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 1-17 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application filed on March 22, 2023 is the first filing of this subject matter.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on May 28, 2026 is acknowledged. A signed copy of the form PTO/SB/08 is attached to this office action.
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.
Claims 1-17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 2, 4, 5 and 12-16, 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).
Regarding claim 1, the claim recites metal oxide and alumina is not a metal.
Regarding claim 9, the phrase “essentially contains” is not understood. The phrase is being interpreted as “comprises”.
Claims 3, 6, 7, 8, 10, 11 and 17 are included in this rejection because they depend from indefinite claims and do not cure the defect.
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 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, 14 and 16-17 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. 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 he 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.
Claims 13 and 15 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 and 14-17 above, and further in view of Frerichs et al. (US 20080299056 A1, published 2008-12-04).
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].
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 1-17 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.
Conclusion
No claim is allowed.
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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