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 .
Status of the Claims
Claims 1-8 are pending and under consideration in this action.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holyfield
(US 2015/0272848 A1; published October 1, 2015).
With regards to Claim 1, Holyfield discloses a white, color stable sunscreen or skin care formulation comprising an effective amount of bemotrizinol and titanium dioxide in an aqueous emulsion formulation that is white in color and remains white in color for the duration of the shelf life (para. 0014-0018).
With regards to the limitation of the “coloring agent”, the instant Specification discloses titanium dioxide as a pigment (Specification, para. 0067). Therefore, Holyfield’s titanium dioxide reads on the at least on coloring agent.
With regards to the limitation, “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least on coloring agent”, the instant Specification discloses bemotrizinol is present in the composition in an effective amount from 0.1% to about 10% by wt. for color intensity or color shade stability (Specification, para. 0077). Holyfield discloses a composition comprising 0.01-10% by wt. bemotrizinol, in which the bemotrizinol is present in an amount effective for sunscreen protection (examples A-G, Claim 1). Therefore, absent evidence to the contrary, bemotrizinol is present in the composition in an amount effective for both sun protection and improving color intensity or color shade stability.
With regards to Claims 2-3, Holyfield discloses a composition comprising 0.1-10% by wt. bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G). With regards to Claim 8, Holyfield discloses a composition containing bemotrizinol, titanium dioxide, and active agents octyl salicylate and octyl methoxycinnamate (para. 0018).
Claims 1-2, 4-5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sohn et al (US20240115478 A1; published April 11, 2024).
With regards to Claim 1, Sohn et al. discloses a sunscreen or daily care composition comprising bis-ethylhexyloxyphenol methoxyphenyl triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine, also known as bemotrizinol), titanium dioxide, and zinc oxide (Claim 1)
With regards to the limitation of the “coloring agent”, the instant Specification discloses titanium dioxide as a pigment (Specification, para. 0067). Therefore, Sohn et al.’s titanium dioxide reads on the at least on coloring agent.
With regards to the limitation, “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least on coloring agent”, the instant Specification discloses bemotrizinol is present in the composition in an effective amount from 0.1% to about 10% by wt. for color intensity or color shade stability (Specification, para. 0077). Sohn et al. discloses the sunscreen or daily care composition comprising of bis-ethylhexyloxyphenol methoxyphenyl triazine (INCI bis-ethylhexyloxyphenol methoxyphenyl triazine, also known as bemotrizinol) in an amount of 1 to 10 wt. %, preferably of 1.5 to 6 wt. % (para. 0022). Therefore, absent evidence to the contrary, bemotrizinol is present in the composition in an amount effective for both sun protection and improving color intensity or color shade stability.
With regards to Claim 2, Sohn et al. discloses the sunscreen or daily care composition comprising bis-ethylhexyloxyphenol methoxyphenyl triazine (also known as bemotrizinol) in an amount of 2.5 wt.%, zinc oxide (reads on additional UV filter) in an amount of 3 wt.%, and titanium dioxide in an amount of 5.5 wt.% (reads on coloring agent) (Table 2a Formulation Inv. 2).
With regards to Claims 4-5, Sohn et al. discloses both sticks and lipsticks as suitable preparations for the composition (para. 0052-0053; 0318, Table 3).
With regards to Claim 7, Sohn et al. discloses gels as suitable skin care preparations of the composition (para. 0053).
With regards to Claim 8, Sohn et al. discloses the sunscreen or daily care composition comprising bis-ethylhexyloxyphenol methoxyphenyl triazine (also known as bemotrizinol) in an amount of 2.5 wt.%, zinc oxide (reads on active ingredient) in an amount of 3 wt.%, and titanium dioxide in an amount of 5.5 wt.% (reads on coloring agent) (Table 2a Formulation Inv. 2).
Claims 1, 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
With regards to Claim 1, Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
With regards to the limitation, “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least on coloring agent”, the instant Specification discloses bemotrizinol is present in the composition in an effective amount from 0.1% to about 10% by wt. for color intensity or color shade stability (Specification, para. 0077). Thorel discloses a composition characterized in that it comprises from 1-10 % of tinosorb S ((2,2 '[6- (4-methoxyphenyl) -1,3,5-triazine-2,4- diyl] bis [5- (2-ethylhexyl) oxyl] phenol, also known as bemotrizinol) (para. 0009). Therefore, bemotrizinol is present in the composition in an amount effective for both sun protection and improving color intensity or color shade stability.
With regards to Claims 4-5, Thorel discloses that the composition according to the invention may be in the form of a stick or lipstick (para. 0018).
With regards to Claim 6, Thorel discloses that the composition according to the invention may be in the form of a foundation (para. 0018).
With regards to Claim 7, Thorel discloses that the composition according to the invention may be in the form of a gel (para. 0018).
With regards to Claim 8, Thorel discloses that the composition may further comprise mineral filters, for example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (reading on at least one active agent) (para. 0018).
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/543,375 (Copending 375) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 375 claims the inclusion of titanium dioxide, which as evidenced by the instant Specification, is a pigment (i.e., coloring agent) (Spec., para.0067).
The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 375’s claim 1, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent.
The primary differences between the instant claims the cited claims of Copending 375 are: (i) Copending 375 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 375 does not claim wherein the composition is in the form of a foundation; (iii) Copending 375 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 375 with the teachings of Thorel and try Copending 375’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 375’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-8, 13 of copending Application No. 18/257,179 (Copending 179) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol. Copending 179 claims a composition comprising a clay, crystallizable fate, and at least one liposoluble filter capable of absorbing UVA and/or UVB (Claim 1). Copending 179 claims the inclusion of a liposoluble filter capable of absorbing UVA and/or UVB selected from a group containing bis-ethylhexyloxyphenol methoxyphenyl triazine (bemotrizinol) (Claim 7). The instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para. 0077). Copending 179’s claim 8, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent. Copending 179’s claim 9 further claims the composition further comprising at least one water-soluble filter capable of absorbing UVA and/or UVB (reading on active agent). Copending 179’s claim 13 claims composition possibly comprising bemotrizinol in the form of an aqueous gel.
The primary differences between the instant claims the cited claims of Copending 179 are: (i) Copending 179 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 179 does not claim wherein the composition is in the form of a foundation; (iii) Copending 179 does not claim the composition comprising at least one coloring agent. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 179 with the teachings of Thorel and try Copending 179’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 179’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6 of copending Application No. 18/985,628 (Copending 628) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol. Copending 628’s claim 1 claims a hair composition comprising bemotrizinol. The instant Specification teaches a composition applicable for keratinous material, including skin (also reads on hair) (para. 0043-0040). The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 628’s claim 2, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent. Copending 628’s claims 6 claims a composition further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 628 are: (i) Copending 628 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 628 does not claim wherein the composition is in the form of a foundation; (iii) Copending 628 does not claim wherein the composition is in the form of a gel; (iv) Copending 628 does not claim at least one coloring agent. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 628 with the teachings of Thorel and try Copending 628’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 628’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 12 of copending Application No. 18/543,642 (Copending 642) in view of Holyfield (US 2015/0272848 A1; published October 1, 2015) and Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 642 claims the inclusion of iron oxide and bemotrizinol in light absorbing system, which as evidenced by the instant Specification, is a pigment (i.e., coloring agent) (Spec., para.0067).
The primary differences between the instant claims the cited claims of Copending 642 are: (i) Copending 642 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters; (ii) Copending 642 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional organic UV filters (iii) Copending 642 does not claim wherein the composition is in the form of a lipstick; (iv) Copending 642 does not claim wherein the composition is in the form of a foundation; (v) Copending 642 does not claim wherein the composition is in the form of a gel. Thorel and Holyfield are relied upon for this disclosure. The teachings of Thorel and Holyfield are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
The cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 642, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 642 claims a light absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 642’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6 of copending Application No. 18/985,612 (Copending 612) in view of (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 612 claims a color composition comprising bis-ethylhexyloxyphenol methoxyphenyl triazine (bemotrizinol) and a coloring agent, where the bemotrizinol is added to the composition in an amount sufficient to improve color intensity stability and/or color shade stability of the composition against light (Claim 1). Copending 612’s claim 6 claims the composition in the form of a stick.
The primary differences between the instant claims the cited claims of Copending 612 are: (i) Copending 612 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters; (ii) Copending 612 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional organic UV filters (iii) Copending 612 does not claim wherein the composition is in the form of a lipstick; (iv) Copending 612 does not claim wherein the composition is in the form of a foundation; (v) Copending 612 does not claim wherein the composition is in the form of a gel. Thorel and Holyfield are relied upon for this disclosure. The teachings of Thorel and Holyfield are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
The cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 612 with the teachings of Thorel and try Copending 612’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 612’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 10-11 of copending Application No. 18/543,130 (Copending 130) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 130 claims the inclusion of titanium dioxide, which as evidenced by the instant Specification, is a pigment (i.e., coloring agent) (Spec., para.0067). Claim 10 of copending 130 further claims the presence of at least one coloring agent. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 130’s claim 6, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent. Copending 130’s claim 1 claims the presence of at least one additional active ingredient within the composition.
The primary differences between the instant claims the cited claims of Copending 130 are: (i) Copending 130 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 130 does not claim wherein the composition is in the form of a foundation; (iii) Copending 130 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
The cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 130 with the teachings of Thorel and try Copending 130’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 130’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8-9, 10-11 of copending Application No. 18/543,482 (Copending 482) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 483 claims a gel composition comprising bis-ethylhexyloxyphenol methoxyphenyl triazine (bemotrizinol), at least one sugar fatty acid ester gelling agent, and at least one solvent system (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Copending 482 claims the gel composition further comprising a coloring agent (Claim 11). The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 482’s claim 8, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent. Copending 482’s claim 10 claims the presence of an additional active agent.
The primary differences between the instant claims the cited claims of Copending 482 are: (i) Copending 482 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 482 does not claim wherein the composition is in the form of a foundation. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 482 with the teachings of Thorel and try Copending 482’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 482’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/543,443 (Copending 443) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 443 claims a UV absorbing system comprising bemotrizinol and at least one additional UV filter (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 443’s claim 2, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent.
The primary differences between the instant claims the cited claims of Copending 443 are: (i) Copending 443 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 443 does not claim wherein the composition is in the form of a foundation; (iii) Copending 443 does not claim wherein the composition is in the form of a gel; (iv) Copending 443 does not claim the composition comprising a coloring agent. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 443 with the teachings of Thorel and try Copending 443’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 443’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 12-13 of copending Application No. 18/543,618 (Copending 618) in view of Holyfield (US 2015/0272848 A1; published October 1, 2015) and Thorel et al. (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 618 claims UV absorbing system comprising bemotrizinol, at least one additional UV filter (reads on active agent) and an ecofriendly carrier (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Claim 12 of copending 618 claims the composition of claim 1 further comprising at least one coloring agent.
The primary differences between the instant claims the cited claims of Copending 618 are: (i) Copending 618 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters or additional organic UV filters. (ii) Copending 618 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 618 does not claim wherein the composition is in the form of a foundation; (iv) Copending 618 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. Bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 618, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 618 claims a UV absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 618’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-3, 6 of copending Application No. 18/543,721 (Copending 721) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 721 claims a composition comprising bemotrizinol and octinoxate (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Copending 721 claims the inclusion of at least one coloring agent (Claim 7). The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 721’s claim 2, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent.
The primary differences between the instant claims the cited claims of Copending 721 are: (i) Copending 721 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 721 does not claim wherein the composition is in the form of a foundation; (iii) Copending 721 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 721 with the teachings of Thorel and try Copending 721’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 721’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 9-11 of copending Application No. 18/543,921 (Copending 921) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 921 claims a composition comprising bemotrizinol and an antioxidant system (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Copending 921 claims a bemotrizinol composition further comprising at least one coloring agent (Claim 10). The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 921’s claim 2, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent. Copending 921’s claim 11 claims the composition further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 921 are: (i) Copending 921 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 921 does not claim wherein the composition is in the form of a foundation; (iii) Copending 921 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 921 with the teachings of Thorel and try Copending 921’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 921’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 13 of copending Application No. 18/543,860 (Copending 860) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol. Copending 860 claims a composition “comprising bemotrizinol, at least one semi-crystalline polymer comprising at least one alkyl acrylate chain, and at least one scleroglucan gum” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 860’s claim 11, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Copending 860’s claim 13 claims the composition of Claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 860 are: (i) Copending 86o does not claim the presence of a coloring agent; (ii) Copending 860 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 860 does not claim wherein the composition is in the form of a foundation; (iv) Copending 860 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 860 with the teachings of Thorel and try Copending 860’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 860’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/543,309 (Copending 309) in view of Holyfield (US 2015/0272848 A1; published October 1, 2015) and Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 309 claims a UV absorbing system comprising bemotrizinol and at least one additional organic UV filter (Claim 1). The instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Copending 309 claims the inclusion of at least one coloring agent (Claim 12).
The primary differences between the instant claims the cited claims of Copending 309 are: (i) Copending 309 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters or additional organic UV filters. (ii) Copending 309 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 309 does not claim wherein the composition is in the form of a foundation; (iv) Copending 309 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. Bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 309, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 309 claims a UV absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 309’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 12-13 of copending Application No. 18/543,157 (Copending 157) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 157 claims a composition comprising “bemotrizinol and at least one additional organic UV filter, wherein the composition has one or more of the following properties: a critical wavelength of at least 370 nm; a UVAPF/SPF ratio of at least 1/3; and a UVA1/UV ratio of 0.7 or higher” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 157’s claim 7, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Copending 157’s claim 13 claims the composition of Claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 157 are: (i) Copending 157 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 157 does not claim wherein the composition is in the form of a foundation; (iii) Copending 157 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 157 with the teachings of Thorel and try Copending 157’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 157’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11 of copending Application No. 18/543,489 (Copending 489) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 489 claims a composition comprising bemotrizinol, a solvent system, and at least one lipophilic gelling agent” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 489’s claim 9, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Copending 489’s claim 10 claims the composition of Claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 489 are: i) Copending 489 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 489 does not claim wherein the composition is in the form of a foundation; (iii) Copending 489 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 489 with the teachings of Thorel and try Copending 489’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 489’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11 of copending Application No. 18/543,343 (Copending 343) ) in view of Holyfield (US 2015/0272848 A1; published October 1, 2015) and Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 343 claims a composition comprising bemotrizinol, avobenzone and at least one additional UV filter (reads on active agent) (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Copending 343’s claim 12 claims the composition of claim 1 further comprising a coloring agent.
The primary differences between the instant claims the cited claims of Copending 343 are: (i) Copending 343 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters or additional organic UV filters. (ii) Copending 343 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 343 does not claim wherein the composition is in the form of a foundation; (iv) Copending 343 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. Bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 343, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 343 claims a UV absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 343’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11 of copending Application No. 18/543,657 (Copending 657) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and a coloring agent. Copending 657 claims a composition comprising bemotrizinol and at least one active agent susceptible to degradation by UV rays (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. Claim 9 of copending 657 claims the composition of claim 1 further comprising at least one coloring agent.
The primary differences between the instant claims the cited claims of Copending 657 are: (i) Copending 657 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters or additional organic UV filters. (ii) Copending 657 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 657 does not claim wherein the composition is in the form of a foundation; (iv) Copending 657 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. Bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 657, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 657 claims a UV absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 657’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11 of copending Application No. 18/543,702 (Copending 702) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol. Copending 702 claims a composition comprising “bemotrizinol, at least one salt chelating agent, and at least one semi-crystalline polymer comprising at least one alkyl acrylate chain” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 702’s claim 9, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Copending 702’s claim 11 claims the composition of Claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 702 are: (i) Copending 702 does not claim a coloring agent; (ii) Copending 702 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 702 does not claim wherein the composition is in the form of a foundation; (iv) Copending 702 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 702 with the teachings of Thorel and try Copending 702’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 702’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-11 of copending Application No. 18/543,823 (Copending 823) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and coloring agent. Copending 823 claims a composition comprising “bemotrizinol, at least one lipophilic acrylic polymer, at least one C.sub.12-C.sub.24 fatty acid ester of a C.sub.2-C.sub.24 polyol, and at least one carboxylic or carboxylate anionic surfactant selected from the group consisting of amino acids modified with at least one C.sub.8-C.sub.30 hydrocarbon-based chain and salts thereof, wherein the at least one lipophilic acrylic polymer comprises monomer units of formulae (A) and (B): ##STR00005## in which: R1, independently at each instance, is chosen from alkyl and alkenyl radicals” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 823’s claim 8, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Copending 823’s claim 11 claims the composition of Claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 823 are: (i) Copending 823 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 823 does not claim wherein the composition is in the form of a foundation; (iii) Copending 823 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 823 with the teachings of Thorel and try Copending 823’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 823’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-11 of copending Application No. 18/543,141 (Copending 141) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and coloring agent. Copending 141 claims a composition comprising a UV absorbing system comprising zinc oxide and bemotrizinol (Claim 1). Copending 141 claims the inclusion of zinc oxide, which as evidenced by the instant Specification, is a pigment (i.e., coloring agent) (Spec., para.0067). Copending 141’s claim 9 claims the composition of claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 141 are: (i) Copending 141 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters or additional organic UV filters. (ii) Copending 141 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 141 does not claim wherein the composition is in the form of a foundation; (iv) Copending 141 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. Bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 141, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 141 claims a UV absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 141’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-11 of copending Application No. 18/543,287 (Copending 287) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and coloring agent. Copending 287 claims a composition comprising bemotrizinol, a fatty phase comprising at least one oil, at least one lipophilic organic UV filter which is dissolved or dispersed in colloidal form in the liquid fatty phase, and at least one booster, wherein the at least one booster is present in an amount sufficient to increase UV efficacy of the composition (Claim 1). Copending 287’s claim 14 claims the composition of claim 1 further comprising at least one active agent.
The primary differences between the instant claims the cited claims of Copending 287 are: (i) Copending 287 does not claim wherein the composition comprises 10% or less by weight relative to the total weight of composition of additional UV filters or additional organic UV filters. (ii) Copending 287 does not claim wherein the composition is in the form of a lipstick; (iii) Copending 287 does not claim wherein the composition is in the form of a foundation; (iv) Copending 287 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Holyfield and Thorel are set forth herein below.
Holyfield discloses a composition comprising 0.1-10% by wt. Bemotrizinol, 2-6% by wt. octyl salicylate (reading on organic UV filter), and 3-6% octyl methoxycinnamate (reading on organic UV filter), and 0.5-0.75% by wt. titanium dioxide (examples A-G).
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 287, the composition of Holyfield, and the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). Copending 287 claims a UV absorbing system comprising bemotrizinol. Holyfield claims the use of bemotrizinol as a sunscreen and discloses amounts known to be used for that purpose. Therefore, it would be obvious for one skilled in the art to use the wt. % of bemotrizinol disclosed in Holyfield to produce a UV absorbing system. Further, one of ordinary skill in the art would have been motivated to combine the claims with Holyfield and Thorel in order to provide copending 287’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 9-10 of copending Application No. 18/543,597 (Copending 597) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and coloring agent. Copending 597 claims a composition comprising “bemotrizinol and at least one active agent” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 597’s claim 6, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Claim 10 of copending 597 claims the composition further comprising at least one coloring agent.
The primary differences between the instant claims the cited claims of Copending 597 are: (i) Copending 597 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 597 does not claim wherein the composition is in the form of a foundation; (iii) Copending 597 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 597 with the teachings of Thorel and try Copending 597’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 597’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/543,756 (Copending 756) in view of Thorel et al (FR 2894810 A1; published June 22, 2007; citations from Google machine translation).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising bemotrizinol and coloring agent. Copending 756 claims a composition comprising “ bemotrizinol, avobenzone, and optionally octinoxate, wherein the bemotrizinol is present in the composition in an amount effective to improve photostability of the avobenzone” (Claim 1). However, the instant claims recite that transition phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application. The instant claims further recite “wherein the bemotrizinol is present in the composition in an amount effective to improve color stability of the at least one coloring agent.” As evidenced by the instant Specification, such effective amounts include the range from about 0.1% to about 10% by weight of bemotrizinol with respect to the total weight of the composition (para.0077). Copending 756’s claim 3, for example, claims amounts of bemotrizinol within the aforementioned range, and thus, absent evidence to the contrary, reads on being present in the composition in an amount effective to improve color stability of the at least one coloring agent, if present. Copending 756’s claim 7 claims the composition further containing a coloring agent. Claim 8 of copending 756 claims the composition further comprising at least one active agent. Copending 756 discloses that the composition may be in the form of a stick (Claim 6).
The primary differences between the instant claims the cited claims of Copending 756 are: (i) Copending 756 does not claim wherein the composition is in the form of a lipstick; (ii) Copending 756 does not claim wherein the composition is in the form of a foundation; (iii) Copending 756 does not claim wherein the composition is in the form of a gel. Thorel is relied upon for this disclosure. The teachings of Thorel are set forth herein below.
Thorel discloses a UV-A photoprotector composition for skin and/or lips and/or superficial body growth comprising of Tinosorb-S (RTM: 2,2'-[6-(4-Methoxyphenyl)-1,3,5-triazine-2,4-diyl]-bis-[5-(2-ethylhexyl)oxyl]-phenol, also known as bemotrizinol) and pigments (Claim 1, 5).
Among the suitable forms the cosmetic products may take include in the form of a gel, foundation, stick, and lipstick (para. 0018).
Cosmetic products may also include additional adjunct ingredients such as mineral filters. For example, nacres, pigments, or else nanopigments of coated or uncoated metal oxides, such as nanopigments of titanium oxide, iron oxide, zinc oxide, zirconium oxide or cerium oxide and their mixtures (para. 0018).
One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the cited claims of Copending 756 with the teachings of Thorel and try Copending 756’s composition in the form of cosmetic products as disclosed by Thorel (e.g., gel, foundation, stick, and lipstick). One of ordinary skill in the art would have been motivated to do so in order to provide Copending 756’s composition in art recognized cosmetic product form and provide UV protection when using such products. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Thorel discloses that sunscreen actives such as bemotrizinol and coloring agents are known to be incorporated into cosmetic products such as gels, foundations, and lipsticks.
Conclusion
Claims 1-8 are rejected. No claims are allowed.
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/Olivia A MacMillan/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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