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 . Claims included in the prosecution are claims 1-18.
Claim Objections
Claim 4 objected to because of the following informalities: “at least one” should be recited immediately prior to “physical UV-attenuating material.” Appropriate correction is required.
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 1-18 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, 8 and 13-17, the phrase "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).
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.
The factual inquiries 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.
1. Claims 1-6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yousfi et al. (WO 2023/118065 A1, Jun. 29, 2023) (hereinafter Yousfi).
Yousfi discloses a cosmetic composition for caring for keratin materials (abstract). The composition may be in the form of an emulsion, in particular an oil-in-water (O/W) or water-in-oil (W/O) emulsion (page 37, lines 17-18). The composition may comprise at least one organic and/or mineral UV-screening agent (page 30, lines 6-8). The mineral UV-screening agents may be chosen from coated or noncoated pigments, and in particular from coated titanium oxide pigments, coated zinc oxide pigments, and mixtures thereof (i.e., claimed at least one physical UV-attenuating material) (page 31, lines 28-31). A mixture of titanium dioxide and zinc oxide may be coated with alumina, silica, and glycerol (page 32, lines 4-6). The amount of the mineral UV-screening(s) present in the composition may range from 0.01% to 20% by weight (page 32, lines 7-8). The composition may also comprise at least one surfactant (page 26, lines 18-19). Suitable surfactants include glyceryl stearate (i.e., low HLB surfactant) (HLB = 3.8 according to paragraph [0179] of instant specification) (page 27, line 9) and polyethylene glycol 100 OE monostearate (i.e., high HLB surfactant) (HLB = 18.8 according to paragraph [0191] of instant specification) (page 27, line 13). The composition may comprise at least one gelling agent (page 22, line 20). Suitable gelling agents include scleroglucan and xanthan gum (page 23, line 19). The composition may also comprise at least one additional cosmetic active agent (page 28, lines 24-25). Suitable additional active agent(s) include antioxidant compounds (page 29, line 12).
The prior art discloses a composition containing mixtures of titanium oxide and zinc oxide (i.e., claimed at least one physical UV-attenuating material) (page 31, lines 28-31), glyceryl stearate (i.e., low HLB surfactant) (page 27, line 9) and polyethylene glycol 100 OE monostearate (i.e., high HLB surfactant) (page 27, line 13), scleroglucan (i.e., nonionic branched homopolysaccharide), and xanthan gum (i.e., anionic polysaccharide thickening agent) (page 23, line 19). Together these would provide a composition as claimed instantly.
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
In regards to instant claim 5 reciting wherein the weight ratio of zinc oxide to titanium dioxide is from 90:10 to 70:30, as discussed above, Yousfi discloses wherein a mixture of titanium dioxide and zinc oxide may be used as the mineral UV-screening agent and wherein the amount of the mineral UV-screening(s) present in the composition may range from 0.01% to 20% by weight. Thus, the claimed ratio would have been obvious from one of ordinary skill in the art selecting an amount of each mineral UV-screening agent from the above range and arriving at a ratio between the two mineral UV-screening agents that overlaps with the claimed ratio. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
In regards to instant claims 9 and 11, Yousfi discloses wherein the composition may comprise at least one organic and/or mineral UV-screening agent. Thus, a composition free of organic UV filters and a UV absorbing system essentially containing at least one mineral UV-screening agent (i.e., at least one physical UV-attenuating material) would have been obvious.
2. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yousfi et al. (WO 2023/118065 A1, Jun. 29, 2023) (hereinafter Yousfi) in view of Xu et al. (WO 2023/232365 A1, Dec. 7, 2023) (hereinafter Xu).
The teachings of Yousfi are discussed above. Yousfi do not teach the amount of gelling agents.
However, Xu discloses a cosmetic emulsion (claim 1). The emulsion comprises at least one thickener, such as scleroglucan and xanthan gum (claim 10). The at least one thickener is contained in a total amount of 0.05 to 5.0% (claim 11).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated 0.05 to 5.0% gelling agents into the cosmetic composition of Yousfi since the composition is in the form of an emulsion and this is a known and effective amount of gelling agents for cosmetic emulsions as taught by Xu.
In regards to instant claim 7, the claimed ratio would have been obvious from Xu disclosing 0.05 to 5.0% schleroglucan and xanthan gum and Yousfi disclosing 0.01% to 20% by weight titanium oxide and/or zinc oxide.
3. Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yousfi et al. (WO 2023/118065 A1, Jun. 29, 2023) (hereinafter Yousfi) in view of Ghisalberti (US 2010/0196289, Aug. 5, 2010).
The teachings of Yousfi are discussed above. Yousfi do not teach wherein the at least one physical UV-attenuating material is passivated.
However, Ghisalberti discloses highly effective surface inactivation inorganic oxides and hydroxides with specific anti-photoaging barrier (¶ [0018]). There is a need of a novel pigment system which is passivated with respect to photo-oxidative catalysis, otherwise promoted by transition metal compounds, particularly in compositions intended for direct contact with skin, such as cosmetics and anti-UV compositions, whose photo-ageing action must be minimized (¶ [0010]). The pigment may comprise titanium dioxide or zinc oxide (Table 1).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated passivated titanium dioxide and/or zinc oxide into the cosmetic composition of Yousfi motivated by the desire to minimize photo-ageing as taught by Ghisalberti.
4. Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yousfi et al. (WO 2023/118065 A1, Jun. 29, 2023) (hereinafter Yousfi) in view of Orlando et al. (US 2023/0181431, Jun. 15, 2023) (hereinafter Orlando).
The teachings of Yousfi are discussed above. Yousfi do not teach wherein the at least one physical UV-attenuating material is coated with hydrated silica and has a mean primary particle size of about 10 nm to 40 nm.
However, Orlando discloses an emulsion for chemical and physical sun protection in a cosmetic formulation (abstract). The composition comprises at least one inorganic UV filter, such as titanium dioxide and zinc oxide (¶ [0209]). The at least one inorganic UV filter may be in the form of particles having a weight median particle size from 10 to 1000 nm. The surface of the particles can be at least partially coated, for example, in order to improve their dispersibility or to prevent any potential photocatalytic activity. Examples of suitable surface coating materials include hydrated silica (¶ [0210]).
Accordingly, it would have prima facie obvious to one of ordinary skill in the art to have coated the mineral UV-screening agent(s) of Yousfi with hydrated silica since Yousfi discloses wherein the agent(s} may be coated and this is a known and effective coating as taught by Orlando. Also, coating with hydrated silica would improve the agent(s) dispersibility and prevent any potential photocatalytic activity as taught by Orlando.
It would have been prima facie obvious to have formulated the mineral UV-screening agent(s) of Yousfi to have a weight median particle size from 10 to 1000 nm since Yousfi does not disclose a particle size and this is a known and effective particle size for inorganic UV filters as taught by Orlando.
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/906,505 in view of Yousfi et al. (WO 2023/118065 A1, Jun. 29, 2023) (hereinafter Yousfi). The pending claims differ from the copending claims insofar as reciting wherein the composition comprises at least one low HLB surfactant and at least one nonionic branched homopolysaccharide. However, Yousfi discloses a cosmetic composition for caring for keratin materials (abstract). The composition may be in the form of an emulsion, in particular an oil-in-water (O/W) or water-in-oil (W/O) emulsion (page 37, lines 17-18). The composition may comprise at least one organic and/or mineral UV-screening agent (page 30, lines 6-8). The composition may also comprise at least one surfactant (page 26, lines 18-19). Suitable surfactants include glyceryl stearate (i.e., low HLB surfactant) (HLB = 3.8 according to paragraph [0179] of instant specification) (page 27, line 9) and polyethylene glycol 100 OE monostearate (i.e., high HLB surfactant) (HLB = 18.8 according to paragraph [0191] of instant specification) (page 27, line 13). The composition may comprise at least one gelling agent (page 22, line 20). Suitable gelling agents include scleroglucan and xanthan gum (page 23, line 19). Accordingly, it would have been obvious to have incorporated glyceryl stearate (i.e., low HLB surfactant) and scleroglucan (i.e., nonionic branched homopolysaccharide) into the pending claims since emulsions comprising UV agents may comprise one or more surfactants and one or more thickeners and glyceryl stearate (i.e., low HLB surfactant) and scleroglucan (i.e., nonionic branched homopolysaccharide) are known and effective surfactant and thickener, respectively, as taught by Yousfi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 10-12 and 18 of copending Application No. 18/906,221 in view of Yousfi et al. (WO 2023/118065 A1, Jun. 29, 2023) (hereinafter Yousfi). The pending claims differ from the copending claims insofar as reciting wherein the composition comprises at least one nonionic branched homopolysaccharide. However, Yousfi discloses a cosmetic composition for caring for keratin materials (abstract). The composition may be in the form of an emulsion, in particular an oil-in-water (O/W) or water-in-oil (W/O) emulsion (page 37, lines 17-18). The composition may comprise at least one organic and/or mineral UV-screening agent (page 30, lines 6-8). The composition may comprise at least one gelling agent (page 22, line 20). Suitable gelling agents include biopolysaccharide gums such as scleroglucan and xanthan gum (page 23, line 19). Accordingly, it would have been obvious to have incorporated scleroglucan into the pending claims since copending claim 11 recites wherein biosaccharide gums may be included and scleroglucan is a known and effective biosaccharide gum as taught by Yousfi.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1-18 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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