DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Information Disclosure Statement
The information disclosure statements (IDS) dated 09/07/2023 and 09/05/2023 both comply with provisions of 37 CFR 1.97, 1.98 and MPEP §609. Accordingly, they have been placed in the application file and the information therein has been considered as to the merits.
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 21 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 21 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 § 102
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 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 12-14,17,19, and 21-22 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention.
Termer et al.(WO2018167109A1, provided by applicant in the IDS filed 09/05/2023) recites an oil-in-water emulsion Example A5 reproduced below. 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).
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B) Claims 12-19 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. 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).
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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 and 16-22 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 is discussed in the Anticipation Rejection supra. 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). Termer et al. recites an oil-in-water emulsion Example A5 reproduced supra in the Anticipation Rejection. 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 the use of ethylhexyl methoxycinnamate in Example A8 (Termer at page 33). Termer teaches the use of dicaprylyl carbonate in Example A4 (Termer at page 27). Termer does not require the use of emulsifiers.
Regarding instant claim 16, Termer teaches the use of ethylhexyl methoxycinnamate in Example A8 (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 20, Termer does not require the use of emulsifiers.
B) Claims 12-22 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 is discussed in the Anticipation Rejection supra. 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).
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 supra. 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).
Conclusion
No claims are presently allowable.
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.
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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
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