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 .
Priority
The instant application was filed 22 March 2024 and is the national stage entry of PCT/US2022/076899 filed 23 September 2022. The Applicant claims priority to provisional application 63/247,488 filed 23 September 2021. Therefore, the effective filing date of the instant application is 23 September 2021.
Election/Restrictions
Applicant’s election without traverse of butyl methoxydibenzoylmethane as the UVA filter, diethylhexyl butamido triazone as the UVB filter, and butyloctyl salicylate as the solvent in the reply filed on 20 April 2026 is acknowledged.
Claims 24-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 April 2026.
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.
Claim(s) 21-23, 26-29, 31-35, 37-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pissavini et al. (WO 2021102113 A1).
Regarding claim 21, Pissavini teaches a sunscreen composition (para. 6) that may comprise butyloctyl salicylate as a solubilizer (para. 124) in an amount of 0.1-35% (para. 123), diisopropyl adipate as a solubilizer in an amount of 0.1-25% (para. 128), butyl methoxydibenzoylmethane as the UVA filter (para. 38), and diethylhexyl butamido triazone as the UVB filter (para. 41). Each UV filter may be present in an amount from about 0.1-25% (para. 62). Therefore, if the UVA and UVB filters are present in equal amounts, it is interpreted as falling within the claimed ratio range.
Regarding claim 22, the sunscreen composition may comprise butyl methoxydibenzoylmethane as the UVA filter (para. 38) and diethylhexyl butamido triazone as the UVB filter (para. 41). Each UV filter may be present in an amount from about 0.1-25% (para. 62).
Regarding claim 23, the composition may comprise ethylhexyl triazone (para. 41).
Regarding claim 27, the composition may include a broad band UVA and UVB filter, such as bis-ethylhexyloxyphenol methoxyphenyl triazine (para. 45). Each UV filter may be present in an amount from about 0.1-25% (para. 62).
Regarding claims 28 and 29, the composition may include dibutyl adipate, which is interpreted as an ester of C8-C18 fatty acid, as a solubilizer (para. 124).
Regarding claim 31, ethylhexyl benzoate, phenethylbenzoate, C12-C15 alkyl benzoate (claim 4) are interpreted as components that are not required in the composition.
Regarding claim 32, solubilizers, which is interpreted similarly to solvents, may be in an amount of 0.1-35% (para. 123).
Regarding claim 33, the sunscreen composition may be a water-in-oil or oil-in-water emulsion (para. 188). Dibutyl adipate of instant claims 28 and 29 is interpreted as a lipophilic since it is a fatty acid ester. Therefore, it is interpreted that this solvent will be included in the oil phase.
Regarding claim 34, ethanol (para. 201) may be present in the composition and the composition may be substantially water-resistant (para. 209), which is interpreted as substantially anhydrous.
Regarding claims 35 and 39, the composition may include an emulsifier (para. 194), such as behenyl alcohol (para. 191) in an amount of 0.001-10% (para. 195).
Regarding claims 37 and 38, the composition may include emulsifiers (para. 194) and isoparaffins, such as isododecane (para. 191).
Regarding claim 40, benzophenone-3, octyl methoxycinnamate, 2-ethylhexyl-2-cyano-3,3-diphenylacrylate (para. 189), 3,3,5-trimethylcyclohexyl salicylate, 2-ethylhexyl salicylate do not seem to be required components of the composition.
Pissavini does not teach an exact combination of butyloctyl salicylate, butyl methoxydibenzoylmethane, and diethylhexyl butamido triazone in claim 21.
In regards to selecting the combination of butyloctyl salicylate, butyl methoxydibenzoylmethane, and diethylhexyl butamido triazone, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Pissavini teaches a sunscreen composition (para. 6) that may comprise butyloctyl salicylate as a solubilizer (para. 124) in an amount of 0.1-35% (para. 123), butyl methoxydibenzoylmethane as the UVA filter (para. 38), and diethylhexyl butamido triazone as the UVB filter (para. 41), whereas the claimed invention is directed towards a sunscreen composition comprising a solvent that includes butyloctyl salicylate, a UVA filter, and a UVB filter. Since Pissavini teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Claim(s) 21-23, 26-35, 37-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pissavini et al. (WO 2021102113 A1) and ulprospector.com.
In regards to claim(s) 21-23, 26-29, 31-35, 37-40, Pissavini, as applied supra, is herein applied in its entirety for its teachings of a sunscreen composition comprising butyloctyl salicylate, butyl methoxydibenzoylmethane, and diethylhexyl butamido triazone.
Pissavini does not teach dimethyl isosorbide in their composition in claim 30.
Ulprospector.com teaches that dimethyl isosorbide is used for personal care products to stabilize, solvate, and deliver active ingredients into the skin for significantly better penetration and performance (pg. 1).
Since Pissavini does not teach dimethyl isosorbide in their composition in claim 30, one of ordinary skill in the art would have been motivated to use Ulprospector.com’s teaching that dimethyl isosorbide is used for skin products to improve penetration and performance. A skilled artisan would have recognized the benefit of incorporating dimethyl isosorbide in Pissavini’s sunscreen composition to better stabilize, solvate, and deliver active components.
Claim(s) 21-23, 26-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pissavini et al. (WO 2021102113 A1), ulprospector.com, and essentialingredients.com.
In regards to claim(s) 21-23, 26-35, 37-40, Pissavini et al., as applied supra, is herein applied in its entirety for its teachings of a sunscreen composition comprising butyloctyl salicylate, butyl methoxydibenzoylmethane, and diethylhexyl butamido triazone.
Pissavini does not teach acrylates/octylacrylamide copolymer in claim 36.
Essentialingredients.com teaches that acrylates/octylacrylamide copolymer is used in waterproof and moisture-resistant sunscreens. The copolymer helps to maintain active ingredients by imparting resistance to abrasion.
Since Pissavini does not teach acrylates/octylacrylamide copolymer in their composition in claim 36, one of ordinary skill in the art would have been motivated to use Essentialingredients.com’s teaching that acrylates/octylacrylamide copolymer is used in waterproof and moisture-resistant sunscreens. Pissavini teaches acrylamides copolymers as an emulsifier (para. 194) in an amount of 0.01-5% (para. 195). A skilled artisan would have recognized the benefit of using acrylates/octylacrylamide copolymer in an amount of 0.01-5%, as taught by Pissavini, to maintain active ingredients and improve water-resistant sunscreens in Pissavini’s teaching.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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