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 .
Summary
Claims 17-36 are pending in this office action. Claims 1-16 are cancelled. All pending claims are under examination in this application.
Priority
The current application was filed on March 19, 2024 is a 371 of PCT/EP2022/075632 filed September 15, 2022. The current application claims foreign priority to DE102021210629.3 filed September 23, 2021.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on May 20, 2024 and September 12, 2024 are acknowledged. A signed copy of the two documents are attached to this office action.
Claim Objections
Claims 18, 28-29, 31-32, 34, and 35 are objected to because of the following informalities:
Claim 18 should have the text “…solid plastic particles…” not “…plastic particles solid…”.
Claims 28-29, 31-32, 34 and 35 all need the phrase “or”, or “and/or” added prior to the last list item in the groups.
Furthermore, claim 29 needs a deletion of the semicolon after “titanium dioxide”. The semicolon should be replaced by a comma.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
[The Examiner is going to present two separate 102(a)(1) rejections.]
Claims 17-20, 22, 24-30 and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Efthimios (EP3056192A1).
Efthimios is the closest prior art to the present invention as it teaches complete anhydrous sunscreen compositions with under water technology (see title). Furthermore, Efthimios discloses that the invention provides a 100 % anhydrous sunscreen composition and a use of this sunscreen composition with very high water and sweat resistance properties which can be applied on a wet skin, either in the presence of water by repelling water or water droplets respectively or in under-water conditions. The present invention describes the use of a sunscreen composition with SPF >=50 or 50 or 30 or <30 or according to any Sun Protection Factor that conforms to any current cosmetic legislation (eg. EU, USA, Japan) consisting of a silicone organic elastomer blend comprising Dimethicone/Bis-isobutyl PPG-20 Crosspolymer in lsododecane in a concentration range from about 30% to about 90% w/w and a silicone elastomer comprising Dimethicone/Vinyl Dimethicone Crosspolymer and Silica in a concentration range from about 0.1 % to about 10% w/w, wherein the sunscreen is applied on the skin in the presence of water (in wet and/or under-water conditions). Further, the new sunscreen product allows the consumer to enter water directly after the application of the sunscreen product on his dry or already wet skin (see abstract).
Regarding instant claim 17, Efthimios teaches a cosmetic preparation. The necessary citations of Efthimios that pertain to instant claim 17 are presented in Table I.
Table I
Instant Claim 17
Efthimios Citations
A cosmetic preparation,
Efthimios discloses a cosmetic composition (sunscreen) (see abstract and paragraph [0001]).
wherein the preparation comprises at least one oil phase and soda-lime glass beads having a density of at least 2.48 g/cm3.
Efthimios discloses a sunscreen containing at least one oil phase and soda-lime glass beads having a density of at least 2.48 g/cm3 (see Example 1 on page 7; also see PTO-892 NPL U-W; Prizmalite™ Glass Beads; P2011 SL).
Regarding instant claim 18, Efthimios teaches wherein the preparation is free of plastic particles solid at room temperature. Efthimios discloses the composition of Example 1 is free of solid plastic particles at room temperature (see Example 1 on page 7).
Regarding instant claims 19 and 20, Efthimios teaches wherein the glass beads have a particle diameter of from 3 mm to 110 mm. Efthimios discloses the use of Prizmalite™ Glass Beads P2011 SL (see Example 1) which have a diameter of >3 mm from a commercial source (see PTO-892 NPL U-W; Prizmalite™ Glass Beads; P2011 SL).
Regarding instant claim 22, Efthimios teaches wherein the glass beads have a melting point of higher than 700°C. Efthimios discloses the use of Prizmalite™ Glass Beads P2011 SL (see Example 1) which have a melting point of >700 °C from a commercial source (see PTO-892 NPL U-W; Prizmalite™ Glass Beads; P2011 SL). A melting point of 730 °C – 830 °C is reported (see PTO-892 NPL U; see section 9 of the SDS).
Regarding instant claims 24 and 25, Efthimios teaches wherein the glass beads have a refractive index of from 1.4 to 1.6. Efthimios discloses the use of Prizmalite™ Glass Beads P2011 SL (see Example 1) which have a refractive index of 1.5 (see PTO-892 NPL V; Prizmalite™ Glass Beads; P2011 SL).
Regarding instant claim 26, Efthimios teaches wherein the preparation comprises the glass beads in a concentration of from 0.1 % to 5 % by weight, based on a total weight of the preparation. Efthimios discloses Example 1 of a sunscreen having 0.5 wt% of Prizmalite™ Glass Beads; P2011 SL (see Example 1, page 7).
Regarding instant claim 27, Efthimios teaches wherein the preparation comprises the glass beads in a concentration of from 1 % to 2.5 % by weight, based on a total weight of the preparation. Efthimios discloses spherical glass beads, comprising soda lime, solid glass microspheres…may be present in a concentration range from about 0.1 % to about 5% w/w, particularly in a preferred concentration of about 0.5% w/w (see paragraph [0015] #9).
Regarding instant claim 28, Efthimios teaches wherein the at least one oil phase of the preparation comprises one or more components selected from diisopropyl adipate, caprylic/capric triglyceride (INCI Caprylic/Capric Triglycerides), isopropyl palmitate, dimethicone, cyclomethicone, octyldodecanol, ethylhexyl cocoate, myristyl myristate, hydrogenated coco-glycerides (INCI Hydrogenated Coco-Glycerides), dicaprylyl carbonate, C18-38 alkyl hydroxystearoryl stearate (INCI C18-38 Alkyl Hydroxystearoyl Stearate), di-n-butyl adipate, butylene glycol dicaprylate/dicaprate (INCI Butylene Glycol Dicaprylate/Dicaprate), C12-15 alkyl benzoate (INCI C12-15 Alkyl Benzoate), 2-phenylethyl benzoate (INCI Phenethyl Benzoate), di-C12-13 alkyl tartrate (INCI Di-C12- 13 Alkyl Tartrate), butylene glycol cocoate (INCI: Butylene Glycol Cocoate), dicaprylyl ether, isodecyl neopentanoate, tridecyl trimellitate, isopropyl stearate, C12-13 alkyl lactate, 2-propylheptyl octanoate, and/or isopropyl lauryl sarcosinate. Efthimios discloses the use of dibutyl adipate (see Example 1), octyldodecanol (see paragraph [0021]), and dimethicone (see paragraph [0021]).
Regarding instant claim 29, Efthimios teaches wherein the preparation further comprises one or more UV filters selected from phenylene-1,4-bis-(2-benzimidazyl)-3,3'- 5,5'-tetrasulfonic acid salts; 2-phenylbenzimidazole-5-sulfonic acid salts; 1,4-di(2-oxo- 10-sulfo-3-bornylidenemethyl)benzene and salts thereof; 4-(2-oxo-3- bornylidenemethyl)benzenesulfonic acid salts; 2-methyl-5-(2-oxo-3- bornylidenemethyl)sulfonic acid salts; 2-(2H-benzotriazol-2-yl)-4-methyl-6-[2-methyl-3- [1,3,3,3-tetramethyl-1-[(trimethylsilyl)oxy]disiloxanyl]propyl]phenol; 3-(4- methylbenzylidene)camphor; 3-benzylidenecamphor; ethylhexyl salicylate; terephthalidenedicamphorsulfonic acid; 2-ethylhexyl 4-(dimethylamino)benzoate; amyl 4-(dimethylamino)benzoate; di(2-ethylhexyl) 4-methoxybenzalmalonate; 2-ethylhexyl 4- methoxycinnamate; isoamyl 4-methoxycinnamate; 2-hydroxy-4-methoxybenzophenone, 2-hydroxy-4-methoxy-4'-methylbenzophenone; 2,2'-dihydroxy-4-methoxybenzophenone;hexyl 2-(4'-diethylamino-2'-hydroxybenzoyl)benzoate; 4-(tert-butyl)-4'- methoxydibenzoylmethane; homomenthyl salicylate; 2-ethylhexyl 2-hydroxybenzoate; 2- ethylhexyl 2-cyano-3,3-diphenylacrylate; dimethicodiethylbenzalmalonate; 2-ethylhexyl 2-cyano-3,3-diphenylacrylate; 3-(4-(2,2-bis(ethoxycarbonylvinyl)phenoxy)propenyl)- methoxysiloxane / dimethylsiloxane - copolymer; dioctylbutylamidotriazone (INCI:Diethylhexyl Butamidotriazone); 2,4-bis[5-1(dimethylpropyl)benzoxazol-2-yl-(4- phenyl)imino]-6-(2-ethylhexyl)imino-1,3,5-triazine with (CAS No. 288254-16-0); tris(2- ethylhexyl) 4,4',4"-(1,3,5-triazine-2,4,6-triyltriimino)trisbenzoate (also: 2,4,6-tris[anilino- (p-carbo-2'-ethyl-1'-hexyloxy)]-1,3,5-triazine (INCI: Ethylhexyl Triazone); 2,4-bis{[4-(2- ethylhexyloxy)-2-hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine; 4- dicyanomethylene-2,6-dimethyl-1,4-dihydropyridine N-(ethyloxysulfate ester salts), titanium dioxide, and/or zinc oxide. Efthimios discloses the use of both titanium dioxide and hexyl 2-(4'-diethylamino-2'-hydroxybenzoyl)benzoate (see Example 1).
Regarding instant claim 30, Efthimios teaches wherein the preparation is present in the form of an emulsion. Efthimios discloses cosmetic emulsions for their sunscreen (see paragraph [0006]).
Regarding instant claim 35, Efthimios teaches wherein the preparation is free from 3-(4-methylbenzylidene)camphor, 2-hydroxy-4-methoxybenzophenone (INCI:Oxybenzone), 2-ethylhexyl 4-methoxycinnamate (INCI Octyl Methoxycinnamate), ethylhexyl 2-cyano-3,3-diphenylacrylate (INCI: Octocrylene), parabens (particularly methyl, propyl and butyl paraben), methylisothiazolinone, chloromethylisothiazolinone and DMDM hydantoin, polyethylene glycol ethers, and/or polyethylene glycol esters. Efthimios discloses Example 2 which is free of all of the listed reagents (see Example 2 on page 2; sunscreen cosmetic).
Claims 17 and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abdo et al. (US2016/0263010A1).
Abdo et al. teach compositions for keratin fibers (see title). Additionally, Abdo et al. disclose that the present invention relates generally to topical compositions and methods of using the compositions to treat keratin fibers. The compositions, such as mascaras, can form films of low resiliency on the surface of the keratin fibers, which impart moldability to the treated fibers, thereby enhancing the range of styling effects and options available to the user (see abstract).
Regarding instant claim 17, Abdo et al. teach a cosmetic preparation. The necessary citations of Abdo et al. that pertain to instant claim 17 are presented in Table II.
Table II
Instant Claim 17
Abdo et al. Citations
A cosmetic preparation,
Abdo et al. disclose a cosmetic composition (mascaras) (see abstract and paragraph [0004] within Abdo et al.).
wherein the preparation comprises at least one oil phase and soda-lime glass beads having a density of at least 2.48 g/cm3.
Abdo et al. disclose a mascara containing at least one oil phase and soda-lime glass beads having a density of at least 2.48 g/cm3 (see claim 4; and paragraph [0079] within Abdo et al.; also see PTO-892 NPL U-W; Prizmalite™ Glass Beads; P2011 SL).
Regarding instant claim 36, Abdo et al. teach wherein the preparation further comprises ethanol and/or ethylhexylglycerin. Abdo et al. disclose the use of ethanol within their cosmetic (see paragraph [0062] within Abdo et al.).
Claim Rejections - 35 USC § 103
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.
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 non-obviousness.
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 17, 21, 23, and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Efthimios in view of Abdo et al. and Heitmann et al. (WO2018/145946A1).
[The Examiner is going to introduce the Heitmann et al. reference and then combine them where appropriate to reject the instant claims. For ease of examination, the Examiner relied upon US2020/0009024A1 as an equivalent English translation of the German WO 2018/145946A1 publication. All citations henceforth to Heitmann et al. are locations in the US Publication.]
1. Heitmann et al.
Heitmann et al. teach cosmetic preparation containing soda-lime-borosilicate glass beads (see title). In addition, Heitmann et al. disclose a cosmetic preparation which contains at least one oil phase and glass beads of soda-lime-borosilicate (see abstract).
The teachings of Efthimios and Abdo et al. are presented in the 35 U.S.C. §102 Section above. Furthermore, the claim limitations of instant claim 17 are taught in full by both references.
Combination of Efthimios, Abdo et al., and Heitmann et al.
Regarding instant claim 21, Efthimios, Abdo et al., and Heitmann et al. teach wherein the glass beads have a particle diameter of from 70 mm to 110 mm. Heitmann et al. disclose where the glass beads according to the invention have a particle
diameter of 5 to 120 μm (overlapping range; see paragraph [0013] within Heitmann et al.).
Regarding instant claim 23, Efthimios, Abdo et al., and Heitmann et al. teach wherein the glass beads have an oil absorption of less than 0.2 grams of oil per cubic centimeter of glass beads, measured in accordance with ASTM D281-95. Heitmann et al. disclose that glass beads have an oil absorption of 0.2 to 0.6 grams of oil per cubic centimeter of glass beads, measured m accordance with ASTM D281-95. The instant claim 23 limitation has a numerical range of less than 0.2 g oil absorption per cubic centimeter of glass beads. The Heitmann et al. reference cites a range of 0.2 g - 0.6 g oil absorption per cubic centimeter of glass beads. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Therefore, a skilled artisan (POSITA; person of ordinary skill in the art) would be able to collect data for the oil absorption of less than 0.2 g of oil per cubic centimeter of glass beads, in accordance with ASTM D281-95.
Regarding instant claim 31, Efthimios, Abdo et al., and Heitmann et al. teach wherein the preparation is present in the form of an O/W emulsion, which has been emulsified with one or more emulsifiers selected from glyceryl stearate citrate, glyceryl stearate (self-emulsifying), stearic acid, stearate salts, polyglyceryl-3 methylglycose distearate, sodium stearoyl glutamate, sodium cetearyl sulfate, potassium cetyl phosphate, cetearyl sulfosuccinate, polyglyceryl-10 stearate, polyglyceryl-10 laurate, and/or polyglyceryl-10 caprate. Heitmann et al. disclose the complete instant claim 31 group of emulsifiers (see claim 33 within Heitmann et al.).
Regarding instant claim 32, Efthimios, Abdo et al., and Heitmann et al. teach wherein the preparation further comprises one or more alcohols selected from ethanol, glycerin, ethylhexylglycerin, phenoxyethanol, polyglyceryl-2 caprate, propylene glycol, butylene glycol, 2- methylpropane-1,3-diol, 1,2-pentanediol, 1,2-hexanediol, 1,2-octanediol, and/or 1,2-decanediol. Heitmann et al. disclose the complete instant claim 32 group of alcohols (see claim 34 within Heitmann et al.).
Regarding instant claim 33, Efthimios, Abdo et al., and Heitmann et al. teach , wherein the preparation further comprises one or more compounds selected from alpha-lipoic acid, folic acid, phytoene, D-biotin, coenzyme Q10, alpha-glucosylrutin, carnitine, carnosine, isoflavonoids, flavonoids, creatine, creatinine, taurine, B-alanine, panthenol, polidocanol, tocopheryl acetate, dihydroxyacetone, glycerylglucose, (2-hydroxyethyl)urea, vitamin E and vitamin E acetate, hyaluronic acid and/or sodium salts thereof, menthol, glycyrrhetic acid and/or licochalcone A. Heitmann et al. disclose the complete instant claim 33 group of additional additives (see paragraph [0030] within Heitmann et al.).
Regarding instant claim 34, Efthimios, Abdo et al., and Heitmann et al. teach wherein the preparation further comprises one or more polymers selected from xanthan gum, tapioca starch, hydroxyethylcellulose, vinylpyrrolidone/hexadecene copolymer. Heitmann et al. disclose the complete instant claim 34 group of polymers (see paragraph [0031] within Heitmann et al.).
Analogous Art
The Efthimios, Abdo et al., and Heitmann et al. references are directed to the same field of endeavor as the instant claims, that is, a cosmetic preparation wherein the preparation comprises at least one oil phase and soda-lime glass beads having a density of at least 2.48 g/cm3 as disclosed within instant claim 1.
Obviousness
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the sunscreen cosmetic containing Prizmalite™ Glass Beads (P2011 SL) disclosed by Efthimios, using the teachings of Abdo et al. and further in light of the claim-specific features described in Heitmann et al., in order to arrive at the subject matter of the instant claims.
The Efthimios, Abdo et al., and Heitmann et al. references all have considerable overlap with the preparation of cosmetics comprising glass beads. In this instance, both Efthimios and Abdo et al. supply the preparation of the cosmetic containing glass beads, while Heitmann et al. supplies claim specific examples of cosmetic additives. All references are directed to the preparation of cosmetics comprising glass beads and therefore constitute analogous art under MPEP §2141.01(a). A POSITA would have reasonably consulted the three references when seeking to improve or adapt a preparation for a cosmetic comprising glass beads.
Starting with Efthimios, the skilled person only had to try the necessary claim limitations disclosed by Abdo et al. and Heitmann et al. The combination of Efthimios, Abdo et al., and Heitmann et al. would allow one to arrive at the present application without employing inventive skill. This combination of the glass bead cosmetic taught by Efthimios along with the use of the necessary claim limitations taught by Abdo et al. and Heitmann et al. would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the glass bead cosmetic disclosed by Efthimios with the use of the necessary claim limitations taught by Abdo et al. and Heitmann et al. Incorporating the disclosure of Efthimios into the glass bead cosmetics presented by Abdo et al. and Heitmann et al. represents a predictable use of prior art elements according to their established functions, consistent with MPEP §2143 and KSR.
Furthermore, the additional claim limitations taught by Abdo et al. and Heitmann et al. would have been viewed by a POSITA as routine design optimizations or known modifications to expand the glass bead cosmetic additives. Implementing these features in Efthimios’s sunscreen cosmetic containing Prizmalite™ Glass Beads (P2011 SL) would not require more than ordinary skill or routine experimentation.
Accordingly, the combination of Efthimios, supplemented by Abdo et al. and Heitmann et al. provides all the elements of the claimed invention. The resulting cosmetic comprising glass beads constitutes no more than the predictable outcome of combining familiar prior art components, and therefore the claimed subject matter would have been obvious to a POSITA prior to the effective filing date of the invention.
Conclusion
No claims are allowed.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615