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 .
Information Disclosure Statements
Information Disclosure Statements (IDS) filed on 03/30/2026 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claim Status
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/18/2026.
Claims 1-3 and 6-12 are being examined to the extent of the species elections: UV filter substances, titanium dioxide and zinc oxide UV filters (pigmentary filters); emulsifier: cetyl phosphate (instant claim 7); further ingredients present: caprylic/capric triglycerides, ethylhexylglycerin, xanthan gum and glyceryl stearate (instant claims 8-10); the zinc oxide is coated with triethoxycaprylylsilane and titanium dioxide has an inner silica and outer dimethicone coating (instant claim 6).
Applicants' arguments and amendments filed on 08/06/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
New rejections necessitated by amendment
Claim Rejections - 35 USC § 112(b)-indefinite
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 6-12 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 1 recites two or more pigmentary UV filters selected from the group consisting of surface coated titanium dioxide UV filters and surface coated zinc oxide UV filters. It is unclear if the two or more pigmentary filters can include a combination of titanium dioxide UV filters and surface coated zinc oxide filters or whether the claim is only meant to encompass surface coated titanium dioxide UV filters in the alternative to zinc oxide UV filters due to the selected from. Notably, claim 6 requires a surface coated titanium dioxide filter of double coated titanium dioxide having inner silica coating and outer dimethicone coating and wherein the surface coated zinc oxide UV filters comprise zinc oxide coated with triethoxycaprylylsilane. It is unclear whether claims 1 and 6 are meant to include both a surface coated zinc oxide and surface coated titanium dioxide together, or whether the claims encompass two surface coated titanium dioxide UV filters together in the alternative to the surface coated zinc oxide uv filters. It is believed that the two or more pigmentary UV filters that are surface coated in claim 1 is meant to encompass a mixture of surface coated titanium dioxide UV filters and surface coated zinc oxide UV filters and not a selection from both which is consistent with the disclosure. Claims 1-3 and 6-12 do not rectify the indefinite issue with the scope of claim 1.
Claim Rejections - 35 USC § 112-new matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 6-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the two or more pigmentary UV filters are surface coated inorganic UV filters selected from the group consisting of surface coated titanium dioxide UV filters and surface coated zinc oxide UV filters.
Paragraph [0011] of the specification (PgPub US20250360070) recites at least one titanium dioxide UV filter and zinc oxide UV filter, not two titanium dioxide or two zinc oxide filters . Applicants point to support at the examples and disclosure; however the examples do not mention a combination of two different coated zinc oxide or two different coated titanium dioxide together. Paragraph [0044] of the instant specification states that the titanium dioxide UV filter is either double coated titanium dioxide having inner silica and outer organic coating or a silica coated titanium dioxide. Paragraph [0054] discloses Particularly advantageous combinations of pigmentary UV-filters (ii) according to the present invention encompass the combination of a double coated titanium dioxide having an inner silica and an outer dimethicone coating and a zinc oxide coated with triethoxycaprylylsilane, the combination of a silica coated titanium dioxide and an uncoated zinc oxide as well as the combination of a double coated titanium dioxide having an inner silica and an outer dimethicone coating and the micronized, insoluble organic UV-filter methylene bis-benzotriazolyl tetramethylbutylphenol. Table 1 encompasses combinations of coated zinc oxide and coated titanium dioxide; however the specification does not disclose a combination of two or more coated titanium dioxide UV filters or (i.e. in the alternative) a combination of two or more surface coated zinc oxide UV filters.
Accordingly, the amendment to claim 1 introduces new matter.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites that the surface coated titanium dioxide Uv-filters comprise double coated titanium dioxide having an inner silica coating and outer dimethicone coating and wherein the surface coated zinc oxide UV filters comprise zinc oxide coated with triethoxycaprylsilane.
However, claim 1 recites UV filter substances consisting of i) BEMT and ii two or more pigmentary UV filters. Claim 6 broadens the UV filters composition by reciting comprising language for the filters.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained Rejections
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 1-3, 8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (United States Patent Publication 20190183767).
Schlossman et al. teach sunscreen compositions which comprise bis ethylhexyloxyphenol methoxyphenyl triazine (BEMT), zinc oxide, xanthan gum, capric/capric triglycerides and glyceryl stearate, and silica at 3% by weight, see paragraph [0065] at Table 1. The BEMT can comprise 1.4% by weight, see paragraph [0065] at Table 1. The SPF of the sunscreen product at Table 1 is 38.89, thus meets the limitation having an SPF of at least 20. The zinc oxide can be present at 7.15% by weight, see Table 1.
Schlossman at Table 1 does not expressly teach the inorganic UV filter of titanium dioxide.
However, although Table 1 does not contain titanium dioxide, Schlossman et al. teaches that to meet an SPF of 30 or higher ZnO is often used along with inorganic UV filters such as titanium dioxide, see paragraph [0005] and claims 23-24. Examples of inorganic UV filter compounds are silica or titanium dioxide, see paragraphs [0051]-[0052]. Table 1 of Schlossman teaches silica.
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to substitute the silica inorganic UV filter at Table 1 for titanium dioxide.
One or ordinary skill in the art would have been motivated to do so because Schlossman et al. teach that one or more inorganic filters can be added where suitable inorganic UV filters include titanium dioxide or silica and that to achieve an SPF of 30 or higher ZnO is mixed with titanium dioxide.
There would have been a reasonable expectation of success because both silica and titanium dioxide are taught as suitable UV filters, and Schlossman et al. teach that titanium dioxide is often combined with zinc oxide to increase the SPF of sunscreen formulations.
Regarding instant clam 2, BEMT is exemplified at 1.4% by weight, and Schlossman et al. teach that the BEMT can be present from 0.5-1.5% by weight which renders obvious the claimed range of from 0.4-10% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding instant claim 3, the substitution of silica for titanium dioxide at Table 1 is 3% by weight, and the amount of BEMT is 1.4% by weight. This amount of 3% together with the ZnO present at 7.15% by weight overlaps and renders obvious the claimed range of from 0.5-25% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding instant claim 4, Schlossman et al. teach a combination of ZnO (zinc oxide) with titanium dioxide UV filters, see claims 1 and 24.
Accordingly, the teachings of Schlossman et al. render instant claims 1-4, 8 and 10-12 obvious.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (United States Patent Publication 20190183767) as applied to claims 1-3, 8 and 10-12 above, and further in view of Suma et al. (WO2021220453) and Deshayes et al. (United States Patent Publication 20190231669).
As noted above, the elected species for surface coatings of the zinc oxide is triethoxycaprylylsilane and titanium dioxide having silica and outer dimethicone coating.
Schlossman et al. teach that the ZnO can be coated with silanes, see paragraph [0030], and claim 12
However, Schlossman et al. do not expressly teach wherein the inorganic UV filters of zinc oxide coated with triethoxycaprylylsilane and the titanium dioxide is coated with an inner silica and outer dimethicone coating.
However, Suma et al. teach the surface modification of zinc oxide with silanes, see abstract. The surface modification of zinc oxide renders the particles easily dispersible and provides transparency and uv shielding properties to the cosmetic product, see pages 3-5. Examples of silanes include triethoxycaprylylsilane, see page 11. Silanes such as triethoxycaprylylsilane are preferable due to the compatibility with oil phases with a wide range of polarity, see page 11.
Neither Schlossman et al nor Suma et al. teach double coatings of titanium dioxide having silica and an outer coating of dimethicone.
Deshayes et al. teach cosmetic sunscreen formulations having inorganic Uv filters, see paragraph [0018]. The inorganic filters are surface treated to render the particles more hydrophobic and thus more dispersible in their vehicle, see paragraphs [0016]-[0026]. The preferred coatings are double coated titanium dioxide having silica coating and an outer dimethicone, see paragraph [0028].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to coat the zinc oxide filters of Schlossman et al. with triethoxycaprylylsilane and titanium dioxide UV filters of Schlossman with an inner coating of silica and outer coating of dimethicone.
One of ordinary skill in the art would have been motivated to do so because Suma recognize that surface coatings with triethoxycaprylylsilane enable the zinc oxide particles to have improved dispersion and Deshayes also recognizes that coating titanium dioxide with silica and dimethicone is advantageous as it makes the UV filter more dispersible in its vehicle.
There would have been a reasonable expectation of success because Schlossman et al. teach formulating emulsions with the UV filter particles, see paragraph [0059].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 20190183767) as applied to claims 1-3, 8 and 10-12 above, and further in view of Takakura et al. (WO2012081446).
The teachings of Schlossman et al. are discussed above. Schlossman et al. teach that the composition can take the form of an emulsion (paragraph [0059]), however Schlossman et al. do not expressly teach an O/W emulsion having the emulsifier of potassium cetyl phosphate.
Takakura et al. teach that low viscosity oil in water emulsions (O/W) give the product a fresh feeling with no stickiness or oiliness which provides excellent feel and stability, see abstract and pages 3-6. The preferred anionic emulsifier is potassium cetyl phosphate (alkyl phosphate) and is an essential component, see paged 4-5 and 8.
It would have been prima facie obvious to provide the sunscreen product of Schlossman et al. as a low viscosity O/W emulsion having potassium cetyl phosphate emulsifier.
One of ordinary skill in the art would have been motivated to do so because Takakura et al. teach that O/W emulsions having potassium cetyl phosphate with UV absorbers provide for emulsions which give a fresh feel when applied and no stickiness or oiliness, thus providing excellent feel and stability.
There would have been a reasonable expectation of success because Schlossman et al. and Takakura et al. teach sunscreen formulations and Schlossman et al. teach that the sunscreen formulation includes emulsions.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 20190183767) as applied to claims 1-3, 8 and 10-12 above, and further in view of Kuttler et al. (United States Patent Publication 20220168209).
The teachings of Schlossman et al. are discussed above.
Schlossman et al. do not teach the presence of ethylhexylglycerin in the sunscreen product.
However, Kuttler et al. teach sunscreen compositions including emulsions which comprise preservatives that prolong the shelf life of the product including ethylhexylglycerin, see paragraph [0027]. The composition can take the form of an emulsion, see paragraph [0023].
It would have been prima facie obvious to provide ethylhexylglycerin as the preservative in the sunscreen formulation of Schlossman et al.
One of ordinary skill in the art would have been motivated to do so because ethylhexylglycerin is taught to prolong the shelf life of sunscreen products.
There would have been a reasonable expectation of success given Schlossman et al. teach that the sunscreen formulation can further contain preservatives, see paragraph [0060].
Response to remarks
Applicants argue that the claimed invention relies on the discovery that the presence of both coated ZnO particles and coated TiO2 particles as the sole UV filters results in the reduction of L values which reflects decreased whitening effect of the composition. Applicants note that such as discovery could not have been foreseeable to an ordinary skilled artisan based on Schlossman, Suma and Deshayes.
Examiner respectfully submits that while Table 1 does indeed show a reduction of L value with triethoxycaprylylsilane coated ZnO and titanium dioxide coated with silica, dimethicone (table 1 inv 1), or zinc oxide with silica coated titanium dioxide (invention 3), the results presented at Table 1 do not presently commensurate in scope with the claimed invention. The instant claims do not even require a mixture of coated ZnO and coated Titanium dioxide as claim 1 is selected from either. Secondly, Table 1 demonstrates silica coated titanium dioxide or a double coating with silica and dimethicone whereas the instant claim 1 does not require these particular coatings. Furthermore, the examples demonstrate concentrations of each UV filter present at 5% by weight with BEMT at 3% by weight. In other words, the concentration of the UV filters in each of the examples is greater than the BEMT. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). Here, one of ordinary skill in the art would not be able to ascertain a trend such that the L value can be lowered for any type of coated ZnO or coated titanium dioxide at any concentrations.
Conclusion
Currently, no claims are allowed and claims 1-3 and 6-12 are rejected.
Applicants’ arguments/remarks are considered unpersuasive and the amendment to the claims necessitated new grounds of rejections. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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