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 .
DETAILED ACTION
Claims 1-16 are under consideration.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16, drawn to a composition comprising a volatile solvent, a polyvinyl alcohol or polyvinyl alcohol ester other than acetate soluble in the volatile solvent, and at least one sunscreen in the reply filed on September 28, 2026 is acknowledged.
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-16 as filed on September 28, 2026 are pending and under consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 23, 2024, January 30, 2025 and September 2, 2026 were considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it is not in narrative form and employs the form and legal phraseology used in patent claims. Correction is required. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
Abstract, line 3: a comma or a comma followed by “wherein” should presumably be inserted after the first recitation of ester.
Abstract, line 3: “having” should presumably recite “has” or the clause otherwise reworded.
Paragraph [0066]: “[0060]” should presumably be deleted.
Appropriate correction is required.
The amendment (substitute specification) filed December 23, 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the insertion of qualifying or/and expansive language (e.g., paragraphs [0012], [0015], [0028], [00118], [00142], [00186]).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 4, 7 and 9 are objected to because of the following informalities:
Claim 4: “0-20%%” should recite “0 – 20%” or some variation thereof.
Claim 7: all duplicate recitations, e.g., “homosalate,” “octyl salicylate,” “titanium dioxide,” “zinc oxide,” “4-methylbenzylidenecamphor,” etc., should be deleted.
Claim 7: “butyl methoxydibenzoylmethane” is “avobenzone”.
Claim 7: “2-ethylhexyl salicylate” is “octyl salicylate”.
Claim 9: the duplicate recitation of “having a degree of hydrolysis” should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites film-forming polymers and UV absorbers, however, claim 1 from which claim 12 depends recites at least one film-forming polymer selected from a circumscribed group and at least one sunscreen active. These embodiments of claim 12 fail to further limit claim 1 and the embodiment drawn to film-forming polymers omits the group of claim 1.
Claim 15 recites the propellant is 1,1-difluoroethane, however, claim 14 from which claim 15 depends recites the propellant is dimethyl ether. Because 1,1-difluoroethane is not dimethyl ether, claim 15 appears to omit the propellant of claim 14.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4, 5, 7, 8 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patil et al. (US 2005/0031561, published February 10, 2005, of record).
Regarding claims 1, 10
Patil teaches cosmetic compositions comprising at least one film forming polymer solvated in volatile linear siloxane (title; abstract; claims, in particular 1). Exemplary polymers include polyvinyl short chain alkyl esters such as polyvinyl propionate (ester having functionality other than acetate) (paragraph [0112]). The compositions further comprise a sunscreen (claim 30; paragraphs [0193]-[0217]).
Regarding claims 4, 5
Patil teaches the compositions may be anhydrous (0 wt% water) (paragraph [0013]).
Regarding claims 7, 8, 12
Patil teaches sunscreens inclusive of avobenzone (UV absorber) (paragraph [0199]).
Regarding claim 11
Regarding the recitation of a sprayable composition, because the compositions of Patil are fluid they are necessarily sprayable.
The above teachings therefore anticipate the claims.
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 of this title, 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 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 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 1-6, 9-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over von Aspern et al. (WO 2016/091456, published June 16, 2016, as evidenced by the Google translation) in view of Sirota et al (US 3,417,180, published December 17, 1968, IDS reference filed December 23, 2024) and Torres et al. (US 2019/0209445, published July 11, 2019).
Aspern teaches compositions comprising a silicone, a C1-4 alcohol that is preferably ethanol (volatile solvent), a film former such as polyvinyl acetate (polyvinyl alcohol having a degree of hydrolysis of 0, ester of PVA) or/and polyvinyl butyral, and less than 5 wt% water (title; abstract; claims; paragraph bridging pages 2 and 3; page 3, 5th full paragraph from end of page), as required by instant claims 2-6, 10. The compositions may be sprayed using a spraying device (claims), as required by instant claims 11, 16. Regarding the specific device as recited in instant claim 16, because device does not further limit the structure of the composition per se, the device with which the composition is intended to be used has no patentable weight. The compositions may further comprise care substances such as vitamins or/and conditioners (page 5, top half), as required by instant claim 12. The compositions are suitable for the care of keratin fibers (claims).
Aspern does not specifically teach a polyvinyl alcohol having a degree of hydrolysis of 60% or less and Aspern does not teach a sunscreen as required by claim 1.
Aspern does not teach a polyvinyl alcohol having a degree of hydrolysis of about 35 to 58% as required by claim 9.
Aspern does not teach a propellant as required by claim 13.
Aspern does not teach dimethyl ether as required by claim 14.
These deficiencies are made up for in the teachings of Sirota and Torres.
Sirota teaches aerosol formulations (comprise a propellant) suitable as a hair spray comprising an organic solvent solution of a hydrolyzed polyvinyl acetate resin hydrolyzed to the extent that from about 15 to 60 % of its acetate groups are converted into hydroxyl groups (polyvinyl alcohol having a degree of hydrolysis) (title; abstract; claims), as required by instant claims 9, 13. The specified resins are soluble in anhydrous solvents such as ethanol (column 2, lines 3-18; column 3, lines 1-9).
Torres teaches sprayable compositions for styling hair comprising a propellant and at least one binder such as polyvinyl acetate due to its substantial hair hold (title; abstract; claims; paragraphs [0028], [0040], [0047]), as required by instant claim 13. The propellant may comprise dimethyl ether (claim 13), as required by instant claim 14. The compositions may further comprise additives inclusive of sunscreens (claim 18; paragraph [0050]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute hydrolyzed polyvinyl acetate resin hydrolyzed to the extent of about 15 to 60% (polyvinyl alcohol) as taught by Sirota for the film former of the compositions of Aspern because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. One of ordinary skill in the art would have been motivated to make the substitution because polyvinyl acetate is known to impart substantial hair hold as taught by Torres. There would be a reasonable expectation of success because Aspern embraces the presence of polyvinyl acetate. Regarding the property of solubility, because the combined teachings of the prior art render obvious compositions as instantly claimed, the film-former is presumed to be soluble in the solvent. In further support of this presumption, Sirota expressly teaches the hydrolyzed polyvinyl acetate (polyvinyl alcohol) is soluble in anhydrous solvents such as ethanol.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Aspern to further comprise additives inclusive of sunscreens as taught by Torres in order to reap the expected benefit of protection from the sun. There would be a reasonable expectation of success because the compositions of Aspern may further comprise care substances.
Regarding claims 13 and 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Aspern in view of Sirota and Torres to further comprise propellants inclusive of dimethyl ether as taught by Sirota and by Torres in order to formulate an aerosol spray. There would be a reasonable expectation of success because Aspern expressly teaches the compositions may be formulated as a spray.
Claims 7, 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Aspern et al. (WO 2016/091456, published June 16, 2016, as evidenced by the Google translation) in view of Sirota et al (US 3,417,180, published December 17, 1968, IDS reference filed December 23, 2024) and Torres et al. (US 2019/0209445, published July 11, 2019) as applied to claims 1-6, 9-14 and 16 above, and further in view of Matsuda (US 2017/0368374, published December 28, 2017).
The teachings of Aspern, Sirota and Torres have been described supra.
They do not teach a sunscreen inclusive of octocrylene as required by claims 7, 8.
They do not teach 1,1-difluroethane as required by instant claim 15.
These deficiencies are made up for in the teachings of Matsuda.
Matsuda teaches an aerosol cosmetic having high UV blocking properties (title; abstract; claims). Exemplary UV absorbers include octocrylene (paragraph [0011]), as required by instant claims 7, 8. Exemplary propellants include hydrofluorocarbons such as 1,1-difluoroethane (paragraph [0027]), as required by instant claim 15.
Regarding claims 7 and 8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute UV absorbers inclusive of octocrylene for the sunscreen care substances of the compositions of Aspern in view of Sirota and Torres because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Regarding claim 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute propellants inclusive of hydrofluorocarbons such as 1,1-difluoroethane for the propellants of the aerosol compositions of Aspern in view of Sirota and Torres because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/878,360 in view of Matsuda (US 2017/0368374, published December 28, 2017).
The instant claims are drawn to compositions comprising a volatile solvent, a polyvinyl alcohol having a degree of hydrolysis of 60% or less or polyvinyl alcohol ester other than acetate soluble in the volatile solvent, and at least one sunscreen. The volatile solvent may be alcohol-based comprising ethanol or may comprise 0 to 20 wt% water. The sunscreen may be inter alia octocrylene. The compositions may be sprayable or comprise propellants such as dimethyl ether or/and 1,1-difluoroethane. The compositions may further comprise inter alia UV absorbers. The compositions may be used with circumscribed devices.
The copending ‘360 claims are drawn to compositions comprising a volatile solvent and a polyvinyl alcohol having a degree of hydrolysis of 60% or less or polyvinyl alcohol ester other than acetate soluble in the volatile solvent. The volatile solvent may be alcohol-based comprising ethanol or may comprise 0 to 20 wt% water. The compositions may be sprayable or comprise propellants such as dimethyl ether. The compositions may further comprise inter alia UV absorbers. The compositions may be used with circumscribed devices.
The instant claims differ from the copending claims with respect to the species of sunscreens and species of propellant, however, these differences are obvious in view Matsuda as elaborated supra. It would have been obvious to modify the compositions of the copending claims to comprise sunscreens inclusive of octocrylene as taught by Matsuda in order to reap the expected benefit of sun protection and it would have been obvious to modify the compositions of the copending claims to comprise propellants inclusive of 1,1-difluoroethane as taught by Matsuda because substitution of equivalents is presumptively obvious. See MPEP 2144.06 and 07.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Waxman et al. (US 4,567,035) teaches hair spray resins comprising vinyl ester monomers other than acetate (title; abstract; claims).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
