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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/05/2025 has been entered.
Response to Amendment
The Amendment filed 07/15/2025 has been entered. Applicant’s amendments are in response to in the Final Office Action mailed 04/18/2025. Applicant’s claims have been amended to include a further limitation such that “and the (A) non-elastic spherical powder constitutes 10 to 30% by mass of all powders included in the cosmetic” has been added to independent claim 1, and thus, the rejection is modified with this is in mind. Furthermore, SpecialChem has been found in a search and applied to the rejection below.
The Examiner further acknowledges the following:
Claims 1-4 are pending.
Claims 1-4 are presented for examination and rejected as set forth below.
New 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Finjan (US 2014/0154294 A1), and in further view of Kaneko (US20120034281A1) and SpecialChem (Sunsphere L-51; dated 1/17/2019).
Applicant’s claims are directed to a production method for a powdered solid cosmetic.
Finjan teaches a method to make a slurry powder cosmetic composition (abstract). This method allows for even and thorough coating of particles to provide treatment benefits [0003].
Regarding claim 1: Finjan describes a production method of the slurry powder by preparing a slurry (Finjan – claim 14), combining particulates (reads on powder component, for example, spherical silica [0017]) in 1-90 wt% [0015], a silicone gel composition (formed from one crosslinked organosiloxane elastomer and at least one nonpolar oil) [0020], a binder composition, and an alcohol-based composition (solvent made of an alcohol alone or with water) [0067]. Then, the alcohol-based composition is evaporated (Finjan – claim 14) to afford a slurry powder. For the spherical silica amount, "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Finjan teaches it is alternatively desirable to prepare powder compositions in their regular pressed or loose form that are not diluted with alcohol, water, or other solvents (reads on powdered solid cosmetic) [0004]. A person of ordinary skill in the art would understand this to mean a powdered solid cosmetic could be achieved by evaporating residual alcohol from the slurry powder to less than 0.1 wt% [0014] by known methods [0092] so that only the particulates, binder composition, and silicone gel composition remain.
Regarding claim 2: Finjan teaches spherical silica as the powder [0017].
Regarding claims 3 and 4: Finjan teaches that the silicone gel composition can be made from dimethicone/vinyl dimethicone crosspolymer [0026] and silicon oils such as dimethicone can be used to disperse (or swell) the organopolysiloxane polymer [0028-0029, 0054].
In summary, Finjan teaches the elements of the production method of the instant invention. The instant method claimed appears to be little more than the selection of art-known elements according to their known utility within a single prior art reference, teaching the desirability of selecting such components and method steps, and obvious thereby. that the method steps of the instant invention are obvious. Although Finjan provides the skilled artisan the teaching and rationale to combine these elements in the manner claimed, there is still a limitation missing. Finjan does not teach a non-elastic spherical powder having a crushing strength per particle of 30 MPa or higher (instant claim 1).
Kaneko teaches a solid powder cosmetic having an excellent long-lasting makeup effect and the feeling of use (abstract). Kaneko teaches a foundation composition that includes the use of spherical porous silica (Sunsphere L51) ([0140], Table 1).
SpecialChem teaches Sunsphere L-51, as a spherical silica gel that provides excellent tactile feeling in foundations, is safe, improves fluidity, and does not cohere in reference to foundations and make-up products (pg 2).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Finjan’s teachings to use Sunsphere L51 as the spherical silica because it is commercially available and used in topical cosmetics, as taught by Kaneko and SpecialChem. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Furthermore, Sunsphere L51 is safe, improves fluidity, and does not cohere in reference to foundations and make-up products (pg 2). As the applicant’s own disclosure indicates the commercially available Sunsphere L51 is suitable for the invention as shown in the specification [0013-0015], it must inherently also have the required functional properties of instant claim 1 (i.e., crushing strength per particle of 30 MPa or higher and non-elastic). Therefore, selecting Sunsphere L51 as the spherical powder would fulfill the functional requirements of instant claims 1 and 2 related to the non-elastic spherical powder.
Furthermore, since the teachings of spherical silica [0017] in 1-90 wt% amounts [0015] in Finjan is non-limiting, it would be prima facie obvious to have the non-elastic spherical silica powder, as taught by Kaneko, in amounts of 6-25 wt% of the powdered cosmetic, in amounts of 90-100 wt% of the of all spherical powder used, and in amounts of 10-30 wt% in relation to all powders used.
Response to Arguments
Applicants arguments, see pg 3-6, filed 07/15/2025, with respect to the 103 rejection of claims 1-4 have been fully considered but they are not persuasive. The 103 rejection has been modified with respect to amendments made to the claim set and new added claims.
On page 3-5, Applicant argues that a PHOSITA would not predict the effects of incorporating Sunsphere L51 from Kaneko into Finjan’s wet slurry process; thus, there is no motivation to combine (within an obviousness analysis). It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). In the case of the obviousness rejection, Finjan teaches incorporation of spherical silica particles into compositions produced by a wet slurry method, and Kaneko discusses Sunsphere L51 as a suitable spherical silica for topical cosmetics.
Furthermore, with respect to the addition of a non-elastic spherical powder (such as Sunsphere L-51), SpecialChem is referenced which provides explicit motivation to use Sunsphere L51, such that SpecialChem teaches Sunsphere L-51, as a spherical silica gel that provides excellent tactile feeling in foundations (i.e., texture), is safe, improves fluidity, and does not cohere (i.e., dispersibility represents the opposite of particle cohesion) in reference to foundations and make-up products (pg 2). Thus, proper motivation has been applied within the context of an obviousness analysis.
On page 4, Applicant discusses the dry vs wet slurry process such that there would be no reasonable expectation to expect the same advantageous properties from combining the references. Note that: “Applicants are reminded that obviousness does not require absolute predictability. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (indicating that evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness).” Note that proper rationale has been provided to combine Kaneko and Finjan (such that Kaneko specifies a non-elastic spherical silica such as Sunsphere L-51 and also SpecialChem provides advantages of Sunsphere L-51 in cosmetic compositions). Furthermore, both Kaneko and Finjan are analogous to the instant application, as being related to topical cosmetic products. Finally, note that all elements of each prior art reference need not read on the claimed invention, rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). In the obviousness rejection, the portion of Kaneko that is relied on establishes Sunsphere L-51 as a spherical porous silica, which can be incorporated into Finjan’s wet slurry method because Finjan teaches the incorporation of spherical silica as the powder [0017]. The dry process of Kaneko is not relied upon in the obviousness rejection.
With respect to discussion of the dry vs. wet-and-dry processes (in terms of unexpected results), Ogawa (US6972129B1) teaches that a wet slurry method leads to an improvement of impact resistance and dispersibility over dry methods because of the “uniformity of the oil components in the powder components” (even deposition) of the components leading to a product with creamy texture (col 5, lines 24-39; col 6, lines 6-11; col 12, lines 1-13). Note that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Consequently, we must determine whether the results obtained in the closest prior art and those set forth by Applicants are sufficiently different in kind, and not merely in degree, so as to be unexpected by a person of ordinary skill in the art at the time of invention. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (Unexpected results that are probative of nonobviousness are those that are "different in kind and not merely in degree from the results of the prior art") (citation omitted). To summarize, the improved properties (dispersibility, impact resistance, and texture) of the composition from moving from a dry method (Comp Ex 3) to a wet/dry method (Ex 1) [Table 1, 00057] are expected from the teachings of Ogawa.
On page 5, Applicant discusses Table 3. With regard to Applicant’s remarks about Table 3 demonstrating an improvement in “dispersibility and texture”, note that Table 3 merely demonstrates that an increase of the spherical powder in a cosmetic composition leads to an increase in dispersibility and texture.
Morita (US20080138621A1) teaches a general strategy of improving dispersibility and feel (which suggests texture) of a cosmetic by specifying a spherical shape for a particle [0010], as applicable to foundations, cosmetic powders, etc. [0034]. Thus, the result of Table 3 (i.e., improved dispersibility and texture) is likely achieved by incorporation of any spherical particle (in particular, the spherical silica [0017] in 1-90 wt% [0015] taught by Finjan) into the cosmetic compositions produced by the wet slurry method of Finjan.
Furthermore, SpecialChem teaches Sunsphere L-51, as a spherical silica gel (that is a non-elastic spherical silica particle) that provides excellent tactile feeling in foundations (i.e., texture), is safe, improves fluidity, and does not cohere (i.e., dispersibility represents the opposite of particle cohesion) in reference to foundations and make-up products (pg 2). Thus, a PHOSITA would expect an improvement of texture and dispersibility, by incorporating a non-elastic spherical particle like Sunsphere L-51 (that would introduce its advantageous properties as described by SpecialChem) to the cosmetic compositions produced by a wet slurry of Finjan (who generically teaches incorporation of spherical silica particles [0015, 0017]).
Based on the teachings of Morita and Sunsphere, regarding the effect of spherical particles (including non-elastic spherical silica particles such as Sunsphere L-51) on dispersibility and texture, one would expect higher ratios of a spherical powder to non-spherical (or all) powders, as shown in Table 3 (wherein in the examples of Tables 1 and 2, the non-elastic spherical powder is generally always the only spherical powder (100%), but this is not detailed in Table 3), to maintain/improve dispersibility and texture, as demonstrated by the data in Table 3. One could translate the general properties of spherical particles of the Prior Art to the teachings of Finjan because Finjan teaches that slurry powder compositions can be anhydrous, incorporate water or alcohol residue [0014], and thus, represents a wide range of powdered cosmetic compositions (as related to the teachings of spherical particles of the Prior Art; for example, SpecialChem teaches application of Sunsphere L-51 and it advantageous properties to foundations and make-up products).
On page 5-6, Applicant argues the specific ratios recited of the present claims, leading to advantageous properties of the final cosmetic. As discussed above, the method and ingredients are taught by the Prior Art to provide the same beneficial results as claimed by the Applicant. Essentially, the Prior Art teaches that incorporation of a spherical particle powders (including non-elastic spherical silica particles such as Sunsphere L-51) into Finjan’s cosmetic compositions (as produced by a wet slurry method, who also suggests incorporation of spherical silica particles) would lead to an improvement in dispersibility and texture of the final cosmetic.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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/R.P./Examiner, Art Unit 1614 12/15/2025
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614