RESPONSE TO AMENDMENT
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/10/2026 has been entered.
Claims 1-13 and 15-16 are pending in the application. Amendments to the claims filed on 04/10/2026 have been entered in the above-identified application.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Double Patenting
Claims 1-13 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,471,849 (hereafter ‘849) in view of Kong et al. (U.S. App. Pub. No. 2009/0246279)
Regarding claim 1, ‘849 claims metal oxide porous microspheres having an average diameter between 1 to 100 micrometers (which overlaps with the present claimed range), an average pore diameter between 50 nm to 800 nm and wherein the microspheres comprise two or more populations of pores “formed throughout” a continuous solid structure, which reads on “formed throughout the volume of the microsphere” as claimed. (claims 1 and 10). The limitation “cosmetic formulation” does not impart any patentable weight since it does not provide any limiting structure to the claim and merely states and intended use of the porous microspheres. As such, the microspheres disclosed in ‘849 read on the “cosmetic formulation” of claim 1.
‘849 does not claim a substrate having the form of a solid, semi-solid, liquid, paste or cream in which the microspheres are dispersed.
Kong et al. teaches porous metal oxide microparticles containing hydrophobic materials encapsulated within the pores thereof. (Abstract, Fig. 2-5 and par. [0257]). Kong et al. teaches such microspheres have applications in cosmetics when mixed with creams, perfumes, drugs, food and cleaning agents. (par. [0261]).
It would have been obvious to one of ordinary skill in the art to use the microspheres claimed in ‘849 in creams (i.e. dispersed therein), based on the teachings of Kong et al.
One of ordinary skill in the art would have found it obvious to use the microspheres of ‘849 in a cream based on the known utility thereof in cosmetic products as taught in Kong et al. Combining known prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP 2143. In the instant case, since porous metal oxide microspheres are known to be used in cream compositions, one of ordinary skill in the art would have a reasonable expectation of success of using the porous microspheres in ‘849 in a cream composition to form a product having utility as a cosmetic composition.
Regarding claim 2, ‘849 claims an average diameter of the porous microspheres is in the range of 1 to 50 microns. (claim 3),
Regarding claim 3, ‘849 claims an average pore diameter of 50 to 500 nm. (claims 1 and 4).
Regarding claim 4, ‘849 claims an average porosity of 0.45 to 0.65. (claim 5).
Regarding claim 5, ‘849 claims a diameter of 4.5 micrometer to about 9.9 micrometer, an average porosity 0.45-0.65 and an average pore diameter of 220 nm to 300 nm. (claims 1 and 3-5).
Regarding claim 6, ‘849 claims a metal oxide silica, titania, alumina, zirconia, ceria, iron oxide, zinc oxide, indium oxide, tin oxide, chromium oxide and combinations thereof. (claim 8).
Regarding claim 7, ‘849 claims a content 60-99.9 wt. % of metal oxide. (claim 7).
Regarding claims 8-9, ‘849 claims a bulk sample having an angle-independent color observable by the human eye. (claim 15).
Regarding claim 10, ‘849 claims a composition comprising porous microspheres having an average diameter of 1 to 75 micrometers and one or more light absorbers. (metal oxide materials in claims 8 and 16 and claim 13).
Regarding claim 11, ‘849 claims the content of light absorbers in the range of 0.1 to 40 wt.%. (claim 13).
Regarding claim 12, ‘849 claims that the porosity is distributed throughout the volume of the microsphere. (claim 1).
Regarding claim 13, ‘849 claims a metal oxide silica, titania, alumina, zirconia, ceria, iron oxide, zinc oxide, indium oxide, tin oxide, chromium oxide and combinations thereof. (claims 7 and 16).
Regarding claim 15, ‘849 claims a pore diameter in the range of 50-800 nm which substantially overlaps with the presently claimed range. (claim 1).
Regarding claim 16, ‘849 claims a content 60-99.9 wt. % of metal oxide. (claim 7)
Claims 1-13 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,517,871 (hereafter ‘871) in view of Kong et al. (U.S. App. Pub. No. 2009/0246279).
Regarding claim 1, ‘871 claims porous microspheres having an average diameter between 1 to 75 micrometers, an average pore diameter between 50 nm to 800 nm and wherein the porosity of each porous microsphere is distributed throughout the volume of the porous microsphere, which overlaps with the presently claimed range. (claim 1). The limitation “bulk sample” is encompassed by the limitation “porous microspheres” claimed in ‘871. The limitation “cosmetic formulation” does not impart any patentable weight since it does not provide any limiting structure to the claim and merely states and intended use of the porous microspheres. As such, the microspheres disclosed in ‘871 read on the “cosmetic formulation” of claim 1.
‘871 does not claim a substrate having the form of a gel, paste or cream in which the microspheres are dispersed.
Kong et al. teaches porous metal oxide microparticles containing hydrophobic materials encapsulated within the pores thereof. (Abstract, Fig. 2-5 and par. [0257]). Kong et al. teaches such microspheres have applications in cosmetics when mixed with creams, perfumes, drugs, food and cleaning agents. (par. [0261]).
It would have been obvious to one of ordinary skill in the art to use the microspheres claimed in ‘871in creams (i.e. dispersed therein), based on the teachings of Kong et al.
One of ordinary skill in the art would have found it obvious to use the microspheres of ‘849 in a cream based on the known utility thereof in cosmetic products as taught in Kong et al. Combining known prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP 2143. In the instant case, since porous metal oxide microspheres are known to be used in cream compositions, one of ordinary skill in the art would have a reasonable expectation of success of using the porous microspheres in ‘871 in a cream composition to form a product having utility as a cosmetic composition.
Regarding claim 2, ‘871 claims an average diameter of the porous microspheres is in the range of 1 to 50 microns. (claim 2),
Regarding claim 3, ‘871 claims an average pore diameter of 50 to 500 nm. (claim 3).
Regarding claim 4, ‘871 claims an average porosity of 0.45 to 0.65. (claim 4).
Regarding claim 5, ‘871 claims a diameter of 4.5 micrometer to about 9.9 micrometer, an average porosity 0.45-0.65 and an average pore diameter of 220 nm to 300 nm. (claim 5).
Regarding claim 6, ‘871 claims a metal oxide silica, titania, alumina, zirconia, ceria, iron oxide, zinc oxide, indium oxide, tin oxide, chromium oxide and combinations thereof. (claim 7).
Regarding claim 7, ‘871 claims a content 60-99.9 wt. % of metal oxide. (claim 6).
Regarding claims 8-9, ‘871 claims a bulk sample having an angle-independent color observable by the human eye. (claim 8 and 15).
Regarding claim 10, ‘871 claims a composition comprising porous microspheres having an average diameter of 1 to 75 micrometers and one or more light absorbers. (claims 10 and 12).
Regarding claim 11, ‘871 claims the content of light absorbers in the range of 0.1 to 40 wt.%. (claim 13).
Regarding claim 12, ‘871 claims that the porosity is distributed throughout the volume of the microsphere. (claim 1).
Regarding claim 13, ‘871 claims a metal oxide silica, titania, alumina, zirconia, ceria, iron oxide, zinc oxide, indium oxide, tin oxide, chromium oxide and combinations thereof. (claims 7 and 16).
Regarding claim 15, ‘871 claims a pore diameter in the range of 50-800 nm which substantially overlaps with the presently claimed range. (claim 1).
Regarding claim 16, ‘871 claims a content 60-99.9 wt. % of metal oxide. (claim 6)
Claim Interpretation
With respect to the preamble of claims 1-13 and 15-16, the term “cosmetic formulation” does not impart any patentable weight since it does not provide any limiting structure to the claim. The term therefore states an intended use which does limit the structure of the claim beyond the limitations in the body. MPEP 2111.02 II.
Claim Rejections - 35 USC § 103
Claims 1-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Iler et al. (U.S. Pat. No. 3,855,172) in view of Kong et al. (U.S. App. Pub. No. 2009/0246279).
Regarding claim 1, Iler et al. teaches metal oxide microspheres having diameters in the range of 0.5 to 20 microns (Abstract and col. 5, lines 14-22), overlapping with the presently claimed range. The microspheres have a porosity that is distributed throughout the volume of the microspheres as shown in Fig. 1 as they are formed by an aggregation of smaller particles of inorganic oxides. (col. 4, lines 22-51). The microparticles, after synthesis, are present in a solution (i.e. with a liquid material)/semi-solid (wet settled cake, Example 1, col. 10, lines 3-11), therefore the particles disclosed in Iler et al. are dispersed in a substrate material having the form of a liquid/semi-solid.
With respect to the limitation “having a continuous solid structure”, the individual smaller particles of inorganic oxides as disclosed in col. 4, lines 22-51 would exhibit a continuous solid structure. Therefore, the porous microspheres would “have a continuous solid structure” as claimed. Furthermore, the microsphere as a whole is described as a solid network of these individual particles that are interconnected which would therefore form both a porous and continuous solid structure as presently claimed. (col. 5, lines 23-29 and col. 3, lines 20-24). These smaller particles therefore, by virtue of their interconnected network, would also satisfy the limitation of a continuous solid structure.
Iler et al. teaches that the microspheres are usable as flame resistant and pigment fillers as well as catalytic and chromatographic packing materials (col. 1, lines 10-22). However, Iler et al. does not explicitly disclose the microspheres in a gel, paste or cream.
Kong et al. teaches porous metal oxide microparticles containing hydrophobic materials encapsulated within the pores thereof. (Abstract, Fig. 2-5 and par. [0257]). Kong et al. teaches such microspheres have applications in cosmetics when mixed with creams, perfumes, drugs, food and cleaning agents. (par. [0261]).
It would have been obvious to one of ordinary skill in the art to use the microspheres claimed in Iler in creams (i.e. dispersed therein), based on the teachings of Kong et al.
One of ordinary skill in the art would have found it obvious to use the microspheres of Iler in a cream based on the known utility thereof in cosmetic products as taught in Kong et al. The microspheres of Iler et al. would therefore act as pigmenting fillers, a known utility explicitly disclosed by the primary reference, in the cream composition for a cosmetic product. Combining known prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP 2143. In the instant case, since porous metal oxide microspheres are known to be used in cream compositions, one of ordinary skill in the art would have a reasonable expectation of success of using the porous microspheres in Iler in a cream composition to form a product having utility as a cosmetic composition.
Regarding claim 2, Iler et al. teaches metal oxide microspheres having diameters in the range of 0.5 to 20 microns (Abstract and col. 5, lines 14-22), overlapping with the presently claimed range
Regarding claim 3, Iler et al. teaches that the average pore diameter is about 300 nanometers. (col. 9, lines 30-34).
Regarding claim 4, Iler et al. teaches that the microspheres have a pore content (i.e. porosity) of over 50% by volume (i.e. 0.5 or greater) (col. 3, lines 23-24), overlapping with the present claim range.
Regarding claim 5, Iler et al. teaches diameters in the range of 0.5 to 20 microns (Abstract and col. 5, lines 14-22), pore sizes of about 300 nanometers. (col. 9, lines 30-34) and a pore content (i.e. porosity) of over 50% by volume (i.e. 0.5 or greater) (col. 3, lines 23-24), overlapping with the present claim range.
Regarding claim 6, the microspheres comprise metal oxides including silica (Example 1), alumina (Example 8), zirconia (Example 9), titania (Example 10) and iron oxide. (Example 14).
Regarding claim 7, the metal oxide material is present in an amount of 10-90% after synthesis. (col. 6, lines 40-44).
Regarding claims 8-9, the microspheres comprise metal oxide materials and would therefore have a color that is angle independent. This is further evidenced in Example 14 wherein the microspheres are used in an ink composition which has a color retention at high temperatures.
Regarding claims 10-11, Iler et al. teaches metal oxide microspheres having diameters in the range of 0.5 to 20 microns (Abstract and col. 5, lines 14-22), overlapping with the presently claimed range. The microspheres have a porosity that is distributed throughout the volume of the microspheres as shown in Fig. 1 as they are formed by an aggregation of smaller particles. The microparticles, after synthesis, are present in a solution (i.e. with a liquid material)/semi-solid (wet settled cake, Example 1, col. 10, lines 3-11), therefore the particles disclosed in Iler et al. are dispersed in a substrate material having the form of a liquid/semi-solid.
With respect to the limitation “having a continuous solid structure”, the individual smaller particles of inorganic oxides as disclosed in col. 4, lines 22-51 would exhibit a continuous solid structure. Therefore, the porous microspheres would “have a continuous solid structure” as claimed. Furthermore, the microsphere as a whole is described as a solid network of these individual particles that are interconnected which would therefore form both a porous and continuous solid structure as presently claimed. (col. 5, lines 23-29 and col. 3, lines 20-24). These smaller particles therefore, by virtue of their interconnected network, would also satisfy the limitation of a continuous solid structure.
With respect to “one or more light absorber”, the microspheres may contain ash (i.e. a material absorbing light due to its color) in amounts of 35-81%. (col. 16, lines 12-15).
Regarding claim 12, the microspheres have a porosity that is distributed throughout the volume of the microspheres as shown in Fig. 1 as they are formed by an aggregation of smaller particles.
Regarding claim 13, the microspheres comprise metal oxides including silica (Example 1), alumina (Example 8), zirconia (Example 9), titania (Example 10) and iron oxide. (Example 14).
Regarding claim 15, Iler et al. teaches that the average pore diameter is about 300 nanometers. (col. 9, lines 30-34).
Regarding claim 16, the metal oxide material is present in an amount of 10-90% after synthesis. (col. 6, lines 40-44).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 04/10/2026 regarding the prior art rejections made of record in the office action mailed on 01/13/2026 have been carefully considered but are deemed unpersuasive.
Applicants argues that the microspheres in Iler et al. does not meet the limitations of the a “continuous solid structure” as presently claimed because they are individual discrete particles which retain their individual character. (Applicant’s arguments filed 04/10/2026, page 6).
Claims must be given their broadest reasonable interpretation in light of the specification. MPEP 2111. The present application does not specifically define the term “continuous solid structure” and therefore any inorganic matrix of metal oxide solid material or portion thereof would meet the limitation. The microspheres of Iler et al. contain individual smaller particles of inorganic oxides as disclosed in col. 4, lines 22-51 which would individually exhibit a continuous solid structure. Furthermore, the microsphere as a whole is described as a solid network of these individual particles that are interconnected which would therefore form both a porous and continuous solid structure as presently claimed. (col. 5, lines 23-29 and col. 3, lines 20-24). These smaller particles therefore, by virtue of their interconnected network, would also satisfy the limitation of a continuous solid structure. Applicant’s arguments are therefore not persuasive.
Conclusion
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 05/01/2026
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