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 .
DETAILED ACTION
Status of the Claims
Claims 6-12, 15-16, 19 and 22-23 are pending.
Claims 1-5, 13-14, 17-18, and 20-21 are canceled.
Claims 6 and 19 are amended.
Claims included in the prosecution are claims 19, 22 and 23.
Information Disclosure Statement
The Information Disclosure Statement submitted 02/17/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
Maintained Rejections
The following rejections are maintained from the previous office action dated 02/05/2026 since the art that was previously cited continues to read on the amended 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 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 19, 22, and 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Horcajada et al. (US 2010/0226991 A1) evidenced by Elhabiri et al. (lnorganica Chimica Acta 360 (2007) 353-359) in view of Yu et al. (ACS Biomater. Sci. Eng. 2019, 5, 2778-2785) evidenced by Musial et al. (“Beneficial Properties of Green Tea Catechins” Int J Mol Sci. 2020 Mar 4; 21(5):1744).
Horcajada discloses solid organometallic hybrids with modified surface, specifically a crystalline porous solid with a metal-organic framework (MOF), and a process for preparing them (abstract, [0001]). Horcajada teaches that the MOF solid may be in the form of particles or nanoparticles having pharmaceutical and cosmetic applications ([0002], [0049], claim 8). The MOF solid comprises a three-dimensional succession of identical or different units: a metal ion to include iron, a ligand, and spacer ligand ([0022], [0028-0035], [0047-0048], [0065]; claims 1 and 5). The units may contain either only one type of metal ion, or several types of metal ions ([0104]).
Horcajada teaches that at least two metals coordinating with the ligand via one, the other or both the points of attachment and a spacer ligand comprising 1 to 6 functional groups ([0052]). Surface agents are taught as being molecules that partly or totally cover the surface of the solid in order to modify surface properties of the solid ([0067]). Horcajada teaches surface agents may be deposited onto the surface of the solid (i.e., surface-treated), e.g., attached via covalent or hydrogen bonding, electrostatic interaction; incorporated during or after the synthesis of the solid ([0084-0085]).
Regarding the catechin limitation, Horcajada discloses vitamins as being organic surface agents ([0071], [0079], claim 10). Horcajada teaches that an antioxidant, e.g., polyphenol, flavonoid, tannin, anthocyanin, may be introduced into the solid ([0351-0355], claims 11, 22). Catecholates are possible organic ligands with metal-complexing groups ([1011]). As evidenced by Elhabiri, catechins possess a catechol group which forms stable complexes with trivalent cations which suggests its potential as a natural dietary iron chelator (pg. 353, para. 1).
Horcajada does not teach the organic compound consisting of a catechin.
Yu teaches titanium-based composites with catechin which significantly increase the radical scavenging capability of the hybrid material (abstract, pg. 2779, para. 2). Yu teaches titanium dioxide (TiO2) as a naturally occurring mineral used in cosmetics (pg. 2778, para. 2). Yu discloses that the esterification of a surface of carboxylated TiO2 microspheres [TiO2-CO2H] with natural phenols produce covalently modified titanium dioxide composites to include catechin [TiO2-CT] (pg. 2780, para. 1, see catechin (CT) in Figure 1. Element A). Yu teaches and suggests that covalent functionalization, even at low concentrations, can facilitate the transfer of antioxidant properties of free polyphenols to TiO2 hybrids (pg. 2782, para. 1).
Regarding the catechin comprising epicatechin, epigallocatechin gallate, gallocatechin gallate limitation, Yu teaches catechin (green tea) in paragraph 2 on page 2779, and catechin (CT) (pg. 2780, para. 1). As evidenced by Musial, catechins exhibit the strong property of neutralizing reactive oxygen and nitrogen species and catechin derivatives epicatechin, epigallocatechin, epicatechin gallate and epigallocatechin gallate comprise green tea (abstract). These components of green tea are well-known and commonly isolated in the food and cosmetics industry.
Regarding claim 21, Yu teaches catechin (abstract, pg. 2779, para. 2; pg. 2783, para. 2).
Regarding claim 22, Horcajada teaches titanium dioxide with biological compatibility as a component in a MOF and further provides a synthesis with titanium dioxide ([1009], [1011]).
Regarding claim 23, Horcajada teaches that the solid MOF nanoparticles may have a diameter of less than 1,000 nanometers and most particularly less than 100 nm ([0050]) to read on the claimed range. MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art.
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate the Yu’s catechin in Horcajada’s MOF organic ligand (i.e., organic compound) evidenced by Elhabiri and Musial with expected results. One would be motivated to do so with a reasonable expectation of success because Yu demonstrates catechin’s ability to advantageously increase the radical scavenging capability of the hybrid material (abstract, pg. 2779, para. 2). Yu further teaches that catechins along with other natural phenols, improve antioxidant efficiency and titanium particle size is unaffected at about 1.4 µm where covalent functionalization leads to a desirable tuning of the optical properties, which result in a bathochromic shift to be more efficient in absorbing UV-vis light (pg. 2783, para. 2, see Conclusions) to suggest an improvement in skin protection.
For the foregoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Response to Arguments
Applicants’ arguments filed 05/04/2026 have been fully considered but they are not persuasive.
Applicants argue Yu’s two-dimensional monolayer of molecules chemically bonded to the surface and coating formed from ester covalent bonds would not form the MOF via coordination bonding in the claimed invention in which catechins coordinate with metal ions (Remarks, bridging pages 2-3).
Yu is brought in to teach the organic compound consists of a catechin. It would have been obvious to incorporate the catechin taught by Yu in the metal organic framework of Horcajada because albeit the TiO2 particles of Yu are carboxylated (TiO2-CO2H]), there is a clear teaching of a catechin as the organic compound. One would be motivated to do so because an organic compound that consists of a catechin (CT) taught by Yu, one would advantageously gain antioxidant properties from polyphenols (see Yu, page 2782, paragraph 1). Yu teaches many natural phenols and polyphenols are biocompatible and economically viable, and some have been demonstrated to provide protection from oxidative stress (see Yu, page 2783, column 1, paragraph 1). Horcajada identifies polyphenol as the compound of interest that may be chosen to in the solid (Horcajada [0352], claims 11, 15).
Applicants argue Horcajada-Cortes’s surface modifying techniques do not use inorganic metal oxide particles (such as TiO or ZnO) as a "seed" or "core" to grow a specific MOF shell whose framework is formed by "catechin" on their surfaces. Applicants argue the claimed MOF functions as a protective coating to prevent discoloration and indicate unexpected results (Experimental Example 3, Figures 8 to 11) in which there was no visually discernible browning. Applicants argue that Yu focuses on radical-scavenging efficacy, not what applicants are focused on, i.e., long-term color stability, crucial to the marketability of cosmetic formulations (Remarks, page 3, paragraphs 2-5).
Regarding the unexpected results, the Examiner respectfully submits that Applicant is required to present a comparison with the closest prior art of record. The rejected claims are product claims not method claims; “to grow a specific MOF shell” is intended use. If the prior art teaches the structural features of the claimed invention then one would expect to arrive at the feature of preventing of browning. Looking to the above argued Experimental Example 3 “comparison of color stability between surface treatment and simple mixing,” stating that comparative example 1 exhibited severe browning of EGCG but the cosmetic composition according to Example 1 exhibited almost no browning of EGCG (page 32, lines 6-8). The examiner notes that the argued Ex. 1 has EGCG-MOF-TiO2 (at 10). The Comp. Ex. 1 does not comprise any EGCG and does not comprise MOF and instead a water-dispersion type of titanium dioxide powder (at 10) (see Spec., page 29, continuation of Table 2).
Applicants argue that the pronounced synergistic effect of the anchoring catechins (particularly EGCG, GCG, etc.) within an MOF framework, and since these superior effects that are not taught or suggested by the cited references gives evidence of a "superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected" is evidence of non-obviousness and that the claimed invention is a novel and nonobvious improvement over the prior art (Remarks, bridging pages 3-4).
In response, the MPEP 2144.09(I.) states that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. A claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences, in fact, in their respective properties which are determinative of nonobviousness. Thus, if the prior art compound does in fact possess a particular benefit, even if that benefit is not recognized in the prior art, Applicants’ recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art. Therefore, the synergism that applicants argue to be possessed by the claimed invention would be possessed by the prior art. Where the claimed and prior art product(s) are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product(s) do not necessarily or inherently possess the characteristics of the instantly claimed product(s), see In re Best, 195 USPQ 430. See MPEP 2112.01.
For these reasons, Applicants' arguments are found unpersuasive.
Conclusion
All claims under consideration remain rejected; no claims are allowed. Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 case, 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 Karen A. Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached M-F, 9-5.
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/Karen A Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
