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 .
Notice of Pre-AIA or AIA Status
DETAILED ACTION
Status of the Claims
Claims 21-23 are new. Claims 1-23 are pending and under examination.
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
This application is a national stage entry of PCT/FR2022/051365 filed on 7/7/2022, which claims priority from French application FR2107441 filed on 7/8/2021.
Objections/Rejections Withdrawn
The objection over claim 1 for missing an “and” is withdrawn per applicant’s correction.
The objection over claim 16 for missing a conjunction is withdrawn per applicant’s correction.
The rejection under USC 112(b) for use of “it” in the claims is withdrawn per applicant’s amendments to the claims.
The rejection under USC 112(b) over claim 4 for “as well as” is withdrawn per applicant’s amendments to the claims.
The rejection under USC 112(b) over claim 5 for “selected from the group comprising” is withdrawn per applicant’s amendments.
The rejections under USC 112(b) over claims 5 and 15 for broad and narrow in the claims is withdrawn per applicant’s amendments.
The rejection under USC 112(b) over claims 6 and 9 for not referring back properly to the items in claim 1 is withdrawn per applicant’s amendments to claim 1.
The rejection under USC 112(b) over claims 7 and 11 for lack of antecedent basis is withdrawn per applicant’s amendments to claim 1, which correct this issue.
The rejection under USC 112(b) over claim 14 for lack of antecedent basis is withdrawn per applicant’s amendments to the claim.
The rejection under USC 112(b) over claims 2, 3, 19 and 20 for “type” is withdrawn per applicant’s amendments to these claims.
The rejection under USC 102(a)(1) and the rejection under USC 103 over Osati are withdrawn per applicant’s amendments and arguments.
As these objections and rejections are withdrawn, applicant’s arguments toward the rejections are now moot.
New Claim Objections – Due to Amendment
Claims 5 and 15 were amended, but did not move the “and” between the last two items in the Markush group. Appropriate correction is required.
Maintained Rejection – Modified As Necessitated by Amendments
Claim Rejections - 35 USC § 112
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 22-23 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.
Claims 22 and 23 are indefinite for missing a conjunction “and”, “or” or “and/or” between the two groups in the claim. Thus, it is unclear if both limitations on these items are needed or if only one condition has to be met (for example, one of the UVA solar screening agents of the group, while the broad spectrum screening agent is left broad). For the purpose of compact prosecution, the examiner will read the claim as using “and/or”.
Claim 22 is indefinite for the phrase “advantageously butyl methoxydibenzoylmethane and diethylamino hydroxybenzoyl hexyl benzoate” as it is unclear if the item (a combination of two items) is only exemplified as advantageous or if it is meant to be a needed claim limitation.
Maintained Rejection – Modified As Necessitated by Amendments/New Claims
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 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.
Claims 1-23 are rejected under 35 U.S.C. 103 as being unpatentable over Llewellyn WO2002039974A1 (in applicant’s IDS) and Abou-Khalil US20150152046A1.
Llewellyn teaches personal care compositions comprise sunscreen compounds which are cyclosporine-like amino acids (MAAs) (abstract). Llewellyn teaches example 1 with Butylmethoxy dibenzoyl methane 1.2% (UVA agent), Octyl methoxy cinnamate (Octinoxate) 1.0% (UVB agent), and Di octyl Butamido triazone (Uvasorb HEB) 1.0% (UVA/UVB agent) along with sun filters that are MAAs. Example 2 teaches a composition with Butylmethoxy dibenzoyl methane 1.2% (UVA agent), Octyl methoxy cinnamate 1.0% (UVB agent), and Benzylidene Camphor 2.0% (UVB agent) along with MAA. Llewellyn teaches “a) para-aminobenzoic acids, esters and derivatives thereof, for example, 2- ethylhexyl para-dimethylaminobenzoate and the octyl ester of para- aminobenzoic acid; b) methoxycinnamate esters such as 2-ethylhexyl para-methoxycinnamate, 2- ethoxyethyl para-methoxycinnamate or α,β-di-(para-methoxycinnamoyl)-α'- (2-ethylhexanoyl)-glycerin; c) benzophenones such as oxybenzone; d) dibenzoylmethanes such as 4-(tert-butyl-4'-methoxydibenzoylmethane; e) 2-phenylbenzimidazole-5 sulfonic acid and its salts and disodium phenyl dibenzimidazole tetrasulfonate; f) alkyl-β,β-diphenylacrylates for example alkyl α-cyano-β,β-diphenylacrylates such as octocrylene; g) triazines such as 2,4,6-trianilino-(p-carbo-2-ethyl-hexyl-1-oxi)-1 ,3,5 triazine; h) camphor derivatives such as methylbenzylidene camphor and terphthalylidene dicamphor sulfonic acid; i) organic pigments sunscreening agents such as methylene bis-benzotriazole tetramethyl butylphenol; j) silicone based sunscreening agents such as drometrizole trisiloxane benzylidene malonate polysiloxane and dimethicodiethyl benzal malonate; and k) salicylates such as octyl salicylates. The additional sunscreening agent may be present in an amount of 0.1 to 25% by weight of the composition.” (pages 9 and 10). The description of Llewellyn provides for topical application to provide protection against the sun’s rays or other sources of UV radiation (page 1). Llewellyn’s compositions of examples 3-5 have an SPF of 25. The example 4 composition has Butylmethoxy dibenzoyl methane, Methylene bis-benzotriazole tetramethyl butylphenol and octyl methoxy cinnamate. Example 4 teaches mycosporine glycine at 5% and N-methyl mycosporine threonine at 5%.
Llewellyn teaches sunscreens having formulations with MAAs along with combinations of UVA and at least two UVB and/or UVA/UVB screening agents, but does not teach MAAs of the applicant claims nor some of the other UV agents provided in the claims.
Abou-Khalil teaches “The present invention relates to compounds that absorb ultraviolet radiations and that protect biological materials as well as non-biological materials from damaging exposure to ultraviolet radiations.” (paragraph 2). Abou-Khalil teaches compounds of formula I-
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143
386
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(abstract). Abou-Khalil teaches compounds of formula IA
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190
409
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(claim 102 of Abou-Khalil). Abou-Khalil teaches compounds that fit formula I and Ia in paragraph 9.
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406
358
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. Both these compounds have an R2 that is a carboxyl group and a methoxy group at the R1 position. Abou-Khalil teaches “Examples of UVB-blocking agents include, but are not limited to, 4-Aminobenzoic acid (PABA), cinoxate, ethylhexyl triazone (Uvinul T 150), homosalate, 4-Methylbenzylidene camphor (Parsol 5000), octyl methoxycinnamate (octinoxate), octyl salicylate (Octisalate), padimate O (Escalol 507), phenylbenzimidazole sulfonic acid (Ensulizole), polysilicone-15 (Parsol SLX) and trolamine salicylate.” (paragraph 116). Abou-Khalil teaches “Examples of UVA-absorbing agents include, but are not limited to, avobenzone (Parsol 1789), bisdisulizole disodium (Neo Heliopan AP), diethylamino hydroxybenzoyl hexyl benzoate (Uvinul A Plus), ecamsule (Mexoryl SX) and methyl anthranilate” (paragraph 115). Abou-Khalil teaches “Examples of agents that block both UVA and UVB include, but are not limited to, bemotrizinol (Tinosorb S), Bbenzophenones 1-12, ioxybenzone, drometrizole trisiloxane (Mexoryl XL), iscotrizinol (Uvasorb HEB), octocrylene, oxybenzone (Eusolex 4360), sulisobenzone, hybrid (chemical/physical): bisoctrizole (Tinosorb M)” (paragraph 117). Abou-Khalil teaches “The compounds may be incorporated into cosmetic and/or personal care products formulations or compositions in an amount of from about 0.2% to about 30% of the weight of the formulation or the composition, more preferably from about 1% to about 15% of the weight of the formulation or the composition.” (paragraph 120).
One of ordinary skill in the art before the time of filing would have looked to the teachings of Abou-Khalil to include new mycosporine-like amino acids and other UV screening agents into MAA sunscreen formulations taught by Llewellyn in order to provide improved UV screening formulations to better protect the skin from damaging UV radiation. There was a reasonable expectation of success in combining the teachings of the references in order to provide other formulations for improved UV protection of skin and more absorbance/blocking of UVA and UVB radiation.
Response to Arguments
Applicant argues that amendments to the structures of claim 1 produce compounds that are not the same as those exemplified in Abou-Khalil. Abou-Khalil provides for subgenre of compounds that would obviate the subgenre provided by applicant. In addition, Llewellyn teaches using mycosporine-like amino acids (the genus of the MAA compounds) with other UV protecting compounds. The combined teachings of Llewellyn and Abou-Khalil MPEP 2144.08 regarding obviousness of species when the prior art teaches a genus – “Consider any teachings of a "typical," "preferred," or "optimum" species or subgenus within the disclosed genus. If such a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995)”. And “The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904”. Also, see MPEP 2144.09 regarding close structural similarity between chemical compounds.
In regard to Llewellyn’s MAA compounds being different, Llewellyn still motivates the use of the group of compounds mycosporin-like amino acids as being useful for sunscreen compositions. Applicant’s mention of the mycosporine-like amino acids not suitable as a sole sunscreening active does not teach away from such compounds being used in combination with other UV screening agents. It is noted that applicant’s claimed invention is a composition of multiple items including other UV screening agents. The combination with UV compositions of Abou-Khalil is motivated as both are UV screening/sunscreen compositions and Abou-Khalil provides for other compounds that are mycosporine molecules (see paragraphs 11 and 42-43 of Abou-Khalil as well as the teachings of the compounds). One of ordinary skill in the art seeking to provide added sunscreen protection would make such combinations.
In regard to Abou-Khalil providing that MAA’s must meet certain criteria to be compatible with media, both Abou-Khalil and Llewellyn allow for compositions with MAA’s (see paragraphs 109-121 of Abou-Khalil and examples of Llewellyn). Thus, it is enabled to make compositions with these ingredients and combine them with other UV screening agents of the prior art and there is a reasonable expectation of success in making such compositions.
Applicant argues results from the specification. As none of the claims are fully in scope with unexpected results provided in applicant’s specification, the prior art still provides for the MAA agents and sunscreen agents of the claims to make sunscreens with for the expected result of making a sunscreen capable of protecting a subject from UV light.
The examiner would be receptive to import of some of the matter in table 5 into claim 1 (this claim limitation can be amended to require the diethylamino hydroxybenzoyl hexyl benzoate, diethylhexyl butamido triazone and bis-ethylhexyloxyphenol methoxyphenyl triazine as a required part of the composition in claim 1). It is noted that table 5, with results in table 7 requires both these agents in combination with an MAA according to the invention. The expected contribution of SPF provided by the added diethylhexyl butamido triazone is substantially increased in this combination of items compared to what would be expected. Applicant may provide another option of a combination where homosalate, ethylhexyl salicylate and butyl methoxydibenzoylmethane would be combined with the MAA as in claim 1 (see tables 6 and 8 of the specification where the addition of homosalate in the combination provides a higher than expected outcome for SPF value).
Conclusion
No claims are allowed. 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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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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.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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