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
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 Mar 2024 is in compliance with the provisions of 37 CFR 1.97, except where noted. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (US 8,252,273, published 28 Aug 2012) as evidenced by Ataman (Ataman Chemicals, Products, Isononyl Isononanoate).
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 to have 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 req-applying 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 partially dissolved state of clam 2 as obvious. Mori teaches an example sunscreen formulation comprising a compound of Formula 1 at 20% and isononyl isononanoate at 5% (col 11 lines 5-15, see examples 3 and 4 of Table 3). As evidenced by Attaman, isononyl isononanoate is an ester compound (page 1 second to last paragraph), and thus renders obvious the ester oil of claim 3 and the polar oil of claim 4.
Mori does not expressly teach selecting the compound of formula 1 with the isononanoate where the compound is form 0.01 parts to 50 parts by mass relative to a total of 100 parts by mas of the compound and the isononyl isononanoate with sufficient specificity to rise to the level of anticipation.
However, 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 formed a sunscreen composition with a compound of Formula 1 from 0.001-30% by mass and isononyl isononanoate at 5%. One of ordinary skill in the art would have been motivated to do so as compounds of Formula 1 are taught by Mori as ultraviolet inhibitory molecules that are suitable in sunscreen compositions and the compounds have been demonstrated in sunscreen compositions with isononyl isononanoate at 5%. The compounds of Formulat 1 are acceptable from 0.001-30%, as taught by Mori, and when used in combination with isononyl isononanoate at 5% this renders the ratio of claim 1 as obvious. For example, 0.001-30% compound 1 and 5% isononyl isononanoate renders obvious about 0.02 parts to about 85 parts compound 1 relative to a total of 100 parts compound 1 and isononyl isononanoate (e.g. 0.001/(0.001+5)*100 = ~0.02 and 30/(30+5)*100 = ~85). 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). One of ordinary skill in the art would have a reasonable expectation of successfully forming the composition with the components in this range as they are taught by Mori in these amounts and as suitable for sunscreen compositions and thus the modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Mori.
The claims were rejected above in view of Mori et al. The claims are alternatively rejected below where the claims are obvious with a different polar oil compound.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (JP2018-083785, published 31 May 2018, listed on IDS filed 13 Mar 2024) in view of Mori et al. (US 8,252,273, published 28 Aug 2012).
Maki teaches a sunscreen cosmetic used for protecting human hair and or skin from the influence of harmful ultraviolet rays from sunlight ([0001]). Maki teaches the sunscreen cosmetic with effective amounts of an ultraviolet absorber, texture modifier, lower alcohol and an ester oil at a specific blending ratio in a sunscreen cosmetic ([0011]). The composition of Maki comprises (A) an ultraviolet absorber active in the UVA region, (B) a UV absorber active in the UVB region, (C) feel regulator, (D) lower alcohol, and (E) diester oil ([0012]). Maki teaches that the mass ratio of A+B/E is 0.3 to 1.7 ([0012]). Maki teaches that component (A) the ultraviolet absorber active in the UVA region is not particularly limited ([0021]). Maki teaches that the blending ratio of component (A) is not particularly limited as long as it is within an effective amount range ([0022]). Maki teaches that the diester oil of components (E) may be cyclohexane dicarboxylic acid ethoxydiglycol (i.e. bisethoxydiglycol cyclohexane-1,4-dicarboxylate) ([0028]) and is present from 10-50% by mass ([0029]). This compound renders obvious the polar oil of the instant claims.
Maki 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 to have 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 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 used a compound of Formula 1 from 0.001-30% by mass as taught by Mori as component A in the composition of Maki. Sunscreen compositions comprising (A) an ultraviolet absorber active in the UVA region, (B) a UV absorber active in the UVB region, (C) feel regulator, (D) lower alcohol, and (E) diester oil such as cyclohexane dicarboxylic acid ethoxydiglycol (i.e. bisethoxydiglycol cyclohexane-1,4-dicarboxylate) are known from Maki. Component (A) is not particularly limited and the amount is not limited as long as it is within an effective amount range, as taught by Maki. Compounds of Formula 1 have strong absorptive capacity in the UVA range and may be used in sunscreen compositions usually at 0.001 to 30% by mass, as taught by Mori. Thus, it would have been obvious to use the compounds of Formula 1 of Mori in this range in the compositions of Maki as they are known to be effect UVA sunscreen agents and the use of the compound 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. The compounds of formula 1 at 0.001-30% by mass, as taught by Mori, and the diester oil such as cyclohexane dicarboxylic acid ethoxydiglycol (i.e. bisethoxydiglycol cyclohexane-1,4-dicarboxylate) at 10-50% by mass, as taught by Maki, renders obvious 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, the amounts cited above lead to compound 1 at about 0.002 parts by mass to about 75 parts by mass relative tot eh total of 100 parts by mass of the compound and the diester oil (e.g. 0.001/(50+0.001)*100= ~0.002 and 30/(10+30)*100=75). 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.
Conclusion
No claim is allowed.
Correspondence
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