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 .
Response to Arguments
The objections of claim 1 are withdrawn. However, a new objection of claim 27 follows below.
Applicant's arguments filed August 17th, 2026 have been fully considered but they are not persuasive.
The Applicant argues that in Suzuki et al. the Office relies on Nε-lauroyl-L-lysine and Nε-octanoyl-L-lysine in Table 6 as support for allegedly teaching the claim limitation in Claim 1 of "(d) at least one selected from (d1) amino acids having an isoelectric point of 7.5 to 11." A similar reading of Table 8 is applied to Claim 9. However, these compounds of Suzuki et al. instead fall under the claim limitation of "(a) at least one selected from N-acyl amino acids having a carbon chain length of C8 to C22 and salts thereof," and thus Suzuki et al. does not teach these aspects of the compositions of the claims (Remarks, page 10). The Examiner respectfully disagrees and contends that lauroyl lysine or octonoyl lysine meet the limitation of “amino acids”, being N-acyl amino acids, and they have a lysine group which has an isoelectric point of 7.5 to 11. Thus, they meet the limitation of “amino acids having an isoelectric point of 7.5 to 11” and nothing in the claim otherwise restricts lauroyl lysine or octonoyl lysine from meeting this limitation. Thus, the argument is not persuasive.
The Applicant argues regarding the limitation in Claim 1 of "(ii) mixing 0.001 to 20 parts by mass of a surface treating agent composition based on 100 parts by mass of the powder with the powder," that the Office asserts that the specification contains no disclosure of any unexpected results arising from this numerical range, and therefore alleges that this parameter is arbitrary and obvious. However, the present specification states that "[b]y using the surface treating agent composition in such an amount, the steps of washing, filtering, drying, and the like of the treatment powder can be omitted" See page 11, lines 27-28. Further, Suzuki does not teach or suggest that, by using the surface treating agent composition in such an amount, the steps of washing, filtering, drying, and the like of the treatment powder can be omitted (Remarks, page 10). This is not found to be persuasive because it is well-settled that, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). No such comparison is present in the instant specification, and thus this argument is not persuasive.
The Applicant further argues that Suzuki et al. discloses that an oil agent, a surfactant (corresponding to component (a) of present Claim 1), an ultraviolet absorber, an oil dispersing agent, and a humectant are mixed and melted, and then components (A) to (B) (corresponding to component (a) of present Claim 1) and component (C) (corresponding to the powder of present Claim 1) are added and dispersed to prepare an oil phase and Suzuki et al. also discloses that a polyhydric alcohol (corresponding to component (b) of present Claim 1), a water-soluble polymer, a preservative, and a base are added to water (corresponding to component (c) of present Claim 1) and dissolved by heating to prepare an aqueous phase. Thus, Suzuki et al. does not teach or suggest any step of preparing the surface treating agent composition containing components (a) to (d) of Claim 1 and then mixing the surface treating agent composition with a powder to surface-treat the powder (Remarks, page 11). The Applicant has not provided specific locations as to where the above is disclosed in Suzuki et al. (presumably, this is regarding para. [0146] of Suzuki et al.), but as best understood, the Examiner respectfully contends that the claim does not preclude other ingredients (which is at least one reason why “consisting” language was suggested in the previous Office action) and the claim does not explicitly specify an order of mixing or adding ingredients. Thus, a surface treating agent composition could be provided with other components and still meet the claim limitations. Also, required components could be provided with other components (including the powder) and still meet the claim limitation. Suzuki et al. teaches providing the claimed ingredients of the surface agent composition (combining oil and aqueous phases, para. [0146]) and mixing of the claimed ingredients and the powder (para. [0146] and Table 6). It is noted that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, the argument is not persuasive.
Also, it is noted that (insofar as it may apply), selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
The Applicant argues that regarding the limitation in Claims 1 and 9 that "the surface treating agent composition has a transmittance at a wavelength of 660 nm of 80% or more," the Office alleges that Suzuki et al. satisfies this requirement because Suzuki allegedly meets the composition of the present claims and is produced by a similar method. However, as discussed above, Suzuki et al. does not satisfy at least component (d) and step (ii). Thus, Suzuki does not meet the composition of the present claims for any expectation that such transmittance would arise. Moreover, the specification states that "[b]y setting the transmittance of the surface treating agent composition in such a range, the oil dispersibility of the treatment powder can be improved." See page 11, lines 15-16 of the specification. In contrast, Suzuki et al. does not evaluate transmittance, and therefore does not appear to provide any motivation to optimize the transmittance at a wavelength of 660 nm (Remarks, page 11).
The Examiner respectfully disagrees. First, lauroyl lysine and octanoyl lysine contain no chemical structure which would be expected to absorb visible light in solution, these are at least implicitly disclosed in the Applicant’s specification (see page 7, lines 7-25) and the mixture of Suzuki et al. either meets the limitation or a portion of the mixture comprising the surface treating agent composition meets the limitation as where 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 and “Products of identical chemical composition cannot have mutually exclusive properties.” See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01. Otherwise, Suzuki et al. does provide motivation for optimizing the composition to have the claimed transmittance in order to improve “natural translucency” (Abstract) which would include visible colors including red light. Thus, the argument is not persuasive.
The Applicant argues that although Grune states that components other than the powder/particles are colorless, such components are not necessarily transparent. In addition, Grune does not mention a transmittance at a wavelength of 660 nm. Hata, on the other hand, provides titanium oxide powder having excellent red-light selective transmission while maintaining hiding power by firing titanium oxide having needle-like projections on the particle surface at 500 to 800°C. Accordingly, neither Grune nor Hata appears to provide a motivation to optimize the transmittance at a wavelength of 660 nm. The teachings of other references do not cure the deficiencies of the prior art discussed above (Remarks, page 12).
The Examiner respectfully disagrees because Grune states the chemicals are colorless “because they do not contain any visible light-absorbing chemicals” (para. [0046]) and are therefore transparent to visible light which includes red light and Hata provides motivation by identifying red light transmission as the problem to be solved (Abstract, para. [0010]). The 660 nm wavelength falls within the red light spectrum. Thus, the argument is not persuasive.
Claim Objections
Claim 27 recites “. A surface” in line 1 and the “.” should be removed. It is also suggested to amend line 15 as “….15% by mass;
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 5, 7, 9, 11-21, 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 20190060199) in view of Grune (US 20120263661) and Hata (US 20180371257).
Regarding claim 1, Suzuki et al. discloses a surface treatment method for a powder, the method comprising: (i) providing a surface treating agent composition (a composition which is mixed with powder and thus coating/treating the surface of the powder) wherein the surface treating agent composition contains the following components (a)-(d): (a) at least one selected from N-acyl amino acids having a carbon chain length of C8 to C22 and salts thereof (N-lauroyl glutamate, Table 6), (b) at least one selected from monohydric and polyhydric alcohols (ethanol and 1,3-butylene glycol, Table 6), (c) water (Table 6), and (d) at least one selected from amino acids having an isoelectric point of 7.5 to 11 (lauroyl-lysine and octanoyl-lysine, Table 6).
Suzuki et al. does not explicitly disclose mixing 0.001 to 20 parts by mass of the surface treating agent composition based on 100 parts of the powder with the powder. However, the examiner has found that the specification contains no disclosure of any unexpected results arising therefrom, and that as such the parameters are arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, because where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen parameters/variables are critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
Further, Suzuki et al. discloses that a wide and overlapping range of concentrations of the amino acids relative to the powder may be used (para. [0017]) and Suzuki et al. teaches an embodiment using a relatively large amount of powder relative to other components (Table 5).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein the method further includes (ii) mixing 0.001 to 20 parts by mass of the surface treating agent composition based on 100 parts by mass of the powder with the powder.
The person of ordinary skill would have found it obvious to mix such an amount in order to coat products which are mostly powder such as loose foundation powder (para. [0142]).
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the proportions taught by Suzuki et al. (para. [0017]) overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that:
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” See In re Peterson, 65 USPQ2d 1379 (CAFC 2003) and MPEP 2144.05.
Suzuki et al. further teaches that the process includes (iii) adding an acidic liquid, followed by mixing (para. [0063]).
Presumably Suzuki et al. has high transmittance in the visible spectrum including 660 nm (“natural translucency”, para. [0009]), but Suzuki et al. is silent as to a transmittance at 660 nm.
However, Suzuki et al. meets the claimed composition (the portion of the components in Table 6 comprising components (a)-(d)) and where 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 and “Products of identical chemical composition cannot have mutually exclusive properties.” See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01.
Therefore, the composition of Suzuki et al. would have a transmittance at a wavelength of 660 nm of 80% or more.
Otherwise, Grune further teaches that sunscreens containing particles have color due to the particles/powder (para. [0049]) rather than other ingredients whereas those which do not contain particles are transparent (para. [0046]). Therefore, Grune teaches the ingredients besides the powder/particles are transparent and would not significantly absorb or reflect red light and would be expected to meet the claimed transmittance. Further, Hata teaches improving red light transmission of powder (Abstract, and it is noted that this also indicates that powder is the ingredient which causes the blocking of red light) for use in cosmetics such as sunscreen (para. [0051]).
Therefore, assuming arguendo that Suzuki et al. does not disclose a transmittance at a wavelength of 660 nm of 80% or more as an intrinsic property, the person of ordinary skill in the art would have been motivated to optimize the concentrations of the components of the composition to increase red light transmittance to at least 80% at a wavelength of 660 nm, particularly in view of the fact that:
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” See In re Peterson, 65 USPQ2d 1379 (CAFC 2003) and MPEP 2144.05.
Regarding claim 3, as discussed above for claim 1, Suzuki et al. discloses an overlapping range (para. [0017]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein the method further includes (ii) mixing 0.1 to 20 parts by mass of the surface treating agent composition based on 100 parts by mass of the powder with the powder.
The person of ordinary skill would have found it obvious to mix such an amount in order to coat products which are mostly powder such as loose foundation powder (para. [0142]).
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the proportions taught by Suzuki et al. overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that:
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” See In re Peterson, supra and MPEP 2144.05.
Regarding claim 5, Suzuki et al. does not expressly disclose citric acid or sulfuric acid in the composition (of Table 6).
However, Suzuki et al. teaches that citric acid may be added (para. [0071]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein the method further comprises adding citric acid.
The person of ordinary skill would have found it obvious to use citric acid to adjust the pH (Suzuki et al., para. [0071]) such as if a batch is found to be too basic.
Regarding claim 7, Suzuki et al. discloses wherein the powder is at least one selected from the group consisting of resin powders, silicon-containing powders, metal oxides, carbon-containing powders, fluorine-containing powders, metal salts, boron-containing powders, composite powder crystals, and non-crystalline powders (titanium oxide, Table 6).
Regarding claim 9, Suzuki et al. discloses a surface treating agent composition (a composition which is mixed with powder and thus coating/treating the surface of the powder) comprising the following components (a) to (d): (a) at least one selected from N-acyl amino acids having a carbon chain length of C8 to C22 and salts thereof (sodium N-stearoyl glutamate, Table 8), (b) at least one selected from monohydric and polyhydric alcohols (glycerol and 1,3-butylene glycol, Table 8), (c) water (Table 8), and (d) at least one selected from amino acids having an isoelectric point of 7.5 to 11 (arginine, lauroyl-lysine, and octanoyl-lysine, Table 8).
Presumably Suzuki et al. has high transmittance in the visible spectrum including 660 nm (“natural translucency”, para. [0009]), but Suzuki et al. is silent as to a transmittance at 660 nm.
However, Suzuki meets the claimed composition (the portion of the components in Table 8 comprising components (a)-(d)) and where 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 and “Products of identical chemical composition cannot have mutually exclusive properties.” See In re Spada, supra and MPEP 2112.01.
Therefore, the composition of Suzuki et al. would have a transmittance at a wavelength of 660 nm of 80% or more.
Otherwise, Grune further teaches that sunscreens containing particles have color due to the particles/powder (para. [0049]) rather than other ingredients whereas those which do not contain particles are transparent (para. [0046]). Therefore, Grune teaches the ingredients besides the powder/particles are transparent and would not significantly absorb or reflect red light and would be expected to meet the claimed transmittance. Further, Hata teaches improving red light transmission of powder (Abstract, and it is noted that this also indicates that powder is the ingredient which causes the blocking of red light) for use in cosmetics such as sunscreen (para. [0051]).
Therefore, assuming arguendo that Suzuki et al. does not disclose a transmittance at a wavelength of 660 nm of 80% or more as an intrinsic property, the person of ordinary skill in the art would have been motivated to optimize the concentrations of the components of the composition to increase red light transmittance to at least 80% at a wavelength of 660 nm, particularly in view of the fact that:
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” See In re Peterson, supra and MPEP 2144.05.
The person of ordinary skill in the art would have been motivated to increase red light transmittance (Hata, Abstract) in order to improve skin health or to increase visible light transmittance (including red light at 660 nm wavelength) to improve the appearance of the cosmetic on the skin (make more transparent, Grune, pars. [0046] and [0049]).
Regarding claim 11, Suzuki et al. discloses wherein a concentration of (a) in the surface treating agent composition is 4 to 25% by mass (5%, Table 8).
Regarding claim 12, Suzuki et al. discloses a concentration of (b) in the surface treating agent composition is 3-80% by mass in that Suzuki et al. discloses that alcohols are 2.5% of the total including powder (Table 8) and comprise about 7.5% by weight of the composition components (a)-(d) ([2.5 / (24+2.5+2.01+5)]*100 = 7.5%).
Otherwise, Suzuki et al. teaches adding alcohols (ethanol) as solvents (para. [0071]) or humectants (para. [0144]) and teaches embodiments comprising alcohols in the surface treating agent composition between 3 to 80% by mass (e.g. Table 5).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein a concentration of (b) in the surface treating agent composition is 3 to 80% by mass.
The person of ordinary skill in the art would have found it obvious to increase the alcohol content from 2.5% to 3 to 80% by mass in order to achieve the predictable result of altering the thickness or retaining water.
Regarding claim 13, Suzuki et al. discloses wherein a concentration of (c) in the surface treating agent composition is 3 to 80% by mass (Table 8).
Regarding claim 14, Suzuki et al. discloses wherein a concentration of (d) in the surface treating agent composition is 0.5 to 15% by mass (2.01/ (24+2.5+2.01+5)]*100 = 6%).
Regarding claim 15, Suzuki et al. discloses wherein a solid content concentration in the surface treating agent composition is 10 to 23% by mass (water and the alcohols are liquid and the amino acid components are solid before being mixed into solution, using values from Table 8: [7.01/(24+2.5+5+2.01)]*100 = 21%).
Regarding claim 16, Suzuki et al. discloses wherein (a) in the surface treating agent composition includes at least one selected from myristoyl glutamic acid, sodium myristoyl glutamate, palmitoylglutamic acid, sodium palmitoylglutamate, stearoyl glutamic acid, sodium stearoyl glutamate, disodium stearoyl glutamate, and sodium oleoyl glutamate (stearoyl glutamic acid, Table 8).
Regarding claim 17, Suzuki et al. discloses wherein (b) in the surface treating agent composition includes at least one selected from ethanol, 2-propanol, glycerin, pentanediol, dipropylene glycol, 1,3-butylene glycol, and pentylene glycol (1,3-butylene glycol, Table 8).
Regarding claim 18, Suzuki et al. discloses wherein (d) in the surface treating agent composition includes at least one amino acid selected from histidine, lysine, and arginine (arginine, Table 8).
Regarding claim 19, Suzuki et al. does not expressly disclose sodium hydroxide, potassium hydroxide, sodium carbonate, potassium carbonate, and sodium hydrogen carbonate in the composition.
However, Suzuki et al. teaches that potassium hydroxide or sodium hydroxide may be added (para. [0071]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein the composition further comprises at least one selected from sodium hydroxide, potassium hydroxide, sodium carbonate, potassium carbonate, and sodium hydrogen carbonate.
The person of ordinary skill would have found it obvious to use potassium hydroxide or sodium hydroxide to adjust the pH (Suzuki et al., para. [0071]).
Regarding claim 20, Suzuki et al. does not expressly disclose the composition includes at least one selected from fatty acids having a carbon chain length of C8 to C22 and salts thereof.
However, Suzuki et al. teaches fatty acids having a carbon chain length of C8 to C22 may be added (“myristic acid, palmitic acid, stearic acid , oleic acid etc”, para. [0071]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein the composition further comprises at least one selected from fatty acids having a carbon chain length of C8 to C22 and salts thereof.
The person of ordinary skill would have found it obvious to add fatty acid as an emulsifier and/or to thicken the cosmetic or assist in moisture retention.
Regarding claim 21, the combined teaching of the above-cited references for claim 1 disclose a powder treated by the method according to claim 1 (see comments for claim 1 above).
Regarding claim 24, Suzuki discloses a cosmetic composition comprising: the powder according to claim 21 (Abstract, see comments for claim 21 above).
Regarding claim 26, Suzuki et al. discloses the acyl component constituting the N-acyl group of (a) is selected from the group consisting of: myristoyl groups, palmitoyl groups, stearoyl groups, behenoyl groups, palmitoleoyl groups, oleoyl groups, and a linoleoyl group (stearoyl, Table 8).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 20190060199) in view of Grune (US 20120263661) and Hata (US 20180371257) as applied to claim 1 above and in further view of Kwon et al. (US 20210361554A1).
Regarding claim 2, Suzuki et al. does not disclose dropping or spraying.
However, Kwon et al. discloses a surface treatment method (“adsorbed on surface”, abstract) for a cosmetic powder (abstract) and Kwon et al. discloses the method may be completed using wet (para. [0018]) or dry methods (para. [0019]) wherein the wet method involves mechanical mixing (stirring, homogenizing, para. [0018]) and the dry method involves spraying (para. [0019]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein in step (ii), the surface treating agent composition is mixed by spraying (Kwon et al., para. [0019]) as a substitute for mechanical mixing (Kwon et al., pars. [0018]-[0019], claim 7).
The person of ordinary skill in the art would have found it obvious to use a dry process which includes spraying (Kwon et al., para. [0019]) and thereby achieve the predictable and equivalent result of mixing a composition (Kwon et al., claim 7).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 20190060199) in view of Grune (US 20120263661) and Hata (US 20180371257) as applied to claim 1 above and in further view of Suzuki (applicant provided translation of JP 2018008910A).
Regarding claim 4, Suzuki et al. does not expressly disclose a mixer.
However, Suzuki discloses a surface treatment method for a powder (zinc oxide nanoparticles, abstract), the method comprising: mixing a surface treating agent with powder (zinc oxide is mixed with N-acyl amino acid, para. [0022]), (iii) adding an acidic liquid (para. [0023] or para. [0052]), followed by mixing (para. [0023]) and Suzuki further teaches the mixing is performed using a mixer selected from the group consisting of high-speed stirring type mixers, container rotary type mixers, container rotary type mixers with a stirrer, mechanical stirring type mixers, airflow stirring type mixers, and compression/shear/impact type mixers (propeller mixer at 1,500 rpm, para. [0067], broadly meets at least “high-speed stirring type mixers” and “mechanical stirring type mixers”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein a high-speed stirring type mixer or mechanical stirring type mixer is used in steps (ii) and (iii).
The person of ordinary skill would have found it obvious to select a known mixer to produce the predictable result of mixing a composition.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 20190060199) in view of Grune (US 20120263661) and Hata (US 20180371257) as applied to claim 1 above and in further view of Montoya et al. (US 20190183751A1).
Regarding claim 6, Suzuki et al. teaches adding acid (such as hydrochloric acid or the like, para. [0063], or citric acid for adjusting pH, para. [0071]), but is silent as to the amount of acidic liquid.
However, the person of ordinary skill would have found it obvious to select any amount needed to adjust the pH to the desired level or to add an amount determined through routine experimentation, such as 0.01 to 15 parts by mass to achieve the desired result. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, Montoya et al. discloses coating powders/particles (abstract) used in cosmetic/sunscreen (para. [0136]) and Montoya et al. further teaches adding a pH adjuster in an amount of 0.015 parts by mass which corresponds to about 0.8 parts by mass based on 100 parts by mass of the powder (which would include first mica, second mica, and the pearlescent pigments, Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein in the step (iii), the acidic liquid is mixed in an amount of 0.01 to 15 parts by mass (such as 0.8 as discussed above) based on 100 parts by mass of the powder.
The person of ordinary skill in the art would have found it obvious to use known relative quantities and thereby achieve the predictable result of adjusting pH.
Further, in regard to the relative amount of acidic liquid, the examiner has found that the specification contains no disclosure of any unexpected results arising therefrom, and that as such the parameters are arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, because where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen parameters/variables are critical. See In re Woodruff, supra and MPEP 2144.05(III).
With respect to the limitation of the acidic liquid amount range, it would have been obvious to one of ordinary skill in the art at the time of the invention to have conducted the method of Suzuki et al. with the range recited in the instant claims, which are now considered at most an optimum choice, lacking any disclosed criticality.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 20190060199) in view of Grune (US 20120263661) and Hata (US 20180371257) as applied to claim 1 above and in further view of Kenji et al. (previously attached translation of applicant disclosed JP 2019099480A).
Regarding claim 8, Suzuki et al. is silent as to a drying step without using power or an apparatus.
However, Kenji et al. teaches a surface treatment method for a metal oxide powder where the coated powder has an oil and aqueous component (para. [0005]) where the aqueous component includes monohydric or dihydric alcohols (para. [0011]) and Kenji et al. teaches that a drying step is omitted when using a wet method.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Suzuki et al. wherein a wet method is used which omits a drying step such that the method is “free of a drying step using power and an apparatus”.
The person of ordinary skill in the art would have found it obvious to use a wet method where a drying step is omitted to simplify the process (eliminate drying time or equipment).
Allowable Subject Matter
Claim 28 is allowed.
Claimed 27 is objected to as discussed above, but would be allowable upon resolution of the objection.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record discloses surface treating agent compositions or mixing processes with surface treating agent compositions comprising N-acyl amino acids with carbon chain lengths of C8-C22 or salts thereof, monohydric or polyhydric alcohols, water and amino acids having an isoelectric point of 7.5-11.
However, the prior art of record did not reasonably disclose, teach or otherwise suggest compositions or mixing processes with compositions consisting of:
- N-acyl amino acids with carbon chain lengths of C8-C22 or salts thereof;
- One or more alcohols selected from ethanol, 2-propanol, pentanediol, dipropylene glycol, 1,3-butylene glycol, and pentylene glycol;
- Water;
- One or more amino acids selected from histidine, lysine, and arginine.
Where the composition may also consist of:
- One or more of sodium hydroxide, potassium hydroxide, sodium carbonate, potassium carbonate, and sodium hydrogen carbonate;
Fatty acids having a carbon chain length of C8 to C22 and salts thereof.
Wherein the total amount of the one or more of histidine, lysine, and arginine is present in the surface treating agent composition in amount of 0.5 to 15% by mass.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK M MCCARTY whose telephone number is (571)272-4398. The examiner can normally be reached Monday - Thursday 9:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.M.M./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774
