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 .
Status of Claims
The amendments and arguments filed 30 September 2025 are acknowledged and have been fully considered. Claims 1-4, 6-11, 13-15, and 17-18 are currently pending. Claim 1 is amended; claims 5, 12, and 16 are cancelled; no claims are withdrawn; no claims are new.
Claims 1-4, 6-11, 13-15, and 17-18 are examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. In particular, the rejection of claims under 35 U.S.C. 102 is withdrawn in view of Applicant’s amendment to the claims. Further, the non-statutory double patenting rejection over Patent No. 12,161,736 is withdrawn in view of Applicant’s filing of a terminal disclaimer. 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 § 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.
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 1-3, 7, 13-14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Motoki (US 2018/0028414; 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, and wherein the nonionic surfactant is selected from the group including polyoxyethylene (8) glyceryl isostearate.
Claim 2 is drawn to the powder of claim 1, wherein the nonionic surfactant has a polyoxyethylene glycerin ester bond-type structure.
Claim 3 is drawn to the powder of claim 1, wherein the carbon chain moiety of the nonionic surfactant has 12 to 20 carbon atoms.
Claim 18 is drawn to the powder of claim 2, wherein the carbon chain moiety of the nonionic surfactant has 12 to 20 carbon atoms.
Motoki teaches in Comparative Example 6 (Table 5 in col. 8) a powder comprising silicone-treated mica, silicone-treated talc, silicone-treated iron oxide, and silicone-treated titanium oxide and further comprising PEG-30 glyceryl isostearate (i.e., polyoxyethylene (30) glyceryl isostearate). Motoki further teaches silicone-treated mica, silicone-treated talc, silicone-treated iron oxide, and silicone-treated titanium oxide as a hydrophobized powder (Par. [0030]), reading on an inorganic powder with a hydrophobic coat of a silicone. While Motoki does not explicitly teach PEG-30 glyceryl isostearate as a hydrophilic coating, the process used to make Comparative Example 6 (Par. [0098])) would necessarily result in a hydrophilic coating on the hydrophobized inorganic powders.
The composition of Motoki differs from the instantly claimed composition in the following ways:
Motoki does not teach the nonionic surfactant being polyoxyethylene (8) glyceryl isostearate; and
Motoki is silent as to the isostearyl chain being sufficient for imparting self-dispersibility.
Yet, as to 1: As discussed by MPEP 2144.09(II), Compounds which are position isomers 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 (30) glyceryl isostearate and polyoxyethylene (8) glyceryl isostearate are homologs differing regularly by the successive addition of
-CH2-CH2-O- groups. As such, one of ordinary skill in the art would reasonably expect polyoxyethylene (30) glyceryl isostearate and polyoxyethylene (8) glyceryl isostearate to possess similar properties in the powder of Motoki.
And, as to 2: As discussed in MPEP 2112.001, “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 the instant case, it is evidenced by the instant specification in examples 1-5, 7-10, 12, 14-15, and 17 (Table 1 on pg. 30), the isostearyl group is a carbon chain moiety with a branched structure sufficient to impart self-dispersibility. As Motoki teaches the same isostearyl group, the instantly claimed self-dispersibility is necessarily present.
Based on all of the foregoing, claims 1-3 and 18 are rejected as prima facie obvious.
Claim 7 is drawn to a cosmetic comprising the powder of claim 1.
Claim 13 is drawn to a cosmetic comprising the powder of claim 2.
Claim 14 is drawn to a cosmetic comprising the powder of claim 3.
Motoki further teaches Comparative Example 6 being a foundation (Par. [0097]) i.e., a cosmetic.
As such, claims 7 and 13-14 are also rejected as prima facie obvious.
Claims 6, 9-10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Motoki as applied to claims 1-3, 7, 13-14, and 18 above, and further in view of Park et al. (KR 2018-0098773; of record).
The teachings of Motoki have been set forth above.
Claim 6 is drawn to the powder of claim 1, wherein the hydrophobic coat comprises disodium stearoyl glutamate (Applicant’s elected species).
Claim 9 is drawn to the powder of claim 2, wherein the hydrophobic coat comprises disodium stearoyl glutamate.
Claim 10 is drawn to the powder of claim 3, wherein the hydrophobic coat comprises disodium stearoyl glutamate.
Claim 12 is drawn to the powder of claim 5, wherein the hydrophobic coat comprises disodium stearoyl glutamate.
Motoki does not teach the hydrophobic coat comprising disodium stearoyl glutamate.
However, 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) and the hydrophobic surface coating is disodium stearoyl glutamate (Pg. 5 eighth paragraph).
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 Motoki to include disodium stearoyl glutamate as the hydrophobic coating. It would have been obvious to substitute one hydrophobic coating suitable for use with metal oxides in cosmetic compositions for another, with a reasonable expectation of success.
As such, claims 6, 9-10, and 12 are rejected as prima facie obvious.
Claim 17 is drawn to a cosmetic comprising the powder of claim 6.
Motoki further teaches Comparative Example 6 being a foundation (Par. [0097]) i.e., a cosmetic.
As such, claim 17 is also rejected as prima facie obvious.
Claims 4-5, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Motoki as applied to claims 1-3, 5, 7, 12-14, 16, and 18 above, and further in view of Jihyun et al. (WO 2017/073973; of record).
The teachings of Motoki have been set forth above.
Claim 4 is drawn to the powder of claim 1, wherein the nonionic surfactant has an ether bond type between the hydrophilic moiety and the carbon chain moiety.
Claim 8 is drawn to the powder of claim 3, wherein the nonionic surfactant has an ether bond type between the hydrophilic moiety and the carbon chain moiety.
Motoki does not teach the nonionic surfactant having an ether bond between the hydrophilic and carbon chain moieties.
However, Jihyun et al. teach titanium dioxide powders having a hydrophilic coating and a surfactant coating (Abstract) for cosmetics (Pg. 1 first paragraph). Jihyun et al. further teach the surfactant being alkylene oxide adducts such as isoceteth-20 (Pg. 3 last paragraph), i.e., polyoxyethylene (20) isocetyl ether.
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 Motoki to include isoceteth-20. It would have been obvious to substitute one polyoxyethylene based surfactant suitable for use in inorganic powder cosmetics for another, with a reasonable expectation of success.
As such, claims 4 and 8 are rejected as prima facie obvious.
Claim 5 is drawn to the powder of claim 1, wherein the nonionic surfactant is polyoxyethylene (10) isostearyl ether (Applicant’s elected species).
Motoki and Jihyun et al. do not teach polyoxyethylene (10) isostearyl ether.
However, Jihyun et al. teach the surfactant being isoceteth-20 (i.e., polyoxyethylene (20) isocetyl ether).
And as discussed by MPEP 2144.09(II), Compounds which are position isomers 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) isostearyl ether and isoceteth-20 differ regularly by -CH2-CH2-O- groups in the hydrophilic moiety and -CH2- groups in the carbon chain moiety. As such, one of ordinary skill in the art would reasonably expect isoceteth-20 and polyoxyethylene (10) isostearyl ether to possess similar properties in the powder of Motoki and Jihyun et al.
As such, claim 5 is rejected as prima facie obvious.
Claim 15 is drawn to a cosmetic comprising the powder of claim 4.
Motoki further teaches Comparative Example 6 being a foundation (Par. [0097]) i.e., a cosmetic.
As such, claim 15 is rejected as prima facie obvious.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Motoki and Jihyun et al. as applied to claims 4-5, 8, and 15 above, and further in view of Park et al. (KR 2018-0098773; of record).
The teachings of Motoki and Jihyun et al. have been set forth above.
Claim 11 is drawn to the powder of claim 4, wherein the hydrophobic coat comprises disodium stearoyl glutamate (Applicant’s elected species).
Motoki and Jihyun et al. do not teach disodium stearoyl glutamate.
However, 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) and the hydrophobic surface coating is disodium stearoyl glutamate (Pg. 5 eighth paragraph).
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 Motoki and Park et al. to include disodium stearoyl glutamate as the hydrophobic coating. It would have been obvious to substitute one hydrophobic coating suitable for use with metal oxides in cosmetic compositions for another, with a reasonable expectation of success.
As such, claim 11 is rejected as prima facie obvious.
Response to Arguments
Applicant's arguments filed 30 September 2025 have been fully considered but they are not persuasive.
Applicant argues on pg. 7 that the nonionic surfactant of Motoki and Jihyun et al. is used as a hydrophobic first coat agent, not as a hydrophilic second coat agent as instantly claimed.
This argument is not persuasive. Motoki teaches PEG-30 glyceryl isostearate as being added to a mixture including silicone-treated mica, silicone-treated talc, silicone-treated iron oxide, and silicone-treated titanium oxide. These silicone treated powders do not read on the inorganic powder base material of the instant claims, but read on the inorganic powder base material and a hydrophobic coat (silicone) that covers the hydrophobic coat, as taught by Motoki in par. [0030]. As the powder already has a hydrophobic silicone coat, the carbon chain moieties of the nonionic surfactant would be associated with the hydrophobic silicone coating, and the hydrophilic moiety of the surfactant would be exposed to the outside. As such, the PEG-30 glyceryl isostearate is the second coat agent as recited in the instant claims, rendering the instant claims prima facie obvious.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/PAUL HOERNER/Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611