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 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.
DETAILED ACTION
Claims 1, 2, 4-6, 8, 9, 11-17, 20, 21, and 23-25 are pending, claims 3, 7, 10, 18, 19, and 22 are canceled in this application. This application is a national stage entry of PCT/AU2022/095001, filled on 11/16/2022, which claims foreign priority to AU 2021903680, filed on 11/16/2021 in Australia and to AU 2022901287, filed on 05/13/2022 in Australia
Election/Restrictions
Applicants’ election without traverse of group I, claims 1, 2, 4-6, 8, 9, 11-17, 20, 21, 24, and 25, and subsequent species election of plate-like shape aluminum oxide, filed on 05/20/2026 is acknowledged. Claim 23 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim.
Claims 1, 2, 4-6, 8, 9, 11-17, 20, 21, 24, and 25 will presently be examined to the extent they read on the elected subject matter of record.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claim 15 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 15 contains the trademark/trade name Amphisol K. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1, 4, 5, 8, 9, 11, 13, 16, 20, 21, and 24 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schmidt et al. (US 2009/0169589 A1).
Schmidt et al. teach sunscreen composition (paragraph 55) in form of w/o or o/w emulsion (the claimed aqueous phase in the instant claim 5) comprising
5-70% by weight (paragraph 39) of filler pigments based on platelet-shaped substrates such as calcinated Al2O3 flakes (abstract and paragraph 8 and 27) with 2-200 aspect ratio (paragraph 12) (the claimed plate-like in the instant claim 1 according to the instant specification paragraph 70 having an aspect ratio of ≥ about 1.5) coated with BaSO4 and at least two metal oxides including ZnO followed calcination (the claimed calcinated mixture of Al2O3 + ZnO in the instant claims 1 and 5 and the claimed calcinated Al2O3 – ZnO composite in the instant claims 16 and 24) (abstract and paragraph 18, 25, and 26);
an oil including olive oil (the instant claims 1 and 5) (paragraph 48 and 58);
an emulsifier (the instant claim 1) (paragraph 48 and 68);
stabilizer (the instant claim 11) (paragraph 48 and 69); and
commercially available ZnO (no impurity required by Schmidt et al. → substantially pure, the claimed pristine the instant claim 9 according to the instant specification paragraph 21) (paragraph 47)
and exemplified in paragraph 79 a composition comprising
stearic acid (the claimed dispersing and/or wetting agent in the instant claims 1 and 5 according to the instant specification paragraph 30);
wherein the Al2O3 flakes have a diameter (non-thickness dimension) of 50-500 nm (paragraph 12).
Schmidt et al. teach BaSO4 being 10-50% by weight relative to Al2O3 substrate (paragraph 15) (2-10:1) and the weight ratio between BaSO4 and metal oxides is 1:10 to 5:1 (paragraph 16) (→ 1:0.2-10). The weight ratio between Al2O3 and two metal oxide is calculated to be 1:0.1-5 based on 2:1 Al2O3 substrate to BaSO4 weight ratio and 1:0.02-1 based on 10:1 Al2O3 substrate to BaSO4 weight ratio → 1: 0.02-5. Schmidt et al. exemplified about 7:1 weight ratio between two metal oxides in paragraph 76. Thus, it would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to choose a 7/8 of ZnO relative to the two metal oxides → Al2O3 substrate to ZnO weight ratio of 1:0.0175-4.375.
Schmidt et al. do not specify the same weight percentage of Al2O3 + ZnO mixture filler pigments in the instant claims 4 and 8 (5-70% vs the claimed about 10-50% and about 5-30%), the same non-thickness dimension in the instant claim 21 (50-500 nm vs the claimed 0.1-10 µm → 100-10000 nm), and the same Al2O3 substrate to ZnO weight ratio in the instant claim 20 (1:0.0175-4.375 vs the claimed about 1:4-24).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside and/or overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed ranges of Al2O3 + ZnO mixture weight percentage are about 10-50% and about 5-30% by weight and the range of filler pigment (Al2O3 + ZnO mixture) weight percentage taught in the prior art is 5-70% by weight and therefor, includes the claimed ranges.
The claimed range of non-thickness dimension is about 0.1-10 µm (→ 100-10000 nm) and the range of diameter taught in the prior art is 50-500 nm and therefor, overlaps with the claimed range.
The claimed range of Al2O3 substrate to ZnO weight ratio is about 1:4-24 and the range of Al2O3 substrate to ZnO weight ratio taught in the prior art is 1:0.0175-4.375 and therefor, overlaps with the claimed range.
Schmidt et al. do not teach isostearic acid in the instant claim 13.
This deficiency is cured by the rationale that chemical compounds having “very close” structural similarities and similar utilities.
Stearic acid taught by Schmidt et al. and the claimed isostearic acid are position isomers that there is a presumed expectation that such compounds possess similar properties while both stearic acid and isostearic acid are disclosed in the instant specification paragraph 29 as having the same properties. See MPEP 2144.09 II:
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) …… are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Optional limitations in the instant claim 9 are not limitations must be taught by prior art.
Claims 1, 2, 4-6, 8, 9, 11, 12-14, 16, 20, 21, and 24 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schmidt et al. (US 2009/0169589 A1) in view of Johncock et al. (US 2019/0374454 A1).
The teachings of Schmidt et al. are discussed above and applied in the same manner. Schmidt et al. also teach the oils including olive oil (paragraph 58), preservatives (paragraph 67).
Schmidt et al. do not specify the preservatives including tropolone in the instant claims 2 and 6, the emulsifiers including polyglyceryl-3 polyricinoleate in the instant claim 12, and oils including Helianthus Annuus (sunflower) seed oil in the instant claim 14.
This deficiency is cured by Johncock et al. who teach sunscreen compositions (abstract and paragraph 2) comprising 1-10% by weight of emulsifiers (surfactants) including polyglyceryl-3 polyricinoleate (paragraph 136), both olive oil and sunflower oil as an oil phase component (paragraph 91 and 160 and claim 14), and tropolone as an ingredient with the ability to reduce the growth of bacteria, yeast and molds (preservative) (paragraph 186).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and Johncock et al. to specify preservatives and the emulsifiers in the composition taught by Schmidt et al. including tropolone and polyglyceryl-3 polyricinoleate, respectively, and to replace olive oil in the composition taught by Schmidt et al. with sunflower (seed) oil. Preservatives and the emulsifiers in a sunscreen composition including tropolone and polyglyceryl-3 polyricinoleate, respectively, and both olive oil and sunflower oil being suitable oils in a sunscreen composition were well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying preservatives and the emulsifiers in the composition taught by Schmidt et al. including tropolone and polyglyceryl-3 polyricinoleate, respectively, and replacing olive oil in the composition taught by Schmidt et al. with sunflower oil flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
Optional limitations in the instant claims 2 and 6 are not limitations must be taught by prior art.
Claims 1, 2, 4-6, 8, 9, 11-16, 20, 21, and 24 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schmidt et al. (US 2009/0169589 A1) in view of Zhang et al. (US 2004/0185015 A1), LaRosa et al. (US 2021/0093539 A1), Johncock et al. (US 2019/0374454 A1), Ratti (US 2021/0299021 A1), and Pottie et al. (US 2017/0360666 A1).
The teachings of Schmidt et al. are discussed above and applied in the same manner.
Schmidt et al. do not specify the same weight percentage of Al2O3 + ZnO mixture filler pigments in the instant claim 15 (5-70% vs the claimed 25-40%).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of Al2O3 + ZnO mixture weight percentage is 25-40% by weight and the range of filler pigment (Al2O3 + ZnO mixture) weight percentage taught in the prior art is 5-70% by weight and therefor, includes the claimed range.
Schmidt et al. do not specify, by weight, 15-25% sunflower oil, 0.5-3% isostearic acid, 20-35% water, and 5-15% glycerin.
This deficiency is cured by Zhang et al. who teach sunscreen cosmetics (abstract) comprising, by weight, 6.93% glycerin (example 3), 1.90% isostearic acid (example 5), 20% sunflower seed oil (example 6), 21% water (example A in example 9).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and Zhang et al. to specify sunscreen compositions taught by Schmidt et al. comprising, by weight, 6.93% glycerin, 1.90% isostearic acid, 20% sunflower seed oil, 21% water. Sunscreen compositions comprising, by weight, 6.93% glycerin, 1.90% isostearic acid, 20% sunflower seed oil, 21% water was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Schmidt et al. do not specify, by weight, 2-5% Jojoba oil, 0.1-2% xanthan gum, 0.25-3% wax, and 0.5-5% polyhydroxystearic acid.
This deficiency is cured by LaRosa et al. who teach a cosmetic composition (abstract) comprising, by weight, 0.1-7.5% Jojoba oil (claim 3 and 4), 0.3-3% xanthan gum (claims 9 and 10), 0.3-3% castor wax (claims 9 and 10), and 0.3-3% polyhydroxystearic acid (claims 9 and 10).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and LaRosa et al. to specify sunscreen compositions taught by Schmidt et al. comprising, by weight, 0.1-7.5% Jojoba oil, 0.3-3% xanthan gum, 0.3-3% castor wax, and 0.3-3% polyhydroxystearic acid. Sunscreen compositions comprising, by weight, 0.1-7.5% Jojoba oil, 0.3-3% xanthan gum, 0.3-3% castor wax, and 0.3-3% polyhydroxystearic acid was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Schmidt et al. do not specify 2-5% by weight polyglyceryl polyricinoleate (PGPR).
This deficiency is cured by Johncock et al. whose teachings are discussed above and applied in the same manner.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and Johncock et al. to specify sunscreen compositions taught by Schmidt et al. comprising 1-10% by weight PGPR. Sunscreen compositions comprising 1-10% by weight PGPR was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Schmidt et al. do not specify 0.25-2% by weight hinokitiol.
This deficiency is cured by Ratti who teaches a sunscreen composition (paragraph 15) comprising 1% by weight hinokitiol (example 1).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and Ratti to specify sunscreen compositions taught by Schmidt et al. comprising 1% by weight hinokitiol. Sunscreen compositions comprising 1% by weight hinokitiol was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Schmidt et al. do not specify, by weight, 0.5-3% maltodextrin, 0.1-2% Amphisol K (potassium cetyl phosphate), 0.1-5% NaCl, and 0.1-0.5% sodium phytate.
This deficiency is cured by Pottie et al. who teach a sunscreen composition (paragraph 4) comprising, by weight, 1% maltodextrin and 1% NaCl (example B-9), 0.5% Amphisol K (potassium cetyl phosphate) (example B-10), and 0.1% sodium phytate (example B-20).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and Pottie et al. to specify sunscreen compositions taught by Schmidt et al. comprising, by weight, 1% maltodextrin and 1% NaCl, 0.5% potassium cetyl phosphate, and 0.1% sodium phytate. Sunscreen compositions comprising, by weight, 1% maltodextrin and 1% NaCl, 0.5% potassium cetyl phosphate, and 0.1% sodium phytate was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
With regard to the ranges taught by prior art overlapping with and/or including the claimed ranges, the rationales discussed above applied in the same manner.
Optional limitations in the instant claims 2, 6, and 9 are not limitations must be taught by prior art.
Claims 1, 4, 5, 8, 11, 13, 16, 17, 20, 21, 24, and 25 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schmidt et al. (US 2009/0169589 A1) in view of McCormick et al. (US 2010/0310871 A1).
The teachings of Schmidt et al. are discussed above and applied in the same manner.
Schmidt et al. do not specify ZnO being mesoporous (the instant claims 17 and 25).
This deficiency is cured by McCormick et al. who teach mesoporous ZnO powder sunscreen compositions being visibly-transparent without undesirable whitening (paragraph 2, 3, and 9).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Schmidt et al. and McCormick et al. to specify ZnO in the composition taught by Schmidt et al. being mesoporous. Mesoporous ZnO powder in sunscreen compositions being visibly-transparent without undesirable whitening n was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Optional limitations in the instant claims 17 and 25 are not limitations must be taught by prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 2, 4-6, 8, 9, 11-17, 20, 21, 24, and 25 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 5-20, and 22 (dated 09/10/2024) of copending Application No. 18/710,100 in view of Schmidt et al. (US 2009/0169589 A1). Although the patent and instant claims are not identical, they are not patentably distinct from each other in view of Schmidt et al. to incorporate the calcinated mixture into a sunscreen composition.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same product.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614
Prosecution Insights