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 .
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.
Election/Restrictions
Applicant’s election of ethylhexyl methoxycinnamate as the single species of the second compound and an oil-in-water cosmetic as the single species of the composition in the reply filed on 01/22/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the election requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112, Second Paragraph
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 1-5 and 7-8 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.
Claim 1 recites the limitation “where the benzene ring may have a substituent”. This claim is indefinite because it is not clear whether the methoxyphenyl, the methylphenyl, or both of the first compound may have a substituent, the phenyl ring of the second compound may have a substituent, or any of the listed benzene rings in both compounds (i) and (ii) may have a substituent. Appropriate correction is required.
Claims 3-4 are indefinite because they recite, “a polar oil”. This limitation is indefinite because it is not clear the inorganic/organic balance the oil must have to be considered “polar”. Appropriate correction is required, for example, reciting the IOB value to be “polar”.
Claim Rejections - 35 USC § 112- Failure to Further Limit
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 requires that the second compound have a para-substituent as each of (II-1)-(II-4) has a substituent in the para position. Claim 2 recites second compounds which do not have a para-substituent on the benzene ring such as octocrylene, ethylhexyl salicylate, homosalate, and phenylbenzimidazole sulfonic acid, therefore, claim 2 broadens the scope of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-5 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 (MW = 290 g/mol) 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) 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 2 is rendered prima facie obvious because Ehlis discloses ethylhexyl methoxycinnamate (abstract).
Claim 3 is rendered prima facie obvious because Ehlis discloses the polar oils diisopropyl sebacate, isopropyl myristate, and butyl stearate [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].
Conclusion
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