DETAILED ACTION
RESPONSE TO AMENDMENT
1. Receipt of Applicants’ amendments/remarks filed 6/15/2026 are acknowledged.
INFORMATION DISCLOSURE STATEMENT
2. No new Information Disclosure Statement has been submitted for review.
WITHDRAWN REJECTIONS
3. Rejections not reiterated from previous Office Actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections- 35 USC § 102
4. 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.
Claims 1-2, 4-8, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johncock et al. (US 20220071872).
Johncock et al. (US 20220071872) (hereinafter Johncock et al.) disclose compositions comprising bemotrizinol and ecofriendly carrier (capric caprylate Triglycerides at 31 % ). The composition has a critical wavelength of 379 and a SPF of 50+ (see Example 5). The composition does not have UV mineral filters or microplastics, is free of oxybenzone and/or octinoxate and is anhydrous (Example 5). The composition further comprises at least one active agent (e.g., homosalate). With regards to “the composition either has a UVAPF/SPF ratio of at least 2/5 or UVAPF/SPF ratio of at least 1/3 and SPF of at least 50”, the MPEP states that "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
Claim Rejections- 35 USC § 103
5. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 10-14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Johncock et al. (US 20220071872) in view of Russell et al. (US 2024/0207152).
Johncock et al. (US 20220071872) (hereinafter Johncock et al.) disclose compositions comprising bemotrizinol and ecofriendly carrier (capric caprylate Triglycerides at 31 % ). The composition has a critical wavelength of 379 and a SPF of 50+ (see Example 5). The composition does not have UV mineral filters or microplastics, is free of oxybenzone and/or octinoxate and is anhydrous (Example 5). The composition further comprises at least one active agent (e.g., homosalate).
Johncock et al. has been discussed supra and teach inclusion of pigments (colorants) (para 0021) and critical wavelength of at least 370 nm but does not explicitly teach UVAPF/SPF ratio of at least 1/3. It is believed that Johncock et al. teach the same composition and thus the properties would follow.
However, for the sake of completeness of prosecution, purely arguendo, if this is not true, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have UVAPF/SPF ratio as disclosed by Russell et al.
Russell et al. (US 2024/0207152) (hereinafter Russell et al.) disclose a sunscreen composition includes a sunscreen active capable of substantially absorbing, scattering and/or deflecting UV radiation on a keratinous substrate. Preferably the UVAPF is at least 1/3 the SPF (para 0017). At least means at minimum and thus encompasses higher values. These actives include bemotirizinol. The critical wavelength method and the UVAPF-to SPF ratio are a couple of different ways of measuring broad spectrum SPF and to be broad spectrum the UVA protection must be at least 1/3 of the labeled SPF value. This means that when this ratio is used, a higher SPF label will give you better UVA protection.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have the ratio of the UVAPF to SPF be 1/3 the SPF value. One would have been motivated to do so because inclusion of the active such as bemotiizinol where the composition has UVAPF of at least 1/3 the SPF yields broad spectrum UVA protection.
6. Claims 1, 9, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Johncock et al. (US 20220071872) in view of Russell et al. (US 2024/0207152) as applied to claims 1-8, 10-14, and 16-18 and further in view of Torardi (US 20060263291).
Johncock et al. has been discussed supra but does not disclose passivated mineral UV filter.
Torardi (US 20060263291) (Torardi) discloses that if deagglomerated titanium dioxide is photo passivated, it can be especially useful for UV light degradation resistance in sunscreens and other protective coatings (para 0070). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include passivated mineral UV filters in the composition of Johncock et al. One would have been motivated to do so for UV light degradation resistance as disclosed by Torardi.
DOUBLE PATENTING
7. 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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18543756. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘756 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. “Effect of an Emollient Emulsion containing at 15 wt % of Cparylic/Capric Triglyceride on the Urocanic Acid of the Stratum Corneum” (hereinafter Neto et al.) disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18543597. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘597 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18543287. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘287 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 6-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18543141. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘141 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18543702. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘702 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18543657. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘657 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products (see last paragraph or introduction).
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18543343. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘343 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products (see last paragraph or introduction).
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18543489. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘489 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18543157. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘157 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18543309. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘309 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18543921. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘921 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18543721. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘721 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18543443. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘443 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18543375. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘375 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18543482. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘482 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. “disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18543130. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘130 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides.
Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-4 and 6-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18985642. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘642 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
Claims 1-4 and 6-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18985628. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘628 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides.
Neto et al. disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products
Claims 1-4 and 6-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18985622. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to sunscreen compositions containing bemotrizinol the differences being that the ‘622 application does not teach the carrier of caprlyc/capric triglycerides. Johncock et al. discloses particularly preferred components of type (i) in the oil phase are as follows: isopropyl myristate, isopropyl palmitate, isopropyl stearate, isopropyl oleate, n-butyl stearate, n-hexyl laurate, n-decyl oleate, isooctyl stearate, isononyl stearate, isononyl isononanoate, 2-ethylhexyl palmitate, 2-ethylhexyl laurate, 2-hexyldecyl stearate, 2-octyldodecyl palmitate, oleyl oleate, oleyl erucate, erucyl oleate, erucyl erucate, 2-ethylhexyl isostearate, isotridecyl isononanoate, 2-ethylhexyl cocoate, caprylic/capric triglycerides. Neto et al. “disclose caprylic/capric triglyceride as an emollient (last paragraph of introduction). It would have been prima facie obvious to one of ordinary skill in the art to have the oil phase contain the caprilyc/capric triglyceride. One would have been motivated to do so because this is a suitable emollient for use in cosmetic products.
RESPONSE TO ARGUMENTS
8. Applicants’ arguments have been fully considered and are not persuasive for the reasons below.
Applicants argue that claim 13 is free of the rejections however, claim 13 recites additional active ingredient The previous office action state the composition further comprise at least one active agent (e.g., homosalate).
Applicants argue that Johncock does not teach the composition containing the claimed ingredients/properties. In response, the Examiner respectfully submits that the same composition structure was taught by Johncock et al. and products of identical composition cannot have mutually exclusive properties. Applicants argue that Russell does not disclose UVAPF/SPF ratio of at least 1/3 or SPF value of at least 50. In response, the Examiner respectfully submits that Johncock et al. disclosed SPF values of at least 50+ and Russell discloses UVAPF is at least 1/3 the SPF (para 0017). These actives include bemotirizinol. The critical wavelength method and the UVAPF-to SPF ratio are a couple of different ways of measuring broad spectrum SPF and to be broad spectrum the UVA protection must be at least 1/3 of the labeled SPF value. This means that when this ratio is used, a higher SPF label will give you better UVA protection. Therefore, Russel recognizes a relationship between the ratio and SPF values.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have the ratio of the UVAPF to SPF be 1/3 the SPF value. One would have been motivated to do so because inclusion of the active such as bemotiizinol where the composition has UVAPF of at least 1/3 the SPF yields broad spectrum UVA protection.
Applicants argue that in view of the amendments and arguments, none of the claims require the unique combination of elements and properties and requests withdrawal of all the double patenting rejections.
In response, the Examiner respectfully submits that since no terminal disclaimers have been filed, the double patenting rejections have been maintained.
CONCLUSION
9. 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.
CORRESPONDENCE
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danah Al-awadi whose telephone number is (571) 270-7668. The examiner can normally be reached on 9:00 am - 6:00 pm; M-F (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANAH AL-AWADI/Primary Examiner, Art Unit 1615
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