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 Acknowledged
Applicant's election with traverse of the invention of Group I and the species of ‘reflective surface’ encompassing claims 1-5, 7-15 and 17-20 in the reply filed on 5/18/2026 is acknowledged. The traversal is on the ground(s) that both Groups I and II share the same general common inventive idea. This is not found persuasive because the product as claimed can be used in methods of treating the skin to hide blemishes. Further, prior art which may anticipate or render obvious one method would neither anticipate nor render obvious the other.
It is observed that Applicant’s response identified claims 1-5, 7-15 and 17-20 as corresponding to the elected species. This appears to be incorrect because Applicant’s response elected ‘reflective particle’ for examination the merits, not ‘absorbing surface’. Examination of ‘reflective particle’ would encompass claims 1-6, 8-15 and 17-20. Claim 7, identified in Applicant’s response for examination, is directed to ‘absorbing surface’ which was not elected. Accordingly, claims 1-6, 8-15 and 17-20 are believed to be the claims presented for examination on the merits.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-15 and 17-21 are pending, claims 7 and 21 are withdrawn as being directed to nonelected subject matter and claims 1-6, 8-15 and 17-20 are presented for examination on the merits.
The following rejections are made.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/21/2024 and 8/26/2024 was considered by the examiner.
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.
Claims 1, 2, 4, 9-14, 17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mathiowitz et al. (US 2009/0311295).
Matthiowitz describes a particle composition wherein the particles a loaded with pigment nanoparticles wherein the microparticles contain a polymer and a uniform dispersion of the loaded nanoparticles (see abstract and claim 1; see instant claim 1) and have a particle size of 800 nm or less (or from 1-2 microns) (see [0015] and claim 17; see instant claims 11, 19 and 20). Exemplified polymers include polymethyl methacrylate and polysiloxanes (see [0044, 0045]). Microparticles having a mixture of pigments are also contemplated, e.g. alumina, blanc fixe, gloss white, clay, titanium dioxide, zinc oxide, talk and combinations thereof (i.e. pigment particles with different material composition with respect to the coloring pigment particles, particles having a plurality of colors) (see [0025, 0059]; see instant claims 4 and 12). It is noted that titanium dioxide is presently claimed as an additional particle having ‘a reflective surface’.
The microparticles may be suspended in a liquid carrier such as water, however, other carrier solvents are also described (see abstract and [0051, 0134]; see instant claim 2).
Example 16 of Matthiowitz discloses a polymethyl methacrylate microparticles comprising titanium dioxide (a coloring pigment) wherein the microparticles are dispersed in petroleum ether (i.e. carrier liquid’) (see instant claims 1, 2, 10 and 17). It is noted that polymethyl methacrylate is a biocompatible material (see [0044, 0070]; see instant claim 9).
Instant claims 13 and 14 are product-by-process claims as they describe how the product is to be made rather than what the resulting composition comprises. See MPEP 2113(I).
Regarding the limitation that the composition is an ‘eye colorant for coloring a portion of a cornea of a patient’, this is an intended use limitation because it described how the composition may be used rather than provide a limiting structural description. See MPEP 2111.02(II).
Claims 1-6, 10-14 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams et al. (US 2003/0190336).
Adams provides a composition comprising solid particles, e.g. a pigment (see claim 6; see instant claim 1), entrapped in a polymeric gel network wherein the polymeric gel network are particles having an average size of 20 microns (see [0046]; see instant claim 11). The polymer of the gel particle includes polyorganosiloxanes (‘a synthetic polymer material’) (see [0030] and claim 4; see instant claims 1, 10 and 18). The composition may additionally comprise a second pigment which is dispersed in the composition but not entrapped within the polymer (see claim 16; see instant claim 3) wherein the second pigment is different in color from first pigment (see instant claims 4 and 5). Exemplified pigments include titanium dioxide, zinc oxide, red iron oxide, yellow iron oxide, black iron oxide, ultramarine, iron oxide titanated mica, bismuth oxychloride and combination thereof. (see claim 6; see instant claims 6 and 12). Inclusion of titanium dioxide into the solid particle would provide a reflective particle property as this property is tied to the material itself. Example 1 provides a gel particle which comprises titanium dioxide embedded in the network (see [0173]; see instant claim 6). The polymer particles may be carried in a liquid solvent that is suitable for topical application to human skin (see [0072]; see instant claim 2)
Instant claims 13 and 14 are product-by-process claims as they describe how the product is to be made rather than what the resulting composition comprises. See MPEP 2113(I).
Regarding the limitation that the composition is an ‘eye colorant for coloring a portion of a cornea of a patient’, this is an intended use limitation because it described how the composition may be used rather than provide a limiting structural description. See MPEP 2111.02(II).
Claims 1, 2, 4, 8-15, 17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masoud et al. (US 2018/0275548), evidenced by Miranda et al. (J Functional Biomaterials, 2022, 13, 1-20) and Mathiowitz et al. (US 2009/0311295).
Masoud describes an ink composition made from ink particles comprising a polymeric resin having pigment particles distributed therein (see claim 1; see instant claim 1) wherein the particles have an average size of about 5 microns (see [0015]; see instant claims 11, 19 and 20). The ink particles are to be present in a carrier fluid (see [0037, 0038] and claim 1)
Exemplified polymeric resins include acrylate polymers such as polymethyl methacrylate (‘a thermoplastic material’) (see [0028; see instant claims 10 and 17). Mathiowitz is provided as evidence that polymethyl methacrylate is a ‘biocompatible’ material (see [0044, 0070]; see instant claim 9).
Exemplified pigments are selected from metal oxides such as titanium dioxide, zinc oxide, cerium oxide, and so on (see claims 2 and 3; see instant claims 1 and 12). Table 1 provides pigment particles which comprise a mixture of pigments (titanium dioxide and alumina) which reads on instant claim 3 (‘composite material further comprises additional particles which are also at least partially embedded within the matrix material’).
Masoud’s particles are surface treated so as to have a hydrophobic surface property (see abstract and claim 1) by way the ink particles being coated with a polysiloxane material such as polydimethylsiloxane (see [0024] and claim 5; see instant claims 8 and 15). Miranda is cited as evidence that polydimethylsiloxane is a ‘biocompatible’ material (see abstract and page 1; see instant claim 8).
Instant claims 13 and 14 are product-by-process claims as they describe how the product is to be made rather than what the resulting composition comprises. See MPEP 2113(I).
Regarding the limitation that the composition is an ‘eye colorant for coloring a portion of a cornea of a patient’, this is an intended use limitation because it described how the composition may be used rather than provide a limiting structural description. See MPEP 2111.02(II).
Potentially Relevant Prior Art
Shmizu et al. (US 2017/0042774).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611
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