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 1-15 are pending and under examination in this office action.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 02/23/2024. The Examiner has considered the references cited therein to the extent that each is a proper citation. Please see the attached USPTO Form 1449.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nimi et al. (WO 2018/012557) in view of Duggal et al. (US 2013/0189204) and Lahorkar et al. (WO 2014/191143)
Nimi et al. teach a composition comprising at least one oil-soluble UV filter (i.e., sunscreen) and water-soluble UV filers (see abstract) wherein the oil-soluble UV filter is from 0.001-30%, preferably 0.1-15 % and the water soluble UV filter is preferably from 0.1-15% (see pg 3, lines 6-22) non-ionic surfactant from 0.1-5% (see pg 1, lines 20+ as incorporated, see also pg ) polymer (see pg 2, lines 18+) and fatty acid. Wherein the oil-soluble UV filter is ethylhexyl salicylate (see pg 2, lines 40+, as required by instant claim 2) and the water soluble UV filter is benzophenone-4 (as required by instant claim 4, see pg 2, lines 40+), and a dibenzoylmethane (as required by instant claim 11, see pg 4, lines 45+), wherein the dibenzoylmethane is a butyl methoxy dibenzoylmethane (see pg 2, lines 40+, as required by instant claim 3), the surfactant a non-ionic from 0.1-5% (see pg 15, lines 45+, as required by instant claim 1) propylene glycol as the humectant from 2-40% falls within the required range(see pg 16, lines 9+, as required by instant claims 1 and 7) palmitic acid in its ester form (see pg 11, lines 38+, as required by instant claim 8) and the water-soluble sunscreen is sodium phenyl dibenzimidazole tetrasulfonate (see pg 8, lines 20+ as required by instant claim 12) and comprises a skin brightening agent ferulic acid (see pg 8, lines 25+, as required by instant claim 15) and fatty acids (see pg. 12, lines 15+, as required by instant claim 1) for the skin (see pg 17, lines 30+, as required by instant claim 10) for sun protection (see pg 17, lines 10+, as required by instant claim 9).
However, Nimi fails to teach the specific non-ionic surfactant. Nonetheless does teach including a non-ionic surfactant such as PEG- 10 dimethicone which is a derived from dimethicone and ethoxylation wherein the HLB is in the range of 9-20 (as required by instant claims 1 and 5), It would have been obvious to one of ordinary skill in the art to have substituted the dimeticone for a non-ionic surfactant with a HLB from 9-20 with a reasonable expectation of success because the substitution provides high SPF value as taught by Duggal et al. as taught below.
Duggal teaches a photo-protective sunscreen composition comprising UVA and UVB (as required by instant claims 2 and 11) for the skin surface for the skin, non-ionic surfactant (see 0006) wherein the non-ionic surfactant is a fatty alcohol ethoxylate (see claim 1) with a HLB of greater than 12 at a concentration of 0.1-5% (see claim 1, as required by instant claims ).
Lahorkar teaches a protective personal care composition comprising UV-A and UV-B comprising a fatty acid mixture of stearic and palmitic acid (see Table 3, as required by instant claim 14).
It would have been motivated to one of ordinary skill in the art to have combined the cited prior art to result in the instant claimed invention with a reasonable expectation of success at the time the claimed invention was filed.
One would have been motivated to combine these references and make the modification because they are drawn to same technical fields (constituted with same ingredients and share common utilities, and pertinent to the problem which applicant concerns about. MPEP 2141.01(a)
The “hypothetical ‘person having ordinary skill in the art' to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 - 15 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 - 20 of U.S. Patent Application No. 19/118865. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
· The claims of the instant recites a photoprotective composition comprising 0.1-10 wt% oil soluble sunscreen, 0.2-5 wt% water-soluble sunscreen 0.1-5 wt% non-ionic surfactant etc and the copending is directed to a method of providing high SPF to a topical surface of a body comprising the steps of:(a) washing the surface with a foam wash-off composition comprising;(i) 0.1 to 10 wt% of a water-soluble UVA sunscreen;(ii) 0.1 to 10 wt% of a water-soluble UVB sunscreen;(iii) 3 to 80 wt%, of a mild surfactant selected from one or more of an anionic, zwitterionic and non-ionic surfactant; and(iv) a cosmetically acceptable carrier; (b) rinsing the surface with water; followed by (c) applying on the surface a leave-on composition comprising a sunscreen and a cosmetically acceptable vehicle. The current composition claims would have been used in the method claims of the copending application.
· Both sets of claims recite the same or overlapping agents and concentrations. The compositions recited in the claims are obvious variation of each other.
When the specification of the instant application is used as a dictionary, it teaches the composition can be used with rinsing or without rinsing. Therefore one of ordinary skill in the art would be able to decide what formulation will need to be left on based on the end product.
In view of the foregoing, the copending application claims and the current application claims are obvious variations.
Claims 1 - 15 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent Application No. 18560954. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
The claims of the instant recites a photoprotective composition comprising 0.1-10 wt% oil soluble sunscreen, 0.2-5 wt% water-soluble sunscreen 0.1-5 wt% non-ionic surfactant etc and the copending is to a method of providing high SPF to a topical surface of a body comprising; the steps of (a) washing the surface with a wash-off composition comprising;(i) 0.1 to 10 wt% of a water-soluble UVA sunscreen; (ii) 0.1 to 10 wt% of a water-soluble UVB sunscreen; (iii) 3 to 80 wt%, preferably 6 to 80 wt% of a surfactant; and (iv) a cosmetically acceptable carrier etc.
The current composition claims would have been used in the method claims of the copending application Both sets of claims recite the same or overlapping agents and concentrations. The compositions recited in the claims are obvious variation of each other.
When the specification of the instant application is used as a dictionary, it teaches the composition can be used with rinsing or without rinsing. Therefore one of ordinary skill in the art would be able to decide what formulation will need to be left on based on the end product.
In view of the foregoing, the copending application claims and the current application claims are obvious variations.
Claims 1 - 15 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11883516. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
The patented claims recite personal cleansing composition for enhanced deposition of sunscreens on a topical surface of the body comprising: (a) 0.1 to 10 wt % of a water soluble UVA sunscreen; (b) 0.1 to 10 wt % of a water soluble UVB sunscreen; (c) 3 to 80 wt % surfactant; and (d) a cosmetically acceptable carrier, wherein the water soluble UVA sunscreen is selected from di sodium phenyl dibenzimidazole tetra sulfonate, terephthalylidene dicamphor sulfonic acid and mixtures thereof, and wherein the water soluble UVB sunscreen is selected from phenyl benzimidazole sulphonic acid, benzylidene camphor sulfonic acid, benzophenone-4 and mixtures thereof, and wherein the solubility in water of said UVA sunscreen and said UVB sunscreen is higher than 10 g/L at 25° C. and the instant claims recite recites a photoprotective composition comprising 0.1-10 wt% oil soluble sunscreen, 0.2-5 wt% water-soluble sunscreen 0.1-5 wt% non-ionic surfactant etc.
The current composition claims would have been used in the method claims of the copending application Both sets of claims recite the same or overlapping agents and concentrations. The compositions recited in the claims are obvious variation of each other.
When the specification of the instant application is used as a dictionary, it teaches the composition can be used with rinsing or without rinsing. Therefore one of ordinary skill in the art would be able to decide what formulation will need to be left on based on the end product.
In view of the foregoing, the copending application claims and the current application claims are obvious variations.
Prior art: Lahorkar et al. (WO 2022/253896) is the closest prior art as identified by USPTO artificial intelligence; Lahorkar is the WIPO document corresponding to the instant application and is not considered prior art.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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, Robert A. Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 12/30/25