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 .
Status of Application
The Amendments and Remarks filed on 04/28/26 are acknowledged.
Claims 1-3 and 19 were amended.
Claims 1-20 are pending and included in the prosecution.
Response to Amendments
Claim Objection(s)
In light of the amendment of claims 1-3 and 19, the objections to these claims are withdrawn.
Notice for all US Patent Applications filed on or after March 16, 2013
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.
Maintained Rejections
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 of this title, 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 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, 4-13, and 15-20 are again rejected under 35 U.S.C. 103 as being unpatentable over Croom et al. (US 2021/0059924 A1 – “Croom”) in view of Zecchino et al. (US 11,890,368 B1 – “Zecchino”), Ferrari et al. (WO 2023/099241 A1 – “Ferrari”), Mushock et al. (EP 2 106 704 B1 – “Mushock”), and Omura et al. (US 2021/0197154 A1 – “Omura”), as evidenced by National Center for Biotechnology Information (2025). PubChem Compound Summary for CID 51040, Avobenzone. Retrieved December 23, 2025 from https://pubchem.ncbi.nlm.nih.gov/compound/Avobenzone - 73 pages - “PubChem”).
Instant claim 1 is drawn to a sunscreen preparation for topical application to skin, wherein the preparation comprises one or more organic UV filter substances and
(i) triheptanoin,
(ii) coco-caprylate/caprate,
(iii) dilinoleic acid/butanediol copolymer,
(iv) castor oil/isophorone diisocyanate copolymer,
(v) poly C10-30 alkyl acrylate,
(vi) hydroxystearic acid, and
(vii) dextrin palmitate.
Croom teaches a bio-based and biodegradable elastomer for cosmetic and personal care (Abstract) and a gel composition containing the elastomer ([0017]). The gel composition includes active agents such as sunscreens ([0035]) and one or more cosmetically acceptable ingredients or emollients in an amount from about 70 to about 95 weight % ([0296], claims 1 and 20-28). Example 15 is an SPF-50 sunscreen formulation which contains Gransense™ elastomer gel ([0310]). Appropriate emollients or solvents ([0124]) include triheptanoin ([0173], [0294], claim 24), coco-caprylate/caprate ([0138], Example 15 – [0310], [0312]-[0313], and Table 9), dicaprylyl carbonate ([0142]), and propylene carbonate ([0165]). Appropriate polyols include dilinoleic acid ([0084] and [0115]). The sunscreen active agent avobenzone is disclosed (Table 9).
PubChem (used as an evidentiary reference) teaches that avobenzone is also known as butyl methoxydibenzoylmethane.
Croom does not expressly teach (iii) dilinoleic acid/butanediol copolymer or components (iv)-(vii).
Zecchino teaches a sunscreen formulation comprising red iron oxide and a mineral sunscreen blend (Abstract). The red iron oxide is used as a masking agent with a dispersing agent (Col. 1, lines 43-45). The dispersing agent includes coco-caprylate/caprate, dilinoleic acid/butanediol copolymer, and castor oil/IPDI copolymer (Col. 2, lines 50-57; Col. 4, lines 19-28; Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1). Propylene carbonate is disclosed as a thickener/stabilizer (Col. 2, lines 2-16, Col. 3, lines 16-21, TABLE 1, Col. 6, lines 1-56).
Ferrari teaches a makeup composition (Title) which contains at least one semicrystalline polymer (Abstract). The composition includes cosmetic active agents such as sunscreens ([00150]). Semicrystalline polymers include poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]). Example 1, which comprises the semicrystalline polymer, has a more stable consistency compared to Example 1b which is of identical composition but not comprising the semicrystalline polymer ([00207]).
Mushock teaches perfumed products including sunscreen creams and lotions ([0085]). Hydroxystearic acid (Casid HSA) is disclosed as a component (Part 2) of the composition ([0241] – Page 34 – reproduced in the Response to Arguments section below).
Omura teaches W/O emulsions or O/W emulsions in skin care cosmetics such as sunscreens ([0079]) which contain thickeners and gelling agents such as dextrin palmitate ([0105]), including dextrin palmitate with the trade name: Rheopearl KL2 ([0113], [0147], Example 8 – TABLE 9, [0170-[0171]). Example 8 also contains the sunscreen active 4-tert-butyl-4’-methoxydibenzoylmethane (TABLE 9). Modified clay minerals commercially available under the trade names of BENTONE 27V or stearalkonium hectorite are used ([0110]). Propylene carbonate is disclosed ([0111] and [0147]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a sunscreen composition comprising sunscreen active agents such as avobenzone and one or more cosmetically acceptable ingredients including triheptanoin, coco-caprylate/caprate, and dilinoleic acid, as taught by Croom, in view of the sunscreen formulation including coco-caprylate/caprate, dilinoleic acid/butanediol copolymer, and castor oil/IPDI copolymer, as taught by Zecchino, the makeup composition which includes sunscreens and the semicrystalline polymer poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6®, as taught by Ferrari, the cosmetic products which can be in the form of sunscreen creams and lotions and include hydroxystearic acid (Casid HSA), as taught by Mushock, and the sunscreen formulations which contain thickeners and gelling agents such as dextrin palmitate with the trade name Rheopearl KL2, as taught by Omura, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because all the references are drawn to cosmetic or skin care compositions which contain sunscreens, and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A).
Furthermore, MPEP 2144.06 states: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine said components with a reasonable expectation of success because each component is taught to be useful for the same purpose, i.e., incorporation into a sunscreen formulation, and it is prima facie obvious to combine said actives to form a third composition to be used for the very same purpose.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding instant claim 1, the limitation of a sunscreen preparation for topical application to skin, wherein the preparation comprises one or more organic UV filter substances would have been obvious over the composition including sunscreens ([0035]), and the sunscreen active agent avobenzone (Table 9), as taught by Croom, the sunscreen formulations (Abstract, Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1), as taught by Zecchino, the makeup composition including sunscreens ([00150]), as taught by Ferrari, the sunscreen creams and lotions ([0085]), as taught by Mushock, and the W/O emulsions or O/W emulsions in skin care cosmetics such as sunscreens ([0079]) and the sunscreen active 4-tert-butyl-4’-methoxydibenzoylmethane (TABLE 9), as taught by Omura.
Regarding instant claim 1, the limitation of (i) triheptanoin would have been obvious over the appropriate emollients or solvents ([0124]) including triheptanoin ([0173], [0294], claim 24), as taught by Croom.
Regarding instant claim 1, the limitation of (ii) coco-caprylate/caprate would have been obvious over the appropriate emollients or solvents ([0124]) including coco-caprylate/caprate ([0138], Example 15 – [0310], [0312]-[0313], and Table 9), as taught by Croom, and the dispersing agent which includes coco-caprylate/caprate (Col. 2, lines 50-57; Col. 4, lines 19-28; Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1), as taught by Zecchino.
Regarding instant claim 1, the limitation of (iii) dilinoleic acid/butanediol copolymer would have been obvious over the dispersing agent which includes dilinoleic acid/butanediol copolymer, and castor oil/IPDI copolymer (Col. 2, lines 50-57; Col. 4, lines 19-28; Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1), as taught by Zecchino.
Regarding instant claim 1, the limitation of (iv) castor oil/IPDI copolymer would have been obvious over the dispersing agent which includes castor oil/IPDI copolymer (Col. 2, lines 50-57; Col. 4, lines 19-28; Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1), as taught by Zecchino.
Regarding instant claim 1, the limitation of (v) poly C10-30 alkyl acrylate would have been obvious over the poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]), as taught by Ferrari.
Regarding instant claim 1, the limitation of (vi) hydroxystearic acid would have been obvious over the hydroxystearic acid (Casid HSA) ([0241]), as taught by Mushock.
Regarding instant claim 1, the limitation of (vii) dextrin palmitate would have been obvious over the thickeners and gelling agents such as dextrin palmitate ([0105]), including dextrin palmitate with the trade name: Rheopearl KL2 ([0113], [0147], Example 8 – TABLE 9, [0170-[0171]), as taught by Omura.
Regarding instant claim 2, the limitation of (viii) dicaprylyl carbonate would have been obvious over the dicaprylyl carbonate ([0142]), as taught by Croom.
Regarding instant claim 2, the limitation of (ix) stearalkonium hectorite would have been obvious over the modified clay minerals commercially available under the trade names of BENTONE 27V or stearalkonium hectorite ([0110]), as taught by Omura.
Regarding instant claim 2, the limitation of (x) propylene carbonate would have been obvious over the propylene carbonate ([0165]), as taught by Croom, the propylene carbonate used as a thickener/stabilizer (Col. 2, lines 2-16, Col. 3, lines 16-21, TABLE 1, Col. 6, lines 1-56), as taught by Zecchino, and the propylene carbonate ([0111] and [0147]), as taught by Omura.
Regarding instant claim 4, the limitation of the preparation being substantially free of silicone elastomer would have been obvious over the alternatives to silicone elastomers, as recognized by Croom ([0006]), and the inventive elastomer which provides higher compatibility with the polar oil phase of the formula as well as the natural polyglyceryl-based emulsifier while achieving the desirable cushion/cloud-like feel that is usually only attainable with silicone elastomer formulations ([0311], [0313], and [0319]-[0320]), as taught by Croom.
Regarding instant claim 5, the limitation of the preparation being substantially free of water would have been obvious over the anhydrous formulation (Example 20 – [0317]), as taught by Croom.
Regarding instant claim 6, the limitation of the preparation being clear or translucent would have been obvious over the clear (C) and translucent (T) formulations (TABLE 9 – [0320]), as taught by Croom.
Regarding instant claim 7, the limitations of a gel or a lotion would have been obvious over the gel compositions ([0017], [0035]) and lotions ([0017] and [0254]), respectively, as taught by Croom.
Regarding instant claim 8, the limitation of the one or more organic UV filter substances in a total concentration of from about 2% to about 40% by weight, based on a total weight of the preparation would have been obvious over the sunscreen active 4-tert-butyl-4’-methoxydibenzoylmethane used at 2.0% (TABLE 9), as taught by Omura.
Regarding instant claim 9, the limitation of butyl methoxydibenzoylmethane would have been obvious over the sunscreen active avobenzone (TABLE 9), as taught by Croom, and the 4-tert-butyl-4’-methoxydibenzoylmethane (TABLE 9), as taught by Omura, and as evidenced by PubChem since this reference teaches that avobenzone is also known as butyl methoxydibenzoylmethane (Page 1).
Regarding instant claim 10, the limitation of components (i), (ii), (iii), and (iv) in a total concentration of from 1% to 10% by weight, based on a total weight of the preparation would have been obvious over the triheptanoin ([0173], [0294], claim 24), coco-caprylate/caprate ([0138], Example 15 – [0310], [0312]-[0313], and Table 9), as taught by Croom, the coco-caprylate/caprate ([0138], Example 15 – [0310], [0312]-[0313], and Table 9), as taught by Croom, the dispersing agents coco-caprylate/caprate (Col. 2, lines 50-57; Col. 4, lines 19-28; Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1), and the dilinoleic acid/butanediol copolymer, and castor oil/IPDI copolymer (Col. 2, lines 50-57; Col. 4, lines 19-28; Sunscreen Formulations 1, 2, and 7 – TABLES 1, 2, and 7; Col. 6, line 1 to Col. 7, line 27 and Col. 9, line 40 to Col. 10, line 37; and claim 1), as taught by Zecchino, in view of the dispersing agent used at an overlapping range of about 0.1% to about 50% of said formulation (claims 1 and 7), as taught by Zecchino. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claim 11, the limitation of components (v), (vi), and (vii) in a total concentration of from 1% to 10% by weight, based on a total weight of the preparation would have been obvious over the poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]), used at 3.0% (TABLE 1 – [00196]), as taught by Ferrari, the hydroxystearic acid (Casid HSA) used at 6.00% by weight ([0241]), as taught by Mushock, and the dextrin palmitate with the trade name: Rheopearl KL2 used at 2.5% ([0113], [0147], Example 8 – TABLE 9, [0170-[0171]), as taught by Omura.
Regarding instant claim 12, the limitation of components (i), (ii), (iii), (iv), (v), (vi), and (vii) in a total concentration of from 2% to 20% by weight, based on a total weight of the preparation would have been obvious over the dispersing agent used at an overlapping range of about 0.1% to about 50% of said formulation (claims 1 and 7), as taught by Zecchino, the poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]), used at 3.0% (TABLE 1 – [00196]), as taught by Ferrari, the hydroxystearic acid (Casid HSA) used at 6.00% by weight ([0241]), as taught by Mushock, and the dextrin palmitate with the trade name: Rheopearl KL2 used at 2.5% ([0113], [0147], Example 8 – TABLE 9, [0170-[0171]), as taught by Omura.
Regarding instant claim 13, the limitation of components (viii), (ix), and (x) in a total concentration of from 1% to 10% by weight, based on a total weight of the preparation would have been obvious over the Sun Lotion (SPF 20) which contains Cosmedia Gel CC at 2.00% (Page 150 English Translation and Page 51 – original document), wherein Cosmedia® Gel CC contains dicaprylyl carbonate, stearalkonium hectorite, and propylene carbonate (Pages 150 and 330), as taught by Dierker.
Regarding instant claim 15, the limitation of a ratio of total weight of components (i), (ii), (iii) and (iv) to total weight of components (v), (vi) and (vii) of from 3:1 to 1:3 would have been obvious over the dispersing agent used at an overlapping range of about 0.1% to about 50% of said formulation (claims 1 and 7), as taught by Zecchino, the poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]), used at 3.0% (TABLE 1 – [00196]), as taught by Ferrari, the hydroxystearic acid (Casid HSA) used at 6.00% by weight ([0241]), as taught by Mushock, and the dextrin palmitate with the trade name: Rheopearl KL2 used at 2.5% ([0113], [0147], Example 8 – TABLE 9, [0170-[0171]), as taught by Omura. The recited ratio of total weight of the components would have been obvious variants given the concentrations taught by the prior art unless there is evidence of criticality or unexpected results.
Regarding instant claim 16, the limitation of a weight ratio of component (v) to component (vi) of from 6:1 to 2:1 would have been obvious over the dispersing agent used at a range of about 0.1% to about 50% of said formulation (claims 1 and 7), as taught by Zecchino, the poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]), used at 3.0% (TABLE 1 – [00196]), as taught by Ferrari, and the hydroxystearic acid (Casid HSA) used at 6.00% by weight ([0241]), as taught by Mushock. The recited ratio of total weight of the components would have been obvious variants given the concentrations taught by the prior art unless there is evidence of criticality or unexpected results.
Regarding instant claim 17, the limitation of a weight ratio of component (v) to component (vii) of from 6:1 to 2:1 would have been obvious over the dispersing agent used at a range of about 0.1% to about 50% of said formulation (claims 1 and 7), as taught by Zecchino, the poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6® ([0036] - [0038], Example 1 – [00195]-[00196]), used at 3.0% (TABLE 1 – [00196]), as taught by Ferrari, and the dextrin palmitate with the trade name: Rheopearl KL2 used at 2.5% ([0113], [0147], Example 8 – TABLE 9, [0170-[0171]), as taught by Omura. The recited ratio of total weight of the components would have been obvious variants given the concentrations taught by the prior art unless there is evidence of criticality or unexpected results.
Regarding instant claim 18, the limitation of an in vitro SPF of at least 30 would have been obvious over Example 15 which is an SPF-50 sunscreen formulation which contains Gransense™ elastomer gel ([0310]), as taught by Croom.
Regarding instant claim 19, the limitation of the preparation further comprising dibutyl adipate would have been obvious over the dibutyl adipate ([0141]), as taught by Croom.
Regarding instant claim 20, the limitation of a method of protecting skin from UV radiation would have been obvious over the SPF-50 sunscreen formulation which contains Gransense™ elastomer gel ([0310]), as taught by Croom, and the universal sunscreen that is locked onto the user’s skin (claim 2), as taught by Zecchino.
Response to Arguments
Applicant’s arguments (Pages 8-12, filed 04/28/26) with respect to the rejection of claims 1-2, 4-13, and 15-20 under 35 U.S.C. 103 as being unpatentable over Croom in view of Zecchino, Ferrari, Mushock, and Omura, as evidenced by PubChem have been fully considered but are not persuasive.
Applicant argues that the only sunscreen composition exemplified in CROOM is the “SPF-50 Sunscreen” of Example 15 (relied upon by the Examiner), whose components are listed in Table 3 of paragraph [0310] of CROOM, and that this sunscreen contains no organic UV filters.
This is not persuasive because the teaching of Croom is not limited to the “SPF-50 Sunscreen” of Example 15. Croom also teaches the sunscreen active agent avobenzone (Table 9), which is an organic UV filter substance. According to MPEP § 2123 (I), “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” and “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure of preferred embodiments.”
Applicant argues that triheptanoin (component (i) of the instantly claimed preparation) is mentioned in CROOM only as one of many examples of bio-based emollients which can be used for the preparation of the polyurethane elastomeric gel disclosed in CROOM, i.e., not as a separate component of any composition, let alone a sunscreen composition.
This is not persuasive because one of ordinary skill in the art would have been motivated to use various skin-care ingredients, including emollients or solvents such as the triheptanoin taught by Croom in sunscreen preparations which are necessarily applied to the skin.
Applicant argues that none of the sunscreens of Examples 1, 2 and 7 of ZECCHINO relied upon by the Examiner contains any organic UV filter (nor do any of the remaining exemplified sunscreen compositions of ZECCHINO).
This is not persuasive because Zecchino is not relied upon for teaching the limitation of an organic UV filter. This limitation is taught by Croom (avobenzone in Table 9). Zecchino is relied upon to cure the deficiencies regarding a sunscreen formulation including coco-caprylate/caprate, dilinoleic acid/butanediol copolymer, and castor oil/IPDI copolymer. The teachings of Croom and Zecchino are properly combined because both references are drawn to cosmetic or skin care compositions which contain sunscreens, and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A).
Applicant argues that while ZECCHINO mentions dilinoleic acid/butanediol copolymer and castor oil/IPDI copolymer as examples of optional components of the sunscreens disclosed therein, it is pointed out that these copolymers are intended as dispersing agents for the masking agent (red iron oxide) present in the sunscreens of ZECCHINO.
This is not persuasive because one of ordinary skill in the art would have found it obvious to use components known to be included in sunscreen compositions, including the dispersing agent dilinoleic acid/butanediol copolymer and castor oil/IPDI copolymer as taught by Zecchino. One of ordinary skill in the art would have had a reasonable expectation of success in using the dispersing agent taught by Zecchino in various sunscreen compositions including those that contain red iron oxide or the organic UV filter avobenzone taught by Croom.
Applicant argues that “… it is not seen that one of ordinary skill in the art would have combined the disclosures of CROOM and ZECCHINO in the way proposed by the Examiner. All that the exemplified sunscreen compositions of CROOM and ZECCHINO relied upon by the Examiner appear to have in common is that these compositions do not contain any organic UV filters.” Applicant argues that the Examiner is reminded that "it is not enough to simply show that the references disclose the claim limitations; in addition, 'it can be important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does."'
This is not persuasive because the teaching of the prior art references is not limited to the exemplified compositions. Croom teaches the sunscreen active agent avobenzone (Table 9), which is an organic UV filter substance. Please see MPEP § 2123(I). With a clear teaching of an organic UV filter substance used in a sunscreen composition in the prior art, one of ordinary skill in the art would have found it obvious to include it when preparing a sunscreen composition and have a reasonable expectation of providing an effective sunscreen.
Applicant argues that UV filters are not even required components of the compositions of FERRARI, and it is not seen that one of ordinary skill in the art would expect that this semicrystalline polymer would in any way improve the compositions of CROOM (keeping in mind that the sunscreen composition of Example 5 of CROOM and the composition of Example la of FERRARI relied upon by the Examiner have virtually nothing in common), nor has the Examiner provided any explanation in this regard.
This is not persuasive because both Croom and Ferrari teach compositions that are applied to the skin and contain sunscreen active agents. The motivation to include the semicrystalline polymer of Ferrari in the composition of Croom is provided by Ferrari since this reference teaches that the semicrystalline polymer has a more stable consistency ([00207]).
Applicant argues that regarding MUSHOCK, a reference to hydroxystearic acid ( or HSA) could not be found in this document (which does not appear to comprise the paragraph [0241] referred to by the Examiner).
This is not persuasive because Mushock teaches sunscreen creams and lotions ([0085]), and hydroxystearic acid (Casid HSA) is disclosed as a component (Part 2) of the composition which is reproduced below for Applicant ([0241] – Page 34).
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Applicant argues that regarding OMURA, it is noted that this document relates to emulsions, the compositions of CROOM do not appear to be emulsions but contain a polyurethane elastomeric gel, and it is not seen that one of ordinary skill in the art would be motivated to add a thickener such as, e.g., dextrin palmitate mentioned in OMURA to the compositions of CROOM, nor has the Examiner provided any explanation in this regard.
This is not persuasive because Croom does teach emulsions ([0017]), emulsion creams (Example 16 - [0311]-[0312], TABLE 4). One of ordinary skill in the art would have found it obvious to combine the teachings of Croom and Omura because both the references teach sunscreen compositions. One of ordinary skill in the art would have found it obvious to include the thickeners and gelling agents such as dextrin palmitate taught by Omura in the sunscreen composition of Croom in order to provide the desired thickening and gelling characteristics, particularly since Croom is drawn to a gel.
Therefore, the rejection of 12/31/25 is maintained.
Claim Rejections - 35 USC § 103
Claims 2-3 and 14 are again rejected under 35 U.S.C. 103 as being unpatentable over Croom et al. (US 2021/0059924 A1 – “Croom”) in view of Zecchino et al. (US 11,890,368 B1 – “Zecchino”), Ferrari et al. (WO 2023/099241 A1 – “Ferrari”), Mushock et al. (EP 2 106 704 B1 – “Mushock”), Omura et al. (US 2021/0197154 A1 – “Omura”), as evidenced by National Center for Biotechnology Information (2025). PubChem Compound Summary for CID 51040, Avobenzone. Retrieved December 23, 2025 from https://pubchem.ncbi.nlm.nih.gov/compound/Avobenzone - 73 pages - “PubChem”), Dierker et al. (EP 2 116 221 A1 – English Espacenet Translation – “Dierker”), Ggel 100V Technical Data Sheet (updated 4/21/2017, 3 pages – “Ggel”), and Applechem Formulary – Sunscreens (April 2022, 1 page – “Applechem”).
Instant claim 3 is drawn to the sunscreen preparation of claim 1, wherein the preparation further comprises
propylene carbonate,
dimethicone,
ethylhexyl palmitate, and
quaternium-90 bentonite.
The teachings of Croom, Zecchino, Ferrari, Mushock, and Omura are discussed above.
Croom, Zecchino, Ferrari, Mushock, and Omura do not expressly teach components (xi) – (xiii).
Dierker teaches a cosmetic preparation (Abstract) that provides raw materials that convey a sensorially “light” impression, ideally with simultaneously improved skin compatibility, especially in combination with UV sunscreens ([0004]). The preparations include sunscreen emulsions (Pages 51, 57, 63, 69, 117, 130, 231, 238, 244, 250, 298, 311 - Tables 1-4, 14, 16, 19-22, 32, 34), anti-aging sunscreens (SPF 30) (Pages 153 and 334), sunscreen lotions SPF 30 (Pages 156 and 337), foundations or sunscreens (Pages 160, 338, and 341), moisturizing sunscreen lotions (Page 163, 344), and sunscreen sprays (Pages 160, 277, 329, 341). The ingredient Cosmedia® Gel CC, which contains dicaprylyl carbonate, stearalkonium hectorite, and propylene carbonate, is included (Pages 150 and 330).
Ggel teaches that G-GEL 100V is a gel mixture of organo-modified clay in cosmetic oils for rheology control and contains dimethicone, 2-ethylhexyl palmitate, quaternium-90 bentonite, and propylene carbonate (Page 1).
Applechem teaches that G-GEL 100V is a dimethicone based organoclay gel designed for sensorial beauty applications, greatly boosts suspension of mineral pigments, making a crucial ingredient in stabilizing mineral sunscreens (Page 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a sunscreen composition comprising sunscreen active agents such as avobenzone and one or more cosmetically acceptable ingredients including triheptanoin, coco-caprylate/caprate, and dilinoleic acid, as taught by Croom, in view of the sunscreen formulation including coco-caprylate/caprate, dilinoleic acid/butanediol copolymer, and castor oil/IPDI copolymer, as taught by Zecchino, the makeup composition which includes sunscreens and the semicrystalline polymer poly C10-30 alkyl acrylate, such as polybehenyl acrylate, sold under the name Tego SP 13-6®, as taught by Ferrari, the cosmetic products which can be in the form of sunscreen creams and lotions and include hydroxystearic acid (Casid HSA), as taught by Mushock, the sunscreen formulations which contain thickeners and gelling agents such as dextrin palmitate with the trade name Rheopearl KL2, as taught by Omura, a cosmetic sunscreen preparation which contains the component Cosmedia® Gel CC, which contains dicaprylyl carbonate, stearalkonium hectorite, and propylene carbonate, as taught by Dierker, include G-GEL 100V which contains dimethicone, 2-ethylhexyl palmitate, quaternium-90 bentonite, and propylene carbonate, as taught by Ggel, and which is a gel mixture of organo-modified clay in cosmetic oils for rheology control and stabilizing mineral sunscreens, as taught by Applechem, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because all the references are drawn to cosmetic or skin care compositions which contain sunscreens, and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A).
Furthermore, MPEP 2144.06 states: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine said components with a reasonable expectation of success because each component is taught to be useful for the same purpose, i.e., incorporation into a sunscreen formulation, and it is prima facie obvious to combine said actives to form a third composition to be used for the very same purpose.
Also, Applechem teaches the advantages of G-GEL 100V, including boosting suspension of mineral pigments and stabilizing mineral sunscreens (Page 1).
One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the components taught by prior art in a functional sunscreen formulation.
Please note that according to MPEP 2145 (V): “Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.)”
Regarding instant claim 2, the limitations of components (viii) – (x) would have been obvious over the inclusion of Cosmedia® Gel CC, which contains dicaprylyl carbonate, stearalkonium hectorite, and propylene carbonate (Pages 150 and 330), as taught by Dierker.
Regarding instant claim 3, the limitations of components (x) – (xiii) would have been obvious over G-GEL 100V, which is a gel mixture of organo-modified clay in cosmetic oils for rheology control and contains dimethicone, 2-ethylhexyl palmitate, quaternium-90 bentonite, and propylene carbonate (Page 1), as taught by Ggel, in view of the use of G-GEL 100V for sensorial beauty applications, which greatly boosts suspension of mineral pigments, making a crucial ingredient in stabilizing mineral sunscreens (Page 1), as taught by Applechem.
Regarding instant claim 14, the limitation of components (x), (xi), and (xii) in a total concentration of from 1% to 10% by weight, based on a total weight of the preparation would have been obvious over G-GEL 100V which is a gel mixture of organo-modified clay in cosmetic oils for rheology control and contains dimethicone, 2-ethylhexyl palmitate, quaternium-90 bentonite, and propylene carbonate (Page 1), as taught by Ggel, and the use of G-Gel 100V at 3.00% (wt%) in a sunscreen formulation (Page 1), as taught by Applechem.
Response to Arguments
Applicant’s arguments (Pages 8-12, filed 04/28/26) with respect to the rejection of claims 1-2, 4-13, and 15-20 under 35 U.S.C. 103 as being unpatentable over Croom in view of Zecchino, Ferrari, Mushock, and Omura, as evidenced by PubChem have been fully considered but are not persuasive.
Applicant argues that DIERKER, GGEL, and APPLECHEM fail to cure the noted deficiencies of CROOM, ZECCHINO, FERRARI, MUSHOCK, and OMURA, nor has the Examiner made any allegations to the contrary in this regard.
This is not persuasive because the deficiency in Croom, Zecchino, Ferrari, Mushock, and Omura regarding components (xi) – (xiii) are cured by Dierker, Ggel, and Applechem. The references are properly combined because they are drawn to cosmetic or skin care compositions which contain sunscreens, and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A).
Furthermore, MPEP 2144.06 states: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine said components with a reasonable expectation of success because each component is taught to be useful for the same purpose, i.e., incorporation into a sunscreen formulation, and it is prima facie obvious to combine said actives to form a third composition to be used for the very same purpose.
Also, Applechem teaches the advantages of G-GEL 100V, including boosting suspension of mineral pigments and stabilizing mineral sunscreens (Page 1).
One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the components taught by prior art in a functional sunscreen formulation.
Therefore, the rejection of 12/31/25 is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615
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