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
Claims 6-12, 15-16, 19 and 22-23 are pending.
Claims 6 and 19 are currently amended.
Claims 1-5, 13-14, 17-18 and 20-21 have been canceled.
Claims 6-12 and 15-16 are withdrawn.
Claims 19 and 22-23 are currently under consideration.
Claims 19 and 22-23 are rejected.
Acknowledgement of Receipt
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/27/2025 has been entered.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 08/05/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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. Applicants are 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.
Applicant Claims
The instant claims are directed to a cosmetic composition comprising surface-treated inorganic particles, wherein the surface-treated inorganic particles comprise inorganic particles and a metal-organic framework bound to a surface of the inorganic particles, wherein the metal-organic framework comprises a metal and an organic compound, said organic compound forming a skeleton of the metal-organic framework, wherein the organic compound consists of a catechin, wherein the catechin comprises epicatechin, epigallocatechin gallate, gallocatechin gallate, or a combination thereof, and wherein the metal constituting the metal-organic framework is selected from the group consisting of iron, magnesium, zinc, copper, manganese, titanium, molybdenum, cerium, barium, aluminum, calcium, yttrium, and a combination thereof. The claimed inorganic particles are selected from the group consisting of titanium dioxide, zinc oxide, iron oxide, copper oxide, aluminum oxide, cerium oxide, barium oxide, silica, mica, talc, sericite, calamine, and a combination thereof; wherein said inorganic particles have a particle diameter of about 10 nm to about 100,000 nm.
Claims 19 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Horcajada et al. (US 2010/0226991 A1, pub. 09/09/2010) 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), herein referenced Horcajada, Elhabiri, Yu, and Musial.
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). An antioxidant, e.g., polyphenols, flavonoids, tannins, anthocyanins, 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 is known in the art to form stable complexes with trivalent cations suggesting 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
Applicant's arguments filed 08/27/2025 have been fully considered but they are not persuasive.
Applicants argue that Horcajada does not disclose catechin; Elhabiri and Yu disclose only (+)-catechin as catechin and do not disclose epicatechin, epigallocatechin gallate, gallocatechin gallate. Applicants argue that there is no motivation provided to modify the teachings of the cited prior art to arrive at the claimed composition (Remarks, pg. 8, para. 2).
The Examiner in response, respectfully submits that Horcajada teaches organic components of MOFs may be antioxidant polyphenols ([0119], [0348], [0352]). Horcajada discloses catecholates (derived from a type of phenolic compound, i.e., catechols) as an organic ligand with metal-complexing groups ([1011]). Evidenced by Elhabiri, catechol groups are in catechin (pg. 353, para. 1). Yu teaches catechin (green tea) and catechin (CT) (pg. 2779, para. 2-pg. 2780, para. 1) and provides the modified composite [TiO2-CT] (pg. 2780, para. 1, Fig. 1). Evidenced by Musial, catechins exhibit the strong property of neutralizing reactive oxygen and nitrogen species; catechin derivatives epicatechin, epigallocatechin, epicatechin gallate and epigallocatechin gallate comprise green tea (abstract). One skilled in the art would be motivated to combine the cited art with a reasonable expectation of success, because Yu discloses that with covalent functionalization, antioxidant properties of free polyphenols transfer to TiO2 hybrids (pg. 2782, para. 1) to readily envision both UV-blocking capabilities and enhanced radical-scavenging activity.
For these reasons, Applicants’ arguments are found unpersuasive.
Conclusion
Claims 19 and 22-23 are rejected; no claims are currently allowable.
The Examiner asks Applicant to provide support for the amendments in the application disclosure by referencing page numbers, paragraphs, figures, etc. for the sake of compact prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 900-500 ET.
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, Ali Soroush can be reached at 571-272-9925. 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.
/Karen Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614