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
Applicant’s Request for Reconsideration dated December 4, 2025 is acknowledged.
Claims 1-12 are pending.
Claims 1-4 and 7-9 are currently amended.
Claims 5, 6 and 10-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-4 and 7-9 as filed on December 4, 2025 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn and all previous claim rejections under 35 USC 102(a)(1) by Kimura are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities: “a ratio” is properly “the ratio” and “a molar concentration” is properly “the molar concentration” because antecedent basis is implicit. Appropriate correction is required.
Applicant is advised that should claim 4 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof (see 112(d) rejections infra). When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 7-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 1 as currently amended recites production from titanium sulfate and phosphoric acid in a [P]/[Ti] molar ratio of 6.9 to 10.8. Applicant’s Remarks cite to paragraphs [0016], [0032] and [0034] in support of the amendments. These passages do not disclose the newly claimed molar ratio, nor is it seen where it is disclosed. While select examples employ concentration ratios of [P]/[Ti] of 11 (e.g., paragraphs [0037], [0053], [0097] of the instant specification as filed) or of 13 (e.g., paragraphs [0072], [0113]), and these concentration ratios are understood as molar ratios in view of the corresponding recitations of molar concentrations, it is not seen where a range of 6.9 to 10.8 is disclosed. This is new matter.
Claim Rejections - 35 USC § 112(d)
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 3 and 7 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 3 and 7 independently recite the particles comprise titanium phosphate, however, the particles of claim 1 as currently amended comprise titanium phosphate. Claims 3 and 7 are not further limiting.
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.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Iwakuni et al. (WO 2018/180797, published October 4, 2018, as evidenced by US 2020/0377369, IDS references filed March 17, 2023) in view of Kimura (US 2018/0000702, published January 4, 2018, of record).
Iwakuni teaches plate-shaped crystalline particles of titanium phosphate having an average thickness of 0.01 to 0.10 microns and an aspect ratio not less than 5 (title; abstract; claims), as required by instant claims 2, 3, 7. 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 average diameter is 0.05 to 1.5 microns (claim 2). The particles are hexagonal (claim 3), as required by instant claims 4, 8, 9. The particles are suitable as an additive for cosmetics or paints (paragraph [0026]). Iwakuni exemplifies an embodiment of particles having an average thickness of 0.099 microns, an aspect ratio of 13, and an average primary particle diameter of 1.33 microns. Iwakuni further teaches a method for producing the particles via a hydrothermal synthesis method comprising a mixture of titanium sulfate and phosphoric acid, wherein the molar ratio [P]/[Ti] is 5 to 21 (claims 4, 9).
Iwakuni does not teach the coefficient of variation (as calculated in paragraph [0027] of the instant specification) of the diameter is less than 1 as required by claim 1.
This deficiency is made up for in the teachings of Kimura.
Kimura teaches a cosmetic comprising flake-like particles containing crystals and having a mean volume particle diameter of 0.5 to 100 microns and a variation coefficient of 30% or less and Kimura exemplifies an embodiment of particles having a mean volume particle diameter of 2.17 microns and a variation coefficient of 13.3 (CV of 0.133 as calculated in paragraph [0027] of the instant specification) (title; abstract; claims, in particular 1, 2, 5; paragraphs [0028], [0031]; Table 1). Kimura further teaches a mean thickness of 0.01 to 1 micron and Kimura exemplifies an embodiment of particles having a mean volume particle diameter of 2.17 microns, a variation coefficient of 13.3 (CV of 0.133 as calculated in paragraph [0027] of the instant specification) and a thickness of 0.025 microns (aspect ratio = 2.17/0.025 > 5) (claim 5; Table 1). Kimura further teaches the variation coefficient CV (%) is defined as 100 * ((standard deviation of particle size distribution) / (mean volume particle size) (paragraph [0031]). The flake-like particles of Kimura have a variation coefficient of particle size of 30% or less; when the CV is larger, the content of very fine and very course particles increases, diminishing spreadability and fineness upon finishing (paragraph [0031]).
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 plate-shaped crystalline particles of titanium phosphate of Iwakuni prepared according to the process of Iwakuni to have a variation coefficient of particle size of 30% or less (CV of 0.133 as calculated in paragraph [0027] of the instant specification) as taught by Kimura because when the CV is larger, the content of very fine and very course particles increases, diminishing spreadability and fineness upon finishing.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant at page 6 of the Remarks contends the P/Ti ratio of 5 to 21 of Iwakuni is not 6.9 to 10.8 as newly claimed and appears to argue this narrower range achieves hiding power and slip resistance.
This is not found persuasive because Iwakuni expressly teaches “slipperiness” (e.g., paragraph [0026]) and implicitly teaches hiding powder by virtue of the disclosure of a pigment (e.g., paragraph [0026]). Furthermore, it is not seen where a ratio of 6.9 to 10.8 is disclosed.
Applicant at page 6 contends one would not combine Kimura with Iwakuni.
This is not found persuasive because Kimura is drawn to analogous particles and is merely relied upon to render obvious statistical details of particle populations. Therefore, the rejection over Iwakuni is properly maintained in modified form as necessitated by Applicant’s amendments.
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 1-4 and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-11, 13-16, 18 and 19 of U.S. Patent No. 11,345,596 in view of Iwakuni et al. (WO 2018/180797, published October 4, 2018, as evidenced by US 2020/0377369, IDS references filed March 17, 2023) and Kimura (US 2018/0000702, published January 4, 2018, of record).
The instant claims are drawn to a powder comprising plate-shaped crystal particles of titanium phosphate having an average diameter of 0.7 to 8.0 microns with a coefficient of variation less than 1, wherein the particles are produced from a mixture of titanium sulfate and phosphoric acid in molar ratio [P]/[Ti] of 6.9 to 10.8. The particles may have a thickness of 0.01 to 1.00 micron and an aspect ratio greater than 5, or the particles may be hexagonal.
The conflicting ‘596 patent claims are drawn to titanium phosphate powders comprising plate-shaped crystalline particles having an average thickness of 0.01 to 0.048 microns, an aspect ratio greater than 7, and an average diameter of 0.05 to 0.24, of 0.05 to 0.21 or of 0.05 to 0.19 microns. The particles may be hexagonal.
The instantly claimed particles differ from those of the conflicting patent claims with respect to the average diameter and coefficient of variation thereof as well as the process by which the particles are produced, however, these differences are obvious in view of the prior art to Iwakuni and Kimura. It would have been obvious to modify or/and extend the range of the average diameter of the particles of the conflicting claims within the range of 0.05 to 1.5 microns as taught by Iwakuni because this range is suitable for plate-shaped crystalline particles of titanium phosphate suitable for cosmetics and it would have been obvious to modify or/and extend the range of the average diameter of the particles of the conflicting claims within the range of 0.5 to 100 microns as taught by Kimura because this range is suitable for flake-like particles suitable for cosmetics. It would have been obvious to modify the particles of the conflicting claims in view of Iwakuni or/and Kimura to have a variation coefficient of particle size of 30% or less (CV of 0.133 as calculated in paragraph [0027] of the instant specification) as taught by Kimura because when the CV is larger, the content of very fine and very course particles increases, diminishing spreadability and fineness upon finishing. It would have been obvious to prepare the titanium phosphate particles of the conflicting claims via the process of Iwakuni because this is how such particles may be produced.
Claims 1-4 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over (1) claims 7, 11, 16 and 17of copending Application No. 17/638,494; (2) claims 1-5 of copending Application No. 18/030,867; (3) claim 17 of copending Application No. 18/213,459 and (4) claims 1-3 of copending Application No. 18/279,812 in view of Iwakuni et al. (WO 2018/180797, published October 4, 2018, as evidenced by US 2020/0377369, IDS references filed March 17, 2023) and Kimura (US 2018/0000702, published January 4, 2018, of record).
The most recent claims filed in 18/030,867 do not reflect the amendments introduced April 7, 2023, accordingly, the rejection is made over the most recent claims rather than the claims as amended
The instant claims are drawn to a powder comprising plate-shaped crystal particles of titanium phosphate having a diameter of 0.7 to 8.0 microns with a coefficient of variation less than 1, wherein the particles are produced from a mixture of titanium sulfate and phosphoric acid in a molar ratio [P]/[Ti] of 6.9 to 10.8. The particles may have a thickness of 0.01 to 1.00 micron and an aspect ratio greater than 5, or the particles may be hexagonal.
The copending ‘494 claims are drawn to a powder comprising plate-shaped particles derived from titanium phosphate. The particles may be hexagonal. The particles may have a thickness of 0.01 to 4 microns and an aspect ratio greater than 5.
The copending ‘867 claims are drawn to a filler comprising a powder comprising plate-shaped crystal particles of titanium phosphate. The particles may have a diameter of 0.1 to 7.5, of 0.1 to 3.0 microns and an aspect ratio greater than 5. The particles may be hexagonal.
The copending ‘459 claim is drawn to a titanium phosphate powder exhibiting crystallinity and containing plate-like particles.
The copending ‘812 claims are drawn to a powder comprising crystalline plate-shaped titanium phosphate particles, wherein the particles may have a diameter of 0.52 to 0.87 microns.
The copending claims are collectively drawn to plate-shaped crystal particles of titanium phosphate and differ from the instant claims with respect to the dimensions thereof and with respect to the process by which the particles are produced. However, these differences are obvious in view of the prior art to Iwakuni and Kimura. It would have been obvious to modify the shape and size of the particles of the copending claims to be hexagonal and to have an average diameter within the range of 0.05 to 1.5 microns, to have an average thickness of 0.01 to 0.10 microns and an aspect ratio not less than 5 as taught by Iwakuni because these dimensions are suitable for plate-shaped crystalline particles of titanium phosphate suitable for cosmetics. It would have been obvious to modify the particles of the copending claims in view of Iwakuni to have a variation coefficient of particle size of 30% or less (CV of 0.133 as calculated in paragraph [0027] of the instant specification) as taught by Kimura because when the CV is larger, the content of very fine and very course particles increases, diminishing spreadability and fineness upon finishing. It would have been obvious to prepare the titanium phosphate particles of the copending claims via the process of Iwakuni because this is how such particles may be produced.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4 and 7-9 are directed to an invention not patentably distinct from claims 7, 11, 16 and 17 of commonly assigned 17/638,494 and from claim 17 of commonly assigned 18/213,459. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 17/638,494 and 18/213,459, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments: Double Patenting
Applicant at age 7 of the Remarks submits the reference claims do not render obvious claim 1 as currently amended and requests the rejections be held in abeyance.
This is not found persuasive because the prior art bridges any gaps between the reference claims and the instant claims as reiterated infra.
Applicant is reminded rejections cannot be held in abeyance. 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). A complete response to a nonstatutory double patenting (NDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional in the interest of compact prosecution. MPEP 804 I(B)(1). Therefore, the rejections are properly maintained and made again.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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