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 22-31 are rejected.
Claims 32-39 are withdrawn.
No claims are allowed.
Maintained 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 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.
1. Claims 22, 24-25, and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuguchi et al., (JP 2012/233057 A, Nov. 29, 2012) (cited by applicant on IDS 01/20/2023) (hereinafter Mizuguchi) in view of Griffiths-Brophy et al., (US 2017/0042786 A1, Feb. 16, 2017) (hereinafter Griffiths-Brophy).
Mizuguchi discloses a scrubbing agent for a skin cleanser containing a biodegradable plastic and a natural plant powder, in a weight ratio of 3: 7 to 9: 1, wherein the biodegradable plastic is cellulose acetate (i.e., a cellulose ester) and the scrubbing agent has an average particle size of 20 to 800 μm (i.e., 0.020 to 0.800 mm) ([0007]). The biodegradable scrub agent may be composed of only the two components ([0018]). The composition may be formed into a predetermined shape using a press machine or cylindrical extruder ([0022]) of a desired shape ([0026]). Example 2: Formulation 2 teaches a scrub agent that is processed into a cylindrical shape (i.e., a pair of faces that are arranged separately from each other in a parallel manner and a plurality of vertices and a contour including a pair of sides extending in a first direction perpendicular to the one direction, the pair of sides being separated in a second direction perpendicular to the first direction when viewed from one direction parallel to the pair of faces) ([0052]). The obtained cured product may be used as a biodegradable scrub as it is, but when the desired average particle size is to be adjusted, the cured product may be pulverized and then classified as necessary using a pin mill, a jet mill, a rod mill, or a freeze pulverizer, or the like ([0023]). A skin cleanser comprises the biodegradable scrubbing agent (i.e., a scrub agent-containing composition) ([0031]). Example 1: Formulation 1 comprises triacetin (i.e., a glycerin ester) as a plasticizer ([0051]). The surface roughness of the scrubbing agent particles can significantly improve the detergency against dirt attached to the skin surface such as hands ([0029]).
Mizguchi differs from the instant claims insofar as not disclosing a degree of parallelism of the first pair of sides being set to a value in a range of from 0 mm to 0.50 mm or greater than 0 mm to 0.20 mm, and a degree of parallelism of a second pair of sides being set to a value in a range of from 0 mm to 0.10 mm, and
However, Griffiths-Brophy discloses a cleansing composition comprising a plurality of biodegradable abrasive particles having a multimodal particle size distribution (Abstract). Griffiths-Brophy teaches that features such as size, texture and shape of the abrasive particles also play an important role in the consumer acceptance of skin cleansing compositions. In many cases the visibility of larger abrasive particles signals exfoliation benefits of the product to consumers. Larger abrasive particles also tend to have better tactile properties in use. Visible particles also distinguish particular products in the market place and to identify products having particular beneficial cleaning properties via abrasive particles. Larger sized particles however, that are more visible, tend to be less abrasive and may yield poor or inadequate cleansing and exfoliation performance ([0005]). By controlling the particle size distribution and providing a multimodal distribution of the biodegradable abrasive particles, multiple benefits are obtained. These benefits include: biodegradability, enhanced visibility to the consumer of the larger particles to signal benefits, better tactile properties, good exfoliation due to larger surface area and irregular shape of the smaller particles ([0044]).
Accordingly, since degree of parallelism depends on the size of a particle and Griffiths-Brophy teaches that the exfoliation performance of a particle is influenced by its size, it would have taken no more than the relative skill of one of ordinary skill in the art through routine experimentation to have arrived at the claimed degree of parallelism based on the size desired to achieve the desired level of exfoliation. Additionally, Applicant has not shown wherein the claimed degree of parallelism is critical. Where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A).
Regarding claim 24, as discussed above, Mizguchi teaches a scrubbing agent for a skin cleanser containing a biodegradable plastic and a natural plant powder, in a weight ratio of 3: 7 to 9: 1 and the biodegradable scrub agent may be composed of only the two components. Accordingly, because a natural plant powder is also biodegradable, the biodegradable scrub agent of Mizguchi comprises 100% biodegradable components, which is greater than greater than 50 wt.% of a biodegradable component.
Regarding the limitation of claim 28 reciting wherein the scrub agent has a particle shape having a contour including a pair of sides as the first pair of sides and further including a second pair of sides extending in a second direction, the second pair of sides being separated in the first direction when viewed from one direction; the instant specification discloses wherein scrub agent 1 has a particle shape that is a cylindrical shape ([0034]). The scrub agent 1 has a particle shape having a contour including the pair of sides S1 and S2 as the first pair of sides and further including a second pair of sides S3 and S3 extending in a second direction, the second pair of sides S3 and S4 being separated in the first direction when viewed from one direction ([0037]). Fig. 1 is a perspective view of a particle of scrub agent 1 and Fig. 2 is a side view perpendicular to an axis X of the particle of the scrub agent 1 ([0013]). As shown in Fig. 1, scrub agent 1 is cylindrical shaped. Fig. 2 shows wherein scrub agent 1 has sides S1, S2, S3, and S4. Accordingly, since a cylindrical shaped scrubbing agent has a contour including a pair of sides as the first pair of sides and further including a second pair of sides extending in a second direction, the second pair of sides being separated in the first direction when viewed from one direction; the scrubbing agent of Mizguchi would meet the limitation of claim 28 since it is cylindrical shaped.
2. Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Mizuguchi et al., (JP 2012/233057 A, Nov. 29, 2012) (cited by applicant on IDS 01/20/2023) (hereinafter Mizuguchi) in view of Griffiths-Brophy et al., (US 2017/0042786 A1, Feb. 16, 2017) (hereinafter Griffiths-Brophy) and further in view of Zocchi., (US 5,681,801 A, Oct. 28, 1997) (hereinafter Zocchi).
As discussed above, Mizguchi and Griffiths-Brophy make obvious the limitations of claim 22 but does not teach wherein a light transmittance of the entire scrub agent in a wavelength region of from 380 nm to 780 nm is set to a value in a range of from 0.8% to 100%.
However, Zocchi discloses a combination cleansing, conditioning composition comprising a stable, clear, aqueous cleansing phase having stably dispersed and suspended therein particles, used for the skin (Abstract). The clarity of a composition is measured by transmittance by measuring on a UV spectrophotometer at 600 nm, and acceptable transmittance is at least about 85%, preferably above about 90% (col 3, lines 37-41). Zocchi teaches that in order to be considered clear, a composition should show at least 85% transmittance at 600 nm by a UV spectrophotometer (col 9, lines 31-34).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the scrub particles of Mizguchi to have a light transmittance in a wavelength of 600 nm set to a value of at least about 85% motivated by the desire to have a clear composition, which is desirable in the art as taught by Zocchi.
3. Claims 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuguchi et al., (JP 2012233057 A, Nov. 29, 2012) (cited by applicant on IDS 01/20/2023) (hereinafter Mizuguchi) in view of Griffiths-Brophy et al., (US 2017/0042786 A1, Feb. 16, 2017) (hereinafter Griffiths-Brophy) and further in view of Han et al., (US 2018/0344997 A1, Dec. 06, 2018) (cited by applicant on IDS 01/20/2023) (hereinafter Han).
As discussed above, Mizguchi and Griffiths-Brophy make obvious the limitations of claim 22 but does not teach wherein the particle shape is a polyhedral shape having a plurality of faces, each being a polygon.
However, Han discloses water-soluble microneedle spicules, in the shape of a triangular pyramid (i.e., a polyhedral shape), for scrubs and a non-aqueous cosmetic composition containing the same (Abstract). The water-soluble microneedle spicule may comprise cellulose (Claim 2). Needle shape 20 is formed with a polygonal structure ([0081]). As seen in Fig. 11, each side of needle shape 20 is formed in a triangular shape (i.e., a plurality of faces, each being a polygon). The water-soluble microneedle spicule for scrubs is in the shape of a triangular pyramid to maximize the scrub effect of the keratin layer of the skin by forming more acute angles to the water-soluble spicule for scrubs ([0052]).
As discussed above, Mizuguchi discloses a scrubbing agent that may be formed into a predetermined shape. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formed the scrub agent of Mizguchi in a triangular pyramid shape (i.e., a polyhedral shape having a plurality of faces, each being a polygon) to maximize the scrub effect of the keratin layer of the skin by forming more acute angles to the water-soluble spicule for scrubs, as taught by Han.
Response to Applicant’s Arguments
Applicant argues that the degree of parallelism of a pair of sides is unrelated to particle size and therefore, one of ordinary skill in the art would not have arrived at the instant invention as in claim 22 through the teachings of Mizuguchi and Griffith.
Applicant’s argument has been fully considered but found not to be persuasive. As noted in paragraph [0030] of the instant specification, a degree of parallelism indicates a magnitude of deviation of a straight line form or a planar form that is supposed to be parallel to a geometric straight line or geometric plane that is parallel to a datum straight line or a datum plane which is a theoretically correct geometric reference set to regulate the tolerance zone. In practice, particle size impacts the degree of parallelism since as object size increases, maintaining a constant parallel distance becomes progressively more difficult due to many factors such as manufacturing tolerances and measurement limitations, allowing for greater deviation. Therefore, practically, the sides of a very large object are often less parallel than a smaller, precision-machined object. Thus, as discussed above, since the particle size does affect degree of parallelism of a particle and Griffiths-Brophy teaches that the exfoliation performance of a particle is influenced by its size, one of ordinary skill in the art would have arrived at the claimed degree of parallelism of the particle of Mizguchi through routine experimentation based on the size desired to achieve the desired level of exfoliation, as taught by Griffiths-Brophy.
Further, Applicant has not shown wherein the claimed degree of parallelism is critical. Where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A). The examples and data of the instant specification do not demonstrate or suggest wherein the claimed degree of parallelism is essential to the novelty of the instant invention. No additional data has been submitted for support.
Applicant argues that the degree of parallelism of a pair of sides as recited in amended claim 22 provides the significant advantage of an even and stable scrubbing effect.
Applicant’s argument has been fully considered but found not to be persuasive. Applicant has not provided any objective evidence supporting Applicant’s assertion. Mere conclusory statement in the specification, unsupported by objective evidence, are entitled to little weight when the PTO questions the efficacy of those statements. In re Greenfield, 571 F.2d 1185, 197 U.S.P.Q. 227, 229 (C.C.P.A. 1978). Additionally, Applicant has not provided any comparative examples. Comparison with the closest prior art is needed to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e). Therefore, Applicant’s argument is unpersuasive.
Applicant argues that the cleaning ability of the scrub agent of Mizguchi relies on the technical concept of forming fine irregularities on the surface of the scrub agent and therefore, modifying the particle shape to achieve the claimed degree of parallelism of the pair of sides would result in elimination of those fine irregularities.
Applicant’s argument has been fully considered but found not to be persuasive. As discussed above, the composition of Mizguchi may be formed into a predetermined shape using a press machine or cylindrical extruder of a desired shape. Thus, Mizguchi teaches that the scrub agent may be shaped according to the desires of the user. Additionally, Mizguchi discloses that when a biodegradable scrubbing agent is produced using a natural biodegradable plastic and a starch powder as a natural vegetable powder, fine irregularities are generated on the surface of the scrubbing agent particles ([0029]). Accordingly, it appears that the fine irregularities are formed on the scrub agent due to the natural biodegradable plastic and a starch powder and would necessarily be present on any scrub agent comprising these ingredients, regardless of the shape.
Further, the office action does not suggest modifying the particle shape to achieve the claimed degree of parallelism of the pair of sides.
Applicant argues that the degree of parallelism of a pair of sides as recited in amended claim 22 is not naturally achievable by the invention of Mizuguchi because the fine irregularities derived from those materials are also formed on sides (and faces) of the particle that extend along the extrusion direction.
Applicant’s argument has been fully considered but found not to be persuasive. Parallelism is a geometric relationship that depends on distance and angles. Fine irregularities would relate to the particle’s texture and appearance. Thus, it is not clear how the fine irregularities formed on sides (and faces) of the particle would affect the degree of parallelism of the pair of sides as the two concepts are seemingly unconnected. Therefore, since Applicant’s argument is merely speculative, Applicant’s argument is unpersuasive.
Applicant argues that one of ordinary skill in the art would not have any motivation or reason to combine Mizuguchi and Griffith because the teachings of Griffith, which teaches away from using natural plant powder and Mizguchi necessarily requires the inclusion of natural plant powder.
Applicant’s argument has been fully considered but found not to be persuasive. As discussed above, Mizuguchi discloses a scrubbing agent for a skin cleanser containing a biodegradable plastic and a natural plant powder. Griffiths-Brophy discloses a cleansing composition comprising a plurality of biodegradable abrasive particles, comprising polyhydroxy alkanoate (PHA) ([0009]) which is made from renewable plant resources ([0004]) and used as a powder ([0121]). Thus, because a required ingredient of Griffiths-Brophy is made from plants and used in powder form, the teachings of Griffiths-Brophy do not teach away from using natural plant powder.
Applicant argues that Han and Zocchi do not cure the deficiencies of Mizuguchi and Griffith.
Applicant’s argument has been fully considered but found not to be persuasive. The Examiner submits that Applicant’s argument with regards to Mizuguchi and Griffiths-Brophy is addressed above and is unpersuasive. Therefore, these rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/S.J.K./Examiner, Art Unit 1614
/TRACY LIU/Primary Examiner, Art Unit 1614