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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 12/24/2025 is acknowledged. Claims 2, 4, 6, and 7 have been canceled. Claims 1, 3, 5, and 8 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments, arguments, and terminal disclaimer filed on 12/24/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 103(a) rejections of claims 1-3 and 5-8 over Yamaki et al. (US 2018/0289610 A1) in view of Friedman (US 2015/0202139 A1) and of claims 1-6 and 8 over Ujimoto et al. (WO 2020/032242 A1) and Friedman (US 2015/0202139 A1) and nonstatutory obviousness-type double patenting rejection of claims 1-6 and 8 over claims 1-10 of U.S. Patent No. 11,771,630 B2 and Friedman (US 2015/0202139 A1) from the previous Office Action. The approval of the terminal disclaimer has overcome the nonstatutory obviousness-type double patenting rejection of claims 1, 3, 5, and 8 over claims 1-6 of U.S. Patent No. 12,161,740 B2 and claims 1-15 of U.S. Patent No. 12,419,814 B2 from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. The rejections are modified based on the amendments.
Claim Rejections - 35 USC 112/Second paragraph
The following is a quotation of the second paragraph 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.
Claims 1, 3, 5, and 8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of "a ratio of the oxyethylene groups to a total of the oxyalkylene groups and the oxyethylene groups is 20 to 80 mass%" can be interpreted in more than one way: mass ratio of EO : (EO+AO) = 20 : 80 OR mass ratio of EO : (EO+AO) = 20-80 : 100 mass%, i.e., mass ratio of EO : AO = 20-80 : 80-20. Claims 2-7 are rejected as dependent claims of a rejected claim.
The instant specification discloses 6/14 - 9/2 EO/PO molar ratio in paragraph 39. Given the MW of EO monomer 44 /mol, the MW of PO monomer 58 /mol, the mass% ratio of EO/(PO +EO) is calculated to be: 6x44=264, 14x58=812, 264/(264+812)=264/1076=24.5%, i.e., EP/PO mass% ratio of 24.5% : 75.5%; 9x44=396, 2x58=116, 396/(396+116)=396/512=77.3%, i.e., EP/PO mass% ratio of 77.3% : 22.7%.
Thus, to expedite the prosecution "a ratio of the oxyethylene groups to a total of the oxyalkylene groups and the oxyethylene groups is 20 to 80 mass%" is given its broadest reasonable interpretations by the examiner in light of the specification in the 103 rejections as mass% ratio of EO : (EO+AO) = 20-80% : 100%, i.e., mass% ratio of EO : AO = 20-80% : 80-20%.
Response to Applicants’ arguments:
Applicants argue that the amendments obviate the rejection.
However, this argument is not deemed persuasive. The recitation in the amended claim 1 is the same as the recitation in previously claim 2. “20-80%” is not an expression of ratio. The examiner suggests the amendment of: mass% ratio of EO : (EO+AO) = 20-80% : 100%, or mass% ratio of EO : AO = 20-80% : 80-20%, or EO is 20-80% by mass relative to the total mass of EO and AO.
New ground of rejections necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejections.
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, 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 1, 3, 5, and 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yamaki et al. (US 2017/0333301 A1) in view of Friedman (US 2015/0202139 A1).
Yamaki et al. teach a water-in-oil sunscreen cosmetic (the instant claims 1 and 8) (abstract) and exemplified a composition, in paragraph 95, comprising
4-tert-butyl-4′-methoxydibenzoylmethane (component A in the instant claim 1, avobenzone) which is a random copolymer (the instant claim 3) (paragraph 65);
polyoxyethylene(14) polyoxypropylene(7) dimethyl ether (component C in the instant claim 1 according to the instant specification paragraph 36-40);
2 mass% of octocrylene (within the claimed ≤ 2 mass% in the instant claim 5);
no ethylhexyl methoxycinnamate, i.e., 0% by weight of ethylhexyl methoxycinnamate (within the claimed ≤ 2 mass% in the instant claim 1).
Yamaki et al. do not teach the composition further comprising butyloctyl salicylate (component B in the instant claim 1).
This deficiency is cured by Friedman who teaches skin care formulations (abstract) comprising sunscreens including avobenzone (paragraph 49-56) and a SPF enhancer for reduced degradation of avobenzone including butyloctyl salicylate (paraph 59 and 61).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Yamaki et al. and Friedman to add butyloctyl salicylate in the composition taught by Yamaki et al. for the benefit of reduced degradation of avobenzone and enhanced SPF. Butyloctyl salicylate being a SPF enhancer for reduced degradation of avobenzone was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for adding it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose with the added benefit.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-6 and 8 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,771,630 B2 in view of Friedman (US 2015/0202139 A1) and Iwami et al. (WO 2021/125211 A1, effective filing date of 12/16/2020, US 2023/0046650 A1 as English translation).
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The instant application claims 1-6 and 8 recite a cosmetic comprising an ultraviolet absorber including t-butyl methoxydibenzoylmethane; butyloctyl salicylate; and an alkylene oxide derivative.
The 11,771,630 B2 patent claims 1-10 recite an oil-based cosmetic containing an ultraviolet protectant4-tert-butyl-4′-methoxy dibenzoyl methane; and (B) polyoxyalkylene/polyoxyethylene copolymer dialkyl ethers.
The 11,771,630 B2 patent claims 1-10 do not recite the composition further comprising butyloctyl salicylate.
This deficiency is cured by Friedman whose teachings are discussed above and applied in the same manner.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the recitation in the 11,771,630 B2 patent claims 1-10 and the teachings Friedman to add butyloctyl salicylate in the composition recited in the 11,771,630 B2 patent claims 1-10 for the benefit of reduced degradation of avobenzone and enhanced SPF. Butyloctyl salicylate being a SPF enhancer for reduced degradation of avobenzone was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for adding it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose with the added benefit.
The 11,771,630 B2 patent claims 1-10 do not recite the composition being water-in-oil emulsion.
This deficiency is cured by Iwami et al. who teach a sunscreen cosmetic being in forms of oil-based or water-in-oil emulsion (paragraph 56).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the recitation in the 11,771,630 B2 patent claims 1-10 and the teachings of Iwami et al. to modify the composition recited in the 11,771,630 B2 patent claims 1-10 to be water-in-oil emulsion. Both oil-based or water-in-oil emulsion are suitable sunscreen cosmetics was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for modifying flows from both forms having been used in the prior art, and from both forms being recognized in the prior art as useful for the same purpose with the added benefit.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same composition in view of Friedman.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 12/24/2025, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
No claims are allowed.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HONG YU/
Primary Examiner, Art Unit 1614