CTNF 18/721,774 CTNF 78176 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims 15-34 have been presented for examination on the merits. Applicant’s claims Claim 15 is directed to a composition comprising bismuth oxycarbonate particles of formula: (BiO) 2-x (CO3), wherein -0.4 < x< 0.6, and wherein the dimension of the bismuth oxycarbonate particles is less than 400 nm. 07-30-03-h AIA Claim interpretation: Claim 16 recites that the composition of claim 15 wherein the particles of bismuth oxycarbonate are for filtering UVB radiation. This is an intended use limitation and does not materially affect the scope of the claimed composition. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim s 15-16, 25-27 29-30 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al (US 20150157539) in view of JPH06329524A, herein after JPH ‘524A . Shimizu et al teach a cosmetic composition comprising, at least: (i) at least one composite pigment comprising: at least one small particle with a mean particle size of more than 100 nm and less than 400 nm, wherein the surface of the small particle is at least in part covered with at least one coating layer comprising at least one inorganic or organic solid UV filter; and (ii) at least one plate-type filler with a refractive index of more than 1.6 and less than 2.2 in an amount of more than 1% by weight relative to the total weight of composition (See abstract). Shimizu et al teach a cosmetic composition with improved optical cosmetic effects such as skin brightening and color homogeneity, which can also have improved UV filtering effects and stability, without deteriorating other cosmetic effects such as smoothening effects (See [0007]). Regarding claims 15-16, 19, 26 and 29, Shimizu et al teach that the said plate-type filler may be selected from the group consisting of barium sulfate, bismuth oxychloride , and substrate like, and mixtures thereof (See [0024]) and wherein the at least one composite pigment comprising small particle with a mean particle size of more than 100 nm and less than 400 nm and at least one solid UV filters from 10 nm to 50 nm , formed of metal oxides (See [0063] and [0065]). Regarding claims 17, 20, 28, 30, Shimizu et al teach that t he fillers may be inorganic or organic and of any shape (for instance, platelet , spherical, and oblong shapes) and with any crystallographic form (for example, sheet, cubic, hexagonal, orthorhombic, and the like) (See [0306]). Regarding claim 25, Shimizu et al do not disclose that the bismuth particles are doped, thus they are considered to be un-doped . Regarding claim 26, Shimizu et al teach that the said the cosmetic composition may be in various forms, for example, solutions , oil-in-water (O/W), water-in-oil (W/O), and multiple (e.g., W/O/W and O/W/O) emulsions , creams, etc. The composition comprises pigments , one inorganic or organic particulate solid UV filter , and optionally at least one coloring agent ; etc. It is also disclosed that the oily phase can also comprise one or more fatty substances such as fatty alcohols, fatty acids, lipophilic gelling agents, surfactants, fragrances, thickeners, etc, (See [0008], [0030], [0310], [0312], [0316] and claims 18 and 20). Regarding claim 27, Shimizu et al teach that the plate-type filler may be present in the composition in an amount ranging from 1% to 20% by weight of the cosmetic composition (See [0023] and [0303]). Regarding claim 34, Shimizu et al teach a cosmetic method of filtering UV-A or UV-B radiation comprising applying the said composition to the skin (See [0007], [0033], [0035], [0062]-[0063], [0065], [0330] and [0331]). Regarding claims 21 and 31 in part , Shimizu et al teach that the said plate-like particles have a length ranging from more than 100 nm to less than 400 nm (See [0048]). Shimizu et al’s cosmetic compositions comprise bismuth oxychloride. Shimizu et al lack a disclosure on the bismuth particles being bismuth oxycarbonate. This is remedied by JPH ‘524A. JPH ‘524A teach a cosmetic compounded with a bismuth compound , reducing lipid peroxides generated in living bodies, and preventing the inflammation caused by UV light , (See abstract). Regarding claims 15-18, 26-28 and 34 , JPH ‘524A teach a cosmetic containing a bismuth compound as an essential component , and, an oil-in-water emulsion , a water-in-oil emulsion, wherein both an organic bismuth compound and an inorganic bismuth compound can be used. Examples of bismuth compounds include bismuth oxide acetate, bismuth oxide carbonate , bismuth chloride, bismuth oxychloride , bismuth oxide, bismuth oxysulfate, etc. All of these can be used at a blending amount of from 1 to 20% (See English translation, Page 2, [0006]). Further regarding claim 26 , JPH ‘524A teach that various components may be used in combination such as, antioxidants , anti-inflammatory agents, UV absorbers , UV scattering Agents, vitamins, etc, (See page 2, 6 th para). Further regarding claim 34 , JPH ‘524A teach cosmetics such as creams, essences, foundations, etc., which are applied to the skin and retain the ingredients as they are on the skin (See page 2, 4 th para). It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of JPH ‘524A with that of Shimizu et al to arrive at the instant invention with a reasonable expectation of success. It would have been obvious to do so because Shimizu et al teach a composition for cosmetic use and application to the skin, comprising a bismuth compound and other active and additive agents including pigments and UV filters and provide guidance on the particle size and length of these plate-like bismuth compounds. Shimizu et al acknowledges that a number of bismuth compounds can be used in this composition including bismuth oxide and bismuth oxychloride, but do not expressly disclose bismuth oxycarbonate. However, JPH ‘524A also teach a cosmetic composition that preferably comprises a bismuth compound which may be bismuth oxychloride or bismuth oxycarbonate. Thus, the combination of references would have led one of ordinary kill in the art to deduce that either bismuth oxychloride or bismuth oxycarbonate would be suitable compounds for the said cosmetic composition to improve UV absorbency and reduce deleterious effects of UV radiation on the skin. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143 . 07-21-aia AIA Claim s 15-16, 24, 26-27 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al (US 20150157539) in view of JPH06329524A, herein after JPH ‘524A and Lu et al (US 20190127883) . Teachings of Shimizu et al and JHP ‘524A are delineated above and incorporated herein. The references do not specifically teach doped bismuth particles. This is taught by Lu et al. Lu et al teach iodine doped bismuthyl carbonate nanosheet compositions (See abstract and claim 1). Lu et al teach that the iodine-doped Bi 2 O 2 CO 3 nanosheets are modified on the surface of nanocarbon fiber membrane through chemical reaction, and further reaction let MoS 2 nanoflakes also be modified on its surface, to obtain iodine doped bismuthyl carbonate nanosheet (See [0004]). Evidence: Chembk.com, bismuthyl carbonate and Wikepedia. Bismuth subcarbonate (BiO) 2 CO 3 , sometimes written Bi 2 O 2 (CO 3 ) is a chemical compound of bismuth containing both oxide and carbonate anions. Other names include bismuth oxycarbonate and bismuthyl carbonate . It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Lu et al and JPH ‘524A with that of Shimizu et al to arrive at the instant invention with a reasonable expectation of success. The reasons for combining JPH ‘524A and Shimizu et al are delineated above and incorporated herein. It further would have been obvious to incorporate the teachings of Lu et al into the compositions of the combined references because Shimizu et al, JPH ‘524A and Lu et al all teach compositions comprising a bismuth compound and the optimum forms of the said compound. While Shimizu et al and JPH ‘524A are silent with regards to the bismuth compound being doped, Lu et al teach that the bismuth compound can be doped for significantly improving the absorption of visible light through the doping of the element, thereby enhancing the degradation efficiency; and then the modification of better conductive material such as MoS 2 could prevent the recombination of photogenerated electron-hole pairs. In other words, the claims would have been obvious because the technique for improving a particular formulation was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations . 07-21-aia AIA Claim s 15-23 and 25-34 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al (US 20150157539) in view of JPH06329524A, herein after JPH ‘524A and Wang et al ( Size- and shape-controlled synthesis of bismuth nanoparticles ) . Teachings of Shimizu et al and JHP ‘524A are delineated above and incorporated herein. The references do not specifically teach rods or tubes and the dimensions of platelets, rods or tubes of bismuth particles. This is taught by Wang et al. Wang et al teach near-monodisperse Bi dots in the diameter range of 3−115 nm. They disclose synthetic procedures for preparation of size-controlled , spherical Bi nanoparticles (dots), and strategies for generating rod -, plate -, and ribbon-shaped Bi nanoparticles. Alternatively, near-monodisperse Bi dots are made in the diameter range of 30−45 nm (See Abstract and Introduction). Regarding claims 21-23, 31-33 , Wang et al teach that the nanoribbons fell into two categories: thin nanoribbons having widths in the range of ∼ 60−200 nm , and thick nanoribbons having width × thickness dimensions of less than ∼ 50 × ∼ 50 nm (See page, 3657, 2 nd col.). They also teach that rod-like and hexagonal-plate shapes were synthesized the rods changed sizes from ∼ 20 × ∼ 50 nm ( diameter × length ) to ∼ 50 × ∼ 80 nm , and the hexagonal nanoplates changed in edge-to-edge lateral dimension from ∼ 50 nm to ∼ 100 nm (See page, 3659, 2 nd col.). Regarding claims 17 and 28, in part , Wang et al teach that the electron diffraction and XRD patterns (Figure S2) established the rhombohedral crystal structure of the Bi dots , with the exception of smaller Bi dots ( ∼ 4-10 nm) which exhibited the cubic crystal structure . The transition from the cubic to rhombohedral structure occurring within the range of 10-12 nm may be a surface-pressure phenomenon. Cubic Bi is a high-pressure phase, and the internal pressure exerted by a nanocrystal surface is known to increase with decreasing nanocrystal size (See page 3658, Results) It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Wang et al and JPH ‘524A with that of Shimizu et al to arrive at the instant invention with a reasonable expectation of success. It would have been obvious to do so because Shimizu et al teach a composition for cosmetic use and application to the skin, comprising a bismuth compound and other active and additive agents including pigments and UV filters and provide guidance on the particle size and length of these plate-like bismuth compounds. Shimizu et al acknowledges that a number of bismuth compounds can be used in this composition including bismuth oxide and bismuth oxychloride, but do not expressly disclose bismuth oxycarbonate. However, JPH ‘524A also teach a cosmetic composition that preferably comprises a bismuth compound which may be bismuth oxychloride or bismuth oxycarbonate. Thus, the combination of references would have led one of ordinary kill in the art to deduce that either bismuth oxychloride or bismuth oxycarbonate would be suitable compounds for the said cosmetic composition to improve UV absorbency and reduce deleterious effects of UV radiation on the skin. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143. Regarding the teachings of Wang et al, it is noted that Shimizu et al provide guidance on the particle diameter and length of bismuth compounds and one of ordinary skill in the art would have been motivated to look in the art for suggestions on other shapes and dimensions of nanoparticles to have more choices and optimization of the product and treatment method. Wang et al teach various shapes and size dimensions of the nanoparticles of bismuth and provide guidance on how to limit size growth. The claims would have been obvious because a person of ordinary skill has good reasons to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense . Double Patenting 08-33 AIA 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. 08-37 AIA Claim s 15-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-4,6, 8-12, 15-16 and 18 of copending Application No. 19/495,976 in view of Shimizu et al (US 20150157539). An obviousness-type double patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims because the examined claims would have been obvious over the reference claims in view of Shimizu et al. Specifically, the examined claim 15 is directed to a composition comprising bismuth oxycarbonate particles of formula: (BiO) 2-x (CO3), wherein -0.4 < x< 0.6, and wherein the dimension of the bismuth oxycarbonate particles is less than 400 nm. Reference claim 1 is directed to a composite material comprising: a) at least one particle of bismuth oxycarbonate of formula (I) (BiO) 2 - x (CO 3 ), and also solvates thereof, in which -0.4 < x < 0.6, the largest mean dimension of said particles being less than 400 nm; and b) at least one polymer. The difference is that reference claims require the presence of a polymer while examined claims do not. This difference however is an obvious variation because 1- both examined and reference claims recite the open transitional phrase of comprising which allows for the presence of unrecited components. As such the examined claim can include a polymer, and 2- Shimizu et al teach a similar composition comprising a bismuth compound and other components including one or more polymers (See [0018]-[0020], [0053]-[0054], and claims 26-28). Thus, the recited claims of the instant application and those of the reference application are not mutually exclusive since the composition of the instant application may comprise the polymer of reference claim . This is a provisional nonstatutory double patenting rejection. 08-37 AIA Claim s 15-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-5, 7-9, 11, 13-14, 16 and 18-19 of copending Application No. 19/492,020 in view of Shimizu et al (US 20150157539). An obviousness-type double patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims because the examined claims would have been obvious over the reference claims in view of Shimizu et al. Specifically, the examined claim 15 is directed to a composition comprising bismuth oxycarbonate particles of formula: (BiO) 2-x (CO3), wherein -0.4 < x< 0.6, and wherein the dimension of the bismuth oxycarbonate particles is less than 400 nm. Reference claim 1 is directed to a composite material comprising: a) at least one particle of bismuth oxycarbonate of formula (I) (BiO) 2 - x (CO 3 ), and also solvates thereof, in which -0.4 < x < 0.6, the largest mean dimension of said particles being less than 400 nm; and b) at least one organosilicon compound. The difference is that reference claims require the presence of an organosilicon compound while examined claims do not. This difference however is an obvious variation because 1- both examined and reference claims recite the open transitional phrase of comprising which allows for the presence of unrecited components. As such the examined claim can include an organosilicon compound, and 2- Shimizu et al teach a similar composition comprising a bismuth compound and other components including a silicon such as an organosilicon compound (See [0018], [0053], [0068]-[0071]). Thus, the recited claims of the instant application and those of the reference application are not mutually exclusive since the composition of the instant application may comprise the organosilicon of reference claim . This is a provisional nonstatutory double patenting rejection. Claims 15-34 are rejected. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mina Haghighatian whose telephone number is (571)272-0615. The examiner can normally be reached M-F, 7-5 EST. 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, Sue X. Liu can be reached at 571-272-5539. 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. /Mina Haghighatian/ Mina Haghighatian Primary Examiner Art Unit 1616 Application/Control Number: 18/721,774 Page 2 Art Unit: 1616 Application/Control Number: 18/721,774 Page 3 Art Unit: 1616 Application/Control Number: 18/721,774 Page 4 Art Unit: 1616 Application/Control Number: 18/721,774 Page 5 Art Unit: 1616 Application/Control Number: 18/721,774 Page 6 Art Unit: 1616 Application/Control Number: 18/721,774 Page 7 Art Unit: 1616 Application/Control Number: 18/721,774 Page 8 Art Unit: 1616 Application/Control Number: 18/721,774 Page 9 Art Unit: 1616 Application/Control Number: 18/721,774 Page 10 Art Unit: 1616 Application/Control Number: 18/721,774 Page 11 Art Unit: 1616 Application/Control Number: 18/721,774 Page 12 Art Unit: 1616 Application/Control Number: 18/721,774 Page 13 Art Unit: 1616 Application/Control Number: 18/721,774 Page 14 Art Unit: 1616 Application/Control Number: 18/721,774 Page 15 Art Unit: 1616 Application/Control Number: 18/721,774 Page 16 Art Unit: 1616
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