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 .
Priority
The instant application was filed 16 August 2023 and is the national stage entry of PCT/US22/16553 filed 16 February 2022. The Applicant claims priority to provisional application 63/150,386 filed 17 February 2021. Therefore, the effective filing date of the instant application is 17 February 2021.
Examiner’s Note
The Applicant's amendments and arguments filed 17 August 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous Office Actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 17 August 2026, it is noted that claims 1, 2, 7, 19, 22, 27, and 33 have been amended, claims 17, 20, 32, 39, and 40 have been canceled, and no new claims have been added. Support for the amendment can be found from the canceled claims. No new matter has been added.
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.
Claim(s) 1, 2, 7, 19, 22, 23, 27, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (DE 102007024377 A1; machine translation cited) in view of Janani et al. (Selectivity and sensitivity of molybdenum oxide-polycaprolactone nanofiber composites on skin cancer: Preliminary in-vitro and in-vivo implications, Journal of Trace Elements in Medicine and Biology, 2018) and Peng et al. (WO 2006/005595 A2).
Regarding claim 1, Banowski teaches an antiseptic cosmetic cleansing composition or care product with photoactivated metal oxide particles (abs, entire teaching) in an amount of 0.01-20% (pg. 2, bottom page). The composition may be a watery product (pg. 3, para. 2). The metal oxide particles may have a particle size in the range from 2-600 nm (claim 5).
Regarding claim 2, Banowski teaches an antiseptic cosmetic cleansing composition with a photoactivated metal oxide (abs; entire teaching) particles in an amount of 0.01-20% (pg. 2, bottom page).
Regarding claim 7, the amount of metal oxide particles may be 0.01-20% (pg. 2, bottom page) or 0.001-5% (pg. 3, para. 3).
Regarding claim 19, the composition may comprise both titanium and zinc oxide particles (pg. 3, para. 1).
Regarding claims 23 and 27, the pH of the composition may range from 2.5-11 (pg. 28, last paragraph).
Banowski does not teach Molybdenum as the active compound or a particle size ranging in 1-100 micrometers in claims 1 and 33. Banowski does not teach an orthorhombic shape of metal oxide particles in claims 1 and 22.
Janani teaches molybdenum trioxide nanoparticles for use as antimicrobial agents (pg. 61, introduction). Molybdenum trioxide nanoparticles are less toxic and have a wide range of therapeutic applications (pg. 61, introduction). The nanofibers with molybdenum nanoparticles (dispersed in deionized water, pg. 61, 2.2) may be used to target skin cancer and applied topically (abs). The molybdenum trioxide nanoparticles are orthorhombic in shape and crystalline (pgs. 65-66). The molybdenum trioxide nanoparticles may have an average size of 150 nm.
Peng teaches a skin cosmetic composition comprising molybdenum oxides (pg. 4) with particle sizes of 5-40 micrometers (pg. 1). The powders can be incorporated into liquid formulations (pg. 7). Peng teaches that these sized pigments exhibit a sparkling effect compared to other sizes of pigments (pg. 7).
Since Banowski does not specifically teach Molybdenum as the activated metal and an orthorhombic and crystal structure/shape in claims 1 and 22, one of ordinary skill in the art would have been motivated to use Janani’s teaching of molybdenum trioxide nanoparticles for use on the skin with a reasonable expectation of success. Janani teaches molybdenum trioxide nanoparticles as an antimicrobial agent that may be applied topically to target skin cancer. A skilled artisan would have recognized the benefit of combining the teachings of Janani and Banowski to improve Banowski’s skin composition comprising activated metal oxide particles. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Regarding the particle size of 1-100 micrometers or 10-85 micrometers for the activated metal or transition metal oxide in claims 1 and 33, Peng teaches a skin cosmetic composition comprising molybdenum oxides (pg. 4) with particle sizes of 5-40 micrometers (pg. 1). The powders can be incorporated into liquid formulations (pg. 7). Banowski’s composition may include pigments and dyes (pg. 27, bottom page) and Peng teaches that these sized pigments exhibit a sparkling effect compared to other sizes of pigments (pg. 7). Therefore, a person of ordinary skill in the art would have been motivated to combine and use Peng’s particle size range teaching to improve Banowski’s skin care composition with Janani’s teaching of molybdenum trioxide nanoparticles with a reasonable expectation of success. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
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, 2, 19, 22, and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-6 of U.S. Patent No. 12201115. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference patent recites an antipathogenic solid composition comprising 0.01-5% of a metal oxide (molybdenum) with a polymer, orthorhombic in shape, and a particle size of larger than 100 nm and smaller than 100 microns, which corresponds to instant claims 1, 2, 19, 22, and 33. In the reference patent, the composition itself is liquid (abs), but the solid composition is from the polymer surface. It would have been obvious to a skilled artisan to apply the liquid composition from the instant claims to a polymeric surface, such as for wound treatment (col. 4, lns. 43-53). Claim 2 of the reference patent recites molybdenum as the metal oxide, corresponds to instant claim 19. Claim 4 of the reference patent recites a particle size of 1-1000 nm, which corresponds to instant claim 1. Claim 5 of the reference patent recites a particle size of 40-50 microns, corresponding to instant claim 33. Claim 6 of the reference patent recites a metal oxide selected from several different metals, corresponding to instant claim 19.
Response to Arguments
Applicant's arguments filed 17 August 2026 have been fully considered but they are not persuasive.
The Applicant argues that Banowski does not teach or suggest liquid compositions that comprise metal oxides, such as those comprising Molybdenum (Remarks, pg. 8). The Applicant further argues that Janani is directed to solid molybdenum trioxide-polycaprolactone nanofiber scaffolds for targeted skin cancer therapy (Remarks, pg. 8).
Applicant’s argument is not found persuasive. Janani teaches molybdenum trioxide nanoparticles for use as antimicrobial agents (pg. 61, introduction). Molybdenum trioxide nanoparticles are less toxic and have a wide range of therapeutic applications (pg. 61, introduction). The nanofibers with molybdenum nanoparticles (dispersed in deionized water, pg. 61, 2.2) may be used to target skin cancer and applied topically (abs). Molybdenum used in therapeutic applications and applied topically to the skin (dispersed in a solution of deionized water) is interpreted as falling within the scope of a skin care composition, which is also taught in Banowski (abs).
The Applicant argues that the two references address different problems and there is no teaching, suggestion, or motivation for a POSITA to combine the teachings (Remarks, pg. 8).
Applicant’s argument is not found persuasive. Since Banowski does not specifically teach Molybdenum as the activated metal and an orthorhombic and crystal structure/shape in claims 1 and 22, one of ordinary skill in the art would have been motivated to use Janani’s teaching of molybdenum trioxide nanoparticles for use on the skin with a reasonable expectation of success. Janani teaches molybdenum trioxide nanoparticles as an antimicrobial agent that may be applied topically to target skin cancer. A skilled artisan would have recognized the benefit of combining the teachings of Janani and Banowski to improve Banowski’s skin composition comprising activated metal oxide particles. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Response to Double Patenting Arguments
Applicant's arguments filed 17 August 2026 have been fully considered but they are not persuasive.
The Applicant argues that reference patent ‘115 teaches solid compositions and there is no motivation to prepare liquid compositions, as recited in the instant claims (Remarks, pgs. 8-9).
Applicant’s argument is not found persuasive. In the reference patent, the anti-pathogenic composition itself is liquid (abs), but the solid composition is from the polymer surface. It would have been obvious to a skilled artisan to apply the liquid composition from the instant claims to a polymeric surface, such as for wound treatment (col. 4, lns. 43-53).
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 Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
