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 .
DETAILED ACTION
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 09 Jun 2026 has been entered.
Claims 1-3 and 5-7 remain pending in the application.
Claims 1 and 5 are amended.
Claim 4 is cancelled.
Claims 1-3 and 5-7 are under consideration.
Rejections Withdrawn
Rejections Pursuant to 35 USC § 103
The rejections under 35 U.S.C. 103 are withdrawn in light of applicant’s amendment of the claims, and in favor of the new grounds of rejection set forth below.
New Grounds of Rejections
Claim Rejections - 35 USC § 112
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 3 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 3 recites broad categories of polar oils such as ester oil, ether oil, higher alcohol, and fatty acid whereas claim 1 recites four specific compounds. Thus, claim 3 broadens claim 1 from which it depends.
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 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Springer et al. (US 2010/0068160, published 18 Mar 2010) in view of Mori et al. (US 8,252,273, published 28 Aug 2012).
Springer teaches cosmetic and dermatological formulations including phenoxyalkyl esters (title). Springer teaches that phenoxyalkyl esters impart good sensory properties to the formulations and are characterized by very good dissolving properties for active ingredients, in particular organic UV photoprotective filters ([0001]). Springer teaches that relatively high light protection factors are in most cases produced by increasing the concentration of UV light protection filters ([0009]) and that the amount of filter substances have to have been dissolved and incorporated in the formulation in a homogenous and stable manner ([0011]) and that use is often made of oil-like components which have a good dissolving power for the filter substances ([0012]). Springer teaches an emollient which in addition to good sensory properties of color, odor and skin feel, also has good solubility for active substance, in particular for organic UV photoprotective filters ([0028]). Springer teaches phenoxyalkyl esters of the following formula:
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The A, R2, and R3 groups as hydrogen and the R1 group as C7 renders obvious phenoxyethyl caprylate and, further, Springer identifies phenoxyethyl caprylate in an example of dissolving UV filters ([0168] table). Springer teaches that at least one substance of formula (I) is used for preparation of a cosmetic, dermatological or pharmaceutical formulation ([0048]) and teaches the addition of at least one additional component such as UV photoprotective filters ([0054]). Springer teaches formulations such as sunscreen preparations ([0149]) (rendering obvious claim 7) and teaches that the UV photoprotective filter is from 0.01-15% ([0139]) and that the substance of formula (I) is from 0.1 to 60 percent by weight ([0150]), rendering obvious claim 6.
Springer does not teach the inclusion of compound I as of the instant claims. This deficiency is made up for in the teachings of Mori.
Mori teaches compounds of formula 1 shown below (col 3 lines 25-42):
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Formula 1 taught by Mori renders obvious the compound I of the instant claims. Mori teaches that the compound has a strong absorptive capacity in the UVA range and an absorptive capacity in the UVB range which provides an ultraviolet inhibitory effect in a wide range of wavelengths (col 4 lines 18-21). Mori teaches the compound can be used in sunscreen cosmetics as its ultraviolet inhibitory effect is maintained over a long period of time at a high level without frequently reapplying the cosmetic (col 4 lines 43-47). Mori teaches that the compound can be used in in combination with various components such as oil solutions and is usually at 0.001 to 30% by mass of the composition (col 6 lines 33-45). Mori demonstrated the compound dissolving in various solvents and teaches that it has better solubility than reference compounds (see col 10 lines 1-24, Table 2), rendering the at least partially dissolved state of clam 2 as obvious. Mori teaches that ultraviolet absorber compound can be used in combination with other ultraviolet absorbers (col 5 line 40 – col 6 line 16).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have a composition comprising 0.1-60% of a phenoxyalkyl ester such as phenoxyethyl caprylate and 0.01-15% of a compound of Formula 1 as taught by Mori in the composition. It is known from Springer to form cosmetic formulations such as sunscreen preparations with UV filters, with phenoxyalkyl esters such as phenoxyethyl caprylate as they impart good sensory properties to the formulations and are characterized by very good dissolving properties for active ingredients, in particular organic UV photoprotective filters. Compounds of Formula 1, as known from Mori, have have a strong absorptive capacity in the UVA range and an absorptive capacity in the UVB range which provides an ultraviolet inhibitory effect in a wide range of wavelengths and may be used in sunscreen compositions, as taught by Mori. Thus, it would have been obvious to have a composition comprising phenoxyethyl caprylate and the compound of formula 1 as taught by Mori as the components are known to be suitable in sunscreen compositions and the combination of the formula 1 of Mori merely represents the use of a known compound for its intended purpose of absorbing UVA in sunscreen compositions. One would have a reasonable expectation of success as the compounds of Formula 1 are known to have an ultraviolet inhibitory effect maintained over a long period of time and at a high level without frequently reapplying the cosmetic and known to be able to be dissolved and the phenoxyalkyl ester compounds such as phenoxyethyl caprylate are known to be suitable for use with and for dissolving UV filters. The compounds of formula 1 at 0.01-15% by mass, and the phenoxyethyl caprylate at 0.1-60% renders the amount of compound I relative to the polar oil as in claim 1 as obvious as the amounts lead to overlapping ratios. For instance, 0.01-15% of the UV filter compound and 0.1-60% of the phenoxyethyl caprylate lead to compound 1 at about 0.02 parts by mass to about 99 parts by mass relative to the total of 100 parts by mass of the compound and the phenoxyalkyl ester (e.g. 0.01/(60+0.01)*100= ~0.02 and 15/(0.1+15)*100=~99). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Response to Arguments
Applicant's arguments filed 09 Jun 2026 have been fully considered but they are not persuasive. Applicant states that the applied prior art does not teach the oil phenoxyethyl caprylate. The examiner notes that the previous rejection has been withdrawn in favor of the rejection above where Springer in view of Mori renders obvious the combination of phenoxyethyl caprylate with a compound for formula 1 taught by Mori. Applicant further argues that Mori’s general disclosure of the Formula does not teach or suggest selecting any of the specific polar oils recited and controlling the relative amount of the Formula 1 compound to the polar oil as required by amended claim 1 (page 5 of remarks). Even though the art does not explicitly teach controlling the compound 1 relative to the oil in the same manner as recited in the claim, the examiner does not find this persuasive as the amounts for each component that is obvious to include necessarily overlaps with the ranges recited in the instant claims, thereby rendering such a range as obvious.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/E.C.M./Examiner, Art Unit 1619 /ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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