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 .
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.
Status of Application
Claims 1-16 are pending and presented for examination. Claims 1-7 and 16 were elected with traverse in the response dated 29 May 2026. As such claims 8-15 are withdrawn by the Examiner as non-elected. The traversal is that no search burden exists, however, as shown by the references provided infra production can be via different means for hollow silica. If Applicants wish to have claims 8-15 rejoined they may link them to claim 1 and they will be rejoined upon allowance of claim 1. As such, THIS RESTRICTION REQUIREMENT IS MADE FINAL.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2019189020 to Matsubara et al. (hereinafter, “Matsubara at __”; cited and provided by Applicants with citations to the attached English machine translation).
Regarding claim 1, Matsubara discloses light scattering silica particles having a light scattering property (Matsubara at 1) comprising:
A plurality of hollow portions (voids, Id.) each having a closed pore structure inside the particle (Id.) wherein the light scattering silica particles have a D50 of 2-110.9 microns (“Table 1”) and an average circularity of greater than 0.8 (as true spheres are disclosed, 6).
The claim further requires that the particles when in use have “a reflectance of a water cake containing 20 mg/cm2 of silica per measurement cross-sectional area at an ultraviolet wavelength of 310 nm is 30% or more”, given usage of hollow silica microspheres of the same diameter having voids therein, it would follow to one of ordinary skill in the art that, absent evidence to the contrary, the same properties would be exhibited though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))". This also covers claim 5 with respect to the reflectance at 20 mg/cm2 of silica at visible light of 600 nm is 30% or more and the difference between the value of claim 1 and claim 6 is 3^ or more for claim 6.
As to claim 2, the oil absorption of 100cc/100g or more (“Table 1”).
Turning to claim 3, the primary particles are the hollow portions which combine to form secondary particles (6).
Concerning claim 4, each void size is 100-500 nm (6).
Regarding claim 16, the material can be used as a cosmetic (1).
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by JP2014009146A to Nakagawa et al. (hereinafter, “Nakagawa at __”).
Regarding claim 1, Nakagawa discloses light-scattering silica particles having a light scattering property (Nakagawa at 1 discloses “light diffusion”) comprising:
A plurality of hollow portions (voids) each having a closed pore structure inside the particle (1 & 3), wherein the particles have a D50 of 1.06 microns (8) with a circularity of at least 0.8 (spherical or “substantially spherical”, 9).
The claim further requires that the particles when in use have “a reflectance of a water cake containing 20 mg/cm2 of silica per measurement cross-sectional area at an ultraviolet wavelength of 310 nm is 30% or more”, given usage of hollow silica microspheres having voids therein, it would follow to one of ordinary skill in the art that, absent evidence to the contrary, the same properties would be exhibited though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))". This also covers claim 5 with respect to the reflectance at 20 mg/cm2 of silica at visible light of 600 nm is 30% or more and the difference between the value of claim 1 and claim 6 is 3^ or more for claim 6. This also holds true for claim 2 for oil absorption of at least 100 ml/100 g.
As to claim 3, the secondary particles are made of hollow silica primary particles (6).
Turning to claim 4, the primary particles are 920 nm (8).
Regarding claim 7, trimethoxysilane can be added to the surface (4) which is a silyating agent.
Claims 1-7 and 16 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by WO 2021172294 (US PG Pub No. 20220411275 is the English equivalent) to Matsubara et al. (hereinafter, “Matsubara-2 at __”).
The applied reference has a common assignee (AGC SI-Tech Co., Ltd.) and inventor (Katayama) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Matsubara-2 discloses a hollow silica having light scattering properties (Matsubara-2 at “Fig. 6”) comprising:
A plurality of hollow portions each having a closed pore structure inside the particle (“Fig. 6”, “Fig. 8”), wherein the light-scattering silica particle s have a D50 of 5-6 microns ([0065]), and an average circularity of at least 0.8 (“Fig. 1”),
In use of the particles for light-scattering the reflectance A at 310 nm fo 20 mg/cm2 is 30% or more (“Fig. 6” shows greater than 30% for 310 nm for all samples tested from looking at the graph).
As to claim 2, the oil absorption is 100-1000 mg/100 g ([0019]).
Regarding claim 4, the primary particle size is 0.7-1 micron ([0063]).
Turning to claim 5, the reflectance at 600 nm is above 30% for all but one of the samples in “Fig. 6”.
As to claim 6, the difference between 310 and 600 nm is greater than 3% per “Fig. 6”.
With respect to claim 7, silicone can be surface treated onto the particles (“Example 30”).
Turning to claim 16, the material can be utilized in cosmetics ([0005] & [0185]).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Compartmentalized Hollow Silica Nanospheres Templated from
Nanoemulsions” to Wu et al., discloses light scattering silica particles having numerous silica particles that are also hollow contained therein but the D50 is well less than one micron.
Conclusion
Claims 1-7 and 16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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