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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10, and the species of Bi2WO6-x, wherein x=0.2-1.5, in the reply filed on 1/16/2026 is acknowledged. The traversal is on the ground(s) that Group II and III are methods which encompass Group I. This is not found persuasive because the special technical feature shared amongst the groups lacks unity of invention as the special technical features does not make a contribution over the prior art as explained in the office action mailed 11/20/2025, the restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim.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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they recite use claims.
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 1-10 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.
Claim 1-10 recites use claims and it’s unclear from the claims if they are directed to methods of uses as there are no active, positive steps delimiting how the use is actually practiced or compositions which simply need to be capable of the use recited (i.e. recitations of intended use). For purposes of examination, the claims will be interpreted as methods of using the claimed solid particles to prevent, reduce or eliminate deposits on keratin materials, by contacting the composition comprising the claimed particles with a keratin material.
Regarding claim 1, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 4, the phrases "preferably" and “better still” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 4 and 5 recite “the oxide OM1” this lacks antecedent basis as the claim from which it depends recites “at least one metal oxide OM1” and its unclear clear if “the oxide OM1” is referring to one, more than one or all OM1 oxides.
Claim 6 recites “the oxide OM2” this lacks proper antecedent basis as the claim from which it depends (i.e. claim 1) does not recite OM2. For purposes of examination, claim 6 will be interpreted as depending from claim 5.
Regarding claim 7, the phrases "preferably," “more preferentially,” “even more preferentially” and “better still” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 7 recites “the amounts of metal oxide OM1” this lacks antecedent basis as the claim from which it depends recites “at least one metal oxide OM1” and its unclear clear if the amounts of metal oxide is referring to one, more than one or all OM1 oxide amounts.
Regarding claim 9, the phrases "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrases "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-3, 8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Landa (WO2016/151537).
Regarding claims 1-3: Landa teaches a method of protecting hair or skin (i.e. keratin materials) from UV radiation by applying a UV composition comprising Bismuth Vanadate (BiVO4), wherein the Bismuth vanadate is in the form of nanoparticles (i.e. solid particles) (Landa – claims 2 and 33-35).
Bismuth Vanadate (BiVO4) reads on the claimed OM1 wherein A is bismuth, a = 1, B = vanadium, b = 1 and n-x = 4 (which reads on n in the range of 3-6, wherein x is less than n and within the range of 0.1-5).
Regarding claims 1 and 10:These claims recites “preventing…deposits of organic compounds,” and “preventing…body,” the prior art anticipates the performance of the claimed steps with the claimed composition (i.e. application of the OM1 as claimed to keratin materials), the composition is inherently capable of performing the claimed use.
Regarding claim 8: While the prior art is silent to the manner in which the particles of bismuth vanadate are made, the claims simply requires that the particles be “capable of being obtained by flame spray pyrolysis” as the prior art anticipates the claimed OM1 particles, the particles of the prior art are expected to be capable of being obtained by spray flame pyrolysis.
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) 1-3 and 5-10 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Landa (WO2016/151537) and Ferrari (US 2004/0170586), as evidenced by ChemSpider (Copper Oxide) and ThermoFischer (BiVO4).
Regarding claims 1-3: Landa teaches a method of protecting hair or skin (i.e. keratin materials) from UV radiation by applying a UV composition comprising Bismuth Vanadate (BiVO4), wherein the Bismuth vanadate is in the form of nanoparticles (i.e. solid particles) (Landa – claims 2 and 33-35).
Bismuth Vanadate (BiVO4) reads on the claimed OM1 wherein A is bismuth, a = 1, B = vanadium, b = 1 and n-x = 4 (which reads on n in the range of 3-6, wherein x is less than n and within the range of 0.1-5).
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 keratin materials), 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 vanadate 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: Landa teaches that the majority of the particles in suspension has a diameter in the range of 10nm to 100nm, as seem in the figure close to 100% of the particles are within 10-100nm. as such the average particle diameter would be expected to fall within the claimed range. Furthermore, 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.
However, Landa does not teach the inclusion of a 2nd metal oxide, in particular, copper oxide as recited by instant claims 5-6.
Ferrari discloses cosmetic compositions and teaches that sunscreen agents such as cupric oxide (i.e. CuO and OM2) nanoparticles can be included to provide a sun protection benefit by diffracting the UV light [0561]. These sunscreen agents can be included in amounts ranging from 0.2-15% [0617].
It would have been prima facie obvious to a person or ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Landa with those of Ferrari. One of skill would have been motivated to add 0.2-10% of a sunscreen agent such as cupric oxide as Ferrari teaches that this agent provides a sun protection benefit by diffracting the UV light and Landa teaches that additional UV absorbing agents can be added in amounts of up to 10% (pg. 18).
Regarding claim 7: Landa teaches that the bismuth vanadate can be used in amounts of 0.5, 1.0 and 2% (pg. 28 and Fig. 5B), thus the molar ratio of OM1 : OM2 can be calculated using 2g BiVO4 (Mw = 323, equals .0062moles) and 0.2-10g CuO (Mw = 79.545, equals .0025-.125 moles) to be .05-2.48 which overlaps with the claimed greater than 1.
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 1-4: Bismuth tungsten oxide (BiWO6), 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 (BiWO6) 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 keratin materials), 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 vanadate 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.
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
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