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 1-11 are pending.
Claims 1-11 have been examined.
Claims 1-11 are rejected.
Drawings
The present application contains no drawings.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/19/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification Objections
[1] The disclosure is objected to because of the following informalities:
In paras. [0030] and [0043], Labsphere is a registered trademark; the mark should appear as Labsphere®, consistent with the listing in para. [0033].
In para. [0041], the phrase “using vitro methods” should be amended to read “using in vitro methods.”
In para. [0041], the phrase “or vitro SPF” should be amended to read “or in vitro SPF.”
[2] The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (paras. [0031] and [0034]. 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 § 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.
[3] Claims 1-3, 5-9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakatani and Takazawa, (patent US20230118811A1, published 04-20-2023).
With regard to claims 1-3 and 6, the reference teaches a similar composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxyphenyl triazine; see instant application para. [0009]), dextrin palmitate (a gelling agent; see instant application claim 2), C12-15 alkyl benzoate (a solvent; see instant application claim 6), and acrylate (a thickening agent; see claim 3), (reference Tables 1-3, para. [0075], inter alia). Thus, the reference anticipates all limitations of claims 1-3 and 6.
With regard to claims 5 and 11, the reference teaches composition is transparent, and comprising at least one coloring agent (i.e., colorant), (reference paras. [0124] and [0154], inter alia), corresponding to instant application claims 5 and 11. Thus, the reference anticipates all limitations of claims 5 and 11.
With regard to claim 7, the reference teaches that the solvent is present in the composition at 49.8% (reference Table 3, row D, example 4), which falls within ±10% of 50% (i.e., 45% to 55%). This is consistent with the disclosure of para. [0014] of the instant application, which defines the term ‘about’ as within 10% of the indicated value. Accordingly, the reference anticipates all limitations of claim 7.
With regard to claims 8 and 9, the instant application discloses that the additional UV filter includes organic UV filters (see instant application para. [0077]). Accordingly, claims 8 and 9 are coextensive, and addressing claim 8 essentially addresses claim 9. The reference teaches multiple comparative compositional examples comprising bemotrizinol, dextrin palmitate as a gelling agent, and C12-15 alkyl benzoate as a solvent, wherein the combined mass percentage of these components is less than 10%. Specifically, Table 1, Example 5 discloses 1.0%; Table 2, Examples 8 and 9 disclose 0.5%; and Table 3, Examples 1 and 2 disclose 0.5% and 0.6%, respectively. The instant application further identifies octocrylene as an example of an organic UV filter (see instant application para. [0024]). The reference likewise teaches octocrylene as an oil-soluble ultraviolet absorbers (reference para. [0014] and [0025]) and expressly discloses that such absorbers may be present in amounts up to 30% by mass (reference para. [0029]). Accordingly, the reference anticipates all limitations of claims 8 and 9.
[4] Claims 1-4, 6, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masanelli et al. (Patent US20220079847A1, published 03-17-2022).
With regard to claims 1-3, and 6, the reference teaches a similar composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxyphenyl triazine; instant application para. 0009), dextrin palmitate (a gelling agent; see instant application claim 2), caprylic/capric triglyceride and/or C12-15 Alkyl Benzoate (a solvent; see instant application claim 6), and acrylate (a thickening agent; see instant application claim 3) (reference claims 11-12, 16; paras. 0062, 0066; Table 7). Thus, the reference anticipates all limitations of claims 1-3, and 6.
With regard to claims 4 and 11 the reference teaches composition in the form of a stick, and comprising at least one coloring agent (i.e., pigment; see instant application, para. 0144) (reference claims 14, 16, 21, inter alia). Thus, the reference anticipates all limitations of claims 4 and 11.
With regard to claim 10, the reference teaches a composition comprising a variety of active agents (reference Table 7, inter alia). The specification of the instant application as filed teaches that the term “UV filters” 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 expressly includes organic UV filters such as octocrylene (para. [0024]). The instant application further introduces UV filters into the composition through the limitations of claim 8 (UV filter) and claim 9 (organic UV filter). Accordingly, a UV filter such as octocrylene would be understood by a person of ordinary skill in the art to constitute an active agent, as taught by Masanelli et al. Therefore, the reference anticipates all limitations of claim 10.
[5] Claims 1-4, 6, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masanelli et al. (Patent US20220096335A1, published 03-31-2022).
With regard to claims 1-3, and 6, the reference teaches a similar composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxyphenyl triazine; instant application para. 0009), dextrin palmitate (a gelling agent; see instant application claim 2), caprylic/capric triglyceride (a solvent; see instant application claim 6), and acrylate (a thickening agent; see instant application claim 3) (reference claims 12, 14, and 19, inter alia). Thus, the reference anticipates all limitations of claims 1-3, and 6.
With regard to claims 4 and 11 the reference teaches composition in the form of a stick, and comprising at least one coloring agent (i.e., pigment; see instant application, para. 0144) (reference claims 17 and 24, inter alia). Thus, the reference anticipates all limitations of claims 4 and 11.
[6] Claims 1-4, 6, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masanelli et al. (Patent FR3091165A1, published 07-03-2020).
With regard to claims 1-3, and 6, the reference teaches a similar composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxyphenyl triazine; see instant application para. [0009]), dextrin palmitate (a gelling agent; see instant application claim 2), caprylic/capric triglyceride (a solvent; see instant application, claim 6), and acrylate (a thickening agent; see claim 3) (reference claims 11, 12, and 16, inter alia). Thus, the reference anticipates all limitations of claims 1-3, and 6.
With regard to claims 4 and 11 the reference teaches composition in the form of a stick, and comprising at least one coloring agent (i.e., pigment; see instant application, para. 0144) (reference classifications, claims 14 and 21, inter alia). Thus, the reference anticipates all limitations of claims 4 and 11.
[7] Claims 1-3, 5-6, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pilz et al. (Patent US20140308224A1, published 10-16-2014).
With regard to claims 1-3, and 6, the reference teaches a similar composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxyphenyl triazine; see instant application para. [0009]), dextrin derivatives, in particular dextrin esters (a gelling agent; see instant application claim 2), caprylic/capric triglyceride and/or alkyl benzoate (a solvent; see instant application, claim 6), and acrylate (a thickening agent; see claim 3) (reference claim 5; Examples 2-7; paras. [0082] [0083] [0087] [0113], inter alia). Thus, the reference anticipates all limitations of claims 1-3, and 6.
With regard to claims 5 and 11 the reference teaches composition is transparent (i.e., clear), comprising at least one coloring agent (i.e., dyes and pigments; see instant application, para. 0144), (reference classifications, paras. [0059], [0102], [0125]; inter alia). Thus, the reference anticipates all limitations of claims 5 and 11.
With regard to claim 10, the reference teaches a composition comprising a variety of active agents (reference Formulation Examples 2-7, inter alia). The specification of the instant application as filed teaches that the term “UV filters” 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 expressly includes organic UV filters such as octocrylene (para. [0024]). The instant application further introduces UV filters into the composition through the limitations of claim 8 (UV filter) and claim 9 (organic UV filter). Accordingly, a UV filter such as octocrylene would be understood by a person of ordinary skill in the art to constitute an active agent, as taught by Pilz et al. Therefore, the reference anticipates all limitations of claim 10.
[8] Claims 1-3, 6, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel (IDS – NPL – Reference No 1 - "Multi-Vitamin Watery Gel SPF 50+ PA++++," Record ID: 10959200, XP093266166, 4 pp, published 07-2023, “07-31-2023”).
For purpose of this paragraph, the publication date is conservatively assumed to be 07-31-2023, in order to afford Applicant, the benefit of the latest possible publication date prior to the effective filing date.
With regard to claims 1-3, 6, and 11, the reference teaches a sunscreen composition comprising bemotrizinol (bis-ethylhexyloxyphenol methoxyphenyl triazine; see instant application para. [0009]), dextrin palmitate (a gelling agent; see instant application claim 2), alkyl benzoate (a solvent; see instant application, claim 6), acrylate (a thickening agent; see claim 3), and titanium dioxide (coloring agent; see instant application paras. [0144] and [0149]) (reference pgs. 1-2). Thus, the reference anticipates all limitations of claims 1-3, 6, and 11.
With regard to claim 10, the reference teaches a composition comprising a variety of active agents (reference page 2). The specification of the instant application as filed teaches that the term “UV filters” 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 expressly includes mineral UV filters such as titanium dioxide (para. [0024]). The instant application further introduces “additional UV filters” into the composition through the limitations of claim 8, which can include mineral UV filters (see instant application para. [0077]). Accordingly, a UV filter such as titanium dioxide would be understood by a person of ordinary skill in the art to constitute an active agent, as taught by Mintel. Therefore, the reference anticipates all limitations of claim 10.
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.
[9] Claims 1-2 and 4-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-11 of co-pending Application No. 18/543489. Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application 18/543489 teaches a composition comprising bemotrizinol, dextrin palmitate (a gelling agent; see instant application claim 2), caprylic/capric triglyceride and C12-15 alkyl benzoate (solvents; see instant application, claim 6) (see co-pending application claims 1, 5, and 7), corresponding to instant application claims 1-2 and 6 .
The co-pending application further teaches that the at least one solvent is present in the composition in an amount ranging from about 50% to about 75% by weight with respect to the total weight of the composition, and that the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters (instant application paragraph [0077] discloses that the additional UV filter may include organic UV filters; accordingly, claims 8 and 9 are coextensive) (see co-pending application claims 8 and 9), corresponding to instant application claims 7-9.
The co-pending application further teaches that the composition is a stick, transparent, comprising at least one active agent, and comprising at least one coloring agent (see co-pending application claims 6 and 10-11), corresponding to claims 4-5 and 10-11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ALI M. ALAOUIE/Examiner, Art Unit 1614 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614