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 05 April 202304 May 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 Rejections not reiterated from previous office actions are hereby withdrawn.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
04 May 2026, it is noted that claim 7 has been amended, claims 6 and 17 have been canceled, and no new claims have been added. Support for the amendments can be found on pg. 4 of the specification. 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 active agents or polymers 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. 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.
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, 5, 7, 8, 12-16 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 1, 5, 7, and 16.
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) 1-5, 7, 8, 12-16 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, 5, 7, 8, 12-16, 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.
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).
Response to Arguments
Applicant's arguments filed 04 May 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. 8-9).
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).
The Applicant argues that Lanzendoerfer does not teach the unexpected result of decreasing discoloration of a stained textile (Remarks, pgs. 9-10).
Applicant’s argument is not found persuasive. The Applicant argues that 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. 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 disclose, teach, or suggest at least one UV light protection filter substance, wherein the UV filtering agent is present in an amount of 6-60% by weight (Remarks, pg. 10).
Applicant’s argument is not found persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In addition, 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.A.K./Examiner, Art Unit 1613
Primary Examiner, Art Unit 1613 /ANDREW S ROSENTHAL/
Prosecution Insights