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 .
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”.
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) 1-4 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada (US 2012/0219608) as evidenced by JP2006096971. Yamada is cited on the 11/12/2025 IDS.
Yamada discloses an emulsified cosmetic composition having an excellent UV protective effect comprising a surface treated zinc oxide (ZnO) powder having an average aspect ratio of 3 or more (Abs).
Yamada teaches the cosmetic to comprise a flaky powder of ZnO preferably having an aspect ratio of 5 or more (reading on high aspect ratio ZnO of 4 or more) [0025 and 0028]. Yamada teaches the cosmetic to preferably comprise a ZnO powder (B) (i.e. fine particle ZnO powder) in order to obtain excellent long term stability and excellent feeling upon application [0041]. This fine particle ZnO powder preferably has an aspect ratio of less than 3 (reading on low aspect ratio ZnO of less than 4) [0043].
Yamada defines aspect ratio to be obtained by (the average particle diameter)/(the average particle thickness) and the resulting value rounded to the nearest integer [0025].
Working example 2 discloses an emulsified composition comprising:
-10% alkylsilane treated flaky zinc powder of production example 2 which has an aspect ratio of 13;
-5% alkylsilane treated fine particle ZnO of production example 4;
-sorbitan monoisostearate, etc.
Working example 3 discloses an emulsified composition comprising:
-10% alkylsilane treated flaky zinc powder of production example 2 which has an aspect ratio of 13;
-5% silicone treated fine particle ZnO of production example 5;
-sorbitan monoisostearate, etc.
Regarding claim 1: Working examples 2 and 3 teach a flaky ZnO with an aspect ratio of 13, reading on the claimed high aspect ratio ZnO. The fine particle ZnO used is taught to be substantially spherical (i.e. the thickness and diameter are substantially the same) and Yamada teaches that the fine particle ZnO preferably has an aspect ratio of less than 3, more preferably less than 1.5 [0043]. The Example above comprises the flaky ZnO in amounts of 66.67% with respect to the total amounts of ZnO.
Regarding claims 2-3: The fine particle ZnO of production example 4 is surface treated with octyltriethoxysilane.
Regarding claim 4: The fine particle ZnO of production example 5 has an average particle diameter of 0.02 µm which falls within the claimed range of 20-60nm (i.e. .02-0.06 µm).
Regarding claim 7: Working examples 2 and 3 teach the inclusion of sorbitan monoisostearate, which is a dispersant as evidenced by JP’971 (pg. 10).
Regarding claim 8: Yamada teaches working examples 2 and 3 to be W/O emulsions [0081].
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2012/0219608) as evidenced by JP2006096971 and Nonomura (2017).
Yamada discloses an emulsified cosmetic composition having an excellent UV protective effect comprising a surface treated zinc oxide (ZnO) powder having an average aspect ratio of 3 or more (Abs).
Regarding claim 1: Yamada teaches the cosmetic to comprise a flaky powder of ZnO preferably having an aspect ratio of 5 or more (reading on high aspect ratio ZnO of 4 or more) [0025 and 0028]. Yamada teaches the cosmetic to preferably comprise a ZnO powder (B) (i.e. fine particle ZnO powder) in order to obtain excellent long term stability and excellent feeling upon application [0041]. This fine particle ZnO powder preferably has an aspect ratio of less than 3 (reading on low aspect ratio ZnO of less than 4) [0043]. Both powders are taught to be used in a combined amount of 1-30% by weight of the cosmetic wherein the blending ratio (weight ratio) of the flaky powder to the fine particle powder is 3/5 to 5/2, which overlaps with the claimed ratio as a weight ratio of A/B of 3/5 to 5/2 results in the flaky powder making up 60% to approx. 72% of the total ZnO. Working examples 2-6 and 8 teaches the flaky powder to make up 33.33% to 66.67%.
Regarding claims 2 and 3: Yamada teaches the fine particle ZnO to preferably be treated with a silane [0044]. Working examples 2 and 4-5 teaches the fine particle ZnO to be surface treated with octyltriethoxysilane.
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) [0042].
Regarding claim 6: Yamada teaches the high aspect ratio ZnO 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 [0026-0027]. As evidenced by Nonomura, ZnO has a crystalline structure.
Regarding claim 7: Working examples 2-6 and 8 teach the inclusion of sorbitan monoisostearate, which is a dispersant as evidenced by JP’971 (pg. 10).
Regarding claim 8: Yamada teaches the emulsified cosmetic can be W/O or O/W emulsions [0070].
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2012/0219608) and Sueda (EP 2703352), as evidenced by JP2006096971.
Yamada discloses an emulsified cosmetic composition having an excellent UV protective effect comprising a surface treated zinc oxide (ZnO) powder having an average aspect ratio of 3 or more (Abs).
Regarding claim 1: Yamada teaches the cosmetic to comprise a flaky powder of ZnO preferably having an aspect ratio of 5 or more (reading on high aspect ratio ZnO of 4 or more) [0025 and 0028]. Yamada teaches the cosmetic to preferably comprise a ZnO powder (B) (i.e. fine particle ZnO powder) in order to obtain excellent long term stability and excellent feeling upon application [0041]. This fine particle ZnO powder preferably has an aspect ratio of less than 3 (reading on low aspect ratio ZnO of less than 4) [0043]. Both powders are taught to be used in a combined amounts of 1-30% by weight of the cosmetic wherein the blending ratio (weight ratio) of the flaky powder to the fine particle powder is 3/5 to 5/2, which overlaps with the claimed ratio as a weight ratio of A/B of 3/5 to 5/2 results in the flaky powder making up 60% to approx. 72% of the total ZnO. Working examples 2-6 and 8 teaches the flaky powder to make up 33.33% to 66.67%.
Regarding claims 2 and 3: Yamada teaches the fine particle ZnO to preferably be treated with a silane [0044]. Working examples 2 and 4-5 teaches the fine particle ZnO to be surface treated with octyltriethoxysilane.
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) [0042].
Regarding claim 7: Working examples 2-6 and 8 teach the inclusion of sorbitan monoisostearate, which is a dispersant as evidenced by JP’971 (pg. 10).
Regarding claim 8: Yamada teaches the emulsified cosmetic can be W/O or O/W emulsions [0070].
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.
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.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613