DETAILED ACTION
Claims 17-32 are currently pending. Claims 17-19, 24-25 and 29-30 are currently under examination.
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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 06/09/2026 is acknowledged. The traversal is on the ground(s) that the particular UV filters required therein, which it was surprisingly found were able to improve compatibility with skin microbiome. This is not found persuasive because Mintel teaches a SPF composition to be applied to the skin comprising bis-ethylhexyloxyphenol methoxyphenyl triazine, thus anticipating the special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim 31-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/09/2026.
Applicant's election with traverse of diethylamino hydroxybenzoyl benzoate (DHHB) in the reply filed on 06/09/2026 is acknowledged. The traversal is on the ground(s) that there are only a few UV filters are included, such that there would have been no undue burden in considering the claimed UV filters. This is not found persuasive because Mintel teaches a SPF composition to be applied to the skin comprising bis-ethylhexyloxyphenol methoxyphenyl triazine, thus anticipating the special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Priority
The instant application is a national stage entry of PCT/EP2022/076204, filed 09/21/2022, which claims priority to EP22150982.1, filed 01/11/2022.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 07/24/2024 and 12/13/2024 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Claim Rejections - 35 USC § 112(b)
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17-19, 24-25 and 29-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 17, the limitation of “a method comprising increasing compatibility of a sunscreen or daily composition with skin microbiome comprising incorporating a sunscreen or daily care composition comprising a UV filter” wherein it is unclear what “incorporating a sunscreen or daily care composition” is referring to. Is it incorporating the UV filter into the sunscreen? Incorporating the sunscreen or daily care composition into some method of application? Thus, instant claim 17 has unclear metes and bounds. Additionally, the method steps include increasing the compatibility with skin microbiome, however there is no active step of applying to the skin, it is therefore unclear how the skin microbiome compatibility could be improved without an active application step. Claims 18-19, 24-25 and 29-30 are further rejected as not curing the ambiguity of claim 17.
Regarding claim 19, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 19 recites “preferably Staphylococcus epidermidis” where the instant claim has unclear metes as bound as it unclear if the limitations following preferably are required or optional.
Regarding claim 25, the phrase "preferably" and “in particular” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 25 recites “preferably from 0.5 to 8 wt%” and “in particular from 0.5 to 5 wt%” where the instant claim has unclear metes as bound as it unclear if the limitations following preferably are required or optional.
Claim Rejections - 35 USC § 102 (a)(1)
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.
Claim(s) 17, 19, 24 and 29-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pro Bionic Performance Face Fluid (Applicant provided).
Regarding claims 17, 19 and 30, the limitation of a method comprising increasing compatibility of a sunscreen or daily composition with skin microbiome comprising incorporating a sunscreen or daily care compristion comprising a UV filter selected from the group consisting of bis-ethylhexyloxyphenol methoxyphenyl triazine is met by Pro Bionic teaching the composition featuring reef friendly UV protection (SPF 20) free of oxybenzone, octocrylenes and nanoparticles. The composition promote the skin’s microbiome health, improves its barrier function through positively influencing both speed and quality of epidermis renewal (page 1). The composition includes bis-ethylhexyloxyphenol methoxyphenyl triazine (page 7). Pro Bionic teaches the skin application of a composition including bis-ethylhexyloxyphenol methoxyphenyl triazine wherein skin microbiome health is promoted, thus meeting the limitation of increasing compatibility of a sunscreen with skin microbiome comprising incorporating a UV filter.
Regarding claim 24, the limitation of wherein the sunscreen does not contain zinc oxide is met by Pro Bionic teaching a composition that does not contain zinc oxide.
Regarding claim 29, the limitation of wherein the sunscreen or daily care composition further comprises a dermatologically acceptable emulsifier, thickener and/or emollient is met by Pro Bionic teaching carrageenan.
Claim(s) 17-19, 24-25 and 29-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/187779 (Applicant provided).
Regarding claims 17-19 and 30, the limitation of a method comprising increasing compatibility of a sunscreen or daily composition with skin microbiome comprising incorporating a sunscreen or daily care compristion comprising a UV filter selected from the group consisting of DHHB is met by the ‘779 publication teaching sunscreen or daily care composition comprising diethylamino hydroxybenzoyl hexyl benzoate (abstract). Topical application is taught (page 7, first paragraph). The ‘779 publication teaches the inclusion, thus incorporating UV filter, into the sunscreen composition and application to the skin, and thus the active step is taught and therefore would necessarily increase the compatibility of the sunscreen with the skin microbiome, increase the population of the bacteria.
Regarding claim 24, the limitation of wherein the sunscreen or daily care compristion does not contain zinc oxide is met by the ‘779 publication teaches compositions which do not include zinc oxide (Table 1.1.).
Regarding claim 25, the limitation of wherein the sunscreen or daily care composition comprises DHHB in an amount of from 0.1 to 10 wt% is met by the ‘779 publication teaching DHHB at 4% (Table 1.1 and 1.2).
Regarding claim 29, the limitation of wherein the sunscreen or daily care composition further comprises a dermatologically acceptable emulsifier, thicken and/or emollient is met by the ‘779 publication teaches emulsifier to include cetearyl alcohol (page 19, Table 1.1).
Regarding claim 30, the limitation of wherein the sunscreen does not contain octocrylene is met by the ‘779 publication teaching the composition does not comprise octocrylene (abstract).
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 17, 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/797,592 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘592 application teaches adding bis-ethylhexyloxyphenol methoxyphenyl triazine to the sunscreen composition, thus teaching the active steps of incorporation of bis-ethylhexxyloxyphenol methoxy phenyl triazine, and therefore necessarily increasing the compatibility of a sunscreen or daily compristion with the skin microbiome.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613
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