DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-32 are pending. Claim 29 is withdrawn. Claims 1-29 and 30-32 are under consideration in this action.
Change in Examiner
The examiner for your application in the USPTO has changed. Examiner Monica Shin can be reached at 571-272-7138.
Election/Restrictions
Applicant's election with traverse of Group I and the following species in the reply filed on February 12, 2026 is acknowledged:
Particle: hydrophobic UVB filter
Polymer or copolymer: acrylate
Active therapeutic agent: antioxidant
Modifying agent: silicone
Polar solute: vitamins
Formulation type: light liquid
Functional agent: surfactant
The traversal is on the ground(s) that there is a relationship between Groups I and II and thus not “independent”, and in view of the fact that the sprayable sunscreen compositions of Group I are formed by the process of Group II, it is submitted that a showing of distinctness cannot be made.
This is not found persuasive because as discussed in the Restriction Requirement of Dec. 17, 2025, the inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product, or (2) that the product as claimed can be made by another and materially different process (MPEP 806.05(f)). In the instant case, the process of Group 2 can be used to prepare materially different dispersions or compositions, e.g., herbicidal sprays for agricultural use.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). In the present case, claim 13 recites that the polymer or copolymer fragments or combinations thereof are at least one of natural and synthetic polymer and copolymer fragments, and any derivatives or combinations thereof. As natural and synthetic are the only two possibilities, claim 13 essentially is the same scope as claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4, 7, 11-13, 15-19, 22, 28, 30, and 31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to Claim 1, the claim, in the third paragraph of the body of the claim recites “wherein the one or more polymer or copolymer fragments … are sufficient to stabilize the particles … in said dispersion.” It is unclear in what way the polymer/copolymer fragments must be “sufficient” to stabilize the particles (e.g., present in a particular amount, whether a particular type of polymer/copolymer fragment is present, etc.).
Further regarding Claim 1, the claim in the first paragraph of the body of the claim recites that the composition comprises “a dispersion comprising … (iii) an aqueous-soluble fluid.” However, in the last paragraph of the body of the claim, the claim recites that “the sprayable composition is an aqueous solute fluid.” It is unclear if the two “aqueous-soluble fluids” are distinct, if they are intended to refer to the same thing, if it is referring to a particular component, or if it is referring to a formulation type.
Further regarding Claim 1, the claim in the last paragraph of the body of the claim recites “desired droplet size”. As “desired” is a subjective term, and what is desirable to one user may not necessarily be desired for another user, it is unclear what drop size would and would not be encompassed within the boundaries of the term.
With regards to Claim 4, the claim is directed to a composition claim, but it recites that the sprayable sunscreen composition “is dispensed”, implying method steps for using this product. Per MPEP 2173.05(p), a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
With regards to Claim 7, the claim in the second paragraph of the body of the claim recites “low energy mixing”. As the term “low” is a subjective term, it is unclear what the full scope of “energy” levels or types of mixing are considered to be “low energy mixing”. While the instant Specification defines the term “low energy mixing” to be “low shear mixing in which the mixing is mechanical” (P.G. Pub., para.0060), the term “low shear” again is subjective and it is unclear what the full scope of “low” is. The instant Specification discloses illustrative mechanical equipment useful for low energy mixing, but first, they are merely exemplary and not a definitive, fine list, and it is unclear if such equipment only perform low energy mixing, or if it can provide additional energy level mixing.
Further regarding Claim 7, the claim in the third paragraph of the body of the claim recites “ultra-high energy mixing”. As the term “ultra-high” is a subjective term, it is unclear what the full scope of “energy” levels or types of mixing are considered to be “ultra-high energy mixing”. While the instant Specification defines the term “ultra-high energy mixing” to be “ultra-high shear mixing in which the mixing is non-mechanical” (P.G. Pub., para.0061), the term “ultra-high shear” again is subjective and it is unclear what the full scope of “ultra-high” is. The instant Specification discloses illustrative non-mechanical equipment useful for ultra-high energy mixing, but first, they are merely exemplary and not a definitive, fine list, and it is unclear if such equipment only perform ultra-high energy mixing, or if it can provide additional energy level mixing. Claim 11 is similarly rejected for the recitation of “ultra-high energy mixing” in line 1.
Further regarding Claim 7, the claim in the fourth paragraph of the body of the claim recites “wherein the second dispersion comprises … (iii) an aqueous-solute fluid.” As currently written, it is unclear if the aforementioned aqueous-soluble fluid is intended to be the same aqueous-soluble fluid as the one recited in the first paragraph of the body of the claims, or if it is intended to be a different aqueous-soluble fluid. If it is intended to refer to the same aqueous-soluble fluid as the first one mentioned in the first paragraph of the body of the claim, Examiner suggests amending the limitation to be “wherein the second dispersion comprises … (iii) the aqueous-solute fluid.”
Further regarding Claim 7, the claim, in the sixth paragraph of the body of the claim recites “wherein the one or more polymer or copolymer fragments … are sufficient to stabilize the particles … in said dispersion.” It is unclear in what way the polymer/copolymer fragments must be “sufficient” to stabilize the particles (e.g., present in a particular amount, whether a particular type of polymer/copolymer fragment is present, etc.).
With regards to Claim 12, the claim recites “thereby reducing the number of hydrophobic particle collisions and potential coalescence” in the last line. It is unclear what the comparison point is to ascertain whether a reduction has been seen or not.
With regards to Claim 13, the claim recites “proteins including casein” in lines 7-8. It is unclear if the phrase is intended to be specific proteins that have casein, or if casein is an example of proteins suitable to meet the claim. In the case of the latter, it is unclear if casein is intended to be a required component, or if it is intended to merely be an exemplary protein, but not necessary the protein required.
With regards to Claim 15, the claim require “alkyl (or alkenyl)” in lines 3-4. It is unclear what the scope of the phrase is intended to be as alkyl and alkenyl are not synonymous. It is unclear if alkenyl is a part of the claim scope, and if so, in what way.
With regards to Claim 16, the claim recites “wherein the one or more hydrophobic UVB filters … comprise one or more active or therapeutic agents(s).” As the filters themselves are already active agents, the claim as currently written is unclear as to whether the filters themselves are to include the active or therapeutic agents, or if the composition itself further includes the active/therapeutic agents.
With regards to Claims 17, 18, 30, and 31, the claims recite additional functional agents as categories of types of agents (e.g., antimicrobial agents, surfactants, etc.). However, each claim recites at the end of the list “any derivatives … thereof.” As the recited elements are categories of types of agents, not actual compounds, it is unclear what is encompassed by “derivatives” of such categories of agents (e.g., what are and are not considered “derivatives” of antimicrobial agents).
With regards to Claim 19, the claim recites “wherein the one or more hydrophobic UVB filters … comprise at least one aesthetic modifying agent.” As the filters themselves are already a particular active agent, the claim as currently written is unclear as to whether the filters themselves are to include at least one aesthetic modifying agent, or if the composition itself further includes the at least one aesthetic modifying agent.
With regards to Claim 22, as discussed above, claim 1 recites two “aqueous-solute fluids.” Thus, it is unclear which aqueous-solute fluid that claim 22 is referring to.
With regards to Claim 28, the claim recites “liquid/toner” and “fluid/serum”. As written, it is unclear if liquid is intended to be synonymous with toner and if fluid is intended to be synonymous with serum, or if they are intended to be noting the type of formulation and intended use of the formulation.
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, 2, 4-22, 24, 25-28, 30, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Hougaz (US 2009/0061001 A1; published Mar. 5, 2009).
With regards to Claims 1, 4, 7-15, 22, 24, and 25, Hougaz discloses a sunscreen formulation in the form of an emulsion which includes one or more sunscreen agents and one or more propellants contained within an aerosol can such that the sunscreen composition is dispensed from the aerosol can by the propellant(s) in the form of a fine mist, spray, or fog (reading on sprayable sunscreen) allowing a uniform film of the sunscreen composition to be applied to the skin of a person to provide a uniform form of protection so as to overcome the harmful effects of the sun’s rays on the skin (abstract).
The sunscreen composition is in a form that can be dispensed more readily from a container to deliver a substantially uniform film or to provide a substantially uniform coverage of the sunscreen agent on the surface of the skin in order to provide more consistent protection for the skin (par.0008, 0012). Typically, the container is a container capable of containing one or more propellants. More typically, the container is a pressurized container, Even more typically, the container is an aerosol container (para.0017).
Among the suitable sunscreens for inclusion include octocrylene, octyl salicylate (a mono-alkyl ester), and phenylbenzimidazole sulfonic acid (hydrophobic UVB filters) (para.0030). The sunscreen agents are present in the sunscreen composition in an amount of about from 1 wt.% to about 40 wt.% of the total weight of the composition. Usually, the higher the SPF, and UV filtering, the greater the amount of sunscreen agents incorporated into the sunscreen formulation (para.0031).
The sunscreen composition is in the form of an emulsion, such as an oil-in-water emulsion (reading on a dispersion) (para.0012, Hougaz claim 7). Hougaz exemplifies the UV agents being within the oil phase (p.7, Table 1). The emulsion can be a standard emulsion, a nano-emulsion, or a micro-emulsion. More typically, the emulsion of whichever type has a particle size of from about 0.001 to 1000 micron, preferably from about 0.5 to 1000 micron depending upon the type of emulsion (par.0036). Thus, as the sunscreen composition is in the form of an oil-in-water emulsion, and the sunscreen agents may be the aforementioned hydrophobic sunscreen agents in the oil phase, the sunscreen agents will be in the form of oil particles in the emulsion.
The sunscreen composition comprises thickeners, such as acrylates/cross polymers (par.0046). The thickener is included to adjust the viscosity of the sunscreen formulation to assist in providing a fine mist of spray and/or forming a uniform coverage of the sunscreen formulation on the skin (para.0047). The amount of thickener added to the compositions include from about 0.01% to 20.0%, preferably from about 0.01% to 10.0% of the total weight of the composition (par.0048).
Hougaz exemplifies a sunscreen composition comprising the sunscreen agent in an amount of 5.0-20.0 wt.% and thickener in an amount of 0.1-5.0 wt.% (p.7, Table 1). Thus, in the case that the sunscreen composition comprises the sunscreen agent (e.g., hydrophobic UVB filters) in an amount of 20.0 wt.% and the thickener (e.g., acrylate) in an amount of 5 wt.%, the acrylate would be present in the composition in an amount of 20 wt.% of the hydrophobic UVB filters.
The sunscreen composition may further include additives including preservatives (para.0052). Among the suitable preservatives include vitamin C (reading on polar solute). The preservatives/antioxidants may be present in an amount of about 0.01 wt.% to about 2 wt.% of the total weight of the composition (para.0052). Hougaz exemplifies a sunscreen composition comprising water in an amount of 20-70 wt.% and preservatives in an amount of 0.1-2.0 wt.% (p.7, Table 1). Thus, the sunscreen composition comprises aqueous-solute fluid in an amount of 20.1-72 wt.%.
With regards to Claim 2, typically, the compositions can have any viscosity from about 10 cps to about 500,000 cps, preferably from about 100 cps to about 10,000 cps, more preferably from about 300 cps to about 5,000 cps, all measured at 21oC (par.0022).
Although the claimed ranges of viscosity are measured at 25oC, whereas Hougaz discloses the viscosity at 21oC, considering Hougaz discloses a large range with significant overlap of the claimed range, it would be reasonable to expect that Hougaz’s formulation viscosity, when measured at 25oC, would also overlaps with the claimed range.
With regards to Claim 5, the spray is in the form of a fine particle size or fine droplet size mist, fog, aerosol, spray, or the like. More typically, the spray has a particle size or droplet size of from about 0.1 micron to about 5000 micron, preferably from about 0.2 micron to about 1000 micron, more preferably from about 1.0 micron to about 500 micron (para.0025; Hougaz claim 10).
With regards to Claim 6, the propellant used is of any suitable type. Among the suitable types include carbon dioxide (para.0035). The propellant may be present in the composition in an amount ranging from 2.0-50.0 wt.% (p.7, Table 1).
With regards to Claims 16, 18, and 27, the sunscreen composition may further comprise an antioxidant (p.7, Table 7). The antioxidant may be present in an amount of from 0.01-0.5 wt.% (p.7, Table 1). Among the suitable
With regards to Claims 19 and 21, the composition may additionally contain one or more emollients to provide a softening or soothing effect on the surface of the skin and is generally regarded as being non-toxic and hence is considered safe for topical use, particularly topical use in the form of a uniform film of sunscreen. Among the suitable emollients include silicones such as dimethyl polysiloxane (reading on a polysiloxane) (para.0049-0050).
With regards to Claims 20 and 32, as discussed above, thickeners are included in the sunscreen composition. The thickener is included to adjust the viscosity of the sunscreen formulation to assist in providing a fine mist of spray and/or forming a uniform coverage of the sunscreen formulation on the skin (para.0047).
With regards to Claim 26, the claim depends from claim 24, which recites the water soluble solids and water soluble liquids in the alternative. Claim 26, as currently written, only limits the specific water soluble liquids without positively reciting that the composition must include water soluble liquids. Thus, as currently written, claim 26 is interpreted as wherein the one or more polar solutes are water soluble lids and/or water soluble liquids, but if they are water soluble liquids, then it must be one as recited in claim 26. As Hougaz, for the reasons discussed above, includes water soluble solids, it reads on claim 26 as well.
With regards to Claim 28, the state of the composition can be from being almost gelatinous to being extremely thin (par.0022). As the composition is in the form of an emulsion in fluid form, and Hougaz discloses that their formulations may be extremely thin, Hougaz encompasses their compositions being in the form of a light fluid.
With regards to Claims 17 and 30, as discussed above, the sunscreen composition is in the form of an emulsion. The emulsion includes an emulsifier to promote the formation of the emulsion. More particularly, the emulsifier assists in stabilizers of the emulsion and of the sunscreen composition. Among the suitable emulsifiers include sorbitan oleate (reading on a surfactant) (para.0036-0037).
With regards to the amounts and ranges disclosed by Hougaz discussed above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Furthermore, with regards to Claims 7, 9-12, 17, 20, and 27, the claims are directed to product-by-process claims. Note MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The MPEP also indicates that “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hougaz (US 2009/0061001 A1; published Mar. 5, 2009) as applied to claims 1, 2, 4-22, 24, 25-28, 30, and 32, further in view of Wilmott et al. (Wilmott) (US 2014/0271877 A1; published Sept. 18, 2014).
The teachings of Hougaz as they apply to Claims 1, 2, 4-22, 24, 25-28, 30, and 32 are set forth above and incorporated herein.
Hougaz does not appear to explicitly disclose wherein the particles of the one or more hydrophobic UVB filters meet criteria (i)-(iii) as recited in Claim 3. Wilmott is relied upon for this disclosure. The teachings of Wilmott are set forth herein below.
Wilmott discloses compositions for application to skin, which sunscreen agents, e.g., octocrylene, ethylhexyl salicylate (also known as octyl salicylate), and phenylbenzimidazole sulfonic acid (abstract; Wilmott claim 18). Wilmott discloses their composition being in the form of a dispersion with a suspension of submicron particles of hydrophobic agent(s) (defined as agents having a solubility of less than 0.1% by weight in water) (para.0008, 0015, 0031, 0033).
Wilmott defines “submicron hydrophobic dispersion” to be a submicron suspension of hydrophobic agents particles in an aqueous fluid or an aqueous-solvent fluid with an average particle size from 100 nm to 999 nm. In embodiments of the invention, 85% or more, or 90% or more, of the hydrophobic agent particles have a size within 100 nm of the average particle size (para.0025).
As discussed above, Hougaz discloses sunscreen formulations in the form of emulsions which comprise sunscreen agents such as octocrylene, ethylhexyl salicylate, and phenylbenzimidazole. As discussed above, as the sunscreen composition is in the form of an oil-in-water emulsion, and the sunscreen agents may be the aforementioned hydrophobic sunscreen agents in the oil phase, the sunscreen agents will be in the form of oil particles in the emulsion. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Hougaz with the teachings of Wilmott and such as particle size dispersion as disclosed by Wilmott for the sunscreen agent particles in Hougaz’s sunscreen formulation. One of ordinary been motivated to do so as such particle size dispersion is known to be suitable for sunscreen formulations. Furthermore, one of ordinary skill in the art would have been motivated to minimize the size distribution of the particles in order to improve the look and feel of the formulation and ensure uniform protection of the skin when applied. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Hougaz and Wilmott are directed to dispersion-type sunscreen formulations incorporating overlapping hydrophobic sunscreen agents, and Wilmott discloses that their disclosed particle size dispersion is known to be suitable for such formulations.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claims 23 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hougaz (US 2009/0061001 A1; published Mar. 5, 2009) as applied to claims 1, 2, 4-22, 24, 25-28, 30, and 32, further in view of Kaplan et al. (Kaplan) (US 2010/0278762 A1; published Nov. 4, 2010).
The teachings of Hougaz as they apply to Claims 1, 2, 4-22, 24, 25-28, 30, and 32 are set forth above and incorporated herein.
Hougaz does not appear to explicitly disclose (i) wherein the one or more polar solutes have a water solubility of 0.1% or greater at a temperature of 23oC and a pressure of 100 kPa; and a dielectric constant greater than 10 at a temperature of 23oC and a pressure of 100 kPa (Claim 23); or (ii) wherein the composition further comprises one or more hydrophilic antioxidants (Claim 31). Kaplan is relied upon for these disclosures. The teachings of Kaplan are set forth herein below.
Kaplan discloses compositions for use as sunscreen for application to a user’s skin (abstract). Kaplan’s sunscreen compositions include photodamage reparative ingredients (abstract; para.0134). In order to repair oxidative stresses and mop up free radicals, a variety of vitamins, cofactors, minerals, antioxidants, quenchers, or the like may be included (para.0135).
Among the suitable vitamins that may be included vitamin C salts, such as sodium or magnesium ascorbyl phosphate (reading on vitamin having a water solubility of 0.1% or greater at a temperature of 23oC and a pressure of 100 kPa; and a dielectric constant greater than 10 at a temperature of 23oC and a pressure of 100 kPa) (para.0136).
Among the suitable antioxidants that may be included into green tea polyphenols (hydrophilic antioxidant) (para.0139).
With regards to Claim 23, as discussed above, Hougaz discloses sunscreen formulations which may include vitamins such as vitamin C. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Hougaz and Kaplan and include Kaplan’s vitamin C salt, e.g., sodium or magnesium ascorbyl phosphate, into Hougaz’s sunscreen formulation. One of ordinary skill in the art would have been motivated to do so in order to obtain the benefit of providing photodamage reparative effects, e.g., repairing oxidative stresses, when applying the sunscreen. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Hougaz and Kaplan are directed to sunscreen formulations, and Hougaz discloses that vitamins such as vitamin C may be incorporated into their sunscreen, and Kaplan discloses that their vitamin C salts are knowns for inclusion into sunscreen formulations.
With regards to Claim 31, as discussed above, Hougaz discloses sunscreen formulations which may include antioxidants. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Hougaz and Kaplan and include Kaplan’s antioxidants, e.g., green tea polyphenols, into Hougaz’s sunscreen formulation. One of ordinary skill in the art would have been motivated to do so in order to obtain the benefit of providing photodamage reparative effects, e.g., repairing oxidative stresses, when applying the sunscreen. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Hougaz and Kaplan are directed to sunscreen formulations, and Hougaz discloses that antioxidants may be incorporated into their sunscreen, and Kaplan discloses that their disclosed antioxidants are knowns for inclusion into sunscreen formulations.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
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 1-29 and 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,357,546 B2 (USPN 546).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping sprayable sunscreen compositions comprising a dispersion (e.g., emulsion) comprising submicron particles of one or more hydrophobic sunscreen (e.g., UVB filters) and an aqueous-solute fluid.
The primary difference is that USPN 546 does not appear to explicitly claim the inclusion of one or more polymer or copolymer fragments. However, USPN 546’s claim 1, for example, recites the inclusion of one or more rheological modifying agents. USPN 546, in its specification, discloses that the rheological modifying agents include acrylates. It is proper to turn to and rely on the disclosure of a patent or a patent application as a dictionary to understand the scope of what is meant by a term in a claim and/or to ascertain what constitutes an obvious modification. This position is supported by the courts. See In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
Claims 1-29 and 30-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23, 26, and 27 of copending Application No. 18/389,723 (Copending 723).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping sprayable sunscreen compositions comprising a dispersion (e.g., emulsion) comprising submicron particles of one or more hydrophobic sunscreen (e.g., UVB filters) and an aqueous-solute fluid.
The primary difference is that Copending 723 does not appear to explicitly claim the inclusion of one or more polymer or copolymer fragments. However, Copending 723’s claim 4 recites the inclusion of one or more rheological modifying agents. Copending 723, in its specification, discloses that the rheological modifying agents include acrylates (P.G. Pub., para.0180). It is proper to turn to and rely on the disclosure of a patent or a patent application as a dictionary to understand the scope of what is meant by a term in a claim and/or to ascertain what constitutes an obvious modification. This position is supported by the courts. See In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
It is noted that a Notice of Allowance has been issued for Copending 723.
Claims 1-29 and 30-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 and 27 of copending Application No. 18/542,116 (Copending 116).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping sprayable sunscreen compositions comprising a dispersion (e.g., emulsion) comprising submicron particles of one or more hydrophobic sunscreen (e.g., UVB filters) and an aqueous-solute fluid.
The primary difference is that Copending 116 does not appear to explicitly claim the inclusion of one or more polymer or copolymer fragments. However, Copending 116’s claim 4 recites the inclusion of one or more rheological modifying agents. Copending 116, in its specification, discloses that the rheological modifying agents include acrylates (P.G. Pub., para.0203). It is proper to turn to and rely on the disclosure of a patent or a patent application as a dictionary to understand the scope of what is meant by a term in a claim and/or to ascertain what constitutes an obvious modification. This position is supported by the courts. See In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-29 and 30-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over(i) claims 1-27 and 29-31 of copending Application No. 18/544,271 (Copending 271) and (ii) claims 1-27 of copending Application No. 18/542,085 (Copending 085).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping sprayable sunscreen compositions comprising a dispersion (e.g., emulsion) comprising submicron particles of one or more hydrophobic sunscreen (e.g., UVB filters) and an aqueous-solute fluid.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-29 and 30-32 are rejected. No claims are allowed.
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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