DETAILED ACTION
Status of Claims
Claims 1-24 are currently pending and are the subject of this Office Action. This is the first Office Action on the merits of the claims. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final
Claim Objections
The following claims are objected to because of the following informalities: Claim 11 is objected to because the claim should read:
11. The sunscreen or daily care composition according to claim 1,
wherein the sunscreen or daily care composition comprises at least one compound selected from the group consisting of benzotriazolyl dodecyl p-cresol
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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.
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 pre-AIA 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.
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 C.F.R. § 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 1-24 are rejected under 35 U.S.C. § 103 as being unpatentable over SCHLOSSMAN (US 2016/0271027 A1, Publ. Sep. 22, 2016; hereinafter, “Schlossman”), in view of HUGLIN (US 5,955,060, Issued Sep. 21, 1999; hereinafter, “Hüglin”) and MULLER (US 2010/0008873 A1, Publ. Jan. 14, 2010; hereinafter, “Müller”).
Schlossman is directed to:
ZINC OXIDE POWDER BLENDS, THEIR PRODUCTION AND USE
ABSTRACT
This disclosure provides sunscreen products that contain metal oxide powders having discrete size distributions. Metal oxide powders include, for example, zinc oxide and titanium dioxide. Sunscreen products made in accordance with the principles of this disclosure contain metal oxide powders having primary particle sizes of about 10-30 nm and about 50-200 nm.
Schlossman, title & abstract. In this regard, Schlossman teaches a UV-protective composition or sunscreen product having a total amount of metal oxide powders that is less than about 50% or even less than about 25%:
[0045] In a further aspect, the invention provides an UV-protective composition comprising a dispersion in a liquid vehicle of an effective amount of a first zinc oxide particulate component having a mean secondary particle size greater than about 180 nm and an effective amount of a second zinc oxide particulate component having a mean secondary particle size less than about 150 nm. As indicated above, the secondary particle size references the size of the particles in the dispersion. Particle sizes referenced herein are as determined by light scattering analysis, as described hereinafter unless otherwise indicated explicitly or by the context.
[…]
[0059] Desirably, the total amount of metal oxide powders in the sunscreen products is less than about 50% or even less than about 25%.
Schlossman, par. [0045] & [0059]. Schlossman also exemplifies a zinc oxide sunscreen formulation (“Blend 1”) and a zinc oxide with titanium dioxide sunscreen formulation (“Blend 2”):
EXAMPLE 2
Comparison of S1111scree11 Formulations
[0125] Two different metal oxide blends were formulated and compared as follows:
[0126] Blend 1. Blend 1 was made using a zinc oxide dispersion sold under catalogue number TNP50ZSI by Kobo Products, Inc. Catalog number TNP50ZSI contains 46.7% ZnO, by weight, having a primary particle size equal to about 20 nm. Blend 1 also incorporated a zinc oxide dispersion sold under catalogue number OHN73MZ by Kobo Products, Inc. Catalogue number OHN73MZ contains 70% ZnO having a primary particle size in the range between 15 and 35 nm.
[0127] Blend 1 was formulated to have an SPF of about 30 and protection against UV factor or PA of about 10. Blend 1 contained 19%, by weight, zinc oxide from catalogue number TNP50ZSI, resulting in a final concentration of about 9% ZnO having a 20 nm particle size, and about 21.3% ONH73MZ, resulting in a final concentration of about 15% ZnO in the 15-35 mm primary particle size range. The formulation was brought to 100% volume using Finsolv.
[…]
[0133] Blend 2. A titanium dioxide dispersion ON60T5L (Kobo Products, Inc.) contains 48.6% titanium dioxide with a primary particle size of about 35 nm. Blend 2 was formulated to have an SPF of about 30 and a PA of about 10. Blend 2 contained 12.3% of catalogue number ON60T5L, resulting in a final concentration of about 6% TiO2 of primary particle size 35 nm. By weight, 21.3% of Blend 2 consisted of zinc in the foml of catalogue number ONH73MZ. The formulation was brought to 100% volume using Finsolv.
[0134] Blend 1 and Blend 2 were tested for% light transmittance across the UV and visible spectrum. As shown in FIG. 2, Blend 1 which contains two different ZnO particle sizes provides more balanced UV protection and greater transparency to visible light than Blend 2 which contains zinc oxide and TiO2.
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Thus, 6% of 35 nm TiO2 provides too much whitening for a skin care product but is useful for other products in which whitening is desired or that are used merely for their protective properties.
Schlossman, par. [0125]-[0127] & [0133]-[0134], Ex. 2.
Regarding independent claims 1 and 19 and the requirements:
1. Sunscreen or daily care composition comprising
(i) bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine);
(ii) titanium dioxide;
(iii) zinc oxide; and
(iv) hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer.
[…]
19. A sunscreen or daily care composition comprising
(i) bis-ethylhexyloxyphenol methoxyphenyl triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine);
(ii) zinc oxide; and
(iii) hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer.
Schlossman clearly teaches a zinc oxide with titanium dioxide sunscreen formulation (“Blend 2”) (Schlossman, par. [0133], Ex. 2), WHEREBY it is noted:
a “titanium dioxide dispersion ON60T5L (Kobo Products, Inc.) contains 48.6% titanium dioxide with a primary particle size of about 35 nm” (Schlossman, par. [0133], Ex. 2) is “(ii) titanium dioxide” of claim 1; and
a “zinc in the foml of catalogue number ONH73MZ” (Schlossman, par. [0133], Ex. 2) is:
“(iii) zinc oxide” of claim 1, and
“(ii) zinc oxide” of claim 19.
However, Schlossman DOES NOT TEACH the instant requirements of:
(I) claims 1 and 19 for “(i) bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine)”; or
(II) claim 1 for “(iv) hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer” and claim 19 for “(iii) hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer.”
Based on the state of the art, an artisan of ordinary skill would have found each of these features obvious.
Regarding (I), Hüglin, for instance, is directed to:
BIS(RESORCINYL)TRIAZINES USEFUL AS SUNSCREENS IN COSMETIC PREPARATIONS
ABSTRACT
There are described bis(resorcinyl)triazines of the formula
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The compounds according to the invention are particularly suitable as sunscreens in cosmetic, pharmaceutical and veterinary medicinal preparations.
Hüglin, title & abstract. In this regard, Hüglin teaches cosmetic compositions containing 0.1 to 15, preferably 0.5 to 10% UV absorber by weight of the composition:
Besides the UV absorbers according to the invention, the cosmetic compositions can additionally contain one or more further UV-protective substances, e.g. triazines, oxanilides, triazoles or amides containing vinyl groups or cinnamides. Such protective substances are described, for example, in GB-A-2,286,774 or alternatively are known from Cosmetics & Toiletries (107), 50 et seq. (1992).
The cosmetic compositions according to the invention contain 0.1 to 15, preferably 0.5 to 10% by weight, based on the total weight of the composition, of a UV absorber or of a mixture of UV absorbers and a cosmetically compatible auxiliary.
(Hüglin, col. 8, ln. 52-63; wherein “UV absorber” is interpreted as referring to compounds of the formula in Hüglin’s abstract), and exemplifies “2,4-Bis{[4-(2-ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine”:
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(Hüglin, col. 9, ln. 36 to col. 11, ln. 10, Ex. 1), which is (I), as noted above.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art to combine Hüglin’s cosmetic composition (Hüglin, col. 8, ln. 52-63) containing “2,4-Bis{[4-(2-ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine” (Hüglin, col. 9, ln. 36 to col. 11, ln. 10, Ex. 1) with Schlossman’s a zinc oxide with titanium dioxide sunscreen formulation (“Blend 2”) (Schlossman, par. [0133], Ex. 2). One of ordinary skill in the art at the time the invention was made would have been motivated to so because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” (MPEP § 2144.06). In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). As the court explained in Crockett, the idea of combining them flows logically from their having been individually taught in prior art. Therefore, since the references teach that the compositions of Hüglin as well as Schlossman, are sunscreens (Hüglin, title & abstract; Schlossman, title & abstract), it would have been obvious to combine the two compounds with the expectation that such a combination would be effective as sunscreen compositions. Thus, combining them flows logically from their having been individually taught in prior art.
Therefore, the prior art renders (I) obvious.
Regarding (II), Müller, for instance, is directed to:
USE OF BENZOTRIAZOLE DERIVATIVES
ABSTRACT
Use of benzotriazole derivatives of formula (1), wherein R1 is C1-C30alkyl; C1C5alkoxy; C1-C5alkoxycarbonyl; C5-C7cycloalkyl; C6-C10aryl; aralkyl; —SO3M; a radical of formula (1a) R3 is hydrogen; C1C5alkyl; C1C5alkoxy; halogen, preferably Cl; or hydroxy; R4 and R5 are each independently of the other hydrogen; or d-C5alkyl; m is 1 or 2; n is O or 1; if m=1, R2 is hydrogen; unsubstituted or phenyl-substituted d-C1-C12alkyl; or C6-C10aryl; if m=2, R2 is the direct bond; or —(CH2)p—; and p is 1 to 3; for enhancing the photostability of cosmetic or dermatologic compositions comprising at least one further organic UV absorber.
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Müller, title & abstract. In this regard, Müller teaches suitable compositional additives (Müller, par. [0200]-[0218]), inter alia, “Consistency Regulators/Thickeners and Rheology Modifiers” such as “Simulgel EG (hydroxyethyl acrylate/sodium acryloyidimethyl taurate copolymer)” (Müller, par. [0203], which is (II), as noted above) and suitable amounts thereof in exemplary embodiments including “O/W systems” with “Thickeners (water swellable thickeners) 0.5%-1.5%,” and “G Aqueous” with “Synthetic Thickener 0.3%-1.3%” (Müller, par. [0253]).
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the combined composition of Schlossman per Hüglin (as discussed above) with “Simulgel EG (hydroxyethyl acrylate/sodium acryloyidimethyl taurate copolymer)” per Müller (Müller, par. [0203]). One would have been motivated to do so in order to incorporate the advantage of “Consistency Regulators/Thickeners and Rheology Modifiers” (Müller, par. [0203]) suitable for a photostabilisation composition (Müller, title & abstract).
Therefore, the prior art renders (I) obvious.
Thus, the prior art renders claims 1 and 19 obvious.
Regarding claims 2-4, 9-10, 12-14, 20-22 and 24 and the requirements:
2. The sunscreen or daily care composition according to claim 1,
wherein the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer is present in the sunscreen or daily care composition in an amount of from 0.6 to 3.0% by weight, based on the composition.
3. The sunscreen or daily care composition according to claim 1,
wherein the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer is present in the sunscreen or daily care composition in an amount of from 0.6 to 2.0% by weight, based on the composition.
4. The sunscreen or daily care composition according to claim 1,
wherein the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer is present in the sunscreen or daily care composition in an amount of from 1.0 to 2.0% by weight, based on the composition.
[…]
9. The sunscreen or daily care composition according to claim 1,
wherein the weight ratio of the sum of titanium dioxide and zinc oxide to the bis-ethylhexyloxyphenol methoxyphenyl triazine is in the range of 1:1 to 20:1.
10. The sunscreen or daily care composition according claim 1,
wherein the weight ratio of the titanium dioxide to the zinc oxide is in the range of 4:1 to 1:3.
[…]
12. The sunscreen or daily care composition according to claim 1, comprising titanium dioxide and zinc oxide in an amount of 1 to 35 wt.-%, based on the total amount of the sunscreen or daily care composition.
13. The sunscreen or daily care composition according to claim 1, comprising
(i) bis-ethylhexyloxyphenol methoxyphenyl triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine) in an amount of 1 to 10 wt.-%;
(ii) titanium dioxide in an amount of 2 to 20 wt.-%;
(iii) zinc oxide in an amount of 1 to 20 wt.-%; and
(iv) hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer in an amount of 0.3 to 2.0 wt.-%;
each based on the total weight of the sunscreen or daily care composition.
14. The sunscreen or daily care composition according to claim 1, wherein the sunscreen or daily care composition comprises a total of 5 to 40 wt.-% of UV filters, based on the total weight of the sunscreen or daily care composition.
[…]
20. The sunscreen or daily care composition according to claim 16,
wherein the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer is present in the sunscreen or daily care composition in an amount of from 0.6 to 3.0% by weight, based on the composition.
21. The sunscreen or daily care composition according to claim 16,
wherein the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer is present in the sunscreen or daily care composition in an amount of from 0.6 to 2.0% by weight, based on the composition.
22. The sunscreen or daily care composition according to claim 16,
wherein the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer is present in the sunscreen or daily care composition in an amount of from 1.0 to 2.0% by weight, based on the composition.
[…]
24. The sunscreen or daily care composition according to claim 1, comprising
(i) bis-ethylhexyloxyphenol methoxyphenyl triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine) in an amount of 1 to 10 wt.-%;
(ii) zinc oxide in an amount of 1 to 20 wt.-%; and
(iv) hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer in an amount of 0.6 to 3.0 wt.-%;
each based on the total weight of the sunscreen or daily care composition.
it is noted that:
Hüglin teaches cosmetic compositions containing 0.1 to 15 UV absorber by weight of the composition (Hüglin, col. 8, ln. 52-63), wherein the UV absorber is “2,4-Bis{[4-(2-ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine” (Hüglin, col. 9, ln. 36 to col. 11, ln. 10, Ex. 1);
Schlossman teaches that “[d]esirably, the total amount of metal oxide powders in the sunscreen products is less than about 50% or even less than about 25%” (Schlossman, par. [0059]), e.g., “a desirable proportion of the two-component zinc oxide material of the invention may comprise from about 0.1 percent to about 50 percent by weight of the end product.” (Schlossman, par. [0099]), and an exemplary formulation containing “6% TiO2” (Schlossman, par. [0133], Ex. 2); and
Müller teaches “Consistency Regulators/Thickeners and Rheology Modifiers” such as “Simulgel EG (hydroxyethyl acrylate/sodium acryloyidimethyl taurate copolymer)” (Müller, par. [0203], which is (II), as noted above) and suitable amounts thereof in exemplary embodiments including “O/W systems” with “Thickeners (water swellable thickeners) 0.5%-1.5%,” and “G Aqueous” with “Synthetic Thickener 0.3%-1.3%” (Müller, par. [0253]).
Schlossman teaches suitable ratios of first metal oxide powder to second metal oxide powder:
[0056] In other embodiments, the ratio by weight of the first metal oxide powder to the second metal oxide powder is about 1:3 to about 3: 1, or about 1: 1.6 to about 1: 1.
(Schlossman, par. [0056]), whereby varying the relative proportion of larger particles in one component to smaller particles in the other can adjust and control the balance of “UVA- to DVB-protective properties”:
[0093] By varying the relative proportion of one zinc oxide component to the other, for example the ratio of, the balance of UVA- to DVB-protective properties can be adjusted or controlled. By appropriate selection of initial ingredient particle size, and control of aggregation and agglomeration, the wavelength or wavebands of peak efficacy can be more or less selected. These capabilities provide a formulator with a wide range of options to tailor their products to current and evolving market needs, which needs can be expected to vary as new scientific and other knowledge is acquired.
(Schlossman, par. [0056], wherein “balance of UVA- to DVB-protective properties” is interpreted as a balance of UVA- to UVB-protective properties), which relates to zinc oxide as well as titanium dioxide:
[0128] In accordance with preferred embodiment, for both powder and for liquid dispersions, and for zinc oxide as well as titanium dioxide, the preferred ratio of UV A blocking ingredient to UVB blocking ingredient is thus about 5 to 3, or 1.66 to 1. However, acceptable products may be achieved with ratios varying between 2: 1 and 1:2.
(Schlossman, par. [0128]). In this respect, it is further noted, “[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); and also MPEP § 2144.05(II)(A). In the instant case, varying the relative proportion of larger particles in one component to smaller particles in the other can adjust and control the balance of UVA- to UVB-protective properties (Schlossman, par. [0056]) is clearly a result-effective variable. Therefore, it would have been customary for an artisan of ordinary skill to select suitable amounts of:
0.1 to 15 UV absorber by weight of the composition (Hüglin, col. 8, ln. 52-63), wherein the UV absorber is “2,4-Bis{[4-(2-ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine” (Hüglin, col. 9, ln. 36 to col. 11, ln. 10, Ex. 1); and
A “total amount of metal oxide powders in the sunscreen products [that] is less than about 50% or even less than about 25%” (Schlossman, par. [0059], e.g., “a desirable proportion of the two-component zinc oxide material of the invention may comprise from about 0.1 percent to about 50 percent by weight of the end product.” (Schlossman, par. [0099]), and an exemplary formulation containing “6% TiO2” (Schlossman, par. [0133], Ex. 2));
in optimizing for a “preferred ratio of UV A blocking ingredient to UVB blocking ingredient [that] is thus about 5 to 3, or 1.66 to 1,” or “ratios varying between 2: 1 and 1:2” (Schlossman, par. [0128]), thereby rendering the range and ratio requirements of claims 2-4, 9-10, 12-14, 20-22 and 24 obvious. See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges.
Thus, the prior art renders claims 2-4, 9-10, 12-14, 20-22 and 24 obvious.
Regarding claims 5-6 and the requirements:
5. The sunscreen or daily care composition according to claim 1,
wherein the titanium dioxide has a number-average elementary particle diameter of less than 1000 nm.
6. The sunscreen or daily care composition according to claim 1,
wherein the zinc oxide has a number-average elementary particle diameter of less than 1000 nm.
Schlossman teaches a composition containing “[m]etal oxide powders [that] include, for example, zinc oxide and titanium dioxide,” wherein the “[s]unscreen products made in accordance with the principles of this disclosure contain metal oxide powders having primary particle sizes of about 10-30 nm and about 50-200 nm.” Schlossman, abstract. In this regard, it is noted that MPEP § 2144.05 (I), states, “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).”
Thus, the prior art renders claims 5-6 obvious.
Regarding claims 7-8 and the requirements:
7. The sunscreen or daily care composition according to claim 1, wherein the titanium dioxide is coated.
8. The sunscreen or daily care composition according to claim 1,
wherein the zinc oxide is uncoated or coated.
Schlossman teaches that the metal oxide powders may be uncoated or coated:
[0060] The metal oxide powders may, individually, be uncoated, coated with another metal oxide coating ( e.g., alumina and/or silica), a hydrophobic surface treatment (e.g., a polysiloxane), or a hydrophilic surface treatment.
Schlossman, par. [0060].
Thus, the prior art renders claims 7-8 obvious.
Regarding claim 11 and and the requirements:
11. The sunscreen or daily care composition according to claim 1,
wherein the sunscreen or daily care composition comprises at least one compound selected from the group consisting of benzotriazolyl dodecyl p cresol, ethylhexyl methoxycrylene, polyester-8, diethylhexyl syringylidenemalonate, trimethoxybenzylidene pentanedione, diethylhexyl 2,6-naphthalate, a fused ring cyanoacrylate derivative, polyester-25, and combinations thereof.
Schlossman DOES NOT TEACH “i) bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine)” as required by claims 11 and 16 since the incorporation thereof is well within the purview of the ordinarily skilled artisan. Müller, for instance, is directed to the use of benzotriazole derivatives (Müller, title & abstract), inter alia, “Benzotriazolyl Dodecyl p-Cresol” (Müller, p. 20, table), which is “benzotriazolyl dodecyl p cresol” of claim 11. In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the combined composition of Schlossman per Hüglin (as discussed above) with “Benzotriazolyl Dodecyl p-Cresol” per Müller (Müller, p. 20, table). One would have been motivated to do so in order to incorporate the advantage of “benzotriazole derivatives of formula (1)” for “enhancing the photostability of cosmetic or dermatologic compositions comprising at least one further organic UV absorber” (Müller, abstract).
Thus, the prior art renders claim 11 obvious.
Regarding claim 15-17, it is noted that the requirements:
15. The sunscreen or daily care composition according to claim 1, providing a SPF of more than 15 or a SPF of more than 50 or a SPF of more than 90.
16. The sunscreen or daily care composition according to claim 1, providing a higher SPF value than a comparison sunscreen or daily care composition comprising a different UV filter instead of bis-ethylhexyloxyphenol methoxyphenyl triazine, wherein the comparison sunscreen or daily care composition comprises the different UV filter, the titanium dioxide, and the zinc oxide in equal amounts as the sunscreen or daily care composition according to claim 1.
17. The sunscreen or daily care composition according to claim 1, providing a photostability of more than 85%.
appear to be functional limitations. In this regard, it is noted that the structure, material or act in the claim that is connected to (i.e., performs) the recited function is the combination of recited elements of claim 1, which achieve the resulting SPF and photostability effects. Therefore, the broadest reasonable interpretation (see MPEP § 2111 with respect to broadest reasonable interpretation) of the functional language is: intended SPF and photostability effects of a composition that meets the structural requirements of claim 1. Because this functional language merely recites the intended result of the recited structural limitations, it imposes no patentable distinction on the claim (i.e., the functional language is not further limiting beyond the noted structural limitations). Therefore, one of ordinary skill in the art would understand that a composition meeting the structural requirements of claim 1 will achieve the intended result of the functional limitations and fall within the boundaries of the claims. Further, Hüglin teaches “2,4-Bis{[4-(2-ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine” (Hüglin, col. 9, ln. 36 to col. 11, ln. 10, Ex. 1), i.e., “Compound of the formula (101)” as having a “high photostability and a good sunscreen factor [that] can be achieved even at low concentration” (Hüglin, col. 21, ln. 55 to col. 22, ln. 41, Ex. 11), while Schlossman teaches a sunscreen product that “provides an SPF of at least 30” (Schlossman, claim 10). Since Schlossman teaches varying the relative proportion of larger particles in one component to smaller particles in the other can adjust and control the balance of UVA- to UVB-protective properties (Schlossman, par. [0056]) as a result-effective variable, it reasonably follows that SPF and photostability are optimizable in order to meet the requirements of claim 15-17.
Thus, the prior art renders claim 15-17 obvious.
Regarding claims 18 and 23 and the requirements:
18. The sunscreen or daily care composition according to claim 1,
wherein the sunscreen or daily care composition does not comprise an emulsifier.
[…]
23. The sunscreen or daily care composition according to claim 16,
wherein the sunscreen or daily care composition does not comprise an emulsifier.
Schlossman’s exemplary composition are in the form of dispersions in “Finsolv” (Schlossman, par. [0125]-[0127] & [0133]-[0134], Ex. 2), which appear to meet the requirements of claims 18 and 23 for a composition that “does not comprise an emulsifier.”
Thus, the prior art renders claims 18 and 23 obvious.
Claim Rejections - Nonstatutory 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 1-24 are provisionally rejected on the ground of nonstatutory double patenting over claims 21-25 and 27-40 of copending Application No. 17/961,869 (‘869 Application), in view of the disclosure of MULLER (US 2010/0008873 A1, Publ. Jan. 14, 2010; hereinafter, “Müller”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a sunscreen composition containing bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide. However, to the extent that ‘869 Application DOES NOT TEACH the requirements of the instant claims for hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, the incorporation thereof is well within the purview of the ordinarily skilled artisan per Müller. In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the composition of the ‘869 Application with “Simulgel EG (hydroxyethyl acrylate/sodium acryloyidimethyl taurate copolymer)” per Müller (Müller, par. [0203]). One would have been motivated to do so in order to incorporate the advantage of “Consistency Regulators/Thickeners and Rheology Modifiers” (Müller, par. [0203]) suitable for a photostabilisation composition (Müller, title & abstract).
Thus, the ‘869 Application per Müller render claims 1-24 obvious.
Claims 1-24 are provisionally rejected on the ground of nonstatutory double patenting over claims 24-46 of copending Application No. 18/689,457 (‘457 Application), in view of the disclosure of MULLER (US 2010/0008873 A1, Publ. Jan. 14, 2010; hereinafter, “Müller”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a sunscreen composition containing bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide. However, to the extent that ‘457 Application DOES NOT TEACH the requirements of the instant claims for hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, the incorporation thereof is well within the purview of the ordinarily skilled artisan per Müller. In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the composition of the ‘457 Application with “Simulgel EG (hydroxyethyl acrylate/sodium acryloyidimethyl taurate copolymer)” per Müller (Müller, par. [0203]). One would have been motivated to do so in order to incorporate the advantage of “Consistency Regulators/Thickeners and Rheology Modifiers” (Müller, par. [0203]) suitable for a photostabilisation composition (Müller, title & abstract).
Thus, the ‘457 Application per Müller render claims 1-24 obvious.
Claims 1-5, 7, 11 and 15-23 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-3, 5, 7, 10-12 and 15 of copending Application No. 18/797,592 (‘592 Application), in view of the disclosure of MULLER (US 2010/0008873 A1, Publ. Jan. 14, 2010; hereinafter, “Müller”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a sunscreen composition containing bis-ethylhexyl methoxyphenyloxyphenol triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine), titanium dioxide, and zinc oxide. However, to the extent that ‘592 Application DOES NOT TEACH the requirements of the instant claims for hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, the incorporation thereof is well within the purview of the ordinarily skilled artisan per Müller. In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the composition of the ‘592 Application with “Simulgel EG (hydroxyethyl acrylate/sodium acryloyidimethyl taurate copolymer)” per Müller (Müller, par. [0203]). One would have been motivated to do so in order to incorporate the advantage of “Consistency Regulators/Thickeners and Rheology Modifiers” (Müller, par. [0203]) suitable for a photostabilisation composition (Müller, title & abstract).
Thus, the ‘592 Application per Müller render claims 1-5, 7, 11 and 15-23 obvious.
Claims 6, 8-10, 12-14 and 24 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-3, 5, 7, 10-12 and 15 of copending Application No. 18/797,592 (‘592 Application), in view of the disclosure of MULLER (US 2010/0008873 A1, Publ. Jan. 14, 2010; hereinafter, “Müller”), as applied to claims 1-5, 7, 11 and 15-23, above, and further in view of the disclosure of SCHLOSSMAN (US 2016/0271027 A1, Publ. Sep. 22, 2016; hereinafter, “Schlossman”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
The teachings of the ‘592 Application and Müller as set forth above are hereby incorporated. However, to the extent that the references DO NOT EXPRESSLY TEACH the the instant requirements for zinc oxide particle size (claim 6), coated or uncoated zinc oxide (claim 8) and amounts of zinc oxide for ratios relating to ratios thereof (claims 9-10, 12-14 and 24), Schlossman teaches:
a composition containing “[m]etal oxide powders [that] include, for example, zinc oxide and titanium dioxide,” wherein the “[s]unscreen products made in accordance with the principles of this disclosure contain metal oxide powders having primary particle sizes of about 10-30 nm and about 50-200 nm” (Schlossman, abstract);
metal oxide powders may, individually, be uncoated, coated with another metal oxide coating ( e.g., alumina and/or silica), a hydrophobic surface treatment (e.g., a polysiloxane), or a hydrophilic surface treatment (Schlossman, par. [0060]); and
“[d]esirably, the total amount of metal oxide powders in the sunscreen products is less than about 50% or even less than about 25%” (Schlossman, par. [0059]), e.g., “a desirable proportion of the two-component zinc oxide material of the invention may comprise from about 0.1 percent to about 50 percent by weight of the end product.” (Schlossman, par. [0099]), and an exemplary formulation containing “6% TiO2” (Schlossman, par. [0133], Ex. 2) for suitable ratios of first metal oxide powder to second metal oxide powder (Schlossman, par. [0056], which teaches “the ratio by weight of the first metal oxide powder to the second metal oxide powder is about 1:3 to about 3: 1, or about 1: 1.6 to about 1: 1”) for varying the relative proportion of larger particles in one component to smaller particles in the other can adjust and control the balance of “UVA- to UVB-protective properties” (Schlossman, par. [0056]).
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the composition of the the ‘592 Application and Müller per Schlossman in order to obtain the advantage of a suitable size, and coating and amount for the purpose of obtaining a sunscreen. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘592 Application per Müller and Schlossman render claims 6, 8-10, 12-14 and 24 obvious.
Conclusion
Claims 1-24 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611