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 .
Status of the Claims
Pursuant to the amendment dated 07/13/2026, claims 2, 5, 6, 8, and 20 have been cancelled.
Claims 1, 3, 4, 7, and 9-19 are pending and under current examination.
All rejections and objections not reiterated have been withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “…composition comprises at least one an ammonium acryloyldimethyltaurate/ vinylpyrrolidone copolymer…”. The phrase “at least one an” is ungrammatical. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1, 3, 4, 7, and 9-19 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.
Claim 1, lines 1-2 recites “wherein the sunscreen composition comprises at least one an ammonium acryloyldimethyltaurate/vinylpyrrolidone copolymer, vinylpyrrolidone/eicosane copolymer, niacinamide, glyceryl stearate…”. The phrase “at least one” could be interpreted to limit the invention those compositions containing only one of the listed substances; however, the remainder of the claim reads as though all are required and the remarks indicate this was the intended meaning. Although the claims are considered indefinite, in the interest of compact prosecution and in view of the remarks filed 07/13/2026, the examiner interprets the claim to read on compositions containing each of the recited substances.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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 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, 3, 4, 7, 9, 10, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wagner et al. (US 20110200540; publication date: 08/18/2011) in view of Chaudhuri (US 20030198607; publication date: 10/23/2003) and further in view of L’Alloret (US 20090022680; publication date: 01/22/2009).
With regard to claims 1, 3, 9, and 10, in the table spanning pages 29-30, Wagner discloses a high protection sunscreen containing 0.3%w/w Ammonium acryloyldimethyltaurate/VP copolymer, and 3.0%w/w octocrylene (at least one ultraviolet filter). Additional sunscreen actives in the composition total less than 20% by weight. The example compositions may contain glyceryl stearate and this substance is disclosed as a suitable emulsifier (0153).
Wagner does not disclose a vinylpyrrolidone/eicosane copolymer.
Chaudhuri, in the analogous art of sun protective personal care compositions, teaches that PVP/eicosane copolymer enhances the waterproof properties and forms a polymeric film (0038).
It would have been prima facie obvious to add a PVP/eicosane polymer to the sunscreen of Wagner. The artisan of ordinary skill would have been motivated to do so in order to improve the waterproofing of the composition and had reasonable expectation of success because this polymer was routinely used for this purpose in the art of sunscreen compositions.
Wagner discloses that the composition may contain biogenic active ingredients such as panthenol and vitamins (0162); however, Wagner does not disclose including niacinamide in the composition.
L’Alloret teaches that vitamins, including tocopherol, retinol, panthenol, and niacinamide were known to provide skin benefit (0084) in topical compositions such as sunscreens (0081, 0085, 0086). It would have been prima facie obvious to add niacinamide to the sunscreen composition disclosed by Wagner because it was well known in the art to increase skin health when applied in a topical composition. See MPEP 2143(I)(A).
With regard to claim 4, the composition does not contain homosalate.
With regard to claim 7, the composition contains cetearyl alcohol.
With regard to claims 16 and 19, as sunscreen are intended to protect skin from UV exposure (0007, 0200), it would have been obvious to apply it to the skin, i.e. to use it for its stated purpose.
Claims 11-15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wagner et al. (US 20110200540; publication date: 08/18/2011), Chaudhuri (US 20030198607; publication date: 10/23/2003), and L’Alloret (US 20090022680; publication date: 01/22/2009) as applied to claims 1, 3, 4, 7, 9, 10, 16, and 19 above, and further in view of Gardolinski et al. (WO 2022020914; publication date: 02/03/2022; effectively filed date: 07/31/2020; available as prior art under 35 USC §§102(a)(1) and (a)(2).
The relevant disclosures of Wagner, Chaudhuri, and L’Alloret are set forth above. Wagner discloses further that the sunscreen has high protection (title of table spanning pages 29-30), and thus directs the artisan of ordinary skill to seek high protection from UV irradiation, but does not state the SPF of the formulation, as required by instant claims 11 and 12.
Gardolinski, in the analogous art of sunscreen formulations, teaches that sunscreens must provide good protection against the sun and that SPF is a measure of this (page 1, line 20). Gardolinski teaches further that an objective for sunscreens is to provide a sun protection factor (SPF) of 30, 35, 40, 45, 50, 55, 60, 65, 70 and 80 (paragraph bridging pages 3-4).
Wagner accomplishes a “high” sun protection using a combination of sunscreen agents (see composition B15, A). It would have been prima facie obvious to maximize the sun protection of the composition, reaching SPF values greater than 30 or 50. The artisan of ordinary skill would have been motivated to do so in order to provide a product that can protect a consumer from damaging sun rays and would have had reasonable expectation of success because these values had been readily achievable in the art as of the instant effective filing date.
With regard to claims 13 and 14, Wagner does not disclose the SPF; however, it would have been obvious to optimize SPF as noted above. Gardolinski teaches that sunscreen actives, typically through the aid of polymers and other ingredients included in the vehicle, form a thin, protective, and often water-resistant layer on the skin (page 1). Although Gardolinski does not disclose duration of water resistance, it would have been obvious to one of ordinary skill to maximize the duration for which the formulation disclosed by Wagner remained effective when in contact with water by maximizing water resistance duration. The skilled artisan would have been motivated to do so because many outdoor activities occur around or in water and/or generate sweat so a water resistant formulation would increase effectiveness of the product. The artisan of ordinary skill would have had reasonable expectation of success because water-resistant additives were well-known in the art (see additives disclosed by both Wagner and Gardolinski) as of the instant effective filing date.
With regard to claim 15, composition A in the table describing example B15 of Wagner contains a combination of hydrophilic and hydrophobic ingredients (pages 29-30) and although Wagner does not expressly state the composition is an emulsion or dispersion, Wagner teaches that their composition may be formulated as such (e.g. 0156, 0171). As mentioned above, Gardolinski teaches sunscreen formulations in the form of emulsions, generally containing sunscreen actives that are solubilized, emulsified, or dispersed in a vehicle, which is topically applied onto the skin. The sunscreen actives, typically through the aid of polymers and other ingredients included in the vehicle, form a thin, protective, and often water-resistant layer on the skin (page 1). Thus, one having ordinary skill would have understood that the combination of water soluble and hydrophobic ingredients in Wagner’s example B15, A would be formulated as an emulsion or dispersion. The examiner considers this to fall within the scope of “polymeric suspension” as the composition contains polymers in the form of an emulsion. This is consistent with the description of “polymer suspension” in the instant specification, which is characterized as a suspension of oils. Moreover, the composition disclosed by Wagner contains both of the polymers required in the instant application, the ammonium acryloyldimethyltaurate/vinylpyrrolidone copolymer and the acrylates/C10-30 alkyl acrylate crosspolymer. For all of these reasons, the limitations of instant claim 15 are considered taught by the cited prior art.
With respect to claim 17, it would have been obvious to apply the formulation to the skin prior to being exposed to water so that the thin, water-resistant layer could form. Thus, one having ordinary skill would have understood that the hydrophobic sunscreen actives and hydrophobic polymer additives would form a film across the skin on application and that these solids would remain in place on drying of the volatiles in the compositions, providing protection to the skin.
With respect to claim 18, the examiner considers the phrase “sunscreen actives, typically through the aid of polymers and other ingredients included in the vehicle, form a thin, protective, and often water-resistant layer on the skin” noted above to teach formation of a uniform hydrophobic layer. One having ordinary skill would be motivated to ensure the layer was uniform in order to have uniform and complete protection from the sun.
Response to Arguments
Applicant’s arguments filed 07/13/2026 with respect to the rejection under 35 USC §§102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as set forth above.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
