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
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-18 drawn to a sunscreen composition comprising: (a) about 0.01 wt.% to about 20 wt.% of avobenzone; (b) about 0.01 wt.% to about 20 wt.% of benzyl o-toluate; and (c) about 0.01 wt.% to about 95 wt.% of at least one additive.
Group II, claim(s) 19-20 drawn to a method for solubilizing and photostabilizing avobenzone in a sunscreen composition comprising avobenzone, the method comprising adding about 0.01 wt.% to about 20 wt.% of benzyl o-toluate to the composition to stabilize the avobenzone against photodegradation and to effectively solubilizes avobenzone.
Group III, claim(s) 21-22, drawn to a method for protecting the skin against UV radiation comprising, applying to the skin an effective amount of a sunscreen composition of claim 1.
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Species 1) a specific UV screening and physical sun blocker;
Species 2) a specific additive; and
Species 3) a specific form of the composition.
Applicant is required, in reply to this action, to elect a single disclosed species from each of the above categories 1) through 3) to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: claims 1-22.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Inventions I -III lack unity of invention because even though the inventions of these groups require the technical feature of a sunscreen composition comprising avobenzone, benzyl o-toluate and at least one additive, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Bertz et al. (US PG Pub. 2005/0152858A1) which teaches that the compositions containing an active or functional organic compound (avobenzone in the instant case as disclosed in the abstract) requires solubilization, and more particularly, such compositions are effectively solubilized by addition of a diaryl organic compound containing a polar or polarizable functional group as solvent, cosolvent or additive, see [0003] and [0012]. The active is solubilized in an amount of at least 10%, 20% or 30%ww/ with the solubilizer, see [0032]. The solubilizer is Bertz teaches benzyl o-toluate and preservative has been added as an additive, see [0047] and Example 30. Thus, there exists lack of unity amongst the inventions because the claimed invention is known in the art and does not contribute to the prior art as discussed above.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Nathalie Tietcheu on 12/02/25 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-18. Applicant’s election of species as titanium dioxide as (a UV screening agents and physical sun blockers), water as (an additive or liquid carriers) and an oil-in-water emulsion as (a form of the composition) is also acknowledged. Claims 1-7, 14 and 18 read on the elected species, therefore, claims 1-7, 14 and 18 are under prosecution. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-13, 15-17 and 19-22 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention/election.
Claim Rejections - 35 USC § 112, indefiniteness
The following is a quotation of 35 U.S.C. 112(b):
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 3-4 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 pre-AIA the applicant regards as the invention.
Claim 3 recites the limitation oxyethylene(25mol) within parenthesis which makes the claim indefinite because it is not clear whether the amount 25 mol is needed or not. Claim 3 also recites (and) within parenthesis for titanium dioxide and zinc oxide. Claim 4 recites zinc oxide (and) and titanium dioxide (and) within parenthesis. The parenthetical recitations as stated above makes the claim indefinite because it is unclear if the text within the parenthesis are alternative limitations of the claims or merely descriptors of other elements of the claims.
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.
Claims 1-7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bertz et al. (US PG Pub. 2005/0152858A1).
Bertz et al. discloses solubilizing agents for active or functional organic compounds, see title. Bertz et al. teaches an active or functional organic compound is solubilized in a diaryl organic compound having a polar or polarizable functional group therein, as a solvent, cosolvent or additive, to form a composition thereof. Representative active or functional organic compounds include those present in personal care products, e.g., sunscreens containing UVA/UVB absorbing compounds, such as avobenzone, benzophenone-3, and 4-methylbenzylidene camphor. Such compositions also show increased SPF, UVA/UVB absorbance ratio, and critical wavelength performance properties, see abstract.
Bertz et al. teaches that an object of the invention is to provide a sunscreen composition comprising active UVA and/or UVB compounds, see [0012]. The amount of Escalol 517 (Avobenzone) taught in Example 30 is 3.0%w/w, see ([0088], example 30). This amount overlaps with the claimed amount of 0.01 wt% to about 20 wt.% of claim 1 and thus creates a case of obviousness because in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
Bertz et al. teaches that the compositions containing an active or functional organic compound (avobenzone in the instant case as disclosed in the abstract) requires solubilization, and more particularly, such compositions are effectively solubilized by addition of a diaryl organic compound containing a polar or polarizable functional group as solvent, cosolvent or additive, see [0003] and [0012]. The active is solubilized in an amount of at least 10%, 20% or 30%w/w with the solubilizer, see [0032]. Use of water is taught in table 3 (reading on liquid carriers of claims 7 and 14).
Bertz teaches benzyl o-toluate as a solvent because it is a diaryl organic compound containing a polar or polarizable functional group which satisfies the formula for the ideal solubilizer compound as disclosed in paragraphs [0034]-[0041], which is shown below:
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Wherein G=polar or polarizable functional group (e.g., ester, amide, carbonate, carbamate, urea, carbinyl, oxa, oxo, alkylidene, silyl, sulfonyl, sulfoxyl, phosphonyl, phosphinyl, etc., or thio derivatives thereof);
Xc, Yd=G or heteroatom and any attached groups (e.g., O, S, or NRq, etc.);
a, b=1-5;
c, d=0-2;
and as disclosed in paragraph [0047]-[0048], wherein the preferred compounds have the formula:
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where A and Y are as defined above, and g=1-3; Benzyl o-toluate satisfies the formula in paragraph [0047], wherein A=CH3, a=1, g=1 and d=0). (Thus, the reference teaches the above shown compound which reads on the claimed benzyl o-toluate of instant claim 1, subsection (b)).
The prior art thus teaches the claimed active ingredient avobenzone, solubilizer benzyl o-toluate and additives such as UV screening agent and preservatives in a sunscreen composition and it involves picking and choosing of the above components from various embodiments of the invention. This combination is not in a single embodiment. However, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results of making a sunscreen composition comprising avobenzone, benzyl o-toluate and at least one additive, see MPEP 2143 part (I)(A).
Additionally, Bertz et al. teaches that a preferred compound is 1-phenylethyl o-toluate (see paragraph [0049]) and see the structure of 1-phenylethyl o-toluate in Chart 1), which is separated from benzyl o-toluate by one methyl group as shown below:
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Thus, the claimed compound benzyl o-toluate is a homolog of the compound 1-phenylethyl o-toluate shown above by comprising hydrogen in place of the methyl group of 1-phenylethyl o-toluate. It is held that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979), see MPEP 2144.09 (i) and (II). Stated alternatively, obviousness may be based solely upon structural similarity (an established structural relationship between a prior art compound and the claimed compound, as with homologs). See In re Duel, 51 F.3d 1552, 1559 (Fed. Cir. 1995). The necessary motivation to make the claimed compound, and thus the prima facie case of obviousness, arises from the reasonable expectation that compounds similar in structure will have similar properties. In re Gyurik, 596 F.2d 1012, 1018 (CCPA 1979). See also In re Henze, 85 USPQ 261 (CCPA 1950); Ex parte Blustone, 135 USPQ 199 (POBA 1961) (alkyl and H are obvious); In re Lohr, 137 USPQ 548, 549 (CCPA 1963)(H and methyl are obvious variants).
It would, therefore, have been obvious to one of ordinary skill in the art to test the solubility of avobenzone in benzyl o-toluate which is an obvious variant or homolog of the taught compound 1-phenylethyl o-toluate(varying by having hydrogen in place of methyl of the taught compound) by performing routine experimentation in order to improve the solubility parameters of avobenzone used in the sunscreen formulation taught by Bertz et al. Further, it would have been obvious to one of ordinary skill in the art to optimize the amount of benzyl o-toluate in the composition by routine experimentation in order to improve the performance of the sunscreen composition and the dissolution characteristics of avobenzone in the formulation.
Bertz et al. further teaches use of an additive a UV screening agent and physical sun blockers, octisalate, see Example 30 on paragraph [0088] disclosed as Escalol 587 (octisalate) in 5%w/w and this amount overlaps with the claimed amount of 0.01wt.% to about 25 wt.% of at least one UV screening agent, physical sun blocker as claimed in instant claim 2 and thus creates a case of obviousness because in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
Bertz et al. teaches use of an additive as a preservative, Liquapar Optima (phenoxyethanol and methylparaben, isopropylparaben and isobutylparaben and butylparaben) in 1.0% wt, see (Example 30 in [0088], reads on the claimed at least one additive of claims 1, 7 and preservatives of claim 11). The amount of preservative taught is 1.0 wt.% which overlaps with the claimed amount of at least one additive of about 0.01 wt.% to about 95 wt.% of instant claim 1 and thus creates a case of obviousness. Since the reference makes obvious the use of benzyl o-toluate, it would appear reasonable to conclude that it will be capable of being used as a solubilizing agent for bis-ethylhexyloxyphenol methoxyphenol triazine because property cannot be separated from the chemistry of the compound. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see (MPEP 2112.02 (II)).
Claims 1-7, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bertz et al. (US PG Pub. 2006/0078514A); as evidenced by Bertz et al. (US PG Pub. 2005/0152858A1) and (Chem Spider search Benzyl o-toluate structure attached).
Bertz et al. discloses a sunscreen composition, see title. Bertz teaches that the composition includes UV-B active whose SPF rating is boosted by the presence of 2-phenylethyl toluate, see [0010]. The use of UV-A compound avobenzone is taught in [0078]. Example 3 in [0087] discloses an oil-in water emulsion sunscreen composition comprising 50.95% w/w water, 3.0% of Escalol 517, which is avobenzone (see [0084]) and X-Tend.TM. 226 (2-phenylethyl benzoate).
Anhydrous oil sunscreen composition is also disclosed comprising avobenzone and UV screening agent/physical blocker such as Escalol (octisalate) in 5.0% in example 1. The composition can be formulated as emulsions including oil-in-water, cream, lotions and spray, see [0063]. This amount overlaps with the claimed amount and thus creates a case of obviousness because in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
The sunscreen composition can comprise physical blocker such as titanium dioxide, see [0011]. The reference teaches that at least one of the subject UV-A and/or UV-B sunscreens is advantageously formulated into the compositions of the invention in amounts ranging from about 0.1% to about 10%, and preferably from about 1% to about 6%, by weight thereof. Of course, depending upon the nature of the particular formulation, higher or lower amounts may be suitable, see [0062]. This amount overlaps with the claimed amount and thus creates a case of obviousness in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
Bertz et al. teaches that sunscreen compositions containing active UV-A and UV-B compounds, e.g., avobenzone (UV-A) and benzophenone-3 (UV-B) are used in this invention. Other UV filter actives that may be employed in the present inventive compositions include bis-ethylhexyloxyphenol methoxyphenol triazine, see [0078].
Bertz et al. teaches that Examples 1-4 describe typical sunscreen formulations with and without X-Tend.TM. 226 (2-phenylethyl benzoate) present therein. The results show that the presence of X-Tend.TM. 226 increases the SPF factor of the formulation, see [0080].
Bertz et al. teaches that the sunscreen compositions which include a UV-B active whose SPF rating is boosted by the presence in the composition of a phenylethyl, benzyl or substituted benzyl ester, which are arylcarboxylic esters of 2-phenylethyl alcohol, 1-phenylethyl alcohol, benzyl alcohol or substituted benzyl alcohol. Representative esters include 2-phenylethyl benzoate, 1-phenylethylbenzoate and 2-phenylethyl toluate, see [0010]. The structure of 2-phenylethyl toluate is shown below as evidenced by Bertz et al. (US PG Pub. 2005/0152858A1) discussed above.
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As evidenced by Chem Spider search attached, the structure of the claimed compound in subsection (b) benzyl o-toluate is as shown below:
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The difference between the claimed compound and 2-phenylethyl toluate is that the taught compound comprises an additional -CH2 methylene group and thus will be considered a structurally similar compound (homolog compound).
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.), see MPEP 2144.09.
It is held that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979), see MPEP 2144.09 (I) and (II). When chemical compounds have “very close” structural similarities and similar utilities, without more a prima facie case may be made. In re Wilder, 563 F.2d 457 (CCPA 1957). See also In re Payne, 203 USPQ 245 (CCPA 1979).
Stated alternatively, obviousness may be based solely upon structural similarity (an established structural relationship between a prior art compound and the claimed compound, as with homologs). See In re Duel, 51 F.3d 1552, 1559 (Fed. Cir. 1995). The necessary motivation to make the claimed compound, and thus the prima facie case of obviousness, arises from the reasonable expectation that compounds similar in structure will have similar properties. In re Gyurik, 596 F.2d 1012, 1018 (CCPA 1979). See also In re Henze, 85 USPQ 261 (CCPA 1950); Ex parte Blustone, 135 USPQ 199 (POBA 1961) (alkyl and H are obvious); In re Lohr, 137 USPQ 548, 549 (CCPA 1963)(H and methyl are obvious variants).
It would have been therefore obvious to one of ordinary skill in the art to have utilized the structurally similar compound benzyl o-toluate in a sunscreen composition of Bertz et al. along with UV-A avobenzone. One of ordinary skill would have been motivated to do so because Bertz teaches that the compounds such as X-Tend.TM. 226 (2-phenylethyl benzoate) and 2-phenylethyl toluate help in boosting SPF of the composition. Since benzyl o-toluate is structurally similar to the taught compound 2-phenylethyl toluate as discussed above, one of ordinary skill would have utilized the same in the sunscreen composition with an expectation of obtaining similar SPF boosting effect.
The prior art teaches and suggests the claimed active ingredient avobenzone, benzyl o-toluate, titanium dioxide, water as liquid carriers and additives such as UV screening agent and preservatives in a sunscreen composition. This combination is not in a single embodiment. However, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results of making a sunscreen composition comprising avobenzone, benzyl o-toluate and at least one additive, see MPEP 2143 part (I)(A).
Claims 7, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bertz et al. (US PG Pub. 2005/0152858A1) in view of Huerta et al. (US PG Pub. 2004/0247543A1).
Bertz et al. do not teach use of an additive which is an emulsifier liquid carrier as water, and sunscreen composition in the form of oil-in-water emulsion.
Huerta teaches a sunscreen composition, see title and paragraph [0003]. The sunscreen composition is stable and is provided as an oil-in-water emulsion comprising at least one sunscreen agent and an emulsifier, water, emollient, film former, chelating agent, see [0016]. The emulsifiers act to stabilize the composition, see [ 0027]. The emulsifier taught is glyceryl stearate, see [0028]. Cetyl alcohol in [0028], (reads on the claimed emollients). Also see [0032] for emollients. pH adjuster sodium hydroxide is taught in [0037]. Chelating agent trisodium ethylenediaminetetraacetic acid is taught in [0037]. Suitable humectants such as glycerin and polyethylene glycol are taught in [0039]. Film former and water proofing agents is taught in [0041]. Rheology modifiers are taught in [0044-0045]. Titanium dioxide is taught in [0055], table 2.
The reference teaches that the sunscreen composition of the present invention is uniquely formulated to provide an enhanced feeling of softness and silkiness when the sunscreen composition is applied to the skin. Moreover, the composition is capable of being easily and uniformly applied over the skin. These enhanced properties are achieved by formulating the sunscreen composition as a stable oil-in-water emulsion, where the oil phase has an amount of glucoside emulsifier so that the unexpected soft, silky properties are realized when the sunscreen is applied to the skin, see [0017]. The Sunscreen compositions comprise (a) about 0.01 wt.% to about 20 wt.% of avobenzone (para [0015] and para [0019]. The preferred sunscreen agents are avobenzone; see [0020]. The one or more sunscreen agents are included in a present composition at about 1 weight percent (wt. %) to about 40 wt. % of the total weight of the composition); (b) water, see ([0016]. The composition has at least one sunscreen agent and at least one glucoside emulsifier. The composition also has water), and (c) about 0.01 wt.% to about 95 wt.% of an emulsifier (para [0025]. The amount of glucoside emulsifier present in a sunscreen composition of the present invention is about 0.05 wt. % to about 10 wt. % of the total weight of the composition), wherein the composition is provided as an oil-in water emulsion (paragraph [0016].
It would have been obvious to one of ordinary skill in the art to provide the composition taught by Bertz as an oil-in-water emulsion including water and the emulsifier in order to provide a sunscreen having an enhanced feeling of softness and silkiness when the sunscreen composition is applied to the skin (para [0017]. Therefore, all of the claimed elements water as liquid carrier and formulation in the form of oil-in-water in a sunscreen composition were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). Generally, it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for same purpose, in order to form a third composition to be used for the very same purpose. The idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06. Moreover, where it would have been obvious to have combined individually known ingredients, evidence must be provided establishing that appellant’s combination of agents is in some way more effective or in some way different than any single member of that combination in order to rebut that prima facie case. See In re Dial, 140 USPQ 244 (C.C.P.A. 1964).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SNIGDHA MAEWALL whose telephone number is (571)272-6197. The examiner can normally be reached Monday thru Friday; 8:30 AM to 5PM.
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612