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 .
Claims 39-74 are pending.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 07/10/2026 is acknowledged. The traversal is on the ground(s) that during PCT prosecution the European examiner did not require a lack of unity between original claims 1-38. This is not found persuasive because examination practice during PCT prosecution does not dictate examination practice in each individual country during the national stage. And furthermore, MPEP §189.03(d) states: “The examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA.” Applicant’s argument that they do not believe examination of the full scope of the claimed invention would pose an undue burden on the examiner is noted. Applicant argues no undue search burden has been shown. The Examiner respectfully points out that MPEP 1893.03(b) clearly states that unity of invention is applicable to national stage applications and as such "Undue search burden” is not a requirement for unity of invention determination in a 371/national stage application.
The requirement is still deemed proper and is therefore made FINAL.
Claims 62-74 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/10/2026.
Claims 39-61 are under current examination.
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 43 and 52 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 43 recites the limitation "the metal oxide" in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, there are two metal oxides in claim 39, a first metal oxide and a second metal oxide. It is unclear whether “the metal oxide” in claim 43 refers back to the first, the second, or the total of both metal oxides present in the invention of claim 39.
Claim 52 recites the limitation "the binder" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 52 is unclear because it depends itself. It is therefore, unclear what is encompassed by the method claims of claims 52. It is noted, that claims must be given their broadest reasonable interpretation in light of the specification (See MPEP §2111) and therefore, for purposes of compact prosecution, the abovementioned claim is being interpreted as dependent from claim 51, the claim that introduces the binder that claim 52 further limits; however, clarification is required.
Claim Rejections - 35 USC § 103
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.
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 39-50 and 59-61 are rejected under 35 U.S.C. 103 as being unpatentable over Herzog WO 2020182936; publication date: 09/17/2020; cited in the IDS filed 08/08/2024) in view of Iskandar (Advanced Powder Technol 14(3) 349-367; 2003).
With regard to claim 39, Herzog discloses a method for increasing sun protection factor (SPF) of a sunscreen composition by adding porous metal oxide microspheres (abstract). The metal oxide is at least one selected from the group consisting of silica, titania, alumina, zirconia, ceria, iron oxides, zinc oxide, indium oxide, tin oxide, and chromium oxide (page 1). The porous metal oxide spheres (e.g., microspheres) scatter the light passing through sunscreen compositions. As a result, the presence of porous metal oxide spheres (e.g., micro spheres) in a sunscreen composition leads to an overall increase in the pathlength of the light travel ling through the sunscreen layer. Consequently, the photon absorption by the UV filter or dye molecules present in the sunscreen composition increases. Thus, an overall increase in absorbance of the dye or the UV absorber is achieved without increasing its concentration (page 4). The method also does not increase whitening effect that can be associated with prior art sunscreen solutions containing metal oxide powders (page 1). In several example compositions spheres containing both titania and silica were prepared (examples 9 and 13, pages 49 and 51).
Thus, Herzog discloses a method for increasing the sun protection factor of a UV filter composition, the method comprising adding hybrid metal oxide particles to the UV filter composition, the hybrid metal oxide particles comprising two distinct metal oxides; however, the spheres are not characterized as having a continuous matrix of one of the iron oxides, and particles of the other embedded in the matrix.
Iskandar in the analogous art of light scattering by metal oxide particulate matter, teaches a method to prepare microencapsulated metal oxide powders formed from e.g. SiO2, TiO2, ZrO2, Al2O3 (title, abstract). Images show that small, nanoscale metal oxide particles are dispersed (embedded) within a larger metal oxide matrix (fig 8) within approximately micron sized particles (fig 4). Iskandar describes the light scattering characteristics and found the refractive indices of the particles varied depending on the content of the material present (abstract) and on the diameter (specifically the mobility diameter) of the particles (figure 12, pages 362-363). Iskandar concludes that the spray drying method they employed using a suspension of different sized precursor particles could be used to prepare other types of enhanced materials (page 356).
It would have been prima facie obvious to add the metal oxide particles containing metal oxide nanoparticles embedded within a metal oxide matrix of a microparticle disclosed by Iskandar to the sunscreen disclosed by Herzog because one having ordinary skill in the art would have recognized them as being capable of serving the same purpose (see MPEP 2144.06). Moreover, one having ordinary skill would have been motivated to add particles of the category taught by Iskandar because this would provide an additional means to optimize the scattering of light within the UV protectant composition, to further increase absorption by the UV absorbing organic molecules that are present. The skilled artisan would have had reasonable expectation of success because Iskandar teaches the scattering to be tunable by adjusting the diameters of the particles and by selection of the metal oxide material.
With regard to claim 40, the particles described by Iskandar are non-porous.
With regard to claim 41, Herzog teaches including scattering particles in a range of from 0.1 to 10 % weight of the composition (page 5). This would give the artisan of ordinary skill a starting point to optimize the quantity of Iskandar’s particles required to give the desired boost to UV absorption. See MPEP 2144.05.
With regard to claim 42, Iskandar’s particles are in the vicinity of 1 micron in diameter (see figures) and Herzog discloses a range of from 1 to 1000 microns (page 5).
With regard to claim 43, the examiner points out that Iskandar’s particles are composed entirely from metal oxide, and therefore fall within the scope of instant claim 43 because this claim could reasonably be interpreted to limit the total amount of any metal oxide in the particle.
With regard to claims 44, 46, 49 and 50, Iskandar teaches that selection of the identity and quantity of the encapsulating material and the nanoparticles affects the refractive index of the particles, thus the examiner considers arriving at the claimed ratio of first to second metal oxide to have been a matter of making routine adjustments within the general teachings of Herzog/Iskandar.
With regard to claims 45 and 47, Herzog teaches titania and silica as preferred metal oxides for their porous powder and Iskandar teaches that their method can be used to synthesize metal oxide microparticles having nanoparticles embedded therein and that the method is applicable to materials other than those expressly exemplified. Iskandar also teaches that the material present in the particle dictates the observed refractive index of the particle. Therefore, the examiner considers selecting from the metal oxides taught in the combined references to have been a matter of routine optimization for one of ordinary skill.
With regard to claim 48, the nanoparticles taught by Iskandar fall within the claimed range.
With respect to claim 59, Herzog discloses UV protectant compositions comprising the following: salicylic acid derivatives; benzophenone derivatives; dibenzoylmethane derivatives; diphenyl acrylates; 3-imidazol-4-yl-acrylic acid and its esters; benzofuran derivatives; polymeric UV absorbers; cinnamic acid derivatives; camphor derivatives; hydroxyphenyltriazine derivatives; benzotriazole derivatives; trianilino-s-triazine derivatives; 2-phenylbenzimidazole-5-sulfonic acid and salts thereof; menthyl o-aminobenzoates; homosalates; tris-biphenyltriazine derivatives; Ti02 (partly encapsulated) , ZnO and mica; benzylidenemalonates; merocyanine derivatives; phenylene bis diphenyltriazines; imidazoline derivatives; and diaryl butadiene derivatives.
With regard to claims 60 and 61, Herzog teaches non-whitening compositions and in view of the foregoing, the light that is absorbed by the UV protection composition would have been tunable to the artisan of ordinary skill by selection of absorbing agent and optimization of light scattering by the metal oxide particles.
Claims 51-53 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Herzog WO 2020182936; publication date: 09/17/2020; cited in the IDS filed 08/08/2024) and Iskandar (Advanced Powder Technol 14(3) 349-367; 2003) as applied to claims 39-50 and 59-61 above and further in view of Gershon (10682294; issue date: 06/16/2020).
The relevant disclosures of Herzog and Iskandar are set forth above. Neither reference teaches a continuous matrix comprising a binder, the specific binders listed in instant claim 52, or a core-shell structure for the second metal oxide particles.
Gershon, in the analogous art of inorganic metal oxide sunscreens, teaches that zinc oxide nanoparticles (sized between 20-200 nm) can absorb UV light (blocking light from passing through the sunscreen and being absorbed by the skin) but can cause the composition to become white or opaque, an undesirable property for customers.
Gershon teaches controlled scattering to avoid whitening, while providing effective UV absorption (col 2). Gershon achieves this by aggregating nanoparticles having size less than 100 nm into clusters to decrease scattering of visible light (avoiding whiteness; col 2), the clusters having size greater than 200 nm. The clusters are held together by a binding agent. The particles are coated/enveloped in a shell such that the individual particles in the cluster remain optically separated from each other, wherein the shell may be silicon dioxide. By controlling the thickness of the shell, the refractive index of the particles can be selected in a manner to avoid scattering of visible light to avoid whitening on the skin (col 3). The surface of the individual particles within the aggregate can be modified such that they adhere better to each other (col 3). In Gershon’s examples, an additional particle referred to as an anchoring particle acts as the binder.
It would have been prima facie obvious to use silica coated metal oxide nanoparticles (or by extension, any coating that maintained optical separation of the nanoparticles) embedded into microparticles according to Iskandar, for addition to Herzog’s sunscreen. The artisan of ordinary skill would have recognized that the structure described by Iskandar is formed by appropriately sized nanoparticles that are agglomerated within a larger metal oxide particle and would be capable of absorbing UV light if they were also coated such that the embedded metal oxide nanoparticles remain optically separate. Thus, one having ordinary skill would have been motivated to use core shell nanoparticles as the embedded particles in order to further increase the UV absorption of the sunscreen composition. The artisan of ordinary skill would have had reasonable expectation of success because this would merely require using metal oxide coated nanoparticles such as those disclosed by Gershon as the nanoparticle starting material in Iskandar’s method.
This would result in a metal oxide microparticle having metal oxide matrix with metal oxide coated metal oxide nanoparticles embedded therein. Such a structure falls within the scope of the instant claims as follows: Claims 51 and 52 require a binder that may be silica, therefore the silica shell of Gershon’s examples meets the requirement of the instant binder; claim 53 requires a core-shell structure for the embedded nanoparticle; and 56 requires that the embedded nanoparticle be surface functionalized. The instant specification states “The term ‘surface functionalization’ in the present invention represents a change in the surface of a material by bringing physical or chemical characteristics different from the ones originally found on the surface of the material.” As the coated nanoparticles possess different optical properties (different physical properties) and different chemical properties because silica is differently reactive than zinc oxide, the coating meets all requirements to fall within the scope of “surface functionalization” as the term is used in the instant application.
Claims 54 is rejected under 35 U.S.C. 103 as being unpatentable over Herzog WO 2020182936; publication date: 09/17/2020; cited in the IDS filed 08/08/2024) and Iskandar (Advanced Powder Technol 14(3) 349-367; 2003) as applied to claims 39-50 and 59-61 above and further in view of Anselmann (US 20030116062; publication date: 06/26/2003) and Lahanas (US 6114424; issue date: 09/05/2000).
The relevant disclosures of Herzog and Iskandar are set forth above. Neither reference teaches that the second metal oxide particles are an ordered array.
Anselmann, in the analogous art of cosmetics (claim 6) teaches that opalescent pigments may be created by ordered arrays of metal oxide particles (abstract, claim 1).
Lahanas, in the analogous art of sunscreen compositions teaches that cosmetics typically are intended to provide an attractive appearance through the use of color, e.g., by highlighting certain features of the face and/or accentuating natural colors; and compositions having an opalescent quality are desirable because of their aesthetic light-reflecting properties (col 1).
It would have been prima facie obvious to use an ordered array of nanoparticles in Iskandar’s metal oxide hybrid microparticles. The artisan of ordinary skill would have been motivated to do so in order to provide further cosmetic appeal to the sunscreen composition and had reasonable expectation of success because this would merely require adding such particles to the composition.
Claims 55 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Herzog WO 2020182936; publication date: 09/17/2020; cited in the IDS filed 08/08/2024) and Iskandar (Advanced Powder Technol 14(3) 349-367; 2003) as applied to claims 39-50 and 59-61 above and further in view of Manoharan (US 20140254017; publication date: 09/11/2014).
The relevant disclosures of Herzog and Iskandar are set forth above. Neither reference teaches a disordered array as required by instant claim 55.
Manoharan, in the analogous art of pigments that may be used for cosmetics (0101), teaches controlling the color provided by a photonic material by constructive interference of scattered light by variations in the refractive index within a material. This can cause an iridescence as a consequence of Bragg diffraction from ordered internal arrangement of silica. Manoharan teaches further: A recently discovered example from nature is the bright blue plumage of the plum-throated cotinga, whose feathers are patterned with a dense, disordered arrangement of pores. The short-range correlations in the pore network give rise to constructive interference of scattered light. Because the structure is isotropic, the interference condition does not vary with orientation, and therefore the color is independent of the viewing angle. Synthetic materials with similar appearance can be made through a variety of approaches(0003-0004). It would have been prima facie obvious to have a disordered array of nanoparticles within the microparticles taught by Herzog/Iskandar in order to optimize the final color of the sunscreen composition. With regard to claim 59, it would have been obvious following the teachings of Manoharan to tailor the color of the particle to have any desired wavelength within the visible spectrum (i.e. 380-800 nm).
Claims 57 is rejected under 35 U.S.C. 103 as being unpatentable over Herzog WO 2020182936; publication date: 09/17/2020; cited in the IDS filed 08/08/2024) and Iskandar (Advanced Powder Technol 14(3) 349-367; 2003) as applied to claims 39-50 and 59-61 above and further in view of Karpov (US 20110245392; publication date: 10/06/2011).
The relevant disclosures of Herzog and Iskandar are set forth above. Neither reference teaches surface functionalization of the hybrid particles.
Karpov, in the analogous art of metal oxide particulate UV protective compositions, teaches improved UV protection of zinc oxides that have been surface functionalized with silanes (abstract).
It would have been prima facie obvious to functionalize the surface of the hybrid metal oxide microparticles taught by Iskandar for addition to Herzog’s UV protectant composition. The artisan of ordinary skill would have been motivated to do so in order to provide further UV protection and had reasonable expectation of success because the means to do so was taught by Karpov.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, Ali Soroush can be reached at (571)272-9925. 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.
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
