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 Claims
The amendments and arguments filed on 11/04/2025 are acknowledged and have been fully considered. Claims 1-20 are now pending. Claims 1-2, 14, 16, and 20 are amended; claims 6-13 are withdrawn.
Claims 1-5 and 14-20 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Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2 and 16 depend from claim 1, which recites, “a peak derived from the alkoxy group of the silane coupling agent is not detected in 900 cm-1 to 1300 cm-1 in a reflection spectrum of the surface-treated metal oxide particles, which is measured by a Fourier transform infrared spectrophotometer”. Claims 2 and 16 recite the limitation that the peak derived from the alkoxy group of the silane coupling agent is located at 1170 cm-1, 1100 cm-1, 1080 cm-1, and 950 cm-1 (or at least one of those for claim 16). The claimed peaks of claims 2 and 16 are outside of the range claim 1 (i.e., within 900-1300 cm-1). Looking to the instant specification, it is noted that “peak is not detected” is defined as the reflectance of the peak top is 1% or less in absolute value (see paragraph 0019 of the instant specification as filed). With this in mind, it is not clear whether the peaks of claims 2 and 16 are present in 1% or less or the peaks are not present as claimed in claim 1. Stated another way, it is not clear whether the peaks are present or not as claim 1 recites that they are not in the range of 900 cm-1 to 1300 cm-1 but claims 2 and 16 say that they are present. One with ordinary skill in the art would not understand the metes and bounds of the claim, thus the claims are indefinite. For purposes of search and consideration, it is understood that the peaks are present in an amount less than 1%.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 and 16 depend from claim 1, which recites, “a peak derived from the alkoxy group of the silane coupling agent is not detected in 900 cm-1 to 1300 cm-1 in a reflection spectrum of the surface-treated metal oxide particles, which is measured by a Fourier transform infrared spectrophotometer”. Claims 2 and 16 recite the limitation that the peak derived from the alkoxy group is located at 1170 cm-1, 1100 cm-1, 1080 cm-1, and 950 cm-1 (or at least one of those for claim 16). As claim 1, limits the peaks to be outside of the 900 to 1300 cm-1 range, the peaks of claims 2 and 16 are not further limiting as they are outside of the limitations of claim 1 (i.e., within 900-1300 cm-1). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered but they are not persuasive.
Applicant argues that the peak derived from the alkoxy group of the silane coupling agent having an alkoxy group is not observed and that means that the alkoxy group of the silane coupling agent does not remain in the surface-treated metal oxide particles, however while this is appreciated, the issue is the language of the claims. Claim 1 recites that the peaks are not present in the range of 900cm-1 to 1300 cm-1 but dependent claims 2 and 16 recite that the peak are present in this specific range. It is not clear whether the peaks are in the range or not. As such, the interpretation as discussed is used to remedy the issue of the language 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.
Claims 1-5 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2027847 (Yajima, 2009) in view of Sakamoto (1996).
In regards to claim 1, Yajima teaches a metal oxide powder (i.e., particles that is surface treated with an alkylalkoxy silane (see Yajima, claim 1; abstract). Further in regards to the limitation of “a value…or less”, it is pointed out that particles used in the composition have an average particle size of less than 0.15µm (see Yajima, paragraph 0034). The specification as filed teaches that the average primary particle diameter approximately coincides with the BET-converted particle diameter (see paragraph 0034 of the instant specification as filed). It is also taught that the composition has an ultraviolet shielding effect (see Yajima, paragraph 0024).
In regards to claims 3-5, 15, and 17-18, example 1-1 and example 1-2 teach a sunscreen cosmetic comprising titanium oxide powder and zinc oxide powder whose surface is treated with octyltriethoxysilane, respectively (see Yajima, paragraphs 0045-0047, 0051; examples 1-1 and 1-2; Table 1). It is also taught that the metal oxide is chosen from titanium oxide, zinc oxide, iron oxide and cerium oxide and the alkylalkoxy silane is octyltriethoxysilane (see Yajima, claims 3-4). Example 1-2 is a water-in-oil emulsion (i.e., a liquid) that further comprises water, which is an accepted dispersion medium according to the instant specification as filed in paragraph 0078).
Further, in regards to claims 1 and 19, a product-by-process claim drawn to a composition directed towards the surface-treated metal oxide particles, the patentability of a product does not depend on its method of production. Specifically, the limitation of “a weight loss of the surfaced-treated metal oxide particles on drying at 105°C for 3 hours is 0.5% by mass or less” and the entirety of claim 19 are product-by-process. Yajima teaches the instantly claimed surface-treated metal oxide particles. "[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 a nonobvious difference between the claimed product and the prior art product. The teachings of Yajima teach the surface-treated metal oxide particles as instantly claimed, thus the burden shifts to the applicant to come forward with evidence showing that the process of making the surface-treated metal oxide particles as instantly claimed produces a materially different product than the surface-treated metal oxide particles of Yajima. In regards to claim 19, it is also noted that claim is drawn to a method of determining whether or not the composition has an ultraviolet shielding property, however claim 1 already limits the composition to have an ultraviolet shielding property. Stated another way, the particles must have ultraviolet shielding property as required by claim 1 and as such the method of determining of whether or not this property is present or not is moot.
In regards to claims 1-2 and 16, as the teachings of Yajima would yield an identical composition as instantly claimed, the properties, such as the peaks derived from the alkoxy group in a reflection spectrum, of the composition would be the same. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In regards to claim 20, the prior art teaches a composition that is identical to that described by applicants’ instant application, but applicants’ observation that it also has a “integral value of the spectrum” measurement does not give it patentable weight, since it is the same composition, as adding a characterization to a prior art invention is not patentable. Measuring of physical properties of known compositions is not patentable.
Yajima is silent on the value obtained from dividing the dry particle size by a BET-converted particle diameter being 0.01 or more and 5.0 or less (which is interpreted as “a ratio of the dry particle size D98 (µm) to the BET-converted particle diameter (nm) is 0.01 or more and 5.0 or less” as discussed above), specifically the D98 of the particles.
Sakamoto teaches that the particle size of titanium dioxide influences the UV shielding capabilities of the particles (see Sakamoto, abstract; introduction).
In regards to claims 1-5 and 15-20, it is noted as the UV shielding capability of particles is a variable that can be modified, among others, by adjusting the particle size, the UV shielding capability of particles changing as the particle size is changed, the particle size would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed the particle size cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the particle size in the composition to obtain the desired balance between the UV shielding capability of particles as taught by Sakamoto (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). As such, it would be within the purview of one with ordinary skill in the art to achieve a balance between the particle size (i.e., D98) and ultraviolet shielding capabilities of the particle to achieve the instantly claimed ratio of particle size D98 to BED-converted particle diameter.
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered but they are not persuasive.
Applicant argues that there are elements of the claim not taught in the prior art, specifically the weight loss of the surface-treated metal oxide particle when dried at 105°C for 3 hours, the peaks derived from the alkoxy group of the silane coupling agent, and the ratio of a dry particle size D98 of the surface-treated metal oxide particles to a BET-converted particle diameter of the surface-treated metal oxide particle. In regards to the argument of the weight loss due to drying, it is pointed out that the limitation is a product-by-process limitation drawn to a composition directed towards the surface-treated metal oxide particles, the patentability of a product does not depend on its method of production. Yajima teaches the instantly claimed surface-treated metal oxide particles. "[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 a nonobvious difference between the claimed product and the prior art product. The teachings of Yajima teach the surface-treated metal oxide particles as instantly claimed, thus the burden shifts to the applicant to come forward with evidence showing that the process of making the surface-treated metal oxide particles as instantly claimed produces a materially different product than the surface-treated metal oxide particles of Yajima. To support the argument against this, applicant presents data from example 1 and comparative example 1 from Table 1 of the specification in order to show unexpected results. Applicant argues that the process of producing both examples are identical except that comparative example 1 was dried at 100°C for 1 hour, instead of at 120°C for 3 hours, which gives different results. Unfortunately, there are a few issues with this argument. Applicant is reminded that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, the claim language states “drying at 105°C for 3 hours”, not 120°C. Second, the other examples in the specification, e.g., examples 2 and 4, were dried at 120°C for 2 hours, not 3 hours, but still met the beneficial properties as discussed by applicant. For these reasons, the data presented is not enough for establishing a nonobvious difference between the claimed product and the prior art product.
In regards to applicant’s argument of the peaks derived from the alkoxy group of the silane coupling agent, as the teachings of Yajima would yield an identical composition as instantly claimed, the properties, such as the peaks derived from the alkoxy group in a reflection spectrum, of the composition would be the same. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In regards to applicant’s argument of the ratio of a dry particle size D98 of the surface-treated metal oxide particles to a BET-converted particle diameter of the surface-treated metal oxide particle, it is pointed out that the UV shielding capability of particles changing as the particle size is changed, the particle size would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed the particle size cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the particle size in the composition to obtain the desired balance between the UV shielding capability of particles as taught by Sakamoto (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). As such, it would be within the purview of one with ordinary skill in the art to achieve a balance between the particle size (i.e., D98) and ultraviolet shielding capabilities of the particle to achieve the instantly claimed ratio of particle size D98 to BED-converted particle diameter.
As such the rejections are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-4 of copending Application No. 18728466 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application teaches zinc oxide particles that have been surface treated with an organic component (such as a silane coupling agent having an alkoxy group) in claims 1 and 3. Claim 4 further specifies that the particles have the same particle size (d98) to BET-converted particle diameter ratio.
Further, in regards to claims 1 and 19, a product-by-process claim drawn to a composition directed towards the surface-treated metal oxide particles, the patentability of a product does not depend on its method of production. Specifically, the limitation of “a weight loss of the surfaced-treated metal oxide particles on drying at 105°C for 3 hours is 0.5% by mass or less” and the entirety of claim 19 are product-by-process. The reference application teaches the instantly claimed surface-treated metal oxide particles. "[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 a nonobvious difference between the claimed product and the prior art product. The teachings of the reference application teach the surface-treated metal oxide particles as instantly claimed, thus the burden shifts to the applicant to come forward with evidence showing that the process of making the surface-treated metal oxide particles as instantly claimed produces a materially different product than the surface-treated metal oxide particles of the reference application. In regards to claim 19, it is also noted that claim is drawn to a method of determining whether or not the composition has an ultraviolet shielding property, however claim 1 already limits the composition to have an ultraviolet shielding property. Stated another way, the particles must have ultraviolet shielding property as required by claim 1 and as such the method of determining of whether or not this property is present or not is moot.
In regards to claims 1-2 and 16, as the teachings of the reference application would yield an identical composition as instantly claimed, the properties, such as the peaks derived from the alkoxy group in a reflection spectrum, of the composition would be the same. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In regards to claim 20, the prior art teaches a composition that is identical to that described by applicants’ instant application, but applicants’ observation that it also has a “integral value of the spectrum” measurement does not give it patentable weight, since it is the same composition, as adding a characterization to a prior art invention is not patentable. Measuring of physical properties of known compositions is not patentable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 and 15-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-4 of copending Application No. 18728466 (reference application) in view of EP 2027847 (Yajima, 2009).
The teachings of 18728466 have been described supra.
The teachings of 18728466 are silent on a dispersion medium and a cosmetic composition comprising the surface-treated metal oxide particles.
The teachings of Yajima have been described supra.
In regards to claims 1-5 and 15-20, 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 18728466 with the teachings of Yajima as both references teach similar compositions comprising similar components (i.e., zinc oxide coated particles). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the particles of 18728466 with the composition of Yajima according to the known method of making a sunscreen composition comprising zinc oxide coated particles (see Yajima, example 1-1 and 1-2) 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.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 of U.S. Patent No. 11325840 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because 11325840 teaches zinc oxide particles that have been surface treated with an organic component (such as a silane coupling agent having an alkoxy group) in claims 1 and 7. Claims 8-9 further specify that the particles have the same particle size (d98) to BET-converted particle diameter ratio.
Further, in regards to claims 1 and 19, a product-by-process claim drawn to a composition directed towards the surface-treated metal oxide particles, the patentability of a product does not depend on its method of production. Specifically, the limitation of “a weight loss of the surfaced-treated metal oxide particles on drying at 105°C for 3 hours is 0.5% by mass or less” and the entirety of claim 19 are product-by-process. 11325840 teaches the instantly claimed surface-treated metal oxide particles. "[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 a nonobvious difference between the claimed product and the prior art product. The teachings of the 11325840 teach the surface-treated metal oxide particles as instantly claimed, thus the burden shifts to the applicant to come forward with evidence showing that the process of making the surface-treated metal oxide particles as instantly claimed produces a materially different product than the surface-treated metal oxide particles of 11325840. In regards to claim 19, it is also noted that claim is drawn to a method of determining whether or not the composition has an ultraviolet shielding property, however claim 1 already limits the composition to have an ultraviolet shielding property. Stated another way, the particles must have ultraviolet shielding property as required by claim 1 and as such the method of determining of whether or not this property is present or not is moot.
In regards to claims 1-2 and 16, as the teachings of the 11325840 would yield an identical composition as instantly claimed, the properties, such as the peaks derived from the alkoxy group in a reflection spectrum, of the composition would be the same. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In regards to claim 20, the prior art teaches a composition that is identical to that described by applicants’ instant application, but applicants’ observation that it also has a “integral value of the spectrum” measurement does not give it patentable weight, since it is the same composition, as adding a characterization to a prior art invention is not patentable. Measuring of physical properties of known compositions is not patentable.
Claims 1-5 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 of U.S. Patent No. 11325840 B1 in view of EP 2027847 (Yajima, 2009).
The teachings of 11325840 have been described supra.
The teachings of 11325840 are silent on a dispersion medium and a cosmetic composition comprising the surface-treated metal oxide particles.
The teachings of Yajima have been described supra.
In regards to claims 1-5 and 15-20, 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 11325840 with the teachings of Yajima as both references teach similar compositions comprising similar components (i.e., zinc oxide coated particles). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the particles of 11325840 with the composition of Yajima according to the known method of making a sunscreen composition comprising zinc oxide coated particles (see Yajima, example 1-1 and 1-2) 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 11/04/2025 have been fully considered but they are not persuasive.
Applicant states that the rejections are overcome by the amendments, however as discussed above, the rejections are maintained despite the amendments. Further applicant requests that the rejections be held in abeyance, in response the examiner notes that a request to address the issue further upon an indication of allowance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). As set forth above, the double patenting rejections of claims 1-5 and 15-20 over are maintained.
Conclusion
No claims allowed.
THIS ACTION IS MADE FINAL. 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 AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611