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
Claims 1-9 and 15-21 are under consideration.
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-9 and 15-21, drawn to compositions comprising a sunscreen active and aspherical hollow silica particles having an average short axis greater than 400 nm in the reply filed on August 22, 2025 is acknowledged. The traversal is on the ground(s) that the Office did not allege that searching the two groups would create a serious burden. This is not found persuasive because search burden is only a factor when restriction is required in applications filed under 35 USC 111(a). Because the instant application was filed under 35 USC 371 the unity of invention standard applies as set forth in the Requirement for Restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-9 and 15-21 as filed on August 22, 2025 are pending and under consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on April 24, 2023 and August 25, 2025 were considered.
Claim Objections
Claims 7, 9 and 21 are objected to because of the following informalities:
Claim 7: “a sun protection factor (SPF) boost” is properly “the sun protection factor (SPF) boost” because antecedent basis is implicit.
Claims 9, 21: the “and/or” should presumably be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 7 is 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.
Claim 7 recites a sun protection factor boost is more than about 3. Given that the composition of clam 1 can comprise any sunscreen active in any amount, where the sunscreen active is generally considered to be the component which imparts a sun protection factor to the composition, it is unclear what is meant by a boost of more than about 3. The specification at paragraph [0027] suggests the boost is “as compared to a comparative composition without the aspherical hollow silica particles”. However, paragraph [0027] exclusively describes a boost ratio which may be calculated using Equation 1 as disclosed in paragraph [0068]. Because the specification discloses a ratio not claimed, it is unclear whether the boost of claim 7 is a numerical boost reflecting the SPF of the composition of claim 1 per se, e.g., a composition with a SPF of 3 SPF; a numerical boost relative to some other composition; a multiplicative boost, e.g., 3 times some baseline SPF; or something else, e.g., the ratio of Equation 1.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 9 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Matsubara et al. (WO 2016/152872 A1, published September 29, 2016, as evidenced by the Google translation) in view of Aratani et al. (US 2011/0129672, published June 2, 2011).
Matsubara teaches a cosmetic additive comprising hollow silica particles having an average particle size of 0.1 to 30 microns and an outer shell thickness of 5 to 500 nm (title; abstract; claims), as required by instant claims 2, 16. 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). See MPEP 2144.05.
The shape of the particles is not limited and may be spherical or spindle (aspherical, having a long axis and a short axis); it is preferable that the particles is spherical including a true sphere and ellipsoid (aspherical, having a long axis and a short axis) (page 2, lower half).
Matsubara further teaches cosmetics inclusive of sunscreen agents and cosmetic components inclusive of UV absorbers (page 6, lower half through page 7). Cosmetic components also include inter alia oils (paragraph bridging pages 6 and 7), as required by instant claims 9, 21.
Matsubara does not specifically teach the short axis is greater than 400 nm as required by claims 1, 15.
Matsubara does not specifically teach the long axis is at least 1.25 times greater than the short axis as required by claims 3, 15.
Matsubara does not specifically teach the long axis is greater than 500 nm as required by claim 4.
Matsubara does not specifically teach the void long axis is greater than 350 nm as required by claims 5, 17.
Matsubara does not specifically teach the void short axis is less than 1100 nm as required by claims 6, 18.
Matsubara does not specifically teach the long axis is at least 1.5 times greater than the short axis as required by claim 20.
These deficiencies are made up for in the teachings of Aratani.
Aratani teaches non-spherical hollow fine particles having a spindle shape as a whole with a major axis and a minor axis, the average length of the major axis being 0.1 to 30 microns and the ratio of the average length of the minor axis to the average length of the major axis being 0.3 to 0.8 (implies the ratio major/minor is 1/0.3 to 1/0.8 or about 3.33 to 1.25) (title; abstract; claims), as required by instant claims 3-6, 17-20. Aratani further teaches cosmetics (e.g., title; paragraph [0037]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hollow silica particles of Matsubara to comprise a major axis and a minor axis, the average length of the major axis being 0.1 to 30 microns and the ratio of the average length of the minor axis to the average length of the major axis being 0.3 to 0.8 (implies the ratio major/minor is 1/0.3 to 1/0.8 or about 3.33 to 1.25) as taught by Aratani in order to take the shape of a spindle suitable for cosmetics. There would be a reasonable expectation of success because Matsubara expressly teaches the hollow silica particles may take the shape of a spindle. The combined teachings of the prior art therefore render obvious hollow silica spindle particles having a minor axis the average length being 0.3 to 0.8 times 0.1 to 30 microns, e.g., from 0.03 to 24 microns (30 to 24,000 nm).
Regarding claims 5, 17 which recite the void long axis is greater than 350 nm, the combined teachings of the prior art render obvious hollow silica spindle particles having a major axis of 0.1 to 30 microns (100 to 30,000 nm) and an outer shell thickness of 5 to 500 nm. The void axis = major axis – 2 * (shell thickness).
Regarding claims 6, 18 which recite the void short axis is less than 1100 nm, the combined teachings of the prior art render obvious hollow silica spindle particles having a minor axis of 0.03 to 24 microns (30 to 24,000 nm) and an outer shell thickness of 5 to 500 nm. The void axis = minor axis – 2 * (shell thickness).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Matsubara et al. (WO 2016/152872 A1, published September 29, 2016, as evidenced by the Google translation) in view of Aratani et al. (US 2011/0129672, published June 2, 2011) as applied to claims 1-6, 9 and 15-21 above, and further in view of L’Alloret et al. (FR 2,882,651 A1, published September 8, 2006, as evidenced by the Google translation).
The teachings of Matsubara and Aratani have been described supra.
They do not teach the SPF boost is more than about 3 as required by claim 7.
This deficiency is made up for in the teachings of L’Alloret.
L’Alloret teaches a filtering fluid composition comprising one or more UV screening agents and spherical or nonspherical silica particles which may be hollow (title; abstract; claims, in particular 1, 10-12, 38, 40). The filters (and their quantities) are selected according to the desired sun protection factor (page 3, 3rd full paragraph). The silica particles may be of ellipsoidal shape (page 7, top half). L’Alloret exemplifies an embodiment of composition wherein the incorporation of 2% silica (silica shells) makes it possible to increase the skin protection factor by 18% (page 8, lower half).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the hollow silica spindle particles of Matsubara and Aratani increase the sun protection factor of compositions comprising UV screening agents because L’Alloret exemplifies an embodiment of composition wherein the incorporation of 2% silica (silica shells) makes it possible to increase the skin protection factor by 18%.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsubara et al. (WO 2016/152872 A1, published September 29, 2016, as evidenced by the Google translation) in view of Aratani et al. (US 2011/0129672, published June 2, 2011) as applied to claims 1-6, 9 and 15-21 above, and further in view of Ghosh Dastidar et al. (US 2016/008256, published January 14, 2016).
The teachings of Matsubara and Aratani have been described supra.
They do not teach the SPF boost is more than about 3 as required by claim 7.
They do not teach hollow polystyrene spheres as required by claim 8.
These deficiencies are made up for in the teachings of Ghosh Dastidar.
Ghosh Dastidar teaches photo-protective compositions which provide high sun protection factor (SPF) comprising specific non-ionic surfactants that interact synergistically with hollow microspheres (title; abstract; claims; paragraphs [0043], [0044]). The hollow microspheres may comprise polystyrene (claims 4-6), as required by instant claim 8. The compositions have an SPF of at least 20 (claim 15), as required by instant claim 7.
Regarding claim 7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sunscreen agents of Matsubara in view of Aratani comprising UV absorbers and hollow silica spindle particles to have an SPF of at least 20 as taught by Ghosh Dastidar because this value provides high sun protection.
Regarding claim 8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sunscreen agents of Matsubara in view of Aratani comprising UV absorbers and hollow silica spindle particles to further comprise specific non-ionic surfactants and hollow polystyrene microspheres as taught by Ghosh Dastidar in order to provide high sun protection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2023/507061 is the closest prior art as identified by USPTO artificial intelligence
Hayakawa et al. (US 2016/0262988) teaches elliptical particles have an aspect ratio from 2 to 30 (title; abstract).
Jansen et al. (US 2016/0030313) teaches cosmetic compositions comprising substantially spherical particles, meaning the particles have an aspect ratio of from 1:1 to 2:1 (title; abstract; claims; paragraph [0046]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600