DETAILED ACTION
Status of Claims
Claims 1-12 and 16-18 are currently pending. Claims 1-12 and 16-18 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final.
Election/Restrictions
Applicant’s election of the claims of Group I (claims 1-12 and 16-18) in the response filed on April 28, 2026 (to the February 17, 2026 Requirement for Restriction) is acknowledged. In response to applicant’s election, the claims of Group II (now cancelled claims 13-15) would be withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Because applicant’s did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP §818.01(a)).
Accordingly, the February 17, 2026 Requirement for Restriction is made FINAL, and claims 1-12 and 16-18 are examined as follows.
Claim Rejections – 35 U.S.C. § 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 C.F.R. § 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 1-3, 5-8, 10-12 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over AU (US 2018/0318190 A1, Publ. Nov. 8, 2018; hereinafter, “AU”).
AU is directed to:
CYCLOCARBOXYLIC ACID CONTAINING PERSONAL CARE COMPOSITIONS
ABSTRACT
The present technology provides personal care compositions that include about 0.1 wt % to about 10 wt % of (Formula), or a mixture of any two or more thereof; wherein n is 0, 1, or 2; m is 1, 2, or 3; p is 0, 1, or 2; and q is 1, 2, or 3; about 0.1 wt % to about 30 wt % of a UV-B sunscreen oil; about 0.1 wt % to about 30 wt % of a nonionic surfactant of Formula I (I) where R1 is a C6-C12 alkyl group; r is an integer from 6 to 13, and the nonionic surfactant has a hydrophilic-lipophilic balance of about 10 to about 14; and about 40 wt % to about 96 wt % of the personal care composition is water.
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AU, title & abstract. In this regard, AU discloses a claim embodiment drawn to a personal care composition comprising cyclocarboxylic acids, a “UV-B sunscreen oil,” a “UV-A sunscreen oil,” and “film forming polymer”:
1. A personal care composition comprising
about 0.1 wt % to about 10 wt % of
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or salts thereof, or a
mixture of any two or more thereof; wherein n is 0, 1, or 2 and m, p, and q are each independently 1, 2, or 3;
about 0.1 wt % to about 30 wt % of a UV-B sunscreen oil;
about 0.1 wt % to about 30 wt % of a nonionic surfactant of
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wherein
R1 is a C6-C12 alkyl group;
r is an integer from 6 to 13; and
the nonionic surfactant has a hydrophilic-lipophilic balance of about 10 to about 14; and
about 40 wt % to about 96 wt % H2O.
2. The personal care composition of claim 1, wherein the UV-B sunscreen oil comprises one or more of octyl salicylate, 3,3,5-trimethylcyclohexyl 2-hydroxybenzoate, ethylhexyl methoxycinnamate, ethylhexyl salicylate, 2-ethylhexyl 2-cyano-3,3-diphenyl-2-propenoate, or 2-ethylhexyl-4-methoxycinnamate.
3. The personal care composition of claim 1, further comprising about 0.1 wt % to about 10 wt % of a UV-A sunscreen oil.
4. The personal care composition of claim 3, wherein the UV-A sunscreen oil comprises one or more of 4-t-butyl-4′-methoxydibenzoylmethane, 2-methyldibenzoylmethane, 4-methyl-dibenzoyl-ethane, 4-isopropyldibenzoyl-methane, 4-tert-butyldibenzoylmethane, 2,4-dimethyldibenzoylmethane, 2,5-dimethyldibenzoylmethane, 4,4′-diisopropyldibenzoylmethane, 2-methyl-5-isopropyl-4′-methoxy-dibenzoylmethane, 2-methyl-5-tert-butyl-4′-methoxy-dibenzoylmethane, 2,4-dimethyl-4′-methoxydibenzoylmethane, 2,6-dimehyl-4-tert-butyl-4′methoxy-dibenzoylmethane, bisdisulizone disodium, diethylaminohydroxybenzoyl hexyl benzoate, ecamsule, or methyl anthranilate.
[…]
8. The personal care composition of claim 1, further comprising about 0.1 wt % to about 8 wt % of a film forming polymer.
AU, claims 1-4 and 8.
Regarding claim 1 and the requirements:
1. ([…]) A sunscreen composition comprising:
bis ethylhexyloxyphenol methoxyphenyl triazine,
one or more alkanediols, and
at least one film forming agent selected from the group consisting of citrate polyesters and polyamides,
with the proviso that the composition is free of octocrylene, ethylhexyl triazone, diethylamino hydroxybenzoyl hexyl benzoate and ethylhexyl methoxycinnamate.
AU clearly teaches a personal care composition comprising cyclocarboxylic acids, a “UV-B sunscreen oil,” a “UV-A sunscreen oil,” and “film forming polymer” (AU, claims 1-4 and 8), WHEREBY it is noted the selection “UV-B sunscreen oil” (AU, claim 2) and “UV-A sunscreen oil” (AU, claim 4) encompass numerous formulations meeting the requirement of claim 1 for “the proviso that the composition is free of octocrylene, ethylhexyl triazone, diethylamino hydroxybenzoyl hexyl benzoate and ethylhexyl methoxycinnamate.” However, it is noted that:
(i) although AU teaches “Tinosorb S (bis-ethylhexyloxyphenol methoxyphenyl triazine; a UV-A and UV-B sunscreen oil)” among suitable “sunscreen oils”:
[0042] Additional suitable sunscreen oils suitable for use in the personal care composition include those commercially available from BASF corporation: Uvinul T-150 (Ethylhexyl triazone; a UV-B sunscreen oil), Uvinul A Plus (Diethylamino hydroxybenzoyl hexyl benzoate; a UV-A sunscreen oil), Tinosorb S (bis-ethylhexyloxyphenol methoxyphenyl triazine; a UV-A and UV-B sunscreen oil), Tinosorb M(methylene bisbenzotriazolyl tetramethylbutylphenol; a UV-A and UV-B sunscreen oil). Bisdisulizone disodium may also be included in the personal care composition.”
(AU, par. [0042]), which is noted as “bis ethylhexyloxyphenol methoxyphenyl triazine” of claim 1, AU DOES NOT EXPRESSLY TEACH an exemplary embodiment thereof;
(ii) although AU teaches in the incorporation of humectants such as “1,3-butylene glycol”
[0101] Humectants of the polyhydric alcohol-type may be employed as cosmetically acceptable carriers. Typical polyhydric alcohols include, but are not limited to, glycerol, polyalkylene glycols (more preferably alkylene polyols and their derivatives, including propylene glycol, dipropylene glycol, polypropylene glycol, polyethylene glycol and derivatives thereof), sorbitol, hydroxypropyl sorbitol, hexylene glycol, 1,3-butylene glycol, isoprene glycol, 1,2,6-hexanetriol, ethoxylated glycerol, propoxylated glycerol, and mixtures of any two or more thereof. The amount of humectant may range anywhere from about 0.5 wt % to about 50 wt % of the personal care composition. The amount of humectant in the personal care composition may be about 0.5 wt % to about 50 wt %. Preferably, when a humectant is included, it is included in an amount of about 1 wt % and 15 wt % of the personal care composition.
(AU, par. [0101]), which is noted as encompassed by “one or more alkanediols” of claim 1, as well as claims 6 and 16 including “only one”:
6. (currently amended) The sunscreen composition according to claim 1, wherein the one or more alkanediols are selected from the group consisting of 1,3-propandiol, butylene glycol and 1,2-butandiol.
[…]
16. (new) The sunscreen composition according to claim 6, wherein only one alkanediol is present which is butylene glycol.
AU DOES NOT EXPRESSLY TEACH an exemplary embodiment thereof; AND
(iii) although AU teaches the incorporation of a “film forming polymer” (AU, claim 8) such as “polyalkyleneoxy terminated polyamides (e.g., INCI name: Polyamide-3, Polyamide-4)”:
[0056] The personal care composition may further include about 0.1 wt % to about 8 wt % of a film forming polymer. Such film-forming polymers include, but are not limited to, polyalkyleneoxy terminated polyamides (e.g., INCI name: Polyamide-3, Polyamide-4), polyether polyamides (e.g., INCI name: Polyamide-6), mixed acid terminated polyamides (e.g., INCI name: Polyamide-7), and ester terminated poly(ester-amides) (e.g., INCI name: Polyamide-8). Such film forming polymers may be synthesized or are available commercially, such as under the Sylvaclear™ line of products by Arizona Chemical Company, LLC and the OleoCraft™ line of products by Croda International PLC. Film-forming polymers also include, but are not limited to, the INCI named Polyester-5 (e.g., Eastman AQ™ 38S Polymer), PPG-17/IPDI/DMPA Copolymer (e.g., Avalure™ UR 450 Polymer), Acrylates Copolymer (e.g., Avalure™ AC 120 Polymer), and polysaccharides such as Xilogel (tamarin gum),lotus bean gums, tara gum, beta glucan, pullulan, carboxymethyl cellulose, hydroxypropyl cellulose, sodium alginate, potato starch, carrageenan. The film forming polymer may include combinations of any two or more of the polymers recited above. The amount of film forming polymer in the personal care composition may be about 0.1 wt %, about 0.2 wt %, about 0.3 wt %, about 0.4 wt %, about 0.5 wt %, about 0.6 wt %, about 0.7 wt %, about 0.8 wt %, about 0.9 wt %, about 1.0 wt %, about 1.2 wt %, about 1.4 wt %, about 1.6 wt %, about 1.8 wt %, about 2.0 wt %, about 2.2 wt %, about 2.4 wt %, about 2.6 wt %, about 2.8 wt %, about 3.0 wt %, about 3.2 wt %, about 3.4 wt %, about 3.6 wt %, about 3.8 wt %, about 4.0 wt %, about 4.2 wt %, about 4.4 wt %, about 4.6 wt %, about 4.8 wt %, about 5.0 wt %, about 5.2 wt %, about 5.4 wt %, about 5.6 wt %, about 5.8 wt %, about 6.0 wt %, about 6.2 wt %, about 6.4 wt %, about 6.6 wt %, about 6.8 wt %, about 7.0 wt %, about 7.2 wt %, about 7.4 wt %, about 7.6 wt %, about 7.8 wt %, about 8.0 wt % or any range including and between any two of these values. Preferable amounts of film forming polymer are about 1 wt % to about 3 wt %.
(AU, par. [0101]), which are encompassed by “at least one film forming agent selected from the group consisting of […] and polyamides” of claim 1, as well as “polyamide-3, polyamide-4” claim 5:
5. ([…]) The sunscreen composition according to claim 1, wherein the polyamides are selected from the group consisting of polyamide-3, polyamide-4, polyamide-8 and mixtures thereof.
AU DOES NOT EXPRESSLY TEACH an exemplary embodiment thereof.
In this regard, it is noted that a reference is analyzed using its broadest teachings. MPEP § 2123 [R-5] states: “[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). “[W]hen 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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to rearrange the disclosed above cited components of AU in order to arrive at a personal care composition (AU, claims 1-4 and 8) containing:
(i) “bis-ethylhexyloxyphenol methoxyphenyl triazine,” a “UV-A and UV-B sunscreen oil” (AU, par. [0042]) in amounts of “about 0.1 wt % to about 30 wt % of a UV-B sunscreen oil” (AU, claim 1), and “about 0.1 wt % to about 10 wt % of a UV-A sunscreen oil” (AU, claim 3);
(ii) suitable humectants such as “1,3-butylene glycol” (AU, par. [0101]); and
(iii) a suitable “film forming polymer” (AU, claim 8) such as “polyalkyleneoxy terminated polyamides (e.g., INCI name: Polyamide-3, Polyamide-4)” (AU, par. [0101]).
Thus, AU renders claims 1, 5-6 and 16 obvious.
Regarding claims 2-3 and 7 and the requirements:
2. (currently amended) The sunscreen composition according to claim 1, wherein the bis ethylhexyloxyphenol methoxyphenyl triazine is present in an amount from 0.1 to 10 wt. %, based on the total weight of the composition.
3. (currently amended) The sunscreen composition according to claim 1, wherein the at least one film forming agent is present in an amount from 0.1 to 10 wt.-%, based on the total weight of the composition.
[…]
7. (currently amended) The sunscreen composition according to claim 1, wherein the one or more alkanediols are present in an amount from 1 to 10 wt. %, based on the total weight of the composition.
it is noted that MPEP § 2144.05 (I), states, “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).” Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to rearrange the disclosed above cited components of AU in order to arrive at a personal care composition (AU, claims 1-4 and 8) containing:
(i) “bis-ethylhexyloxyphenol methoxyphenyl triazine” in order to obtain the advantage of a “UV-A and UV-B sunscreen oil” (AU, par. [0042]), thereby meeting the proviso of claim 1 that “the composition is free of octocrylene, ethylhexyl triazone, diethylamino hydroxybenzoyl hexyl benzoate and ethylhexyl methoxycinnamate”;
(ii) suitable humectants such as “1,3-butylene glycol,” wherein “[t]he amount of humectant may range anywhere from about 0.5 wt % to about 50 wt % of the personal care composition” (AU, par. [0101]); and
(iii) “about 0.1 wt % to about 8 wt % of a film forming polymer” (AU, claim 8) such as “polyalkyleneoxy terminated polyamides (e.g., INCI name: Polyamide-3, Polyamide-4)” (AU, par. [0101]).
Thus, AU renders claims 2-3 and 7 obvious.
Regarding claim 8 and the requirements:
8. ([…]) The sunscreen compositions according to claim 1, wherein the composition is an oil-in-water (O/W) emulsion comprising an oily phase dispersed in an aqueous phase in the presence of an O/W emulsifier.
AU teaches that “[t]he personal care compositions are isotropic and/or homogeneous liquids that include microemulsions of the water-in-oil or oil-in-water type” (AU, par. [0034]), and “[a]bout 0.1 wt % to about 30 wt % of the personal care composition is a nonionic surfactant of Formula I with a hydrophilic-lipophilic balance of about 10 to about 14” (AU, par. [0040]), which encompasses “an oil-in-water (O/W) emulsion comprising an oily phase dispersed in an aqueous phase in the presence of an O/W emulsifier” of claim 8. See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, AU renders claim 8 obvious.
Regarding claim 10 and the requirements:
10. ([…]) The sunscreen composition according to claim 1, wherein the composition further comprises one or more preservative and/or preservative booster selected from the group consisting of ethanol, phenoxyethanol and ethylhexylglycerin.
AU teaches “Preservatives may be included in the personal care composition of the present technology to protect against the growth of potentially harmful microorganisms,” inter alia, “phenoxyethanol” (AU, par. [0105]). See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, AU renders claim 10 obvious.
Regarding claim 11 and the requirements:
11. (currently amended) The sunscreen composition according to claim 1, wherein the composition further comprises one or more additional components selected from the group consisting of xanthan gum, crosslinked acrylate/C10-C30 alkyl acrylate polymer and hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer.
AU teaches the incorporation of suitable thickeners, inter alia, “Natural gums” such as “xanthan” (AU, par. [0100]). See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, AU renders claim 11 obvious.
Regarding claim 12 and the requirements:
12. (currently amended) The sunscreen composition according to claim 1, wherein the composition further comprises one or more additional components selected from the group consisting of behenyl alcohol, cetyl alcohol, cetearyl alcohol, stearyl alcohol and glyceryl stearate.
AU teaches the incorporation of suitable fatty alcohols, inter alia, “cetyl alcohol” (AU, par. [0098]). See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, AU renders claim 12 obvious.
Claims 4 is rejected under 35 U.S.C. § 103 as being unpatentable over AU (US 2018/0318190 A1, Publ. Nov. 8, 2018; hereinafter, “AU”), as applied to claims 1-3, 5-8, 10-12 and 16, above, and in view of O’LENICK (US 8,192,726 B2, Issued Jun. 5, 2012; hereinafter, “O’Lenick”).
The teachings of AU, as set forth above are hereby incorporated. However, AU does not expressly teach the requirements of claim 4 for “citrate polyesters” such as “octyldodecyl citrate crosspolymer”:
4. (currently amended) The sunscreen composition according to claim 1, wherein the citrate polyesters are selected from the group consisting of octyldodecyl citrate crosspolymer, stearyl/octyldodecyl citrate crosspolymer, behenyl/octyldodecyl propanediol citrate crosspolymer and mixtures thereof.
which is well within the purview of the ordinarily skilled artisan.
O’Lenick, for instance is directed to:
NATURALLY DERIVED CITRATE POLYESTERS HAVING LIQUID AND SOLID DOMAINS
ABSTRACT
The present invention is directed to a series of polymeric citrate esters that have two different molecular weight ester chains, one solid and one liquid, which when combined into a single molecule make a polymer that is solid, but has very unique flow properties. These materials find applications as additives to formulations in personal care products where there is a desire to have a structured film (provided by the solid fatty group) and flow properties, (provided by the liquid fatty group). These compounds by virtue of their unique structure provide outstanding skin feel and outstanding waterproof properties in cosmetic formulations most notable sunscreens.
O’Lenick, title & abstract. In this regard, O’Lenick teaches a “series of citrate polyesters that have both liquid and solid fatty groups contained thereon and are crosslinked by dials and contain fatty groups, one solid at room temperature, the other liquid at room temperature” (O’Lenick, col. 2, ln. 47-51) such as “(a) citric acid” “(b) HO-(CH2)3-OH,” “(c) octyldodecanol” and “( d) a fatty alcohol that is solid at room temperature” (O’Lenick, claim 1), which is a “octyldodecyl citrate crosspolymer” of claim 8:
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate AU’s personal care composition (AU, claims 1-4 and 8), rearranged per (i), (ii) and (iii), as discussed above, and to have further incorporated a citrate polyester per O’Lenick (O’Lenick, claim 1). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of suitable “citrate esters” for “where there is a desire to have a structured film” in “personal care products” (O’Lenick, abstract). See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the prior art renders claim 4 obvious.
Claims 9 and 17-18 are rejected under 35 U.S.C. § 103 as being unpatentable over AU (US 2018/0318190 A1, Publ. Nov. 8, 2018; hereinafter, “AU”), as applied to claims 1-3, 5-8, 10-12 and 16, above, and in view of ZANATTA (US 2019/0015317 A1, Publ. Jan. 17, 2019; hereinafter, “Zanatta”).
The teachings of AU, as set forth above are hereby incorporated. However, AU DOES NOT EXPRESSLY TEACH a particular oil, such as “caprylic/capric triglycerides” or a “potassium cetyl phosphate emulsifier” as required by claims 9 and 17-18:
9. (currently amended) The sunscreen composition according to claim 1, wherein the composition further comprises one or more oils selected from the group consisting of dicaprylate/dicaprate, phenethyl benzoate, C12-C15 alkyl benzoate, dibutyl adipate, diisopropyl sebacates, dicaprylyl carbonate, di-C12-13 alkyl tartrates, hydrogenated castor oil dimerates, triheptanoin, C12-13 alkyl lactates, C16-17 alkyl benzoates, propylheptyl caprylates, caprylic/capric triglycerides, diethylhexyl 2,6-naphthalate, octyldodecanol and ethylhexyl cocoatesdibutyl adipate.
[…]
17. (new) The sunscreen composition according to claim 8, wherein the O/W emulsifier comprises a cetyl phosphate emulsifier.
18. (new) The sunscreen composition according to claim 17, wherein the cetyl phosphate emulsifier is a potassium cetyl phosphate emulsifier.
since the choice of a suitable oil and emulsifier is well within the purview of the ordinarily skilled artisan.
Zanatta, for instance is directed to:
LIGHT AESTHETIC SUNSCREEN COMPOSITIONS
ABSTRACT
The present invention provides sunscreen composition comprising a hydrophobically modified polyurethane, a viscosity increasing polymer, and glyceryl stearate. This composition has surprisingly light aesthetics while providing excellent UV protection.
(Zanatta, title & abstract). In this regard, Zanatta teaches:
“[s]uitable emollients,” inter alia, “vegetable oils (e.g. triglycerides such as caprylic/capric triglyceride)” and “mixtures of triglycerides (e.g. caprylic/capric triclycerides)” (Zanatta, par. [0068]), which is “caprylic/capric triglycerides” and “one or more oils” of claim 9; and
An exemplary embodiment with “Potassium Cetyl Phosphate” as an “Emulsifier” (Zanatta, par. [0148], Composition 6), which is “potassium cetyl phosphate emulsifier” of claim 18, “cetyl phosphate emulsifier” of claims 17-18, and “O/W emulsifier” of claim 17.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate AU’s personal care composition (AU, claims 1-4 and 8), rearranged per (i), (ii) and (iii), as discussed above, and to have further incorporated “caprylic/capric triclycerides” and “Potassium Cetyl Phosphate” per Zanatta (Zanatta, par. [0068] & [0148]). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of a suitable emollient such as “caprylic/capric triclycerides” (Zanatta, par. [0068]) and emulsifier such as “Potassium Cetyl Phosphate” (Zanatta, par. [0148], Composition 6) for a sunscreen composition (Zanatta, abstract). See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the prior art renders claims 9 and 17-18 obvious.
Conclusion
Claims 1-12 and 16-18 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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