DETAILED ACTION
Claims 26-41 are currently pending and under examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant application is a continuation of application 16/947,002, now patent 12,350,356, which claims priority to provisional application 62/907,835, filed 09/30/2019 and 62/978,347, filed 02/19/2020.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 07/07/2025 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Claim Rejections - 35 USC § 112 (b)
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 35-36 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 35 contains the trademarks/trade names transcutol®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a 2-(2-ethaoxyethoxy) ethanol, accordingly, the identification/description is indefinite. The limitation of transcutol® (2-(2-ethoxyethoxy) ethanol), it is unclear if the limitations contain inside the parenthesis limits the claim or not, thus provides unclear metes and bounds of the instant claim. It would be remedial to remove
Claim 36 contains (vitamin A) twice. In each instance the limitation provides unclear metes and bounds to the instant claim, as it is unclear if the parenthesis is required by the instant claim, optional or further defining the claim language, which as an abbreviation. This is further exasperated by retinol and beta-carotene both contains (Vitamin A). For examination purposes the limitations in the parenthesis will be deemed to be optional. It would be remedial to remove (Vitamin A), wherein retinol and beta-carotene remain in the claim.
Claim 36 contains (vitamin E) and (Vitamin E acetate). In each instance the limitation provides unclear metes and bounds to the instant claim, as it is unclear if the parenthesis is required by the instant claim, optional or further defining the claim language, which as an abbreviation. For examination purposes the limitations in the parenthesis will be deemed to be optional. It would be remedial to remove (Vitamin E) and (Vitamin E acetate), wherein tocopherol and tocopheryl acetate remain in the claim.
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 26-41 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,350,356. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘356 patent teaches a topical sunscreen comprising the same external sunscreen agent, solvent, emulsifier, thickening agent, emollient, a cannabinoid, terpene and flavoring present in overlapping amounts, wherein the external sunscreen is free of cannabidiolic acid, cannabinol and cannabigerol and has a THC is less than 0.02 mg/mL and contains at least one pH adjusting agent, antioxidant, buffer, transdermal delivery agent, preservative, fragrance, coloring agent and exfoliant.
Prior Art
The instant claims require a combination of external sunscreen agents comprising avobenzone, homosalate, octisalate, octocrylene, zinc phenol sulfonate, ensulizole and oxybenzone, as well as require the specific combination of cannabinoid, terpene and flavonoid wherein the external sunscreen agent and the cannabinoid, terpene and flavonoid are dispersed throughout the topical sunscreen composition. The ‘213 publication (US 2018/0207213, Applicant provided) teaches a topical sunscreen (abstract) comprising avobenzone, homosalate, octisalate, octocrylene and oxybenzone. The ‘213 publication teaches the composition include one or more cannabinoid compounds which may be selected from CBD [0009]. The ‘663 publication (US 2018/0344663, Applicant provided) teaches composition for treatment of chronic pain (abstract) comprising cannabinoid, terpene and flavonoid formulations [0006]. US 5,525,336 patent teaches cosmetic compositions (abstract) which may include astringents agents such as zinc phenol sulphonate (column 7, lines 5-10). The combination of references does not teach or render obvious the specific combination of sunscreen ingredients including zinc phenolsulfonate and ensulizole wherein the composition additionally comprises the specific combination of cannabinoid, terpene and flavonoid wherein there is not motivation to add the additional ingredients to the teachings of the ‘213 publication.
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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, Brian-Yong Kwon can be reached at 571-272-0581. 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.
/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613
Prosecution Insights