DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is the first Office action on the merits of the claims.
All citations to the Manual of Patent Examining Procedure (MPEP) refer to Revision 01.2024, which was released in November 2024.
Status of the Claims
In the Preliminary Amendment filed 17 July 2024, Applicant cancelled claims 1-28 and added twenty-six new claims, i.e., claims 29-54.
Claims 29-54 are pending and are considered below.
Claim Rejections - 35 U.S.C. 112(b)
The following is a quotation of 35 U.S.C. 112(b):
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.
Claim 44 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor regards as the invention.
Claim 44 states: “The method according to claim 29 for protecting the skin against ultraviolet radiation and high energy visible light.” Emphasis added. It is unclear whether (and if so how) the foregoing italicized phrase further limits the method of claim 29. Does that phrase further define the active (manipulative) step of “adding closed-cell metal oxide particles to the UV filter composition” recited in claim 29? In the alternative, does it merely implicate the mental state of the person practicing the claimed invention, which is a non-limiting intended result? This ambiguity renders claim 44 indefinite.
Claim Rejections - 35 U.S.C. 102 / 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 29-54 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over Herzog (WO 2020/182936 A1), as evidenced by Darji (US 2019/0076809 A1).
Herzog is directed to “porous metal oxide spheres for increasing SPF of a sunscreen composition and preparation of sunscreen compositions comprising the porous spheres.” Page 1, lines 6-8. “The method comprises adding porous spheres (e.g., microspheres) comprising a metal oxide to the sunscreen composition, wherein 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, lines 33-36.
Herzog discloses that “the porous metal oxide spheres are prepared using a polymeric sacrificial template.” (Emphasis added) Page 7, lines 6-7. “In certain embodiments, the polymer is selected from the group consisting of poly(meth)acrylic acid, poly(meth)acrylates, polystyrenes, polyacrylamides, polyethylene, polypropylene, polylactic acid, polyacrylonitrile, derivatives thereof, salts thereof, copolymers thereof and combinations thereof.” Page 8, lines 11-14.
Herzog discloses: “The porous spheres are prepared, e.g., by a method comprising the following steps. A liquid dispersion of polymer particles (e.g., nanoparticles) and a metal oxide is formed. Liquid droplets of the dispersion are formed. The liquid droplets are dried to provide polymer template spheres (e.g., microspheres) comprising polymer spheres and metal oxide. The polymer spheres are removed from the template spheres to provide the porous metal oxide spheres.” Page 7, lines 9-15. “In certain embodiments, the polymer spheres (e.g., nanospheres) are removed from the template spheres (e.g., microspheres) by calcining the template spheres at temperatures in the range of 350 to 700°C for a period of 1 to 8 hours.” Page 8, lines 20-22.
The foregoing disclosure substantially matches the description of the preparation process set forth in the specification of the present application (WO 2023/139037), as originally filed 17 July 2024. See, e.g., page 9, lines 14-15 (“In a preferred embodiment, the closed-cell metal oxide particles are prepared using a polymeric sacrificial template.” (emphasis added)). The specification of the present application additionally provides (emphasis added):
In a preferred embodiment, the closed-cell metal oxide particles are prepared by a method comprising the following steps.
generating liquid droplets from a particle dispersion comprising first particles comprising a polymer material and second particles comprising a metal oxide material;
drying the liquid droplets to provide dried particles comprising an array of the first particles, wherein each of the first particles is coated by a layer of the second particles; and
calcining or sintering the dried particles, wherein the calcining or sintering densifies the metal oxide material and removes the polymer material to produce the closed-cell metal oxide particles each comprising a metal oxide matrix defining an array of closed-cells, each closed-cell encapsulating a void volume, and wherein outer surfaces of the closed-cell metal oxide particles are defined by their respective arrays of closed-cells.
Page 9, line 27, to page 10, line 2.
The process of Example 3 of Herzog (pp. 47-48), which yields porous silica spheres via spray-drying, is at least substantially identical to the preparation process disclosed in Example 2 of the present application, which is set forth on pages 60-61 of the original specification and yields closed-cell silica particles.
In Experiments 2 and 3, Herzog discloses that the porous silica spheres of Example 3 boost the effectiveness of the UV-absorber benzophenone-4. Pages 52-53. Herzog further discloses that the porous silica spheres can be added to a sunscreen composition to increase its SPF. Page 63 at claim 1. Exemplary Compositions 5 and 6 of Herzog are sunscreens that comprise both (i) the porous silica spheres of Example 3 and (ii) a UV absorber. Pages 56-57 at Table 1. The concentration of porous silica spheres in Exemplary Composition 5 is 2 wt%, while the concentration of porous silica spheres in Exemplary Composition 6 is 5.5 wt%. Id.; see also MPEP § 2131.03(I) (a specific example in the prior art that is within a claimed range anticipates the range).
At this juncture, it is important to recognize that “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (Emphasis added) MPEP § 2112.01(I), citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Although Herzog is silent as to whether the porous metal oxide spheres define an array of closed cells, Applicant’s apparent discovery that they do does not render the claimed invention patentable. MPEP § 2112(I) (“‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’”), quoting Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Applicant is reminded that “[t]here is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.” MPEP § 2112(II) (emphasis in original), citing Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
Figure 1 of Darji (the evidentiary reference), which is reproduced below, illustrates how porous metal oxide spheres prepared using a polymeric sacrificial template come to define an array of closed cells:
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In sum, claims 29-32, 38, 42, 44, 46-47, and 52 are anticipated or rendered prima facie obvious by Herzog. MPEP § 2112(III) (“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”).
Regarding claim 33, Example 11 of Herzog discloses the preparation of porous silica spheres having two average particle sizes via spray-drying. Page 50, lines 19-41. The process of Example 11 is at least substantially identical to the process set forth in Example 5 of the specification of the present application (pages 62-63), which is identified therein as having disordered voids. MPEP § 2112.01(I) (quoted above); MPEP § 2112(I) (quoted above).
Regarding claim 34, Applicant is referred to claim 5 of Herzog (page 63).
Regarding claim 35, Applicant is referred to claim 4 of Herzog (page 63).
Regarding claim 36, Applicant is referred to claim 9 of Herzog (page 63), which discloses an average pore diameter in the range of 50 nm to 999 nm. MPEP § 2144.05(I) (“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”).
Regarding claim 37, Applicant is referred to claim 6 of Herzog (page 63).
Regarding claim 39, Applicant is referred to claim 11 of Herzog (page 64).
Regarding claim 40, Example 10 of Herzog discloses the preparation of porous silica spheres having a bimodal distribution. Pages 49-50. Applicant is additionally referred to claims 8 and 11 of Herzog (pages 63-64).
Regarding claim 41, Herzog discloses that “[i]n certain embodiments, the porous spheres are monodisperse.” Page 6, line 24. Accordingly, a person having ordinary skill in the art would have readily envisaged certain other embodiments wherein the porous spheres are not monodispersed. MPEP § 2144.01 (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Applicant is additionally referred to claims 5-6 and 9 of Herzog (page 63).
Regarding claims 43 and 48, Applicant is referred to claims 13 and 29 of Herzog (pages 64 and 66).
Regarding claim 45, Applicant is referred to claims 14-15 of Herzog (page 65).
Regarding claims 49 and 50, Applicant is referred to claims 18-19 of Herzog (page 65).
Regarding claim 51, Applicant is referred to claim 20 of Herzog (page 65).
Regarding claim 53, it is prima facie obvious to formulate a UV filter composition as a “day care composition” because sunlight (the primary source of UV radiation) is not a risk to skin health at night time. MPEP § 2144.01 (quoted above).
Regarding claim 54, Exemplary Compositions 5 and 6 of Herzog are emulsions. Pages 56-57 at Table 1.
Claim Rejections - Double Patenting (Non-Statutory)
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 obviousness-type 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR1.321(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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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 eTerminalDisclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/ eTD-info-I.jsp.
Claims 29-54 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 25-42 of co-pending Application No. 18/014,915 (as amended on May 4, 2026) alone or in view of Herzog (WO 2020/182936 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following: Conflicting claim 1 of the ’915 Application is directed to “[a] closed-cell metal oxide particle comprising a plurality of closed-cells, each closed-cell encapsulating a media-inaccessible void volume, wherein an outer surface of the closed-cell metal oxide particle comprises an array of the closed-cells.” Conflicting claim 26 requires that the array is ordered, while conflicting claim 27, in contrast, requires that the array is disordered. Conflicting claims 29-30 require that the metal oxide is selected from silica, titania, and zirconia, among other species. Conflicting claims 35 and 37-42 collectively disclose that the closed-cell metal oxide particles have (i) an average diameter of “about 0.5 µm to about 100 µm” (claim 35) and (ii) can be included in a cosmetic or bulk composition that includes a light absorber, thereby exhibiting “an effect in the ultraviolet spectrum” (claim 38). These observations establish that the conflicting claims collectively overlap many of the features recited in the claims of the present application. Experiment 2 of Herzog (page 52), which teaches that porous silica spheres boost the absorbance of UV filters in sunscreens, compensates for any residual deficiency in the conflicting claims. Applicant is additionally referred to claims 1-13 of Herzog (pages 63-64), which teach that porous metal oxide spheres increase the sun protection factor (SPF) of sunscreens. Therefore, the present claims are not patentably distinguishable over conflicting claims 25-42 of the ’915 Application alone or in view of Herzog.
This is a provisional rejection because the conflicting claims have not been patented.
Conclusion
Claims 29-54 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER ANTHOPOLOS whose telephone number is 571-270-5989. The examiner can normally be reached on Monday – Friday (9:00 am – 5:00 pm). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany P. Barham, can be reached on Monday – Friday (9:00 am – 5:00 pm) at 571-272-6175. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.A./
20 June 2026
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
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