DETAILED ACTION
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 .
This office action is in response to the reply filed 7/15/2026.
Election/Restrictions
Claims 11-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/16/2026.
Response to Arguments
All of Applicant’s argument filed 7/15/2026 have been fully considered.
In view of the amendments to the claims all rejections over Landa have been withdrawn.
With respect to the 103 rejections, Applicant argues that the instant specification provides evidence that the claimed particles provide much more efficient removal of sebum deposits that the particles made with Bi2WO6 and argues that O’Neill does not teach the specifically claimed suboxide.
This is not persuasive as the data presented lacks a nexus with the invention claimed. The data is directed to a composition combined with natural light irradiation and all examples tested are directly applied to a surface (hair or a test plate) comprising sebum. As described in the rejection below, While the Bismuth tungsten oxide (Bi2WO6) doesn’t fall within the claimed structure of OM1 BiWO6 and BiWO5.8 are sufficiently close in structure that similar properties between the two are expected as such it would have been prima facie obvious to make and use the claimed OM1 with a reasonable expectation of success absent factual, commensurate in scope, evidence to the contrary. Applicant should consider amending the claim to require the composition to be applied directly to sebum and subject the contacted surface to light irradiation.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “with said the surface”, the claim should be amended to recite “with the surface”.
Claim 1 recites “with a a decimal”, the claim should be amended to recite “wherein x is a decimal”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 4-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recites “at the surface of keratin materials, or at the surface of objects in contact with said keratin materials”, wherein the second alternative allows for particles being coated on surfaces that do not provide direct contact with keratin materials. The claim additionally recites the active step of “contacted with the surface of said keratin material”, it is unclear if the contacting step refers only to the surface of said keratin material, or if the contacting step includes the surface of said object, and if the surface of said object requires direct contact with the keratin material.
The recitation of “said material” with respect to “contacted with the surface of said keratin material” lacks antecedent basis as it unclear if the material being referring back to is the keratin material or the surface of the keratin material.
Claims 4-10 are rejected in view of their dependency on claim 1 as they do not cure its deficiencies and this are deficient for the same reasons.
Maintained Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1, 4 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Neill (US 2015/0272702).
O’Neill disclose implements for making radiopaque markings, and methods of making and using the same. The marking implements comprise a marking element formed of a composition comprising a carrier and a plurality of radiopaque particles dispersed in the carrier. The composition is a thixotropic solid that maintains its shape at ambient temperatures but is deposited (i.e. applied) on skin at thicknesses between about 0.1 mm and about 1.5 mm. Suitable radiopaque particles which are solid may be made from bismuth tungsten oxide, these have average diameters ranging from 90-210nm which is large enough to keep the particles from entering the pores of the skin [0005-0006 and 0043]. The composition can further comprise a marking element that allows for both visual and radiographic marking of patients and objects for use on all areas where flexible radiopaque and visible marking is beneficial [0041]. The marking elements can be a coloring agent that provides visual contrast [0044].
Regarding claims 1 and 4: Bismuth tungsten oxide (Bi2WO6), reads on the elected A=Bi, a=2, B=W and b=1, however Bismuth tungsten oxide has an n-x of 6 while the elected species requires an n-x of 4.5-5.8. While the Bismuth tungsten oxide (Bi2WO6) doesn’t fall within the claimed structure of OM1 BiWO6 and BiWO5.8 are sufficiently close in structure that similar properties between the two are expected as such it would have been prima facie obvious to make and use the claimed OM1 with a reasonable expectation of success absent factual, commensurate in scope, evidence to the contrary.
Regarding claims 1 and 10: These claims recites “preventing…deposits of organic compounds,” and “preventing…body,” the prior art makes obvious the performance of the claimed steps with the claimed composition (i.e. application of the OM1 as claimed to the surface of keratin materials, i.e. skin), the composition is expected to be capable of performing the claimed use.
Regarding claim 8: While the prior art is silent to the manner in which the particles of Bismuth tungsten oxide are made, the claims simply requires that the particles be “capable of being obtained by flame spray pyrolysis” as the prior art makes obvious the claimed OM1 particles, the particles of the prior art are expected to be capable of being obtained by spray flame pyrolysis.
Regarding claim 9: O’Neill teaches the average diameters of the radiopaque material to ranging from 90-210nm, while O’Neill doesn’t teach a number-average diameter the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
