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
Status of claims
The amendment filed on 07/13/2026 is acknowledged. Claims 1, 5, 13, and 14 have been canceled and new claim 17 has been added. Claims 2-4, 6-12, and 15-17 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 07/13/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the claim objections of claim 15 and claims 12 and 15, 35 U.S.C. 102(a)(1) rejection of claims 2, 3, 6-12, 15, and 16 over Hough et al. (US 9,090,727 B2), and 35 U.S.C. 103(a) rejection of claims 2-4, 6-12, 15, and 16 over Hough et al. (US 9,090,727 B2) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejection necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
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 2-4, 6-12, 15-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hough et al. (US 9,090,727 B2) in view of Josso et al. (US 2001/0031247 A1).
Hough et al. teach in claims 1, 2, 8, 9, 12-18, and 30-34 one or more polymers comprising
a) a 1st monomer
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with R19 (the claimed R1 in formula I in the instant claim 15 and R21 in formula VII in the instant claim 16) being H or methyl, i (the claimed n in formula I in the instant claim 15 and q in formula VII in the instant claims 16 and 9) being 15-30, j (the claimed m in formula I in the instant claims 15 and 3 and p in formula VII in the instant claims 16 and 9) being 2-10,
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(having a bicyclic core, the claimed R2 in formula I in the instant claim 15, the claimed R22 in formula VII in the instant claims 16, 7, and 8, and the claimed IV.b in the instant claims 2 and 6) (thus the claimed a of formula I in the instant claim 15 and a2 of formula VII in the instant claim 16);
(b) a 2nd monomer
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with R21 (the claimed R2 in formula I in the instant claim 15 and R12 in formula VI in the instant claim 16) being a C16, 18, or 22 linear alkyl, R25 (the claimed R1 in formula I in the instant claim 15 and R11 in formula VI in the instant claim 16) being methyl or ethyl, r (the claimed n in formula I in the instant claim 15 and in formula VI in the instant claims 16 and 9) being 10-50, s (the claimed m in formula I in the instant claim 15 and in formula VI in the instant claims 16 and 9) being 0, and t being 1 (thus the claimed a of formula I in the instant claim 15 and a1 of formula VI in the instant claim 16);
c) a 3rd monomer which is an acrylic or methacrylic acid (the claimed b in the instant claims 15 and 10), and
d) one or more 4th monomer
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with R43 being
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and R19 being C1-4 alkyl (the claimed c in the instant claims 15 and 11)
being added, as a rheology modifier (column 3, line 13-50), to a personal care composition such as a sunscreen (column 25, line 28 and claim 28) comprising a liquid medium and one or more personal care benefit agents including UV absorbers (the instant claim 12) (column 25, line 28 and column 30, line 21-23 and claim 24);
wherein the weight percentages of the monomers are about 1-10% by weight of 1st monomer and about 1-10% by weight of the 2nd monomer (total of about 2-20% by weight of the claimed a), about 30-60% by weight of the 3rd monomer (the claimed b), and about 40-70% by weight of the 4th monomer (the claimed c) (column 18,line 30-51).
Though Hough et al. do not expressly teach the addition of the polymer to a sunscreen to increase the SPF of the sunscreen comprising a UV absorber in comparison to a composition comprising the same UV absorber without the polymer, as a result of the same polymer as claimed being added to a sunscreen composition, the addition of the polymer taught by Hough et al. would necessarily result in the same enhancing SPF effect to a sunscreen composition as claimed, even though such properties may not have been appreciated by Hough et al. at the time of the invention. Please refer to MPEP 2112.02:
The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the “use” is directed to a result or property of that composition or structure, then the claim is anticipated.
Hough et al. do not specify the exact same weight percentages of 1st and 2nd (monomer a) and 3rd (monomer b) (the instant claim 4).
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.
In the instant case the claimed range of monomer a is 4-15% by weight and the range of the 1st and 2nd monomers taught in the prior art is about 2-20% by weight and therefor, includes the claimed range.
In the instant case the claimed range of monomer b is 30-50% by weight and the range of the 3rd monomer taught in the prior art is about 30-60% by weight and therefor, includes the claimed range.
Hough et al. do not specify the UV absorbers being organic and the weight percentage of 5-30% by weight in the instant claim 15 and 5-20% by weight in the instant claim 17.
This deficiency is cured by Josso et al. who teach a topical UV-photo-protecting composition for human skin comprising about 0.5-15% by weight of at least one UV-A and UV-B sunscreen (claims 1 and 20) and exemplified a sunscreen composition comprising 10% by weight of octocrylene, 2% by weight of Parsol 1789, and 2% by weight of Mexoryl SX (all organic UV absorbers, a total 14% by weight) (paragraph 112 example 5).
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 Hough et al. and Josso et al. to specify the UV absorbers in the composition taught by Hough et al. being organic and being incorporated at 14% by weight. Incorporating 14% by weight of a mixture of organic UV absorbers 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.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 07/13/2026, have been fully considered but they are moot in view of new ground of rejections.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 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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/HONG YU/
Primary Examiner, Art Unit 1614
