DETAILED ACTION
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 .
Priority
The instant application was filed 26 October 2023 and is the national stage entry of PCT/EP2022/060388 filed 20 April 2022. The Applicant claims priority to foreign document EP21170621.3 filed 27 April 2021. An English copy of the foreign documented has not been provided. Therefore, the effective filing date of the instant application is 20 April 2022.
Examiner’s Note
The Applicant's amendments and arguments filed 03 August 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 03 August 2026, it is noted that claim 1 has been amended, no claims have been canceled, and no claims have been newly added. Support for the amendment can be found from the claims. The amendment has been made to narrow the weight % range in claim 1. No new matter has been added.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “triazine derivative,” “benzophenone derivative,” and “benzoylmethane derivative.” The Applicant’s specification does not define or specify the derivatives for the compounds and thus may vary greatly in structure and/or function. The specification also does not provide for a sufficient representative number of species that would allow for all the types of derivatives that can exist for the listed compounds. Without further description of the genus, one of ordinary skill in the art would not be able to readily recognize the derivatives for these compounds and would not recognize that the Applicant was in possession of the entire genus at the time of filing. MPEP 2163 II - A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). In this case, the genus is “derivatives” of any benzophenone, triazine, and benzoylmethane compounds.
The instant specification provides limited examples of the derivatives (instant specification, pg. 4). These species are not representative of the entire claimed genus, which encompasses any variation in structure.
The genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. If the genus has substantial variance, the disclose must describe a sufficient variety of species to reflect the variation within that genus. See MPEP 2163. The instant specification does not disclose a representative number of derivatives for the compounds. Thus, one of ordinary skill in the art would be led to conclude that the Applicant was not in full possession of the claimed invention at the time of filing.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1, 4, 5, 7, 8, 12, 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanzendoerfer et al. (DE 10050155 A1; machine translation cited).
Regarding claim 1, Lanzendoerfer teaches a cosmetic composition comprising A) desferrioxamine in an amount of 0.5%, antioxidants, and B) a UV filter agent, such as methylbenzylidenecamphor (Example 1; entire teaching) or butylmethoxydibenzoylmethane (benzoylmethane derivative) (Example 9), in an amount of 0.1-30% (pg. 5, para. 2).
Regarding claim 4, desferrioxamine may be in an amount of 0.5% (Example 1).
Regarding claim 5, the composition may comprise at least one UV filter agent, such as methylbenzylidenecamphor (Example 1; entire teaching) or butylmethoxydibenzoylmethane (benzoylmethane derivative) (Example 9).
Regarding claim 7, 2-ethylhexyl salicylate and a triazine derivative (pg. 5, para. 4) are examples of suitable UV filter agents, and UVB filters and UVA filters may be combined, which is interpreted as having at least one UV filter agent (pg. 5, paras. 7-8).
Regarding claim 8, the composition may comprise antioxidants (Example 1).
Regarding claim 12, the UV filter agent may be in an amount of 0.1-30% (pg. 5, para. 2).
Regarding claim 15, the amount of desferrioxamine may be 0.5% (Example 1).
Regarding claim 16, the composition comprising UV filter agents, such as methylbenzylidenecamphor (Example 1), butylmethoxydibenzoylmethane (Example 9), 2-ethylhexyl salicylate, and triazine derivative compounds (pg. 5, para. 4), is interpreted as including at least four UV agents.
Lanzendoerfer does not teach an exact combination of desferrioxamine and 8-60% of a UV filter agent in claim 1.
In regards to selecting the combination of desferrioxamine and 8-60% of a UV filter agent in claim 1, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Lanzendoerfer teaches compositions comprising desferrioxamine, antioxidants, and 0.1-30% of UV filtering agents, whereas the claimed invention is directed towards a composition comprising at least one desferrioxamine or acid addition product of desferrioxamine and 8-60% of a UV light protection filter substance. Since Lanzendoerfer teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Claim(s) 2, 3, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanzendoerfer et al. (DE 10050155 A1; machine translation cited), as applied to claim(s) 1-5, 7, 8, 12-16 above, in view of Gurtner (WO 2020061474 A1).
In regards to claim(s) 1, 4, 5, 7, 8, 12, 15, 16, Lanzendoerfer, as applied supra, is herein applied in its entirety for its teachings of a cosmetic composition comprising desferrioxamine and a UV filter agent.
Lanzendoerfer does not specifically teach an acid addition product of desferrioxamine in claim 3. Lanzendoerfer does not specifically teach desferrioxamine B in claims 2, 13, and 14.
Gurtner teaches a topical composition comprising iron chelating compounds (abs; entire teaching), such as deferoxamine (desferrioxamine B, instant specification, pg. 1) or deferoxamine mesylate (para. 136). Use of pharmaceutically acceptable salts or acid addition salts, such as sulfuric acid, phosphoric acid, or malonic acid (para. 45) are considered safe, non-toxic, have favorable pharmacological activity, and are well-known in the art (para. 51).
Since Lanzendoerfer does not specifically teach desferrioxamine B or an acid addition product of desferrioxamine in claims 2, 3, 13, and 14, one of ordinary skill in the art would have been motivated to use Gurtner’s teaching with a reasonable expectation of success. Use of an acid addition salt of a drug compound is known and established in the art. Furthermore, a skilled artisan would have been easily led to improve Lanzendoerfer’s teaching for the added benefit of favorable pharmacological activity, safety, and non-toxicity. Generally, it is prima facie obvious to combine or substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
Response to Arguments
Applicant's arguments filed 03 August 2026 have been fully considered but they are not persuasive.
The Applicant argues that Lanzendoerfer only teaches examples of UV filter agents that are not in the claimed % range (Remarks, pgs. 8-10).
Applicant’s argument is not found persuasive. Lanzendoerfer teaches a UV filter agent in an amount of 0.1-30% (pg. 5, para. 2). The Applicant is erroneously pointing to narrow embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123).
Furthermore, the amount of UV agent can be viewed as a variable that achieves the recognized result of successfully making the cosmetic composition, which a skilled artisan would have been easily motivated to modify and adjust based on the broad teachings of Lanzendoerfer. The optimum or workable range of amounts can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration, such as unexpected results, that would render the optimized amounts of UV filter agents as nonobvious.
The Applicant argues that increasing the amount of UV filters would lead to increased toxicity from systemic blood absorption, endocrine disruption, skin sensitization/irritation, etc. (Remarks, pgs. 9-10).
Applicant’s argument is not found persuasive. The arguments of counsel cannot take the place of evidence in the record (see MPEP 2145(I)).
The Applicant argues that Lanzendoerfer does not teach the unexpected result of improved washing out of the composition from a textile (Remarks, pg. 11).
Applicant’s argument is not found persuasive. The Applicant is asked to clarify what Formulation in the instant specification shows improved wash out. Formulations 2-6 show more effectiveness in terms of lessening the discoloration of stained textile compared to Formulation 1. Formulation 1 contains disodium EDTA, which is not interpreted as a UV filter agent, and Formulations 2-6 contain different UV filtering agents. Furthermore, Formulations 8 and 9 comprising hydroxyacetophenone and desferrioxamine allegedly show more efficient washing compared to Formulation 7, which also contains hydroxyacetophenone (instant specification, pg. 12). Therefore, it is not unexpected or surprising that formulations comprising UV filtering agents would result in reduced discoloration of fabrics, textiles, etc. Furthermore, any alleged evidence of reduced discoloration in textiles does not have a causal relationship with the merits and scope of the claimed invention, which is, broadly, a composition comprising desferrioxamines and a UV filtering agent, such as a triazine derivative, salicylic acid ester, a benzophenone derivative, or a benzoylmethane derivative. As such, the data are not commensurate in scope with the claims.
“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 [95 USPQ2d 1525] (Fed. Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 [97 USPQ2d 1673] (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp., 463 F.3d at 1312 (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”); In re Woodruff, 919 F.2d 1575, 1578 [16 USPQ2d 1934] (Fed. Cir. 1990).
The Applicant argues that Gurtner does not remedy the deficiencies of Lanzendoerfer (Remarks, pg. 11).
Applicant’s argument is not found persuasive. Since Lanzendoerfer does not specifically teach desferrioxamine B or an acid addition product of desferrioxamine in claims 2, 3, 13, and 14, one of ordinary skill in the art would have been motivated to use Gurtner’s teaching with a reasonable expectation of success. Use of an acid addition salt of a drug compound is known and established in the art. Furthermore, a skilled artisan would have been easily led to improve Lanzendoerfer’s teaching for the added benefit of favorable pharmacological activity, safety, and non-toxicity. Generally, it is prima facie obvious to combine or substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
The Applicant argues against the written description rejection for claim 1 (Remarks, pg. 12).
Applicant’s argument is not found persuasive. The Applicant’s specification does not define or specify the derivatives for the compounds and thus may vary greatly in structure and/or function. The specification also does not provide for a sufficient representative number of species that would allow for all the types of derivatives that can exist for the listed compounds. Without further description of the genus, one of ordinary skill in the art would not be able to readily recognize the derivatives for these compounds and would not recognize that the Applicant was in possession of the entire genus at the time of filing. MPEP 2163 II - A “representative number of species” means that the species which are adequately described are representative of the entire genus.
The instant specification provides limited examples of the derivatives (instant specification, pg. 4). These species are not representative of the entire claimed genus, which encompasses any variation in structure.
The genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. If the genus has substantial variance, the disclose must describe a sufficient variety of species to reflect the variation within that genus. See MPEP 2163. The instant specification does not disclose a representative number of derivatives for the compounds. Thus, one of ordinary skill in the art would be led to conclude that the Applicant was not in full possession of the claimed invention at the time of filing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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