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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/28/2025 has been entered.
Applicants' arguments, filed 10/28/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Status
Claims 1-4, 6, 7, 10-15, 17, 19, and 21-24 are pending.
Claims 10-15 and 17 are withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 6, 7, and 21-24, are rejected under 35 U.S.C. 103 as being unpatentable over Guerrero Mendez (US 2016037772 A1) in view of Yu et al (Ind Eng Chem Res, 2018, 57, 15740-15748) and Huang (CN 108938450 A).
Guerrero Mendez teaches a sunblock for treating plants (abs). The sunblock agent comprises kaolin or calcium carbonate, including limestone, chalk, calcite, etc. (¶ 5). As evidenced by the instant specification, limestone and chalk are ground calcium carbonates (GCC) and calcite is a precipitated calcium carbonate (PCC) (see instant spec at ¶ 24). Calcium carbonate reduces stress of plants by reflecting UV, visible, and infrared rays, reducing the impact of excessive heat and light in photosynthesis and other essential plant cellular processes (¶ 81). In some embodiments the composition is in powder form (¶ 5). Other formulations are solutions, solutions comprising liquid carriers (¶ 58); non-limiting examples of liquid carriers include alcohols, glycerol, acetone, etc. (¶ 53). The typical particle size for a sunblock agent is in the range of about 0.5 to 3 microns (¶ 52). ECLIPSE is a disclosed sunblock consisting of calcium carbonate and is used in the working embodiments (tables 1, 3, 4, ¶ 98).
Guerrero Mendez does not teach the addition of water-insoluble lignin to the sunblock composition.
Yu et al teach lignin (as lignosulfonate, i.e., a sulfonated lignin) coated titanium oxide (TiO2) particles with high UV-blocking properties (title, abs). Both TiO2 and lignin are UV-blockers (pg 15744 1st col 2nd ¶). The lignin coating not only improved the dispersibility of TiO2, but also significantly boosted its UV-blocking ability compared to lignin or TiO2 used alone, and their physical mixture (abs, pg 15744 1st col 2nd ¶, fig 4). The SPF values of the lignin coated TiO2 based sun creams were 30-60% higher than those of the sun creams with the same dosage of TiO2 (conclusion). In particular embodiments, the lignin content was 3.4 to 6.0 wt% of the particles, where the SPF increased with increasing lignin wt% (abs, table 2).
Yu et al do not specifically teach the lignin content as instantly claimed nor wherein the lignin is a water-insoluble lignin.
Huang teaches lignin coated titanium dioxide particle compositions for ultraviolet protection, which can effectively improve the anti-ultraviolet performance of the particles and shield the ultraviolet photocatalytic performance of the titanium dioxide. (abs, ¶¶ 25, 30). It was known that lignin coated titanium dioxide particles significantly improved sun protection effect, increasing SPF value by 157% (¶ 62). The lignin is at least one of alkali lignin, hydrolyzed lignin, lignosulfonate, etc. (¶ 20). As evidenced by instant claim 4, hydrolyzed lignin is a water insoluble lignin (see instant claims 1 and 4). The particles comprise 100 parts by weight of lignin, 10-1000 parts by weight of titanium dioxide, and 1000-100000 parts by weight of solvent (¶¶ 2, 16-19). The solvent is at least one of dimethyl sulfoxide, dimethylformamide, acetone, dioxane, etc. (¶ 22).
Regarding the limitation of a dry composition of claim 1, it would have been obvious to formulate the composition in powder form (i.e., dry composition), as taught by Guerrero Mendez.
Regarding calcium carbonate of claims 1 and 2, it would have been obvious to select from calcium carbonates as the sunblock active, such as limestone (GCC), chalk (GCC), calcite (PCC), etc., a suitable sunblock agent known to reduce stress of plants by reflecting UV, visible, and infrared rays, reducing the impact of excessive heat and light in photosynthesis and other essential plant cellular processes as taught by Guerrero Mendez.
Regarding the inclusion of a lignin of claim 1, it would have been obvious to modify the calcium carbonate particles of Guerrero Mendez by including a lignin coating, where it was known that lignin coatings on UV-blocking particles improve dispersibility and significantly boost UV-blocking properties, as taught by Yu et al, where both are drawn to particles used to block the sun.
Regarding the amount of lignin of claim 1, where Yu et al teach SPF increases with increased lignin content, it have been obvious to modify the combination of Guerrero Mendez and Yu et al by including other known amounts of lignin used to coat UV blocking particles, such as 100 parts by weight of lignin to 10-1000 parts by weight of the UV blocking particles, as taught by Huang, depending on the desired level of SPF. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding water-insoluble lignin of claims 1 and 4, it would have been obvious to substitute hydrolyzed lignin of Huang for the lignosulfonate of Yu et al, where both were known lignins used to impart sun protection.
Regarding the newly added limitation of a UV-A/UV-B filter agent of claim 1, where the composition made obvious above comprises at least one calcium carbonate material and at least one water insoluble lignin coating, the intended use limitations of a UV-A/UV-B filter properties appear to be inherently met. See MPEP 2112(II) and (III).
Regarding claims 6 and 7, it would have been obvious to modify the composition made obvious above by including an organic solvent such as acetone, etc., as taught by Guerrero Mendez and Huang, in known amounts such as 50% by weight of the sunscreen agent (1000 parts titanium oxide to 1000 parts solvent), as taught by Huang, where both are drawn to compositions for providing sun protection. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the limitation of a dry composition of claim 21, it would have been obvious to formulate the composition in powder form (i.e., dry composition), as taught by Guerrero Mendez.
Regarding calcium carbonate of claim 21, it would have been obvious to select from calcium carbonates as the sunblock active, such as limestone (GCC), chalk (GCC), calcite (PCC), etc., as taught by Guerrero Mendez for the same reasons discussed above.
Regarding the particle sizes of claim 21, it would have been obvious to modify the median particle size of the calcium carbonate material to known sizes suitable for sun blocking particles, such as in the range of about 0.5 to 3 microns, as taught by Guerrero Mendez. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the inclusion of lignin of claim 21, it would have been obvious to modify the calcium carbonate particles of Guerrero Mendez by including a lignin coating for the same reasons discussed above by Yu et al.
Regarding the amount of lignin of claim 21, where Yu et al teach SPF increases with increased lignin content, it have been obvious to modify the combination of Guerrero Mendez and Yu et al by including other known amounts of lignin used to coat UV blocking particles, such as 100 parts by weight of lignin to 10-1000 parts by weight of the UV blocking particles, as taught by Huang, for the same reasons discussed above. See MPEP 2144.05(I).
Regarding the water insoluble lignin of claim 21, it would have been obvious to substitute hydrolyzed lignin of Huang for the lignosulfonate of Yu et al, for the same reasons discussed.
Regarding the limitation of wherein the at least one calcium carbonate material is not a surface reacted calcium carbonate of claim 21, the calcium carbonate particles taught by Guerrero Mendez, comprising ground calcium carbonate, calcite, etc., do not appear to be surface modified, as there appears to be no teachings of a surface modification of what appears to be natural calcium carbonate particles.
The examiner notes that while the preferred embodiments of Yu et al may be surface modified, the reference more broadly teaches that physical electrostatic adsorption of a lignin coating on the surface of sun blocking particles were known (see pg. 15741 1st col last para). Therefore, even if the reference provides motivation to improve the less strong physical electrostatic adsorption with hydrothermal esterification, physical adsorption of lignin on non-chemically modified sun blocking particles were known. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. See MPEP 2123(II). As such, it would have been obvious for the skilled artisan to coat a sun blocking particle that is not surface reacted, such as calcium carbonate, with lignin, thereby resulting in a coating adsorbed to the surface of a not surface-reacted calcium carbonate.
Regarding the UV-A/UV-B filter agent of claim 21, where the composition made obvious above comprises at least one calcium carbonate material and at least one water insoluble lignin coating, the intended use limitations of a UV-A/UV-B filter properties appear to be inherently met for the same reasons discussed above.
Regarding claim 22, it would have been obvious to formulate a dry composition comprising at least one calcium carbonate material, from 10-30 wt% of at least one water insoluble lignin, and an organic solvent in an amount of 15-35 wt%, for the same reasons discussed above by Guerrero Mendez, Yu et al, and Huang.
Regarding the “consisting of” limitation of claims 22 and 23, where Guerrero Mendez teach calcium carbonate particles as a sunblock, it would have been obvious to formulate the composition comprising a sunblock that consists of the calcium carbonate particles coated with lignin made obvious above. Additionally, Guerrero Mendez discloses embodiments consisting of ECLIPSE as the sun blocking agent, which is taught by Guerrero Mendez as calcium carbonate.
Regarding the UV-A/UV-B filter agent limitation of claims 22 and 23, where the composition made obvious above comprises at least one calcium carbonate material and at least one water insoluble lignin coating, the intended use limitations of a UV-A/UV-B filter properties appear to be inherently met for the same reasons discussed above.
Regarding claim 24, where the surface of the calcium carbonate particles made obvious above are coated with a water insoluble lignin (i.e., lignin attached to the surface of calcium carbonate), it appears that the surface coating reads on lignin adsorbed (i.e., attached) onto the surface of the calcium carbonate material.
Response to Arguments
First, Applicants assert neither Guerrero Mendez nor Yu et al teach or otherwise disclose a physical and chemical UV-A/UV-B filter agent that includes a water insoluble lignin coating on the surface of the calcium carbonate, wherein the amount of the lignin coating is in the range of 10 wt% to 30 wt%, as newly amended. Applicants assert Guerrero Mendez does not teach or suggest a lignin coating. Applicants assert Yu et al do not teach or suggest a lignin coating from 10 wt% to 30 wt%, and instead teaches a maximum of 6 wt%. Applicants assert Yu et al also states that higher lignosulfonate dosage is undesirable due to emulsification at high dosages. Second, Applicants assert Yu et al are not concerned with sunblock compositions comprising calcium carbonate with a water-insoluble lignin coating adsorbed to the surface, rather, Applicants assert Yu et al uses lignosulfonate (LS) coated on titanium dioxide (TiO2) via hydrothermal esterification treatment. Applicants assert Yu et al teach the overall sunscreen performance of a physically adsorbed lignin-coated TiO2 is poor. Third, Applicants assert Gordobil et al and/or Bilal et al do not cure the above mentioned deficiencies.
First, respectfully, this argument is not persuasive. While the examiner agrees with Applicants that the Guerrero Mendez and Yu et al do not specifically teach embodiments comprising water insoluble lignin on the surface of calcium carbonate, wherein the amount of lignin coating is in the range of 10 wt% to 30 wt% as newly amended, Huang cited above and teaches lignin coatings on particles for UV protection were known to comprise amounts that overlap the instantly claimed range. As such, it would have been obvious to include known amounts of lignin coatings suitable for UV protection, as discussed above. Applicants assert that Yu et al teaches a maximum of 6 wt%, however, while embodiments of up to 6.0 wt% were tested, there does not appear to be any teachings that would limit the amount to a maximum of 6.0 wt% based on the weight of the particles themselves, and higher amounts were known from Huang. Applicants assert that Yu et al states that a higher lignosulfonate dosage is undesirable do to demulsification, but table 1 discloses the wt% of lignin when used by itself based on the total weight of a cream, not the wt% based on the dry particles, where 10 wt% was suitable and 20 wt% demulsified. The amounts that are based on the weight of the creams would be expected to be a significantly higher than the amount of lignin of a similar wt% based on the weight of the particles. Nevertheless, where the claims are directed to a dry coated particle composition, the particles themselves are not limited to the intended use of being emulsified in a cream.
Second, respectfully, this argument is not persuasive. The examiner agrees that Yu et al does not teach compositions comprising calcium carbonate, and instead uses lignosulfonate coated on titanium dioxide, however, it would have been obvious for the skilled artisan to modify the calcium carbonate particles of Guerrero Mendez by including a lignin coating which was known from Yu et al and Huang to significantly improve the sun blocking performance of a sun blocking particle. Applicants assert Yu et al teach the overall sunscreen performance of a physically adsorbed lignin-coated TiO2 is poor, however, it is respectfully not seen where Yu et al teach the performance of physical adsorption is poor. In the paragraph cited by Applicants for support, as discussed in the previous response, Yu et al is discussing a background reference were thin lignin coatings used to reduce the photocatalytic activity of titanium dioxide had unsatisfactory sunscreen performance due to degradation. It is important to note that this background reference was not relied upon in the above discussed prior art rejection. Still, Yu et al appears to be discussing that it is the thinness of the coating of the coating that resulted in unsatisfactory sunscreen performance, not the method upon which the coating was applied (i.e., physical or chemical adsorption). If Applicants are referring to the recitation where Yu et al teach physical electrostatic adsorption is not as strong as those of the working embodiments, as discussed above, the reference more broadly teaches that physical electrostatic adsorption of a lignin coating on the surface of sun blocking particles were known, and would have been obvious even if the general expectation would be that the bonding would be less strong. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. See MPEP 2123(II).
Third, respectfully, this argument is not persuasive. Where the combination of Guerrero Mendez, Yu et al, and Huang appear to make obvious the claimed composition, the claims stand rejected for the same reasons above and of record. The examiner notes that Applicants have not provided arguments with respect to the teachings of Gordobil et al or Bilal et al, and Bilal et al is no longer cited as an evidentiary reference. Accordingly, the claims stand rejected for the same reasons above.
Claim 3 and 21, are rejected under 35 U.S.C. 103 as being unpatentable over Guerrero Mendez (US 2016037772 A1), Yu et al (Ind Eng Chem Res, 2018, 57, 15740-15748), and Huang (CN 108938450 A), as applied to claims 1, 2, 4, 6, 7, and 21-24 above, and further in view of Budde et al (EP 3360601 A1).
Guerrero Mendez is discussed above and further teaches that the typical particle size for a sunblock agent is in the range of about 0.5 to 3 microns (¶ 52).
Guerrero Mendez, Yu et al, and Huang do not specifically teach the particle size and surface area parameters of claim 3.
Budde et al teach compositions for sun protection having functionalized ground or precipitated calcium carbonate particles with a mean particle size (d50) from 0.1 to 90 microns (abs), with embodiments having a d50 of 0.5 to 10 microns (¶ 80), a top cut particle size (d98) of 0.15 to 30 microns (¶ 80), and a specific surface area from 15-200 m2/g, measured using nitrogen and the BET method (¶ 122).
Regarding claim 3, it would have been obvious to formulate the particles made obvious by the combination of Guerrero Mendez, Yu et al, and Huang above with known calcium carbonate particle sizes used as a sun block, such as a d50 from 0.1 to 90 microns, a d98 of from 0.15 to 30 microns, with a specific surface area from 15-200 m2/g, as taught by Budde et al. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the particle size of claim 21, purely arguendo, if the particle sizes of Guerrero Mendez are not the average particle size, it would have been obvious to formulate the particles made obvious above with known particle sizes suitable for calcium carbonate particles with sun protection properties, such as with a median particle size (d50) from 0.1 to 90 microns, as taught by Budde et al.
Response to Arguments
Applicants assert that claim 1 is believed to be allowable, and thus, claim 3 should be allowed.
Respectfully, this argument is not persuasive. Claim 1 appears to be obvious over Guerrero Mendez, Yu et al, and Huang for the same reasons discussed above. The examiner notes that Applicants have not provided arguments with respect to the teachings of Budde et al. Accordingly, the claims stand rejected for the same reasons above and of record.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Guerrero Mendez (US 2016037772 A1), Yu et al (Ind Eng Chem Res, 2018, 57, 15740-15748), and Huang (CN 108938450 A), as applied to claims 1, 2, 4, 6, 7, and 21-24 above, and further in view of Gordobil et al (RSC Adv, 2018, 8, 24525-24533).
Guerrero Mendez, Yu et al, and Huang are discussed above but do not specifically teach kraft lignin.
Gordobil et al teach kraft and organosolv lignins were known to be used as effective natural sunscreens (abs). As evidenced by the instant specification, kraft lignin is water-insoluble (see instant specification at ¶ 27). Lignins were known to be non-toxic (pg 24529 1st col 1st ¶).
Regarding claim 19, it would have been obvious to substitute kraft lignin for the lignosulfonate of Yu et al, where both were known lignins used to impart sun protection, as discussed above.
Response to Arguments
Applicants assert neither Guerrero Mendez, Yu et al, Gordobil et al, and/or Bilal et al teach or otherwise disclose a physical and chemical UV-A/UV-B filter agent that includes a water insoluble lignin coating on the surface of the calcium carbonate, wherein the amount of the lignin coating is in the range of 10 wt% to 30 wt%, as newly amended.
Respectfully, this argument is not persuasive for the same reasons discussed above and of record. The examiner notes that Applicants have not provided arguments with respect to the teaching of Gordobil et al or Bilal et al, and Bilal et al is no longer cited as an evidentiary reference. Accordingly, the claims stand rejected for the same reasons above.
Double Patenting - Withdrawn
The nonstatutory double patenting rejections over the claims of copending Application No. 17/996,794 and 17/756,677 have been obviated by the filing and acceptance of the terminal disclaimers dated 10/28/2025. Accordingly, the nonstatutory double patenting rejections are withdrawn.
Conclusion
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612