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 .
Status of Claims
Claims 1-12 are pending. This is the first office action on the merits.
Information Disclosure Statement
The Information Disclosure Statements filed 1/27/2025 and 5/19/2025 have been reviewed.
Election/Restrictions
Applicants’ election of Group I (claims 1-11), with traverse in the reply dated March 26, 2026 is acknowledged. Applicants’ election of emulsion as the single form of the composition, vitamin E as the single antioxidant system, and avobenzone as the single UV filter with traverse in the reply dated March 26, 2026 is also acknowledged.
The traversal is on the basis that sufficient overlap of subject matter exists between groups I and group II claims because of similar improvement in antioxidant system stability in the groups of claims such that search and examination of both groups would not be overly burdensome. The traversal is also that there is no extra burden related to the search and examination of species other than those elected.
The traversal is not found to be persuasive. MPEP § 803 states that restriction is proper between patentably distinct inventions where the inventions are (1) independent or distinct as claimed and (2) a serious search and examination burden is placed on the examiner if restriction is not required. Inventions I and II are distinct because the product as claimed can be used in a materially different process of using that product to acidify a composition by adding the solution to a basic composition to lower its pH.
In regard to the burden of search and examination MPEP § 803 states that a burden can be shown if the examiner shows either separate classification, different field of search or separate status in the art. In the instant case a burden has been established in showing that the invention of Group I is directed to an invention having a separate classification, i.e. the invention of Group I is classified in class A61K8 subclass 4966, and the invention of Group II is classified in class A61Q7, subclass 04.
As stated in the February 2, 2026 Restriction Requirement, there is a search and/or examination burden for the patentably distinct species as set forth above due to their mutually exclusive characteristics. The species require a different field of search (i.e., searching different classes/subclasses or electronic resources, or employing different search queries) and the prior art applicable to one species would not likely be applicable to another species, and the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
These are the criteria for establishing that unrestricted examination would seriously burden the Examiner, and clearly different searches and issues are involved in the examination of each species. Respectfully, the possibility of some overlap in the prior art that would be reviewed does not alleviate the serious burden that would be placed on the Examiner in having to examine each species.
Claims 7, 9 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups and species, there being no allowable generic or linking claim
Claims 1-6, 8 and 10-11 are currently under consideration to the extent that they read upon Applicant’s elected species.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code in paragraphs 36 and 39. 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 § 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.
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 1-6, 8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Berg-Shultz et al. teaches a method of enhancing the photostability of a cinnamate derivative sunscreen in a topical sunscreen composition which comprises including in the sunscreen composition an effective amount of another sunscreen. (See Abstract and claim 1). Bemotrizinol (aka bis-ethylhexyloxyphenol methoxyphenyl triazine or Tinosorb® S) is one such sunscreen that can enhance the photostability of a cinnamate derivative sunscreen, which can be octinoxate. (See Abstract, claim 1 and claim 8 of Berg-Schultz).
Berg-Schultz discloses a cosmetic emulsion composition that includes active agent (tocopherol) at 0.1 to 1%, pigments/mineral sunscreens (colorant), avobenzone (Parsol® 1789) at 3 wt% and bemotrizinol (Tinosorb® S) at 5 wt% (see example 9 and paragraphs 30, 32, and 42; instant claims 1, 5, 7, and 9). These amounts and ratios fall within the ranges recited in the instant specification as “effective” for stabilization as called for in instant claims 1 and 5. (See paragraph 77 (about 0.1% to about 10% by weight)). 0.1 to 1% vitamin E (tocopherol) overlaps with the less than 1% called for in instant claim 4 and the less than 1.25% called for in instant claim 3.
An encapsulated cinnamate is also present. Encapsulated ethylhexyl cinnamate (octinoxate) is the only particular cinnamate employed in the examples characterizing the stabilizing effect of encapsulating cinnamate compounds which is the focus of Berg-Shultz et al. (see abstract). An emulsion is taught to be a suitable formulation type as called for in claim 8. (See Example 1). Berg-Shultz teaches that octinoxate is stabilized by bemotrizinol. (See claim 8 Berg-Schultz).
Additional sunscreen actives (active agent) are present at less than 10 wt% as called for in instant claims 2 and 6. (See 1.8% octocrylene as shown in Table 2 [0065]).
While a full example of each embodiment that follows from the teachings of Berg-Shultz et al. is not detailed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the active components taught by Berg-Shultz as an emulsion containing (tocopherol) at 0.1 to 1%, pigments/mineral sunscreens (colorant), avobenzone (Parsol® 1789) at 3 wt% and bemotrizinol (Tinosorb® S) at 5 wt% because Berg-Shultz teaches emulsions as a form of its composition and also teaches that bemotrizinol stabilizes other sunscreens such as octinoxate. It also would have been obvious to include a colorant in the sunscreen embodiments because Berg-Shultz suggests to do so.
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 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 8-9, and 11 of copending Application No. 18/543,130 (“the ‘130 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, avobenzone and additional active agents and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 1 of the ‘130 Application recites titanium dioxide whereas instant claims don’t recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including the titanium dioxide of the ‘130 Application.
Another difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘130 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘130 Application to add (tocopherol) at 0.1 to 1% in light of Berg-Shultz teaching that bemotrinzinol stabilizes other components such as sunscreens.
The limitations regarding the properties of the composition in claims 2-4 of the ‘130 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 6-7 and 9 of copending Application No. 18/543,141 (“the ‘141 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘141 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘141 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 1-3 of the ‘141 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘141 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 9-11, and 13 of copending Application No. 18/543,157 (“the ‘157 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘157 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘157 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 1-3 of the ‘157 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘157 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 8-9, 13, and 15 of copending Application No. 18/543,287 (“the ‘287 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘287 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘287 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘287 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8, 10-11, and 13 of copending Application No. 18/543,309 (“the ‘309 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘309 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘309 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 1-3 of the ‘309 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘309 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 8, 10-11, and 13 of copending Application No. 18/543,343 (“the ‘343 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘343 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘343 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 1-3 of the ‘343 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘343 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 12, and 13 of copending Application No. 18/543,375 (“the ‘375 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘375 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘375 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 2-4 of the ‘375 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘375 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 6-8 of copending Application No. 18/543,597 (“the ‘597 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘597 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘597 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘597 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 11, and 13 of copending Application No. 18/543,618 (“the ‘618 Application”). in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘618 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘618 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 2-4 of the ‘618 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘618 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 and 7-8 of copending Application No. 18/543,657 (“the ‘657 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘657 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘657 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 1-3 of the ‘657 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘657 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4-7, 9, and 11 of copending Application No. 18/543,702 (“the ‘702 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘702 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘702 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 4-6 of the ‘702 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘702 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of copending Application No. 18/543,721 (“the ‘721 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘721 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘721 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘721 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3-5, and 8 of copending Application No. 18/543,756 (“the ‘756 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘756 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘756 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘756 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 6, 8, 11, and 13 of copending Application No. 18/543,860 (“the ‘860 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘860 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘860 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims 6 and 8 of the ‘860 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘860 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2, 6-8, and 11 of copending Application No. 18/543,443 (“the ‘443 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘443 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘443 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘443 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 and 8 of copending Application No. 18/985,622 (“the ‘622 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘622 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘622 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘622 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 and 6 of copending Application No. 18/985,628 (“the ‘628 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘628 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘628 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
Therefore, instant claims are obvious over claims of the ‘628 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-6, 8 and 10-11 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 and 10-12 of copending Application No. 18/985,642 (“the ‘642 Application”) in view of Berg-Shultz et al. (US PGPub No. 2006/0073106) (4/6/2006).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a composition comprising bemotrizinol, and therefore, encompass overlapping or coextensive subject matter.
One difference is that instant claims recite an antioxidant vitamin E whereas claims of the ‘642 Application do not recite an antioxidant vitamin E. This deficiency is made up for with the teachings of Berg-Shultz.
The teachings of Berg-Shultz are described supra. It would be prima facie obvious before the earliest effective filing date for an ordinarily skilled artisan making the composition of the ‘642 Application to add (tocopherol) at 0.1 to 1% as taught by Berg-Shultz in order to have an antioxidant in a composition that Berg-Shultz teaches bemotrinzinol can stabilize other components such as sunscreens.
The limitations regarding the properties of the composition in claims of the ‘642 Application are inseparable from the composition and rendered obvious over the same composition recited in the instant claims.
Therefore, instant claims are obvious over claims of the ‘642 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619