DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments filed 5/20/2026 have been fully considered but they are not persuasive.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
The 102 rejections of claim 1-3 and 5 are withdrawn in light of amendment.
The 103 rejections of claims 1-7 are withdrawn in light of amendment.
The following rejections and/or objections are either reiterated or newly applied.
New 102 rejections of claims 1-3 and 10-12 are presented as necessitated by amendment.
New 103 rejections of claims 1-7 and 9-12 are presented as necessitated by amendment.
Nonstatutory double patenting rejections of claims 1-7 and 9-11 over copending Application No. 18/543756 are modified or newly presented as necessitated by amendment.
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s argument with respect to the non-statutory double patenting rejections over Application No. 18/543756 have been fully considered but are not found persuasive. Applicant contends that the claims of the copending application do not render the instant claims obvious because the asserted claims would not yield the claimed compositions having the required relative amounts of ingredients. This is not persuasive as the claims of Application ‘756 have been amended (as of 5/20/2026) to also recite a higher relative amount of bemotrizinol compared to octinoxate. Applicant also submits that the claims of Application ’756 require avobenzone stability whereas the claims of the instant application do not. This is not persuasive as it is not necessary that the prior art (or, in this case, the copending application) suggest the same advantage or solve the same problem. A rationale different from applicant’s is permissible. MPEP 2144 IV. Additionally, the instant claims’ use of the transitional phrase “comprising” allows for the presence of avobenzone in the composition, with the exception of instant claim 12.
New Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 is missing a period at the end of the claim. Appropriate correction is required.
New Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 10-12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Chavan et al. (US 2015/0224042, published 8/13/2015).
Regarding claims 1-3 and 10-12 Chavan teaches a sunscreen composition with an SPF of 100 (reads on instant claim 11) comprising 5% Tinosorb S (bemotrizinol) and 2.25% Parsol MCX (octinoxate) by weight [Table 1, Example 4]. This amount of bemotrizinol falls within the range recited in the instant specification as an amount that is effective to improve photostability of octinoxate. See instant Specification at [0066].The amounts taught by Example 4 equate to a 2.22 to 1 ratio of bemotrizinol to octinoxate, which falls within and anticipates the claimed range of instant claim 10. MPEP 2131.03. Example 4 of Chavan does not comprise of additional UV filters (reads on instant claims 2-3 and 12).
New Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5-7, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chavan et al. (US 2015/0224042, published 8/13/2015).
Regarding claim 1, Chavan teaches a photostable sunscreen composition [Abstract] comprising from 0.1% to 10% by weight of Tinosorb S (bemotrizinol) [0021-0022] (see para. 0057) and from 0.1% to 7% by weight of an Parsol MCX (octinoxate) [0043] (see para. 0058). This amount of bemotrizinol falls within the range recited in the instant specification as an amount that is effective to improve photostability of octinoxate. See instant Specification at [0066].
Regarding claims 2 and 3, the composition of Chavan may optionally comprise of additional organic filters [0041]. The composition may comprise of at most 10% total organic sunscreens [claim 12]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05. Example 4 of Chavan further teaches that the composition may comprise of no addition UV filters [Table 1, Example 4].
Regarding claim 5, Chavan teaches that the sunscreen composition may be an emulsion [0040].
Regarding claim 6, Chavan teaches that the sunscreen composition may be in the form of a stick [0050].
Regarding claim 7, Chavan teaches that the sunscreen composition may comprise of a colorant [0052].
Regarding claim 9, Chavan teaches that the sunscreen composition may comprise of inorganic sun-blocks such as zinc oxide and titanium oxide [0047].
Regarding claim 10, Chavan teaches a photostable sunscreen composition [Abstract] comprising from 0.1% to 10% by weight of Tinosorb S (bemotrizinol) [0021-0022] (see para. 0057) and from 0.1% to 7% by weight of an Parsol MCX (octinoxate) [0043] (see para. 0058). This equates to a ratio of bemotrizinol to octinoxate in the range of 100:1 to 0.014:1. The range taught in the prior art overlaps with and makes obvious the instantly claimed range. MPEP 2144.05.
Regarding claim 11, Chavan teaches that the sunscreen composition preferably has an SPF of at least 50. Example 4 of Table 1 teaches a composition with an SPF of 100.
Regarding claim 12, Chavan teaches that the sunscreen composition may be free of avobenzone [Table 1, Example 4].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chavan et al. (US 2015/0224042, published 8/13/2015) as applied to claim 1 above, and further in view of Klepak and et al. (2000).
Regarding claim 4, Chavan teaches that the sunscreen composition may be in the form of a stick comprising a conventional deodorant base [0050]. Chavan does not explicitly teach that such a composition is anhydrous, however, Klepak teaches that antiperspirant sticks are typically anhydrous [pg. 84]. Klepak further teaches that anhydrous formulas are able to go on dry and without any sticky feeling, as compared to water-based formulations. Thus, it would be obvious to a skilled artisan to formulate the sunscreen composition as an anhydrous stick, as anhydrous formulations are conventional in the art and are known to provide a more pleasant feel.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 11, and 13-14 of copending Application No. 18/543756 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim compositions comprising bemotrizinol and octinoxate wherein a higher weight percent of bemotrizinol is present in the composition than of the octinoxate, and the bemotrizinol is present in an amount effective to improve photostability of the octinoxate [‘756 claim 2]. The ratio of bemotrizinol to octinoxate present in the composition may be from about 6:1 to 1.5:1 [‘756 claim 13], and may have a SPF value of at least 50 [‘756 claim 14]. The composition of ‘756 may comprise 10% or less of additional UV filters [‘756 claim 3] or additional organic UV filters [‘756 claim 4] by weight of the total composition. The composition of ‘756 may be in the form an emulsion [‘756 claim 5] or a stick [’756 claim 6]. The composition of ‘756 may further comprise of a coloring agent [‘756 claim 7] or mineral UV filter [‘756 claim 11].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 11, and 13-14 of copending Application No. 18/543756 (hereinafter ‘756) in view of Klepak et al. (2000).
Regarding claim 4, ‘756 does not explicitly claim a composition wherein the composition is anhydrous. However, ‘756 claims a composition in the form of a stick [‘756 claim 6]. Klepak teaches that deodorant sticks (i.e. cosmetic composition sticks for application to the skin) are typically anhydrous [pg. 84]. Klepak further teaches that anhydrous formulas are able to go on dry and without any sticky feeling, as compared to water-based formulations. Thus, it would be obvious to a skilled artisan to formulate the sunscreen composition of ‘756 as an anhydrous stick, as anhydrous formulations are conventional in the art and are known to provide a more pleasant feel.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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, Brian-Yong Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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