-Nejad to further comprise additional UV filters inclusive of silica-coated titanium dioxide sunscreen having a particle size from 2 to 7 microns and a composition of silica:titania of about 55:45 in an amount of 1 to 10 wt% as taught by Gaudry because reliance upon oil-soluble sunscreens to impart UV protection may contribute to an undesirable greasy feel of the applied product. There would be a reasonable expectation of success because Ehlis broadly embraces UV filters and because the silica-coated titanium dioxide sunscreen of Gaudry is compatible with the exemplary butyl methoxydibenzoylmethane or/and methylene bis-benzotriazolyl tetramethylbutylphenol filters of Ehlis.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ehlis et al. (US 2011/0033400, published February 10, 2011, of record) in view of Esposito et al. (WO 2019/036774, published February 28, 2019, of record) and Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020) as applied to claims 1-4, 6, 7, 10-14 and 17 above, and further in view of Esposito et al. ‘903 (WO 2018/213903, published November 29, 2018).
The teachings of Ehlis, Esposito and Birjandi-Nejad have been described supra.
They do not specifically teach the at least one fatty compound further comprises isononyl isononanoate and stearyl alcohol and is present from 8 to 12 wt% as required by claim 18.
This deficiency is made up for in the teachings of Esposito ‘903.
Esposito ‘903 teaches high SPF sunscreen compositions inclusive of emulsions comprising inter alia a lipophilic phase comprising one or more lipophilic materials (title; abstract; claims). The one or more lipophilic materials comprise one or more of inter alia isononyl isononanoate and stearyl alcohol (claim 14; page 2, lines 15-17; pages 10-17). Lipophilic materials other than sunscreens constitute at least 0.5 wt% or at most 25 wt% of the compositions (page 10, lines 26-32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsions of Ehlis in view of Esposito and Birjandi-Nejad to further comprise one or more lipophilic materials inclusive of isononyl isononanoate and stearyl alcohol in amounts of at least 0.5 wt% or at most 25 wt% as taught by Esposito ‘903 because such lipophilic materials are suitable for emulsions comprising sunscreen actives. There would be a reasonable expectation of success because emulsions comprise a lipophilic phase and the emulsions of Ehlis may comprise from 1 to 60 wt% of at least one oil component. The combined teachings of the prior art therefore render obvious compositions comprising 0.1 to 10 wt% non-solubilized micronized wax inclusive of carnauba wax and at least 0.5 wt% or at most 25 wt% lipophilic materials inclusive of isononyl isononanoate and stearyl alcohol. See MPEP 2144.05.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s argument at pages 12-14 of the Remarks that neither Ehlis nor Esposito (nor Gaudry) render obvious the carnauba wax restored to the claims is acknowledged but not found persuasive because the embodiment of composition previously presented comprising carnauba wax was properly rejected in the Non-Final rejection mailed October 2, 2025 in view of Groc. Nonetheless, upon continued examination of the claims newly presented Birjandi-Nejad is newly applied to render obvious waxes inclusive of carnauba wax within sunscreen compositions comprising colour pigments (e.g., Ehlis).
Applicant’s citation to Examples 3 and 4 of a PCT publication at page 13 is noted but unpersuasive because the content of the instant specification has already been considered as part of the Graham analysis. That the composition of Example 3 may possess different stability properties than the composition of Example 2 is not unexpected (see MPEP 2112.01 II) and bears limited nexus to the genus of compositions claimed. See MPEP 716 for information regarding allegations of unexpected results.
Therefore, the rejections over Ehlis are properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Alice et al. (BR 10-2017-014814 A2, as evidenced by the Google translation) teaches sunscreen emulsions that include color components, said emulsions comprising about 1 to 10 wt% of a hydrophilic organic filter, about 1 to 20 wt% of a lipophilic organic filter, about 0.1 to 2 wt% of an inorganic filter, about 2 to 10 wt% of a first emulsifier inclusive of glyceryl stearate and PEG-100 stearate, about 2 to 10 wt% of a second emulsifier and about 2 to 5 wt% of a water-soluble pigment inclusive of iron oxide or/and titanium dioxide (title; abstract; claims).
Iwami et al. (WO 2021/125212 A1, as evidenced by US 2023/0053779) teaches sunscreen cosmetics in which an eco-friendly and highly waterproof powdery component is used as a substitute for microplastic beads or silica to that high UV protective performance can be achieved, the powdery component comprising a wax powder comprising inter alia carnauba (title; abstract; claims; paragraphs [0055]-[0059]; Examples).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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