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 . Claims included in the prosecution are claims 1, 3-6 and 11-15.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025 has been entered.
Applicants' arguments, filed 12/16/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
1. Claims 1, 6, 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 930004591 B1, Jun. 1, 1993) (hereinafter Lee) in view of Cosmetics Info (Trihydroxystearin, Aug. 29, 2015), Kuroda (JP 2002322015 A, Nov. 8, 2002), Fukiya et al. (JP 2000273033 A, Oct. 3, 2000) (hereinafter Fukiya), and Schlossman et al. (US 2010/0136065, Jun. 3, 2010) (hereinafter Schlossman).
Lee discloses a cosmetic powder first coated with a moisture retention agent and secondly coated with an oil component, and then with wetting agents (abstract). The moisturizing agent is coated on a cosmetic pigment (8th paragraph of description). The cosmetic powder comprises 0.1 to 5.0% moisturizing agent and 0.2 to 5.0% oil component (9th paragraph of description). A cosmetic may contain the cosmetic powder (1st paragraph of description).
Lee differs from the instant claims insofar as not disclosing wherein the moisturizing agent is trihydroxystearin (i.e., triester of glycerin and hydroxy fatty acids solid at room temperature).
However, Cosmetics Info discloses that when used in skin care formulations, trihydroxystearin slows the loss of water from the skin by forming a barrier on the skin’s surface.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated trihydroxystearin into the cosmetic powder of Lee since it’s a known and effective moisturizing agent as taught by Cosmetics info.
The combined teachings of Lee and Cosmetics Info do not teach wherein the coating is dry coated on the inorganic particulate.
However, Kuroda discloses a coated cosmetic (abstract). Suitable coating treatments include dry coating (¶ [0007]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have dry-coated the trihydroxystearin onto the cosmetic pigment of Lee since it is a known and effective coating method as taught by Kuroda.
The combined teachings of Lee, Cosmetics Info, and Kuroda do not teach wherein, as measured with a viscoelasticity tester, the powder has 50 to 900 g-force/µm2.
However, Fukiya discloses wherein viscoelasticity affects adhesiveness to the skin (abstract).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed viscoelastic value through routine experimentation based on the level of adhesiveness on skin one desires for the cosmetic powder as taught by Fukiya.
The combined teachings of Lee, Cosmetics Info, Kuroda, and Fukiya do not disclose wherein the cosmetic pigment is silica.
However, Schlossman discloses a cosmetic composition comprising a pigment treated with a natural surface modifying agent (claim 1). The pigment may be silica beads (claim 11).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated silica beads into the cosmetic powder of Lee since it’s a known and effective cosmetic pigment as taught by Schlossman.
In regards to instant claim 1 reciting an elastic makeup powder, since the claim recites an elastic coating layer of trihydroxystearin, trihydroxystearin is elastic. Therefore, since it would have been obvious to have incorporated trihydroxystearin onto the powder of Lee, the powder of the prior art is elastic.
2. Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 2010/0136065, Jun. 3, 2010) (hereinafter Schlossman) in view of Yoo et al. (KR 20090121851 A, Nov. 26, 2009) (hereinafter Yoo), Cosmetics Info (Trihydroxystearin, Aug. 29, 2015) (of record), Kuroda (JP 2002322015 A, Nov. 8, 2002) (of record), and Fukiya et al. (JP 2000273033 A, Oct. 3, 2000) (hereinafter Fukiya), as evidenced by BioF (The Magic of the Green Natural Suspension Trihydroxystearin, accessed on May 13, 2025).
Schlossman discloses natural ester, wax, or oil treated pigments and cosmetic products incorporating pigments treated with natural ingredients (¶ [0002]). Suitable pigments include silica beads (claim 11). The pigment is coated with the natural ester, wax, or oil (Examples 1-4). The coated powder may comprise 5% natural ester, wax, or oil (Example 4).
Schlossman differs from the instant claims insofar as not disclosing wherein the coated powder is further coated with trihydroxystearin.
However, Yoo discloses a powder used in color cosmetics. The powder comprises a first coating layer made of a silicon-based surface treatment agent and a second coating layer made of a hydrocarbon-based surface treatment agent on the surface of the first coating layer. The hydrocarbon-based surface treatment can improve moisturizing feeling to keep skin comfortable (abstract).
Cosmetics Info discloses that when used in skin care formulations, trihydroxystearin slows the loss of water from the skin by forming a barrier on the skin’s surface.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have further coated the powder of Sclossman with trihydroxystearin since it is desirable in the art to include a second coating layer to formulate powders to provide moisturization to skin as taught by Yoo and trihydroxystearin is a known and effective moisturizing agent as taught by Cosmetics Info.
One of ordinary skill in the art would have had a reasonable expectation of success of using trihydroxystearin in the powders treated with natural ingredients of Schlossman since, as evidenced by BioF, trihydroxystearin is mainly derived from natural plant extracts (second paragraph).
The combined teachings of Schlossman, Yoo, and Cosmetics Info do not teach wherein the second coating layer is dry coated on the oil coating layer.
However, Kuroda discloses a coated cosmetic (abstract). Suitable coating treatments include dry coating (¶ [0007]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have dry-coated the trihydroxystearin onto the oil coating layer of Schlossman since it is a known and effective coating method as taught by Kuroda.
The combined teachings of Schlossman, Yoo, Cosmetics Info, and Kuroda do not teach wherein, as measured with a viscoelasticity tester, the powder has 50 to 900 g-force/µm2.
However, Fukiya discloses wherein viscoelasticity affects adhesiveness to the skin (abstract).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed viscoelastic value through routine experimentation based on the level of adhesiveness on skin one desires for the cosmetic powder as taught by Fukiya.
In regards to instant claim 5 reciting 3 to 20 parts by weight of the elastic coating layer, since trihydroxystearin is a moisturizing agent, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amount of trihydroxystearin through routine experimentation depending on the level of moisturization desired. 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. See MPEP 2144.05(II)(A).
In regards to instant claim 5 reciting an elastic makeup powder, since the claim recites an elastic coating layer of trihydroxystearin, trihydroxystearin is elastic. Therefore, since it would have been obvious to have incorporated trihydroxystearin onto the powder of Lee, the powder of the prior art is elastic.
3. Claims 3, 4, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Schlossman et al. (US 2010/0136065, Jun. 3, 2010) (hereinafter Schlossman) in view of Song et al. (WO 2018/088656 A1, (May 17, 2018) (hereinafter Song), Cosmetics Info (Trihydroxystearin, Aug. 29, 2015) (of record), Kuroda (JP 2002322015 A, Nov. 8, 2002) (of record), and Fukiya et al. (JP 2000273033 A, Oct. 3, 2000) (hereinafter Fukiya), as evidenced by BioF (The Magic of the Green Natural Suspension Trihydroxystearin, accessed on May 13, 2025).
Schlossman discloses a cosmetic composition comprising a pigment treated with a natural surface modifying agent. Suitable natural surface modifying agents include, without limitation, jojoba ester, hydrogenated jojoba oil, and mixtures thereof (¶ [0010]). Suitable pigments include silica beads (claim 11). The coated pigment may comprise 5% natural surface modifying agent (Example 4).
Schlossman differs from the instant claims insofar as not disclosing wherein the natural surface modifying agent includes trihydroxystearin.
However, Song discloses a color cosmetic composition comprising sericite, synthetic mica, and a spherical powder. The color cosmetic composition has excellent moistness (abstract).
Cosmetics Info discloses that when used in skin care formulations, trihydroxystearin slows the loss of water from the skin by forming a barrier on the skin’s surface.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated trihydroxystearin into the cosmetic composition of Schlossman as a natural surface modifying agent since it is desirable in the art to have cosmetic powders with excellent moistness as taught by Song and trihydroxystearin is a known and effective moisturizing agent as taught by Cosmetics Info.
One of ordinary skill in the art would have had a reasonable expectation of success of using trihydroxystearin as a natural surface modifying agent since, as evidenced by BioF, trihydroxystearin is mainly derived from natural plant extracts (second paragraph).
The combined teachings of Schlossman, Song, and Cosmetics Info do not teach wherein the coating layer is dry coated on the surface of the pigment.
However, Kuroda discloses a coated cosmetic (abstract). Suitable coating treatments include dry coating (¶ [0007]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have dry-coated the trihydroxystearin onto the oil coating layer of Schlossman since it is a known and effective coating method as taught by Kuroda.
The combined teachings of Schlossman, Song, Cosmetics Info, and Kuroda do not teach wherein, as measured with a viscoelasticity tester, the powder has 50 to 900 g-force/µm2.
However, Fukiya discloses wherein viscoelasticity affects adhesiveness to the skin (abstract).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed viscoelastic value through routine experimentation based on the level of adhesiveness on skin one desires for the cosmetic powder as taught by Fukiya.
In regards to instant claim 3 reciting an elastic makeup powder, since the claim recites an elastic coating layer of trihydroxystearin, trihydroxystearin is elastic. Therefore, since it would have been obvious to have incorporated trihydroxystearin onto the powder of Lee, the powder of the prior art is elastic.
In regards to instant claim 3 reciting 3 to 20 parts by weight of the elastic coating layer, since trihydroxystearin is a moisturizing agent, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amount of trihydroxystearin through routine experimentation depending on the level of moisturization desired. 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. See MPEP 2144.05(II)(A).
Response to Arguments
Applicant argues that Schlossman teaches the use of talc as a natural inorganic particulate.
The Examiner does not find Applicant’s argument to be persuasive. As discussed in the modified rejection above, Schlossman also teaches using silica as the pigment. As such, Applicant’s argument is unpersuasive.
Applicant argues that the references appear to be silent regarding the use of glyceryl behenate as a material for an elastic coating layer.
The Examiner does not find Applicant’s argument to be persuasive. The claims as currently recited do not require glyceryl behenate to be the material for the elastic coating layer. The claims recite trihydroxystearin OR glyceryl behenate. As such, Applicant’s argument is unpersuasive.
Applicant argues that THS is generally not a material that is used for coating natural inorganic particulates.
The Examiner does not find Applicant’s argument to be persuasive. Applicant has not supported this allegation with objective evidence. Therefore, Applicant’s argument is merely speculative and is unpersuasive.
Applicant argues that coating talc with THS would result in a coating having a stability that is unsatisfactory. A silica particulate coated with THS has a coating stability that is entirely different in comparison to a talc particulate coated with THS.
The Examiner does not find Applicant’s argument to be persuasive. To illustrate the difference in coating stability of THS on each of silica and talc, Applicant provided pictures of Talc+THS and Silica+THS in the arguments. Such showing is unpersuasive. Objective evidence must be factually supported by an appropriate affidavit or declaration to be of probative value. See MPEP 716.01(c). Therefore, since Applicant did not provide the showing in a declaration, Applicant’s argument is unpersuasive. Furthermore, even if such showing was to be in a declaration, Applicant’s argument would still be unpersuasive. Applicant mixed each of THS coated silica and THS coated talc in water and then boiled each mixture to show that the THS on talc particulates collapsed, while the THS on silica particulates did not. It is not clear how this showing shows that THS on silica is unexpected. It is not clear why the THS coated silica and THS coated talc need to be mixed in water and then boiled. The claims recite a makeup powder. Applicant admits that THS coated talc can be made. Applicant has not shown wherein these powders would be unstable when applied or under storage. Mixing in water and then boiling is not representative of applying powders or having powders under storage. As such, Applicant’s argument is further unpersuasive.
Purely arguendo, even if Applicant’s showing was probative of unexpected results, the claims would not be commensurate in scope since the claims do not limit the powder to be THS coated silica.
Applicant argues that there is no apparent reason based on the teachings of Lee and Schlossman to substitute silica inorganic particulates for talc, nor is there any teaching or suggestion that selection would enhance the stability of the elastic coating layer.
The Examiner does not find Applicant’s argument to be persuasive. Schlossman discloses wherein silica is also a suitable pigment. Therefore, one of ordinary skill in the art would have used silica instead of talc. Also, as discussed above, Applicant has not persuasively shown wherein THS coated silica is unexpected. As such, Applicant’s argument is unpersuasive and the rejections are maintained.
Conclusion
Claims 1, 3-6 and 11-15 are rejected.
Claims 7-10 have been withdrawn.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614