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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claims Status
Applicant’s election without traverse of Group I, claims 1-9 and the species of: a) Specific alkylene oxide derivative of Formula 1: random polyoxyethylene (14) polyxoyporpylme (7) dimethyl ether; b) UV conversion substances: zinc oxide phosphor, titanate phosphor and phycocyanin combined; and c) further ingredients: dispersants of one of: PEG-10 dimethicone, bis-butyldimethicone polyglyceryl-3, PEG-polydimethylpolysiloxane ethyldimethicone, lauryl PEG-polydimethylpolysiloxane ethyldimethicone, cetyl PEG/PPG- 10/dimethicone, isostearic acid, diisostearic acid polyglyceryl-2, carboxydecyl trisiloxane, PEG-12 dimethicone, or polyoxyethylene sorbitan monostearate in the reply filed on 11/17/2025 is acknowledged.
Claims 3 and 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/2025.
Claims 1-2 and 4-9 are under current examination to the extent of the elected species of: a) Alkylene oxide derivative meeting Formula 1 claimed: a random polyoxyethylene (14) polyoxypropylene (7) dimethyl ether; UV conversion substances: zinc oxide phosphor, titanate phosphor and phycocyanin; and dispersants of one of: PEG-10 dimethicone, bis- butyldimethicone polyglyceryl-3, PEG-polydimethylpolysiloxane ethyldimethicone, lauryl PEG-polydimethylpolysiloxane ethyldimethicone, cetyl PEG/PPG- 10/dimethicone, isostearic acid, diisostearic acid polyglyceryl-2, carboxydecyl trisiloxane, PEG-12 dimethicone, or polyoxyethylene sorbitan monostearate.
Information Disclosure Statements
Information Disclosure Statements (IDS) filed on 11/09/2023; 06/12/2025 and 12/08/2025 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claim Rejections - 35 USC § 112(b)-indefinite
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that the ratio of the number of hydrogen atoms in R1 and R2 to the number of alkyl groups in R1 and R2 is 0.15 or less on average. The elected compound representing (B) an alkylene oxide derivative of Formula 1 in claim 1 is polyoxyethylene (14) polyoxypropylene (7) dimethyl ether. However, the structure of this compound is CH3O(CH2CH2O)14 (CH (CH3)CH2O)7CH3. Based on the formula of instant claim 1, R1 and R2 equal CH3 (methyl groups bolded above) having a total of 6 hydrogens and 2 alkyl groups (i.e. CH3) equaling a ratio of 3. Therefore, it is unclear how the ratio of R1 and R2 group hydrogens to the alkyl groups in R1 and R2 can be equal to or less than 0.15 on average when the elected species equals 3. Claims 2 and 4-9 do not rectify this indefinite issue of claim 1. However, for the purpose of examination, Formula 1 of part (B) will still be interpreted as Applicants elected compound to polyoxyethylene (14) polyoxypropylene (7) dimethyl ether having a ratio of hydrogen atoms in R1 and R2 of 6 and alkyl groups in R1 and R2 of 2, thus meeting a ratio 3.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaki et al. (United States Patent Publication 20170333301) in view of Yusuke et al. (WO2020204198-English translation provided).
Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) dimethyl ether in a quantity including 0.001-5% by mass (equivalent to percent weight), see paragraphs [0065], [0093]-[0095] and claim 9. The elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) dimethyl ether meets the alkylene oxide derivative of Formula I elected. An amount of 0.001-5% by weight taught in Yamaki overlaps and therefore renders obvious the claimed amount of 1% by weight or more of the random polymer alkylene oxide derivative. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The composition further contains a silicone based surfactant including cetyl PEG/PPG-10/1 dimethicone, from 0.1-8% by mass see paragraph [0045],[0049],[0087]. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6.
Yamaki et al. do not expressly teach the presence of the UV wavelength conversion substances of the elected zinc oxide phosphor, titanate phosphor, and phycocyanin wherein the composition has a cell activating effect.
However, Yusuke et al. teach cosmetic formulations comprising ultraviolet wavelength converting substances, see page 3. The composition provides for a cell activating effect using ultraviolet rays, see pages 4, 6-7, 9, 14-16 and page 19. The wavelength conversion substance includes a mixture of inorganic and organic substances including zinc oxide phosphor, magnesium titanate phosphor and phycocyanin, see pages 3, 6 8, 14, and claims at page 18. The ultraviolet wavelength converting substances activate cells and alleviate the damage to skin during and after irradiation with ultravitolet rays, and alleviates damage caused by photoaging, see pages 6, 9, 14 and 16.
It would have been prima facie obvious to one of ordinary skill in the art before the time of filing the invention to substitute the UV protective agents of Yamaki et al. for a combination of zinc oxide phosphor, magnesium titanate phosphor, and phycocyanin as taught by Yusuke et al.
One of ordinary sill in the art would have been motivated to do so because the ultraviolet wavelength converting substance of zinc oxide phosphor, magnesium titanate and phycocyanin are taught by Yusuke et al. to activate cells and alleviate the damage to skin during and after irradiation thus exerting a UV protective effect.
There would have been a reasonable expectation of success because both Yamaki et al. and Yusuke et al. teach cosmetic emulsions.
The sunscreen composition of Yamaki et al. in view of Yusuke et al. containing the ultraviolet wavelength converting substances of zinc oxide phosphor, magnesium titanate and phycocyanin would necessarily provide for cell activation because Yusuke et al. teaches that ultraviolet wavelength converting substances provide for a cell activating effect and helps to alleviate the damage to skin during or after exposure to ultraviolet rays, see pages 6, 9, 14 and 16.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, and 9 of U.S. Patent No. 12551424 in view of Yamaki et al. (United States Patent Publication 20170333301).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claim 1-4, 7, and 9 of commonly assigned U.S. Patent No. 12551424.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Patent ‘424 claim an oil-in-water composition comprising a UV wavelength conversion substance which comprises phycocyanin, zinc oxide phosphor and magnesium titanate phosphor. The claims of ‘424 further comprise dispersant.
The difference between the instant claims and that of Patent ‘424 is the inclusion of the alkylene oxide derivative of formula 1 claimed (B) which is the elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether at 1% by weight or more.
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition further contains a silicone based surfactant including cetyl PEG/PPG-10/1 dimethicone, from 0.1-8% by mass see paragraph [0045],[0049],[0087]. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001].
It would have been obvious to include the random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether sunscreen formulation of Yamaki et al. in amounts from 0.001-5% by weight with the sunscreen formulation of Patent ‘424 because Yamaki et al. teach water in oil emulsions that have good texture and are easily washed off comprise uv protecting agents with a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 12551424 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-7, and 9 of U.S. Patent No. 12440431 in view of Yamaki et al. (United States Patent Publication 20170333301) and Kei et al. (WO2020032246-English translation attached).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claim 1-4, 6-7, and 9 of commonly assigned U.S. Patent No. 12440431.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Patent ‘431 claim an oil-in-water composition comprising a UV wavelength conversion substance which comprises phycocyanin, zinc oxide phosphor and magnesium titanate phosphor. The claims of ‘431 further comprise dispersant.
The difference between the instant claims and that of Patent ‘431 is the inclusion of the alkylene oxide derivative of formula 1 claimed (B) which is the elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether at 1% by weight or more.
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition further contains a silicone based surfactant including cetyl PEG/PPG-10/1 dimethicone, from 0.1-8% by mass see paragraph [0045],[0049],[0087]. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001].
Kei et al. teach that sunscreen cosmetics comprising an amphiphilic substance improves the ultraviolet protection effect of sunscreen cosmetics, see pages 3-6 and 8. Examples of such amphiphilic substances include random PEO/PPG-14/7 (polyoxyethylene (14) polyoxypropylene (7)), see pages 4, 8 and 14.
It would have been obvious to include the random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether sunscreen formulation of Yamaki et al. in amounts from 0.001-5% by weight with the sunscreen formulation of Patent ‘431 because Kei teaches that these amphiphilic compounds improve the ultraviolet protection effect of sunscreen formulations.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. U.S. Patent No. 12440431 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11801207 in view of Yamaki et al. (United States Patent Publication 20170333301), Kei et al. (WO2020032246-English translation attached) and Yusuke et al. (WO2020204198-English translation attached).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claim 1 of commonly assigned U.S. Patent No. 11801207.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Patent ‘207 claim a water in oil composition comprising a UV substance and polyoxyethylene-polyoxypropylene dialkyl ether.
Patent ‘207 does not claim random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether present at greater than 1% by weight with UV conversion substances of phycocyanin, zinc oxide phosphor and magnesium titanate phosphor.
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition further contains a silicone based surfactant including cetyl PEG/PPG-10/1 dimethicone, from 0.1-8% by mass see paragraph [0045],[0049],[0087]. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001].
Kei et al. teach that sunscreen cosmetics comprising an amphiphilic substance improves the ultraviolet protection effect of sunscreen cosmetics, see pages 3-6 and 8. Examples of such amphiphilic substances include random PEO/PPG-14/7 (polyoxyethylene (14) polyoxypropylene (7)), see pages 4, 8 and 14.
Yusuke et al. teach cosmetic formulations comprising ultraviolet wavelength converting substances, see page 3. The composition provides for a cell activating effect using ultraviolet rays, see pages 4, 6-7, 9, 14-16 and page 19. The wavelength conversion substance includes a mixture of inorganic and organic substances including zinc oxide phosphor, magnesium titanate phosphor and phycocyanin, see pages 3, 6 8, 14, and claims at page 18. The ultraviolet wavelength converting substances activate cells and alleviate the damage to skin during and after irradiation with ultravitolet rays, and alleviates damage caused by photoaging, see pages 6, 9, 14 and 16.
It would have been obvious to include the random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether sunscreen formulation of Patent ‘207 in amounts from 0.001-5% by weight with the sunscreen formulation of Patent ‘207 because Kei teaches that these amphiphilic compounds improve the ultraviolet protection effect of sunscreen formulations.
It would have been obvious to provide the cosmetic formulation of Application ‘207 with a combination of zinc oxide phosphor, magnesium titanate phosphor and phycocyanin as taught by Yusuke et al.
One of ordinary sill in the art would have been motivated to do so because the ultraviolet wavelength converting substance of zinc oxide phosphor, magnesium titanate and phycocyanin are taught by Yusuke et al. to activate cells and alleviate the damage to skin during and after irradiation thus exerting a UV protective effect.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Patent No. 11801207 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-2 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2,4 and 13 of copending Application No. 17/601331 (reference application) in view of Yamaki et al. (United States Patent Publication 20170333301), Kei et al. (WO2020032246-English translation attached), and Yusuke et al. (WO2020204198-English translation attached).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claims 1-2,4 and 13 of commonly assigned Application 17601331.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘331 are directed to cosmetic formulations which comprise Uv conversion substances such as phycocyanin, zinc oxide phosphor.
Application ‘331 does not claim a random polyoxyethylene (14) polyxoyporpylme (7) dimethyl ether; together with the UV conversion substances of titanate phosphor and an o/w emulsion form..
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether meets the alkylene oxide derivative of formula I elected. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001
Kei et al. teach that sunscreen cosmetics comprising an amphiphilic substance improves the ultraviolet protection effect of sunscreen cosmetics, see pages 3-6 and 8. Examples of such amphiphilic substances include random PEO/PPG-14/7 (polyoxyethylene (14) polyoxypropylene (7)), see pages 4, 8 and 14.
Yusuke et al. teach cosmetic formulations comprising ultraviolet wavelength converting substances, see page 3. The composition provides for a cell activating effect using ultraviolet rays, see pages 4, 6-7, 9, 14-16 and page 19. The wavelength conversion substance includes a mixture of inorganic and organic substances including zinc oxide phosphor, magnesium titanate phosphor and phycocyanin, see pages 3, 6 8, 14, and claims at page 18. The ultraviolet wavelength converting substances activate cells and alleviate the damage to skin during and after irradiation with ultravitolet rays, and alleviates damage caused by photoaging, see pages 6, 9, 14 and 16.
It would have been obvious to provide the cosmetic formulation of Application ‘331 with a combination of zinc oxide phosphor, magnesium titanate phosphor and phycocyanin as taught by Yusuke et al.
One of ordinary sill in the art would have been motivated to do so because the ultraviolet wavelength converting substance of zinc oxide phosphor, magnesium titanate and phycocyanin are taught by Yusuke et al. to activate cells and alleviate the damage to skin during and after irradiation thus exerting a UV protective effect.
It would have been obvious to provide the alkylene oxide of Application ‘331 as a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether as cosmetic formulations comprising ultraviolet substances with alkylene oxide random copolymers are taught by Kei to improve the ultraviolet protection effect of sunscreen formulations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 17601331 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-2 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-6 ,13,15 of copending Application No. 17/601333 (reference application) in view of Yamaki et al. (United States Patent Publication 20170333301) and Kei et al. (WO2020032246-English translation attached).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claims 1, 3, 5-6 ,13,15 of commonly assigned Application 17601333.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘333 are directed to cosmetic formulations which comprise Uv conversion substances such as phycocyanin, zinc oxide phosphor and phycocyanin.
Application ‘333 does not claim a random polyoxyethylene (14) polyxoyporpylme (7) dimethyl ether; together with the UV conversion substances of titanate phosphor and an o/w emulsion form.
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether meets the alkylene oxide derivative of formula I elected. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001].
Kei et al. teach that sunscreen cosmetics comprising an amphiphilic substance improves the ultraviolet protection effect of sunscreen cosmetics, see pages 3-6 and 8. Examples of such amphiphilic substances include random PEO/PPG-14/7 (polyoxyethylene (14) polyoxypropylene (7)), see pages 4, 8 and 14.
It would have been obvious to provide an alkylene oxide of Application ‘333 as a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether as an o/w cosmetic formulations comprising ultraviolet substances with alkylene oxide random copolymers are taught by Kei to improve the ultraviolet protection effect of sunscreen formulations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 17/601333 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-2 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-13 and 15 of copending Application No. 17/601252 (reference application) in view of Yamaki et al. (United States Patent Publication 20170333301), Kei et al. (WO2020032246-English translation attached) and Yusuke et al. (WO2020204198-English translation attached).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claims 1,11-13 and 15 of commonly assigned Application 17601252
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘252 are directed to cosmetic formulations which comprise Uv conversion substances such as phycobiliproteins, zinc oxide phosphor and magnesium titanate phosphor. The composition provides a cell activation effect.
Application ‘252 does not claim the presence of a random polyoxyethylene (14) polyxoyporpylme (7) dimethyl ether; together with the UV conversion substances of titanate phosphor and an o/w emulsion form, and the inclusion of phycocyanin. .
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether meets the alkylene oxide derivative of formula I elected. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001]. The composition is a water in oil sunscreen emulsion and provides UV protection with good texture, see paragraph [0001].
Kei et al. teach that sunscreen cosmetics comprising an amphiphilic substance improves the ultraviolet protection effect of sunscreen cosmetics, see pages 3-6 and 8. Examples of such amphiphilic substances include random PEO/PPG-14/7 (polyoxyethylene (14) polyoxypropylene (7)), see pages 4, 8 and 14.
Yusuke et al. teach cosmetic formulations comprising ultraviolet wavelength converting substances, see page 3. The composition provides for a cell activating effect using ultraviolet rays, see pages 4, 6-7, 9, 14-16 and page 19. The wavelength conversion substance includes a mixture of inorganic and organic substances including zinc oxide phosphor, magnesium titanate phosphor and phycocyanin, see pages 3, 6 8, 14, and claims at page 18. The ultraviolet wavelength converting substances activate cells and alleviate the damage to skin during and after irradiation with ultravitolet rays, and alleviates damage caused by photoaging, see pages 6, 9, 14 and 16.
It would have been obvious to provide the cosmetic formulation of Application ‘252 with a combination of zinc oxide phosphor, magnesium titanate phosphor and phycocyanin as taught by Yusuke et al.
One of ordinary sill in the art would have been motivated to do so because the ultraviolet wavelength converting substance of zinc oxide phosphor, magnesium titanate and phycocyanin are taught by Yusuke et al. to activate cells and alleviate the damage to skin during and after irradiation thus exerting a UV protective effect.
It would have been obvious to provide alkylene oxide formulation of Application ‘252 as a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether as such polymers are taught by Kei to improve the ultraviolet protection effect of sunscreen formulations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 17/601252 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-2 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 and 8 of copending Application No. 18279536 (reference application) in view of Yamaki et al. (United States Patent Publication 20170333301), Kei et al. (WO2020032246-English translation attached) and Yusuke et al. (WO2020204198-English translation attached).
Claims 1-2 and 4-9 are directed to an invention not patentably distinct from claim 1, 3-4 and 8 of commonly assigned Application 18279536.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘536 are directed to water in oil formulations which comprise a random alkylene oxide derivative copolymer present in amounts inclusive of at least 2% by mass and an ultraviolet compound.
Application ‘536 does not explicitly recite a random polyoxyethylene (14) polyxoyporpylme (7) dimethyl ether; together with the UV conversion substances of zinc oxide phosphor, titanate phosphor and phycocyanin.
However, Yamaki et al. teach a water in oil sunscreen emulsion which comprises component G of a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether in a quantity including 0.001-5% by mass, see paragraphs [0065], [0093]-[0095] and claim 9. The elected random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether meets the alkylene oxide derivative of formula I. The composition further contains a silicone based surfactant including cetyl PEG/PPG-10/1 dimethicone, from 0.1-8% by mass see paragraph [0045],[0049],[0087]. The composition can further comprise a UV scattering agent which are UV protective such as zinc oxide, see paragraphs [0002], [0024]-[0025] and [0091] and claims 5-6.
Kei et al. teach that sunscreen cosmetics comprising an amphiphilic substance improves the ultraviolet protection effect of sunscreen cosmetics, see pages 3-6 and 8. Examples of such amphiphilic substances include random PEO/PPG-14/7 (polyoxyethylene (14) polyoxypropylene (7)), see pages 4, 8 and 14.
Yusuke et al. teach cosmetic formulations comprising ultraviolet wavelength converting substances, see page 3. The composition provides for a cell activating effect using ultraviolet rays, see pages 4, 6-7, 9, 14-16 and page 19. The wavelength conversion substance includes a mixture of inorganic and organic substances including zinc oxide phosphor, magnesium titanate phosphor and phycocyanin, see pages 3, 6 8, 14, and claims at page 18. The ultraviolet wavelength converting substances activate cells and alleviate the damage to skin during and after irradiation with ultravitolet rays, and alleviates damage caused by photoaging, see pages 6, 9, 14 and 16.
It would have been obvious to provide the cosmetic formulation of Application ‘536 with a combination of zinc oxide phosphor, magnesium titanate phosphor and phycocyanin as taught by Yusuke et al.
One of ordinary sill in the art would have been motivated to do so because the ultraviolet wavelength converting substance of zinc oxide phosphor, magnesium titanate and phycocyanin are taught by Yusuke et al. to activate cells and alleviate the damage to skin during and after irradiation thus exerting a UV protective effect.
It would have been obvious to provide the alkylene oxide of Application ‘536 as a random copolymer of polyoxyethylene (14) polyoxypropylene (7) random copolymer dimethyl ether formulation as cosmetic formulations comprising such polymers are taught by Kei to improve the ultraviolet protection effect of sunscreen formulations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18279536 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Currently, no claims are allowed and claims 1-2 and 4-9 are rejected.
Correspondence
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619