DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed May 26, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (Maintained)
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.
Claims 1, 3-5 and 7-8 are rejected under 35 U.S.C. 103 as being as being obvious over Ehlis et al. (US 2017/0027835 A1).
Regarding claim 1, Ehlis discloses a cosmetic composition with a UV filter combination including (b) UV filters such as (b6) ethylhexyl methoxycinnamate and (b21) 2-propenoic acid, 3-(4-methoxyphenyl)-, 2-methyl phenyl ester (abstract). 2-propenoic acid, 3-(4-methoxyphenyl)-, 2-methyl phenyl ester (hereinafter, b21) which has the following structural formula [0060]:
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One or more UV filters can be included in the formulations [0284]-[300] [0061] and Ehlis teaches that the UV filter prevents the human skin from the damage of sunlight in the cosmetic formulations [0001]-[0003]. The UV filter components are included in the composition with an oil [0184]-[0185], such as the polar oils diisopropyl sebacate, isopropyl myristate, and butyl stearate [0185] [0284]-[300].
Ehlis is not believed to be anticipatory because Ehlis could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose to include both ethylhexyl methoxycinnamate and b21 within the composition.
Nevertheless, claim 1 is rendered prima facie obvious over the teachings of Ehlis, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., ethylhexyl methoxycinnamate and b21) were known in the prior art (e.g., Ehlis) 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 yielding nothing more than predictable results (e.g., a cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A. Additionally, an ordinarily skilled artisan would be motivated to include both ethylhexyl methoxycinnamate and b21 to prevent human skin from the damage of sunlight in the cosmetic formulation as taught by Ehlis [0001]-[0003].
Further regarding claim 1, while Ehlis does not explicitly teach that the components are dissolved in the oil, it would be reasonably expected that the polar oil would be capable of at least partially dissolving ethylhexyl methoxycinnamate and b21 due to their polarities.
Claim 3 is rendered prima facie obvious because Ehlis discloses the polar oils diisopropyl sebacate (IOB = 0.4), isopropyl myristate (IOB = 0.18), and butyl stearate (IOB = 0.14) [0185] [0284]-[300].
Regarding claim 4, Ehlis discloses the composition includes 0.1-30 wt.% of the UV filter combination and 1-60 wt.% of an oil [0184]. Specific examples are given in paragraphs [0284]-[300], where, for example, in Example 25G, the polar oil diisopropyl sebacate is in an amount of 11 wt.% and the UV component (b) (diethylamino hydroxybenzoyl hexyl benzoate) is in an amount of 10 wt.% (47.6 parts by mass of component b to 100 parts by mass of polar oil and component b). 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 A. Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general conditions of the amount of polar oil and component (b) have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount via routine experimentation.
Claims 5 and 7 are rendered prima facie obvious because Ehlis discloses the compositions are oil-in-water cosmetics [0184]-[0185] [0284]-[0287].
Claim 8 is rendered prima facie obvious because Ehlis discloses the compositions are used as sunscreens [0003]-[0004] [0285] [0306]-[0307].
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive
Applicants argue at pg. 6 that Ehlis fails to disclose a composition that comprises a combination of the first compound with a specific second compound, as recited in the currently amended claims.
The Examiner disagrees. Claim 1 is rendered prima facie obvious over the teachings of Ehlis, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., ethylhexyl methoxycinnamate and b21) were known in the prior art (e.g., Ehlis) 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 yielding nothing more than predictable results (e.g., a cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A. Additionally, an ordinarily skilled artisan would be motivated to include both ethylhexyl methoxycinnamate and b21 to prevent human skin from the damage of sunlight in the cosmetic formulation as taught by Ehlis [0001]-[0003].
Analysis of Alleged Unexpected Results
Applicants argues at pg. 6-7 that the combination of the first compound with the specific second compound enhances the UV absorption capability of the first compound itself both in the UVA and UVB region. The Examiner is directed to Tables 2-3. Applicant further argues at pg. 7 that with respect to the oily cosmetic compositions, the boost rates are greater with both the first compound and the second compound compared to compositions with contain only the second compound. The Examiner is directed to Tables 5 and 6 of the specification. The applicant argues that there is an “unexpected boost effect” achieved only through combination with the specific compounds recited in amended claim 1.
The Examiner has fully reviewed and considered the data presented in Tables 2-3 and 5-6 of the as-filed specification. The data presented in Tables 2-3 shows that including compound I in an amount of 1 wt.% in a composition with 2-5 wt.% of various second compounds leads to greater absorption in the UVA and UVB regions compared to compositions which do not include compound I. The data presented in Tables 5-6 shows that including compound I in an amount of 1 wt.% in a composition with 2-5 wt.% of various second compounds also leads to greater absorption in the UVA and UVB regions when diisopropyl sebacate, hydrogenated polydecene, and diphenylsiloxyphenyl trimethicone are present in the composition.
However, these results do not appear to be unexpected over the prior art’s teachings.
Ehlis teaches that compound I (b21) is a known UV filter which prevents human skin from the damage of sunlight in the cosmetic formulation [0001]-[0003]. Ehlis teaches that the taught formulations have full range coverage to protect against both UV-A and UV-B radiation [0002]-[0003]. Furthermore, the specifically claimed compound (formula I) is known in the art to have strong absorption in both the UVA and UVB regions (Mori et al. US 2010/0239508 A1; abstract, Fig 1-2). Therefore, it does not appear to be unexpected that including compound I in a composition would lead to greater absorption in the UVA and UVB regions compared to compositions which do not include compound I.
Furthermore, the applicant states at pg. 6-7 of the remarks that the combination of the first compound with a specific second compound enhances the UV absorption capability of the first compound itself both in the UVA and UVB region. The Examiner notes that this has not been demonstrated. To demonstrate “the enhancement of the UV absorption capability of the first compound itself” the data (measured integrated value of absorbance) should be shown for compound I alone (which is not given), for each of the second compounds, and for the combination of compound I and the second compound. The data presented by the applicant only demonstrates that the addition of Compound I leads to greater overall absorbance which is not unexpected over the prior art, as discussed above.
Finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated “improved” absorption in the UVA and UVB regions, but even if this is so then it would only have been shown for with the specific amounts of the first compound and the second compounds shown in Tables 2 and 5. It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other amounts, falling within the broader scope currently claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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