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 .
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.
Claim Status
Applicant’s amendment of 02/16/2026 is acknowledged. Claims 1 and 5 are amended; claims 2-3 and 6 are cancelled; and claims 9 is new. Claims 1, 4-5, and 7-9 are currently pending.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 03/24/2025. The election is maintained and claims 5 and 7 remain withdrawn. Accordingly, claims 1, 4, and 8-9 are examined on the merits herein.
Priority
The instant application is a 371 of PCT/JP2021/028668 filed on 08/02/2021 and claims foreign priority to JP2020-134477 filed on 08/07/2020 as reflected in the filing receipt dated on 01/18/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Withdrawn Objections and Rejections
Applicant’s amendments to the claims have overcome/rendered moot the previous 102 and 102/103 rejections. Thus, the rejections are hereby withdrawn.
Applicant’s amendment and introduction of new claims have prompted the new/revised grounds of objection and rejection presented herein. Applicant’s arguments insofar as they pertain to any revised grounds of rejection are addressed herein.
Claim Rejections - 35 USC § 112(b)
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 9 is 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 9 recites the limitation “water-in-oil (W/O) type liquid foundation” in line 1, wherein the scope of the term “type” is not defined in Applicant’s instant specification. Note: MPEP 2173.05(b)(III)(E). The addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). It is unclear whether the claimed liquid foundation is required to be a water-in-oil formulation. If it is not, what are the metes and bounds of what is considered a water-in-oil “type” of liquid foundation?
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, and 8-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ohara et al. (US20120308628A1; published: 12/06/2012; PTO-892 of instant action).
Ohara, throughout the reference, teaches cosmetic preparations comprising a powder that is coated with 3 wt.% to 10 wt.% of a coating agent comprising a mixture of hardened plant and fat oil having a melting point of 50°C or more and an ester oil agent derived from a plant fat and oil [abstract; claims]. The coated powder has favorable odor, smooth touch, and excellent water repellency and pigment dispersibility [0001].
Regarding claim 1: In at least one exemplary embodiment, a coating agent comprising 70.0 wt.% palm oil and 30.0 wt.% tri(caprylic acid/capric acid/myristic acid/stearic acid)glyceryl is mixed with titanium oxide at 75°C to obtain a 4 wt.%-coated titanium oxide powder, which is subsequently used to formulate a liquid foundation [0044, example 7; 0085, example 12]. Titanium oxide reads on the instantly claimed powder for a cosmetic as evidenced by instant claim 4. The temperature at which the coating agent is mixed with titanium oxide powder lies within and thus reads on the instantly claimed range of temperature at which the mixture is heat-treated.
Ohara expressly teaches a limited list of suitable ester oil agents, including tri(caprylic acid/capric acid/myristic acid/stearic acid)glyceryl, polygylceryl-2 tetraisostearic acid (same as diglyceryl tetraisostearate), and polyglyceryl-10 diisostearic acid (same as decaglyceryl diisostearate) [0021]. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention could at once envisage a combination wherein polyglyceryl-2 tetraisostearic acid or polyglyceryl-10 diisostearic acid is selected as the ester oil agent in place of tri(caprylic acid/capric acid/myristic acid/stearic acid)glyceryl. Note: MPEP 2131.02. A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). Further, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990).
Absent a limiting definition of “surface-treated” provided in Applicant’s instant disclosure, the ester-coated titanium oxide powder taught by Ohara reads on the instantly claimed powder material. In further support, Applicant’s instant specification teaches that heat-treatment results in a powder material in which the surface of the powder is coated with the ester compound [instant spec., 0034]. Because the final coated powder of Ohara comprises 4 wt.% of the coating agent, which comprises 30 wt.% of the ester oil agent, the total amount of ester oil agent in the coated titanium oxide powder is 1.2 wt.%, which lies within and thus reads on the instantly claimed range.
Regarding claim 4: Titanium dioxide reads on the instantly claimed powder for a cosmetic.
Regarding claim 8: The liquid foundation comprising the coated titanium dioxide powder of Ohara’s example 7 reads on the instantly claimed cosmetic.
Regarding claim 9: Ohara further teaches that the liquid foundation comprising the coated titanium dioxide powder of Ohara’s example 7 is produced by adding the powder components to silicone oils to create an oil phase, to which an aqueous phase component is gradually added [0085-0086]. Therefore, the liquid foundation of Ohara reads on the instantly claimed water-in-oil type liquid foundation.
Response to Arguments
Applicant’s arguments submitted on 02/16/2026 with respect to rejections under 35 U.S.C. 102 and/or 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claim is allowed.
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 SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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