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 .
Applicants' arguments, filed 05/21/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 103
Claim(s) 1-20 stand rejected under 35 U.S.C. 103 as being unpatentable over Nurse et al. (US Patent Pub. 2013/0028853) in view of Backman et al. (WO2020086755).
Rejection
Nurse et al. disclose a composition comprising a plurality of photo stabilizers that enhance SPF values of the composition (ABSTRACT). Nurse et al. disclose a spray sunscreen composition comprises alcohol at a concentration of 61.25 %; a film former, acrylates/octylacrylamide copolymer at a concentration of 2.5%; butyloctyl salicylate at a concentration of 8 %; octisalate, avobenzone and octocrylene; and polyester-8 at a concentration of 6% (TABLE 4). The composition of Nurse et al. is free from octinoxate and oxybenzone.
Nurse et al. differs from the instant claim insofar as they do not disclose a preparation comprising one or more propanediol copolymers.
Backman et al. disclose sun protection compositions (ABSTRACT). Backman et al. disclose the composition comprises bis-octyldodecyl dimer dilinoleate/propanediol copolymer at a concentration of 2%; butyloctyl salicylate at a concentration of 5%; ethylhexyl methoxycrylene at a concentration of 1% (Table 1).
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. Therefore, it would have been obvious to have combined the two compositions since they are both known for spray sunscreen compositions.
Where 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. See MPEP 2144.05. Therefore, it would be obvious to have varied the amount of the known components for sunscreen compositions.
Arguments
Applicant’s Arguments
Applicant argues the sunscreen compositions of Nurse and Backman differ significantly in several respects and basically have only in common that they are sunscreen compositions. Applicant argues there is nothing in Nurse or Beckman which would suggest to one of ordinary skill in the art that adding the propanediol copolymer used in the compositions of Beckman to the spray formulations of Nurse, let alone in a weight ratio within the range recited in instant claim 7, would afford any advantages, nor has the Examiner provided any explanation in this regard. Applicant argues neither document suggests combining their disclosures, nor provides any reason to employ acrylates/octylacrylamide copolymer in combination with one or more propanediol copolymers to enhance the wet skin sunscreen factor of the composition. Applicant argues impermissible hindsight reconstruction. Applicant's arguments have been fully considered but they are not persuasive.
Examiner’s Response
The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144, IV.
Nurse et al. disclose the composition comprise film formers (0016]). Backman et al. disclose the use of a combination of film formers, such as bis-octyldodecyl dimer dilinoleate/propanediol copolymer and octyldodecyl/glyceryl hydroxy stearate dilinoleate dimethicone copolymer unexpectedly found to usually contribute to water resistance of up to at least 80 minutes. The use of such film formers contributed to the desirable aesthetic qualities of the final product, and also acted together to layer sunscreen films on the skin ([0032]). One of ordinary skill in the art would have been motivated to use the film former combination of bis-octyldodecyl dimer dilinoleate/propanediol copolymer and octyldodecyl/glyceryl hydroxy stearate dilinoleate dimethicone copolymer as the film formers of Nurse motivated by the desire to contribute to water resistance of up to at least 80 hours, contribute to the desirable aesthetic qualities of the final product, and also layer sunscreen films on the skin as taught by Backman. Backman provides the motivation to use the propanediol copolymers therefore hindsight reasoning was not used. Furthermore, the compositions suggested by the combination of references would meet the limitation of enhancing the wet skin sunscreen factor of the composition, which is defined in the instant specification as ethanol-based sunscreen spray which is free of octinoxate and oxybenzone and comprising film formers. The suggested combination would comprise about 2.5% (a) and 2% (b), which meets the ratio of instant claim 7.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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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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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612
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