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 .
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.
Claim 7 is 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.
Regarding claim 7, the parenthetical phrase “(Surfactant)” renders the claim indefinite because it is unclear whether the limitations within the parentheses are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 3-7 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Zanatta et al. US 2022/0323334 A1 (Zanatta).
Zanatta teaches that it is well known that prolonged exposure to ultraviolet radiation, such as from the sun, can lead to the formation of light dermatoses and erythemas, and increase the risk of skin cancers, such as melanoma [0002]. Exposure to UV radiation also accelerates skin aging, such as loss of skin elasticity and wrinkling. Zanatta teaches that for these reasons, sunscreen compositions are commonly used to provide protection from the sun, and a variety of sunscreen compositions are commercially available [0003].
Zanatta provides a sunscreen composition comprising (a) at least about 10 weight percent of a combination of UV filters comprising avobenzone, octocrylene, homosalate, and octisalate [0007 – 0022]. Zanatta teaches that, in one embodiment, the sunscreen composition has an SPF of at least about 15 [0043]. In another embodiment, the sunscreen composition has an SPF of at least about 25. Zanatta teaches that the sunscreen composition can be used by topically applying to a mammal, e.g., by the direct laying on, wiping or spreading of the composition on the skin, hair, or nails of a mammal, particularly a human [0057]. Zanatta teaches that the composition may optionally comprise a wide variety of additional oil-soluble materials and/or water-soluble materials conventionally used in compositions for use on skin, at their art-established levels [0067]. For example, surfactants, pearlescent or opacifying agents, thickeners, emollients, conditioners, humectants, chelating agents, exfoliants, and additives that enhance the appearance, feel, or fragrance of the cleansing composition, such as colorants, fragrances, preservatives, pH adjusting agents, and the like, can be included. Zanatta teaches that the composition may comprise one or more other cosmetically acceptable active agents [0081 – 0085].
Zanatta explicitly teaches Composition 1 which comprises avobenzone, octocrylene, octisalate, and aluminum starch octenylsuccinate [0091].
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Composition 1 further comprises water, disodium EDTA, and silica. Composition 1 is embraced by the instantly claimed composition. Thus, claims 1 and 3-7 are anticipated.
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, 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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zanatta et al. US 2022/0323334 A1 (Zanatta) as applied to claims 1 and 3-7 above.
Zanatta differs from the instantly claimed invention in that Zanatta does not explicitly teach a composition wherein the composition has an SPF of 20 to 50 (e.g., Zanatta is silent on the SPF of Composition 1); however, this deficiency would have been prima facie obvious as Zanatta teaches an SPF range (e.g., 15-25) which overlaps with the instantly claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Thus, claim 10 would have been obvious based upon the preponderance of evidence.
Claim(s) 11 and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zanatta et al. US 2022/0323334 A1 (Zanatta) as applied to claims 1 and 3-7 above.
Zanatta differs from the instantly claimed invention in that Zanatta does not explicitly teach a method comprising the topical administration of Composition 1; however, this deficiency would have been prima facie obvious as Zanatta reasonably suggests topical administration of the disclosed composition(s) for uv protection from the sun. See [0003]. In considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. Thus, claims 11 and 13-20 would have been obvious based upon the preponderance of evidence.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zanatta et al. US 2022/0323334 A1 (Zanatta) as applied to claims 1 and 3-7 above, and further in view of Mendoza et al. US 2015/0118176 A1 (Mendoza).
Zanatta differs from the instantly claimed invention (e.g., claim 8) in that Zanatta 1) does not explicitly teach a composition further comprising niacinamide, encapsulated resveratrol, oligopeptide-1, and/or Opuntia ficus-indica fruit extract and/or 2) does not explicitly teach a composition further comprising cetearyl alcohol, potassium hydroxide, caprylyl glycol, hexylene glycol, 1,2-hexanediol, decylene glycol, Cestrum latifolium leaf extract, calcium ketogluconate, tripeptide-1, Centella asiatica meristem extract, Silybum marianum extract, 4-t-butylcyclohexanol, sodium PCA, Alpinia galanga leaf extract, and/or Saussurea involucrate extract; however, these deficiencies would have been obvious in view of the teachings of Mendoza.
In the instant case, the references may be combined to show obviousness because Zanatta and Mendoza are each drawn to a topical skin composition (e.g., a sunscreen composition). They are from the same field of endeavor, and/or are reasonably pertinent to a sunscreen composition comprising avobenzone, octocrylene, octisalate, and aluminum starch octenylsuccinate.
Mendoza relates generally to various skin formulations that are structured in such a way to treat a wide range of conditions in male skin [0003]. Mendoza teaches a similar composition to Zanatta. In an aspect, Mendoza discloses a topical skin composition that is formulated as a cream and has a sun protection factor of around 30 comprising any one of, any combination of, or all of oxybenzone, octisalate, octocrylene, homosalate, avobenzone, styrene/acrylates copolymer, water, glycerin, butylene glycol, ethylene/acrylic acid copolymer, Butyrospermum parkii butter, disodium EDTA, and triethanolamine [0008]. Mendoza teaches that the composition can further include sodium PCA and/or Opuntia tuna fruit extract. See also Example 1, Tables 1-2.
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983).
It would have been obvious to combine Opuntia tuna fruit extract and/or sodium PCA with the composition of Zanatta. One would have been motivated to do so because Zanatta teaches that the composition may optionally comprise a wide variety of additional oil-soluble materials and/or water-soluble materials conventionally used in compositions for use on skin, at their art-established levels. One would have had a reasonable expectation of success as Mendoza teaches a similar composition(s) (e.g., a sunscreen composition comprising avobenzone, octocrylene, octilalate, and disodium EDTA having an SPF of at least 20) further comprising Opuntia tuna fruit extract and/or sodium PCA. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Thus, one of ordinary skill in the art would have expected that a combination of Opuntia tuna fruit extract and/or sodium PCA with the composition of Zanatta would protect skin from uv radiation.
All of the instant limitations are taught by the combination of Zanatta and Mendoza. A person of ordinary skill in the art would have had a reason to combine the teachings of Zanatta and Mendoza. A person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Zanatta and Mendoza. Thus, claims 8-9 would have been obvious based on the preponderance of the evidence.
Conclusion
Claims 1-20 are pending. Claims 1, 3-11, and 13-20 are rejected. Claims 2 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. No claims are allowed.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK T LEWIS whose telephone number is (571)272-0655. The examiner can normally be reached Monday to Friday, 10 AM to 4 PM EST (Maxi Flex).
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK T LEWIS/Primary Examiner, Art Unit 1691
/PL/
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