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 Status
The claims are newly amended. The prior “volume based medium particle diameter. .. . “ feature has been removed and replaced with new features. The new features added were not previously considered. Additionally, the claims were amended to narrow the range of the extinction coefficient and also adds aspects of the rotary calcination feature.
Interview
The Examiner appreciates the interview of 2/12/26, the contents of which were disclosed in the interview summary. In the interview, it was explained that the process features were product by process features and Applicant argued that the process of using a rotary calciner produced different features in the product, not found in a static calciner. However, upon review of the newly amended claims, the product features described in the product are disclosed in the prior art. The updated rejection is below.
Response to Arguments
Applicant's arguments filed 3/20/26 have been fully considered but they are not persuasive.
The remarks argue the following:
Applicant also submits herein for the Examiner's consideration a technical
declaration under 37 C.F.R. 1.132 that is lointly prepared by Dr. Ian Tooley, Dr. Amy Goddard and Dr. Dominic Gray ("the Tooley/Goddard/Gray declaration") whose qualifications are identified on page 1 of the declaration. Applicant would like to especially direct the Examiner to Table 1 on page 3 of the Tooley/Goddard/Gray declaration where the experimental data clearly demonstrates that titanium dioxide particles prepared by rotary calcination unexpectedly and consistently exhibited significantly improved UV absorption properties as compared to titanium dioxide particles prepared by static calcination as described in Tooley. Specifically, the range of total UV protection per whiteness unit for the working examples of the present invention that employed rotary calcination (350.2 to 436.3) was significantly improved compared to the working examples of Tooley that employed static calcination (179.5 to 314.9).
Table 2 on page 4 of the Tooley/Goddard/Gray declaration demonstrates that the least favorable example of the present application (Example 4) nevertheless represents an improvement in both full UV protection (15% improvement) and total UV protection per whiteness unit (11% improvement) compared to th best examples in Tooley.
Pages 5-6 of the Tooley/Goddard/Gray declaration identify the following notable benefits/advantages associated with rotary calcination compared to static calcination:
" Rotary calcination achieves the above discussed excellent UV properties despite short calcination times of 10 to 30 minutes (compared to the longer static calcination times), which is desirable from a manufacturing/economic standpoint.
The remarks are respectfully not persuasive. The primary reference cited, Tooley, already discloses the claimed range that meets the features: (E308 x E360)/E524 is between 340 l/g/cm – 465 l/g/cm. On page 12 of Tooley, the reference explains that their composition has a E308 value of about 40-58 l/g/cm (page 12, lines 14-16), a E360 value of 30-46 l/g/cm (page 12, lines 11-14) and a E524 value of 1-8 (page 12, lines 6-8). The value of these when plugged into the equation: (E308 x E360)/E524 overlaps the claimed range of 340 l/g/cm – 465 l/g/cm. Therefore, the declarations’ position that use of a rotary calciner to improve upon the UV protection of the titania particles is not supported by the reference.
The remarks argue the calcination time of 10-30 minutes, but these are process features and the claims are products. Furthermore, the reference does disclose the same product features as the claims.
The remarks argue the following on pages 5-6:
" Rotary calcination permits product synthesis using a continuous method, which is economically desirable. " A person skilled in this technical area would conclude from the available data that calcining TiO2 precursor material in a static calciner for 10 to 30 minutes at 710 0C would not be expected to provide TiO2 particles with the same advantageous properties achieved by the TiO2 particles according to the present invention.
Taking into consideration both of the synthetic scales described in Tooley: the 400 g scale of Examples 1 to 4 and the 400 kg pilot-plant scale of Examples 7 and 8, it would be expected that subjecting the TiO2 precursor material to 10 to 30 minutes of static calcination would not ensure sufficient agglomeration of the precursor particles into a TiO2 product exhibiting the advantageous balance of UV absorption properties observed with TiO2 particles prepared by rotary calcination. Static calcination at 10 to 30 minutes would instead be expected to result in particles with inferior UVA absorption properties, similar to the uncalcined reference example in Table 1 in the Tooley/Goddard/Gray declaration.
. Commercial sunscreen formulations have been manufactured using titanium dioxide particles according to the present invention and launched subsequent to the October 1, 2020 filing date of the present application. Many of these commercial sunscreen formulations comprise products from Croda's SolaveilTM SpeXtra series, which is a representative product range according to the present invention. The commercial success of the SolaveilTM SpeXtra series of products is substantially a result of the advantageous total UV protection per whiteness unit [(E308 x E360)/E524] properties discussed in the Tooley/Goddard/Gray
declaration. The advantageous (E308x E360)/E524 properties are a direct result of using rotary calcination to form the particles.
The remarks are respectfully not persuasive. The first point and the second points describe benefits of these methods (time and continousness), but the claims are to a titania composition. Therefore, the efficiency of using a rotary calciner and for a short amount of time are method features, which are respectfully not part of the composition claims.
As to the third feature, it was argued above that one of ordinary skill would expect the properties claimed would be manufacturable using the static calciner since Tooley shows this feature.
Furthermore, as to agglomeration of the precursor particles to gain the UV absorption properties, the UV absorption properties were disclosed by the reference. The agglomeration features were not described in the claim.
As to the argument regarding commercial success, the argument is noted. However, it has been held that the nexus between the commercial success and the claimed invention have a probative value in determining nonobvoiusness, see Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988). That is, sunscreen-containing properties of the claimed product may or may not be superior over the existing products in the field.
The remarks then argues that use of a static calciner for 10-30 mins results in particles with inferior UVA absorption properties. This is respectfully contended. UVA properties are attributed to the E360 value. The claims however only describe this value in the formula above, which is (E308 x E360)/E524. The value of E360 individually is not provided in the claims. Therefore, the arguments are outside of the scope of the claims.
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.
Claim(s) 1, 13, 14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tooley (WO 2011/077084) or Tooley in view of Hata (TW 201729793) and in view of Hutchensen (CN 101622198).
Tooley describes a titanium dioxide particle (page 1, lines 5-7) has a mean aspect ratio of 1 to 2.5:1 (page 7, lines 6-9) and a mean crystal size of 20-40nm (page 7, lines 21-24). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
The E308 value is from 40-58 l/g/cm (page 12, lines 14-16). The E360 value is from 25-50 (page 12, lines 10-12) and the E524 value is from 1-8 (page 12, lines 5-8). When placed in the equation: (E308 x E360)/E524 = 1,000-312 l/g/cm. A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
The product features are fully met by the Tooley reference. The rest of the claimed features are product-by-process features.
Alternatively, although the product features are fully met above, the process features are known in the field.
The titania particles of Tooley are calcinated at a temperature from 500-800 degrees C for 1-15 hours, but the reference does not describe calcinating using a rotary calciner from 690-730 degrees C for 10-30 minutes.
Hata describes a titanium dioxide powder composition (title). In the background, Hata explains that titanium dioxide is known to have UV absorbing and UV shielding effectiveness (see Background, para. 1). The compound can be used in a large variety of applications, including in sunscreen cosmetics (page 6, para. 6) and as a UV absorber (page 6, para. 7). As to making the titania powder, Hata explains that the product is made using calcination (page 5, para. 5, 6). Hata explains that calcination temperatures vary depending on the calcination apparatus used (page 5, para. 7, 8). The calcining apparatus used can be a muffle kiln or a rotary kiln in the range of 500-800 degrees C (page 5, para. 8). In the process of Hata, the reference uses a rotary calciner (page 9, para. 3), which Hata explains has a higher calcination efficiency and is preferred for mass production (page 9, para. 3). Further, Hata explains that it is known generally that rotary calciners have a high calcination efficiency and can obtain the same calcination conditions at lower temperatures and time as static calciners (page 9, para. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a rotary calciner in place of a static calciner to calciner the titania particles at a temperature range of 500-800 degrees C because Hata explains that rotary calciners have a high calcination efficiency and can obtain the same calcination conditions at lower temperatures and time as static calciners.
As to the calcining for 10-30 minutes, Hata does not specify the amount of time used to calcine the titania in the rotary calciner.
Hutchenson describes a titania composition (title). The final titania product is calcined using a rotary calciner at a temperature range of 550 and 800 degrees C (see embodiment 43, para. 359). The calcination is performed for 45 minutes (para. 359).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to calcine the titania at a temperature range of 550-800 degrees C, as taught by Tooley and Hata for 45 minutes, as taught by Hutchensen because heating for this amount of time using a rotary calciner is known to have predictable and effective results.
As to Claim 17, Tooley states that the titania particles are in a dispersion and used as a sunscreen (abstract).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 April 15, 2026
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