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 5/13/2026.
Claim Interpretation
The instant claims are directed to a low aspect ratio zinc oxide (Zn). The claim further states that the low aspect ratio Zn has an average aspect ratio of less than 4. For purposes of examination, any zinc oxide having an average aspect ratio of less than 4 will be deemed to read on the claimed “low aspect ratio Zn”.
The instant claims are directed to a high aspect ratio zinc oxide (Zn). The claim further states that the high aspect ratio Zn has an average aspect ratio of 4 or more. For purposes of examination, any zinc oxide having an average aspect ratio of 4 or more will be deemed to read on the claimed “low aspect ratio Zn”.
Response to Arguments
All of Applicant’s arguments filed 5/13/2026 have been fully considered.
The amendments to the claim were sufficient to overcome the rejections presented in the office action mailed 2/13/2026 over Yamada (US 2012/0219608). New rejections are presented below which address the claims as newly amended.
Applicant remarks regarding the unexpected effects of the claimed invention and the data in table 1 is not persuasive as the data presented is not commensurate in scope with the instant claims. Applicant have tested a single low aspect ratio zinc oxide A which is treated with octyltriethoxysilane, but claim does not require a hydrophobic surface treatment and octyltriethoxysilane is not representative of all the surface treatment options available. Furthermore, no indication is given as what aspect ratio the low aspect ratio zinc oxide A tested had. The data presented only tested a high aspect ratio of 10-12.5, but ratio as low as 4 is claimed and there is no indication that all values of high and low aspect ratio when combined as claimed would have this effect. The examiner would also like to note that while Applicant has shown a difference when using non-hydrophobized vs hydrophobized high aspect zinc oxide, but Applicant has not established what would have been expected by a skilled artisan, any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. It is also noted that in the rejection below, Yamada discusses combining high and low aspect ratio zinc oxide, wherein the high aspect ratio isn’t hydrophobized (i.e. not subjected to a silane surface treatment).
Claim Rejections - 35 USC § 112
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.
Claim 10 is 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 10 recites “0.77 or less” there is insufficient support in the originally filed disclosure to support this range. The specification discloses the amounts of 0.77 and 0.60, these two data points do not support “0.77 or less” which embraces amounts that were not contemplated such as 0.40.
New Claim Rejections - 35 USC § 103
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 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) 1-5 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2012/0251603) as evidenced by Shao (US 2011/0150792) and Nonomura (2017). Yamada and Shao are newly cited.
Yamada discloses an oil-in-water emulsified cosmetic composition having a high UV protective effect comprising a zinc oxide (ZnO) powder (A) having an average aspect ratio of 3 or more (Abs).
Yamada teaches the ZnO powder (A) to be a flaky powder [0014] having an aspect ratio of preferably 5 or more [0018]. Yamada teaches that the ZnO powder (A) can be subjected to a surface treatment [0038] and claim 1 of Yamada does not require surface treatment, this suggests that a surface treatment is optional and not required. Production Example 1 teaches a ZnO powder (A) having an aspect ratio of 13 which is not subjected to a surface treatment [0069], this is used in working example 3. The ZnO powder (A) is used in the cosmetic in amounts ranging from 1-18% [0022]. This reads on a non-hydrophobized zinc oxide.
Yamada further teaches the cosmetic to comprise a fine particle metal oxide powder (C), such as zinc oxide [0034], this fine particle ZnO powder preferably has an aspect ratio of less than 2 (reading on low aspect ratio ZnO of less than 4) [0035]. This powder (C) is used in the cosmetic in amounts ranging from 1-18% [0037]. Powder (C) of Yamada reads on the claimed low aspect ratio powder.
Both powders are taught to be used in a combined amount of 1-35% by weight of the cosmetic wherein the blending ratio (weight ratio) of the flaky powder (A) to the fine particle powder (C) is 1/5 to 10/1 [0049], this provides a ratio of A/C of 0.2-10. The claims require a 10-30 mass% of high aspect powder with respect to the total ZnO powdered (A+C). A ratio of high aspect ratio powder (A) to total powder amounts as claimed was calculated to be .1 to 0.3 (High aspect ratio = 10-30% of 100%(i.e. the combination of A+C); A/C= ((10-30)/(100)) = .1-.3), this overlaps with the (A)/(C) ratio of Yamada and overlapping ranges are prima facie obvious.
Yamada teaches the ZnO powder (A) to have a flaky structure and teaches that diameter to range from 0.1-1µm and a thickness of 0.01-0.2 µm which results in a particle that is more wide and it is thick, which reads on plate-like [0016-0017]. As evidenced by Nonomura, ZnO has a crystalline structure.
Regarding claims 2-3 and 9: Yamada teaches the fine particle ZnO to preferably be treated with a silane [0038]. Working examples 9 and 11-12 teaches the fine particle ZnO to be surface treated with octyltriethoxysilane [0072], which reads on hydrophobic zinc oxide.
Regarding claims 4 and 5: Yamada teaches the fine particle ZnO to have an average particle diameter of 0.015 to 0.1µm which overlaps with the claimed 20-60nm (i.e. .02-0.06 µm) and 30-55nm (i.e. .03-.055 µm) [0036].
Regarding claim 7: Yamada teaches a suitable polymer (B) can be sodium polyacrylate [0023], as evidenced by Shao this is a dispersant (Shao – claim 10).
Regarding claim 8: Yamada teaches the emulsified cosmetic can be O/W emulsions (Abs).
Regarding claim 10: This claim recites a property of the claimed composition. As discussed above, the prior art makes obvious the claimed compositions structure as such the composition claimed and the composition of the prior art are expected to have the same properties absent evidence to the contrary.
Claim(s) 1-5 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2012/0251603) and Sueda (EP 2703352), as evidenced by Shao (US 2011/0150792).
Yamada discloses an oil-in-water emulsified cosmetic composition having a high UV protective effect comprising a zinc oxide (ZnO) powder (A) having an average aspect ratio of 3 or more (Abs).
Yamada teaches that the ZnO powder (A) to be a flaky powder [0014] having an aspect ratio of preferably 5 or more [0018]. Yamada teaches that the ZnO powder (A) can be subjected to a surface treatment [0038] and claim 1 of Yamada does not require surface treatment, this suggests that a surface treatment is optional and not required. Production Example 1 teaches a ZnO powder (A) having an aspect ratio of 13 which is not subjected to a surface treatment [0069], this is used in working example 3. The ZnO powder (A) is used in the cosmetic in amounts ranging from 1-18% [0022]. This reads on a non-hydrophobized zinc oxide.
Yamada further teaches the cosmetic to comprise a fine particle metal oxide powder (C), such as zinc oxide [0034], this fine particle ZnO powder preferably has an aspect ratio of less than 2 (reading on low aspect ratio ZnO of less than 4) [0035]. This powder (C) is used in the cosmetic in amounts ranging from 1-18% [0037]. Powder (C) of Yamada reads on the claimed low aspect ratio powder.
Both powders are taught to be used in a combined amount of 1-35% by weight of the cosmetic wherein the blending ratio (weight ratio) of the flaky powder to the fine particle powder is 1/5 to 10/1 [0049], this provides a ratio of A/C of 0.2-10. The claims require a 10-30 mass% of the total ZnO powdered being the high aspect ratio powder. A ratio of high aspect ratio powder (A) to low aspect ratio powder (C) as claimed was calculated to be .11-.42 (High aspect ratio = 10-30% as such low aspect ratio makes up 70-90% of the combination of A+C; A/C= ((10-30)/(70-90)) = .11-.42), this overlaps with the (A)/(C) ratio of Yamada and overlapping ranges are prima facie obvious.
Yamada teaches the ZnO powder (A) to have a flaky structure and teaches that diameter to range from 0.1-1µm and a thickness of 0.01-0.2 µm which results in a particle that is more wide and it is thick, which reads on plate-like [0016-0017].
Regarding claims 2-3 and 9: Yamada teaches the fine particle ZnO to preferably be treated with a silane [0038]. Working examples 9 and 11-12 teaches the fine particle ZnO to be surface treated with octyltriethoxysilane [0072], which reds on hydrophobic zinc oxide.
Regarding claims 4 and 5: Yamada teaches the fine particle ZnO to have an average particle diameter of 0.015 to 0.1µm which overlaps with the claimed 20-60nm (i.e. .02-0.06 µm) and 30-55nm (i.e. .03-.055 µm) [0036].
Regarding claim 7: Yamada teaches a suitable polymer (B) can be sodium polyacrylate [0023], as evidenced by Shao this is a dispersant (Shao – claim 10).
Regarding claim 8: Yamada teaches the emulsified cosmetic can be O/W emulsions (Abs).
Yamada teaches a flaky structure, but does not explicitly state that the structure is plate-shaped.
Sueda discloses hexagonal-plate shaped ZnO particles having aspect ratio of 2.5 or more, preferably 3 or more (Abs and [0030]) and teaches that ZnO is crystalline [0026]. Sueda teaches that the hexagonal-plate shaped ZnO particles can be used as cosmetic raw material and provides excellent comfort in use and UV blocking performance when compounded in a cosmetic [0021]. The hexagonal-plate shaped ZnO particles have a particle diameter of 0.3 µm or more and have high light scattering efficiency leading to high soft focus when applied to the skin [0024]. These particles can be further surface treated with organic silicone compounds including silanes [0055-0057].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Yamada with those of Sueda. One of skill in the art would have been motivated to formulate the flaky ZnO of Yamada to have a hexagonal plate shape crystal structure as taught by Sueda as Sueda teaches that this shape provides excellent properties such as UV blocking performance, high light scattering efficiency etc. One of skill in the art would have a reasonable expectation of success as both Sueda and Yamada teach the use of ZnO particles in cosmetics having aspect ratios of greater than 3 having overlapping average particle diameters wherein the ZnO can be surface treated with silanes.
Regarding claim 10: This claim recites a property of the claimed composition. As discussed above, the prior art makes obvious the claimed compositions structure as such the composition claimed and the composition of the prior art are expected to have the same properties absent evidence to the contrary.
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.
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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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