Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 1-19 are currently pending and amendments to the claims filed on 02/19/2026 are acknowledged.
Withdrawn rejections:
Applicant's amendments and arguments filed 02/19/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
New Ground of Rejections --- as necessitated by amendment
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 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.
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.
Claims 1-3, 7, 9-15 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IP.com “Modern sunscreen formulations”, 2020-11-05, XP013188249 (IDS of 07/17/2025, hereinafter “IP”).
Applicant claims the below claim 1 filed on 02/19/2026:
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Prior Art
IP discloses sunscreen cream formulations (page 1) comprising oil phase A and aqueous phase B in the form of oil-in-water emulsion wherein the phase A contains cetinol B that is oily component, tinosorb S reading on the claimed bemotrizinol and acrylates/C10-30 alkyl acrylate crosspolymer in which C10-C30 includes stearyl (C18) acrylate and behenyl (C22) acrylate reading on the claimed semi-crystalline polymer comprising at least one alkyl acrylate chain and the phase B contains water, tinocare GL reading on the scleroglucan gum in an amount of 3% which is within the claimed range of 0.1 to 10%, 1,2 alcohol diol reading on the claimed C2 polyol surfactant, Eusolex 232 reading on the claimed active sunscreen agent and additional organic filter in an amount of 2%, etc. (page 3); the composition has a pH 7 which is within the claimed pH of 6 or greater and the composition is free of oxybenzone and/or octinoxate and/or mineral UV filter (page 3); other embodiment of sunscreen formulation on page 5 refers to an emulsion containing tinosorb S reading on the claimed bemotrizinol, 1,2-alchol diol reading on the claimed surfactant, 3.0% tinocare GL reading on the claimed scleroglucan, and 3.0% Microperal M305 (=methylmethacrylate crosspolymer) reading on the claimed semi-crystalline polymer, and the weight ratio of semi-crystalline polymer to scleroglucan is 1:1 that is within the claimed about 5:1 to about 1:3 (page 5)(instant claims 1-3, 7, 9-15 and 18-19).
In light of the foregoing, instant claims 1-3, 7, 9-15 and 18-19 are anticipated by IP.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 4, 5, 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over IP.com “Modern sunscreen formulations”, 2020-11-05, XP013188249 (IDS of 07/17/2025, hereinafter “IP”) as applied to claims 1-3, 7, 9-15 and 18-19 in view of Safouane et al. (EP3709958B1, of record).
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a sunscreen research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from sunscreen cosmetics, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
IP was discussed above with respect to instant claims 1-3, 7, 9-15 and 18-19. IP discloses oil-in-water type emulsion formulations (see entire document) (instant claim 16).
However, IP does not expressly teach at least one semi-crystalline polymer of instant claims 4-5, and SPF of instant claim 8. The deficiencies are curd by Safouane.
Safouane discloses cosmetic or dermatological composition in the form of emulsion comprising acrylic polymer and merocyanine as UV screening agent wherein the acrylic polymer advantageously comprises monomeric units of formulae (A) and (B) ([0019], [0037], [0039], [0041] and [0044]) and claim 1 of prior art which reads on the claimed monomers, R1 groups including stearyl and behenyl group, a weight ratio of hydroxyethyl acrylate to all acrylates, and sum of (A) and (B):
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The polymer of Safouane has a number-average molecular weight Mn ranging from 2000 to 9000 g/mol ([0042]) that is identical to the claimed polymer Mn, and the polymer can be prepared by polymerization of monomer of alkyl acrylate with 2-hydroxyethyl acrylate ([0045]) and R1 is stearyl or behenyl radical in the formula (instant claims 4-5); the weight ratio of the said polymer contributes stability of the composition ([0018]-[0019]); the composition further contains UV-screening agent such as bis-ethylhexyloxyphenol methoxyphenyl triazine (=bemotrizinol), sold under the trade name Tinosorb S® by BASF ([0098]); the composition further contains additional UV-screening agents such as mineral pigments, cinnamic compounds, etc. ([0082]-[0086]) and the composition further contains conventional adjuvants ([0122]); and the composition has a preferable pH of 6 to 8.5 ([0134]); and the composition has a 340 of SFP (in vitro) ([0170]) which is strong value and my corresponds to SPF of at least 30 (instant claim 8).
It would have been obvious to modify the teachings of IP with the specific acrylate polymer of Safouane and certain SPF of in order to enhance stability of the composition and skin, as taught by Safouane. Additionally, it would have been obvious to lower the molecular weight Mn of acrylic polymer with 2000-9000g/mol of Safouane because lower Mn polymers generally have lower viscosity, leading to better spreadability, lighter, less greasy feel on the skin.
In light of the foregoing, instant claims 4-5, 8 and 16 are obvious over IP in view of Safouane.
Claims 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over IP.com “Modern sunscreen formulations”, 2020-11-05, XP013188249 (IDS of 07/17/2025, hereinafter “IP”) as applied to instant claims 1-3, 7, 9-15 and 18-19 in view of Safouane et al. (EP3709958B1, of record) and further in view of Dembny, “Critical wavelength and broad-spectrum UV protection”, obtained from on-line website: Critical wavelength and broad-spectrum UV protection | Dr. Ken Dembny, 2019-06-28, pp. 1-8.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143).
LP was discussed above with respect to claims 1-3, 7, 9-15 and 18-19.
Further, IP discloses oil-in-water type emulsion formulations (see entire document) (instant claim 17).
Safouane discloses that the composition has a 340 of SFP (in vitro) ([0170]) which is strong value and my corresponds to SPF of at least 30
However, the difference between the instant application and LP/ Safouane is that LP/Safouane does not expressly teach the properties of instant claim 6. The deficiency is cured by Dembny.
Dembny discloses a good broad spectrum sunscreen will protect against most of the UV spectrum from at least 370nm of critical wavelength (page 4 of Dembny) (instant claim 6).
It would have been obvious to further modify the composition of IP/Safouane with critical wavelength of at least 370nm of Dembny in order to provide a good broad spectrum sunscreen as taught by Dembny. Further, the claimed ratio properties other than critical wavelength would be a natural result of the combination of the prior art elements of LP/Safouane/Dembny, in the absence of evidence to the contrary because Safouane discloses SPF of 340 (in vitro) and Dembny teaches critical wavelength of at least 370nm. See MPEP 2112.01. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). (inherency is limited when applied to obviousness and is present only when the limitation at issue is the “natural result” of the combination of prior art elements; quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Thus, instant claim 6 is obvious over LP/Safouane in view of Dembny.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments have been fully considered, but are moot in view of newly applied primary reference of IP.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending application No. 18/832780 in view of IP.com “Modern sunscreen formulations”, 2020-11-05, XP013188249 (IDS of 07/17/2025, hereinafter “IP”)
Although the claims at issue are not identical, they are not patentably distinct from each other because both set claims require the same UV screening agent, i.e., at least one polymer comprising monomer units of formulae (A) and (B) with overlapping pH. However, copending ‘780 does not expressly teach bemotrizinol and at least one scleroglucan. The deficiency is cured by LP.
LP discloses bemotrizinol and scleroglucan (pages 3 and 5). It would have been obvious to further add those ingredients of LP to the composition of copending ‘780 in order to enhance the properties of the composition of copending ‘780.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending application No. 18/543823 in view of IP.com “Modern sunscreen formulations”, 2020-11-05, XP013188249 (IDS of 07/17/2025, hereinafter “IP”)
Although the claims at issue are not identical, they are not patentably distinct from each other because both set claims require the same UV screening agent, i.e., at least one polymer comprising monomer units of formulae (A) and (B), C12-C24 fatty acid ester of C2-24 polyol, one carboxylic or carboxylate anionic surfactant. However, copending ‘823 does not expressly teach bemotrizinol and at least one scleroglucan. The deficiency is cured by The deficiency is cured by LP.
LP discloses bemotrizinol and scleroglucan (pages 3 and 5). It would have been obvious to further add those ingredients of LP to the composition of copending ‘823 in order to enhance the properties of the composition of copending ‘823.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending application No. 18/543702 in view of IP.com “Modern sunscreen formulations”, 2020-11-05, XP013188249 (IDS of 07/17/2025, hereinafter “IP”)
Although the claims at issue are not identical, they are not patentably distinct from each other because both set claims require the same components of bemotrizinol, and at least one polymer comprising monomer units of formulae (A) and (B), C12-C24 fatty acid ester of C2-24 polyol, one carboxylic or carboxylate anionic surfactant. However, copending ‘702 does not expressly teach at least one scleroglucan. The deficiency is cured by LP.
LP discloses bemotrizinol and scleroglucan (pages 3 and 5). It would have been obvious to further add those ingredients of LP to the composition of copending ‘702 in order to enhance the properties of the composition of copending ‘702.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
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 KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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, Yong (Brian-Yong) S 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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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
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