DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 3-5 are withdrawn.
Claims 1-2 are pending and represent all claims currently under consideration.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claims 1-2 are considered to have an effective filing date of 04/25/2023.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 07/21/2026 is acknowledged. The traversal is on the ground(s) that Sunao teaches wet surface treatment using water or organic solvents, which inherently necessitates a subsequent solvent-removal or drying step that causes aggregation of particles, and that such configuration is different from the special technical feature of claim 1. Further, Applicant states that Sunao fails to teach or suggest to optimize the content of the surface treatment agent and control the particle size distribution for a specific particle diameter D98 value (Remarks, pages 4-5). This is not found persuasive because there is no limitation in the claims restricting the surface treatment from being a wet surface treatment or from having solvent-removal or drying step, and Sunao teaches both a dry and wet treatment method (Sunao, page 9), and a surface treatment agent and dry particle diameter D98 as claimed, as stated in the rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/21/2026.
Information Disclosure Statement
The information disclosure statements filed 08/29/2024 and 09/16/2025 have been considered.
Specification
The use of the terms Mastersizer and Silquest, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Sunao (JP 2021160953 A; IDS reference, 08/29/2024), further in view of Hayashi (WO 2016190399 A1; IDS reference, 08/29/2024). Sunao was cited previously by the Examiner.
Regarding claim 1, Sunao teaches metal oxide particles surface treated with an alkoxysilane (Sunao, claim 1), wherein the metal oxide can be zinc oxide (Sunao, page 7, 2nd paragraph), the BET specific surface area is 1.5 m2/g or higher and preferably less than 8 m2/g (Sunao, page 7, 3rd paragraph), and a D98 is 500 micrometers or less, which encompasses the claimed range (Sunao, page 16, example 1). Sunao specifies the D98 is the cumulative volume percentage of the powder (i.e., dry) particle size (Sunao, page 6, 3rd paragraph). Sunao further teaches the alkoxysilane can be octyltrimethoxysilane or octyltriethoxysilane (i.e., alkylalkoxysilanes having an alkyl group having 8 carbon atoms; Sunao, page 8, 5th paragraph).
Sunao does not specify a content percentage of the surface treatment agent as claimed. Hayashi, however, teaches zinc oxide surface treated with triethoxycaprylylsilane (i.e., octyltriethoxysilane as defined by the instant specification, page 25, paragraph 0044) in 0.5-10 parts by weight (Hayashi, page 5), which encompasses the claimed range of 0.70-0.92% by mass. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Sunao and Hayashi are considered to be analogous to the claimed invention, because Sunao, Hayashi, and the instant invention are in the same field of surface treated zinc oxide particles in cosmetics. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Sunao to use octyltriethoxysilane in the amount taught by Hayashi, because both teach the same surface treatment of the same particles, while Hayashi teaches the amount as claimed is a sebum absorbent with high UV shielding ability (Hayashi, page 5).
Regarding claim 2, Sunao and Hayashi together teach all the elements of the current invention as applied to claim 1. As above, Sunao teaches the particles surface treated with an alkoxysilane (Sunao, claim 1), which can be octyltrimethoxysilane or octyltriethoxysilane (Sunao, page 8, 5th paragraph).
Conclusion
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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