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 .
Formal Matters
Receipt of Applicant’s response dated 02/05/2026 is acknowledged.
Claims 1-6, 9-15, and 19-25 are pending.
Claims 7-8 and 16-18 are canceled.
Claims 24-25 are new.
Claims 1, 11-12, 14-15, and 23 are amended.
Claims 1-6, 9-15, and 19-25 are under consideration in the instant Office action.
Manner of Making Amendments, 37 C.F.R. 1.121
Each of lines 4 and 5 of claim 11 in the claim set dated 02/05/2026 have been amended, however the claim is missing the markings that indicate the changes that have been made relative to the immediate prior version, i.e., added subject matter shown by underlining the added text and deleted subject matter shown by strike-through or double brackets. Applicant is reminded to include markings to indicate the changes that have been made relative to the immediate prior version of the claims moving forward to avoid delays. See MPEP 714.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 1, 11-12, and 15 set forth in the Office action dated 11/05/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejection of claim 23 set forth in the Office action dated 11/05/2025 is hereby withdrawn in light of Applicant’s amendments to claim 23.
OBJECTION MAINTAINED
Claim Objections
Claim 14 is objected to because “dry and/or skin care composition” spanning the first two lines should be amended to “dry cosmetic and/or skin care composition in order to improve the readability and consistency of the claims.
Appropriate correction is required.
REJECTION MAINTAINED/NEW GROUNDS OF REJECTION
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.
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 1-6, 8-16, and 19-25 are rejected under 35 U.S.C. 103 as being unpatentable over Budde et al (US 2016/0271025 A1, published 09/22/2016, cited in IDS dated 01/05/2022) in view of Brunner et al (US 2017/0218148 A1, published 08/03/2017, cited in Notice of References Cited dated 11/05/2025).
Note: The instant rejection is a maintained ground of rejection over claims 1-6, 9-15, and 19-23 and is a new ground of rejection over newly added claims 24-25.
Budde et al teach an abrasive cleaning composition that can be used on skin and can be employed in cosmetic compositions (See entire document, e.g., Abstract, [0021], [0070]). The composition comprises surface-reacted calcium carbonate, which is a reaction product of natural ground calcium carbonate or synthetic calcium carbonate, including precipitated calcium carbonate, with carbon dioxide and at least one acid (e.g., Abstract, [0041], [0046], [0047]). The at least one acid, where “acid” is defined as a Brønsted-Lowry acid which is an H3O+ ion provider, in the composition of Budde et al is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, acetic acid, formic acid, and mixtures thereof, wherein preferably the at least one acid is phosphoric acid (e.g., [0017], [0024], [0051], claim 3).The carbon dioxide can be formed in situ by the acid treatment and/or can be supplied from an external source (e.g., [0054]).
The composition may comprise at least one additional abrasive material, including natural ground calcium carbonate (e.g., [0017], [0075]). The composition may be in the form of a dry powder (e.g., [0066], [0080]). The composition may or may not comprise water, and if present, comprises water from 1 to 90 wt% based on the total weight of the composition (e.g., [0080]-[0082], [0099]).
The composition of Budde et al comprises at least 6 wt% of surface-reacted calcium carbonate, based on the total weight of the composition (e.g., [0073]). The surface-reacted calcium carbonate in the composition of Budde et al is in the form of particles having a weight median particle size d50 from 0.1 to 100 μm (e.g., [0018], [0068], claim 4). The surface-reacted calcium carbonate has a specific surface area of from 5 to 200 m2/g measured using nitrogen and the BET method according to ISO 9277 (e.g., [0067]). Three exemplified surface-reacted calcium carbonate materials of Budde et al have d50 values of 6.3, 6.5, and 3.8 μm and d98 values of 15.8, 16.8, and 11.0 μm (e.g., [0135]-[0137]).
The at least one additional abrasive material, including natural ground calcium carbonate, can be present in the abrasive cleaning composition in an amount from 1 to 80 wt%, based on the total weight of the composition (e.g., [0077]). The additional abrasive material in the composition of Budde et al has a weight median particle size d50 from 0.1 to 100 μm (e.g., [0076]). Three exemplified natural ground calcium carbonate materials of Budde et al have d50 values of 3, 1.7, and 8.86 μm and d98 values of 12, 8.0, and 50.0 μm (e.g., [0138]-[0140]). The natural ground calcium carbonate in the composition of Budde et al is selected from the group consisting of marble, chalk, dolomite, limestone and mixtures thereof (e.g., [0028], [0043]).
The composition of Budde et al does not contain fillers such as talc, nor does it contain mixtures of calcium carbonate with talc, for example talc-calcium carbonate (e.g., [0079]). The composition of Budde et al may comprise further components such as fragrances, active agents (wherein active agents include pharmaceutically, biologically or cosmetically active agents, biocides, or disinfecting agents), colorants, oils, aliphatic alcohols having from 4 to 14 carbon atoms, and/or salts (e.g., [0069], [0082], [0089], [0090], [0101]),
Budde et al teach a process for preparing the composition that comprises the steps of adding the surface-reacted calcium carbonate material to a mixture including water and subsequently mixing in the additional abrasive material (e.g., [0104]-[0109]).
Budde et al teach a method of applying the composition to skin for cleaning the skin abrasively (e.g., [0111]-[0112], [0114]).
Budde et al do not teach the specific surface area of the natural ground calcium carbonate.
This deficiency is made up for in the teaching of Brunner et al.
Brunner et al teach natural ground calcium carbonate having a weight median particle size d50 in the range from 0.25 to 5 μm, a top cut particle size d98 of less than or equal to 10 μm, and a specific surface area from 0.5 to 35 m2/g as measured using nitrogen and the BET method according to ISO 9277 in a composition and product for use on the skin (See entire document, e.g., [0221]-[0224], [0229], [0258]).
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 combine the teachings of Budde et al and Brunner et al to provide an abrasive cleaning composition as a cosmetic composition for the skin, a process for preparing the composition, and a method of applying the composition to the skin, wherein the composition comprises at least 6 wt% of surface-reacted calcium carbonate, being a reaction product of natural ground calcium carbonate or synthetic calcium carbonate, including precipitated calcium carbonate, with carbon dioxide and at least one acid, wherein the at least one acid is an H3O+ ion provider selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, acetic acid, formic acid, and mixtures thereof, and wherein the carbon dioxide can be formed in situ by the acid treatment and/or can be supplied from an external source, in the form of particles having a weight median particle size d50 from 0.1 to 100 μm or from about 3.8 to 6.5 μm, a specific surface area of from 5 to 200 m2/g measured using nitrogen and the BET method according to ISO 9277, and a d98 value of from about 11 to 16.8 microns, and wherein the composition comprises from 1 to 80 wt% natural ground calcium carbonate selected from the group consisting of marble, chalk, dolomite, limestone and mixtures thereof as the at least one additional abrasive material in the form of particles having a weight median particle size d50 from 0.1 to 100 μm or from about 1.7 to 8.86 μm, a specific surface area of from 0.5 to 35 m2/g measured using nitrogen and the BET method according to ISO 9277, and a d98 value of from about 8.0 to 50.0 microns, wherein the composition is in the form of a dry powder, wherein the composition either does not contain water or contains water from 1 to 90 wt%, wherein the composition does not contain fillers such as talc nor does it contain mixtures of calcium carbonate with talc, for example talc-calcium carbonate, wherein the composition comprises further components such as fragrances, active agents, colorants, oils, aliphatic alcohols having from 4 to 14 carbon atoms, and/or salts, wherein weight percents are based on the total weight of the composition, wherein the process for preparing the composition comprises the steps of adding the surface-reacted calcium carbonate material to a mixture including water and subsequently mixing in the natural ground calcium carbonate, and wherein the method of applying the composition to the skin cleans the skin abrasively.
One of ordinary skill in the art would have been motivated to use natural ground calcium carbonate having a specific surface area from 0.5 to 35 m2/g as measured using nitrogen and the BET method according to ISO 9277 in the composition of Budde et al because Brunner et al provide this range of specific surface area of natural ground calcium carbonate as suitable for a composition and product for use on the skin. There would have been a reasonable expectation of success in using natural ground calcium carbonate having a specific surface area from 0.5 to 35 m2/g as measured using nitrogen and the BET method according to ISO 9277 in the composition of Budde et al because Brunner et al teach this range of specific surface area for natural ground calcium carbonate having a weight median particle size d50 in the range from 0.25 to 5 μm and a top cut particle size d98 of less than or equal to 10 μm, which overlap the ranges of the natural ground calcium carbonate of Budde et al having a weight median particle size d50 from 0.1 to 100 μm or from about 1.7 to 8.86 μm and a d98 value of from about 8.0 to 50.0 microns.
The abrasive cleaning composition as a cosmetic composition for the skin, the process for preparing the composition, and the method of applying the composition to the skin taught by Budde et al in view of Brunner et al render obvious instant claims 1-6, 9-15, and 19-25.
Regarding the ranges required by the instant claims, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). See MPEP 2144.05. Specifically regarding the ranges of instant claims 21 and 25 requiring that the first component, i.e., the natural ground calcium carbonate, be present in an amount of from 85 to 95 wt% and the second component, i.e., the surface-reacted calcium carbonate, be present in an amount of from 5 to 15 wt%, wherein wt% is based on the total weight of the first component and the second component, it is understood that the composition of Budde et al in view of Brunner et al comprising from 1 to 80 wt% natural ground calcium carbonate and at least 6 wt% of surface-reacted calcium carbonate, wherein wt% is based on the total weight of the composition, overlaps the recited ranges that are instead with respect to the total weight of the first and second components. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Further, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Specifically regarding claim 12, it would have also been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, in the process for preparing the composition of Budde et al in view of Brunner et al comprising the steps of adding the surface-reacted calcium carbonate material to a mixture including water and subsequently mixing in the natural ground calcium carbonate, to then dry the resulting mixture in order to obtain the composition in the form of a dry powder. Thus, the teaching of Budde et al of the composition being produced in the form of a dry powder considered along with the teaching of the process steps of adding the surface-reacted calcium carbonate material to a mixture including water and subsequently mixing in the natural ground calcium carbonate renders obvious the further limitation of claim 12 requiring a step d) of drying the mixture obtained in step c).
Specifically regarding claim 14, the method of applying the composition to the skin taught by Budde et al in view of Brunner et al cleaning the skin abrasively is understood to result in at least one of decreasing skin friction, modifying skin feel, and/or modifying skin appearance.
With regards to the preamble of instant claim 15, per MPEP 2111.02, a recitation of the preamble must result in structural difference to limit the claim. Where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation (Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). For this reason, instant claim 15 is rendered obvious by the composition taught by Budde et al in view of Brunner et al because “a talc or talc-containing material replacement” is a statement in the preamble that does not structurally limit the claim and merely recites the purpose of using the same composition as recited in instant claim 1 in place of a talc or talc-containing material in a dry cosmetic and/or skin care composition.
Double Patenting
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.
Claims 1-6, 9-15, and 19-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 19, 21-22, and 24 of U.S. Patent No. 10,780,031 B2 (hereafter ‘031) in view of Budde et al (as cited above) and Brunner et al (as cited above).
Note: U.S. Patent No. 10,780,031 is the same application that was published as US 2016/0271025 A1 applied above as prior art.
Note: The instant rejection is a maintained ground of rejection over claims 1-6, 9-15, and 19-23 and is a new ground of rejection over newly added claims 24-25.
Claim 1 of ‘031 recites an abrasive cleaning composition comprising a surface-reacted calcium carbonate as an abrasive material, wherein the surface-reacted calcium carbonate is a reaction product of natural or synthetic calcium carbonate with carbon dioxide and at least one acid. Claim 2 of ‘031 recites that the composition further comprises at least one additional abrasive material. Claim 3 of ‘031 recites that the at least one additional abrasive material is selected from the group consisting of silica, precipitated silica, alumina, aluminosilicate, metaphosphate, tricalcium phosphate, calcium pyrophosphate, natural ground calcium carbonate, precipitated calcium carbonate, sodium bicarbonate, bentonite, kaolin, aluminium hydroxide, calcium hydrogen phosphate, hydroxylapatite, and any mixture thereof. Claim 21 of ‘031 recites that the surface-reacted calcium carbonate is a reaction product of natural calcium carbonate with carbon dioxide and at the least one acid.
Claim 4 of ‘031 recites that the at least one acid is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, acetic acid, formic acid, and any mixture thereof. Claims 5 and 22 of ‘031 recite that the at least one acid of claims 1 and 21, respectively, is phosphoric acid.
Claims 6-10 of ‘031 recite that the surface-reacted calcium carbonate is in form of particles having a weight median particle size d50 from 0.1 to 100 μm (claim 6), 0.5 to 50 μm (claim 7), 1 to 20 μm (claim 8), 2 to 10 μm (claim 9), and 5 to 10 μm (claim 10). Claim 24 of ‘031 recites that the surface-reacted calcium carbonate has a specific surface area of from 5 m2/g to 200 m2/g.
Claim 19 of ‘031 recites that the composition further comprises one or more dispersing agents, thickeners, preservatives, foaming agents, fragrances, colorants, biocides, disinfecting agents, and buffeting systems.
The claims of ‘031 do not recite the composition being a dry powder, being free of talc or a talc-containing material, comprising a water content of less than 15 wt%, the amount of or the volume top cut particle size d98 of the surface-reacted calcium carbonate, the amount of, the volume median particle size d50 of, the volume top cut particle size d98 of, or the specific surface area of the at least one additional abrasive material, a process of preparing the composition, or a method of using the composition.
These deficiencies are made up for in the teachings of Budde et al and Brunner et al, which have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art, to modify the claims of ‘031 based on the teachings of Budde et al and Brunner et al, in order to arrive at the composition in the form of a dry powder, process for preparing the composition, and method of using the composition of the instant claims. One of ordinary skill in the art would have been motivated to combine the claims of ‘031 with the teachings of Budde et al and Brunner et al because both the composition of the claims of ‘031 and the composition of Budde et al in view of Brunner et al can be used as abrasive cleaning compositions and include a component being a natural ground calcium carbonate and a second component being the same type of surface-reacted calcium carbonate.
Claims 1-6, 9-15, and 19-25 are directed to an invention not patentably distinct from claims 1-10, 19, 21-22, and 24 of commonly assigned U.S. Patent No. 10,780,031 B2. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Patent No. 10,780,031 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-6, 9-15, and 19-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8-10, 12-14, 17-18, 20, and 22-24 of copending Application No. 17/998,293 (hereafter ‘293) in view of Budde et al (as cited above).
This is a provisional nonstatutory double patenting rejection.
Note: The instant rejection is a maintained ground of rejection over claims 1-6, 9-15, and 19-23 and is a new ground of rejection over newly added claims 24-25.
Claims 14 and 22-24 of ‘293 recite a wet cosmetic composition comprising a mineral blend, wherein the mineral blend comprises a first component being selected from natural ground calcium carbonate and/or precipitated calcium carbonate, and a second component being a surface-reacted calcium carbonate, wherein the surface-reacted calcium carbonate is a reaction product of natural ground calcium carbonate or precipitated calcium carbonate with carbon dioxide and at least one H3O+ ion donor, wherein the carbon dioxide is formed in situ by the at least one H3O+ ion donor treatment and/or is supplied from an external source, and the wet cosmetic composition is a make-up product, preferably a lip make-up product, an eye make-up product, or a facial make-up product; a nail care product, a lip care product, a skin care product, a hair care product, a hair styling product, a hair coloring product, a deodorant, a hair remover, a make-up remover, a baby care product, a sun protection product, a tanner product, a feminine hygiene product, or a make-up product wherein the make-up product is selected from the group consisting of a lip make-up product, an eye make-up product, and a facial make-up product, wherein the first component is present in an amount from 70 wt.-% to 90 wt.-% based on the total weight of the mineral blend, wherein the second component is present in an amount from 10 wt.-% to 30 wt.-%, based on the total weight of the mineral blend, wherein the wet cosmetic composition is substantially free of talc or a talc-containing material, and wherein the wet cosmetic composition comprises the mineral blend in an amount being sufficient to exhibit improved sensorial characteristics of the wet cosmetic composition relative to talc-containing compositions.
Claim 17 of ‘293 recites that in the composition of claim 14, the at least one H3O+ ion donor is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, oxalic acid, and mixtures thereof.
Claim 18 of ‘293 recites that in the composition of claim 14, the first component has a volume median particle size d50 from 0.8 to 8 microns, and/or a specific surface area of from 2 m2/g to 15 m2/g, measured using nitrogen and the BET method, and/or wherein the second component has a volume median particle size d50 from 3 to 10 microns, and/or a specific surface area of from 30 m2/g to 90 m2/g, measured using nitrogen and the BET method.
Claim 20 of ‘293 recites that in the composition of claim 14, the wet cosmetic preparation further comprises at least one additive selected from the group consisting of bleaching agents, thickeners, stabilizers, chelating agents, preserving agents, wetting agents, emulsifiers, emollients, fragrances, colorants, flavours, oils, skin tanning compounds, antioxidants, minerals, pigments, UV-A and/or UV-B filter, and mixtures thereof.
Claims 1, 3-6, 8-10, and 12-13 of ‘293 recite a method of making the wet composition.
The claims of ‘293 do not teach the composition being a dry powder, comprising a water content of less than 15 wt%, the volume top cut particle size d98 of the first and second components, or a method of using the composition.
These deficiencies are made up for in the teaching of Budde et al, which has been described supra.
It would have been prima facie obvious to one of ordinary skill in the art, to modify the claims of ‘293 based on the teaching of Budde et al, in order to arrive at the composition in the form of a dry powder and method of using the composition of the instant claims. One of ordinary skill in the art would have been motivated to combine the claims of ‘293 with the teaching of Budde et al because both the composition of the claims of ‘293 and the composition of Budde et al can be used as cleaning compositions and include a component being a natural ground calcium carbonate and a second component being the same type of surface-reacted calcium carbonate.
Claims 1-6, 9-15, and 19-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-9, 12, 15, and 19-20 of U.S. Patent No. 11,433,009 B2 (hereafter ‘009) in view of Budde et al (as cited above) and Brunner et al (as cited above).
Note: The instant rejection is a maintained ground of rejection over claims 1-6, 9-15, and 19-23 and is a new ground of rejection over newly added claims 24-25.
Claim 1 of ‘009 recites a method for modifying skin appearance of a person and/or in modifying the skin feel as perceived by the person comprising applying to the skin of the person a cosmetic and/or skin care composition comprising a surface-reacted calcium carbonate having a volume median particle size d50 from 0.1 to 90 μm, wherein the surface-reacted calcium carbonate is a reaction product of natural ground calcium carbonate or precipitated calcium carbonate with carbon dioxide and one or more H3O+ ion donors, wherein the carbon dioxide is formed in situ by the H3O+ ion donors treatment and/or is supplied from an external source, the amount of the surface-reacted calcium carbonate in the cosmetic and/or skin care composition is from 0.1 to 5 wt% based on the total weight of the cosmetic and/or skin care composition, and the method results in the appearance of the skin being modified and/or in modifying the skin feel as perceived by the person. Claim 2 of ‘009 recites the surface-reacted calcium carbonate having a volume median particle size d50 from 0.5 to 50 μm. Claim 3 of ‘009 recites the surface-reacted calcium carbonate having a specific surface area of from 15 to 200 m2/g measured using nitrogen and the BET method. Claim 4 of ‘009 recites the natural ground calcium carbonate is selected from the group consisting of marble, chalk, limestone, and mixtures thereof. Claim 5 of ‘009 recites the at least one H3O+ ion donor is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, an acidic salt, acetic acid, formic acid, and mixtures thereof. Claim 6 of ‘009 recites the appearance of the skin being modified is by (a) covering and/or opacifying the skin surface, (b) decreasing the gloss and/or shininess of the skin surface, and/or (c) modifying the skin color. Claims 8 and 19 of ‘009 recite the surface-reacted calcium carbonate is present in the cosmetic and/or skin care composition in an amount from 0.1 to 50 wt.-% or from 0.5 to 20 wt.-%, respectively, based on the total weight of the composition. Claims 9 and 20 of ‘009 recites the composition further comprising water and/or at least one oil. Claim 12 of ‘009 recites the composition further comprises at least one additive selected from the group consisting of bleaching agents, thickeners, stabilizers, chelating agents, preserving agents, wetting agents, emulsifiers, emollients, fragrances, colorants, skin tanning compounds, antioxidants, minerals, pigments, UV-A and/or UV-B filter, and mixtures thereof. Claim 15 of ‘009 recites the surface-reacted calcium carbonate provides skin feel modification.
The claims of ‘009 do not teach the composition comprising a second component being a natural ground calcium carbonate or any of the amounts or attributes of this second component, the volume top cut particle size d98 of the surface-reacted calcium carbonate, the composition being a dry powder and free of talc or a talc-containing material, the composition containing a water content of less than 15 wt%, or a method of preparing the composition.
These deficiencies are made up for in the teachings of Budde et al and Brunner et al, which have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art, to modify the claims of ‘009 based on the teachings of Budde et al and Brunner et al, in order to provide a composition comprising a second component being a natural ground calcium carbonate because Budde et al teach that natural ground calcium carbonate is a good abrasive material, which is desirable for a cosmetic and/or skin care composition. Further, it would have been prima facie obvious to one of ordinary skill in the art, to modify the claims of ‘009 based on the teachings of Budde et al and Brunner et al, in order to arrive at the composition in the form of a dry powder, process for preparing the composition, and method of using the composition of the instant claims. One of ordinary skill in the art would have been motivated to combine the claims of ‘009 with the teachings of Budde et al and Brunner et al because both the composition of the claims of ‘031 and the composition of Budde et al in view of Brunner et al can be used as abrasive cleaning compositions and include a component being the same type of surface-reacted calcium carbonate.
Claims 1-6, 9-15, and 19-25 are directed to an invention not patentably distinct from claims 1-6, 8-9, 12, 15, and 19-20 of commonly assigned U.S. Patent No. 11,433,009 B2. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Patent No. 11,433,009 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-6, 9-15, and 19-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 13, and 15-20 of copending Application No. 17/759,522 (hereafter ‘522) in view of Budde et al (as cited above).
This is a provisional nonstatutory double patenting rejection.
Note: The instant rejection is a maintained ground of rejection over claims 1-6, 9-15, and 19-23 and is a new ground of rejection over newly added claims 24-25.
Claim 11 of ‘522 recites a particulate composition comprising a calcium carbonate-based anticaking composition and a base component, wherein the calcium carbonate-based anticaking composition comprises a first component being a natural ground calcium carbonate or a precipitated calcium carbonate, and a second component being a surface-reacted calcium carbonate, wherein the surface-reacted calcium carbonate is a reaction product of natural ground calcium carbonate or precipitated calcium carbonate with carbon dioxide and at least one H3O+ ion donor, wherein the carbon dioxide is formed in situ by the at least one H3O+ ion donor treatment and/or is supplied from an external source, wherein the particulate composition comprises the calcium carbonate-based anticaking composition in an amount of from 0.1 to 50 wt. %, based on the total weight of the particulate composition. Claim 13 of ‘522 recites, the base component is selected from the group consisting of a food composition, a feed composition, a nutraceutical composition, a pharmaceutical composition and a cosmetic composition. Claim 16 of ‘522 recites the natural ground calcium carbonate is selected from the group consisting of marble, chalk, limestone, and mixtures thereof. Claim 17 of ‘522 recites the at least one H3O+ ion donor is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, an acidic salt, acetic acid, formic acid, and mixtures thereof. Claim 18 of ‘522 recites the first component has a volume median particle size d50 from 0.1 to 50 microns, and/or wherein the first component has a specific surface area of from 0.5 m2/g to 30 m2/g, measured using nitrogen and the BET method. Claim 19 of ‘522 recites the second component has a volume median particle size d50 from 0.5 to 50 microns, and/or wherein the second component has a specific surface area of from 15 m2/g to 200 m2/g measured using nitrogen and the BET method. Claim 20 of ‘522 recites the calcium carbonate-based composition has a residual moisture of less than 10.0 wt.% based on the total weight of the calcium carbonate-based composition.
Claim 15 of ‘522 recites a method for the production of a particulate composition, the method comprising the step of mixing a calcium carbonate-based anticaking composition with a base component, wherein the calcium carbonate-based anticaking composition comprises a first component being a natural ground calcium carbonate or a precipitated calcium carbonate, and a second component being a surface-reacted calcium carbonate, wherein the surface-reacted calcium carbonate is a reaction product of natural ground calcium carbonate or precipitated calcium carbonate with carbon dioxide and at least one H3O+ ion donor, wherein the carbon dioxide is formed in situ by the at least one H3O+ ion donor treatment and/or is supplied from an external source, and wherein the calcium carbonate-based anticaking composition is admixed into the base component in an amount of from 0.1 to 50 wt. %, preferably in an amount from 0.1 to 20 wt. %, more preferably in an amount from 0.1 to 10 wt. %, even more preferably in an amount from 0.2 to 5 wt. %, and most preferably in an amount from 0.3 to 2.5 wt. %, based on the total weight of the particulate composition.
The claims of ‘522 do not recite the composition being a dry powder, being free of talc or a talc-containing material, the amount of or the volume top cut particle size d98 of the first and second components, or a method of using the composition.
These deficiencies are made up for in the teaching of Budde et al, which has been described supra.
It would have been prima facie obvious to one of ordinary skill in the art, to modify the claims of ‘522 based on the teaching of Budde et al, in order to arrive at the composition in the form of a dry powder and method of using the composition of the instant claims. One of ordinary skill in the art would have been motivated to combine the claims of ‘522 with the teaching of Budde et al because both the composition of the claims of ‘522 and the composition of Budde et al can be used as cosmetic compositions and include a component being a natural ground calcium carbonate and a second component being the same surface-reacted calcium carbonate.
Claims 1-6, 9-15, and 19-25 are directed to an invention not patentably distinct from claims 11, 13 and 15-20 of commonly assigned copending Application No. 17/759,522. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned copending Application No. 17/759,522, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Applicant’s Arguments
Applicant’s arguments filed on 02/05/2026 have been considered.
Regarding the objection to claim 14, Applicant states in Remarks dated 02/05/2026 that “claims 1, 11, 12, 14, and 15 are amended to address the alleged informalities, and incorporate the revisions suggested by the Examiner”, however the amendment to claim 14 is missing “cosmetic” in the phrase “dry cosmetic and/or skin care composition”, and therefore the above objection to claim 14 is hereby maintained (See OBJECTION MAINTAINED section above).
Regarding the rejection under 35 USC 103, Applicant argues that the pending claims are non-obvious over the proposed combination of Budde and Brunner at least because a person having ordinary skill in the art would not be motivated to combine the teachings of Budde and Brunner, i.e., a person of ordinary skill in the art would not be motivated to add the natural ground calcium carbonate of Brunner to the abrasive cleaning composition of Budde. Applicant argues that while the first component of the instant claims is natural ground calcium carbonate that is not surface treated, the disclosure of Brunner is directed to a hydrophobically coated calcium carbonate dispersed in a polymer matrix of breathable film, and therefore a person of ordinary skill in the art would not look to the hydrophobized, coated calcium carbonate of Brunner to modify the aqueous and/or liquid composition of Budde to arrive at a dry cosmetic composition as is required by the present claims. Applicant argues that Brunner teaches that its surface-treated mineral filler has a relatively low moisture pick-up susceptibility, and therefore, the skilled person would not think to add the calcium carbonate of Brunner, which exhibits low moisture absorption, to the abrasive liquid cleaning composition of Budde, in which all its examples contain at least 25 wt.% water. Applicant argues that Brunner attributes the potential reduction of skin irritation to the lessened risk of leaching of the hydrophobic surface coating from the calcium carbonate, not due to a property of the calcium carbonate itself and Applicant argues that a person of ordinary skill in the art would not be motivated to add an untreated calcium carbonate to the abrasive cleaning composition of Budde in view of Brunner’s teachings. Applicant argues that the proposed combination of cited references fails to contemplate the technical advantages of the present application, e.g., decreasing skin friction and reducing irritation. Applicant argues that Budde and Brunner fail to consider the favorable technical/sensorial properties of Applicant’s dry cosmetic and/or skin care composition and Applicant argues that the composition of claim 1 outperforms, in terms of cushion effect, slipperiness, and powder compaction, a dry cosmetic composition comprising only a surface reacted calcium carbonate.
Applicant’s arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the rejection does not rely on the stance that a person of ordinary skill in the art would be motivated to add the natural ground calcium carbonate of Brunner to the abrasive cleaning composition of Budde as alleged by Applicant, but rather the rejection relies on the stance that since Budde et al do not teach suitable specific surface area values of the natural ground calcium carbonate, it would have been prima facie obvious to one of ordinary skill in the art to look to Brunner et al in order to determine what values of specific surface area of the natural ground calcium carbonate would be suitable, and arrive at an abrasive cleaning composition as a cosmetic composition for the skin, wherein the composition comprises at least 6 wt% of surface-reacted calcium carbonate, being a reaction product of natural ground calcium carbonate or synthetic calcium carbonate, including precipitated calcium carbonate, with carbon dioxide and at least one acid, wherein the at least one acid is an H3O+ ion provider selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, acetic acid, formic acid, and mixtures thereof, and wherein the carbon dioxide can be formed in situ by the acid treatment and/or can be supplied from an external source, in the form of particles having a weight median particle size d50 from 0.1 to 100 μm or from about 3.8 to 6.5 μm, a specific surface area of from 5 to 200 m2/g measured using nitrogen and the BET method according to ISO 9277, and a d98 value of from about 11 to 16.8 microns, and wherein the composition comprises from 1 to 80 wt% natural ground calcium carbonate selected from the group consisting of marble, chalk, dolomite, limestone and mixtures thereof as the at least one additional abrasive material in the form of particles having a weight median particle size d50 from 0.1 to 100 μm or from about 1.7 to 8.86 μm, a specific surface area of from 0.5 to 35 m2/g measured using nitrogen and the BET method according to ISO 9277, and a d98 value of from about 8.0 to 50.0 microns, wherein the composition is in the form of a dry powder, wherein the composition either does not contain water or contains water from 1 to 90 wt%, wherein the composition does not contain fillers such as talc nor does it contain mixtures of calcium carbonate with talc, for example talc-calcium carbonate, wherein the composition comprises further components such as fragrances, active agents, colorants, oils, aliphatic alcohols having from 4 to 14 carbon atoms, and/or salts, wherein weight percents are based on the total weight of the composition. It is for the same reason that the above arguments regarding properties of the natural ground calcium carbonate, e.g., coating, of Brunner et al dissuading a person of ordinary skill in the art from substituting the natural ground calcium carbonate of Budde et al with the natural ground calcium carbonate of Brunner et al are not found persuasive. Again, the rejection relies on the teaching of Brunner et al in order to provide a person of ordinary skill in the art what specific surface area values may be suitable for the natural ground calcium carbonate of Budde et al because the deficiency in the teaching of Budde et al is that they do not provide specific surface area values of the natural ground calcium carbonate. The specific argument regarding the examples of Budde et al containing at least 25 wt.% of water is not found persuasive because, as can be seen in the maintained/new grounds of rejection above, Budde et al teach that the composition may or may not comprise water, and if present, comprises water from 1 to 90 wt% based on the total weight of the composition, and Applicant is reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)). Applicant’s arguments that the combination of cited references fails to contemplate the technical/sensorial advantages of the present application, e.g., decreasing skin friction and reducing irritation, have been fully considered by the Examiner but are not found persuasive because it is not required that the art recognize the same benefits of the composition as the instant application. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Even if the technical/sensorial advantages of decreasing skin friction and reducing irritation were claimed, it wouldn’t lend itself to patentability because these are properties that are intrinsic to the composition and applicant has not argued or undermined the actual basis of the rejection. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicant’s argument that the composition of claim 1 outperforms, in terms of cushion effect, slipperiness, and powder compaction, a dry cosmetic composition comprising only a surface reacted calcium carbonate has been fully considered by the Examiner but is not found persuasive because the inventive compositions IC-1, IC-2, IC-3, and IC-4 argued by Applicant as the composition of claim 1 are not in fact commensurate with the composition of claim 1, e.g., each of compositions IC-1, IC-2, IC-3, and IC-4 comprise specific weight percentages of the first and second components which are not limitations required by instant claim 1. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Regarding the double patenting rejections, Applicant requests that all of the double patenting rejections be held in abeyance pending allowance of the final claim(s).
The above argument has been fully considered by the Examiner but is not found persuasive because a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). As no action regarding these rejections has been taken by Applicant at this time, the double patenting rejections are hereby maintained.
Conclusion
No claims are allowable.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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