otice 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 1-11 as filed December 27, 2024 are under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 27, 2024 was 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 limited to a single paragraph. Additionally, the first sentence / paragraph is incomplete and the second sentence / paragraph is merely a reproduction of claim 1. Correction is required. See MPEP § 608.01(b).
The use of terms such as Salacos® (e.g., paragraph [0038]), which is a trade name or a mark used in commerce, has been noted in this application. These terms should be accompanied by the generic terminology; furthermore these terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1, 2, 5 and 8 are objected to because of the following informalities:
Claim 1: “a content” in the wherein clauses is properly “the content” because antecedent basis is implicit.
Claim 2: “particles” should be inserted after the 2nd and 3rd recitations of “zinc oxide”.
Claim 5: “a content” is properly “the content” and “a total content” is properly “the total content”.
Claim 8: “a total content” is properly “the total content”.
Appropriate correction is required.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 1-11 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 pre-AIA the applicant regards as the invention.
Claim 1 recite a water-in-oil type emulsion. It is unclear whether “type” is intended to modify “water-in-oil” or “emulsion” and it unclear how a water-in-oil type emulsion differs from a water-in-oil emulsion per se. Claims 2-11 are included in this rejection because they depend from claim 1 and because they do not remedy the noted ambiguity.
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 1-5, 7-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara (WO 2021/13244 A1, published July 1, 2021, as evidenced by US 2023/0048396) in view of Sayer et al. (US 2015/0209260, published July 30, 2015).
Kurihara teaches water-in-oil type emulsified sunscreen cosmetics comprising (title; abstract; claims), as required by instant claim 11:
10 to 50 wt% hydrophobized (surface-treated) ultraviolet scattering agent selected from the group inclusive of zinc oxide or/and titanium oxide (claim 3; paragraphs [0013]-[0014]), as required by instant claim 5;
dipolyhydroxystearic acid ester;
35 to 85 wt% liquid oil (paragraph [0052]); and
0.1 to 25 wt% water (aqueous component) (claim 14; paragraph [0064]), as required by instant claim 7.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
The hydrophobization of the UV scattering agent may be performed using known surface treatments inclusive of silane coupling treatment or metal soap (fatty acid) treatment (paragraphs [0019]-[0020]), as required by instant claims 2, 4. Silane compounds include alkylalkoxysilanes inclusive of octyltriethoxysilane (triethoxycaprylylsilane) (paragraph [0030]), as required by instant claim 3. Kurihara exemplifies octyltriethoxysilane treated zinc oxide and aluminum stearate treated titania (e.g., Table 1), as required by instant claims 2-4. Kurihara exemplifies embodiments of compositions comprising 10 wt% aluminum stearate treated titania and 20 wt% octyltriethoxysilane treated zinc oxide (less titania than zinc oxide) (e.g., Table 1, Example 4), as required by instant claim 5. Kurihara further teaches these treatments impact dispersion stability (paragraphs [0020], [0030], [0032]).
Liquid oils include volatile oils inclusive of light isoparaffins (hydrocarbon oils) or/and non-volatile oils inclusive of fatty acid ester oils inclusive of triglycerides (paragraphs [0051]-[0057]), as required by instant claim 9.
The compositions may further comprise surfactants inclusive of polyhydric alcohol fatty acid esters inclusive of glycerol fatty acid esters or/and polyglycerol fatty acid esters for improving water resistance and powder dispersibility (paragraphs [0066], [0080]-[0087]). These additional surfactants may be present in amounts up to 10 wt% (paragraph [0088]).
The compositions may further comprise oily thickeners inclusive of organically modified clay minerals (paragraph [0095]).
Kurihara does not teach polyhydroxystearic acid (0 wt%).
Kurihara does not teach polyricinoleic acid polyglycerol ester as required by claim 1.
Kurihara does not teach 1.5 to 10 wt% polyricinoleic acid polyglycerol ester and polyhydroxystearic acid as required by claim 8.
These deficiencies are made up for in the teachings of Sayer.
Sayer teaches particulate metal oxide particles inclusive of titania or/and zinc oxide suitable for sunscreens, especially in the form of water-in-oil emulsions (title; abstract; claims; paragraphs [0012], [0075]). The particles may be dispersed in liquid media with a dispersing agent which is preferably polyglyceryl-3 polyricinoleate (polyricinoleic acid polyglycerol ester) or polyhydroxystearic acid, however, polyglyceryl-3 polyricinoleate is particularly preferred (paragraphs [0066]-[0073]). The dispersing agent is present from 1 to 30 wt% of the total weight of the metal oxide particles (paragraph [0069]). An advantage is that dispersions can be produced which contain at least 30 wt% and generally up to 60 wt% of metal oxide particles based on the total weight of the dispersion (paragraph [0072]).
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 Kurihara comprising 10 to 50 wt% hydrophobized scattering agent inclusive of zinc oxide and titania (metal oxides) to further comprise 1 to 30 wt% dispersing agents inclusive of polyglyceryl-3 polyricinoleate (polyricinoleic acid polyglycerol ester) relative to the total weight of metal oxide particles (implies 0.01*10 ~= 0.1 wt% to 0.30*50 ~= 15 wt% relative to the compositions) as taught by Sayer in order to improve the dispersion stability of the hydrophobized ultraviolet scattering agents. There would be a reasonable expectation of success because Kurihara embraces the presence of polyglycerol fatty acid esters for improving powder dispersibility.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kurihara (WO 2021/13244 A1, published July 1, 2021, as evidenced by US 2023/0048396) in view of Sayer et al. (US 2015/0209260, published July 30, 2015) as applied to claims 1-5, 7-9 and 11 above, and further in view of Onodera (JP 2017-178848 A, published October 5, 2017, as evidenced by the Google translation).
The teachings of Kurihara and Sayer have been described supra.
They do not teach distearyldimonium hectorite as required by claim 6.
This deficiency is made up for in the teachings of Onodera.
Onodera, as referenced in paragraph [0003] of Kurihara, teaches water-in-oil emulsion compositions inclusive of sunscreens comprising inter alia an organically modified clay material inclusive of disteardimonium hectorite (title; abstract; claims; page 3, lower half).
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 organically modified clay minerals of the compositions of Kurihara in view of Sayer to comprise disteardimonium hectorite as taught by Onodera because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kurihara (WO 2021/13244 A1, published July 1, 2021, as evidenced by US 2023/0048396) in view of Sayer et al. (US 2015/0209260, published July 30, 2015) as applied to claims 1-5, 7-9 and 11 above, and further in view of Kaneko et al. (US 2021/0022974, published January 28, 2021).
The teachings of Kurihara and Sayer have been described supra.
They do not teach bis-diglyceryl polyacyladipate-2 as required by claim 10.
This deficiency is made up for in the teachings of Kaneko.
Kaneko teaches a cosmetic excellent in dispersion stability inclusive of a water-in-oil emulsion comprising a metal oxide particle selected from titania or/and zinc oxide and comprising a paste oil selected from inter alia glycerin fatty acid esters and comprising an acrylates polymer (title; abstract; claims). Suitable glycerin fatty acid esters include bis-diglyceryl polyacyladipate-2 (paragraphs [0025]-[0026]; Example 10).
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 Kurihara in view of Sayer to further comprise a paste oil inclusive of bis-diglyceryl polyacyladipate-2 and acrylates polymer as taught by Kaneko in order to improve the dispersion stability of the hydrophobized ultraviolet scattering agents. There would be a reasonable expectation of success because Kurihara embraces the presence of glycerol fatty acid esters for improving powder dispersibility.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/879,427 in view of Kurihara (WO 2021/13244 A1, published July 1, 2021, as evidenced by US 2023/0048396), Sayer et al. (US 2015/0209260, published July 30, 2015) and Onodera (JP 2017-178848 A, published October 5, 2017, as evidenced by the Google translation).
The instant claims are drawn to a water-in-oil type emulsion comprising surface-treated zinc oxide particle, surface-treated titania particles, less than 1 wt% polyhydroxystearic acid, polyricinoleic acid polyglycerol ester, an organically modified clay mineral, less than 15 wt% of an aqueous component, and a liquid oil. The surface-treated zinc oxide particles may include those comprising a silane coupling treatment inclusive of triethoxycaprylylsilane. The surface-treated titania particles may include those comprising a fatty acid. The emulsions may comprise less surface-treated titania particles than surface-treated zinc oxide particles and may comprise at least 30 wt% of surface-treated particles. The clay mineral may comprise distearyldimonium hectorite. The emulsions may comprise 1.5 to 10 wt% of polyhydroxystearic acid and polyricinoleic acid polyglycerol ester. The liquid oil may comprise triglycerides. The emulsions may further comprise bis-diglyceryl polyacyladipate-2 or the emulsions may be sunscreens.
The copending ‘427 claims are drawn to compositions comprising UV scattering particles, bis-diglyceryl polyacyladipate-2 and a liquid oil. The UV scattering particles may comprise triethoxycaprylylsilane treated zinc oxide or/and fatty acid treated titania or may comprise at least 10 wt% of the compositions. The compositions may further comprise an aqueous component, 0.5 to 10 wt% of a dispersing agent inclusive polyhydroxystearic acid, or may be a water-in-oil type emulsion or a sunscreen. The liquid oil may be a triglyceride.
The instant claims are therefore a species falling within the genus of the copending claims. The copending claims differ from the instant claims with respect to the polyricinoleic acid polyglycerol ester and amount thereof, with respect to the organically modified clay material and species thereof, with respect to the amount of aqueous phase, and with respect to the condition that there is less titania than zinc oxide. However, these differences are obvious in view of the prior art. It would have been obvious to modify the compositions of the copending claims inclusive of the water-in-oil type emulsions to comprise 10 to 50 wt% of the UV scattering particles and to include combinations thereof such as 10 wt% aluminum stearate treated titania and 20 wt% octyltriethoxysilane (triethoxycaprylylsilane) treated zinc oxide and to comprise 0.1 to 25 wt% water as taught and as exemplified by Kurihara because such is suitable for forming a sunscreen in the form of a water-in-oil emulsion. It would have been obvious to modify the water-in-oil type emulsions of the copending claims in view of Kurihara to further comprise thickeners inclusive of organically modified clay minerals as taught by Kurihara such as disteardimonium hectorite as taught by Onodera in order to control viscosity. It would have been obvious to modify the water-in-oil type emulsions of the copending claims in view of Kurihara and Onodera to further comprise dispersants inclusive of polyglyceryl-3 polyricinoleate (polyricinoleic acid polyglycerol ester) in amounts as taught Sayer in order to improve the stability of the dispersed UV scattering particles.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/510,815 in view of Kurihara (WO 2021/13244 A1, published July 1, 2021, as evidenced by US 2023/0048396), Sayer et al. (US 2015/0209260, published July 30, 2015), Onodera (JP 2017-178848 A, published October 5, 2017, as evidenced by the Google translation) and Kaneko et al. (US 2021/0022974, published January 28, 2021).
The instant claims are drawn to a water-in-oil type emulsion comprising surface-treated zinc oxide particle, surface-treated titania particles, less than 1 wt% polyhydroxystearic acid, polyricinoleic acid polyglycerol ester, an organically modified clay mineral, less than 15 wt% of an aqueous component, and a liquid oil. The surface-treated zinc oxide particles may include those comprising a silane coupling treatment inclusive of triethoxycaprylylsilane. The surface-treated titania particles may include those comprising a fatty acid. The emulsions may comprise less surface-treated titania particles than surface-treated zinc oxide particles and may comprise at least 30 wt% of surface-treated particles. The clay mineral may comprise distearyldimonium hectorite. The emulsions may comprise 1.5 to 10 wt% of polyhydroxystearic acid and polyricinoleic acid polyglycerol ester. The liquid oil may comprise triglycerides or/and hydrocarbon oils. The emulsions may further comprise bis-diglyceryl polyacyladipate-2 or the emulsions may be sunscreens.
The copending ‘815 claims are drawn to water-in-oil type emulsions comprising an oily medium comprising at least a polar oil or a hydrocarbon oil, UV scattering particles dispersed in the oily medium, a dispersant comprising polyhydroxystearic acid or/and polyglyceryl polyricinoleate, and water. The UV scattering particles may comprise titania or/and zinc oxide. The emulsions may comprise less than 30 wt% water or may be a sunscreen.
The instant claims are therefore a species falling within the genus of the copending claims. The copending claims differ from the instant claims with respect to the surface treatments of the particles, with respect to the organically modified clay material and species thereof, with respect to the condition that there is less titania than zinc oxide and the total amount of particles, with respect to the amount of polyricinoleic acid polyglycerol ester and with respect to the bis-glyceryl polyacyladipate-2. However, these differences are obvious in view of the prior art. It would have been obvious to modify the composition water-in-oil type emulsions of the copending claims to comprise 10 to 50 wt% of the UV scattering particles and to include combinations thereof such as 10 wt% aluminum stearate treated titania and 20 wt% octyltriethoxysilane (triethoxycaprylylsilane) treated zinc oxide as taught and as exemplified by Kurihara because such is suitable for forming a sunscreen in the form of a water-in-oil emulsion. It would have been obvious to modify the water-in-oil type emulsions of the copending claims in view of Kurihara to further comprise thickeners inclusive of organically modified clay minerals as taught by Kurihara such as disteardimonium hectorite as taught by Onodera in order to control viscosity. It would have been obvious to modify the water-in-oil type emulsions of the copending claims in view of Kurihara and Onodera to further comprise dispersants inclusive of polyglyceryl-3 polyricinoleate (polyricinoleic acid polyglycerol ester) in amounts as taught Sayer in order to improve the stability of the dispersed UV scattering particles. It would have been obvious to modify the water-in-oil type emulsions of the copending claims in view of Kurihara, Onodera and Sayer to further comprise a paste oil inclusive of bis-glyceryl polyacyladipate-2 and an acrylates copolymer as taught by Kaneko in order to improve the stability of the dispersed UV scattering particles.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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
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