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 .
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
Claims 1-11 are pending in this application. This application is a national stage entry of PCT/EP2022/055565, filled on 03/04/2022, which claims foreign priority to EP 21162443.2, filed on 03/12/2021 in Europe.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claims 8, 10, and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim 8 recites the broad recitation of Markush oil group, and claim 8 also recites narrower Markush oil groups as “preferably” and “most preferably which are the narrower statements of the range/limitation; claim 10 recites the broad recitation of a Markush thickener group, and claim 10 also recites a narrower Markush thickener group as “preferably” which is the narrower statement of the range/limitation; and claim 11 recites the broad recitation of Markush surfactant group, and claim 11 also recites a narrower Markush surfactant group as “preferably” which is the narrower statement of the range/limitation.
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 1-4 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johncock et al. (US 2010/0183531 A1).
Johncock et al. meet all of the limitations of claims 1-4 and 7-10. Johncock et al. disclose 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 claimed 0.5-05% in the instant claim 3 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 claimed 1-05% in the instant claim 2 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).
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 1-4 and 7-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Johncock et al. (US 2010/0183531 A1).
The teachings of Johncock et al. are discussed above and applied in the same manner.
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 1-11 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.
Correspondence
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.
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/HONG YU/
Primary Examiner, Art Unit 1614