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 .
Claim Status
Claims 1-16 and 18 are pending.
Claims 1-16 and 18 are examined on the merits hereof.
Claim 17 is withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-16, and 18 in the reply filed on 15-May-2026 is acknowledged. The traversal is on the ground(s) that the claims of Groups I and II allegedly encompass overlapping subject matter related to coated zinc oxide and hydrophobically-modified polymeric thickeners. This is not found persuasive because the claimed inventions remain distinct as presented, with Group I directed to sunscreen compositions specific emulsification systems and SPF performance, while Group II is directed to a metastable structured emulsion formed through the interaction between hydrophobic polymeric thickeners and coated metallic particles and whitening reduction functionality.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 04-Oct-2024 has been considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 2 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 2 is dependent on Claim 1, and recites a SPF of greater than or equal to 15, while claim 1 already recites the limitation of SPF greater than or equal to 40. 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 3 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 3 is dependent on Claim 1, and recites a SPF of greater than or equal to 30, while claim 1 already recites the limitation of SPF greater than or equal to 40. 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
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.
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 the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 1-4, 6-9, 11-12, and 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maron (US12589059, Patent Filed: 30-Sep-2021).
In regards to Claim 1-4, and 6, Maron teaches an oil in water emulsion sunscreen composition in Example 2 comprising zinc oxide and triethoxycaprylylsilane as a physical UV attenuating material, the zinc oxide coated with triethoxycaprylylsilane having a mean particle diameter of 10-30 nm, steareth-20 with a HLB greater than 13, steareth-2 with a HLB less than 6, hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer as an aqueous phase anionic polymeric thickener comprising carboxylic acid residues, overlapping ratio of high and low HLB emulsifiers to hydrophobically modified anionic polymeric thickener (Ratio = 2 wt% Steareth-20 and Steareth-2: 0.3 wt% hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer = 1.0:0.15), SPF of 50 or greater, and zinc oxide as the sole mineral UV filter active in conjunction with organic UV filters, providing for the inherent properties of zinc oxide satisfying the critical wavelength and UVA-I/UV ratio limitations (Example 2, Table 2, Col 21-22).
In regards to Claim 7, Maron teaches a zinc oxide and triethoxycaprylylsilane in Example 2 (Table 2, Col 21-22), and discloses that the inorganic UV filters is present in the range from about 1% to 25% (Col 8, line 22-24).
In regards to Claim 8, Maron teaches in Example 2 hydroxyethyl acrylate/sodium acryloyldimethyl taurate as an aqueous phase thickener that functions as a polymeric emulsifier (Example 2, Table 2, Col 21-22).
In regards to Claim 9, Maron teaches in Example 2 C12-22 alkyl acrylate/hydroxyethyl acrylate copolymer thickener (Example 2, Table 2, Col 21-22).
In regards to Claim 11, Maron teaches in Example 2 xanthan gum as a rheology modifier at 0.2 wt% (Example 2, Table 2, Col 21-22).
In regards to Claim 12, Maron teaches diethylhexyl syringylidenemalonate and ethylhexyl methoxycrylene as an organic UV agent and SPF booster (Example 2, Table 2, Col 21-22).
In regards to Claim 14-15, Maron teaches additives such as glycerin, propanediol, chlorphenesin, hydroxyacetophenone, citric acid, and xanthan gum (Example 2, Table 2, Col 21-22).
In regards to Claim 16, Maron teaches a phase ratio of aqueous components to oil components of a ratio greater than 1:1 and less than 4:1 (Example 2, Table 2, Col 21-22).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 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 pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 1, 5, 9-10, 13 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maron et al., and further in view of Robinson (US005972316, Patent filed: 05-Mar-1999) and Chiarelli et al. (US006464965, Patent Published 01-Apr-1999).
Maron teaches the mineral sunscreen composition comprising of a physical UV mineral, an emulsifier system, a polymeric thickener, and specific ratio of emulsifier to polymeric thickener as applied to claim 1 discussed above.
In regards to Claim 5, Maron teaches optional organic UV filters in the composition of Example 2.
In regards to Claim 9-10, Maron teaches a water in oil emulsion sunscreen composition comprising an emulsion system and C12-22 alkyl acrylate/hydroxyethyl acrylate copolymer of Example 2 (Example 2, Table 2, Col 21-22).
In regards to Claim 13, Maron teaches coco-caprylate/caprate as an emollient at 5 wt% (Example 2, Table 2, Col 21-22).
In regards to Claim 18, Maron teaches an oil in water emulsion sunscreen composition in Example 2 comprising zinc oxide and triethoxycaprylylsilane as a physical UV attenuating material, the zinc oxide coated with triethoxycaprylylsilane having a mean particle diameter of 10-30 nm, steareth-20 with a HLB greater than 13, steareth-2 with a HLB less than 6, C12-22 alkyl acrylate/hydroxyethyl acrylate copolymer, polyhydroxystearic acid, xanthan gum, diethylhexyl syringylidenemalonate, ethylhexyl methoxycrylene, glycerin, propanediol, chlorphenesin, overlapping ratio of high and low HLB emulsifiers to hydrophobically modified anionic polymeric thickener (Ratio = 2 wt% Steareth-20 and Steareth-2: 0.3 wt% hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer = 1.0:0.15), SPF of 50 or greater, and zinc oxide as the sole mineral UV filter active in conjunction with organic UV filters, providing for the inherent properties of zinc oxide satisfying the critical wavelength and UVA-I/UV ratio limitations (Example 2, Table 2, Col 21-22).
However, Maron teaches in Example 4 a composition using inorganic UV filters without organic UV filters (Example 4, Table 4) and further teaches that organic UV filters are optional ingredients (Col 11-13). Maron does not teach the emulsion system comprising glyceryl stearate, steareth-2, steareth-20, and polysorbate 20 or acrylates/C10-30 alkyl acrylate crosspolymer of claims 9-10. Maron does not teach dicaprylyl carbonate in Example 2, but does teach dicaprylyl carbonate (Col 17, line 27) can be added as an additional performance enhancer of claim 13. Maron does not teach titanium oxide, polysorbate 20, and glyceryl stearate in Example 2, but does teach titanium dioxide can be used as an UV filter (Col 8, line 10) and glyceryl stearate in Example 4 (Example 4, Table 4) of claim 18. For this reason, Robinson and Chiarelli are added.
Robinson teaches a water in oil emulsion sunscreen compositions and teaches explicitly that polysorbate 20 is a suitable emulsifier (Col 14, line 31). Chiarelli teaches C10-30 alkyl acrylate crosspolymer with zinc oxide in a sunscreen composition (Col 3, line 4-5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sunscreen composition of Maron by combining known sunscreen formulation ingredients taught in Maron, Robinson, and Chiarelli. Maron teaches nanosized zinc oxide sunscreen emulsions have high SPF, broad spectrum UV protection, emulsifiers, polymeric thickeners, and emollients, Robinson teaches polysorbate 20 as a suitable emulsifier for sunscreen emulsifications, and Chiarelli teaches the use of C10-30 alkyl acrylate crosspolymer with zinc oxide in sunscreen compositions. A person having ordinary skill in the art would have been motivated to incorporate these known ingredients into Maron’s sunscreen formulations to obtain predictable improvements in emulsion stability, dispersion of mineral UV filters, and viscosity control. The references are all directed to the same field of sunscreen emulsion formulations and describe the individual components performing in their known and expected functions. The claimed combination represents routine selection and combination of known formulation ingredients yielding predictable results. For the forgoing reasons, Claims 1, 5, 9-10, 13, and 18 are rendered obvious by the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENHAN LI whose telephone number is (571)272-9143. The examiner can normally be reached Monday-Friday 7:30 am-5 pm EST.
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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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/W.L./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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