DETAILED ACTION
Applicants' arguments, filed 06/30/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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 .
Priority
The instant application claims foreign priority to PCTCN2021076732 filed 02/18/2021. The instant application is a 371 of PCT/EP2022/053267 filed 02/110/2022.
Claim Rejections - 35 USC § 112
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 22 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 22 recites a method but fails to recite any active, positive steps delimiting how the method is actually practiced. Therefore, the claim is indefinite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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.
A) Claims 12-14, 16-18, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Termer et al. (WO2018167109A1, provided by applicant in the IDS filed 09/05/2023).
Termer further teaches that the pigments provide excellent skin-feeling, highly suitable skin color modification, natural freshness and luminosity to any skin type, skin protection against IR-A, VIS and HEV radiation, ready dispersibility in aqueous and oily phases, and easy homogeneous distribution on the skin (Termer at page 3). Termer teaches that the interference pigment protects against HEV, VIS and IR-A radiation the pigment is highly suitable in a broad range of cosmetic applications, especially in care and decorative cosmetics. These are suitable for protection of the skin, lips, hair, scalp, hands, nails, eyebrows, eyelids, especially for protection of the areas described against photo- and/or oxidatively induced stress. In particular the interference pigments are highly suitable for sun care, foundations, BB (Blemish Balm), OTC (over the counter), whitening cosmetics or whitening serum for day use, UV and NIR protection (Termer at page 19).Termer teaches that the composition may be a sunscreen (Termer at page 15). Termer teaches that the composition may have a pH of between 1 and 14 (Termer at page 15). Termer teaches that the concentration of the pigment according to the invention in the application system to be pigmented is generally between 0.1 and 100 % by weight, preferably between 0.1 and 70 % by weight and in particular between 0.5 and 10 % by weight, based on the total solids content of the system (Termer at page 10). Termer teaches that organic UV filters are generally incorporated into cosmetic formulations in an amount of 0.5 to 10 % by weight, preferably 1 to 8 % by weight, and inorganic filters in an amount of 0.1 to 30 % by weight (Termer at page 15). Termer teaches the use of bentonites (Termet at page 14) and further teaches their use in a range of 1% (Termer at page 29).Termer teaches the use of ethylhexyl methoxycinnamate in Example A8 (Termer at page 33). Termer teaches the use of oils (Termer at page 14), Termer further teaches the use of oils in a range of 2.5% (Termer at page 27). Termer teaches the use of dicaprylyl carbonate in Example A4 (Termer at page 27). Termer teaches the use of polymers (Termer at page 14), Termer further teaches the use of polymers in a range of 2% (Termer at page 27). Termer does not require the use of emulsifiers.
Termer differ from the instant claims in this rejection insofar as it does not teach the combination of the of the instantly recited components with sufficient specificity for anticipation. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Termer to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
Regarding instant claim 12, Termer teaches that the composition may be a sunscreen (Termer at page 15). Termer teaches that organic UV filters are generally incorporated into cosmetic formulations in an amount of 0.5 to 10 % by weight, preferably 1 to 8 % by weight, and inorganic filters in an amount of 0.1 to 30 % by weight (Termer at page 15), which overlaps the instantly claimed range of 5 to 50%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Termer does not require the use of emulsifiers. Termer teaches the use of bentonites (Termet at page 14) and further teaches their use in a range of 1% (Termer at page 29), which overlaps the instantly claimed range of 0.05 to 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Termer teaches the use of oils (Termer at page 14), Termer further teaches the use of oils in a range of 2.5% (Termer at page 27), which overlaps the instantly claimed range of from 1% to 60%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Termer teaches the use of polymers (Termer at page 14), Termer further teaches the use of polymers in a range of 2% (Termer at page 27), which overlaps the instantly claimed range of 0.1% to 4%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 13-14, Termer teaches the use of polymers (Termer in Examples).
Regarding instant claim 16, Termer teaches the use of ethylhexyl methoxycinnamate in Example A8 (Termer at page 33).
Regarding instant claim 17, Termer teaches the use of stearalkonium hectorite (Termer at page 29), and quaternium-18 hectorite (Termer at page 33).
Regarding instant claim 18, Termer teaches the use of dicaprylyl carbonate in Example A4 (Termer at page 27).
Regarding instant claim 21-22, Termer further teaches that the pigments provide excellent skin-feeling, highly suitable skin color modification, natural freshness and luminosity to any skin type, skin protection against IR-A, VIS and HEV radiation, ready dispersibility in aqueous and oily phases, and easy homogeneous distribution on the skin (Termer at page 3). Termer teaches that the interference pigment protects against HEV, VIS and IR-A radiation the pigment is highly suitable in a broad range of cosmetic applications, especially in care and decorative cosmetics. These are suitable for protection of the skin, lips, hair, scalp, hands, nails, eyebrows, eyelids, especially for protection of the areas described against photo- and/or oxidatively induced stress. In particular the interference pigments are highly suitable for sun care, foundations, BB (Blemish Balm), OTC (over the counter), whitening cosmetics or whitening serum for day use, UV and NIR protection (Termer at page 19).
B) Claims 12-18 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kuhn ("Suncare compositions with new cosmetic raw materials (7) ED - Darl Kuhn", as provided by applicant in the IDS filed on 09/05/2023).
Kuhn ("Suncare compositions with new cosmetic raw materials (7) ED - Darl Kuhn", as provided by applicant in the IDS filed on 09/05/2023) teaches a Sun Cream (Kuhn at pages 70-71) reproduced below.
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Kuhn ("Suncare compositions with new cosmetic raw materials (7) ED - Darl Kuhn", as provided by applicant in the IDS filed on 09/05/2023) teaches a Sun Cream (Kuhn at pages 70-71). Kuhn does not require the use of an emulsifier. Kuhn further teaches that the cosmetic or pharmaceutical preparations are distinguished by excellent protection of human skin against the damaging effect of sunlight (Kuhn at page 1). Kuhn teaches the use of the following thickeners and rheology modifiers (Kuhn at page 2/170);
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Kuhn teaches the use of UV absorbers in a range of 0.05 to 40% (Kuhn at page 9/170-12/170).
Kuhn differ from the instant claims in this rejection insofar as it does not teach the combination of the of the instantly recited components with sufficient specificity for anticipation. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Kuhn to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
Regarding instant claim 12, Kuhn further teaches that the cosmetic or pharmaceutical preparations are distinguished by excellent protection of human skin against the damaging effect of sunlight (Kuhn at page 1). Kuhn teaches the use of UV absorbers in a range of 0.5 to 40% (Kuhn at page 9/170), which overlaps the instantly claimed range of 5 to 50%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Kuhn teaches the use of clays in an amount of 5% (Kuhn at page 70/170) which overlaps the instantly claimed range of 0.5 to 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Kuhn teaches the use of dicapryl carbonate in an amount of 5% (Kuhn at page 70/170) which overlaps the instantly claimed range of 1 to 60%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Kuhn teaches the use of polymer in an amount of 0.5%, which overlaps the instantly claimed range of 0.1 to 4%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Kuhn does not require the use of an emulsifier.
Regarding instant claim 13-15, Kuhn teaches the use of polymers (Kuhn at page 2/170). Kuhn teaches the use of ammonium acryloyldimethyltaurate/Beheneth-25 methacrylate crosspolymer (Kuhn at page 71/170).
Regarding instant claim 16, Kuhn teaches the use of ethylhexyl triazone (Kuhn at page 70/170).
Regarding instant claim 17, Kuhn teaches the use of stearalkonium hectorite (Kuhn at page 2/170).
Regarding instant claim 18, Kuhn teaches the use of dicapryl carbonate (Kuhn at page 70/170).
Regarding instant claim 21-22, Kuhn further teaches that the cosmetic or pharmaceutical preparations are distinguished by excellent protection of human skin against the damaging effect of sunlight (Kuhn at page 1). Kuhn teaches that the use of thickeners and rheology modifiers optimizes the spreadability of cosmetics on the skin surface (Kuhn at page 2/170). Kuhn teaches that sensory agents an also improve the pick-up properties of the formulation and its behaviors during the application on the skin such as spreading, penetration, fresh sensation, skin whitening, and oiliness. Moreover they are used to optimize the final skin sensory profile such as reducing stickiness, avoiding film residue sensation, providing dry skin feel (non greasy), brilliance, film velvet and/or slippery touch. The amelioration of the sensory profile influences an adequate use of the pharmaceutical/cosmetio formulation (sufficient quantity applied, regular repeated application during the day or after bath...) and thus increase the final sunscreen protection of the treated skin. This is valuable for all the ingredients previously described in other categories which exert additionally to their initial properties a positive influence on sensory (Kuhn at 4/170).
Response to Arguments
Applicant's arguments filed 06/30/2026 have been fully considered but they are not persuasive.
Applicant argues that the unexpected results of the instant specification overcome the obviousness rejections.
The Examiner does not agree. No statistical or practical significance has yet been established. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) See MPEP §716.02(b)(I). The burden is on the applicant to explain the statistical and practical significance of the data. "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). See MPEP §716.02(b)(II).
The instant Specification recites Tables 4 and 5 recite;
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However, it is presently unclear how the inventive compositions and the comparative compositions differ from each other and from the instantly claimed ranges and compositions. Furthermore, there is no statistical significance attributed to the data of Tables 4 and 5. Purely en arguendo, were there unexpected results the claims would not be commensurate in scope with the compositions of the specification that produced the results. Because there is no statistical or practical significance for the data a case of unexpected results is not established and the obviousness rejection stands. As such, the Applicant’s arguments are not persuasive and the obviousness rejection stands.
Conclusion
No claims are presently allowable.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
