CTNF 18/543,130 CTNF 82578 DETAILED ACTION This action is in response to Applicant’s submission dated March 23, 2026, in which Applicant elected the invention of Group I with traverse. Information Disclosure Statement The references contained in the IDS dated May 19, 2025 are made of record. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restriction The restriction requirement is hereby withdrawn. 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. Claims 1-3, 5-6, and 10 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. Using the wording “wherein the bemotrizinol is present in the compositions in an amount effective to reduce or inhibit reactive oxygen species generation by irradiation of titanium dioxide by UV light”, claim 1 attempts to define the subject matter in terms of the result to be achieved, which merely amounts to a statement of the underlying problem, without providing what structure of the claimed invention actually carries out this claimed function. Examiner recommends to clarify the subject matter of said claim by further specifying the “amount effective” based on paragraph [0091] of the instant specification. The term “essentially” used in claims 2 and 10 is vague and unclear and leaves the reader in doubt as to the meaning of the technical feature to which it refers, thereby rendering the definition of the subject matter of said claim unclear. Examiner recommends to clarify the subject matter of said claim by further specifying the “essentially” based on paragraph [0033] of the instant specification. The subject matter of claim 3 is defining the following parameters “critical wavelength”, “UVAPF/SPF ratio” and “UVA1/UV ratio”. Examiner recommends that a reference to the method of measurement present in the specification in paragraphs [0038]-[0044] should be present in said claim. The term “pigmentary” used in claim 5 is vague and unclear and leaves the reader in doubt as to the meaning of the structure to which it refers, thereby rendering the definition of the subject matter of said claim unclear. Examiner recommends to clarify the subject matter of said claim by further specifying the “pigmentary” based on paragraph [0070] of the instant specification. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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 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 non-obviousness. Determining the scope and contents of the prior art . 07-21-aia AIA Claim s 1-11 are rejected under 35 U.S.C. § 103 as being unpatentable over Issachar, et al ., WO 02/17872 in view of Duran-Giner, et al ., Crystalline Polymorphism of Organic Compounds , Photochem. Photobiol. Sci., 12, pp. 725-728 (2013) . Issachar, et al ., WO 02/17872, which teaches a composition comprising or essentially containing titanium dioxide and “TS” or bemotrizinol. Duran-Giner, et al ., Crystalline Polymorphism of Organic Compounds , Photochem. Photobiol. Sci., 12, pp. 725-728 (2013) discloses that bis-ethylhexyloxyphenol methoxyphenyl triazine (Tinosorb S or bemotrizinol) “may act as a scavenger of ROS, specifically atomic oxygen. As inclusion of antioxidants in sunscreen compositions is becoming a common strategy for preventing/reducing photo-oxidative skin damage, the preliminary results presented here suggest that 1 and related filters may play a dual role and can be useful for improving the efficacy of skin care cosmetic formulations against photo-carcinogenesis and photo-aging.” Page 727, left column, second to last paragraph and Fig. 1. This was accomplished by irradiation by UV light, see whole document. Ascertaining the difference between the prior art and the claims at issue. The reason Issachar, et al ., WO 02/17872 is not anticipatory art is because it lacks the claim limitation “wherein the bemotrizinol is present in the compositions in an amount effective to reduce or inhibit reactive oxygen species generation by irradiation of titanium dioxide by UV light. The only reference it makes to UV light is: The invention also features method of protecting mammalian skin or hair from UV light comprising topically applying to the skin or hair the … composition. Resolving the level of skill in the art. The Court has addressed this obviousness issue: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 12 (2007). “When there is a design need or market pressure to solve a problem and there are finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, … the fact that a combination was obvious to try might show that it was obvious”. Id. at 17. That is exactly the case here. It would have been obvious at the time that the invention was made to combine the composition of Issachar, et al ., WO 02/17872 comprising or essentially containing titanium dioxide and “TS” or bemotrizinol with the ROS scavenger properties of Duran-Giner, et al ., Crystalline Polymorphism of Organic Compounds , Photochem. Photobiol. Sci., 12, pp. 725-728 (2013) to arrive at the presently claimed invention. Considering objective evidence present in the application indicating obviousness or non-obviousness. In the absence of any substantiated unexpected or surprising property, then non-obviousness simply cannot be acknowledged. Conclusion Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERICH A LEESER whose telephone number is (571) 272-9932. The Examiner can normally be reached Monday through Friday from 10-6 PST, M-F. PST. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. James Alstrum-Acevedo can be reached at (571) 272-5548. The fax number for the organization where this application 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) toll-free at 866-217-9197. 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. /ERICH A LEESER/Primary Examiner, Art Unit 1622 United States Patent and Trademark Office Tel. No.: (571) 272-9932 Application/Control Number: 18/543,130 Page 2 Art Unit: 1622 Application/Control Number: 18/543,130 Page 3 Art Unit: 1622 Application/Control Number: 18/543,130 Page 4 Art Unit: 1622 Application/Control Number: 18/543,130 Page 5 Art Unit: 1622 Application/Control Number: 18/543,130 Page 6 Art Unit: 1622 Application/Control Number: 18/543,130 Page 7 Art Unit: 1622
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