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 .
This office action is in response to the reply filed 8/7/2025
Election/Restriction
During a telephone conversation with Clifford Chi on 3/25/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-6 and 11-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant did not affirm this election on the response filed 8/7/2025. Applicants are asked to please affirm this election in the next response.
Priority
The certified English translation of CN priority document 20210162074.4 has been received and considered by the examiner.
The instant claims are considered to have an effective filing date of 2/5/2021.
Response to Arguments
In view of the filed certified English translation of CN priority document 20210162074.4, the rejection over CN’105 is withdrawn.
Regarding the 103 rejection, Applicant argues that JP’178 teaches amounts of lauroyl lysine and silane coupling agent that is different from the claimed amounts.
This is not persuasive as the amounts of JP’178 overlap with the claimed ranges and overlapping ranges are prima facie obvious absent evidence of criticality.
Applicant argues that JP’178 does not teach the limitations regarding the size of the different powders and the creation of a film layer with the silane coupling agents.
Applicants are directed to the new rejection below wherein these new limitations are addressed.
Applicant argues that Brun does not teach the limitations of the claims.
This is not persuasive as Brun is simply a supportive reference cited to teach well known particle sizes of organic pigments used in cosmetics. The remaining limitations of the claims are addressed by other references primarily JP’178.
Applicant remarks that the pigments of Geissler comprise at least 3 layers and do not include a silane coupling agent as claimed and does not teach other claimed limitations and the mirror effect of Geissler is different from that of the amended claims.
This is not persuasive as the rejection is based on a combination of references and Geissler is cited to make obvious the directionality of the pigments in the cosmetic, all of the limitations are addressed by the other references primarily JP’178. Regarding the mirror like effect of Geissler, while this is different, Geissler nonetheless teaches that the effect pigments (i.e. plate-like pigments) act as a multiplicity of small mirrors and are outstandingly able to adopt orientation in the application medium, and as the instant modified powdered are surface treated with flaky and flat pigments (i.e. plate-like pigments), it would have been obvious to directionally orient the pigments in the cosmetic of JP’178 to evoke a pleasing visual impression in a viewer.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “and form a mirror effect.” The claim should read “and forms a mirror effect.” Appropriate correction is required.
New Claim Rejections - 35 USC § 112
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 1 and 5-6 are 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 1 recites “a part of the … silane coupling agents are…” this renders the claim indefinite as it’s unclear if more than one silane is required or if the silane associates with itself to form the film layer. This renders the metes and bounds of the claim unclear.
Claims 5-6 are rejected in view of their dependency on claim 1.
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.
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.
Claim(s) 1, 5-6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2008169178, Ajinomoto, Geissler (US 2010/0196296), Brun (US 2007/0245500), as evidenced by JP2010132591. JP’591 is newly cited.
JP’178 discloses a cosmetic pigment and a cosmetic comprising said pigment [0001].
Regarding claim 1: The cosmetic pigment is surface treated with an N-acylamine acid, such as N ε-lauroyl lysine (herein referred to as lauroyl lysine) [0012-0013] and then surface treated with a perfluoroalkylalkoxysilane such as tridecafluorooctyltrimethoxysilane [0015-0016]. Examples of pigment include mica and sericite (both pearlescent pigments). This reads on lauroyl lysine being located on the surface of the pearlescent powder.
Example 5 of JP’178 teaches a pigment comprising mica or sericite having a surface coating of lauroyl lysine and tridecafluorooctyltrimethoxysilane.
JP’178 teaches the lauroyl lysine to be commercially available by Ajinomoto Co. Inc. under the trade name Aminohope LL. Ajinomoto teaches Amihope LL has a flat, hexagonal and crystalline structure which gives it a very smooth, soft and silk feel (pg. 11), thus the use specifically of Amihope LL is prima facie obvious as it gives it a very smooth, soft and silk feel. This reads on flake-shaped structure.
JP’178 teaches the lauroyl lysine to be coated onto the pigment powder in amounts of 0.1-30%, preferably 0.5-10% based on the weight of the pigment powder [0021]. JP’178 teaches the tridecafluorooctyltrimethoxysilane to be coated onto the pigment powder in amounts of 0.1-30%, preferably 0.5-10% based on the weight of the pigment powder [0021].
Regarding claims 5-6: JP’178 teaches surface treatment with tridecafluorooctyltrimethoxysilane.
Regarding claim 11: JP’178 teaches a cosmetic comprising said pigment [0001].
As discussed above, JP’178 teaches the lauroyl lysine to be located on the surface of the pearlescent powder, however, JP’178 does not teach the silane coupling agent to associate with itself to form a film layer and fix the lauroyl lysine onto the surface.
The instantly published specification teaches that the modified powder can be made by mixing the pearlescent powder, the silane coupling agent and the lauroyl lysine powder to obtain a mixture and heating the mixture. The instant specification also teaches that the pearlescent powder and lauroyl lysine powder can be first mixed together and then the silane coupling agent can be added, so as to prevent the silane coupling agent from being connected to the surface of the pigment and affecting the coating effect of the lauroyl lysine powder on the surface of the pearlescent powder [0041-0042]. Example 1 of the instant specification teaches a method of making a powder wherein the lauroyl lysine and pearlescent pigment were mixed, then the silane was added and mixed, then the mixture was heated. This resulted in a powder wherein the lauroyl lysine powder was located on the surface of the pearlescent powder, the silane coupling agent was connected to the pearlescent powder via covalent bounds, parts of the silane coupling agent were associated with each other to form a film and the silane coupling agent and the lauroyl lysine were distributed alternately with each other [0059-0060].
JP’178 teaches the cosmetic pigment to be made by mixing the lauroyl lysine and titanium oxide (i.e. cosmetic pigment which could also be mica or sericite as discussed above) and the mixture is stirred thoroughly. The perfluoroalkylalkoxysilane is added and stirred [0027] and teaches that after adding the silane the stirring is done at high speed and is heated to 80-250° to remove water [0020]. As JP’178 teaches the steps of first mixing the pearlescent powder and lauroyl lysine, then adding the silane coupling agent and then heating, this is expected to results in a reaction between the individual components that results in a modified powder having the structure discussed above (i.e. silane coupling agent was connected to the pearlescent powder via covalent bounds, parts of the silane coupling agent were associated with each other to form a film and the silane coupling agent and the lauroyl lysine were distributed alternately with each other).
However, the above references do not teach the pigment to be directionally distributed in the cosmetic.
Geissler discusses multilayer, metallic, mirrorlike pigments [0001] which can be used in industries such as cosmetics [0010]. Geissler teaches that effect pigments, specifically platelet-like pigments, act as a multiplicity of small mirrors and are outstandingly able to adopt orientation in the application medium.
The effect pigments, then, are not of spherical but rather of planar design. The light reflected from the various layers of the layer structure of the effect pigments of the invention is reflected directionally by virtue of the planar structure of the effect pigments. In order to evoke a pleasing visual impression in a viewer, it is essential that the pigments adopt an orientation approximately plane-parallel with respect to the substrate surface, so that the incident light is reflected directionally by all the pigments, i.e., is not scattered in the different directions [0050].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the above references and directionally orient the pigments in the cosmetic of JP’178 to evoke a pleasing visual impression in a viewer. One of skill in the art would have a reasonable expectation of success as JP’178 teaches pearlescent pigments coated with lauroyl lysine having a crystalline flaky structure.
However, the above reference do not teach the size of the lauroyl lysine powder to be smaller than the pearlescent powder.
Brun discloses a cosmetic composition (Abs). Brun teaches that use of organic pigments which are substantially spherical and have sizes ranging from 0.1-30 µm, such as mica, which can be surface treated with treatments including lauroyl lysine treatment and fluorosilane treatments, etc. These treatments can be added to the surface of the pigments by evaporation of solvent, chemical reaction between the molecules of the surface agent or creation of a covalent bond between the surface agent and the pigments [0072, 0075, 0146, 0153 and 0158]. As evidenced by JP’591, Amihope LL has an average particle size of major axis 12 μm, minor axis 10 μm, thickness 0.4 μm (pg. 7).
It would have been prima facie obvious to a skilled artisan to use sizes of mica such as those taught by Brun (i.e. 0.1-30 µm) in the formulation of JP’187 as its prima facie obvious to use known size ranges for similar purposes (i.e. cosmetics comprising surface treated pigments). As discussed above, amihope LL has an average particle size of major axis 12 μm, minor axis 10 μm, thickness 0.4 μm and as the prior art teaches amihope LL to surface treat mica, it would have been prima facie obvious to optimize the size of the pigments to achieve a desired degree of surface treatment.
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613