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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 12/01/2025 is acknowledged. Claims 3-10 have been withdrawn. Claims 1 and 2 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 12/01/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. The rejection is modified based on the amendments.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1 and 2 are rejected under 35 U.S.C. 103(a) as being unpatentable over Gonzalez et al. (US 2010/0184887 A1) in view of Samain et al. (US 2012/0328542 A1).
Gonzalez et al. teach particles P (being X-Y-Z) of inorganic nanoparticles
with ZnO being inorganic nanoparticle X having particle size of 1-20 nm (the claimed M) (paragraph 47),
with organic molecules M being Y-Z and with Y being a silane (crosslinked) (paragraph 62) linker and Z being a chromophore UV absorber including benzylidenecamphor or its derivatives including 3-Benzylidenecamphor (abstract, paragraph 38, 42, 49, 51, 60-63, 65, and 71); and
the coverage of M of P (i.e., on X) being partial (paragraph 44) and M being 5-70% by weight of P (paragraph 45); and exemplified
ZnO (X) with silane linker 3-aminopropyltriethoxysilane (Y,
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i.e., R1 and R2 being hydrogen and R3 being C3 alkyl in the middle component of claimed formula 1-1) and 1:1 molar ratio between ZnO (X) and silane linker (Y) in example 2 and
a particle formed from ZnO (X) reacting with silane linker (Y)-cyanoacrylamide chromophore of example 4 in example 6.
Gonzalez et al. teach X (the claimed M) and Y (silane linker, the claimed middle component in formula 1-1) being covalently bonded (paragraph 51, 60, and 90). With X and Y taught by Gonzalez et al. being the same as the claimed M and the claimed middle component in formula 1-1, respectively, the bond between X and Y taught by Gonzalez et al. would be the same type as the claimed bond between the claimed M and the claimed middle component in formula 1-1.
Based on the teaching of the coverage of M on X being partial, M being 5-70% by weight of P, a particle in example 6 being formed from ZnO (X) reacting with silane linker (Y)-cyanoacrylate chromophore of example 4, silane linker (Y)-cyanoacrylamide chromophore portion weight of 359 g/mol (silane linker portion weight of 127 g/mol and cyanoacrylamide chromophore portion weight of 232 g/mol), the Y (silane in molar) (the claimed m in mmolar) relative to X (ZnO) in gram (the claimed M in g) is calculated to be 0.147-6.5 mmol / 1 g of ZnO (5x1000/359 : (100-5) → 0.147 : 1 and 70x1000/359 : (100-70) → 6.5 : 1).
Gonzalez et al. do not specify benzylidenecamphor derivatives including terephthalylidene dicamphor sulfonic acid (the claimed left component in formula 1-1).
This deficiency is cured by Samain et al. who teach organic UV screening agents benzylidenecamphor derivatives including 3-benzylidenecamphor, terephthalylidene dicamphor sulfonic acid (
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) (paragraph 85, 86, and 99).
It would have been prima facie obvious at the time of the invention to a person of ordinary skill in the art to combine the teachings in Gonzalez et al. and Samain et al. to replace 3-benzylidenecamphor in the particle taught by Gonzalez et al. with terephthalylidene dicamphor sulfonic acid. Both 3-benzylidenecamphor and terephthalylidene dicamphor sulfonic acid being organic UV screening agents benzylidenecamphor derivatives was well known to a person of ordinary skill in the art at the time of the invention. The motivation for replacing 3-benzylidenecamphor with benzylidenecamphor derivatives flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
Gonzalez et al. do not specify the same m in mmol (the Y, silane) relative to M (X, ZnO) in gram (0.147-6.5 mmol / 1 g vs the claimed 0.3-1.0 mmol / 1 g).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of m in mmol relative to M in gram is 0.3-1.0 mmol / 1 g and the range of Y (silane) in mmol relative to X (ZnO) in gram taught in the prior art is 0.147-6.5 mmol / 1 g and therefor, includes the claimed range.
Response to Applicants’ arguments:
Applicant’s argument based on the amendments is addressed in the modified rejection above (underlined).
Applicants argue that Gonzalez et al. do not teach the claimed m in mmol relative to M in gram and Gonzalez et al.’s teaching of a single “mmol/g” range can’t be directly read from generic 5-70 wt% without choosing a specific M and performing ex post facto calculation using the disclosure in the specification.
However, this argument is not deemed persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon the disclosure in the specification (improper hindsight reasoning), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. In the instant case, the prima facie obviousness is based on the combination of Gonzalez et al.’s and Samain et al.’s teachings:
Gonzalez et al.’s teachings of organic UV screening agents benzylidenecamphor derivatives including 3-benzylidenecamphor and Samain et al.’s teaching of both 3-benzylidenecamphor and terephthalylidene dicamphor sulfonic acid being organic UV screening agents benzylidenecamphor derivatives → replace 3-benzylidenecamphor in the particle taught by Gonzalez et al. with terephthalylidene dicamphor sulfonic acid, and → the calculated m in mmol relative to M in g based Gonzalez et al.’s teachings:
the coverage of M on X being partial, M being 5-70% by weight of P, a particle in example 6 being formed from ZnO (X) reacting with silane linker (Y)-cyanoacrylate chromophore of example 4, silane linker (Y)-cyanoacrylamide chromophore portion weight of 359 g/mol (silane linker portion weight of 127 g/mol and cyanoacrylamide chromophore portion weight of 232 g/mol), → the Y (silane in molar) (the claimed m in mmolar) relative to X (ZnO) in gram (the claimed M in g) is thus calculated.
Applicants argue that the claimed 0.3-1.0 mmol / 1 g is much narrower than the calculated 0.147-6.5 mmol / 1 g from Gonzalez et al.’s teaching while all working examples have m with the claimed 0.3-1.0 mmol / 1 g.
However, this argument is not deemed persuasive. As stated in the rejection above and in the previous office action, a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. Unexpected results resulted from the claimed range vs the prior art range will support the criticality of the claimed range. Please refer to MPEP 2144.05.III.A:
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”
“Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
Applicants argue that Gonzalez et al. teach organically modified inorganic nanoparticles for polymer finishing and generic UV-absorbing particles while the claimed particle is to solve the problem of cosmetic sun-blocking agents that having high SPF and PA value, stability in o/w formulation and suppressing whitening.
However, this argument is not deemed persuasive. Gonzalez et al. in view of Samain et al. teach the claimed complex (particle), whether Gonzalez et al. and Samain et al. recognize the underlining mechanism and/or advantages of the claimed particle not is not relevant. Please refer to MPEP 2145 II:
Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.
“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”
Applicants argue that Gonzalez et al. do not teach highly water-soluble di-sulfonated benzylidenecamphor derivatives and substituting a strongly anionic hydrophilic filter terephthalylidene dicamphor sulfonic acid would change the natura of the organic shell and its interaction with the particle while Samain et al. treat terephthalylidene dicamphor sulfonic acid as a water soluble anionic screening agent as a separate component C to be captured by an in-situ condensation of silane-based film formed on skin.
However, this argument is not deemed persuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.
In the instant case, Gonzalez et al. teach organic UV screening agents benzylidenecamphor derivatives including 3-benzylidenecamphor and do not teach away from highly water-soluble di-sulfonated benzylidenecamphor derivatives while Samain et al. provide teachings of both 3-benzylidenecamphor and terephthalylidene dicamphor sulfonic acid being organic UV screening agents benzylidenecamphor derivatives (paragraph 86 and 99). Please refer to MPEP 2145.III and MPEP 2143.02:
the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.
A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614