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 .
Priority
The instant application was filed 04 October 2024. The Applicant does not claim priority to other documents. Therefore, the effective filing date of the instant application is 04 October 2024.
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, 2, 8-12 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, 8-12, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
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.
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (US 2006/0018861 A1).
Regarding claims 1 and 7, Chen teaches a skincare composition comprising isopropyl palmitate and zinc oxide or titanium dioxide (para. 90).
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ehlis et al. (US 2006/0153783 A1).
Regarding claims 1 and 7, Ehlis teaches a skincare composition comprising isopropyl palmitate and titanium dioxide (para. 184).
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibbons et al. (US 2007/0224229 A1).
Regarding claims 1 and 7, Gibbons teaches a skincare composition comprising isopropyl palmitate and titanium dioxide (para. 44).
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herzog et al. (US 2011/0305650 A1).
Regarding claims 1 and 7, Herzog teaches a sunscreen formulation comprising isopropyl palmitate and titanium dioxide (para. 197, pg. 26).
Claim(s) 1, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ptock et al. (US 2007/0202060 A1).
Regarding claims 1, 5, and 7, Ptock teaches a W/O emulsion sunscreen formulation comprising isopropyl palmitate and titanium dioxide (Example 3).
Claim(s) 1, 7, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bauer et al. (US 8329200 B2).
Regarding claims 1, 7, and 8, Bauer teaches a skincare composition comprising isopropyl palmitate and Al2O3 coated titanium dioxide and iron oxide (Example 97).
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.
Claim(s) 1, 3-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fu et al. (US 2018/0028416 A1).
Regarding claim 1, Fu teaches a cosmetic composition (abs, entire teaching) that may comprise zinc oxide (para. 63) or titanium dioxide (Table 5) and isopropyl palmitate as an emollient (para. 78).
Regarding claim 3, the composition does not require any organic UV filters.
Regarding claim 4, the composition provides a non-greasy feeling when applied to the skin or other keratinous tissues (abs).
Regarding claim 5, the composition is in the form of an emulsion (abs).
Regarding claim 6, the composition may comprise a mixture of metal oxides (para. 70).
Regarding claim 7, the composition may comprise zinc oxide (para. 68) or titanium dioxide (Table 5).
Regarding claim 8, the inorganic UV filter may be coated with amino acids (para. 64).
Regarding claim 9, the composition may comprise zinc oxide (para. 68) or titanium dioxide (Table 5).
Regarding claim 10, the composition may comprise zinc oxide (para. 68) or titanium dioxide (Table 5).
Regarding claim 11, the composition may comprise zinc oxide (para. 68) or titanium dioxide (Table 5).
Regarding claim 12, the mean primary particle size of the inorganic UV filter may be 1-50 nm (para. 62).
Regarding claim 13, the mean primary particle size of the inorganic UV filter may be 1-50 nm (para. 62).
Fu does not specifically teach a composition comprising zinc oxide or titanium dioxide and isopropyl palmitate in claim 1.
In regards to selecting the combination of zinc oxide or titanium dioxide and isopropyl palmitate, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Fu teaches a composition comprising zinc oxide or titanium dioxide and isopropyl palmitate, whereas the claimed invention is directed towards a composition comprising at least one metal oxide and ethyl oleate and/or isopropyl palmitate. Since Fu teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fu et al. (US 2018/0028416 A1), as applied to claims 1, 3-13 above, in view of Makingcosmetics.com.
In regards to claim(s) 1, 3-13, Fu, as applied supra, is herein applied in its entirety for its teachings of a cosmetic composition comprising zinc oxide or titanium dioxide and isopropyl palmitate.
Regarding claim 2, Fu teaches titanium dioxide in an amount of 4% (Table 5).
Fu does not specifically teach an UV-attenuating material in an amount of at least 5% in claim 2.
Makingcosmetics.com teaches titanium dioxide is typically used in an amount of 1-30% in makeup compositions (pg. 1).
Since Fu teaches titanium dioxide in an amount of 4% (Table 5) but does not specifically teach at least 5% in claim 2, one of ordinary skill in the art would have been motivated to use Makingcosmetics.com’s teaching of using titanium dioxide in an amount of 1-30% in cosmetic compositions. A skilled artisan would have been easily led to combine the teachings because Makingcosmetics.com teaches a general range for cosmetic, which could reasonably be applied to Fu’s cosmetic composition. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, thus addressing instant claim(s) 2. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-15 of copending Application No. 18/906,261 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the reference application recites a composition comprising at least one physical UV-attenuating material and a fatty acid oil, such as ethyl oleate or isopropyl oleate (claim 2 of reference application), which corresponds to instant claim 1.
Claim 3 of the reference application recites at least 5% of the UV-attenuating material, corresponding to instant claim 2.
Claim 4 of the reference application recites “the composition is devoid of organic UV filters,” corresponding to instant claim 3.
Claim 5 of the reference application recites “the composition is non-greasy and/or non-whitening,” corresponding to instant claim 4.
Claims 6 and 15 of the reference application recite a mean primary particle size for the UV-attenuating material of about 10-40 nm or 1-500 nm, which corresponds to instant claims 12 and 13.
Claim 7 of the reference application recites an emulsion, which corresponds to instant claim 5.
Claim 9 of the reference application recites at least one physical UV-attenuating material, corresponding to instant claim 6.
Claim 10 of the reference application recites titanium dioxide, zinc oxide, iron oxide, etc., which corresponds to instant claim 7.
Claim 11 of the reference application recites a surface treatment agent comprising at least one of amino acids, beeswax, fatty acids, etc., corresponding to instant claim 8.
Claim 12 of the reference application recites zinc oxide and/or titanium dioxide, corresponding to instant claim 9.
Claim 13 of the reference application recites zinc oxide and/or titanium dioxide, preferably coated with a coating agent, etc., corresponding to instant claim 10.
Claim 14 of the reference application recites zinc oxide, preferably coated with hydrated silica, etc., corresponding to instant claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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