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
Applicant’s Request for Reconsideration dated July 10, 2026 is acknowledged.
Claims 1-4 and 6-21 are pending.
Claim 5 is cancelled.
Claims 1, 6, 8, 9, 12, 13 and 18 are currently amended.
Claims 19-21 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Claims 8 and 9 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 10-21 as filed on July 10, 2026 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendments to the specification, all previous objections to the specification are withdrawn.
In view of the amendment of the claims, all previous claim rejections under 35 USC 112(a) are withdrawn, all previous claim rejections under 35 USC 112(b) are withdrawn, and some previous claim rejections under 35 USC 112(d) are withdrawn.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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
New Grounds of Rejection Necessitated by Amendment
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.
Claims 1-4, 6, 7 and 10-21 are 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.
Claim 1 as currently amended recites an oil-in-water emulsion that is stable for at least one week at 55 ºC and at least two months at 45 ºC. Applicant’s Remarks cite to page 4, lines 29-30, page 14, line 6 and page 17, lines 3-20 in support of the amendment of claim 1. The original disclosure (the 16 page version) discloses stability testing of Examples 2 and 3 at page 17:
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Although it is not entirely clear what is meant by “The compositions were placed in stability” as required by the above protocol, there is no basis in the original disclosure for stability for at least one week at 55 ºC and at least two months at 45 ºC for Example 3, let alone for the genus of compositions claimed. Furthermore, there is insufficient written description support for generic emulsions according to claim 1 which possess stability according to the newly claimed criteria because there is no disclosed or art-recognized correlation between the disclosed function and the structure(s) responsible for the function. See MPEP 2163. Claims 2-4, 6, 7 and 10-21 are included in this rejection because they depend from claim 1 and thus they also recite new matter.
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.
Claim 21 is 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.
New claim 21 recites the at least one fatty compound consists of isononyl isononanoate, stearyl alcohol, and the Copernicia cerifera (carnauba) wax, however, claim 21 also recites inter alia stearic acid which is a fatty compound. Because the “consists of” transitional phrase creates the presumption that the composition is closed to fatty compounds other than those expressly recited (MPEP 2111.03 II), it is unclear how the reconcile the contradictory limitations.
Maintained 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 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.
Claims 12, 14 and 16 recite amounts / ranges for sunscreens which differ from and broaden / 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 12-13 of the Remarks are acknowledged but not found persuasive because Applicant appears to be pre-supposing mixtures of UV actives while the rejections are predicated on the fact that in the limit when the at least one UV filter consists (only) of one UV filter the ranges must match. Furthermore, claim 10 expressly claims different types of filters in the alternative. It is problematic that claim 1 embraces, for example, 15 to 25 wt% oil soluble sunscreens while claim 12 embraces about 3 to 25 wt%. Thus, claim 12 could be conceivably infringed by prior art teaching 5 wt% of an oil soluble sunscreen, which would be outside the range of base claim 1 and not infringe. Therefore, the rejections are properly maintained and made again.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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, 17, 19 and 20 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); Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020, of record); and Lheureux (FR 2,988,291, published September 27, 2013, as evidenced by the Google translation).
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, 19-21. 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, 21. 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 inclusive of O/W emulsions comprising from 1 to 60 wt% of at least one oil component and from 10 to 90 wt% water (paragraph [0172]), as required by instant claim 20. 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]), as required by instant claims 19-21.
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 1.7 to 1.9 wt%, 1.75 to 1.85 wt%, 1.8 wt%, 1.7 to 1.85 wt% glyceryl stearate (and) PEG-100 as instantly claimed (MPEP 2144.05) and as required by claims 1, 19-21, in the alternative, Esposito teaches sunscreen compositions in the form of an O/W emulsion comprising an emulsifying system comprising a mixture of glyceryl stearate (and) PEG-100 stearate, potassium cetyl phosphate and stearyl alcohol (title; abstract; claims, in particular 1, 8). 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 or stability for at least one week at 55 ºC and at least two months at 45 ºC 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.
Ehlis does not teach 1.75 to 2.25 wt% of Copernicia cerifera wax as required by claim 19.
Ehlis does not teach 2 wt% of Copernicia cerifera wax as required by claim 20.
These deficiencies are made up for in the teachings of Esposito, Birjandi-Nejad and Lheureux.
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. Esposito further teaches a dual benefit of stability; tests were conducted over 2 months at room temperature and at 45 ºC (page 3, lines 26-34; Example 11).
Birjandi-Nejad teaches water-resistant and/or photoprotective compositions comprising 0.1 to 10 wt% of non-solubilized micronized waxes inclusive of carnauba; the compositions may be in the form of an emulsion, in particular a sunscreen oil-in-water emulsion (title; abstract; claims, in particular 1, 8, 9; paragraphs [0001], [0004], [0013], [0073], [0077], [0082]), as required by instant claims 17, 19, 20. The waxes improve the aesthetics and/or sun protection factor of the sunscreen composition (claim 14).
Lheureux teaches cosmetic compositions in the form of an oil-in-water emulsion (title; abstract; claims). The emulsions are stable, meaning the emulsion, after 24 hours and up to 2 months of storage at temperatures between 4 ºC and 45 ºC or even 55 ºC shows no or little change (page 2, 6th full paragraph).
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 inclusive of O/W emulsions 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 O/W 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 the newly claimed property of stability, because the combined teachings of Ehlis, Esposito and Birjandi-Nejad render obvious O/W emulsions as instantly claimed, comprising the same ingredients in overlapping amounts, it necessarily follows that the emulsions of the prior art are also characterized by stability as instantly claimed because a chemical composition and its properties are inseparable. See MPEP 2112.01 II. In further support of this presumption. Esposito expressly teaches stability and exemplifies stability testing over 2 months at room temperature and at 45 ºC. Additionally or/and alternatively, it would have been obvious to one of ordinary skill in the art that stable, in the context of O/W emulsions, means the emulsions show no or little change after 24 hours and up to 2 months of storage at temperatures between 4 ºC and 45 ºC or even 55 ºC as taught by Lheureux.
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); Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020, of record); and Lheureux (FR 2,988,291, published September 27, 2013, as evidenced by the Google translation) as applied to claims 1-4, 6, 7, 10-14, 17, 19 and 20 above, and further in view of Gaudry (WO 2017/000050, published January 5, 2017, of record).
The teachings of Ehlis, Esposito, Birjandi-Nejad and Lheureux 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, Birjandi-Nejad and Lheureux 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); Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020, of record) and Lheureux (FR 2,988,291, published September 27, 2013, as evidenced by the Google translation) as applied to claims 1-4, 6, 7, 10-14, 17, 19 and 20 above, and further in view of Esposito et al. ‘903 (WO 2018/213903, published November 29, 2018, of record).
The teachings of Ehlis, Esposito, Birjandi-Nejad and Lheureux 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 O/W emulsions comprising inter alia a lipophilic phase comprising one or more lipophilic materials (title; abstract; claims; paragraph bridging pages 10 and 11). 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, Birjandi-Nejad and Lheureux 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.
Claim 21 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); Birjandi-Nejad et al. (WO 2021/076474, filed October 13, 2020, of record) and Lheureux (FR 2,988,291, published September 27, 2013, as evidenced by the Google translation) as applied to claims 1-4, 6, 7, 10-14, 17, 19 and 20 above, and further in view of Camargo et al. (WO 2020/000068, published January 2, 2020) and Brillouet et al. (US 2017/0128357, published May 11, 2017).
The teachings of Ehlis, Esposito, Birjandi-Nejad and Lheureux have been described supra.
Ehlis further teaches the emulsions further comprise from 0 to 88.9 wt%, from 1 to 50 wt% adjuvants (paragraph [0172]). Typical ingredients include perfumes (fragrance) (paragraph [0188]).
They do not teach the UV filter consists of ethylhexyl triazone, titanium dioxide, octocrylene, diethylamino hydroxybenzoyl hexyl benzoate, ethylhexyl salicylate, and butyl methoxydibenzoylmethane;
the fatty compound consists of isononyl isononanoate, stearyl alcohol and the Copernicia cerifera wax;
to 1 wt% triethanolamine and disodium EDTA;
2.0 to 3.0 wt% silica and silica silylate;
1.5 to 3.5 wt% ammonium acryloyldimethyltaurate/vp copolymer, aluminum starch octenylsuccinate, and acrylates/C10-30 alkyl acrylate crosspolymer;
0.5 to 1.5 wt% phenoxyethanol and chlorphenesin;
0.5 to 3 wt% glycerin and caprylyl glycol;
0.3 to 3 wt% sodium methyl stearoyl taurate, poloxamer 338 and stearic acid;
0.05 to 0.2 wt% citrus limon (lemon) fruit extract; and
0.01 to 0.2 wt% ascorbyl glucoside and tocopherol as required by claim 21.
These deficiencies are made up for in the teachings of Camargo and Brillouet.
Camargo teaches a surfactant system for stable sunscreen compositions comprising about 1 to 30 wt% stearic acid, glyceryl stearate and PEG-100 stearate, and stearyl alcohol, about 0.05 to 10 wt% of potassium cetyl phosphate, and about 0.05 to 10 wt% sodium methyl stearoyl taurate; the compositions are in the form of an O/W emulsion (title; abstract; claims, in particular 1-10, 23; Examples). The compositions comprise additional surfactants inclusive of poloxamer 338 (page 17, lines 6-11). The compositions comprise oil-soluble sunscreens inclusive of butyl methoxydibenzoylmethane, ethylhexyl salicylate, ethylhexyl triazone, octocrylene and n-hexyl 2-(4-diethylamino-2-hydroxybenzoyl)benzoate (diethylamino hydroxybenzoyl hexyl benzoate) (claims 11, 13; pages 7-10, in particular page 8, lines 24-28 and the paragraph bridging pages 9 and 10). The compositions comprise a silica-coated titanium dioxide sunscreen (claims 11, 13; page 11, lines 7-26). The compositions comprise fatty compounds inclusive of isononyl isononanoate and stearyl alcohol (page 17, lines 17-18). The compositions comprise actives inclusive of disodium EDTA and triethanolamine (page 17, lines 4-5). The compositions comprise mattifying powders inclusive of aluminum starch octenylsuccinate and silica silylate
(claim 16; pages 15-16, in particular page 16, lines 7-9). The compositions comprise fillers inclusive of silica (page 16, lines 22-28). The compositions comprise polymers inclusive of ammonium acryloyldimethyltaurate/vp copolymer and acrylates/C10-C30 alkyl acrylate crosspolymer (page 17, lines 19-20). The compositions comprise preservatives inclusive of phenoxyethanol (page 16, lines 20-21). The compositions comprise solvents inclusive of glycerin or/and caprylyl glycol (page 16, lines 29-31). The compositions comprise vitamins inclusive of tocopherol (page 16, lines 15-16).
Brillouet teaches topical gel cream compositions comprising oil soluble UV filters (title; abstract; claims). The compositions comprise a citrus fruit extract, for example a lemon peel extract (paragraph [0058]; Example 3). The compositions comprise preservatives inclusive of chlorphenesin (Examples). The compositions comprise skin lightening agents inclusive of ascorbyl-2-glucoside (paragraphs [0078]-[0079], [0084]; Example 5).
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 O/W emulsions of Ehlis in view of Esposito, Birjandi-Nejad and Lheureux to comprise combination of sunscreens as taught by Camargo inclusive of butyl methoxydibenzoylmethane, ethylhexyl salicylate, ethylhexyl triazone, octocrylene, n-hexyl 2-(4-diethylamino-2-hydroxybenzoyl)benzoate (diethylamino hydroxybenzoyl hexyl benzoate) and silica-coated titanium dioxide sunscreen as taught by Camargo because such as suitable for forming stable sunscreen compositions. There would be a reasonable expectation of success because Ehlis embraces all UV filters inclusive of butyl methoxydibenzoylmethane.
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 O/W emulsions of Ehlis in view of Esposito, Birjandi-Nejad and Lheureux comprising 0.1 to 10 wt% waxes inclusive of carnauba to further comprise fatty compounds inclusive of isononyl isononanoate and stearyl alcohol as taught by Camargo because such are suitable for forming stable sunscreen compositions. It would have been obvious to include these fatty compounds in amounts from 0 to 88.9 wt%, from 1 to 50 wt% because Ehlis embraces this content of adjuvants.
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 emulsifying system of the O/W emulsions of Ehlis in view of Esposito, Birjandi-Nejad and Lheureux to further comprise 1 to 30 wt% stearic acid and about 0.05 to 10 wt% sodium methyl stearoyl taurate as taught by Camargo because such are suitable for forming stable sunscreen compositions.
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 O/W emulsions of Ehlis in view of Esposito, Birjandi-Nejad and Lheureux to further comprise additional surfactants inclusive of poloxamer 338, actives inclusive of disodium EDTA and triethanolamine, mattifying powders inclusive of aluminum starch octenylsuccinate and silica silylate, fillers inclusive of silica, polymers inclusive of ammonium acryloyldimethyltaurate/vp copolymer and acrylates/C10-C30 alkyl acrylate crosspolymer, preservatives inclusive of phenoxyethanol, solvents inclusive of glycerin and caprylyl glycol, and vitamins inclusive of tocopherol as taught by Camargo because such are suitable for forming stable sunscreen compositions. It would have been obvious to include these additional compounds in amounts from 0 to 88.9 wt%, from 1 to 50 wt% because Ehlis embraces this content of adjuvants.
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 O/W emulsions of Ehlis in view of Esposito, Birjandi-Nejad and Lheureux to further comprise a citrus fruit extract, for example a lemon peel extract, preservatives inclusive of chlorphenesin, and skin lightening agents inclusive of ascorbyl-2-glucoside as taught by Brillouet because such are suitable for sunscreen compositions. It would have been obvious to include these compounds in amounts from 0 to 88.9 wt%, from 1 to 50 wt% because Ehlis embraces this content of adjuvants.
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 14-15 of the Remarks that Example 3 is stable and that Ehlis does not mention stability is acknowledged but not found persuasive because the instant claims are not drawn to Example 3. Applicant’s characterization of Esposito and of Birjandi-Nejad at page 15 as not anticipating claim 1 as currently amended is acknowledged.
Applicant’s argument at pages 15-16 that there is no motivation to arrive at the specific amounts recited in claim 1 nor any hint of surprising stability is acknowledged. This argument is unpersuasive because the prior art of record renders obvious ranges as instantly claimed, sufficient to establish prima facie obviousness. See MPEP 2144.05. Furthermore, stability is expected from Esposito et al. (WO 2019/036774, of record) and from Camargo et al. (WO 2020/000068, copy provided) for emulsions comprising the same combination of surfactants as instantly claimed.
Applicant’s argument at pages 16-17 that Gaudry does not remedy the deficiency of the base rejection is acknowledged but not found persuasive for the reasons set forth in the modified grounds of rejection over Ehlis as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Romanowski “Cosmetic Formulators’ Guide to Stability Testing,” 2015 teaches cosmetics must be stable; an industry rule of thumb is that a sample stored at 45 ºC for 8 weeks (2 months) is equivalent to one that is stored at room temperature for 1 year.
Esposito et al. (WO 2019/036775) teaches sunscreen compositions comprising poloxamer 338 and fillers inclusive of titania, silica silylate and aluminum starch octenylsuccinate (title; abstract; claims; page 4, lines 24-25).
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 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
/DAVID J BLANCHARD/
Supervisory Patent Examiner, Art Unit 1619
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