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 .
Claim Status
Claims 1-13 are pending.
Claims 1-13 have been examined.
Claims 1-13 are rejected.
Drawings
The present application contains no drawings.
Claim Objections
[1] In claim 5, the phrase “selected from the group consisting of Avobenzone. Octisalate, Ensulizole, Homosalate, Octocrylene, and mixtures thereof” should be amended to read “selected from the group consisting of Avobenzone, Octisalate, Ensulizole, Homosalate, Octocrylene, and mixtures thereof.” Specifically, the period following “Avobenzone” should be replaced with a comma to properly indicate a list of elements consistent with the transitional phrase “consisting of.”
Specification Objections
[2] The disclosure is objected to because of the following informalities:
In para. [0034], Labsphere is a registered trademark; the mark should appear as Labsphere®, consistent with the listing in para. [0037].
In para. [0045], the phrase “using vitro methods” should be amended to read “using in vitro methods.”
In para. [0045], the phrase “or vitro SPF” should be amended to read “or in vitro SPF.”
[3] The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (paras. [0035] and [0038]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
[4] Claims 3 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation "two or more of the properties", and the claim also recites “preferably all three of the properties” which is the narrower statement of the range/limitation.
Similarly, claim 8 recites the broad recitation "weight percent ratio of about 1:1 to about 1:5", and the claim also recites “preferably about 1:1 to about 1:2” which is the narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102(a)(1)
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
[5] Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johncock and Claus (Patent US11723850B2, published 08/15/2023).
With regard to claims 1-5 and 7, the reference teaches sunscreen compositions comprising bemotrizinol, avobenzone, octisalate, ensulizole, homosalate, octocrylene, titanium dioxide, and zinc oxide, or any combination thereof (reference claims 1 and 6; col. 32, ln. 2, inter alia), having the same photoprotective properties and SPF values (reference claims 8-9; examples 1-4, inter alia). Instant application paragraph 0024 teaches zinc oxide and titanium dioxide as mineral UV filters.
With regard to claim 6, the reference teaches that the UV absorbing system may comprise any combination of the recited UV filters (reference claims 1, inter alia). Accordingly, one of ordinary skill in the art would readily envisage embodiments comprising bemotrizinol without the inclusion of additional organic UV filters, thereby meeting the limitation of claim 6, which requires composition is devoid of organic UV filter other than bemotrizinol.
With regard to claims 8 and 9, the reference teaches that the amount of bemotrizinol may be in the range of 0.1 to 10.0% by weight, and titanium dioxide may be in the range of 0.1 to 35% by weight (col. 32, paras. 2-3). Accordingly, the reference teaches limitations in claims 8 and 9.
With regard to claim 10, the reference teaches optional inclusion of UV filters (reference claim 1,; col. 30, lns. 56-60; col. 31, lns. 41-43; col. 33, lns. 55-61, inter alia), embodiments omitting oxybenzone, octocrylene, and octinoxate are also envisaged, thereby meeting the limitation of claim 10.
With regard to claims 11-12, the reference teaches solid stick (reference col. 46, ln. 52; example 14) and in the form of an emulsion (reference claims 13-14 and 20-21, inter alia).
With regard to claim 13, the reference teaches a composition comprising a variety of active agents (reference claim 1, inter alia). The specification of the instant application as filed teaches that the term “UV filters,” as used therein, refers to sunscreen active agents approved by a governmental regulatory agency, such as the U.S. Food and Drug Administration (FDA) or the EU Commission, and includes organic UV filters such as avobenzone, and octocrylene, as well as mineral UV filters such as zinc oxide and titanium dioxide (para. 0024). Accordingly, a UV filter such as titanium dioxide would be understood by one of ordinary skill in the art to constitute an active agent, as taught by Johncock and Claus.
[6] Claims 1 -13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spaulding et al. (Patent WO2014168773A1, published 10/16/2014).
With regard to claims 1-5 and 7, Spaulding et al. teaches a sunscreen composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxy triazine, see reference para. [0050]), octisalate, homosalate, octocrylene, avobenzone, titanium dioxide, and zinc oxide, or any combination thereof (reference claim 2, inter alia), having the same photoprotective properties and SPF values (reference paras. [0070] - [0071], [0076] and [0079]; Tables 3 and 7). Instant application paragraph 0024 teaches zinc oxide and titanium dioxide as mineral UV filters.
With regard to claim 6, the reference teaches that the UV absorbing system may comprise any combination of the recited UV filters (reference claim 2, inter alia). Accordingly, one of ordinary skill in the art would readily envisage embodiments comprising bemotrizinol without the inclusion of additional organic UV filters, thereby meeting the limitation of claim 6, which requires composition is devoid of organic UV filter other than bemotrizinol.
With regard to claims 8 and 9, the reference teaches that the amount of bemotrizinol may be in an amount less than or equal to about 2.0% by weight, and titanium dioxide may be in an amount of less than or equal to about 5% by weight (reference para. [0050]). Accordingly, the reference teaches limitations in claims 8 and 9.
With regard to claim 10, the reference teaches the optional inclusion and/or omission of UV filters (reference claims 2 and 25; para. [0050]). The reference is further silent regarding octinoxate. Accordingly, embodiments omitting oxybenzone, octinoxate, and octocrylene are envisaged, thereby meeting the limitation of claim 10.
With regard to claims 11-12, the reference teaches compositions in the form of a stick and emulsions (reference paras. [0014], [0047], and [0093]).
With regard to claim 13, Spaulding et al. teaches a composition comprising variety of active agents (claims 2, inter alia). The specification of the instant application as filed teaches that the term “UV filters,” as used therein, refers to sunscreen active agents approved by a governmental regulatory agency, such as the U.S. Food and Drug Administration (FDA) or the EU Commission, and includes organic UV filters such as avobenzone, and octocrylene, as well as mineral UV filters such as zinc oxide and titanium dioxide (para. 0024). Accordingly, a UV filter such as avobenzone would be understood by one of ordinary skill in the art to constitute an active agent, as taught by Spaulding et al.
[7] Claims 1 - 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spaulding et al. (Patent WO2015152865A1, published 10/08/2015).
With regard to claims 1-5 and 7, Spaulding et al. teaches a sunscreen composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxy triazine, see reference para. [0028]), octisalate, homosalate, octocrylene, avobenzone, titanium dioxide, and zinc oxide, or any combination thereof (reference claim 2, inter alia), having the same photoprotective properties and SPF values (reference claims 18-19; para. [0040], [0083]-[0084]; Tables 2 and 4). Instant application paragraph 0024 teaches zinc oxide and titanium dioxide as mineral UV filters.
With regard to claim 6, the reference teaches that the UV absorbing system may comprise any combination of the recited UV filters (reference claim 2, inter alia). Accordingly, one of ordinary skill in the art would readily envisage embodiments comprising bemotrizinol without the inclusion of additional organic UV filters, thereby meeting the limitation of claim 6, which requires composition is devoid of organic UV filter other than bemotrizinol.
With regard to claims 8 and 9, the reference teaches that bemotrizinol may be present in an amount less than or equal to about 2.0% by weight, and that additional photoactive agents may be present in an amount from about 0.1% to about 40% by weight (reference para. [0028]). Accordingly, the reference teaches limitations of claims 8 and 9.
With regard to claim 10, the reference teaches the optional inclusion and/or omission of UV filters (reference claims 2 and 28; para. [0028]). The reference is further silent regarding octinoxate. Accordingly, embodiments omitting oxybenzone, octinoxate, and octocrylene are envisaged, thereby meeting the limitation of claim 10.
With regard to claims 11-12, the reference teaches compositions in the form of a stick and emulsions (reference paras. [0012], [0025], and [0041]).
With regard to claim 13, Spaulding et al. teaches a composition comprising variety of active agents (claims 2, inter alia). The specification of the instant application as filed teaches that the term “UV filters,” as used therein, refers to sunscreen active agents approved by a governmental regulatory agency, such as the U.S. Food and Drug Administration (FDA) or the EU Commission, and includes organic UV filters such as avobenzone, and octocrylene, as well as mineral UV filters such as zinc oxide and titanium dioxide (para. 0024). Accordingly, a UV filter such as avobenzone would be understood by one of ordinary skill in the art to constitute an active agent, as taught by Spaulding et al.
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.
[8] Claims 1-5, 7, and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9, and 11 of copending Application No. 18/543130. Although the claims at issue are not identical, they are not patentably distinct from each other because copending application 18/543130 teaches a composition comprising bemotrizinol, titanium dioxide, UV filters (including mineral UV filters, see para. [0030]) and organic UV filter(s) (including avobenzone, octisalate ensulizole, homosalate, and octocrylene, see para. [0113]) (see claims 1, 6-7) with the same properties and SPF value as listed in instant claims 2-4 (see claims 2-4), corresponding to claims 1-5 and 7.
The copending application further teaches that the composition is a stick (i.e., anhydrous) (see Water-resistant Sunscreens, “[a]nhydrous formulation is generally used for aerosol or stick sunscreens,” published 03/20/2014), an emulsion, and comprising at least one active agent (see claims 8-9,11), corresponding to claims 11-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[9] Claims 1-5, 7, and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 12-13, and 15 of copending Application No. 18/543287. Although the claims at issue are not identical, they are not patentably distinct from each other because copending application 18/543287 teaches a composition comprising bemotrizinol, mineral UV filters including titanium dioxide, and organic UV filter(s) (see claims 1, 7, and 8) with the same properties and SPF value as listed in instant claims 2-4 (see claims 5-6), corresponding to claims 1-5 and 7.
Claim 1 of the copending application recites at least one booster, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
The copending application further teaches that the composition is an emulsion, a stick (i.e., wax, see Sunscreen Wax Stick, Wickenheiser et al., published 07/31/2013), and comprising at least one active agent (see claims 12-13 and 15), corresponding to claims 11-13).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[10] Claims 1-5 and 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-11 and 13 of copending Application No. 18/543343. Although the claims at issue are not identical, they are not patentably distinct from each other because copending application 18/543343 teaches a composition comprising bemotrizinol, avobenzone, mineral UV filters including titanium dioxide, organic UV filter(s) (see claims 1, 4 and 7) with the same properties and SPF value as listed in instant claims 2-4 (see claims 1-3), corresponding to claims 1-5 and 7.
The copending application teaches that the composition is free of oxybenzone, octinoxate, and octocrylene (see claim 9). Application 18/543343 further teaches that the composition is a stick (i.e., anhydrous) (see Water-resistant Sunscreens, “[a]nhydrous formulation is generally used for aerosol or stick sunscreens,” published 03/20/2014), an emulsion, and comprising at least one active agent (see claims 10-11, 13), corresponding to claims 10-13.
Claim 5 of the copending application teaches bemotrizinol and avobenzone are present in a ratio of about 3:1 to about 1:1 relative to the mineral UV filter. This relationship may be modeled as (A + B):C = (0.5 + 2.5):1 = 3:1. As further confirmed by claim 6 of the copending application, the combined weight of bemotrizinol and avobenzone exceeds the weight of the mineral UV filter, i.e., (A + B)>C. By comparison, claim 8 of the instant application expressly excludes avobenzone. Accordingly, the model reduces to A:C = 0.5:1, or 1:2, which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application. Because the relative proportions of bemotrizinol and the mineral UV filter remain unchanged, the inclusion or exclusion of avobenzone does not materially alter the underlying compositional relationship. Thus, the instant claims merely represent an obvious variant of the same compositional framework disclosed in the copending application. Accordingly, claims 8-9 of the instant application embody the same inventive concept and are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[11] Claims 1-5, 7, and 10-13 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. Although the claims at issue are not identical, they are not patentably distinct from each other because copending application 18/985642 teaches a composition comprising bemotrizinol, mineral UV filter(s) including titanium dioxide and zinc oxide (see para. [0026]), and organic UV filter(s) (see claims 1, 5-6) with the same properties and SPF value as listed in instant claims 2-4 (see claims 2-4), corresponding to instant claims 1-5, and 7.
Claim 1 of the copending application recites iron oxide, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
The copending application teaches that the composition is free of oxybenzone, octinoxate, and octocrylene (see claim 9). Application 18/985642 further teaches that the composition is a stick (i.e., anhydrous) (see Water-resistant Sunscreens, “[a]nhydrous formulation is generally used for aerosol or stick sunscreens,” published 03/20/2014), an emulsion, and comprising at least one active agent (see claims 10-12), corresponding to instant claims 10-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[12] Claims 1-5, 7 and 11-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, and 8 of copending Application No. 18/543756. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches a composition comprising bemotrizinol, avobenzone, additional UV filter(s) (i.e., mineral UV filter(s) including titanium dioxide, see paras. [0029], [0077] and instant para. [0024]), organic UV filter(s) including (avobenzone, octisalate, ensulizole, homosalate, and octocrylene, see para. [0029] and [0099]), and optionally octinoxate (see claims 1 and 3-4), corresponding to instant claims 1, 5 and 7. Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 3 of the copending application teaches composition is present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see paras. [0029], [0077] and instant para. [0024]). Bemotrizinol may comprise between 5-90% (see paras. [0068] [0069]). This relationship may be modeled as A ≤ B = 2 ≤ 10%. By comparison, claim 8 of the instant application is equivalent to a percent ratio of about 1:5 (UV filter may present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application also teaches compositions in the form of emulsion, a stick, and comprising at least one active agent (see claims 5-6, and 8), corresponding to instant claims 11-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[13] Claims 1-5, 7, and 11-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10-11, and 13 of copending Application No. 18/543309. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising at minimum bemotrizinol, mineral UV filter(s) including titanium dioxide (see para. [0009], [0011], [0024]; instant para. [0024]), and organic UV filter(s) (see claims 1 and 4), having the same photoprotective properties and SPF value cited in instant claims 2-4 (see claims 1-3), corresponding to instant claims 1-5 and 7.
The copending application further teaches that the compositions in the form of emulsion, a stick (i.e., anhydrous) (see Water-resistant Sunscreens, “[a]nhydrous formulation is generally used for aerosol or stick sunscreens,” published 03/20/2014), and comprising at least one active agent (see claims 10-11, and 13), corresponding to instant claims 11-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[14] Claims 1- 5, 7, and 9-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8-10, and 13 of copending Application No. 18/543157. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, mineral UV filters including titanium dioxide (see para. [0025]), and organic UV filter(s) (see claims 1 and 5-6), having the same photoprotective properties and SPF value recited in instant claims 2-4 (see claims 1-3), corresponding to claims 1-5 and 7.
Claim 6 of the copending application teaches bemotrizinol is present at ≤ 5% by weight relative to the mineral UV filters including titanium dioxide (see para. [0025]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application teaches that the composition is free of oxybenzone, octinoxate, and octocrylene (see claim 8). Application 18/543157 further teaches that the composition is a stick (i.e., anhydrous) (see Water-resistant Sunscreens, “[a]nhydrous formulation is generally used for aerosol or stick sunscreens,” published 03/20/2014), an emulsion, and comprising at least one active agent (see claims 9-10, 13), corresponding to instant claims 10-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[15] Claims 1- 5, 7-9, and 11-12 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, and 5-6 of copending Application No. 18/985612. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol (see para. [0153]), additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0028], [0082], instant para. [0080]), and organic UV filter(s) (see para. [0028], [0104] (see claims 1-3), corresponding to claims 1, 5, and 7. Claim 1 of the copending application recites at least one coloring agent, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of the copending application teaches bemotrizinol and a coloring agent are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0082], instant para. [0080]). This relationship may be modeled as (A + B) ≤ C = (2 + 8) ≤ 10%. By comparison, claim 8 of the instant application expressly excludes a coloring agent. Accordingly, the model reduces to A ≤ C = 2 ≤ 10% [Symbol font/0xBB] 1:5 (UV filter may present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is a stick (i.e., anhydrous) (see Water-resistant Sunscreens, “[a]nhydrous formulation is generally used for aerosol or stick sunscreens,” published 03/20/2014) and an emulsion (see claims 5-6), corresponding to instant claims 11-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[16] Claims 1- 5, 7-9, 11, and 13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 8 of copending Application No. 18/985622. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0008], [0027], [0079]; instant para. [0080]), and organic UV filter(s) (see para. [0008], [0027]) (see claims 1-3), corresponding to claims 1, 5, and 7.
Claim 1 of the copending application recites at least one coloring agent, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of the copending application teaches bemotrizinol and a coloring agent are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0082], instant para. [0080]). This relationship may be modeled as (A + B) ≤ C = (2 + 8) ≤ 10%. By comparison, claim 8 of the instant application expressly excludes a coloring agent. Accordingly, the model reduces to A ≤ C = 2 ≤ 10% [Symbol font/0xBB] 1:5 (UV filter may present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is a stick and comprising at least one active agent (see claims 4 and 8), corresponding to instant claims 11 and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[17] Claims 1- 5, 7-9, and 12-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, and 10 of copending Application No. 18/543443. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0068], instant para. [0080]), and organic UV filter(s) (see para. [0024], [0090]) (see claims 1-3), corresponding to claims 1, 5, and 7.
Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of the copending application teaches bemotrizinol are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0082], instant para. [0080]). This relationship may be modeled as A ≤ C = 2 ≤ 10%, which is equivalent to a percent ratio of about 1:5, thereby satisfying limitation in claim 8 of the instant application (UV filter may be present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is in the form of an emulsion and comprising at least one active agent (see claims 7 and 10), corresponding to instant claims 12-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[18] Claims 1- 5, 7-9, and 11-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 8-9 of copending Application No. 18/543597. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0027], instant para. [0080]), and organic UV filter(s) (see para. [0027], [0102) (see claims 1 and 6), corresponding to claims 1, 5, and 7.
Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 6 of the copending application teaches bemotrizinol are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0027], instant para. [0080]). This relationship may be modeled as A ≤ C = 2 ≤ 10%, which is equivalent to a percent ratio of about 1:5, thereby satisfying limitation in claim 8 of the instant application (UV filter may be present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is in the form of an emulsion, a stick, and comprising at least one active agent (see claims 1, 8-9), corresponding to instant claims 11-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[19] Claims 1- 5, and 12-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 8 of copending Application No. 18/543657. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, and organic UV filter(s) (see para. [0024], [0088]) (see claims 1 and 5), having the same properties and SPF value as listed in instant claims 2-4 (see claims 1-3), corresponding to claims 1-5 and 7. Claim 1 of instant application recites titanium dioxide, whereas copending application claim 1 does not recite this limitation. However, copending application claim recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the instant application.
The copending application further teaches that the composition is in the form of an emulsion and comprising at least one active agent (see claims 1 and 8), corresponding to instant claims 11-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[20] Claims 1-5, 7-9 and 11-13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-9, and 11 of copending Application No. 18/543921. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches a composition comprising bemotrizinol, additional UV filter(s) including titanium dioxide (see para. [0079] and instant para. [0024]), organic UV filter(s) including (avobenzone, octisalate, ensulizole, homosalate, and octocrylene, see para. [0101 and 0102]) (see claims 1-2 and 6), corresponding to instant claims 1, 5 and 7. Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 1 of the copending application recites an antioxidant system, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Claim 2of the copending application teaches bemotrizinol are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0079], instant para. [0080]). This relationship may be modeled as A ≤ C = 2 ≤ 10%, which is equivalent to a percent ratio of about 1:5, thereby satisfying limitation in claim 8 of the instant application (UV filter may be present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is in the form of an emulsion, a stick, and comprising at least one active agent (see claims 8-9 and 11), corresponding to instant claims 11-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[21] Claims 1-5, 7-9 and 13 of the instant application 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. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches a composition comprising bemotrizinol, additional UV filter(s) (i.e., mineral UV filter(s) including titanium dioxide, see para. [0030] and instant para. [0024]), organic UV filter(s) including (avobenzone, octisalate, ensulizole, homosalate, and octocrylene, see paras. [0030], [0085] and [0086]) (see claims 1-3), corresponding to instant claims 1, 5 and 7. Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of the copending application teaches bemotrizinol is present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filter(s) including titanium dioxide, see para. [0030] and instant para. [0024]). This relationship may be modeled as A ≤ B = 2 ≤ 10%. By comparison, claim 8 of the instant application is equivalent to a percent ratio of about 1:5 (UV filter may present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application also teaches compositions comprising at least one active agent (see claim 6), corresponding to instant claim 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[22] Claims 1-5, 7-9, and 13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 8-10 of copending Application No. 18/543482. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0024], [0077]; instant para. [0080]), and organic UV filter(s) (see para. [0024], [0099]) (see claims 1, 8-9), corresponding to claims 1, 5 and 7.
Claim 1 of the copending application recites additional constituents, whereas instant claim 1 does not recite these limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 8 of the copending application teaches bemotrizinol and additional constituents are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0024], [0077]; instant para. [0080]). This relationship may be modeled as (A + B) ≤ C = (2 + 8) ≤ 10%. By comparison, claim 8 of the instant application expressly excludes additional constituents. Accordingly, the model reduces to A ≤ C = 2 ≤ 10% [Symbol font/0xBB] 1:5 (UV filter may present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is a stick and comprising at least one active agent (see claims 4 and 10), corresponding to instant claims 11 and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
[23] Claims 1-5, 7-9, 11, and 13 of the instant application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 9-10 of copending Application No. 18/543489. Although the claims at issue are not identical, they are not patentably distinct from each other, as discussed below.
The copending application teaches compositions comprising of bemotrizinol, additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0138]; instant para. [0080], and organic UV filter(s) (see para. [0138], [0024], [0160]) (see claims 1 and 9), corresponding to claims 1, 5 and 7.
Claim 1 of the copending application recites additional constituents, whereas instant claim 1 does not recite these limitation. However, instant claims recite the transitional phrase "comprising" which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Instant claims 2-4 recite photoprotective properties and SPF value associated with the claimed composition, which are achieved using the same combination of ingredients disclosed in the copending application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 8 of the copending application teaches bemotrizinol and additional constituents are present at ≤ 10% by weight relative to the additional UV filters (i.e., mineral UV filters including titanium dioxide (see para. [0138]; instant para. [0080]). This relationship may be modeled as (A + B) ≤ C = (2 + 8) ≤ 10%. By comparison, claim 8 of the instant application expressly excludes additional constituents. Accordingly, the model reduces to A ≤ C = 2 ≤ 10% [Symbol font/0xBB] 1:5 (UV filter may present in an amount of about 5-40%, instant para. [0075]), which corresponds to a composition in which the mineral UV filter is present in a greater amount by weight than bemotrizinol, as required by claim 9 of the instant application.
The copending application further teaches that the composition is a stick and comprising at least one active agent (see claims 2 and 10), corresponding to instant claims 11 and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI M ALAOUIE whose telephone number is 571-272-0844. The examiner can normally be reached Flextime: (M-TH) 7:30 am 6:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALI MUSTAFA ALAOUIE/Examiner, Art Unit 1614