DETAILED ACTION
Status of Claims
Claims 1-19 are currently pending. Claims 1-8, 11-16 and 19 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. Non-elected claims 9-10 and 17-18 are withdrawn from consideration. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final.
Election/Restrictions
Applicant’s election of the claims of Group I (claims 1-8 plus new claims 11-16 and 19) in the response filed on November 17, 2025 (to the September 17, 2025 Requirement for Restriction) is acknowledged. In response to applicant’s election, the claims of Group II (claim 9), and Group III (claim 10 plus new claims 17-18) are withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has elected the claims of Group I with traverse.
The traverse is based on applicant’s argument:
As an initial matter, the Office points to EP 3305272 for citations to Hayashi as the PCT publication WO 2016/190399 is not in English. Applicant herein cites to EP 3305272 when referring to Hayashi.[11/17/2025 Remarks, p. 7, par. 1]
The d50 recited in claim 1, 9, and 10 represents particle diameter of agglomerates of surface-modified zinc oxide particles, not the primary particle diameter. The present application states that “d50 is preferably as small as possible but cannot be equal to or less than the primary particle diameters of the surface-modified zinc oxide particles.” Published Application at ¶ [0052]. This is further evidenced by the specification that defines the primary particle diameters and provides examples for primary particle diameters in the nanometer size range, while the application and claims recite d50 values in the micrometer range. See Published Application at ¶ [0053].[11/17/2025 Remarks, p. 7, par. 2]
Hayashi does not disclose the d50 recited in the claims 1, 9, and 10, which requires that the particle diameter is 4 μm or less. As discussed above, d50 refers to the diameter of the agglomerated particles, not the individual particle diameter.[11/17/2025 Remarks, p. 7, par. 3]
Hayashi includes examples with methods for forming aggregated lamellar zinc oxide particles. Example 1 of Hayashi describes a method for producing the aggregated lamellar zinc oxide particles. Hayashi at ¶ [0046]. Hayashi describes that the median particle size for individual zinc oxide particles in the aggregate has a median size of 1.28 μm. Id. These particles are formed using the method recited in Example 1. However, no electron microscope images are present in Hayashi to clearly show that the particle size refers to individual particles and not the agglomerates.[11/17/2025 Remarks, p. 7, par. 4]
Applicant points the Office to another reference, EP2824073. The Applicant for both Hayashi and EP2824073 is Sakai Chemical Industry Co Ltd. Both references use near-identical methods for producing zinc oxide particles. The methods are outlined in the table below.[11/17/2025 Remarks, p. 7, par. 5]
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The methods in Hayashi and EP2824073 are described as having identical steps and components and result in mean particle sizes that are nearly identical. EP2824073 discloses electron microscope images of the resulting particles in Figures 1 and 2 (reproduced and annotated below).[11/17/2025 Remarks, p. 8, par. 1]
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Figure 2 of EP2824073 is a magnified version of the image in Figure 1. EP2824073 at ¶[0015]. Figure 2 shows the particle size of the individual zinc oxide particles is 1 μm. Figure 1 shows that the particle size for an agglomerate of particles is 5 μm. Therefore, this supports the conclusion that the method of EP2824073 (and thus Hayashi as Hayashi uses the identical preparation method as EP2824073) produces individual zinc oxide articles with a mean particle size around 1 μm, and the particle size for an agglomerate of the particles is 5 μm.[11/17/2025 Remarks, p. 9, par. 1]
As discussed above, the d50 value recited in claims 1, 9, and 10 represents the particle size of the agglomerated particles, not the individual particle size. Therefore, claim 1 requires that the particle diameter of the agglomerates is 4 μm or less. Figure 1 of EP2824073 clearly demonstrates that the particle diameter of an agglomerate produced with the method of EP2824073 (and Hayashi) is 5 μm, which does not fall within the scope of claims 1, 9, and 10.[11/17/2025 Remarks, p. 9, par. 2]
Applicant therefore asserts that the common technical feature described by the Office-surfacemodified zinc oxide particles, wherein the surface-modified zinc oxide particles have a silane coupling agent having an alkoxy group on surfaces thereof, and a particle diameter d50 thereof is 4 μm or less is indeed a special technical feature as it has inventive step over Hayashi. Again, Hayashi (by virtue of EP2824073) teaches a particle size for agglomerates of 5 μm, which does not meet the limitations of 4 μm or less required by claims 1, 9, and 10. Thus, unity of invention exists between Groups I-III and the claims should be examined together.[11/17/2025 Remarks, p. 9, par. 3]
11/17/2025 Remarks, p. 7, par. 1 to p. 9, par. 3. In response: although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Examiner notes the discussion at par. [0056]-[0061] of the instant published application, US 2023/0218488 A1, which describes “zinc oxide particles having a specific surface area of 1.5 m2/g or more and 50 m2/g or less are likely to agglomerate with one another” but “zinc oxide particles [that] are dispersed in a solvent with high energy” make it “possible to treat the surfaces with a silane coupling agent in a state where the agglomeration of the zinc oxide particles ha[ve] been loosened and the silane coupling agent can be present substantially uniformly on the entire surfaces of the zinc oxide particles.” In this regard, examiner suggests amending claim 1 with further product-by-process limitations relating to the discussion at par. [0056]-[0061] of the instant published application, for instance, amending claim 1 to recite the steps of withdrawn claim 9 as product-by-process limitations.
Accordingly, the September 17, 2025 Requirement for Restriction is made FINAL, and claims 1-8, 11-16 and 19 are examined as follows.
Claim Rejections – 35 U.S.C. § 112 - Indefiniteness
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.
Claims 1-8, 11-16 and 19 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 pre-AIA , that applicant regards as the invention.
Claim 1 is drawn to
1. ([…]) Surface-modified zinc oxide particles, wherein
the surface-modified zinc oxide particles have a silane coupling agent having an alkoxy group on surfaces thereof, and
a particle diameter d50 thereof is 4 μm or less,
wherein the particle diameter d50 is obtained when the zinc oxide particles are measured with a laser diffraction/scattering type particle size distribution-measuring instrument by a following measurement method and a cumulative volume percentage of a particle size distribution thereof is 50%, (the measurement method) 10 g of the surface-modified zinc oxide particles, 88 g of cyclopentasiloxane, and 2 g of polyglyceryl-3 polydimethylsiloxyethyl dimethicone are mixed to obtain a liquid mixture,
a dispersion treatment is performed on the obtained liquid mixture at 9,500 rpm for 5 minutes using a homogenizer to obtain a liquid dispersion,
the liquid dispersion is diluted with cyclopentasiloxane so that a content of the surface-modified zinc oxide particles in the obtained liquid dispersion is 0.01% by mass to produce a measurement solution, and
d50 is measured with the laser diffraction/scattering type particle size distribution-measuring instrument using the obtained measurement solution.
wherein the recitation, “cumulative volume percentage of a particle size distribution thereof,” is indefinite because unclear as to whether or not the “cumulative volume percentage of a particle size distribution thereof” of the “measurement solution” in the recited “measurement method.” In this regard, it is noted that the Board has held: “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (expanded panel). Subsequent claims 2-8, 11-16 and 19 depend on claim 1 and are thus, indefinite as well. To the extent the “cumulative volume percentage of a particle size distribution thereof” is the “measurement solution” in the recited “measurement method,” examiner suggests amending claim 1 to read:
1. ([…]) Surface-modified zinc oxide particles, wherein
the surface-modified zinc oxide particles have a silane coupling agent having an alkoxy group on surfaces thereof, and
a particle diameter d50 thereof is 4 μm or less,
wherein the particle diameter d50 is obtained when the zinc oxide particles are measured with a laser diffraction/scattering type particle size distribution-measuring instrument by a following measurement method, wherein in a measurement solution, wherein
a dispersion treatment is performed on the
the liquid dispersion is diluted with cyclopentasiloxane so that a content of the surface-modified zinc oxide particles in the obtained liquid dispersion is 0.01% by mass to produce a measurement solution, and
d50 is measured with the laser diffraction/scattering type particle size distribution-measuring instrument using the
Further clarification is required.
Claim Rejections – 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-8, 11-15 and 19 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”).
Hayashi is directed to “a sebum adsorbent containing a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm,” that “has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane”:
Summary of Invention
Technical Problem
[0007] The present invention is to provide a sebum adsorbent that achieves high sebum-adsorbing effect while high ultraviolet blocking performance is exhibited and that does not impair the texture, and a cosmetic containing the same.
Solution to Problem
[0008] The present invention relates to a sebum adsorbent containing a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm. The sebum adsorbent contains a spherical zinc oxide of aggregated lamellar zinc oxide that has a median size of 0.01 µm or greater but less than 10 µm and that has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane so that from 0.5 to 10 parts by weight of the organopolysiloxane and/or the triethoxycaprylylsilane is adhered per 100 parts by weight of the zinc oxide. The organopolysiloxane is preferably dimethyl silicone. The sebum adsorbent is preferably a spherical zinc oxide of aggregated lamellar zinc oxide obtained by a method including a step (1) of neutralizing a zinc salt aqueous solution by an alkali aqueous solution wherein the step (1) is performed in the presence of polyoxyethylene sorbitan monooleate. The present invention also relates to a cosmetic containing the sebum adsorbent described above.
[0009] The present invention also relates to a method of adsorbing sebum, the method including applying a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm or a composition containing the spherical zinc oxide of aggregated lamellar zinc oxide on skin. The present invention also relates to use of a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm or a composition containing the spherical zinc oxide of aggregated lamellar zinc oxide for sebum adsorption by application on skin.
Hayashi, par. [0007]-[0009].
Regarding independent claim 1 and the requirements:
1. ([…]) Surface-modified zinc oxide particles, wherein
the surface-modified zinc oxide particles have a silane coupling agent having an alkoxy group on surfaces thereof, and
a particle diameter d50 thereof is 4 μm or less,
wherein the particle diameter d50 is obtained when the zinc oxide particles are measured with a laser diffraction/scattering type particle size distribution-measuring instrument by a following measurement method and a cumulative volume percentage of a particle size distribution thereof is 50%, (the measurement method) 10 g of the surface-modified zinc oxide particles, 88 g of cyclopentasiloxane, and 2 g of polyglyceryl-3 polydimethylsiloxyethyl dimethicone are mixed to obtain a liquid mixture,
a dispersion treatment is performed on the obtained liquid mixture at 9,500 rpm for 5 minutes using a homogenizer to obtain a liquid dispersion,
the liquid dispersion is diluted with cyclopentasiloxane so that a content of the surface-modified zinc oxide particles in the obtained liquid dispersion is 0.01% by mass to produce a measurement solution, and
d50 is measured with the laser diffraction/scattering type particle size distribution-measuring instrument using the obtained measurement solution.
Hayashi clearly teaches “a sebum adsorbent containing a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm,” that “has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane” (Hayashi, par. [0007]-[0009]), WHEREBY it is noted:
“zinc oxide […] that has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane” (Hayashi, par. [0007]) reads on a “surface-modified zinc oxide particles have a silane coupling agent having an alkoxy group on surfaces thereof” of claim 1, as well as alkylalkoxysilane of claim 3:
3. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the silane coupling agent is at least one selected from a group consisting of an alkylalkoxysilane, an allylalkoxysilane, a polysiloxane having an alkyl group in a side chain, and a polysiloxane having an allyl group in a side chain.
lower bound of a “spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm” (Hayashi, par. [0007]), wherein “aggregated” zinc oxide reads on a “particle diameter d50 thereof is 4 μm or less” of claim 1, as well as the requirements of claims 11-13 for:
11. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the particle diameter d50 represents a particle diameter d50 of agglomeration of the surface-modified zinc oxide particles included in the measurement solution.
12. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the particle diameter d50 thereof is 2.00 μm or less.
13. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the particle diameter d50 thereof is 1.00 μm or less.
In this regard, it is noted that MPEP § 2131.03 states “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)). It is noted that the requirement of claim 1 for the instant “dispersion treatment” for producing a “measurement solution” involved in the instant “measurement method”:
“wherein the particle diameter d50 is obtained when the zinc oxide particles are measured with a laser diffraction/scattering type particle size distribution-measuring instrument by a following measurement method and a cumulative volume percentage of a particle size distribution thereof is 50%, (the measurement method) 10 g of the surface-modified zinc oxide particles, 88 g of cyclopentasiloxane, and 2 g of polyglyceryl-3 polydimethylsiloxyethyl dimethicone are mixed to obtain a liquid mixture,
a dispersion treatment is performed on the obtained liquid mixture at 9,500 rpm for 5 minutes using a homogenizer to obtain a liquid dispersion,
the liquid dispersion is diluted with cyclopentasiloxane so that a content of the surface-modified zinc oxide particles in the obtained liquid dispersion is 0.01% by mass to produce a measurement solution, and
d50 is measured with the laser diffraction/scattering type particle size distribution-measuring instrument using the obtained measurement solution,”
as well as the requirements of claims 2 for a “colorimetric system chromaticity” value:
2. ([…]) The surface-modified zinc oxide particles according to claim 1,
wherein b* in an L*a*b* colorimetric system chromaticity diagram thereof is 4.0 or more and 18 or less.
are functional limitations. In this regard, it is noted that the structure, material or act in the claim that is connected to (i.e., performs) the recited function is the combination of recited structural elements of claim 1, which achieve the resulting dispersion and color effects. Therefore, the broadest reasonable interpretation (see MPEP § 2111 with respect to broadest reasonable interpretation) of the functional language is: intended dispersion and color effects of a composition that meets the structural requirements of claim 1 of a “surface-modified zinc oxide particles have a silane coupling agent having an alkoxy group on surfaces thereof, and a particle diameter d50 thereof is 4 μm or less.” Also, Hayashi is directed to “a sebum adsorbent containing a spherical zinc oxide” that is an “aggregated lamellar zinc oxide” (Hayashi, par. [0008]), wherein “median size” is “measured using a laser diffraction/scattering particle size distribution measuring device LA-750 (manufactured by HORIBA, Ltd.)” (Hayashi, par. [0065]). Because this functional language merely recites the intended result of the recited structural limitations, it imposes no patentable distinction on the claim (i.e., the functional language is not further limiting beyond the noted structural limitations). Therefore, one of ordinary skill in the art would understand that a composition meeting the structural requirements of claims 11 and 13 will achieve the intended result of the functional limitations and fall within the boundaries of the claims.
Thus, Hayashi anticipates claims 1-3 and 11-13.
Regarding claim 5 and the requirements:
5. ([…]) A liquid dispersion comprising:
the surface-modified zinc oxide particles according to claim 1; and a dispersion medium.
Hayashi teaches: “polyoxyethylene sorbitan monolaurate” as a “hydrophilic dispersant” for the “spherical zinc oxide particles of aggregated lamellar zinc oxide”
[0018] Although the reason is not clear, spherical zinc oxide particles of aggregated lamellar zinc oxide having excellent sebum-adsorbing performance can be obtained particularly when polyoxyethylene sorbitan monooleate is used as the hydrophilic dispersant. The use of this as the hydrophilic dispersant is thus particularly preferable.
[0019] Furthermore, spherical zinc oxide particles of aggregated lamellar zinc oxide having less odor can be obtained by use of polyoxyethylene sorbitan monolaurate as the hydrophilic dispersant.
(Hayashi, par. [0018]-[0019]), which is a “dispersion medium” of claim 5.
Thus, Hayashi anticipates claim 5.
Regarding claim 6 and the requirements:
6. ([…]) A cosmetic comprising:
the surface-modified zinc oxide particles according to of claim 1; and
a cosmetic base raw material.
Hayashi teaches: “The zinc oxide having such a sebum-adsorbing effect can be used in various cosmetics and is preferable from the perspective of preventing makeup from being smeared, by adsorbing sebum in the case where the zinc oxide has been blended in makeup cosmetics, such as makeup base and powder makeup” (Hayashi, par. [0011]), wherein “makeup base” reads on a “cosmetic base raw material” of claim 6.
Thus, Hayashi anticipates claim 6.
Regarding claims 7-8, it is noted that the requirements:
7. ([…]) The surface-modified zinc oxide particles according to claim 1,
wherein the surface-modified zinc oxide particles are obtained by preparing a liquid mixture containing 1% by mass or more and 55% by mass or less of zinc oxide particles, 40% by mass or more and 95% by mass or less of a solvent, and a silane coupling agent having an alkoxy group,
dispersing the liquid mixture until b* of surface-modified zinc oxide particles thereof becomes 4.0 or more and 18 or less, and then drying the liquid mixture.
8. ([…]) The surface-modified zinc oxide particles according to claim 7,
wherein the liquid mixture further contains water and a catalyst.
are functional limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[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.” The substance and structure of the claimed surface-modified zinc oxide particles are not affected by this limitation, which merely reflects one version of a process that could be used to make the product. Therefore, the functional limitations of claims 7-8 do not add patentable weight to the claim.
Thus, Hayashi anticipates claims 7-8.
Regarding claims 14-15 and the requirements:
14. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the surface-modified zinc oxide particles have a specific surface area of 1.5 m2/g or more and 55 m2/g or less.
15. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the surface-modified zinc oxide particles have a specific surface area of 8 m2/g or more and 50 m2/g or less.
Hayashi teaches a preferred embodiment, wherein “[t]he BET specific surface area is more preferably 6 m2/g or greater but less than 15 m2/g”:
[0013] The spherical zinc oxide of aggregated lamellar zinc oxide of the sebum adsorbent of the present invention preferably has a BET specific surface area of 5 m2/g or greater. The BET specific surface area in the range described above allows particularly preferable performances to be exhibited as the effect in fixing sebum. That is, it is conceived that, due to the large BET specific surface area, the contact area between sebum and zinc oxide becomes greater, thereby achieving higher sebum-adsorbing performance than the sebum-adsorbing performances of zinc oxide particles in the related art. The BET specific surface area is more preferably 6 m2/g or greater but less than 15 m2/g. Note that the BET specific surface area is a value obtained by the measurement method described in the examples below.
(Hayashi, par. [0013]), wherein the outer bound of a “BET specific surface area” of 15 m2/g reads on the “specific surface area” of claims 14-15. See MPEP § 2131.03 regarding prior art anticipating claimed numerical ranges.
Thus, Hayashi anticipates claims 14-15.
Regarding claim 19 and the requirements:
19. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the surface-modified zinc oxide particles are dried surface-modified zinc oxide particles.
Hayashi teaches: “spherical zinc oxide particles of aggregated lamellar zinc oxide” that are “dried at 120°C for 12 hours”:
[0051] To 100 parts by weight of the spherical zinc oxide particles of aggregated lamellar zinc oxide obtained in Example 1, 2 parts by weight of hydrogen dimethicone (KF-9901, manufactured by Shin-Etsu Chemical Co., Ltd.) was added and mixed using a sample mill, and then dried at 120°C for 12 hours. The obtained hydrogen dimethicone-treated spherical zinc oxide particles of aggregated lamellar zinc oxide were turned yellow.
(Hayashi, par. [0051]), which reads on “dried surface-modified zinc oxide particles” of claim 19.
Thus, Hayashi anticipates claim 19.
Claim Rejections – 35 U.S.C. § 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 pre-AIA 35 U.S.C. § 103(a) 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.
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 C.F.R. § 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 1-8, 11-15 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”), and in view of ITAGAKI (WO 2017/130632 A1, Publ. Aug. 03, 2017; as evidenced by English language translation of WO 2017/130632 A1; on 10/27/2022 IDS; hereinafter, “Itagaki”).
Page and paragraph numbers for Itagaki refer to English language translation of WO 2017/130632 A1.
The teachings of Hayashi, as set forth in the above rejection of claims 1-3, 5-8, 11-15 and 19 under 35 U.S.C. § 102 (a)(1) are hereby incorporated. Although Hayashi teaches “[t]he sebum adsorbent contains a spherical zinc oxide of aggregated lamellar zinc oxide” that “has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane” (Hayashi, par. [0008]), Hayashi, however DOES NOT EXPRESSLY TEACH the requirements of claim 4 for a particular organopolysiloxane:
4. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the silane coupling agent is at least one selected from a group consisting of octyltriethoxysilane, octyltrimethoxysilane, and a dimethoxydiphenylsilane-triethoxycaprylylsilane crosspolymer.
which is well within the purview of the ordinarily skilled artisan.
Itagaki, for instance, is directed to:
SURFACE-TREATED ZINC OXIDE PARTICLES, DISPERSION LIQUID, COSMETIC, AND ZINC OXIDE PARTICLES
Abstract
Provided are surface-treated zinc oxide particles stably displaying high ultraviolet ray-shielding properties. Also provided are a dispersion liquid and a cosmetic that include said surface-treated zinc oxide particles. In addition, zinc oxide particles are provided whereby said surface-treated zinc oxide particles can be suitably produced. In the surface-treated zinc oxide particles, the particle surface of the zinc oxide particles has been treated using a silane coupling agent having an alkoxy group. The zinc oxide particles fulfil formula (1). […]
Itagaki, title & abstract. In this regard, Itagaki teaches suitable “silane couple agent[s],” inter alia, “dimethoxydiphenylsilane-triethoxycaprylylsilane crosspolymer.” Itagaki, p. 4, par. 1.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to manufacture Hayashi’s “a sebum adsorbent containing a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm,” that “has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane” (Hayashi, par. [0007]-[0009]) with “dimethoxydiphenylsilane-triethoxycaprylylsilane crosspolymer” as taught by Itagaki (Itagaki, p. 4, par. 1). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of suitable “silane couple agent” (Itagaki, p. 4, par. 1) for surface-treated zinc oxide particles (Itagaki, title & abstract).
Thus, the prior art renders claim 4 obvious.
Claims 1-3, 5-8, 11-16 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”), and in view of SUEDA (EP 2 824 073 A1, Publ. Jan. 14, 2015; on 11/17/2025 IDS; hereinafter, “Sueda”).
The teachings of Hayashi, as set forth in the above rejection of claims 1-3, 5-8, 11-15 and 19 under 35 U.S.C. § 102 (a)(1) are hereby incorporated. Although Hayashi teaches:
[0013] The spherical zinc oxide of aggregated lamellar zinc oxide of the sebum adsorbent of the present invention preferably has a BET specific surface area of 5 m2/g or greater. The BET specific surface area in the range described above allows particularly preferable performances to be exhibited as the effect in fixing sebum. That is, it is conceived that, due to the large BET specific surface area, the contact area between sebum and zinc oxide becomes greater, thereby achieving higher sebum-adsorbing performance than the sebum-adsorbing performances of zinc oxide particles in the related art. The BET specific surface area is more preferably 6 m2/g or greater but less than 15 m2/g. Note that the BET specific surface area is a value obtained by the measurement method described in the examples below.
(Hayashi, par. [0013]), Hayashi, however DOES NOT EXPRESSLY TEACH the requirements of claim 16 for:
16. ([…]) The surface-modified zinc oxide particles according to claim 1, wherein the surface-modified zinc oxide particles have a specific surface area of 20 m2/g or more and 50 m2/g or less.
which is well within the purview of the ordinarily skilled artisan.
Sueda, for instance, is directed to:
SPHERICAL ZINC OXIDE PARTICLE CONSISTING OF INTEGRATED PLATE-LIKE PARTICLES, METHOD FOR PRODUCING THE SAME, COSMETIC, AND THERMAL CONDUCTIVE FILLER
It is an object of the present disclosure to provide spherical zinc oxide particles consisting of integrated plate-like particles which can be used as a cosmetic raw material, a thermal conductive filler and the like, and a method for production of the same.
Spherical zinc oxide particles consisting of integrated plate-like particles, which have a median size of 0.01 μm or more and a D90/D10 in particle size distribution of 5.0 or less.
Sueda, title & abstract. In this regard, Sueda teaches “zinc oxide particles” that “have a BET specific surface area of 10 m2/g or more” by “adjusting the BET specific surface area thereof within the range” for “an antibacterial property and an astringent action”:
[0025] The zinc oxide particles of the present disclosure preferably have a BET specific surface area of 10 m2/g or more. By adjusting the BET specific surface area thereof within the range, the particles have especially suitable performances in effects including an antibacterial property and an astringent action. The BET specific surface area is more preferably 12 m2/g or more, still more preferably 14 m2/g or more.
(Sueda, par. [0025]), and discloses exemplary embodiments with a “BET specific surface area” of 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5).
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to manufacture Hayashi’s “a sebum adsorbent containing a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm,” that “has been surface-treated with organopolysiloxane and/or triethoxycaprylylsilane” (Hayashi, par. [0007]-[0009]), with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]). One would have been motivated to do so with a reasonable expectation of success since both Hayashi and Sueda are concerned with similar problems in the art, namely the manufacture of zinc oxide particles (Hayashi, abstract; Sueda, abstract), while Hayashi references “WO 2013133412 A” (Hayashi, p. 16, and throughout), which is the WO equivalent of Sueda. Doing so amounts to no more than combining prior art elements according to known methods to yield predictable results, namely the manufacture Hayashi’s “aggregated lamellar zinc oxide” (Hayashi, par. [0007]-[0009]) with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]), e.g., 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5). In this regard, it is noted that MPEP § 2144.05 (I), states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d, 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” In the instant case, “BET specific surface area” is clearly a result-effective variable since Hayashi teaches “due to the large BET specific surface area, the contact area between sebum and zinc oxide becomes greater” (Hayashi, par. [0013]), while Sueda teaches “adjusting the BET specific surface area thereof within the range” for “suitable performances in effects including an antibacterial property and an astringent action” (Sueda, par. [0025]). Therefore, it would have been customary for an artisan of ordinary skill to optimize Hayashi’s “aggregated lamellar zinc oxide” (Hayashi, par. [0007]-[0009]) with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]), e.g., 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5), for “contact area between sebum and zinc oxide” (Hayashi, par. [0013]), and “suitable performances in effects including an antibacterial property and an astringent action” (Sueda, par. [0025]).
Thus, the prior art renders claim 16 obvious.
Claim Rejections - Nonstatutory 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-8, 11-13 and 19 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-5, 15-20 of copending Application No. 17/913,422 (‘422 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to surface-modified zinc oxide particles with a silane coupling agent having an alkoxy group (such as octyltrimethoxysilane). However, to the extent that the ‘422 Application DOES NOT TEACH:
the median particle diameter, d50, of claims 1 and 11-13, it would be obvious to manufacture the zinc oxide particles of the ‘422 Application as a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm” in order to obtain the advantage of a suitable particle size range for a “sebum adsorbent” (Hayashi, par. [0008]); AND
dried surface-modified zinc oxide particles as required by claim 19, it would be obvious to t would be obvious to manufacture the zinc oxide particles of the ‘422 Application as a spherical zinc oxide of aggregated lamellar zinc oxide that is “dried at 120°C for 12 hours” per Hayashi (Hayashi, par. [0051]) as a sutiable treatment in the manufacture of surface-treated zinc oxide particles (Hayashi, par. [0007]-[0009]).
Thus, the ‘422 Application per Hayashi render claims 1-8, 11-13 and 19 obvious.
Claims 14-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-5, 15-20 of copending Application No. 17/913,422 (‘422 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”), as applied to claims 1-8, 11-13 and 19, above, and further in view of the disclosure of SUEDA (EP 2 824 073, Publ. Jan. 14, 2015; on 11/17/2025 IDS; hereinafter, “Sueda”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
The teachings of the ‘422 Application and Hayashi, as set forth above, are hereby incorporated. However, to the extent that the ‘422 Application DOES NOT TEACH the particular specific surface area requirements of claims 14-16, it would be obvious to manufacture the zinc oxide particles of the ‘422 Application with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]), optimized to values including 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5) for “suitable performances in effects including an antibacterial property and an astringent action” (Sueda, par. [0025]).
Thus, the ‘422 Application per Hayashi and Sueda render claims 14-16 obvious.
Claims 1-8, 11-16 and 19 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-2, 5-8 and 11-14 of copending Application No. 17/997,352 (‘352 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented; however, it is noted that since the claims of the ‘352 Application are currently allowed, this rejection will therefore no longer be provisional when the claims of the ‘352 Application issue.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to surface-modified zinc oxide particles with a silane coupling agent having an alkoxy group (such as octyltriethoxysilane, octyltrimethoxysilane, and a dimethoxydiphenylsilanetriethoxycaprylylsilane crosspolymer), and overlapping specific surface area of 1.5 m2/g or more and 50m2/g or less, that may be dried. However, to the extent that the ‘352 Application DOES NOT TEACH the median particle diameter, d50, of claims 1 and 11-13, it would be obvious to manufacture the zinc oxide particles of the ‘352 Application as a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm” in order to obtain the advantage of a suitable particle size range for a “sebum adsorbent” (Hayashi, par. [0008]).
Thus, the ‘352 Application per Hayashi render claims 1-8, 11-16 and 19 obvious.
Claims 1-8, 11-13 and 19 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-6 and 8-10 of copending Application No. 18/278,176 (‘176 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”).
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to surface-modified zinc oxide particles with a silane coupling agent having an alkoxy group. However, to the extent that the ‘176 Application DOES NOT TEACH:
the median particle diameter, d50, of claims 1 and 11-13, it would be obvious to manufacture the zinc oxide particles of the ‘176 Application as a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm” in order to obtain the advantage of a suitable particle size range for a “sebum adsorbent” (Hayashi, par. [0008]);
the particular specific surface area requirements of claims 14-16, it would be obvious to manufacture the zinc oxide particles of the ‘176 Application with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]), optimized to values including 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5) for “suitable performances in effects including an antibacterial property and an astringent action” (Sueda, par. [0025]); AND
dried surface-modified zinc oxide particles as required by claim 19, it would be obvious to t would be obvious to manufacture the zinc oxide particles of the ‘176 Application as a spherical zinc oxide of aggregated lamellar zinc oxide that is “dried at 120°C for 12 hours” per Hayashi (Hayashi, par. [0051]) as a sutiable treatment in the manufacture of surface-treated zinc oxide particles (Hayashi, par. [0007]-[0009]).
Thus, the ‘176 Application per Hayashi render claims 1-8, 11-13 and 19 obvious.
Claims 14-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-6 and 8-10 of copending Application No. 18/278,176 (‘176 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”), as applied to claims 1-8, 11-13 and 19, above, and further in view of the disclosure of SUEDA (EP 2 824 073, Publ. Jan. 14, 2015; on 11/17/2025 IDS; hereinafter, “Sueda”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
The teachings of the ‘176 Application and Hayashi, as set forth above, are hereby incorporated. However, to the extent that the ‘176 Application DOES NOT TEACH the particular specific surface area requirements of claims 14-16, it would be obvious to manufacture the zinc oxide particles of the ‘176 Application with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]), optimized to values including 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5) for “suitable performances in effects including an antibacterial property and an astringent action” (Sueda, par. [0025]).
Thus, the ‘176 Application per Hayashi and Sueda render claims 14-16 obvious.
Claims 1-2, 11-13 and 19 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-5 of copending Application No. 18/836,757 (‘757 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to surface-modified zinc oxide particles with a silane coupling agent having an alkoxy group. However, to the extent that the ‘757 Application DOES NOT TEACH:
the median particle diameter, d50, of claims 1 and 11-13, it would be obvious to manufacture the zinc oxide particles of the ‘757 Application as a spherical zinc oxide of aggregated lamellar zinc oxide having a median size of 0.01 µm or greater but less than 10 µm” in order to obtain the advantage of a suitable particle size range for a “sebum adsorbent” (Hayashi, par. [0008]); AND
dried surface-modified zinc oxide particles as required by claim 19, it would be obvious to t would be obvious to manufacture the zinc oxide particles of the ‘757 Application as a spherical zinc oxide of aggregated lamellar zinc oxide that is “dried at 120°C for 12 hours” per Hayashi (Hayashi, par. [0051]) as a sutiable treatment in the manufacture of surface-treated zinc oxide particles (Hayashi, par. [0007]-[0009]).
Thus, the ‘757 Application per Hayashi render claims 1-2, 11-13 and 19 obvious.
Claims 3-4 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-6 and 8-10 of copending Application No. 18/836,757 (‘757 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”), as applied to claims 1-2, 11-13 and 19, above, and further in view of the disclosure of ITAGAKI (WO 2017/130632 A1, Publ. Aug. 03, 2017; as evidenced by English language translation; on 10/27/2022 IDS; hereinafter, “Itagaki”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
The teachings of the ‘757 Application and Hayashi, as set forth above, are hereby incorporated. However, to the extent that the ‘757 Application DOES NOT TEACH a particular silane coupling agent of claims 3-4, it would be obvious to manufacture the zinc oxide particles of the ‘757 Application with “dimethoxydiphenylsilane-triethoxycaprylylsilane crosspolymer” per Itagaki (Itagaki, p. 4, par. 1) in order to obtain the advantage of a suitable silane coupling agent for surface treatment of zinc oxide particles (Itagaki, title & abstract).
Thus, the ‘757 Application per Hayashi and Itagaki render claims 3-4 obvious.
Claims 14-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-6 and 8-10 of copending Application No. 18/836,757 (‘757 Application), in view of the disclosure of HAYASHI (WO 2016/190399 A1, Publ. Dec. 01, 2016; on 10/27/2022 IDS; as evidenced by EP 3 305 272 B1, on 10/27/2022 IDS; hereinafter, “Hayashi”), as applied to claims 1-2, 11-13 and 19, above, and further in view of the disclosure of SUEDA (EP 2 824 073, Publ. Jan. 14, 2015; on 11/17/2025 IDS; hereinafter, “Sueda”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
The teachings of the ‘757 Application and Hayashi, as set forth above, are hereby incorporated. However, to the extent that the ‘757 Application DOES NOT TEACH the particular specific surface area requirements of claims 14-16, it would be obvious to manufacture the zinc oxide particles of the ‘757 Application with a “BET specific surface area of 10 m2/g or more” per Sueda (Sueda, par. [0025]), optimized to values including 15.4 m2/g to 30.8 m2/g (Sueda, p. 9, Table 1, Ex.’s 3 & 5) for “suitable performances in effects including an antibacterial property and an astringent action” (Sueda, par. [0025]).
Thus, the ‘757 Application per Hayashi and Sueda claims 14-16 obvious.
Conclusion
Claims 1-8, 11-16 and 19 are rejected. No claims are allowed.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611