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 Rejections - 35 USC § 102
Claims 1, 5, 9-10, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizoguchi (JP 2006096943 A).
An English-language machine translation of Mizoguchi, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation.
In sections (1) and (5) of the paragraph 7 Mizoguchi discloses a composite particle comprising an oxidized wax, optionally a polyolefin, and a pigment, where the pigment can be zinc oxide, as recited in claims 1 and 9. In section (4) of claim 7 Mizoguchi discloses that the polyolefin can be paraffin wax, polyethylene, and polypropylene, all meeting the limitations of the organic material of claims 1 and 4. Paraffin wax, polyethylene, and polypropylene all have solubility parameters of about 16 or 17 MPa1/2, within the ranges recited in claim 1. Mizoguchi discloses in section (7) of paragraph 7 that the particle size of the composite particles is 1 to 200 µm, indicating that the D10 of the composite particles will be at least 1 µm, as recited in claim 1. In paragraph 31 Mizoguchi discloses that the composite particles are prepared by dissolving or dispersing the oxidized wax, polyolefin, and pigment (zinc oxide) in xylene, and then removing the solvent (“desolvate”), crushing, and classifying the particles. Since the zinc oxide is not melted, the composite particles will have at least a partial coating of the polyolefin on the zinc oxide particles, as recited in claim 1. Claims 1 and 9 are therefore anticipated by Mizoguchi.
In paragraph 12 Mizoguchi discloses that the polyolefin is preferably present in an amount of 10 to 90% by weight of the composite particles, within the range recited in claims 5 and 19. In paragraph 15 Mizoguchi discloses that the composite particle can also comprise an inorganic pigment such as carbon black, as recited in claim 10. Claims 5 and 10 are therefore also anticipated by Mizoguchi.
Claim Rejections - 35 USC § 103
Claims 6 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Mizoguchi.
The discussion of Mizoguchi in paragraph 2 above is incorporated here by reference. Mizoguchi discloses coated particles meeting the limitations of claim 1. The differences between Mizoguchi and the currently presented claims are:
i) Mizoguchi does not specifically disclose coated particles containing the organic material (stearic acid) in amounts within the ranges recited in claim 6.
ii) Mizoguchi does not specifically disclose coated particles having a D10 within the ranges recited in claims 16-18.
With respect to i), in paragraph 12 Mizoguchi discloses that the polyolefin is preferably present in an amount of 10 to 90% by weight of the composite particles, overlapping the range recited in claim 6. Claim 6 is therefore rendered obvious by Mizoguchi.
With respect to ii), as discussed in paragraph 2 above, Mizoguchi discloses in section (7) of paragraph 7 that the particle size of the composite particles is 1 to 200 µm, indicating that the D10 of the composite particles will be at least 1 µm, encompassing the ranges recited in claims 16-18.
See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 6 and 16-18 are therefore rendered obvious by Mizoguchi.
Response to Arguments
Applicant's arguments filed 7/14/26 regarding Mizoguchi have been fully considered but they are not persuasive. Applicant argues that it is not clear what is meant by “particle size” in Mizoguchi, for example whether it is a diameter or a radius and that it is therefore unclear whether the coated particle meet the claim limitation requiring the D10 to be at least 1 µm. Mizoguchi’s teaching in paragraph 7 that the particle size of the opaque composite particle is 1 to 200 µm implies that there are no particles of less than 1 µm, or a negligible amount. If the particle size of Mizoguchi were a radius rather than a diameter, this would simply raise the bounds of the range in a way that makes the D10 even higher.
Allowable Subject Matter
Claims 11-15 and 22 are allowed. The amendments filed 7/14/26 require the organic material of the coating to be selected from a group consisting of specific waxes and polyolefins. Ke and Maiti, cited in the office action mailed 4/1/26 as anticipating claim 11, teach stearic acid coatings, and do not teach coatings comprising the organic materials recited in the amended claims. One of ordinary skill in the art would have no motivation to modify Ke or Maiti to include the organic materials recited in the amended claims. Mizoguchi, discussed in the above rejections, discloses zinc oxide particles at least partially coated with paraffin wax, polyethylene, or polypropylene, but Mizoguchi discloses a different method of preparing the particles, where the zinc oxide, polyolefin, and an oxidized wax are dispersed in an organic medium and then the solvent is removed. One of ordinary skill in the art would not be motivated to modify the method of Mizoguchi to arrive at the claimed method.
Claim 7-8 and 20-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Mizoguchi is silent regarding the BET surface area of the coated zinc oxide particles, and the prior art does not provide motivation for one of ordinary skill in the art to prepare the coated zinc oxide particles of Mizoguchi to have the claimed BET surface areas.
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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, PREM SINGH can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
Prosecution Insights