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 .
Response to Election/Restrictions
Applicant’s election without traverse of the specie lauryl PEG-8 dimethicone in the reply filed on 05/21/2026 is acknowledged.
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.
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.
Claim(s) 21-25, 27-39 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein et al. (US Patent Pub. 2016/0008237) in view of Park et al. (KR20150109160A, disclosed by applicant).
Goldstein et al. disclose microcapsules, which meets the limitation of pod, comprised of a core comprising one or more sunscreen agents and a shell of a wall-forming polymeric material (ABSTRACT). Goldstein et al. disclose the wall-forming polymeric material is selected from water-soluble cellulose ether, polymethacrylate or cellulose ester ([0151]). Goldstein et al. disclose water-in-oil emulsions ([0167]). Goldstein et al. disclose the core composition comprises cationic surfactant, such as diisobutyl phenoxy ethoxy ethyl dimethyl benzyl ammonium chloride ([0183]). Goldstein et al. disclose the composition comprises isohexadecane, glycerin, caprylic/capric triglyceride and polyacrylate-13 & polyisobutene & polysorbate 20 ([0190] and TABLE 7). Goldstein et al. disclose the SPF of sunscreen compositions are from 2 to 50 ([0162]). Goldstein et al. disclose the sunscreen agent is present from about 20% to about 90% of each microcapsule ([0116]). Goldstein et al. discloses the composition comprises a stabilizer in concentration of about 2% ([0140])
Goldstein et al. differs from the instant claims insofar as they do not disclose the specific amount of the internal water phase.
Park et al. disclose a water-in-oil composition in solid form (Abstract). Park et al. disclose the composition comprises surfactants including alkyldimethylbenzylammonium salts and the amount of surfactants may greatly affect the size of the emulsion particles (p. 9 and p.10). Park et al. disclose the water-in-oil comprises the oil phase in an amount of 15 to 50% and an aqueous phase in an amount of 10% to 70%; wherein the water phase may include polyol, such as glycerin and polymers (p. 11, paragraphs 2 and 4). Park et al. disclose the composition comprises caprylic/capric triglyceride (p. 8, paragraph 2). Park et al. disclose the composition has a SPF of 10 to 100 (p. 13). Park et al. disclose the composition comprises a stabilizer in an amount of about 0.1 to 5% (p. 2, column 2). Park et al. disclose the UV screening agent is present in an amount of 5% to 30% (p. 6, paragraph 1)
Generally, it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for same purpose, in order to form a third composition to be used for the very same purpose. The idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06. It would have been obvious to have combined the emulsion compositions to form a third composition to be used for the very same purpose of sunscreen formulations.
It would have been obvious to have varied the components of the formulation to achieve the claimed film thickness of the film of the microcapsules and the amount of the composition.
Claim(s) 21-39 are rejected under 35 U.S.C. 103 as being unpatentable over Goldstein et al. (US Patent Pub. 2016/0008237) in view of Park et al. (KR20150109160A, disclosed by applicant) and further in view of Lott et al. (WO2007059091A2).
Goldstein in view of Park is discussed above and differs from the instant claims insofar as they do not disclose the emulsifier of instant claim 26.
Lott et al. disclose a water-in-oil sunscreen emulsions that provide a SPF of at least about 15; wherein the emulsion comprises an alkyl dimethicone copolyol emulsifier (Abstract). Lott et al. disclose the emulsifier lauryl PEG-8 dimethicone ([0040], Table 2) Lott et al. disclose the selection of an emulsifier with particular properties is critical to achieving a high level of sunscreen efficiency and thereby decreasing the amount of sunscreen needed to achieve a desired SPF ([0009])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used lauryl PEG-8 dimethicone as the emulsifier of Goldstein in view of Park motivated by the desire to achieve a high level of sunscreen efficiency and thereby decreasing the amount of sunscreen needed to achieve a desired SPF as taught by Lott.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612
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