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
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/11/2026 has been entered.
Status of Claims
The amendments and arguments filed on 02/11/2026 are acknowledged and have been fully considered. Claims 1-7 and 9-18 are now pending. Claims 1 and 4-7 are amended; claims 9-14 and 18 are withdrawn.
Claims 1-7 and 15-17 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
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.
Claims 1-7 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20160319131 A1 (Sueda, 2016; as submitted on IDS of 06/27/2022) in view of US PGPUB 20120219608 A1 (Yamada, 2012).
In regards to claim 1-4, Sueda teaches a cerium oxide-coated zinc oxide particle (see Sueda, claim 1). It is taught that the zinc oxide particle coated with cerium oxide, wherein the zinc oxide particle is coated in continuous layers without interruption (i.e., fully covered or at least 90% of the surface of the core) (see Sueda, paragraphs 0050-0060). In regards to the limitation of the BET specific surface area, it is taught that BET specific surface area is preferably 6.0 m2/g or greater (see Sueda, paragraph 0056). Further, while it is not the intended embodiment, Sueda does teach a method to make particles that have a surface area of greater than 30 m2/g and lower than 200 m2/g (see Sueda, comparative example 4; Table 1). The surface area of the particle is taught to be 123.2 m2/g (see Sueda, Table 1). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1, 5 and 7, it is taught that the particle is composed of zinc oxide and a covering layer of cerium oxide on the surface thereof (i.e. only zinc oxide and cerium oxide, thus meeting the requirement of claim 5) (see Sueda, all Examples, specifically example 1). Further, it is taught that the diameter of the particle is 0.12 µm and that the zinc oxide core has a diameter of 0.11 µm as measured by a transmission electron microscope (see Sueda, Example 2, paragraph 0134). This means that the covering layer has a thickness of about 0.005µm. As such, the core is 110 nm with a 5 nm covering layer. These measurements for the thickness of the coating are within the claimed ranges of claims 1 and 7. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further in regards to claim 1, specifically to the limitation of the molar atomic ratio of M1/M2, it is taught that the cerium oxide is used in an amount from 5 to 30 wt% relative to 100 wt% of the zinc oxide (see Sueda, abstract). For example if 20:1 molar ratio of zinc to cerium would be about 1500g of zinc to 140 g of cerium. This corresponds to 1620 g of zinc oxide and 172 g of cerium oxide. This would be about 10.6 wt% of cerium oxide to 100 wt% zinc oxide. This falls within the molar range of the instant claims. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 15, a product-by-process claim drawn to a composition directed towards the metal oxide particle, the patentability of a product does not depend on its method of production. The combination of Sueda teach the instantly claimed metal oxide particle. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by- process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. The teachings of Sueda the metal oxide particle as instantly claimed, thus the burden shifts to the applicant to come forward with evidence showing that the process of making the metal oxide particle as instantly claimed produces a materially different product than the metal oxide particle of Sueda.
In regards to claim 16-17, it is taught that the particles are used in a cosmetic (see claim 7), such as make up and foundations (i.e., for use on skin) (see paragraph 0112). It is also taught that the composition is used to provide shielding from UV-A light (see Figure 22; paragraph 0149). Further claim 17 claims a future intended use, however the future intended use of a product is not considered to contribute to the overall patentability of the instant invention, particularly when the product itself is claimed and that same product is taught in the prior art.
Sueda is silent on the number-average diameter of the core being from the range of 10 to 50 nm.
Yamada teaches zinc oxide particles coated with cerium oxide (see Yamada, paragraph 0038) with an average particle diameter of 0.01 to 1 µm (i.e., 10 nm to 1000 nm) that overlaps with the claimed diameter (see Yamada, paragraph 0041). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1-7 and 15-17, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Sueda and Yamada to formulate the instantly invention as both references teach cerium oxide coated zinc oxide particles. Further, Yamada teaches that the smaller particle size of the zinc oxide is able to obtain excellent long-term stability and an excellent feeling upon application, while achieving high transparency and a high UV-protective effect (see Yamada, paragraph 0041). One with ordinary skill in the art would be motivated to combine the particles of Sueda and the particle size of Yamada according to the known method of using zinc oxide particles with a smaller diameter for a UV-protective effect (see Yamada, paragraphs 0076-0078) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 02/11/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In response to applicant’s argument that Sueda does not teach that the BET surface area as instantly claimed and that the structure of the particles in the example is different than instantly claimed, it is pointed out that it is taught that BET specific surface area is preferably 6.0 m2/g or greater (see paragraph 0056). Further, while it is not the intended embodiment, Sueda does teach a method to make particles that have a surface area of greater than 30 m2/g and lower than 200 m2/g (see comparative example 4; Table 1). The surface area of the particle is taught to be 123.2 m2/g (see Table 1) that falls within the claimed range of 30-200 m2/g. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Further, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). It would be within the purview of one with ordinary skill in the art to use the teachings of Sueda to formulate a metal oxide particle with a BET surface area of between 30 and 200 m2/g.
In regards to applicant’s argument that Sueda does not teach the number-average diameter that the instant claims recite, it is noted that the rejection has been modified as necessitated by amendment to over Sueda in view of Yamada. Yamada teaches zinc oxide particles coated with cerium oxide (see Yamada, paragraph 0038) with an average particle diameter of 0.01 to 1 µm (i.e., 10 nm to 1000 nm) (see Yamada, paragraph 0041) that overlaps with the claimed diameter. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Further, Yamada teaches that the smaller particle size of the zinc oxide is able to obtain excellent long-term stability and an excellent feeling upon application, while achieving high transparency and a high UV-protective effect (see Yamada, paragraph 0041). One with ordinary skill in the art would be motivated to combine the particles of Sueda and the particle size of Yamada according to the known method of using zinc oxide particles with a smaller diameter for a UV-protective effect (see Yamada, paragraphs 0076-0078) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Further applicant argues that the cesium oxide coating of the particles in Sueda is not homogeneous and not uniformly covering the zinc oxide surface and as such does not cover at least 90% of the surface of the core, it is pointed out that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). In the instant case, it is taught that the zinc oxide particle coated with cerium oxide, wherein the zinc oxide particle is coated in continuous layers without interruption (i.e., fully covered or at least 90% of the surface of the core) (see paragraphs 0050-0060).
In regards to applicant’s argument that the ratio of M1/M2 is not taught Sueda, it is pointed out that while not directly taught in the art, the amounts of cerium oxide and zinc oxide overlap with the molar ratio claimed. It is taught that the cerium oxide is used in an amount from 5 to 30 wt% relative to 100 wt% of the zinc oxide (see Sueda, abstract). For example if 20:1 molar ratio of zinc to cerium would be about 1500 g of zinc to 140 g of cerium. This corresponds to 1620 g of zinc oxide and 172 g of cerium oxide. This would be about 10.6 wt% of cerium oxide to 100 wt% zinc oxide. This falls within the molar range of the instant claims. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
As such, claims 1-7 and 15-17 are rendered obvious as discussed in the rejection above.
Conclusion
No claims allowed.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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