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 1-17 are currently pending and a preliminary amendment to the claims
filed on 12/26/2024 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/26/2024 was filed before the mailing date of the instant first action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Claim Objections
Claims 1-17 are objected to a minor informality under 37 CFR 1.75.
Claim 1 would be better to write “A composition …” and its dependent claims 2-16 would be better to write “The composition …” and claim 17 would be better to write “the composition according to claim 1” instead of “a composition according to claim 1.
Appropriate correction is requested.
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.
Claim 2 is 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 2 recites “the C12-C22 dialkyl carbonate …”, but it lacks of antecedent basis, because base claim 1 requires “at least one C12-C22 diakyl carbonate” and thus ambiguity arises to determine whether “the” limitation of dependent claim 2 refers to one or more than one element that is previously presented, either in the same claim or a preceding claim. See also MPEP 2173.05(e). Applicant may amend the claims to recite either “said at least one C12-C22 dialkyl carbonate” or “the at least C12-C22 dialkyl carbonate”.
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.
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 1-7, 9-14, and 17are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IP.com “Suncare compositions (16)”, 2018, pp. 1-45 (IDS of 12/26/2024).
Applicant claims the below filed on 12/26/2024:
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Prior Art
IP.com discloses suncare composition (title and entire document), and in one embodiment on page 7, the below high performing shake well SPF 50 composition is provided: the composition is free of silicone, and comprises A phase containing 6% dicaprylyl carbonate that reads on the claimed ingredient A)i) and its amount is within the claimed range of 5-20%, 6% coco-caprylate/caprate that reads on the claimed ingredient A)ii) and its amount is within the claimed range of 2-20%, 8% undecane and tridecane that reads on the claimed linear volatile hydrocarbon-based oil ingredient A)iii) and its amount is within the claimed range of 2-20%; C phase containing 31.50% aqueous liquid water that reads on the claimed aqueous phase dispersed in said oily phase (B) and its amount is within the claimed range of 20-50%; 1% PEG-30 dipolyhydroxystearate for emulsifier (W/O) that reads on the claimed non-ionic surfactant C) and the amount is within the claimed 0.1 to 10%; D phase contains 10% Tinosorb®M containing organic pigment filter methylene bis-benzotriazolyl tetramethylbutylphenol that reads on the claimed D) as evidenced by US2020/0038301A1, [0002] stating that Tinosorb®M acts as both a micropigment and an UV absorber, and its amount 10% is within the claimed range of 0.5-30% (instant claims 1-7 and 9-12); and the composition further additives such as ethylhexyl methoxycinnamate as UVB filter, zinc oxide as inorganic UV filter, glycerin humectant, magnesium stearate as stabilizer, preservatives, fragrance, etc.; and the composition is implicitly applied to skin (instant claims 13, 14, and 17).
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In light of the foregoing, instant claims 1-7, 9-14 and 17 are anticipated by IP.com.
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.
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 1-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al. (US2020/0138681A1) in view of IP.com “Suncare compositions (16)”, 2018, pp. 1-45 (IDS of 12/26/2024).
Applicant claims the below filed on 12/26/2024:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a suncare composition research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01);
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02); and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
Shah discloses mineral sunscreen compositions free of silicone (claim 3 of prior art) in the form of a water-in-oil emulsion comprising dicaprylyl carbonate (e.g., [0017] and claim 9 of prior art) (instant claim 1 –A)i) C12-C22 dialkyl carbonate), glyceryl tri (caprate/caprylate) ([0239]) (instant claim 1, in part – A)ii); and hydrocarbon based oil such as isododecane (C12) and isohexadecane (C16) that reads on the claimed volatile branched C8-C16 (instant claims 1 and 8 – A)(iii); the composition further comprises a water phase of about 20 to about 60% that reads on the claimed aqueous phase and its amount overlaps the instant range of 20-50% (abstract, claim 1 of prior art) (instant claims 1-2 and 11 – B) aqueous phase); the composition further contains non-ionic surfactant (e.g., [0050]) (instant claim 1, in part – C) non-ionic emulsifying agent); the composition further contains one or more mineral inorganic colorant selected from titanium dioxide, zinc oxide, iron oxides, … and mixtures thereof (e.g., [0019] and [0064]-[0065]) in an amount of about 1 to about 25% that is within the claimed range of 0.3 to 30% (e.g., [0019]) (instant claims 1 and 12 – D) at least one pulverulent colorant); the composition further comprises active agent including ceramide (e.g., [0263]-[0263]), colorant, gelling agent, fragrances, preservatives, and combinations thereof (e.g., [0265]-[0266]) (instant claim 13); the composition further comprises at least one inorganic UV screening agents (e.g., [0065]) (instant claim 14); and the composition in cosmetically acceptable carrier is applied to skin or keratin materials and coated (e.g., [0001], [0017] and [0038]) (instant claim 17). Shah discloses overlapping amounts of (A)-(D) as noted above. MPEP 2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
However, Shah does not expressly teach ingredient A)ii) of instant claims 1 and 4-5; linear volatile alkane comprising 6-7 and its amount of instant claim 9; and ingredient C) and its amount of instant claims 1 and 10. The deficiencies are cured by IP.com.
IP.com discloses suncare composition (title and entire document), and in one embodiment on page 7, the below high performing shake well SPF 50 composition is taught: the composition is free of silicone, and comprises 6% coco-caprylate/caprate that reads on the claimed ingredient A)ii) and its amount is within the claimed range of 2-20%, 8% undecane and tridecane that reads on the claimed ingredient A)iii) and its amount is within the claimed range of 2-20%; and 1% PEG-30 dipolyhydroxystearate for emulsifier (W/O) that reads on the claimed non-ionic surfactant C) and its amount is within the claimed 0.1 to 10% (instant claims 1, 4, 5-7 and 9-12). MPEP 2144.05 noted above.
It would have been obvious to modify sunscreen composition of Shah with ingredient A)ii), linear volatile alkane, and PEG-30 polyhydroxystearate of IP.com in order to enhance the properties of composition.
In light of the foregoing, instant claims 1-14 and 17 are obvious over Shah in view of IP.com.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Shah et al. (US2020/0138681A1) in view of IP.com “Suncare compositions (16)”, 2018, pp. 1-45 (IDS of 12/26/2024) and further in view of Ferreira et al. (WO2017/112982A1).
However, Shah does not expressly teach specific filler of instant claim 15. The deficiency is cured by Ferreira.
Ferreira discloses a cosmetic composition in the form of water-in-oil containing at least one or more UV filter, and at least a first silica aerogel particles in a cosmetically acceptable aqueous carrier and the composition exhibits an SPF that is greater than an SPF exhibited by an identical composition (Abstract).
It would have been obvious to further add silica aerogel particles of Ferreira to the composition of Shah in view of IP.com. in order to enhance SPF function as taught by Ferreira.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Shah et al. (US2020/0138681A1) in view of IP.com “Suncare compositions (16)”, 2018, pp. 1-45 (IDS of 12/26/2024) and further in view of Gray et al. (US2012/0258055A1).
However, Shah/IP.com does not expressly teach lipophilic clay of instant claim 16. The deficiency is cured by Gray.
Gray discloses mineral sunscreen composition and process for protecting skin from photodamage and aging (title); the composition comprises oil phase thickening agent such as activated clay, inorganic sun screen active, emulsifier, volatile solvent, dispersing agent, and water (abstract); the clay includes those which are the reaction products of bentonite clays and quaternium ammonium salts, hectorite clays and quaternium ammonium salts, or montmorillonite clays and quaternium ammonium salts, and the organoclay may be selected from the group consisting of disteardimonium hectorite, stearalkonium hectorite, quaternium-18 bentonite, quaternium-18 hectorite, and benzalkonium bentonite ([0033]), which reads on the claimed lipophilic clay as supported by the instant publication at [0222] and the activated clay structure entraps the sunscreen microparticles and prevents them from re-agglomerating and settling while the product is not being used ([0027]).
It would have been obvious to further add activated clay of Gray to the composition of Shah/IP.com in order to prevent sunscreen microparticles from re-agglomerating and settling as taught by Gray.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending application No. 18/878960.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claims set require continuous phase comprising at least one C12-C22 dialkyl carbonate, at least one mixture of esters of C8-10 carboxylic acids and of fatty alcohols derived from coconut oil, at least one volatile hydrocarbon-based oil; aqueous phase; at least one emulsifying non-ionic surfactant of PEG ester polymer; at least one pulverulent colorant; active agent and additives; silica aerosol particles; and lipophilic clays. The difference between them copending ‘860 further requires a mixture of C15-C19 alkanes. However, the claimed invention uses “comprising” which does not exclude introduction of such additional ingredient(s).
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Conclusion
All the examined claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/ Primary Examiner, Art Unit 1613
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