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.
Election/Restrictions
Claims 9-11, 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 28 November 2025.
Applicant's election with traverse of Group I in the reply filed on 28 November 2025 is acknowledged. The traversal is on the ground(s) that there is no analysis under MPEP 1893.03(d) and there is no search burden. This is not found persuasive because one of ordinary skill in the art would have been motivated to use Weinert’s teaching of using a UV filter agent and a complexing agent to improve the composition taught in Lanzendoerfer. Weinert’s teaching includes EDTA, an iron chelator, as a complexing agent in combination with a UV filtering agent (pg. 2, para. 6) that produces this surprising benefit. One of ordinary skill in the art would have been led to use any complexing agent and iron chelator, such as desferrioxamine, with a UV filtering agent with a reasonable expectation of success. Therefore, the groups lack unity of invention.
Additionally, the inventions require different fields of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). Therefore, there is a serious burden in terms of search and examination, as examination of the inventions together necessitates multiple search queries.
The requirement is still deemed proper and is therefore made FINAL.
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, 2, 4-8, 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanzendoerfer et al. (DE 10050155 A1; machine translation cited).
Lanzendoerfer teaches a cosmetic composition comprising desferrioxamine B (evidenced by instant specification, pg. 1) in an amount of 0.5%, antioxidants, and a UV filter agent, such as methylbenzylidenecamphor (Example 1; entire teaching) or butylmethoxydibenzoylmethane (Example 9), in an amount of 0.1-30% (pg. 5, para. 2), addressing claims, 1, 2, 4, 8, and 12-15. 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), addressing claims 5-7, 16, and 17.
Lanzendoerfer does not teach an exact combination of desferrioxamine and 6-60% of a UV filter agent in claim 1.
In regards to selecting the combination of desferrioxamine B and 6-60% of a UV filter agent, “[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 UV filtering agents, whereas the claimed invention is directed towards a composition comprising at least one desferrioxamine or acid addition product of desferrioxamine and 6-60% 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) 1-8, 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanzendoerfer et al. (DE 10050155 A1; machine translation cited) and Gurtner (WO 2020061474 A1).
In regards to claim(s) 1, 2, 4-8, 12-17, 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.
Gurtner teaches a topical composition comprising iron chelating compounds (abs; entire teaching), such as 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 an acid addition product of desferrioxamine in claim 3, 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).
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613