Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This instant application, 18/985,642, filed on 12/18/2024, claims domestic benefit to U.S. Provision Application No. 63/611,537, filed 12/18/2023, and foreign priority to FR 2403260, filed on 03/29/2024.
Status of Application and Claims
Claims 1-13 are pending and under consideration in this action.
Claim Objections
Claim 5 is objected to because of the following informalities: “Avobenzone. Octisalate, Ensulizole, Homosalate, Octocrylene” should be “avobenzone, octisalate, ensulizole, homosalate, octocrylene.” Appropriate correction is required.
Claim Interpretation
Claim 3 is interpreted as a dependent claim of claim 2, as it refers to the properties listed in claim 2. Therefore, the properties that claim 3 refers to are interpreted to be 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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “preferably all three of the properties”. The term “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding claim 3, the claim recites “the properties” in line 2. There is insufficient antecedent basis for this limitation in the claim because there is no previous recitation that the composition has these properties.
Regarding claim 12, the claim recites “further comprising an active agent.” Bemotrizinol is an active agent. Thus, it is not clear if there is a second or third active agent. That is “further” should be place after -at least-. That is, -at least one further active agent.
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.
Claims 1, 5-6, 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soroudi (US 2017/0304193 A1; published 26 October 2017)
Regarding Claim 1, Soroudi teaches an ophthalmic sunscreen solution (reads on light absorbing system) comprising 0.25-15% by weight bemotrizinol (Claim 27). Soroudi teaches the composition further comprising an inorganic active ingredient comprising 0.25-15% by weight. The inorganic ingredient may be iron oxide, zinc oxide or other metal oxides (Abstract and Claims 3 and 27).
Regarding Claim 5, Soroudi teaches the ophthalmic sunscreen composition further comprising an organic active ingredient 0.2-15 wt. %. The organic active ingredient is selected from the group consisting of dioxybenzone, octinoxate, octisalate, homosalate, avobenzone, octocrylene, para-aminobenzoic acid, cinoxate, methyl anthranilate, octocrylene, padimate O, ensulizole, sulisobenzone, trolamine salicylate and ecamsule (Claim 27).
Regarding Claim 6, Soroudi teaches an ophthalmic sunscreen comprising four portions. The first portion contains bemotrizinol and the second portion contains an inorganic active ingredient. The inorganic active ingredient is selected from the group consisting of titanium dioxide, zinc oxide, iron oxide, other metal oxides, and mixtures thereof (Claim 27). A mixture of titanium dioxide and/or zinc oxide in addition to iron oxide satisfies the limitation of the composition of claim 6.
Regarding Claim 11, Soroudi teaches that the ophthalmic sunscreen comprising bemotrizinol and iron oxide may be in the form of an emulsion (Claim 27).
Regarding Claim 12, Soroudi teaches that the ophthalmic sunscreen comprising bemotrizinol, at least one inorganic active ingredient, and an additional organic active ingredient (Claim 27). The inclusion of an active organic ingredient selected from the group consisting of dioxybenzone, octinoxate, octisalate, homosalate, avobenzone, octocrylene, para-aminobenzoic acid, cinoxate, methyl anthranilate, octocrylene, padimate O, ensulizole, sulisobenzone, trolamine salicylate and ecamsule satisfies the limitation of the composition of claim 12.
Regarding Claim 13, Soroudi teaches an ophthalmic sunscreen composition comprising 0.25-15 wt. % bemotrizinol, 0.25-15 wt. % iron oxide and/or other inorganic active ingredients, and 0.25-15 wt. % active organic ingredient (Soroudi, Claim 27). The instant specification defines “A light absorbing system essentially containing iron oxide and bis-ethylhexyloxyphenol methoxyphenyl triazine (BEMT)” as containing less than 3% UV filters other than iron oxide and bis-ethylhexyloxyphenol methoxyphenyl triazine (BEMT or bemotrizinol) (Instant Specification, para. 0028). Therefore, active organic ingredients present in the composition at 0.25-2.99 wt. % would satisfy the limitation of the composition of claim 13.
Claims 1, 7-8, 10, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fascina et al. (US 20150272841 A1; published 1 October 2015).
Regarding Claim 1, Fascina et al. teaches an anhydrous, pigmented sunscreen composition (reads on light absorbing system) (Abstract). Fascina at al. exemplifies the weight percent ratio of bemotrizinol and iron oxide; the composition contains 13.5% organic filters such as bemotrizinol and 1.908% iron oxide (Table 1).
Regarding Claim 7, Fascina et al. exemplifies the weight percent ratio of bemotrizinol and iron oxide; the composition contains 13.5% organic filters such as bemotrizinol, ethylhexyl methoxycinnamate (octinoxate), ethylhexyl triazone, and DHHHB and 1.908% iron oxide (Table 1). Fascina et al. teaches a composition including one or more organic UV-filters (para. 0023). The specification does not teach the percentage by weight of each organic filter in the composition. So, when bemotrizinol is present in the composition from about 1.908-9.54% that the ratio of bemotrizinol to iron oxide is about 5:1 to about 1:1. The composition taught by Fascina et al. satisfies the bemotrizinol to iron oxide ratio limitation of the composition of claim 7.
Regarding Claim 8, Fascina et al. exemplifies the weight percent ratio of bemotrizinol and iron oxide; the composition contains 13.5% organic filters such as bemotrizinol, ethylhexyl methoxycinnamate (octinoxate), ethylhexyl triazone, and DHHHB and 1.908% iron oxide (Table 1). Fascina et al. teaches a composition including one or more organic UV-filters (para. 0023). The specification does not teach the percentage by weight of each organic filter in the composition. So, the composition may contain 1.909-13.5 wt. % of bemotrizinol. The presence of bemotrizinol at the weight percentage of the composition satisfies the claim limitation of more bemotrizinol by weight present in the composition than iron oxide by weight in claim 8.
Regarding Claim 10, Fascina et al. teaches the pigmented sunscreen is anhydrous (Abstract).
Regarding Claim 12, Fascina et al. exemplifies the weight percent ratio of bemotrizinol and iron oxide; the composition contains 13.5% organic filters such as bemotrizinol, ethylhexyl methoxycinnamate (octinoxate), ethylhexyl triazone, and DHHHB and 1.908% iron oxide (Table 1). Fascina et al. teaches a composition including one or more organic UV-filters (reads on at least one active agent) (para. 0023). The presence of other organic UV filters satisfies the limitation of claim 12.
Regarding Claim 13, Fascina et al. exemplifies the weight percent ratio of bemotrizinol and iron oxide; the composition contains 13.5% organic filters such as bemotrizinol, ethylhexyl methoxycinnamate (octinoxate), ethylhexyl triazone, and DHHHB and 1.908% iron oxide (Table 1). Fascina et al. teaches a composition including one or more organic UV-filters (para. 0023). The specification does not teach the percentage by weight of each organic filter in the composition. The instant specification defines “A light absorbing system essentially containing iron oxide and bis-ethylhexyloxyphenol methoxyphenyl triazine (BEMT)” as containing less than 3% UV filters other than iron oxide and bis-ethylhexyloxyphenol methoxyphenyl triazine (BEMT or bemotrizinol) (Instant Specification, para. 0028). Therefore, there is a range between 10.51-13.5 wt. % bemotrizinol that satisfies the limitation of claim 13.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Spaulding et al. (US 10709654 B2; published 14 July 2020) in view of Soroudi (US 2017/0304193 A1; published 26 October 2017) and Taylor, Susan. “FDA regulations for sunscreens.” Dermatology Times, 1 August 2022, https://www.dermatologytimes.com/view/fda-regulations-for-sunscreenss.
Regarding claim 1, Spaulding et al. claims a photoprotective composition comprising at least one photoactive agent present in an amount of about 0.1-40 wt. % (Claim 1). Spaulding et al. teaches bis-ethylhexyloxyphenol methoxyphenyl triazine (bemotrizinol) (trade name TINOSORB® S) as a possible active agent present in the composition (Col. 6, ln. 19-20). Spaulding et al. claims at least one photoactive agent is selected from a group consisting of metal oxides, zinc oxide, titanium dioxide, and others (Claim 2).
Regarding claims 2 and 3, Spaulding et al. claims a photoprotective composition with a critical wavelength greater than or equal to 370 nm (claim 17). Spaulding et al. further claims the composition meets the 1/3 UVA ratio requirement of ISO 24443 (claim 19).
Regarding claim 4, Spaulding et al. teaches a photoprotective composition able to sustain a suitable level of photoprotection, such as SPF 15, 30, 50, and/or 50+ (para. 0018).
Spaulding differs from the instantly claimed invention in that it fails to teach: (i) a composition comprising a light absorbing system comprising both iron oxide and bemotrizinol; (ii) a UVA1/UV ratio of 0.7 or higher. Soroudi and Taylor are relied upon for this disclosure. The teachings of Soroudi and Taylor are set forth herein below.
Soroudi teaches a sunscreen containing both bemotrizinol and an inorganic active ingredient selected from the group consisting of titanium dioxide, zinc oxide, iron oxide, zirconium oxide, cerium oxide and mixtures thereof (claim 27).
Taylor teaches that the FDA requires all sunscreens with an SPF 15 or higher to have a UVA1/UV ratio of 0.7 or higher and a critical wavelength of 370 nm or higher (lines 2-3).
It would have been prima facie obvious for an ordinarily skilled artisan before the effective filing date to combine the composition of Spaulding et al. with the teachings of Soroudi and Taylor and arrive at the instantly claimed invention. The prior art taught using different metal oxides, including iron oxide, titanium dioxide, and zinc oxide within photoprotective or sunscreen compositions. The instant Specification also discloses alternative mineral UV filters such as zinc oxide and titanium oxide as viable additional UV filters for the composition (para. 0081). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the zinc oxide or titanium dioxide of Spaulding et al.’s composition with the iron oxide taught in Soroudi for the predictable result of a photoprotective composition. Further, because the composition disclosed in Spaulding et al. has an SPF value of at least 15, it must inherently have a UVA1/UV ratio of 0.7 or higher, per FDA regulations. Therefore, it would be obvious for the photoprotective composition of Spaulding et al. to have a UVA1/UV ratio of 0.7 or higher to comply with the rules of the FDA.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fascina et al. (US 20150272841 A1; published 1 October 2015) in view of Lenahan, Brad. “What sunscreen is safe to use? 14 Sunscreen Ingredients to Potentially Avoid.” Colorscience, 30 July 2019. https://www.colorescience.com/blogs/blog/what-sunscreen-is-safe-understanding-healthy-and-safe-sunscreen-ingredients.
The teachings of Fascina et al., as they pertain to instant claim 1, are addressed supra. To reiterate, Fascina et al. exemplifies a sunscreen composition that contains bemotrizinol and iron oxide (Abstract, Table 1).
With regards to claim 9, Fascina et al. does not directly claim a composition comprising oxybenzone, octinoxate, and/or octocrylene. However, Fascina et al. discloses 2-cyano-3,3-phenylcinnamonic acid-2-ethylhexyl ester (octocrylene) and methoxycinnamate (octinoxate) as possible emollient cosmetic oils (para. 0021). Fiscina et al. discloses benzophenone-3 (i.e., oxybenzone) as a possible organic filter that dissolves in the lipid phase (para. 0024).
Fascina et al. differs from the instantly claimed invention in that it fails to explicitly exclude oxybenzone, octinoxate, and octocrylene from the sunscreen composition. The teachings of Lenahan are relied upon for this disclosure. The teachings are set forth herein below.
Lenahan teaches oxybenzone having the potential to be a problem because it’s readily absorbed by the skin, enters the bloodstream, and circulates throughout the body, which could negatively affect several body systems. Oxybenzone has been linked to facilitating the proliferation of cells that are receptive to estrogenic compounds, compounds, endocrine disruption, and allergic skin reactions. Additionally, oxybenzone can cause harm to the environment, specifically coral reef bleaching, and has therefore been banned in Hawaii and other regions around the world (“Oxybenzone” para. 2-3).
Lenahan teaches there concerns about potential health risks linked to octinoxate (“Octinoxate” para. 1).
Lenahan teaches that octocrylene can break down, causing it to develop into the harmful chemical benzophenone (“Octocrylene” para. 01)
It would have been prima facie obvious for an ordinarily skilled artisan before the effective filing date to formulate the composition disclosed in Fascina et al. without oxybenzone, octinoxate, and octocrylene in light of the teachings Lenahan and arrive at the instantly claimed invention. One of ordinary skill in the art would have been motivated to do so in order to provide a photoprotective composition without compounds that have been found to possibly cause negative health complications for both humans and marine life. Additionally, because some of these compounds have been banned in certain areas, one of ordinary skill in the art would have been motivated to formulate the composition without oxybenzone, octinoxate, and octocrylene so that the composition may be available in more areas.
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 1-5, 7-8 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 8 of copending U.S. Application No. 18/985622 (Copending 622).
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 additional UV filters. Copending 622 teaches compositions comprising bemotrizinol, additional UV filters (i.e. mineral UV filters including iron oxide (para. 0079)), and organic UV filter(s) (Claims 1-3), which corresponds to instant claims 1 and 5.
Claim 1 of copending 622 recites at least one coloring agent, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 2-4 recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 622. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide) (para. 0008). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%) (instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of claim 8.
Copending 622 further teaches a composition comprising at least open active agent (claim 8), corresponding the instant claim 12.
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, and 6 of copending U.S. Application No. 18/985628 (Copending 628) .
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 additional UV filters. Copending 628 teaches a composition comprising bemotrizinol, additional UV filters (reading on iron oxide (para. 0030), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0030; 0085-0086) (Claims 1-3), which corresponds to instant claims 1 and 5.
Instant claims 2-4 recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 628. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%) (instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 628 also teaches compositions comprising at least one active agent (claim 6), corresponding to instant claim 12.
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending U.S. Application No. 18/985612 (Copending 612).
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 additional UV filters. Copending 612 teaches compositions comprising bemotrizinol, additional filters (para. 0028) and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0028; 0106-0105) (Claims 1-3), which corresponds to instant claims 1 and 5.
Claim 1 of copending 612 recites at least one coloring agent, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 2-4 recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 612. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%) (instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 612 teaches the composition is anhydrous (Claim 4).
Copending 612 teaches the composition in the form of an emulsion (Claim 5).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending U.S. Application No. 18/543130 (Copending 130).
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 additional UV filters. Copending 130 teaches compositions comprising bemotrizinol, additional filters (para. 0029), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0112)(Claims 1, 6-7), which corresponds to instant claims 1 and 5.
Instant claims 2-4 recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 130. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 6 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%) (instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 130 teaches the composition is anhydrous (Claim 9).
Copending 130 teaches the composition in the form of an emulsion (Claim 10).
Copending 130 teaches the composition further comprising at least one active agent (Claim 11).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1, 8-10, 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10 of copending U.S. Application No. 18/543482 (Copending 482).
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 additional UV filters. Copending 482 teaches compositions comprising bemotrizinol, additional filters (para. 0024), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0099-0100) (Claims 1,8-9), which corresponds to instant claims 1 and 5.
Instant claims 2-4 recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 482. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 8 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%) (instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 482 teaches the composition further comprising at least one active agent (Claim 10).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-6, 9, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10, 12-13 of copending U.S. Application No. 18/543375 (Copending 375).
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 additional UV filters. Copending 375 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e., iron oxide, para. 0024), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0104-0105) (Claims 1, 7), which corresponds to instant claims 1 and 5.
Claim 1 of copending 375 recites titanium dioxide, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 2-4 recite identical photoprotective properties and SPF values associated with the claimed invention in copending 375.
Claim 6 of copending 375 teaches the composition is devoid of organic UV filters other than bemotrizinol, corresponding to instant claim 9. Since bemotrizinol is the only organic filter in the composition, the composition is free of oxybenzone, octinoxate, and octocrylene.
Copending 375 teaches the composition in the form of an emulsion (Claim 12).
Copending 375 teaches the composition further comprising at least one active agent (Claim 13).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-8, 10, 14 of copending U.S. Application No. 18/543443 (Copending 443).
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 additional UV filters. Copending 443 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0024), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0090-0091) (Claims 1-3), which corresponds to instant claims 1 and 5.
Claim 1 of copending 443 recites at least one additional UV filter, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional 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 2 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%) (instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Instant claims 2-3 recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 443. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Copending 443 teaches the composition is anhydrous (Claim 8).
Copending 443 teaches the composition in the form of an emulsion (Claim 7).
Copending 443 teaches the composition further comprising at least one active agent (Claim 10).
Copending 443 teaches a composition devoid of oxybenzone and octinoxate (Claim 14). Copending 443 also teaches the composition is free of octocrylene (Claim 1).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-8, 11 of copending U.S. Application No. 18/543921 (Copending 921).
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 additional UV filters. Copending 921 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0029), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene) (para. 0101-0102) (Claims 1-2, 6), which corresponds to instant claims 1 and 5.
Claim 1 of copending 921 recites an antioxidant system, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional 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 2 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%)(instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Instant claims 2-4 and recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 921. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Copending 921 teaches the composition in the form of an emulsion (Claim 8).
Copending 921 teaches the composition further comprising at least one active agent (Claim 11).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-6, 9-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-11, 13, 18 of copending U.S. Application No. 18/543309 (Copending 309).
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 additional UV filters. Copending 309 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0024), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0049)(Claim 1), which corresponds to instant claims 1 and 5.
Claim 1 of copending 309 recites at least one oil, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 1-3 and recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 309. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Copending 309 teaches the composition is free of oxybenzone and/or octinoxate (Claim 9).
Copending 309 teaches the composition is anhydrous (Claim 10).
Copending 309 teaches the composition in the form of an emulsion (Claim 11).
Copending 309 teaches the composition further comprising at least one active agent (Claim 13).
Copending 309 teaches the composition of claim 1 is free of octocrylene (Claim 18).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-6, 9, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8, 10, 13 of copending U.S. Application No. 18/543157 (Copending 157).
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 additional UV filters. Copending 157 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0025, 0059), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0081-0082)(Claim 5), which corresponds to instant claims 1 and 5.
Claim 1 of copending 157 recites at least one additional organic UV filter, whereas instant claim 1 does not recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 1-3 and recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 157. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Copending 157 teaches the composition is free of oxybenzone, octinoxate, and octocrylene (Claim 9).
Copending 157 teaches the composition in the form of an emulsion (Claim 10).
Copending 157 teaches the composition further comprising at least one active agent (Claim 13).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 10 of copending U.S. Application No. 18/543489 (Copending 489).
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 additional UV filters. Copending 489 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0138), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0024, 0150-0161)(Claim 9), which corresponds to instant claims 1 and 5.
Claim 1 of copending 489 recites a solvent system and a lipophilic gelling agent, whereas instant claim 1 does not recite these limitations. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claims 1-3 and recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 489. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 9 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%)(instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 489 teaches the composition further comprising at least one active agent (Claim 10).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 9-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 9-11, 13 of copending U.S. Application No. 18/543343 (Copending 343).
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 additional UV filters. Copending 343 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0010), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0093)(Claim 7), which corresponds to instant claims 1 and 5.
Instant claim 1 recites identical photoprotective properties and SPF values associated with the claimed invention in copending 343 (Claim 9).
Copending 343 teaches the composition is free of oxybenzone, octocrylene, and/or octinoxate.
Copending 343 teaches the composition is anhydrous and in the form of an emulsion (Claims 10-11)
Copending 343 teaches the composition further comprising at least one active agent (Claim 13).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 13, 15 of copending U.S. Application No. 18/543287 (Copending 287).
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 additional UV filters. Copending 287 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0009), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0009)(Claim 8), which corresponds to instant claims 1 and 5.
Claim 1 of copending 287 recites at least one booster, whereas instant claim 1 does not recite these limitations. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claim 1 recites identical photoprotective properties and SPF values associated with the claimed invention in copending 287 (Claim 5-6).
Copending 287 teaches the composition in the form of an emulsion (Claim 13).
Copending 287 teaches the composition further comprising at least one active agent (Claim 15).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8 of copending U.S. Application No. 18/543756 (Copending 756).
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 additional UV filters. Copending 756 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0029), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0098-0099)(Claim 3), which corresponds to instant claims 1 and 5.
Instant claims 1-3 and recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 756. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 3 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%)(instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 756 teaches the composition in the form of an emulsion (Claim 5).
Copending 756 teaches the composition further comprising at least one active agent (Claim 8).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-8 of copending U.S. Application No. 18/543597 (Copending 597).
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 additional UV filters. Copending 597 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0027), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0102-0103)(Claim 6), which corresponds to instant claims 1 and 5.
Instant claims 1-3 and recite photoprotective properties and SPF values associated with the claimed invention, which are achieved using the same combination of ingredients disclosed in copending 597. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 6 of copending application teaches bemotrizinol is present at a weight percentage of 10% or less relative to additional UV filters (reading on iron oxide). The relationship may be model as A ≤ B = 2 ≤ 10%. By comparison, instant claim 7 is equivalent to a percent ratio of about 1:5 (UV filter may be present in an amount of about 5-40%)(instant specification para. 0075). This corresponds to a composition in which the additional UV filter is present in a greater amount by weight than bemotrizinol, as required by the limitation of instant claim 8.
Copending 597 teaches the composition being anhydrous (Claim 7).
Copending 597 teaches the composition in the form of an emulsion (Claim 8).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Claims 1-5, 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 of copending U.S. Application No. 18/543657 (Copending 657).
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 additional UV filters. Copending 657 teaches compositions comprising bemotrizinol, additional filters (reading on mineral filters i.e. iron oxide, para. 0025), and organic UV filter(s) (including avobenzone, octisalate, ensulizole, homosalate, and octocrylene)(para. 0088-0089)(Claim 5), which corresponds to instant claims 1 and 5.
Claim 1 of copending 657 does not recite iron oxide, whereas instant claim 1 does recite this limitation. However, instant claims recite the transitional phrase “comprising” which is considered open language and allows the inclusion of additional components, including those recited in the claims of the copending application.
Instant claim 1 recites identical photoprotective properties and SPF values associated with the claimed invention in copending 657 (copending 657 claim 1-3).
Copending 657 teaches the composition in the form of an emulsion (Claim 8).
This is a provisional nonstatutory double patenting rejection because the patentability indistinct claims have not in fact been patented.
Conclusion
Claims 1-13 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should
be directed to Olivia A. MacMillan whose telephone number is (571)272-0692. The examiner can
normally be reached Monday-Friday (9:00AM-5:00PM EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a
USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X
Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or
proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from
Patent Center. Unpublished application information in Patent Center is available to registered users. To
file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional
questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)
or 571-272-1000.
/Olivia Anne MacMillan/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
Prosecution Insights