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
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06/08/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed on 11/13/2023 and 10/14/2024 have been considered by the Examiner.
Claim Objections
Claim 1 is objected to for the following informalities: claim 1 recites variables “(I_A)” and “(I_R)” for peak intensities in parentheses, but recites variables “A_450” and “A_320” for absorbances without parentheses. While the use of parentheses within claims is acceptable formatting, consistency of formatting should be used where appropriate. Appropriate correction is requested.
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 1-14 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 a peak intensity I_A of anatase-type crystals and a peak intensity I_R of rutile-type crystals; these variables render the claim indefinite since the intensity values as claimed are obtained from X-ray diffractometry, which may produce more than one peak at more than one 2θ value, with different intensities, for both the anatase and the rutile phases. Therefore one skilled in the art would not be reasonably apprised of which peaks in an XRD pattern to assign to the ratio claimed. The instant specification provides such clarity in [0021]; however, it is improper to import limitations from the specification into the claims (see MPEP 2111.01(II)). Claim 1 is therefore indefinite and claims 2-14 directly or indirectly depend upon, but do not rectify, the issue of indefiniteness so are therefore similarly rejected.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. 2014 (CN 103848458 A) in view of Nakamura et al. (US 20140112965 A1, on the IDS filed on 11/13/2023).
Regarding claim 1, Wang teaches a rutile titanium oxide powder (0009) wherein a ratio (IA/IR) of a peak intensity (IA) of anatase-type crystals to a peak intensity (IR) of rutile-type crystals as measured by X-ray diffractometry is 0.1 or less (Figure 3, no anatase peak is observed); a ratio (A450/A320) of an absorbance A450 at a wavelength of 450 nm to an absorbance A320 at a wavelength of 320 nm is from 0.015 to 0.5 (Wang teaches a ratio A450/A320 for Line 3 that qualitatively is about 0.3/1.25 or about 0.24, see Figure 5 provided below); and the powder contains a nitrogen atom (nitrogen-doped, 0010) wherein a peak derived from the nitrogen atom is observed from 395 to 402 eV in ESCA (XPS) measurement (peak at 400.1 eV, assigned to nitrogen 1s, Figure 4d).
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Wang does not teach that particles contained in the powder have an average short-axis length from 10 to 50 nm and an average aspect ratio from 1 to 3.
However, Nakamura teaches an analogous titanium oxide that is rutile (0001) wherein the apparent average minor axis length of oriented aggregated particles of 30 to 150 nm and the average aspect ratio is 2 to 5 (0010).
It would be obvious to combine the teaching of Wang with the sizes taught by Nakamura and arrive at the claimed invention; one would be motivated to do so because Nakamura teaches that the features such as axial length and ratio affect the transmittivity values such that the UV-shielding performance of the rutile titanium oxide becomes excellent (0017). Therefore one would arrive at the claimed invention prior to the effective filing date.
Regarding claim 2, Wang and Nakamura teach the powder as applied to claim 1 above. Wang and Nakamura both further teach that the rutile phase is obtained with no anatase phase; it would therefore be necessarily true that there are no anatase peaks observed in the XRD pattern (Wang, Figure 3).
Regarding claim 3, Wang and Nakamura teach the powder as applied to claim 1 above. Nakamura further teaches a specific surface area (SSA) of 10 to 100 m2/g (0012). It would be obvious to one skilled in the art to combine the teaching of Wang with the SSA taught by Nakamura; one would be motivated to do so because Nakamura teaches that the features such as the SSA affect the transmittivity values such that the UV-shielding performance of the rutile titanium oxide becomes excellent (0017). Regarding the overlap of the range of Nakamura with the instant claimed range of 25 to 100 m2/g, as set forth in MPEP 2144.05, in the case where the claimed range "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to obtain the powder as suggested by Nakamura and Wang where the specific surface area is in any workable or optimum range overlapping with 10-100 m2/g as taught by Nakamura, including the claimed range, in order to obtain the invention.
Regarding claim 4, Wang and Nakamura teach the powder as applied to claim 1. Wang does not explicitly teach the absorbance of the nitrogen-doped TiO2 at 600 nm. However, Figure 5 of Wang qualitatively teaches an absorbance for Line 2 that is reasonably near a value of 0.1 (see Figure 5 above), and furthermore teaches that the absorbance in this range is tunable by the extent of nitrogen doping (“allows for the artificial control of nitrogen doping in the target product by changing the concentration of hydrochloric acid in the precursor solution,” 0017; Wang teaches that absorption in Figure 5 decreases with nitrogen at%, 0025).
Wang therefore teaches that the absorbance as 600 nm is a property of the TiO2 that would be reasonably optimized through routine optimization practice by one of ordinary skill in the art; the courts have generally held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore, one skilled in the art would have optimized the nitrogen content and been led to obtain an absorbance that falls within the claimed range, thus arriving at the claimed range prior to the effective filing date.
Regarding claim 5, Wang and Nakamura teach the powder as applied to claim 1. Wang and Nakamura do not teach an L* value is from 92 to 99, an a* value is from -5 to 2, and a b* value is from 3 to 30.
However, the color values for the powder taught by Wang and Nakamura are properties of the material that lead directly from the composition of the material, and the courts have held that when compositions of two products are the same, they must necessarily have the same properties; "[p]roducts of identical chemical composition cannot have mutually exclusive properties," In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01(II). Furthermore, visible colors are determined by their absorbance in the visible range, and the teachings of Wang and Nakamura teach absorption spectra that read on the absorption spectra of the instant claimed invention, as discussed above. Therefore, the limitations of the instant claim would necessarily be met by the teachings of Wang and Nakamura.
Claims 6-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Nakamura, as applied to claim 1 above, and in further view of Kondoh et al. 2010 (US 20100189666 A1), provided on the IDS filed 11/13/2023.
Regarding claim 6, Wang and Nakamura teach the powder as applied to claim 1. Wang and Nakamura do not teach that the surface of the particles contained in the powder is coated with an inorganic compound and/or organic compound layer.
However, Kondoh teaches an analogous rutile titanium dioxide particle having a cocoon shape (0025) wherein the surface of the particles contained in the powder is coated with an inorganic compound and/or organic compound layer (0012).
It would be obvious to one skilled in the art to combine the teachings of Wang and Nakamura by using the coating layer taught by Kondoh to coat the TiO2 particles; one would be motivated to do so to increase dispersion stability of the particles in a dispersion medium and to increase durability during cosmetic production, as Kondoh teaches (0031), and/or to obtain water-repellent and/or oil-repellent properties, as Kondoh teaches (0031). Therefore one would arrive at the claimed invention prior to the effective filing date.
Regarding claim 7, Wang, Nakamura, and Kondoh teach the invention as applied to claim 6. Kondoh further teaches an inorganic compound layer (“the above cocoon-shaped rutile-type titanium dioxide preferably has an inorganic material coating over the aggregated particle surface,” 0031) containing hydroxides or oxides of metals such as aluminum, silicon, zinc, titanium, zirconium, iron, cerium and tin (0031).
Regarding claim 8, Wang, Nakamura, and Kondoh teach the invention as applied to claim 6. Kondoh further teaches an organic compound layer (“such titanium dioxide is preferably subjected to water-repellent and/or oil-repellent treatment before being incorporated into cosmetics. Agents used for this treatment are organic materials,” 0031) containing silicone compounds such as dimethylpolysiloxane and methylhydrogen polysiloxane, coupling agents of silane, aluminum, titanium and zirconium types, fluorine compounds such as perfluoroalkyl phosphate compounds, hydrocarbons, lecithin, amino acids, polyethylene, wax, as well as fatty acids such as lauric acid and stearic acid (0031).
Regarding claim 9, Wang, Nakamura, and Kondoh teach the invention as applied to claim 6. Wang, Nakamura, and Kondoh do not teach an L* value is from 92 to 99, an a* value is from -5 to 2, and a b* value is from 3 to 30.
However, the color values for the powder taught by Wang, Nakamura, and Kondoh are properties of the material that lead directly from the composition of the material, and the courts have held that when compositions of two products are the same, they must necessarily have the same properties; "[p]roducts of identical chemical composition cannot have mutually exclusive properties," In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01(II). Furthermore, visible colors are determined by their absorbance in the visible range, and the teachings of Wang and Nakamura teach absorption spectra that read on the absorption spectra of the instant claimed invention, as discussed above. Therefore, the limitations of the instant claim would necessarily be met by the teachings of Wang, Nakamura, and Kondoh.
Regarding claim 10, Wang and Nakamura teach the invention as applied to claim 1. Wang and Nakamura do not teach a dispersion comprising the powder of the invention of claim 1.
However, Kondoh teaches an analogous rutile titanium dioxide particle having a cocoon shape (0025) wherein the surface of the particles contained in the powder is coated with an inorganic compound and/or organic compound layer (0012) and such a powder is incorporated in a dispersion with a dispersion medium (Components 1 to 5, 0131).
It would be obvious to one skilled in the art to combine the teachings of Wang and Nakamura by using the coating layer taught by Kondoh to coat the TiO2 particles and incorporate them into a dispersion; one would be motivated to do so to increase dispersion stability of the particles in a dispersion medium and to increase durability during cosmetic production, as Kondoh teaches (0031), and/or to obtain water-repellent and/or oil-repellent properties, as Kondoh teaches (0031), and further one would be motivated to obtain the dispersion taught by Kondoh because it has adhesion to the lip, stability over time, and consistency in color before and after application, as Kondoh teaches (0132). Therefore one would arrive at the claimed invention prior to the effective filing date.
Regarding claim 11, Wang and Nakamura teach the invention as applied to claim 1. Wang and Nakamura do not teach a cosmetic comprising the titanium oxide powder according to claim 1.
However, Kondoh teaches an analogous rutile titanium dioxide particle having a cocoon shape (0025) wherein the surface of the particles contained in the powder is coated with an inorganic compound and/or organic compound layer (0012) and such a powder is incorporated in a cosmetic (0002). It would be obvious to one skilled in the art to combine the teachings of Wang and Nakamura by using the coating layer taught by Kondoh to coat the TiO2 particles and incorporate them into a cosmetic; one would be motivated to do so to increase dispersion stability of the particles in a dispersion medium and to increase durability during cosmetic production, as Kondoh teaches (0031), and/or to obtain water-repellent and/or oil-repellent properties, as Kondoh teaches (0031), and further one would be motivated to obtain the cosmetic taught by Kondoh because the product has increased UV-shield performance, as Nakamura teaches (0017), and Kondoh teaches that there has been an increasing demand for cosmetics with high UV protection (0004). One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 14, Wang and Nakamura teach the invention as applied to claim 1. Wang and Nakamura do not teach a toner comprising, as an external additive, the titanium oxide powder according to claim 1. ).
However, Kondoh teaches an analogous rutile titanium dioxide particle having a cocoon shape (0025) wherein the surface of the particles contained in the powder is coated with an inorganic compound and/or organic compound layer (0012) and such a powder is incorporated in a toner as an external additive (0002). It would be obvious to one skilled in the art to combine the teachings of Wang and Nakamura by using the coating layer taught by Kondoh to coat the TiO2 particles and incorporate them as an external additive for a toner; one would be motivated to do so to increase dispersion stability of the particles in a dispersion medium and to increase durability during cosmetic production, as Kondoh teaches (0031), and/or to obtain water-repellent and/or oil-repellent properties, as Kondoh teaches (0031), and further one would be motivated to obtain the toner taught by Kondoh because the taught TiO2 particles are less likely to affect the color tone of toner due to its lower tinting strength than that of pigment-grade titanium dioxide synthesized by the calcination method, as Kondoh teaches (0009). One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Nakamura, as applied to claim 1 above, and in further view of Koura et al. 2006 (JP 2006272036 A).
Wang and Nakamura teach the powder as applied to claim 1. Wang and Nakamura do not teach a paint comprising the TiO2 powder of the invention.
However, Koura teaches a white paint for a metal plate (0020) comprising rutile-type titanium oxide powder dispersed in a silica-based binder (0020). It would be obvious to one skilled in the art to modify the powder of Wang and Nakamura by incorporating it in the paint taught by Koura; one would be motivated to do so because Koura teaches that the nitrogen-doped TiO2 is preferred because it is chemically stable, inexpensive, and yields highly active fine particles (0012). One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Nakamura, as applied to claim 1 above, and in further view of Loffredo et al. 2011, Polyethylenimine/N-doped titanium dioxide nanoparticle based inks for ink-jet printing applications. J. Appl. Polym. Sci., 122: 3630-3636, referred to herein as Loffredo.
Wang and Nakamura teach the powder as applied to claim 1. Wang and Nakamura do not teach an ink comprising the TiO2 powder of the invention.
However, Loffredo teaches a dispersion used as an ink (abstract) comprising N-doped titanium oxide dispersed in PEI (abstract). It would be obvious to one skilled in the art to substitute the powder of Wang and Nakamura for the TiO2 in the ink taught by Loffredo; the courts have held that the substitution of equivalents for the same purpose is prima facie obvious; see MPEP 2144.06(II). In the instant case, the absorbance spectra taught by Loffredo (Figure 2) agrees with the absorbance properties of the teachings of Wang and Nakamura as discussed above; it would therefore be obvious to one skilled in the art that the invention of Wang and Nakamura is an equivalent for the purpose of substitution in the teaching of Loffredo. One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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