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 .
Claim Status
Claims 1, 4, 13, 15 and 19-20 are pending.
Claims 2-3, 5-12, 14 and 16-18 have been canceled.
Claims 1, 4, 15 and 19-20 are currently amended.
Claims 1, 4, 13, 15 and 19-20 are currently under consideration.
Claims 1, 4, 13, 15 and 19-20 are rejected.
Acknowledgement of Receipt
This Office Action is in response to the Applicants’ amendments and remarks filed 12/10/2025.
Withdrawn Objections/Rejections
The objection to claim 4 is withdrawn.
New Rejections
Applicant’s amendments have necessitated the following grounds of rejection:
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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 (a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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. Applicants are 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, 4, 13, 15 and 19-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Nagata et al. (US 2012/0128748 A1, cited on IDS) evidenced by Anhui Henghao Technology (Mica, 2022) in view of Hwang et al. (WO 2015/046967, Patenscope MT) herein referenced Nagata, Anhui, and Hwang. Citations from Hwang are from the previously provided document.
Nagata discloses organic-inorganic composite particles that comprise inorganic oxide particles each of which has a cationic charge on the particle surface and polymer molecules which are derived from a natural substance and have an anionic functional group and one or more hydroxyl groups in a molecule, said polymer molecules being electrostatically (i.e., ionically) bonded to surfaces of the inorganic oxide particles ([0020-0021], claim 1). The said inorganic particles are particles in which surfaces of silicon oxide particles each of which has an anionic charge on the particle surface are coated with an oxide or a composite oxide of at least one metallic element selected ([0024], claim 4). Nagata teaches that as the inorganic oxide particles, particles having been subjected to surface treatment for the purpose of controlling the quantity of surface charge are more preferably used ([0024]). Nagata discloses inorganic oxide particles that include silicon oxide particles such as silica particles (i.e., mica powder) ([0053-0054], [0144] Examples 1-5, 10-13).
Nagata discloses a cosmetic containing the organic-inorganic composite and provides a blended powder foundation formulation ( [0046], [0292] Table 3; claim 15, 16). The cosmetic contains the organic-inorganic composite particles at an amount from 0.001 to 40% by weight ([0130], claims 15-16). Nagata provides a blended powder foundation formulation where the inorganic component includes mica ([0292], Table 3). As evidenced by Anhui, mica powder used for surface modification is preferably wet-milled mica powder, and the most effective surface modifier is aminosilane wherein after surface treatment, mica powder can improve the mechanical strength of the material and reduce molding shrinkage (see highlighted portion of document). Therefore, one skilled in the art would be motivated to use mica.
Regarding recitations of “transparent makeup cosmetic composition” and “wherein the composition forms a transparent layer on skin,” if the prior art teaches the identical chemical structure, the ability to form a transparent layer on skin disclosed and/or recited in the claims by applicants, is necessarily present. In light of these teachings and since thin coatings are known in the art to facilitate slow controlled deposition rate to achieve high visible light transmittance, achieving a high visible light transmittance (i.e., transparent layer) and a smooth surface often leads to a low rate of improvement for one or both properties. With that in mind, notably, Applicants acknowledge that “the sample coated with the anionic polysaccharide was smoother with the naked eye compared to the sample that was not coated with the anionic polysaccharide, and the gloss value was higher due to the smooth surface,” (see Spec., pg. 24, lines 12-14; pg. 25, lines 2-6).
Regarding the anionic polysaccharide that is one or more selected from the group consisting of hyaluronic acid (HA), pectin, and fucoidan, Nagata discloses using HA ([0120], [0142], claim 8).
Regarding the 3-aminopropyltriethoxysilane (APTES) in line 14 of claim 1, Nagata discloses the use of an ammonia aqueous solution is disclosed in preparation of inorganic oxide particles having a cationic charge ([0187] Example 6). A skilled artisan would find it obvious to use a cationic silane (e.g., containing amino groups) for this purpose.
Nagata does not expressly teach APTES.
Hwang discloses a sunscreen composition comprising cationic organic-inorganic hybrid particles and anionic polymers that interact ionically ([1], [53-54]; claim 1). Hwang teaches that inorganic metal oxide is surface modified with aminosilane, by introducing at least one primary, secondary, or tertiary amine to the surface of the cationic organic-inorganic hybrid particle in order to exhibit cationic properties ([44], claim 15). Hwang teaches APTES as an aminosilane for surface modifying metal oxides ([34], [48], claims 5-6).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to employ APTES taught by Hwang to modify Nagata’s inorganic oxide particles with expected results. One would be motivated to do so with a reasonable expectation of success because Hwang teaches that utilizing aminosilane introduces a cationic functional group and expands the UV blocking range ([58]).
Regarding the coating amount (i.e., 0.2 to 0.73 %), Nagata teaches that the amount of the polymer molecules to be bonded to the surfaces is from 0.001 to 20% by weight based on the total amount of inorganic oxide particles ([0084]). MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art.
Regarding claim 4, Nagata discloses the preference for polymer molecules with at least one anionic functional group to include a carboxyl group ([0028], claim 7).
Regarding claim 13 (i.e., inorganic powder 91-99.9%), Nagata teaches an amount of inorganic powder that includes mica that is at least 91% ([0292], Table 3). While this amount taught is based on a cosmetic foundation formulation, Nagata teaches adding 5 grams of inorganic particles to a solution of 0.3% hyaluronic acid ([0248-0252]). MPEP 2144.05 states that 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.
Regarding claim 13 (i.e., cationic silane 0.05-4%), Hwang discloses the positively charged control agent (i.e., cationic silane-based) from 0.5 to 40% based on the weight of the final cationic hybrid particle (claims 11, 19). Regarding the positively charged charge control agent, the negatively charged charge control agent may be included in an amount of 0.5 wt % or more based on the weight of the prepared final particles ([51]).
Regarding claim 15 (i.e., 0.1 to 30%), Nagata teaches a cosmetic composition containing organic-inorganic composite particles (i.e., powder) in an amount of 0.001 to 40% by weight (claims 15-16).
Regarding claim 19 (i.e., foundation, compact, concealer), Nagata teaches a foundation ([0132]).
Regarding claim 20, Nagata discloses that the organic-inorganic composite particles are preferably used for skin care cosmetics for moisture retention ([0132]).
Response to Arguments
Applicants’ arguments have been fully considered but they are not persuasive.
Applicants argue that it is sufficiently predictable that the anionic polysaccharide is coated in a very thin layer because instant claim 1 includes a limitation defining the coating amount of the anionic polysaccharide from 0.2 to 0.73% (Remarks, pg. , para. ).
The Examiner respectfully submits that Nagata teaches that the amount of the polymer molecules (i.e., polysaccharide) to be bonded to the surfaces of the inorganic oxide particles are in the range of 0.001 to 20% by weight based on the total amount of inorganic oxide particles ([0084]). MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art.
Applicants argue that the claimed invention exhibits more than a two-fold increase in visible-light transmittance compared with a non-anion-coated sample citing support for this in paragraphs [0111]-[0112] and Fig. 5A in the instant disclosure (Remarks, pg. 6, para. 2). Applicants argue that the purpose of the cited prior art is not shared with that of the present inventors, i.e., to form a transparent cosmetic film/makeup layer (Remarks, pg. 7, para. 1).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., more than a two-fold increase in visible-light transmittance) is not recited in the rejected claim(s). 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).
In response to Applicants arguing that the references do not teach the same purpose or objective as the claimed invention, a claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound albeit a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences in their respective properties which are determinative of nonobviousness. If the prior art compound does in fact possess a particular benefit, even if that benefit is not recognized in the prior art, Applicants’ recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art. Thus, the property possessed by the composition of the instant application, the composition forms a transparent layer on skin, would be possessed by the prior art. Where the claimed and prior art products are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product does not necessarily or inherently possess the characteristics of the instantly claimed products. See MPEP 2112.01.
Applicants argue that each cited reference discloses only a subset of (i) "mica", (ii) "hyaluronic acid, pectin, or fucoidan", and (iii) "3-aminopropyltriethoxysilane" wherein the claimed invention, in combination, these components are what form a transparent makeup layer (Remarks, pg. 7, para. 5).
Nagata evidenced by Anhui teaches mica ([0292]). Hwang teaches APTES (claims 5-6). The Examiner notes that Applicants provide a preparation of HA coated mica and separate preparations of pectin coated mica and of fucoidan coated mica (see Spec., pg. 14, lines 10, 20, 30; Examples 3-5) while the combination that Applicant argues does not appear and such a combination is not recited in the rejected claims.
For these reasons, Applicants’ arguments are found unpersuasive.
Conclusion
All claims under consideration remain rejected; no claims are allowed. 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 extension fee 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 Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 900-500 ET.
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/Karen Ketcham/Examiner, Art Unit 1614 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614