,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
Status of Claims
The amendments and arguments filed on 04/03/2026 are acknowledged and have been fully considered. Claims 1-3 and 5-18 are now pending. Claim 4 is canceled; claims 1-2, 7, and 9-10 are amended; claims 14-18 are new.
Claims 1-3 and 5-18 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
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.
The factual inquiries 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 nonobviousness.
Claims 1-3 and 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over PGPUB 2024027152 A1 (Russell, 2024) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as evidenced by Clifton (2021).
In regards to claims 1, 5-6, and 8, Russell teaches a sunscreen composition comprising avobenzone, bemotrizinol, octisalate, homosalate, octocrylene, titanium dioxide, zinc oxide (i.e., mineral UV filters), or combinations thereof (see Russell, claims 21-22). As the teachings of Russell allow one with ordinary skill in the art to easily envisage a composition comprising bemotrizinol and avobenzone, for example, there would not be octocrylene present and as such meet the requirements of claim 8.
In regards to claim 3, the composition is taught to have an SPF value of greater than or equal to 50 (see Russell, claim 38).
In regards to claim 7, Russel further teaches that the sunscreen composition comprises sunscreen actives in an amount of about 15% by weight of the composition (see Russell, paragraph 0022) wherein multiple sunscreen actives are used in combination (see Russell, paragraph 0022). As such it would be within the purview of one with ordinary skill in the art to easily envisage a sunscreen composition comprising bemotrizinol, avobenzone, and a metal oxide such as titanium dioxide in equal amounts for a total of 15% by weight of the composition as they are all taught as sunscreen actives (see Russell, paragraph 0019). In this case, the metal oxide (i.e., mineral UV filter) would comprise 5% by weight of the composition. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 9-10, the composition is taught to be in an anhydrous form or emulsion form (see Russell, paragraph 0039).
In regards to claims 12-13, it is taught that the composition further comprises colorants, pigments, and a variety of active agents (see Russell, claim 31). Further, it is worth noting that the specification as filed teaches that the “UV filters” as it is used herein means sunscreen active agents approved by a governmental regulatory agency such as the Food and Drug Administration (FDA) in the U.S. (see paragraph 0025 of the instant specification as filed) and as such, the UV filters such as bemotrizinol would be understood as active agents as well.
In regards to claims 15-18, Russell is silent on the use of wax overall. Further, Russell does teach the use of a surfactant, however it is taught to be an optional ingredient (i.e., “may include”) (see Russell, paragraph 0035). As such, on with ordinary skill in the art would understand that the composition is free of a surfactant and wax.
Russell is silent on the composition comprising bemotrizinol and the at least one additional organic UV filter present in a weight percent ratio of about 1:3 to about 1:5.
In regards to claims 1, 5-6, and 8, Hwang teaches a sunscreen composition comprising one or more sunscreen active agents such as octocrylene, octisalate, homosalate, titanium dioxide, zinc oxide, bemotrizinol, or a combination thereof (see Hwang, claims 1-2). As the teachings of Hwang allow one with ordinary skill in the art to easily envisage a composition comprising bemotrizinol and homosalate, for example, there would not be octocrylene present and as such meet the requirements of claim 8.
Further, in regards to claims 1, 7, and 9, Hwang teaches in Table 1 an example of a sunscreen composition comprising octocrylene, octisalate, homosalate, and avobenzone (see Hwang, Table 1). It would within the purview of one with ordinary skill in the art to substitute one of the other known sunscreen compounds, such as bemotrizinol, for one of those used in the example. E.g., it would be within the purview of one with ordinary skill in the art to envisage a sunscreen composition comprising homosalate in an amount from 8-15% by weight, bemotrizinol in an amount from 5-10% by weight, octisalate in an amount of 5-10% by weight, and avobenzone in an amount of 1-5% by weight. In this case, the weight ratio of bemotrizinol to the additional organic UV filters would be about 1:3 (5:14 using the low end and 10:30 using the high end of the ranges). Further, it would also be within the purview of one with ordinary skill in the art to substitute titanium dioxide or zinc oxide for of the other UV filters as they are all taught as equivalents (see Hwang, claim 2). As such, a composition comprising homosalate in an amount from 8-15% by weight, bemotrizinol in an amount from 5-10% by weight, octisalate in an amount of 5-10% by weight, and titanium dioxide in an amount of 1-5% by weight would meet the requirements of claim 7. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 3, the composition is taught to have an SPF value of at least 60 (see Hwang, paragraph 0043).
In regards to claim 10, it is taught that the composition comprises an emulsifier (see Hwang, claims 1, 8, and 10). It is taught that the emulsifier is used to stabilize the composition as an emulsion (see Hwang, claim 1).
In regards to claim 12, titanium dioxide is a known pigment (see Clifton, page 1, paragraph 2) used in sunscreens (see Clifton, page 2, “sunscreen”).
In regards to claim 13, the specification as filed teaches that the “UV filters” as it is used herein means sunscreen active agents approved by a governmental regulatory agency such as the Food and Drug Administration (FDA) in the U.S. (see paragraph 0025 of the instant specification as filed) and as such, the UV filters such as bemotrizinol, titanium dioxide, or zinc oxide would be understood as active agents as well.
Further, in regards to claims 12-13, the composition is taught to comprise colorants and various active agents (see Hwang, paragraph 0037).
In regards to claims 1-3 and 5-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Russell and Hwang to formulate a composition as instantly claimed as both references teach compositions comprising similar ingredients in similar uses (i.e., sunscreen). "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Russell with the composition of Hwang according to the method of making a sunscreen composition (see Russell, Example; paragraphs 0041-0043) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Further in regards to claims 1-2, 11, and 14, as the teachings of Russell and Hwang would yield an identical composition as instantly claimed, the properties, such as those listed in claims 1-2, 11, and 14, of the composition would be the same. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Claim 11 further claims a future intended use (i.e. upon application to skin), however the future intended use of a product is not considered to contribute to the overall patentability of the instant invention, particularly when the product itself is claimed and that same product is taught in the prior art. It is also worth noting that it is taught that the UVAPF is at least 1/3 of the SPF (see Russell, paragraph 0017) of the composition.
Response to Arguments
Applicant's arguments filed 04/03/2023 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s arguments that the two previous obviousness rejections do not teach the limitations of the claims as amended, the rejections of record have been modified as necessitated by amendment to be over Russell in view of Hwang. Applicant further mentions that Hwang teaches the use of waxes and surfactants, but as the rejection is over Russell as well and Russell does not include these components in the composition as discussed in the rejection above, one with ordinary skill in the art would be able to easily envisage an embodiment without these components as well when combining the teachings of the two references. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Russell with the composition of Hwang according to the method of making a sunscreen composition (see Russell, Example; paragraphs 0041-0043) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/543130 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
18543130 teaches a composition comprising bemotrizinol and titanium dioxide, as well as additional organic UV filters (see claims 1 and 5-7) with the same properties and SPF value as listed in instant claims 1 and 3 (see claims 2-4). It is taught that the composition is in the form of an anhydrous composition or is in the form of an emulsion (see claims 8-9). It is taught that the composition further comprises at least one coloring agent and at least one active agent (see claims 10-11).
18543130 is silent on the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5 and exclusions of instant claim 8, and the amount of the mineral UV filter.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/543130 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-9 of copending Application No. 18/543141 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and zinc oxide with the same properties and SPF value as the instant claims (see claims 1-4). It is taught that the composition is in the form of an anhydrous composition or is in the form of an emulsion (see claims 6-7).
It is taught that the composition further comprises at least one coloring agent and at least one active agent (see claims 8-9).
The reference application is silent on the use of an at least one additional organic UV filter, the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5 and exclusions of instant claim 8, and the amount of the mineral UV filter.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-9 of copending Application No. 18/543141 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 10, and 13-15 of copending Application No. 18543287 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The teachings of the reference application have been described supra.
The reference application is silent on the percent ratio of the at least one additional organic UV filter and the amount of the mineral UV filter.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 10, and 13-15 of copending Application No. 18543287 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-13 of copending Application No. 18543309 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and at least one additional organic UV filter selected from octisalate, homosalate, octocrylene, and mixtures thereof with the same properties and SPF value as the instant claims (see claims 1-3). The composition is further taught to comprise at least one mineral UV filter and avobenzone (see claims 4-7) and is free of oxybenzone and octinoxate (see claim 9). It is taught that the composition is in the form of an anhydrous composition or is in the form of an emulsion (see claims 10-11). It is taught that the composition further comprises at least one coloring agent and at least one active agent (see claims 12-13).
The reference application is silent on the percent ratio of the at least one additional organic UV filter and the amount of the mineral UV filter.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-13 of copending Application No. 18543309 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-13 of copending Application No. 18543343 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol, avobenzone, and at least one additional organic UV filter selected from octisalate, homosalate, octocrylene, and mixtures thereof with the same properties and SPF value as the instant claims (see claims 1-3 and 7). The composition is further taught to comprise at least one mineral UV filter (see claims 4-5) and is free of oxybenzone and octinoxate (see claim 9). It is taught that the composition is in the form of an anhydrous composition or is in the form of an emulsion (see claims 10-11). It is taught that the composition further comprises at least one coloring agent and at least one active agent (see claims 12-13).
The reference application is silent on the percent ratio of the at least one additional organic UV filter and the amount of the mineral UV filter.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-13 of copending Application No. 18543343 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-8, and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 10, and 12-13 copending Application No. 18543375 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The teachings of the reference application have been described supra.
The reference application is silent on the percent ratio of the at least one additional organic UV filter and the amount of the mineral UV filter as well as the use of at least one coloring agent.
The teachings of Hwang have been described supra.
In regards to claims 1-3, 5-8, and 10-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 9 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 10, and 12-13 copending Application No. 18543375 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3, 5-8, and 10-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax as well as being anhydrous.
The teachings of Russell have been described supra.
In regards to claims 9 and 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-8, and 10-11 copending Application No. 18543443 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a sunscreen composition comprising bemotrizinol (see claim 1) and at least one additional organic UV filter (see claims 2-3). The composition is taught to be in the form of an emulsion or is anhydrous (claims 7-8). The composition is taught to comprise at least one active agent and is non-greasy upon application to skin (see claims 10-11).
The reference application is silent on the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5 and exclusions of instant claim 8, the use of and the amount of the mineral UV filter, and the use of a coloring agent. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, and 9.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of
producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-8, and 10-11 copending Application No. 18543443 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of copending Application No. 18/543597 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and at least one active agent (see claims 1-5). The composition is taught to further comprise additional UV filters (see claim 6). It is taught that the composition is in the form of an anhydrous composition or is in the form of an emulsion (see claims 7-8). It is taught that the composition further comprises at least one coloring agent (see claim 10).
The reference application is silent on the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5 and exclusions of instant claim 8, the use of and the amount of the mineral UV filter. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, 9, 11, and 14.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of copending Application No. 18/543597 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 10-13 of copending Application No. 18/543618 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and a carrier (see claim 1). The claims also recite the same properties and SPF values for both compositions (see claims 2-4). Further, the claims teach that the composition is free of oxybenzone, and octinoxate (see claim 10). It is also taught that the composition is in an anhydrous form (see claim 11). It is taught that the composition further comprises at least one coloring agent and at least one active agent (see claims 12-13).
The reference application is silent on the use of an at least one additional organic UV filter, the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5 and exclusions of instant claim 8, the use of and the amount of the mineral UV filter. It is also not taught that the composition is non-greasy upon application to skin.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 10-13 of copending Application No. 18/543618 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-8, and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7 and 9-11 of copending Application No. 18/543702 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and an additional organic UV filter (see claims 1 and 9). The claims also recite the same properties and SPF values for both compositions (see claims 4-6). Further, the claims teach that the composition is free of oxybenzone and octinoxate (see claim 10). It is also taught that the composition is in an emulsion form (see claim 7). It is taught that the composition further comprises at least one active agent (see claim 11).
The reference application is silent on the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5, the use of and the amount of the mineral UV filter or a coloring agent. It is also not taught that the composition is non-greasy upon application to skin.
The teachings of Hwang have been described supra.
In regards to claims 1-3, 5-8, and 10-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7 and 9-11 of copending Application No. 18/543702 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3, 5-8, and 10-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-7, and 9-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7 of copending Application No. 18/543721 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and octinoxate (see claim 1) and an additional organic UV filter (see claims 2-3). It is also taught that the composition is in an emulsion form or anhydrous form (see claims 4-5). It is taught that the composition further comprises at least one coloring (see claim 7).
The reference application is silent on the percent ratio of the at least one additional organic UV filter, the specific organic UV filters listed in instant claim 5, the use of and the amount of the mineral UV
filter or an active agent. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, 9, 11, and 14.
The teachings of Hwang have been described supra.
In regards to claims 1-3, 5-7, and 9-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7 of copending Application No. 18/543721 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3, 5-7, and 9-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-8, and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 7-8 of copending Application No. 18/543756 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol, avobenzone, and optionally octinoxate (see claim 1) and an additional organic UV filter (see claims 3-4). It is also taught that the composition is in an emulsion form (see claim 5). It is taught that the composition further comprises at least one coloring and at least one active agent (see claims 7-8).
The reference application is silent on the percent ratio of the at least one additional organic UV filter, the use of and the amount of the mineral UV filter. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, 9, 11, and 14.
The teachings of Hwang have been described supra.
In regards to claims 1-3, 5-8, and 10-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 9 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 7-8 of copending Application No. 18/543756 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3, 5-8, and 10-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax as well as being anhydrous.
The teachings of Russell have been described supra.
In regards to claims 9 and 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-8, and 10-11 of copending Application No. 18/543921 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol (see claim 1) and an additional organic UV filter (see claims 2 and 6). It is also taught that the composition is in an emulsion
form or an anhydrous form (see claims 7-8). It is taught that the composition further comprises at least one coloring and at least one active agent (see claims 10-11).
The reference application is silent on the specific organic UV filters and exclusions of the instant claims, the percent ratio of the at least one additional organic UV filter, the use of and the amount of the mineral UV filter. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, 9, 11, and 14.
The teachings of Hwang have been described supra.
In regards to claims 1-3 and 5-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-8, and 10-11 of copending Application No. 18/543921 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-8, and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 8 of copending Application No. 18/985622 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and at least one coloring agent (see claim 1) and an additional organic UV filter (see claims 2-3). It is taught that the composition further comprises at least one active agent (see claim 8).
The reference application is silent on the specific organic UV filters and exclusions of the instant claims, the percent ratio of the at least one additional organic UV filter, the use of and the amount of the mineral UV filter. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, 9, 11, and 14.
The teachings of Hwang have been described supra.
In regards to claims 1-8 and 10-13, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 9 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 8 of copending Application No. 18/985622 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3, 5-8, and 10-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax as well as the composition being anhydrous.
The teachings of Russell have been described supra.
In regards to claims 9 and 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-8, and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6 of copending Application No. 18/985628 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol (see claim 1) and an additional organic UV filter (see claims 2-3). It is taught that the composition further comprises at least one active agent (see claim 6).
The reference application is silent on the specific organic UV filters and exclusions of the instant claims, the percent ratio of the at least one additional organic UV filter, the use of and the amount of the mineral UV filter, and the use of at least one coloring agent. It is also noted that the reference application is silent on the properties and SPF value of the composition as listed in instant claims 1, 3, 9, 11, and 14.
The teachings of Hwang have been described supra.
In regards to claims 1-3, 5-8, and 10-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 9 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6 of copending Application No. 18/985628 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3, 5-8, and 10-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of the reference application and Hwang have been described supra.
The teachings of the reference application and Hwang are silent on being free of a surfactant or wax as well as the composition being anhydrous.
The teachings of Russell have been described supra.
In regards to claims 9 and 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-12 of copending Application No. 18/985642 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018).
The reference application teaches a composition comprising bemotrizinol and iron oxide (i.e., a mineral UV filter) (see claim 1), and at least one additional organic UV filter selected from avobenzone, octisalate, homosalate, octocrylene, and mixtures thereof (see claim 5) with the same properties and SPF value as the instant claims (see claims 2-4). The composition is further taught to comprise titanium dioxide and/or zinc oxide (see claim 6) and is free of oxybenzone, octocrylene, and octinoxate (see claim 9). It is taught that the composition is in the form of an anhydrous composition or is in the form of an emulsion (see claims 10-11). It is taught that the composition further comprises at least one active agent (see claim 12).
The reference application is silent on the percent ratio of the at least one additional organic UV filter, the amount of the mineral UV filter, and the use of at least one coloring agent. It is also not taught that the composition is non-greasy upon application to skin.
The teachings of Hwang have been described supra.
In regards to claims 1-14, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang as both references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-12 of copending Application No. 18/985642 (the reference application) in view of US PGPUB 20180221271 A1 (Hwang, 2018) as applied to claims 1-3 and 5-14 above, and in further view of PGPUB 2024027152 A1 (Russell, 2024).
The teachings of 1898562 and Hwang have been described supra.
The teachings of 1898562 and Hwang are silent on being free of a surfactant or wax.
The teachings of Russell have been described supra.
In regards to claims 15-18, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of the reference application and Hwang with Russell as all three references are drawn towards sunscreen compositions comprising similar compounds in similar forms. "It 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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of the reference application and Hwang with the teachings of Russell according to the known method of producing a sunscreen composition (see Hwang, paragraphs 0038-0040) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 04/03/2023 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s arguments that the amendments to the claims have rendered the previous double patenting rejections moot, it is noted that the rejections have been modified as necessitated by amendment.
Conclusion
No claims 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 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.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
Prosecution Insights