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 .
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.
DETAILED ACTION
Status of claims
The amendment filed on 04/16/2026 is acknowledged. Claims 2-4 have been cancelled. Claims 1 and 5-11 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 04/16/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 112(b) rejection of claims 8, 10, and 11 and 35 U.S.C. 102(a)(1) rejection of claims 1-4 and 7-10 over Johncock et al. (US 2010/0183531 A1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. The rejections are modified based on the amendments.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 7-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Johncock et al. (US 2010/0183531 A1).
Johncock et al. teach pharmaceutical/dermatological preparations (abstract) including o/w emulsion (paragraph 145) and exemplified in paragraph 360 example 3 a mousse emulsion comprising
1.5% by weight of ceteareth-20 (an o/w emulsifier as demonstrated in paragraph 358) (the instant claim 7);
2.0% by weight of menthyl anthranilate (within the disclosed most preferred amount of 0.5-5% by weight in the instant specification on page 3, line 25-35 and thus the claimed amount capable of fluorescing the sunscreen composition when exposed to UV light at wavelengths of 254-365 nm in the instant claim 1);
2.5% by weight of bis-ethylhexyloxyphenol methoxyphenyl triazine (BEMT) (within the disclosed preferred amount of 0.4-9% by weight in the instant specification on page 3, line 12-19 and thus the claimed fluorescence quenching effective amount to quench the fluorescing capability of the menthyl anthranilate in the instant claim 1);
dicaprylyl carbonate (the instant claim 8); ethyl alcohol (the instant claim 9); crosslinked acrylate/C10-30 alkyl acrylate polymer (the instant claim 10).
The total weight percentage of oil soluble components is calculated to be 47.55%, thus the claimed o/w emulsion with an oily phase being dispersed in an aqueous phase.
Although Johncock et al. do not expressly disclose the claimed BEMT quenching the fluorescence of menthyl anthranilate, it is noted that the identical compound BEMT disclosed as the claimed BEMT must necessarily possess the same effects upon the claimed menthyl anthranilate, even though such properties may not have been appreciated by Johncock et al. at the time of the invention. “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc.,246 F.3d 1368, 1376 (Fed. Cir. 2001).
Johncock et al. do not specify the same amounts of menthyl anthranilate and BEMT in the instant claim 1 (2% vs the claimed 3-5% and 2.5% vs the claimed 3-5%, respectively).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
In the instant case 0.5-5% by weight menthyl anthranilate is disclosed as most preferred amount in the instant specification on page 3, line 25-35, thus 2% by weight of menthyl anthranilate taught by Johncock et al. has the same properties and the criticality of the claimed 3-5% over 2% taught by Johncock et al. is not established.
In the instant case 0.4-9% by weight BEMT is disclosed as preferred amount in the instant specification on page 3, line 12-19, thus 2.5% by weight of BEMT taught by Johncock et al. has the same properties and the criticality of the claimed 3-5% over 2.5% taught by Johncock et al. is not established.
Please refer to MPEP 2144.05.II.A:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
Johncock et al. do not specify example 3 in paragraph 360 further comprising cetyl alcohol in the instant claim 11.
This deficiency is cured by Johncock et al.’s teaching of further ingredients having care properties including cetyl alcohol (paragraph 245).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 3 in paragraph 360 and paragraph 245 in Johncock et al. to add cetyl alcohol in example 3 in paragraph 360. Adding care ingredients including cetyl alcohol in pharmaceutical/dermatological preparations was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for adding it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Claims 1 and 5-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Johncock et al. (US 2010/0183531 A1) in view of SenGupta (US 2010/0202985 A1).
The teachings of Johncock et al. are discussed above and applied in the same manner. Johncock et al. also teach emulsifiers including potassium cetyl phosphate (paragraph 170) and o/w emulsion comprising potassium cetyl phosphate (formulation example 1 in paragraph 304).
Johncock et al. do not specify potassium cetyl phosphate as an emulsifier in example 3 in paragraph 360 (the instant claims 5 and 6).
This deficiency is cured by SenGupta who teaches O/W emulsifiers including both cetyl phosphate and ceteareth-20 (paragraph 21) and exemplified potassium cetyl phosphate in table IV paragraph 40).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Johncock et al. and SenGupta to replace ceteareth-20 in example 3 in paragraph 360 taught by Johncock et al. with potassium cetyl phosphate. Both potassium cetyl phosphate and ceteareth-20 being suitable o/w emulsifier was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing ceteareth-20 in example 3 in paragraph 360 taught by Johncock et al. with potassium cetyl phosphate flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejection above (newly underlined).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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