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 .
Summary
Claims 1 - 13 and 15 - 21 are pending in this office action. Claim 13 is cancelled. All pending claims are under examination in this application.
Response to Amendment
Applicant’s response of September 8, 2026, has been received and entered into the application file.
Applicant’s amendments have overcome 112(b) rejections previously set forth in the Non-Final Office Action mailed June 10, 2026. Examiner agrees that the definition of “essentially contains” obviates the indefiniteness rejection. New claim 19 has a “preferably” in it, that is newly rejected below. Examiner appreciates the arguments made but finds them unpersuasive, explanation is after the repeated 103 rejections.
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 19 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.
The word "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The claim is being examined as if the word “preferably” is not there, that is, the coating agents are being treated as actual claim limitations.
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.
Claims 1-12, 15-17, 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Lange et al. (WO 2022122894 A1, published 2022-06-16) in view of Youssef et al. (US 20160367448 A1, published 2016-12-22), Wu et al. (WO 2023039220 A1, published 2023-03-16), Sakanishi et al. (WO 2015037493 A1, published 2015-03-19) and Ricard et al. (WO 2014136061 A2, published 2014-09-12).
Lange et al. (WO 2022122894 A1, published 2022-06-16) teach sunscreen comprising UV filters and two or more alkane diols. The UV filters may be titanium oxide and zinc oxide, see paragraph [0212] and the alkane diols are preferably C 5-14 carbon diols, preferably a mixture of 1,2 and 2,3 diols. Thickeners are taught that include polyacrylamide, paragraph 0292. Paragraph 0312 discusses addition of other polyols including glycerol and ethylene glycol.
Paragraph [0317] says the total amount of the first and second diol can be 0.1-5% or 0.3-3% or 0.5-1%. Paragraph [0345] discussed the desirability of having the composition in an emulsion form.
Youssef et al. (US 20160367448 A1, published 2016-12-22) teach a stable sunscreen composition in the form of water releasing emulsion containing high levels of liposoluble UV filters. The compositions also comprise polyols, preferably at least 2, Paragraphs [0043] - [0044], including glycerol, propylene glycol. They prefer one containing 3 carbon atoms and another polyol containing more than 3 carbon atoms. Table 4 indicates that examples 8-11 contain glycerin (also called glycerol, C3H5(OH)3) and propanediol, this meets the limitation of new claim 20. Paragraph [0157] allows for the presence of powders including metal oxides including zinc oxide and carboxyvinyl polymer. They are silent as to this but carboxyvinyl polymers are known as thickeners (see Wu et al. below)
Wu et al. (WO 2023039220 A1, published 2023-03-16) teach personal care compositions that include, inter alia, mineral UV filtering agents including treated or untreated metal oxides such as, for example, titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide. paragraph [0075] teaches the size of the mineral UV filtering agents can be about 5 nm to 25 microns, including specifically 5-100 nm, 5 nm to about 75 nm, or about 10 nm to 50 nm. paragraph [0076] teaches the total amount of mineral UV filtering agents in the personal care composition can vary but is typically about 1 to about 30 wt. %, based on the total weight of the personal care composition, see paragraph [0091]. The personal care compositions may include thickeners such as carbomers (e.g., carboxyvinyl polymers). Table 1 shows that example A contains both propylene glycol and caprylyl glycol, illustrating the concept of two polyols being present.
Sakanishi et al. (WO 2015037493 A1, published 2015-03-19, text of teachings taken from pdf document entitled translation of Sakanishi) teach improvement in properties of metal oxide particles by coating them with other inorganic compounds, for example titanium oxide or zinc oxide coated with alumina or silica, see translation pdf document, page 2, fifth and sixth full paragraphs. They teach thickeners including carboxyvinyl polymers, see page 4, fifth full paragraph; the amount is taught three paragraphs below to be 0.01-5% by weight.
Ricard et al. (WO 2014136061 A2, published 2014-09-12) teach cosmetic compositions in the form of an emulsion (sunscreen function is mentioned at page 9, line 4) where a preferred thickener is at least one 2-acrylamido-2-methylpropanesulphonic acid polymer. Stability of the emulsions is discussed on page 4, lines 12-13. They discuss the preferred presence of at least one polyol, especially a mixture of polyols, which are moisturizers or humectants; they list a number of specific polyols that are preferred, see pages 39-40. with regard to claim 6, Ricard et al. state that the compositions in accordance with the invention may comprise organic and/or inorganic UV sunscreen ingredients; clearly, compositions are contemplated that do not contain organic UV sunscreen agents.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to formulate a sunscreen composition comprising physical UV-attenuating material such as zinc oxide, coated or uncoated, at least two polyols comprising glycerol and another diol with polyacrylate thickener such as 2-acrylamido-2-methylpropanesulphonic acid with the expectation of achieving a superior sunscreen composition. The references teach the advantages of having the two polyols, as well as the metal oxide sunblockers as well as the specific thickener.
With regard to claim 10, none of the references require zinc oxide surface treated with triethoxycaprylylsilane.
With regard to new claim 21, the amounts of thickener and polyols are disclosed and, by calculation, the claimed ratios are represented. Clearly, the ratio is a result-effective variable and therefore, it would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to vary the ratio of ingredients to achieve optimal thickening. Also, no criticality has been shown for the claimed ratios.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lange et al. (WO 2022122894 A1, published 2022-06-16) in view of Youssef et al. (US 20160367448 A1, published 2016-12-22), Wu et al. (WO 2023039220 A1, published 2023-03-16), Sakanishi et al. (WO 2015037493 A1, published 2015-03-19) and Ricard et al. (WO 2014136061 A2, published 2014-09-12) as applied to claims 1-12, 15-17, 20 and 21 above, and further in view of Frerichs et al. (US 20080299056 A1, published 2008-12-04).
This is the same rejection from the previous office action except the claim numbers are changed to reflect the amendments.
The teachings of the basic references are outlined above.
Frerichs et al. teach passivation of ZnO or TiO for use in sunscreens; it would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to use passivated metal oxides in sunscreen formulations to achieve the advantages detailed in paragraph [0007].
In paragraph [0011] they state, “forming silica coated titanium dioxide nanoparticles”, thus meeting the limitation of claim 19 of the coating agent being silica.
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 1-13 and 15-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/906303 in view of Wu et al.
Patent application 18/906303 contains claims that track the instant claims except that they require a polysaccharide thickener. Wu et al. teach the interchangeability of polysaccharide thickeners and polyacrylate thickeners in paragraph [0091]; it would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to substitute polysaccharide for the polyacrylate of the instant application.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed September 8, 2026 have been fully considered but they are not persuasive.
With regard to the obviousness rejections, the primary argument appears to be that because Lange et al. requires heptanediols in their compositions that addition of glycerin and that thickeners are irrelevant to Lange et al. Therefore, one of ordinary skill in the art would haven no motivation to optimize the thickener in the absence of hepatanediols.
Examiner submits that this argument focuses solely on the “first aspect” of Lange et al. That aspect does require the two heptanediols referenced in the arguments. However, Lange et al. also have a second aspect, which is what the rejection focuses on, that includes “a mixture comprising at least one first linear alkanediol and one or more second linear alkanediol,” see paragraph [0021]. When the focus is on that alternative, the instant claim limitations reflect the teachings of Lange et al. and the secondary references.
With regard to the nonstatutory double patenting rejection, applicant argues that the claims have been amended to recite thickeners not recited in conflicting application 18906303. The acrylate thickeners now claimed are the same ones previously claimed and the interchangeability of the polysaccharide thickeners and the acrylate thickeners has not been rebutted.
Thus, the rejections are maintained.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action (the 112(b) for “preferably” and in case the rearranged 103 could be considered a new ground of rejection). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Robert A. Wax whose telephone number is (571)272-0623. The examiner can normally be reached 8:00 AM -4:00 PM Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at (571) 272-1424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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