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 .
Claim Interpretation
Claim 1 recites “water-soluble or water-dispersible”, the dependent claims then go on to recite “the water-soluble/dispersible”, for purpose of examination the “/” is interpreted as an “or”, thus the active must be dispersible or soluble in water. This same interpretation applies to the claimed instances of oil-soluble/dispersible.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “of water-soluble” it should recite “of a water-soluble”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is 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 15 recites the limitation "the oil-soluble/dispersible" in line 2. There is insufficient antecedent basis for this limitation in the claim as claim 1 does not comprise an oil soluble/dispersible UV agent.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1-10 and 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blachechen (US 2016/0303020) and Iwami (EP4079286). Iwami is cited on the 11/7/2025 IDS.
Blachechen teaches a sunscreen composition comprising a primary UV absorbing agent and 5% or less of a visible light radiation agent that includes a silica coating (abs).
Blachechen teaches a facial sunscreen composition (E1) comprising:
- 4% of phenylbenzimidazole sulfonic acid and disodium phenyl dibenzimidazole tetrasulfonate – reading on water soluble/dispersible UV blocking active of instant claims 1a and 12-14;
- 1.5% of methylene bis-benzotriazolyl tetramethylbutylphenol – reading on organic particulate UV filter of instant claims 1c and 2-6;
- 53.88% water – reading on aqueous carrier of instant claim 10;
- 8% of bis-ethylhexyloxyphenol methoxyphenyl triazine, butyl methoxydibenzoylmethane, octocrylene, homosalate and ethylhexyl triazone – reading on oil soluble/dispersible UV blocking active of instant claims 15.
Regarding claims 7-9: As discussed above, the water soluble/dispersible UV active(s) and particulate UV filter(s) are used in amounts of 4% and 1.5% respectively, this results is a ratio to 2.67:1 which overlaps with the claimed ranges. With respect to claim 9, 2.67:1 is deemed to read on “about 2:1” as the specification fails to provide a limiting definition of “about”. In the alternative, table 8 of Blachechen teaches that the phenylbenzimidazole sulfonic acid can be used in amounts ranging from 0.5-8% which also provides a ratio (.33-5.33:1) that overlaps with the claimed ranges. A skilled artisan would recognize that the amounts of UV actives used in the working examples are not limited and could effectively be used in the amounts taught in table 8 with a reasonable expectation of success.
Regarding claims 17-18: As discussed above, the water soluble/dispersible UV active(s) and oil soluble/dispersible(s) are used in amounts of 4% and 8% respectively, this results is a ratio of 1:2 which overlaps with the claimed ranges.
Regarding claims 16 and 19: Table 8 of Blachechen teaches that the oil soluble/dispersible UV active(s) can be used in amounts ranging from 2.5-57%, which also provides a ratio (1:.62-14.25) that overlaps with the claimed ranges. A skilled artisan would recognize that the amounts of UV actives used in the working examples are not limited and could effectively be used in the amounts taught by table 8 with a reasonable expectation of success.
However, Blachechen does not teach the composition to comprise a wax as recited by instant claim 1b.
Iwami teaches a sunscreen cosmetic comprising an oil phase thickener, a UV protectant and a wax powder having a volume average particle size of 1 to 30 µm (Abs). Suitable UV protectants include phenylbenzimidazole derivatives such as phenylbenzimidazole sulfonic acid ,octocrylene, homosalate, etc. [0030-0046]. The wax powder includes those having a melting point of 35°C or higher, preferably 80°C or higher, this provides a temperature range that overlaps with the claimed about 65°C to about 95°C. The wax powder has a volume average particle size of 1-30µm, which overlaps with the claimed ranges. The wax powder is used in amounts ranging from 0.5-20% [0050-0054].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Blachechen with those of Iwami. One of skill in the art would have been motivated to add an oil thickener and wax powder as taught by Iwami into the sunscreen formulation of Blachechen as Iwami teaches that the combination of oil thickener, wax powder and UV protectant provides an increased UV protectant effect and has excellent texture. One of skill in the art would have a reasonable expectation of success as both Iwami and Blachechen teach sunscreen cosmetics comprising UV protectants including phenylbenzimidazole sulfonic acid ,octocrylene, homosalate, etc., and Blachechen further teaches the compositions to include viscosity increasing agents (i.e. thickeners) and teaches that waxes can be added [0021 and 0036].
Claim(s) 1-10, 11 and 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blachechen (US 2016/0303020) and Iwami (EP4079286), as applied to claims 1-10 and 12-19 above, and further in view of LaRosa (US 2021/0093529).
As discussed above, Blachechen and Iwami make obvious the limitations of claims 1-10 and 12-19, but they do not teach the formulation to be an O/W emulsions as required by instant claim 11.
While Blachechen does not explicitly recite “emulsions” Blachechen teaches formula E1 to be a cream and creams are emulsions.
LaRosa teaches topical sunscreen formulations and teaches that these can be formulated as O/W or W/O emulsions (i.e. creams, ointments or pastes) using well-known and routine procedures, equipment, techniques and substances [0041].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Blachechen and Iwami with those of LaRosa. One of skill in the art would have been recognized that the cream formulations of Blachechen could be formulated as either W/O or O/W emulsions with a reasonable expectation of success using well-known and routine procedures, equipment, techniques and substances as such it would have been prima facie obvious to formulate the cream as a O/W with a reasonable expectation of success.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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