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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 April 2026 has been entered.
Status of Claims
The amendments and arguments filed 22 April 2026 are acknowledged and have been fully considered. Claims 1, 7, and 19 are currently pending. Claim 1 is amended; claims 2-6 and 8-18 are cancelled; no claims are withdrawn; claim 19 is new.
Claims 1, 7, and 19 are examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 7, and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites a hydrophilized inorganic powder comprising an inorganic powder, a hydrophobic coat, and a hydrophilic coat, further reciting the hydrophilic coat comprises disodium stearoyl glutamate.
However, the instant specification discloses disodium stearoyl glutamate only as the hydrophobic coating (Pars. [0014], [0028], [0036], [0071], and [0105] of the specification as filed; Original claims 6 and 9-12), with no disclosure of disodium stearoyl glutamate included in the hydrophilic coating. Therefore, the limitation of the hydrophilic coat comprising disodium stearoyl glutamate is new matter. Claims 7 and 19 are rejected due to their dependence on claim 1.
Based on Applicant’s election of disodium stearoyl glutamate as the species of hydrophobic coating and in the interest of compact prosecution, claim 1 is interpreted as reciting “the composition of the hydrophobic coat comprises disodium stearoyl glutamate”.
Claim Rejections - 35 USC § 112(b)
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.
Claim 19 is 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 19 contains the trademark/trade name Henschel. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe industrial mixers and, accordingly, the identification/description is indefinite.
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.
Claims 1, 7, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2008/0188574) in view of Kubota et al. (US 2017/0007512) and Park et al. (KR 2018-0098773; of record).
Claim 1 is drawn to a hydrophilized inorganic powder, comprising an inorganic powder as a base material, a hydrophobic coat that covers the surface of the inorganic powder, and a hydrophilic coat that covers the hydrophobic coat, wherein
the hydrophilic coat has a composition being a nonionic surfactant having a hydrophilic moiety and a carbon chain moiety,
the carbon chain moiety of the nonionic surfactant has a branched structure sufficient for imparting self-dispersibility to the inorganic powder having hydrophobicity,
the inorganic powder comprises hydrophobic pigment grade titanium oxide,
the composition of the hydrophobic coat comprises disodium stearoyl glutamate, and
the nonionic surfactant comprises polyoxyethylene (10) isostearyl ether.
Lee et al. teach cosmetic powders comprising a metal oxide powder base treated with a hydrophobic coat and a hydrophilic coat to allow for water dispersability (Abstract). Lee et al. further teach in Example 2 (Pg. 3) coating titanium dioxide powder with decyl triethyoxysilane to obtain a hydrophobic powder, followed by coating with the dispersant disodium tridecyl sulfosuccinate.
As such, Lee et al. teach a hydrophilized inorganic powder, comprising an inorganic powder as a base material, a hydrophobic coat that covers the surface of the inorganic powder, and a hydrophilic coat that covers the hydrophobic coat, wherein the hydrophilic coat has a composition being a surfactant having a hydrophilic moiety and a carbon chain moiety, the carbon chain moiety of the nonionic surfactant has a branched structure sufficient for imparting self-dispersibility to the inorganic powder having hydrophobicity, and the inorganic powder comprises titanium dioxide.
The powder of Lee et al. differs from the instantly claimed invention in the following ways:
Lee et al. do not teach pigment grade titanium dioxide;
the hydrophobic coat of Lee et al. does not comprise disodium stearoyl glutamate; and
the hydrophilic coat of Lee et al. does not comprise polyoxyethylene (10) isostearyl ether.
Yet, as to 1: Kubota et al. teach cosmetic compositions comprising a titanium dioxide powder with a hydrophobic coating (Claims 1 and 4). Kubota et al. further teach the titanium dioxide powder comprising pigment-grade titanium dioxide (Par. [0028]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the powder of Lee et al. to comprise pigment-grade titanium dioxide as taught by Kubota et al. It would have been obvious to substitute one form of titanium dioxide powder suitable for use in cosmetics for another to obtain the predictable result of a coated titanium dioxide cosmetic powder, with a reasonable expectation of success.
As to 2: Park et al. also teach inorganic powders having a hydrophobic coating for use in cosmetics (Pg. 5 sixth paragraph) wherein the inorganic powder can be a metal oxide (Pg. 5 seventh paragraph) such as titanium dioxide (Pg. 5 eighth paragraph), further teaching alkyl triethoxysilane (Pg. 5 tenth paragraph) and disodium stearoyl glutamate (Pg. 5 ninth paragraph) as suitable hydrophobic coatings for the metal oxide powder.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the powder of Lee et al. by substituting disodium stearoyl glutamate as taught by Park et al. in the place of decyl triethyoxysilane. It would have been obvious to substitute one hydrophobic coating taught to be suitable for metal oxide powders for use in cosmetics for another to obtain the predictable result of a metal oxide powder with a hydrophobic coating, with a reasonable expectation of success.
And, as to 3: Lee et al. further teach in Example 5 (Pg. 3) using polyoxyethylene (10) cetyl/stearyl ether (i.e., the mixture of polyoxyethylene (10) stearyl ether and polyoxyethylene (10) cetyl ether) as the hydrophilic coating.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Lee et al. to include polyoxyethylene (10) stearyl ether. It would have been obvious to substitute one surfactant taught to be suitable as a dispersant for hydrophobic powders for another to obtain the predictable result of a hydrophilized powder, with a reasonable expectation of success.
And as discussed in MPEP 2144.09(II), Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
In the instant case, polyoxyethylene (10) stearyl ether and polyoxyethylene (10) isostearyl ether are position isomers, differing only in the physical position of the -CH3 radical on either carbon 17 or carbon 16 of the alkyl chain. As such, one of ordinary skill in the art would reasonably expect polyoxyethylene (10) stearyl ether and polyoxyethylene (10) isostearyl ether to posess similar properties in the powder of Lee et al., Kubota et al., and Park et al.
Based on all of the foregoing, claim 1 is rejected as prima facie obvious.
Claim 7 is drawn to a cosmetic comprising the hydrophilized inorganic powder according to claim 1.
Lee et al. further teach sun creams comprising the hydrophilized inorganic powder (Examples 6-8 on pg. 4).
As such, claim 7 is rejected as prima facie obvious.
Claim 19 further limits the process of making the hydrophilized inorganic powder of claim 1 and is therefore a product-by-process claim.
As discussed in MPEP 2113(I), "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As the hydrophilized powder of claim 1 is obvious over Lee et al. in view of Kubota et al. and Park et al., claim 19 is also rejected as prima facie obvious for the same reasons applied to claim 1 above.
Response to Arguments
Applicant's arguments filed 22 April 2026 have been fully considered but are moot in view of the new grounds of rejection set forth above.
Conclusion
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/Examiner, Art Unit 1611
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