DETAILED ACTION
Claims 1-4 and 11-13 are pending and under consideration on the merits.
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 the Rejections
The 101 rejection is revised in view of the amendment.
The 102/103 rejection is withdrawn in view of the amendment, but a new 103 rejection is applied over the teachings of a new reference and was necessitated by the amendment.
The double patenting rejection is maintained.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/29/2025 was filed prior to the mailing date of a Final Office Action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, it was considered by the Examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4 and 11-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. Base claim 1 recites a liquid comprising bubbles having a diameter of 80-140 nm, and cosmetic ingredients. The skilled artisan would recognize that nanobubbles having a diameter within the claimed range naturally occur in sea water or river water. See, for example, The Moleaer “About Nanobubbles” page available at https://www.moleaer.com/en-us/nanobubbles, which states as follows:
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The sea water or river water is a “liquid medium” of claims 1-2, and the bubbles will comprise “air” as recited by claims 3 and 11. The water itself is viewed as a cosmetic ingredient of claim 1. Nature itself is a nanobubble generator that generates the bubbles as recited by claim 1. The recitation of claim 1 that the composition has a blood flow enhancement effect merely describes a property also possessed by sea or river water based upon the evidence of record because it comprises the same ingredients recited by the claims and therefore does not distinguish the composition from sea water or river water. The recitation of claim 1 that the bubbles are maintained for at least one month under room temperature does not distinguish the composition from sea or river water, which also will comprise nanobubbles over the same period of time. The recitations of claims 4 and 12-15 are merely intended uses of the composition which do not distinguish the composition from sea water or river water. Therefore, the claims are directed to a product of nature judicial exception and the characteristics of the claimed invention are not markedly different in any way from the natural state of sea water or river water. Claims 1-2 recite a product of nature exception. This judicial exception is not integrated into a practical application because the claims fail to recite any additional elements not present in sea water or river water. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not recite any elements that could integrate the judicial exception into a practical application as they recite intended uses or naturally occurring gases. Consequently, claim 1 is directed to the natural phenomenon judicial exception under 35 USC 101, and dependent claims 2-4 and 11-13 do not recite any elements which would be considered to provide significantly more than the judicial exception.
Response to Applicant’s Arguments
Applicant argues that the amended claims recite a specific bubble diameter and that the bubbles are maintained for at least one month, such that the claims are directed to a composition that is different than naturally occurring nanobubbles.
In response, this is not persuasive because river or sea water will also comprise bubbles within the recited range which will exist in the water for at least a month as discussed in the revised rejection.
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.
Claims 1-4 and 11-13 are rejected under 35 U.S.C. 103 as unpatentable over Bauer (US Pat. Pub. 2016/0236158).
As to claims 1-4 and 11-13, Bauer discloses liquid solutions comprising nanobubbles (paragraph 2) that are generated by a nanobubble generator (paragraphs 9, 11), the bubbles preferably having a size of between about 10-150 nm, and discloses a specific embodiment with a size range of 10-80 nm or 10-150 nm, which reads on the 80-140 nm range recited by claim 1 (paragraphs 21, 37). Bauer teaches that the bubbles are stable and can stay in suspension for over 5 years, which is within the at least one month range recited by claim 1 (paragraph 121). The liquid medium itself is viewed as a “cosmetic ingredient” of claim 1.
The newly added language of prepared by nano bubble generator is product by process language. Claim 1 is directed towards a cosmetic composition comprising a nanobubble-liquid and cosmetic ingredients, wherein the nano-sized bubbles have an average diameter of 80-140 nm. Bauer discloses liquid solutions comprising nanobubbles (paragraph 2) that are generated by a nanobubble generator (paragraphs 9, 11), the bubbles preferably having a size of between about 10-150 nm, and discloses a specific embodiment with a size range of 10-80 nm, which reads on the 80-140 nm range recited by claim 1 (paragraphs 21, 37). Bauer teaches that the bubbles are stable and can stay in suspension for over 5 years, which is within the at least one month range recited by claim 1 (paragraph 121). The claimed prior at product and the instantly claimed composition are identical or substantially identical. In accordance with MPEP §2113 “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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433” Furthermore, according to MPEP §2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
Regarding claim 2, Bauer further discloses that the liquid may comprise water or alcohols (paragraph 35).
As to claims 3 and 11, Bauer further discloses that the bubbles may comprise hydrogen, oxygen, or carbon dioxide (paragraph 36).
Regarding claims 4 and 12-13, Bauer discloses that the composition may be for skin care (paragraphs 137, 141).
As to claims 1-4 and 11-13, Bauer does not further expressly disclose that the composition has a blood flow enhancement effect as recited by claim 1.
As to claims 1-4 and 11-13, the Bauer composition will have a blood flow enhancement effect as recited by claim 1 because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Response to Applicant’s Arguments
Applicant’s arguments will be addressed to the extent they may be relevant to the new grounds of rejection.
Applicant references Nishimura (“D3”) as demonstrating in Figure 7b that during bathing, nano bubbles actually inhibit instead of increasing skin blood flow, relative to micro-sized bubbles, and further cites to Ohnari (“D4”) as showing that blood flow enhancement effects are obtainable only by the use of microbubbles. Applicant asserts that D4 uses a rotational flow method to generate bubbles, and that a skilled artisan would expect that this method would generate nano bubbles simultaneously with microbubbles. Applicant is unaware of any references showing that enhanced blood flow can be achieved using nano bubbles alone, and concludes that the claimed invention therefore has an unexpected effect.
In response, these arguments are not persuasive because Nishimura Figure 7B shows that while microbubbles produced the largest increase in blood flow, the use of nanobubbles (“UB”) also produced increased blood flow versus the baseline at time zero. Additionally, Nishimura and Ohnari do not appear to define the size ranges for the microbubbles and nanobubbles discussed therein. Therefore, it is not possible to extrapolate from their teachings to the properties of the nanobubbles in the composition recited by the claims or disclosed by Bauer at least because it is unknown if the nanobubbles of Nishimura or Ohnari are within the size range recited by the present claims or taught by Bauer. Additionally, the present claims are not in fact limited to a cosmetic comprising nano-sized bubbles, because base claim 1 recites open-ended “comprising” language in the preamble which allows for the presence of additional ingredients beyond those recited. See MPEP 2111.03. Therefore, the claim encompasses a cosmetic comprising both nano-sized and micro-sized bubbles.
Additionally, the Bauer composition will have a blood flow enhancement effect as recited by claim 1 even though Bauer does not expressly disclose this property, because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) “would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
Applicant also argues that the nano bubble generator used in the claimed invention is different than an ordinary nano bubble generator, and the bubble generating method is not the one typically selected by the skilled person.
In response, this argument is not persuasive at least because the language of the claims does not restrict the identity of the nano bubble generator used to generate the bubbles. Prepared by nano bubble generator is product by process language. The product claim is directed towards a cosmetic composition comprising a nanobubble-liquid and cosmetic ingredients, wherein the nano-sized bubbles have an average diameter of 80-140 nm. Bauer discloses liquid solutions comprising nanobubbles (paragraph 2) that are generated by a nanobubble generator (paragraphs 9, 11), the bubbles preferably having a size of between about 10-150 nm, and discloses a specific embodiment with a size range of 10-80 nm, which reads on the 80-140 nm range recited by claim 1 (paragraphs 21, 37). Bauer teaches that the bubbles are stable and can stay in suspension for over 5 years, which is within the at least one month range recited by claim 1 (paragraph 121). The claimed prior at product and the instantly claimed composition are identical or substantially identical. In accordance with MPEP §2113 “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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433” Furthermore, according to MPEP §2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
Applicant also briefly refers to an affidavit to be submitted (see bottom of page 12 of Applicant’s remarks), but the Office has reviewed the file and could not locate any submission that is in the form of an affidavit.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over all claims of copending Application No. 18/218,274, and in view of Kohama et al. (US Pat. Pub. 2006/0284325; of record) where indicated below.
Kohama discloses a composition comprising a liquid medium comprising nano bubbles (paragraphs 7, 13). The liquid medium itself is viewed as a “cosmetic ingredient.” Alternatively, the composition further comprises at least one additive (“cosmetic ingredients”) that is an emulsifying agent, emulsion stabilizer, foaming agent, or alcohol (paragraph 12). Kohama further discloses that the liquid may comprise water or an alcohol (paragraphs 38-40). Kohama further discloses that the gas may be hydrogen, oxygen, carbon dioxide, or air (paragraph 37). Kohama discloses that the composition may be a skin care or hair cosmetic (paragraph 59).
Although the reference claims are not identical to the present claims, they are not patentably distinct because the reference claims recite a cosmetic composition comprising a nano bubble liquid comprising an oil and bubble having a diameter of 5 nm to 500 nm, wherein the bubbles are generated from hydrogen, carbon dioxide, air, or oxygen, wherein the cosmetic is a skin conditioning or hair cosmetic composition.
Regarding claim 2, the reference claims do not expressly recite that the liquid comprises water or ethanol, but it would have been prima facie obvious to use these liquids because Kohama expressly teaches that a cosmetic composition comprising nanobubbles in a liquid medium using air hydrogen, oxygen, or carbon dioxide gases may use as the medium various liquids including water, oils, and alcohol, such that the skilled artisan reasonably would have expected that water may be used in the reference composition instead of oil. Such a modification is merely the simple substitution of one known prior art element for another according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143.
Response to Applicant’s Arguments
Applicant has submitted a terminal disclaimer, but it was disapproved on 10/08/2025 because the Applicant cited on the terminal disclaimer is not cited exactly as cited on the ADS form in its entirety. Therefore, the rejection is maintained.
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 GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600