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 of Group I in the reply filed on 10/09/2025 is acknowledged. Because applicant did not distinctly and specifically point out any errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/09/2025.
Claims 1-6 and 8-10 are under current examination.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, the independent claim, lacks the article “A” at the beginning of the claim. See MPEP 608.01(n)(IV). Amending the claim to recite “A plurality of surface-modified zinc oxide particles …” would obviate the objection.
There is a series of three dots following the chemical structure in claim 1, line 7. As the dots do not appear to further limit the structure, the examiner recommends deleting them.
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 1-6 and 8-10 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 recites “…wherein a color difference…” in line 3. This renders the claim indefinite because the claim does not identify what substance exhibits the difference in color. In the interest of compact prosecution, the claim is interpreted to limit the difference in color between the claimed surface-modified zinc oxide particles before and after irradiation with simulated sunlight.
Claim 1 recites “or a phenyl group having 1 to 18 carbons” in line 8. This renders the claim indefinite because the phrase is internally contradictory. A phenyl group necessarily has 6 carbons. In the interest of compact prosecution, the limitation on number of carbons is interpreted to limit the alkyl or fluoroalkyl group. Appropriate correction or clarification is required.
Each of claims 2-5, recite "...a total light transmittance..." in line 2. This language renders the claim indefinite because it suggests that there could be greater than one total light transmittance raising the question of whether the entire amount of light transmittance is included in calculating the total. Amending the claim to recite "the total light transmittance" would obviate the rejection. This will not raise concerns over antecedent basis because this is an inherent characteristic of the claimed particles.
Claim 5 recites the limitation "the environment" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 6, lines 2 and 3 recite "...a content of the surface treatment agent..." and “… a total of the surface treatment agent and the zinc oxide particles…”. This language renders the claim indefinite because it suggests that there could be greater than one total content of each of these substances, raising the question of whether the entire amount of each substance is included in calculating the percentage. Amending the claim to recite "the content" in both instances would obviate the rejection. This will not raise concerns over antecedent basis because the percentage of surface treatment agent relative to the total mass of the surface treatment agent and the zinc oxide particles is an inherent characteristic of the particles.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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.
Claims 1 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Domichi et al. (JPH11193354; publication date: 07/21/1999; cited in the IDS filed 11/01/2024; citing the English human translation).
With regard to claim 1, Domichi discloses zinc oxide particles that have been coated with hydrolyzed methyltrimethoxysilane (example 2 on page 4). The methyltrimethoxysilane is a hydrolyzable surface treatment agent that falls within the scope of instant general formula 1 wherein R1 is an alkyl group having 1 carbon and R2 is an alkyl group having 1 carbon. In example 6 on page 4, the particles of example 2 are incorporated into a paint having red dye and exhibit a DE after exposure to sunlight of 0.36 (see page 5 of the original Japanese application, where the table reports DE for example 6). Although Domichi’s experiment measures DE after exposure to actual sunlight, the examiner considers the particles to possess the feature “wherein a color difference DE before and after irradiation with simulated sunlight is 4.0 or lower” for two reasons: Firstly, the effect of actual sunlight would be similar to simulated sunlight and the value reported by Domichi is well below the requisite value of 4.0. Secondly, no particular duration of exposure to simulated sunlight is required by the claims. As such, the claim reads on particles in which there is little to no difference in color because the duration of exposure to light was insufficient to cause a color difference above 4.0.
With regard to claims 8-10, Domichi discloses a dispersion in castor oil (example 4, page 4), a powder foundation containing the silica coated zinc oxide of example 2 (example 12, page 5), and an oil in water emulsion type foundation comprising the silica-coated zinc oxide of example 2 (example 14, page 5). Instant claim 10 is considered to be a product by process claim in the sense that the language requires “the dispersion liquid according to claim 8” to have been combined with “a cosmetic base raw material”. As the final products in the example contains both the coated zinc oxide particles and substances that fall within the scope of “cosmetic base”, the examples meet all the limitations of the language recited in instant claim 10.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Drovetskaya et al. (US 2015/0147362; publication date: 05/28/2015).
With regard to claim 1, Drovetskaya discloses zinc oxide particles that have been reacted with (i.e. surface-modified with) triethoxyoctyl silane monomer (i.e. a hydrolysable surface treatment agent that is a silane coupling agent having an alkoxy group, falling within the scope of formula 1 as recited in instant claim 1 wherein R1 is an alkyl group having 8 carbon atoms and R2 is an alkyl group having 2 carbon atoms).
Drovetskaya does not disclose a color difference before and after irradiation with simulated sunlight, as required by instant claim 1.
This property is considered inherent under 35 USC 102 because the zinc oxide particles are coated wit 1% of the triethoxyoctyl silane monomer per total weight of the particles, and this is the same substance as employed to coat the zinc oxide particles instantly claimed (referred to in the instant specification as octyltriethoxysilane, CAS Registry No. 2943-75-1). The instant specification indicates that particles of example 3 exhibit a color difference, DE, of 1.8, which is well below the requisite value of 4.0 (see table 1 from the instant specification, which describes example 3 as having a 97:3 weight ratio of zinc oxide particle to OTS (octyltriethoxysilane) and a DE, of 1.8) and particles coated with up to 10% OTS exhibit a comparable value for color difference (see examples 1, 2, and 4). Absent evidence to the contrary, the examiner considers the color difference value to reflect the identity of the coating agent since examples having different amounts of coating show very similar color differences.
In the alternative, it would have been prima facie obvious to generate particles having the DE below 4.0 because such was within the broader scope of Drovestkaya’s invention. Drovetskaya discloses particles having from 0.01 to 5% by weight of the trialkoxyalkyl silane coating, or more specifically the triethoxyoctyl silane monomer coating (0045 and 0046). This range in percent coating overlaps with ranges established by the instant specification to provide the claimed color difference. As noted above, the instant specification establishes particles coated with 3% by weight of octyltriethoxysilane (i.e. triethoxyoctyl silane) have a color difference of 1.8. Thus, in practicing the full scope of Drovetskaya, one having ordinary skill in the art would have formed zinc oxide particles exhibiting the claimed color difference. See MPEP 2144.05 and 2112.
With regard to claim 8, Drovetskaya discloses a dispersion of zinc oxide particles in the cosmetic base caprylic capric triglyceride (0128).
With regard to claims 9 and 10, the dispersion noted above is incorporated into example cosmetic formulations, e.g. Example 2 detailed in the table following para 0129 contains the zinc oxide particles that have been coated with triethoxycaprylylsilane, i.e. octyltriethoxysilane. Instant claim 10 is considered to be a product by process claim in the sense that the language requires “the dispersion liquid according to claim 8” to have been combined with “a cosmetic base raw material”. As the final products in the examples contain both the coated zinc oxide particles and substances that fall within the scope of “cosmetic base”, the examples meet all the limitations of the language recited in instant claim 10.
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Drovetskaya et al. (US 2015/0147362; publication date: 05/28/2015) in view of May (US 20120052187; publication date: 03/01/2012).
As noted in the anticipation rejection above Drovetskaya anticipates claims 1 and 8-10 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103(a) over Drovetskaya for the reasons set forth above ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))). In the alternative, as set forth above, Drovetskaya teaches all of the limitations of instant claims 1 and 8-10.
Drovetskaya does not disclose a particle having the transmittance recited in instant claims 2-5.
May discloses that the particle size of ZnO affects the wavelength at which absorption characteristics are maximized and use of a variety of particle sizes can provide broad protection across the entire UV spectrum (0017).
It would have been prima facie obvious to optimize the degree of absorption (and therefore also the transmission) by adjusting particle size. One having ordinary skill in the art would have been motivated to increase UV absorption as much as possible because sun protection was the objective of Drovetskaya’s invention. The skilled artisan would have had reasonable expectation of success because May teaches a relationship between particle size distribution and absorption. See MPEP 2144.05(II).
With regard to instant claims 4 and 5, as noted above, the examiner considers it to have been prima facie obvious to optimize transmittance by optimizing particle size. The examiner considers the stability of the achieved transmittance under the humidity and temperature conditions recited in the instant claims to have been inherent in Drovetskaya’s particles as they are formed from the same substances as the particles of the instantly claimed invention.
With regard to claim 6, as noted above, Drovetskaya teaches a range in silane surface coating of from 0.01 to 5% by weight. This range overlaps with the range required by the instant claims for this property (see MPEP 2144.05).
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Domichi et al. (JPH11193354; publication date: 07/21/1999; cited in the IDS filed 11/01/2024; citing the English human translation) in view of May (US 20120052187; publication date: 03/01/2012).
As noted in the anticipation rejection above Domichi anticipates claims 1 and 8-10 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103(a) over Domichi for the reasons set forth above ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Domichi does not disclose a particle having the transmittance recited in instant claims 2-5.
May discloses that the particle size of ZnO affects the wavelength at which absorption characteristics are maximized and use of a variety of particle sizes can provide broad protection across the entire UV spectrum (0017).
It would have been prima facie obvious to optimize the degree of absorption (and therefore also the transmission) by adjusting particle size. One having ordinary skill in the art would have been motivated to increase UV absorption as much as possible because sun protection was the objective of Domichi’s invention. The skilled artisan would have had reasonable expectation of success because May teaches a relationship between particle size distribution and absorption. See MPEP 2144.05(II).
With regard to instant claims 4 and 5, as noted above, the examiner considers it to have been prima facie obvious to optimize transmittance by optimizing particle size. The examiner considers the stability of the achieved transmittance under the humidity and temperature conditions recited in the instant claims to have been inherent in Domichi’s particles as they are formed from the same substances as the particles of the instantly claimed invention.
With regard to claim 6, Domichi teaches a range in silane surface coating of from 5-100% by weight (abstract). This range overlaps with the range required by the instant claims for this property (see MPEP 2144.05).
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, 6, and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-10 of copending Application No. 17997348;
claims 1-20 of copending Application No. 17913422; and
claims 1, 2, and 5-14 of copending Application No. 17997352
in view of Domichi et al. (JPH11193354; publication date: 07/21/1999; cited in the IDS filed 11/01/2024; citing the English human translation).
Inter alia the claims of the ‘348, ‘422, and ‘352 applications embrace surface-modified zinc oxide particles that have been coated with a hydrolysable silane according to formula (1) as recited in instant claim 1.
The claims of the ‘348, ‘422, and ‘352 applications are silent with respect to the color difference DE before and after irradiation with simulated sunlight being 4.0 or lower.
Domichi discloses that zinc oxide particles can become chemically reactive after sun exposure, which can degrade materials into which they have been incorporated (0007: “[S]ince zinc oxide itself is an n-type semiconductor and has photocatalytic activity, the photocatalytic activity becomes extremely strong when it is micronized, and when it is formulated as a cosmetic or resin composition for preventing ultraviolet rays. In addition, there is a problem that it acts on other compounding components to induce phenomena such as decomposition and alteration.”) Domichi discloses further that coating zinc oxide with hydrolyzed alkylalkoxysilanes, specifically hydrolyzed methyltrimethoxysilane, attenuates reactivity, as measured by reduced color difference after exposure to sunlight. (page 3 describes a metal alkoxide used as a precursor of silica to be coated in the present invention, Si (OR) 4 is used, or R’4-nSi (OR)n (R'; alkyl group) alone or in combination, can be used for purposes such as improving the water repellency; R and R ′ of R ′ 4-n Si (OR) n are an alkyl group having 1 to 12 carbon atoms or a fluoroalkyl group in which a hydrogen atom of the alkyl group is substituted with a fluorine atom; and example 2 discloses an embodiment in which the zinc oxide particles are coated with hydrolyzed methyltrimethoxysilane; example 6 tests the color difference after sunlight exposure.)
It would have been prima facie obvious to coat the zinc oxide particles of the ‘348, ‘422, and ‘352 applications to achieve the claimed color difference after exposure to simulated sunlight. The skilled artisan would have been motivated to do so in order to decrease reactivity of the particles towards media in which they are dispersed and had reasonable expectation of success because the alkylalkoxysilanes were known to be capable of providing this effect as of the instant effective filing date.
With regard to claim 6, Domichi discloses that a range of 5 – 100% coating over the zinc oxide particles is suitable for their invention. One having ordinary skill would have expected to be able to accomplish the diminished reactivity as measured by low color difference using this range in percent alkylalkoxysilane coating. This range overlaps with the range recited in the instant claims. See MPEP 2144.05.
With regard to claims 8-10, the claims of the ‘348 and ‘422 applications embrace dispersions and the coated zinc oxide particles incorporated into cosmetic compositions. The claims of the ‘352 application do not recite any limitation requiring the surface-modified particles to be incorporated into cosmetics; however, it would have been prima facie obvious to do so as this was a known use for alkylalkoxysilane coated zinc oxide particles. See MPEP 2143(A).
Claims 2-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-10 of copending Application No. 17997348;
claims 1-20 of copending Application No. 17913422; and
claims 1, 2, 5-14 of copending Application No. 17997352
in view of Domichi et al. (JPH11193354; publication date: 07/21/1999; cited in the IDS filed 11/01/2024; citing the English human translation) as applied to claims 1, 6, and 8-10 above and further in view of May (US 20120052187; publication date: 03/01/2012).
The relevant limitations of the ‘348, ‘422, and ‘352 applications are set forth above. None of these applications recite a limitation on the total light transmittance.
May discloses that the particle size of ZnO affects the wavelength at which absorption characteristics are maximized and use of a variety of particle sizes can provide broad protection across the entire UV spectrum (0017).
It would have been prima facie obvious to optimize the degree of absorption (and therefore also the transmission) by adjusting particle size. One having ordinary skill in the art would have been motivated to increase UV absorption as much as possible because sun protection was the objective of ‘348, ‘422, and ‘352 inventions, in view of Domichi. The skilled artisan would have had reasonable expectation of success because May teaches a relationship between particle size distribution and absorption. See MPEP 2144.05(II).
With regard to instant claims 4 and 5, as noted above, the examiner considers it to have been prima facie obvious to optimize transmittance by optimizing particle size. The examiner considers the stability of the achieved transmittance under the humidity and temperature conditions recited in the instant claims to have been inherent in ‘348, ‘422, and ‘352 applications’ particles as they are formed from the same substances as the particles of the instantly claimed invention.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 6, and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18836757 in view of Domichi et al. (JPH11193354; publication date: 07/21/1999; cited in the IDS filed 11/01/2024; citing the English human translation).
Inter alia the claims of the ‘757 application embrace surface modified zinc oxide particles that are modified with a hydrolyzed silane coupling agent having an alkoxy group and exhibiting a color difference DE before and after irradiation with simulated sunlight less than or equal to 4.0.
The claims of the ‘757 application do not specify the identity of the hydrolyzed silane coupling agent.
Domichi discloses that zinc oxide particles can become chemically reactive after sun exposure, which can degrade materials into which they have been incorporated (0007: “[S]ince zinc oxide itself is an n-type semiconductor and has photocatalytic activity, the photocatalytic activity becomes extremely strong when it is micronized, and when it is formulated as a cosmetic or resin composition for preventing ultraviolet rays. In addition, there is a problem that it acts on other compounding components to induce phenomena such as decomposition and alteration.”) Domichi discloses further that coating zinc oxide with hydrolyzed alkylalkoxysilanes, specifically hydrolyzed methyltrimethoxysilane, attenuates reactivity, as measured by reduced color difference after exposure to sunlight. (page 3 describes a metal alkoxide used as a precursor of silica to be coated in the present invention, Si (OR) 4 is used, or R’4-nSi (OR)n (R'; alkyl group) alone or in combination, can be used for purposes such as improving the water repellency; R and R ′ of R ′ 4-n Si (OR) n are an alkyl group having 1 to 12 carbon atoms or a fluoroalkyl group in which a hydrogen atom of the alkyl group is substituted with a fluorine atom; and example 2 discloses an embodiment in which the zinc oxide particles are coated with hydrolyzed methyltrimethoxysilane; example 6 tests the color difference after sunlight exposure.)
It would have been prima facie obvious to use a hydrolyzed coupling agent according to R’4-nSi (OR)n (R'; alkyl group), or more specifically methyltrimethoxysilane as the hydrolyzed silane coupling agent to provide the color difference of the ‘757 application because one having ordinary skill would have recognized these substances as suitable for this purpose in view of Domichi. See MPEP 2144.07.
With regard to claim 6, Domichi discloses that a range of 5 – 100% coating over the zinc oxide particles is suitable for their invention. One having ordinary skill would have expected to be able to accomplish the diminished reactivity as measured by low color difference using this range in percent alkylalkoxysilane coating. This range overlaps with the range recited in the instant claims. See MPEP 2144.05.
With regard to claims 8-10, the ‘757 application embraces a dispersion or a cosmetic comprising the surface modified zinc oxide particles.
This is a provisional nonstatutory double patenting rejection.
Claims 2-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18836757 in view of Domichi et al. (JPH11193354; publication date: 07/21/1999; cited in the IDS filed 11/01/2024; citing the English human translation) as applied to claims 1, 6, and 8-10 above and further in view of May (US 20120052187; publication date: 03/01/2012).
The relevant limitations of the ‘757 application are set forth above. The claims of the ‘757 application do not recite a limitation on the total light transmittance.
May discloses that the particle size of ZnO affects the wavelength at which absorption characteristics are maximized and use of a variety of particle sizes can provide broad protection across the entire UV spectrum (0017).
It would have been prima facie obvious to optimize the degree of absorption (and therefore also the transmission) by adjusting particle size. One having ordinary skill in the art would have been motivated to increase UV absorption as much as possible because sun protection was the objective of ‘757 invention, in view of Domichi. The skilled artisan would have had reasonable expectation of success because May teaches a relationship between particle size distribution and absorption. See MPEP 2144.05(II).
With regard to instant claims 4 and 5, as noted above, the examiner considers it to have been prima facie obvious to optimize transmittance by optimizing particle size. The examiner considers the stability of the achieved transmittance under the humidity and temperature conditions recited in the instant claims to have been inherent in ‘757 application’s particles as they are formed from the same substances as the particles of the instantly claimed invention.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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