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 .
Status of Claims
Claims 1-16 are currently pending. Claim 1 is amended.
Claims 1-16 are examined on their merits in light of the elected species of spherical powder having a mean particle size ranging from about 6 microns to about 10 microns.
Previous Rejections
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 1-4, 6-12 and 14-16 under 35 U.S.C. 103 as being unpatentable over Barrett et al. US 2012/0219515 (8/30/2012) (6/27/2024 IDS) in view of Candau et al. US 2009/0041691 (2/12/2009) (6/27/2024 IDS), Argan. Co (Sun Care, Sep. 14, 2017)(9/7/2023 IDS), McCormick et al. US 2010/0310871 (12/9/2010) (6/27/2024 IDS), Beasley et al. US 2010/0272657 (10/28/2010), WO 2011/111828 (9/15/2011), Bui et al. WO 2013/02060 (7/4/2013) and Spaulding et al. WO 2015/152865 (10/8/2015)(6/27/2024 IDS) as evidenced by the specification are withdrawn.
In light of the amendments to the claims the rejection of claim 5 under 35 U.S.C. 103 as being unpatentable over Barrett et al. US 2012/0219515 (8/30/2012) (6/27/2024 IDS) in view of Candau et al. US 2009/0041691 (2/12/2009) (6/27/2024 IDS), Argan. Co (Sun Care, Sep. 14, 2017)(9/7/2023 IDS), McCormick et al. US 2010/0310871 (12/9/2010) (6/27/2024 IDS), Beasley et al. US 2010/0272657 (10/28/2010), WO 2011/111828 (9/15/2011), Bui et al. WO 2013/02060 (7/4/2013) and Spaulding et al. WO 2015/152865 (10/8/2015)(6/27/2024 IDS) as evidenced by the specification as applied to claims 1-4, 6-12 and 14-16 and further in view of KR 2003/0089709 (11/22/2003) is withdrawn.
In light of the amendments to the claims the rejection of claim 13 under 35 U.S.C. 103 as being unpatentable over Barrett et al. US 2012/0219515 (8/30/2012) (6/27/2024 IDS) in view of Candau et al. US 2009/0041691 (2/12/2009) (6/27/2024 IDS), Argan. Co (Sun Care, Sep. 14, 2017)(9/7/2023 IDS), McCormick et al. US 2010/0310871 (12/9/2010) (6/27/2024 IDS), Beasley et al. US 2010/0272657 (10/28/2010), WO 2011/111828 (9/15/2011), Bui et al. WO 2013/02060 (7/4/2013) and Spaulding et al. WO 2015/152865 (10/8/2015)(6/27/2024 IDS) as evidenced by the specification as applied to claims 1-4, 6-12 and 14-16 and further in view of Ricard et al. EP 1502573 (2/2/2005) is withdrawn.
New Grounds of Rejections
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description.
The response filed 12/3/2025 introduces NEW MATTER into the claims. The amendments to claim 1 with the limitation of “wherein the composition does not contain any additional polymers which have film-forming properties” does not have clear support in the specification and claims as originally filed.
In the reply filed 12/3/2025 applicant points to paragraph [0173] for support. This as bene fully considered but is not found persuasive. The disclosure at par. [0173] only discloses film-forming polymers, there is no disclosure of polymers having film-forming properties [emphasis added], which is broader that film-forming polymers and there is no disclosure or contemplation that polymers having film-forming properties are to be excluded or should be excluded. Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion. Applicant is reminded that obviousness is not the standard for the addition new limitations to the disclosure as filed. It is noted that entitlement to a filing date does not extend to subject matter, which is not disclosed, but would be obvious over what is expressly disclosed. Lockwood v. American Airlines Inc., 41 USPQ2d 1961 (Fed. Cir. 1977).
Amended claim 1 recites limitations, which were not clearly disclosed in the specification as filed, and now change the scope of the instant disclosure as filed. Such limitations recited in claim 1, which are not discussed or defined in the specification, as filed, introduce new concepts and violate the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in present claim 1 in the specification or claims, as-filed, or remove these limitations from the claim in response to this Office Action.
Claims 2-16 are rejected as being dependent on claim 1.
Claim Rejections - 35 USC §112(b)
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 1-16 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 1-16 are rejected under 35 USC 112(b) as being indefinite in reciting “wherein the composition does not contain any additional polymers which have film-forming properties” in claim 1. Neither the claims, nor the specification define polymers having ‘film-forming properties’, such that one skilled in the art could reasonably ascertain the polymers that are included by the claims and those that are excluded. The phrase ‘film-forming properties’ is relative language and not defined by the specification as to what properties are contemplated, nor how many properties or the degree of similarity of the properties that are required in order to fall within the class of polymers having film-forming properties and therefore excluded by the claims. As written, one skilled in the art would not be reasonably apprised of the “additional polymers which have film-forming properties” that are excluded by the claims. Accordingly, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims.
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.
Claims 1-4, 6-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Beasley et al. US 2010/0272657 (10/28/2010) in view of Candau et al. US 2009/0041691 (2/12/2009) (6/27/2024 IDS), Argan. Co (Sun Care, Sep. 14, 2017)(9/7/2023 IDS), McCormick et al. US 2010/0310871 (12/9/2010) (6/27/2024 IDS), Barrett et al. US 2012/0219515 (8/30/2012) (6/27/2024 IDS), WO 2011/111828 (9/15/2011), Bui et al. WO 2013/02060 (7/4/2013) and Spaulding et al. WO 2015/152865 (10/8/2015)(6/27/2024 IDS) as evidenced by the specification.
Beasley et al. (Beasley) discloses an anhydrous composition that comprises a UV absorbing ingredient and a film forming polymer and a volatile solvent. (See Abstract). The composition increases the sun protection factor (SPF) for the anhydrous composition and also prevent or reduces erythema or the occurrence of phototoxic or photoallergic reactions in a subject due to exposure to UV radiation topically applied sunscreen composition (¶ [001-003]). Beasley teaches a composition in which the SPF is at least 50 which overlaps with the at least 30 SPF called for in instant claim. (See [0052]).
The composition may comprise dimethicone/acrylates dimethicone copolymer as a film-forming polymer (¶ [0028]). Dimethicone/acrylates dimethicone copolymer is called for in instant claim 1. Beasley teaches that dimethicone/acrylates dimethicone copolymer is a suitable film-forming polymer. Beasley teaches that the film-former is present in an amount greater than 1% by weight. See [007]). Greater than 1% overlaps with an effective amount of film-forming polymer as evidenced by the specification at [0243].
Beasley teaches that its compositions can also comprise skin protectant active agents and dimethicone in an amount of from 1 to 30% is such an agent. (See [0049]). Beasley teaches that its composition is substantially anhydrous which is substantially free of water. (See Abstract and [0005]). Dimethicone and dimethicone/acrylates copolymer are called for in instant claim 1. Beasley expressly teaches that any further film forming polymers are optional ingredients, so it teaches a composition wherein the only film-forming polymers are dimethicone and dimethicone/acrylates dimethicone copolymer as called for in instant claim 1. (See [0028]) Specifically, Beasley teaches that additional film forming polymers are optional in that they may be added, but Beasley thus also teaches an embodiment in which dimethicone and dimethicone/acrylates copolymer are the only film-forming polymers in its composition. (See [0028]).
Beasley teaches that zinc oxide and titanium dioxide are also included in its composition and that they are photoprotecting. (See [0033]).
Beasley teaches an anhydrous composition but does not expressly teach an amount of water. Beasley does not teach an amorphous spherical silica. Beasley does not expressly teach amounts of zinc oxide and titanium dioxide or wherein the titanium dioxide and zinc oxide are particles greater than about 100 nm and less than about 800 nm and does not teach a mixture of diatomaceous algae. Beasley also does not teach waxes. Beasley does not expressly teach a critical wavelength of its composition. Beasley does not teach caprylyl glycol.
These deficiencies are made up for with the teachings of Candau, Argan Co., McCormick et al., Barrett et al., WO, Bui et al. and Spaulding et al.
Candau et al. disclose a topically applicable cosmetic/dermatological UV protection composition (See Abstract). The composition may comprise fillers capable of modifying and hiding wrinkles by virtue of their intrinsic physical properties (¶ [0544]). Suitable fillers include amorphous silica microspheres (¶ [0562]). The fillers can be present in an amount of from 0.1 to 40% by weight. (See [0563]).
Candau also teaches that waxes and mixtures of waxes such as paraffin, carnauba wax and beeswax can be used. (See [263], [265]). Waxes are called for in instant claim 1. Candau teaches that its compositions exhibit good water resistance. (See [0016]). Paraffin wax is a mineral wax as called for in instant claim 8. Beeswax is a cosmetically suitable wax. The waxes are present in an amount of about 1:1. The paraffin wax and beeswax are present in a ratio of 1:1 which is close enough to about 1:1.5 as called for in claim 8 that it would be expected to have the same properties. It is considered to be close enough to the claimed range to render it obvious, given that there is no reason to expect a substantially different result when using about 1:1 compared to using 1:1.5, especially since both waxes are being used for the same purpose. See MPEP 2144.05 I:
Candau also teaches dimethicones and dimethicone crosspolymers that can be used for the preparation of sunscreen formulations. (See [0273]). Candau teaches that calmatives for the skin such as bisobolol can also be included in its compositions. (See [0398]). Bisabolol can be present in an amount of from 0.1% to 1%. (See [0499-500]). 0.1% to 1% bisabolol overlaps with the about 0.1% to about 5% bisabolol called for in instant claims 14-16.
It would have been prima facie obvious to one of ordinary skill in the art to have incorporated 0.1 to 40 wt% amorphous silica microspheres, 0.1% to 1% bisobolol and two or more waxes into the composition of Beasley in order to formulate a composition capable of modifying and hiding wrinkles since amorphous silica microspheres is a filler with such property as taught by Candau et al. and because Candau teaches that waxes and bisabolol as a skin calmative are suitable for inclusion in a sunscreen formulation.
Argan.Co. discloses wherein Plankton Glass Flower is a UV-protection product with absorbant, light scattering, mild exfoliant, and UV reflective properties.
As evidenced by page 17, lines 15-24 of the instant specification, Plankton Glass Flower is described as algal photonic and porous silica crystals or alternatively, siliceous fragments of freshwater algae species, mainly Fragilaria zeilleri, Gomphomena angustatum, Navicula radiosa, and Cyclotella andancensis. Argan Co. thus teaches a mixture of Fragilaria zeilleri and Navicula radiosa which are at least two diatomaceous algal species having photonic and porous silica crystals as called for in instant claim 7.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. The composition of Beasley comprises one or more sun-care actives. Accordingly, it would have been obvious to have incorporated Plankton Glass Flower into the composition of Beasley since it is a known and effective sun-care active with UV reflecting properties as taught by Argan.Co.
McCormick et al. disclose zinc oxide particles for use in visibly-transparent compositions that provide broad-spectrum photoprotection (See [0002]). The particles may have sizes in the range of 0.1 to 100 microns (See [0021]). Suitable transparent compositions include sunscreens (See [0051]). McCormick teaches that a particle size of 0.1 to 100 microns is suitable for sunscreen grade metal oxide particles to provide UV protection in sunscreens. McCormick teaches mesoporous zinc oxide powder in aggregates as called for in claim 3. (See claims 10-11).
It would have been prima facie obvious to one of ordinary skill in the art to have had the zinc oxide be present as mesoporous zinc oxide powder aggregates in the Beasley composition since McCormick teaches that mesoporous zinc oxide powder aggregates are suitable for sunscreen grade metal oxide particles to provide UV protection in sunscreens.
Barrett et al. (Barrett) disclose a sun-care composition having an SPF value of at least 15 containing (a) one or more sun-care actives, (b) a copolymer, and (c) a pharmaceutically acceptable vehicle (See Abstract). The sun-care composition may have an SPF of about 50 to about 130 (See [0024] and [0041]). Suitable sun-care actives include titanium dioxide and zinc oxide (See [0038]). The composition may comprise two copolymers (i.e. film-forming polymer) (e.g. Aquaflex SF-40 and Advantage S) (See [0056], Formulation O). The composition may be formulated with an anhydrous solution as the vehicle. (See [0028]). Barrett also teaches that the composition can be an anhydrous gel or an anhydrous emulsion. (See [0030], [0052]).
The amount of both zinc oxide and titanium dioxide are present in the range of from about 1 wt% to about wt 50%. (See [0038-0039]). The zinc oxide and titanium dioxide are present in a ratio of 1:1 which overlaps with the about 1:4 to about 3:1 called for in instant claim 2.
Barret teaches that small amounts of boosters such as butyl octyl salicylate are added to formulations to increase SPF protection and make the formulation more competitive due to being able to claim a higher UV protection. (See Barrett [0008]). Butyl octyl salicylate is an SPF booster as evidenced by [0240] of Applicants specification. Barrett teaches that sun-care active ingredients can be present in an amount of from about 1 wt% to about 50 wt%. (See [0027]).
It would have been prima facie obvious to one of ordinary skill in the art to have had the zinc oxide and titanium dioxide in the Beasley composition be present in an amount of 1 wt% to about wt 50% since Barrett teaches that this is an effective amount.
WO 2011/111828 (WO) teaches a cosmetic composition with improved smoothness and sustainability and good powder redispersibility. (See Abstract). WO teaches that its cosmetic composition can comprise Sunsphere H51 which is a commercially available silicic acid porous powder that is a true sphere having a particle diameter of 5 microns. (See Silicic anhydride porous powder section). This is the elected species of spherical powder having a mean particle size ranging from about 6 microns to about 10 microns. 5 micrometers is about 6 microns.
Although 5 micrometers is close to about 9 microns it is not overlapping. However 5 micrometers is close enough to about 9 microns as called for in claim 13 that it would be expected to have the same properties. It is considered to be close enough to the claimed range to render it obvious, given that there is no reason to expect a substantially different result when using 5 micrometers to using about 9 micrometers, especially since both the taught and claimed amorphous silica spheres are being used for the same purpose. See MPEP 2144.05 I:
It would have been prima facie obvious to one of ordinary skill making the Beasley composition to have Sunsphere H51 which is a commercially available silicic acid porous powder as taught in WO in order to have a composition with improved smoothness and good powder redispersibility and a commercially available and convenient silicic powder.
Bui et al. (Bui) discloses a sunscreen composition that is anhydrous wherein the anhydrous composition comprises less than 1% water. (See [0024]). This overlaps with the from 0.25% to about 5% water in claim 1 and the about 0.5% to about 5% water in claim 6.
Less than 1% is so close to 1% to about 5% water in claim 10 that they would be expected to have the same properties as . A person of ordinary skill in the art would likely expect that given that the amounts are so close, one skilled in the art would have expected them to have the same properties. Indeed, a prima facie case of obviousness usually exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.") See MPEP 2144.05
Bui also teaches 3% ozokerite in Example 1. Ozokerite is called for in claim 9. The composition containing ozokerite was very long lasting on the skin. (See [0130).
It would have been prima facie obvious to one of ordinary skill making the Beasley composition to have less than 1% water in order to have an anhydrous composition as taught in Bui and to have ozokerite in order to have a long lasting composition on the skin as taught by Bui et al. There would have been a reasonable expectation of success because both Beasley and Bui teach anhydrous compositions.
Spaulding et al. (Spaulding) discloses a sunscreen composition that is anhydrous and substantially non-irritating. (See Abstract). The composition can be anhydrous and water resistant for at least 80 minutes. (See [0015-0016]). Spaulding teaches that its composition meets the critical wavelength of 370 nm and qualifies for the broad spectrum protection claim, as those sunscreens meeting the critical wavelength of 370 nm requirement may do. (See [0033]). A composition that is water resistant for at least 80 minutes is called for in claim 1. A composition that meets the critical wavelength of 370 nm is also called for in instant claim 1.
The Spaulding sunscreen can contain caprylyl glycol (also known as 1,2 octanediol). (See [0089]). Caprylyl glycol is taught to be an emulsifier or a compound that facilitates an emulsion in Spauling. (See [0089]). Therefore it is taught to be a results-effective variable. As a results-effective variable it would be no more than routine experimentation to experiment to arrive at the claimed amount of caprylyl glycol (also known as 1,2 octanediol) called for in instant claims 14-16.
It would have been prima facie obvious to one of ordinary skill before the earliest effective filing date making the Beasley composition to add caprylyl glycol in order to emulsify the composition and make the composition water resistant for at least 80 minutes in order to have the advantage of water resistance and also to make composition meet the critical wavelength of 370 nm requirement in order to qualify for the broad spectrum protection claim as taught by Spaulding.
Zinc oxide particles and titanium particles are called for in instant claim 1. Zinc oxide particles in the size of 0.1 to 100 microns overlaps with the greater than about 100 nanometers called for in claims 3 and 4. Particles in the size of 0.1 to 100 microns also overlaps with the up to about 30 microns called for in instant claim 6.
With respect to claim 4, Candau teaches 0.1 to 40 wt% of fillers, including the amorphous silica microspheres and the Plankton Glass Flowers, which are the total siliceous components and the total zinc oxide plus titanium dioxide is 1 to about 50 wt%. At the lower end of the range 0.1: 1 is about 1:10 which falls within the about 1:55 to about 1:1.5.
With respect to claim 11, Barret teaches that small amounts of boosters such as butyl octyl salicylate are added to formulations to increase SPF protection and make the formulation more competitive due to being able to claim a higher UV protection. (See Barrett [0008]). Butyl octyl salicylate is an SPF booster as evidenced by [0240] of Applicants specification. Barrett teaches that sun-care active ingredients can be present in an amount of from about 1 wt% to about 50 wt%. (See [0027]).
With respect to the language in claim 11 of an effective amount of at least one ingredient SPF booster compound, which significantly increases the SPF of the composition but does not provide a significant amount of SPF protection in the absence of the zinc oxide and titanium dioxide particles, butyl octyl salicylate is an SPF booster as evidenced by [0211] and [0240] of Applicants specification. Thus, with about 1 wt% to about 50 wt% butyl octyl salicylate, Barrett is teaching the exact same SPF booster, butyl octyl salicylate, at the exact same amounts (at the overlaps of the ranges) as claimed, as evidenced by the specification at [0240] and [0243].
With respect to claim 12, the range of ratios of 1 to 50 wt% SPF booster: 0.1 to 40 wt% total siliceous components : 1 to 50 wt% total zinc oxide plus titanium dioxide overlaps with the 20:3:20 to about 30:5:30 portion of the ratio of total siliceous components and the total zinc oxide plus titanium dioxide called for in instant claim 12.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Beasley et al. US 2010/0272657 (10/28/2010) in view of Candau et al. US 2009/0041691 (2/12/2009) (6/27/2024 IDS), Argan. Co (Sun Care, Sep. 14, 2017)(9/7/2023 IDS), McCormick et al. US 2010/0310871 (12/9/2010) (6/27/2024 IDS), Barrett et al. US 2012/0219515 (8/30/2012) (6/27/2024 IDS), WO 2011/111828 (9/15/2011), Bui et al. WO 2013/02060 (7/4/2013) and Spaulding et al. WO 2015/152865 (10/8/2015)(6/27/2024 IDS) as evidenced by the specification as applied to claims 1-4, 6-12 and 14-16 and further in view of KR 2003/0089709 (11/22/2003).
The teachings of Beasley in view of Candau, Argan, McCormick, Barrett, WO, Bui and Spaulding are described supra. Beasley in view of Candau, Argan, McCormick, Barrett, WO, Bui and Spaulding do not teach an amount of diatomaceous algae. This deficiency is remedied with the teachings of KR.
KR teaches the extract of diatomaceous algae and its use in preparing a cosmetic composition for protecting the skin from side effects caused by the sun. (See Abstract). KR teaches that it is long known fact that the use of physical filters in the sunscreen products can protect the skin from UV rays. (See [0003]).
KR teaches that the algae extract is included in the sunscreen cosmetic composition at a concentration of about 0.01-10% by weight of the sunscreen cosmetic composition.
With respect to claim 5, 0.01-10% diatomaceous algae is taught by KR and Candau teaches 0.1 to 40% by weight of amorphous silica microspheres. 0.01-10% diatomaceous algae : 0.1 to 40% amorphous silica microspheres overlaps with the range of ratios of diatomaceous algae to amorphous spherical silica called for in instant claim 5.
It would have been prima facie obvious to one of ordinary skill before the earliest effective filing date making the Beasley in view of Candau, Argan, McCormick, Barrett, WO, Bui and Spaulding composition of 0.1 to 40 wt% amorphous silica microspheres, 1 to 50 wt% butyl octyl salicylate, 0.1% to 1% bisobolol, paraffin wax and beeswax, 1 to 50 wt% total zinc oxide plus titanium dioxide, 1 to 30% dimethicone and dimethicone/acrylates crosspolymer to use 0.01-10% Plankton Glass Flower in light of KR’s teaching that an appropriate amount of diatomaceous algae for use in a sunscreen composition is 0.01 -10 wt%.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Beasley et al. US 2010/0272657 (10/28/2010) in view of Candau et al. US 2009/0041691 (2/12/2009) (6/27/2024 IDS), Argan. Co (Sun Care, Sep. 14, 2017)(9/7/2023 IDS), McCormick et al. US 2010/0310871 (12/9/2010) (6/27/2024 IDS), Barrett et al. US 2012/0219515 (8/30/2012) (6/27/2024 IDS), WO 2011/111828 (9/15/2011), Bui et al. WO 2013/02060 (7/4/2013) and Spaulding et al. WO 2015/152865 (10/8/2015)(6/27/2024 IDS) as evidenced by the specification as applied to claims 1-4, 6-12 and 14-16 and further in view of Ricard et al. EP 1502573 (2/2/2005).
The teachings of Beasley in view of Candau, Argan, McCormick, Barrett, WO, Bui and Spaulding are described supra. Beasley in view of Candau, Argan, McCormick, Barrett, WO, Bui and Spaulding teach a 5 micron amorphous silica microsphere but do not expressly teach a 9-10 micron amorphous silica microsphere. This deficiency is remedied with the teachings of Ricard et al.
Ricard et al. (Ricard) teaches a cosmetic care product that can be a sunscreen that has a first medium and a blurring index of 40% or more and transparency index Th of 70% or more that is applied to skin. (See Abstract and [001-003]). Ricard teaches that mineral fillers that are very suitable include silica microspheres with a particle size of between 3 and 12 microns. (See [0082]). Between 3 and 12 microns overlaps with the 9 to 10 microns called for in instant claim 13.
It would have been prima facie obvious to one of ordinary skill before the earliest effective filing date making the Beasley in view of Candau, Argan, McCormick, Barrett WO, Bui and Spaulding composition of 0.1 to 40 wt% amorphous silica microspheres, 1 to 50 wt% butyl octyl salicylate, 0.1% to 1% bisobolol, paraffin wax and beeswax, Plankton Glass Flower, 1 to 50 wt% total zinc oxide plus titanium dioxide, 1 to 30% dimethicone and dimethicone/acrylates crosspolymer to use the amorphous silica microsphere having a size of from 3 and 12 microns in light of Ricards teaching that the size of from 3 to 12 microns is an effective and appropriate size of amorphous silica microsphere to use in a sunscreen cosmetic.
Response to Arguments
Applicants’ comments of December 3, 2025 have been fully reviewed and are found to be partly persuasive and partly unpersuasive for the reasons described below.
Amended Claim 1 is Distinguishable From the Prior Art
Applicants argue that Barrett does not teach the required polymers of claim 1 and teaches specific polymers derived from vinyl lactams which are not dimethicone and acrylates/dimethicone copolymer, bis-vinyl dimethicone/dimethicone copolymer or a combination thereof as required by claim 1. As amended claim 1 requires the presence of specific polymers that are not present in Barrett and excludes the presence of additional film formers.
Response
This argument is found to be persuasive in light of the amendments and the rejections have been withdrawn above. Please note the new rejections applied above.
Rejection of Claim 13
Applicants continue to argue that 5 micrometers is not close enough to 9 micrometers that it would be expected to have the same properties. Applicants argue that the purpose for which the claimed amorphous silica sphere are being used is irrelevant in light of the difference in size.
Response
This argument was moot in view of the previously applied rejection that applied to Ricard references teachings and it remains moot. As described above, Ricard teaches that mineral fillers that are very suitable include silica microspheres with a particle size of between 3 and 12 microns. (See [0082]). Between 3 and 12 microns overlaps with the 9 to 10 microns called for in instant claim 13.
Additionally, the remainder of Applicants’ arguments are moot in view of the newly applied rejections above.
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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619