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 .
Status of the Claims
Claims 1-6 and 8-15 are pending. Claims 11-15 stand withdrawn without traverse.
Claims 1-6 and 8-10 are under current examination.
All rejections not reiterated have been withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: The readability of claim 1 would be approved by amending line 2 to recite “in which the particle surfaces of the zinc oxide particles”. Appropriate correction is required.
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 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, the coating agent is hydrolyzed as required in the instant invention and the amount of coating agent used by Domichi in the cited example 2 appears to be 10%, therefore within the amount of hydrolyzed surface treatment agent required to achieve the claimed effect. 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 after irradiation with simulated sunlight having an accumulated light intensity of 300 kJ/m2. Domichi coats the particles to achieve inter alia improved chemical resistance and dispersibility (abstract). Domichi discloses a range in amount of hydrolyzed alkoxysilane that overlaps with the amount required by the instant claims and indicated in the specification to provide the claimed DE. Domichi teaches that zinc oxide has a photocatalytic activity that strengthens upon micronization (0007). The invention reduces photocatalytic activity of zinc oxide and improves chemical resistance (0013, 0014). Domichi also links the value DE to the photocatalytic activity of the zinc oxide particles (see page 4, table 1/example 5) and Domichi teaches 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.) Thus, one having ordinary skill would have recognized that photocatalytic activity of ZnO microparticles can be diminished by reaction in the presence of a hydrolyzed siloxane having the formula R1Si(OR2)3 wherein R1 is an alkyl group having 1-18 C atoms and R2 is an alkyl group having 1-4 C atoms, and that the reduction in photocatalytic activity can be measured as a low value for DE. The artisan having ordinary skill would have been motivated to decrease the photocatalytic activity of the ZnO microparticles so they would be useful as an inert UV blocking agent in a variety of compositions, and had reasonable expectation of success because treating the particles with a hydrolyzed alkoxysilane was a recognized solution to this problem as of the filing date of the instant application. See MPEP 2144.05(II)(A).
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.
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))). In the alternative, claims 1 and 8-10 are obvious as set forth above.
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).
Response to Arguments
Applicant's arguments filed 02/11/2026 have been fully considered but they are not persuasive.
On page 10, Applicant argues that the claims have been amended to require a specific accumulated light intensity of simulated sunlight and since the parameter of the simulated sunlight is defined the claim distinguishes over Domichi.
This argument addresses the examiner’s position set forth in the Office action mailed 11/17/2025 that the claims do not specify the amount of light exposure and therefore the prior art falls within the scope of the claim when exposure was brief and low intensity (see page 6 where the examiner stated: “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 of above 4.0”). However, the examiner also considered the limitation inherent because the identity of the hydrolysable surface treatment agent falls within the scope of the claims, the surface treatment agent was hydrolyzed during treatment, and the amount of surface treatment agent appears to be within the quantity required to achieve the claimed value for DE.
Also, the amendment to the claims has necessitated new grounds of rejection of the claims as obvious over Domichi, as set forth above. The solution to photocatalytic activity of ZnO microparticles disclosed by applicant appears to have been already appreciated in the prior art.
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.
Response to Arguments
Applicant's arguments filed 02/11/2026 have been fully considered but they are not persuasive.
On page 14, Applicant argues that Domichi and May fail to disclose the feature of the color difference DE of the surface modified zinc oxide particles before and after irradiation with simulated sunlight having an accumulated light intensity of 300 kJ/m2 is 4.0 or lower recited in amended claim 1.
This is not persuasive because it does not address the reasoning behind the obviousness conclusion. As explained above in the examiner’s response to the traversal of the rejections under 35 USC §§102/103, Domichi directs one of ordinary skill to reduce photocatalytic activity of ZnO microparticles by coating with a hydrolyzed silane having formula recited in the instant claims in amounts overlapping with the amounts recited in the instant claims. It appears that the technical solution described by Applicant had been appreciated in the prior art at the time of filing.
Conclusion
No claims are allowed.
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 KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, 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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