FINAL 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 .
Status of the Claims
This action is in response to papers filed 12/30/2025 in which claim 4 was canceled; claims 10-13 were withdrawn; and claims 1 and 9 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-3 and 5-9 are under examination.
Withdrawn Rejections
The Examiner has re-weighted all the evidence of record. Any rejections and/or objections not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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.
Claim(s) 1-3 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al (WO 2019/156116 A1; English translation and citation via US 2020/0179261 A1; previously cited) in view of Taniguchi (US 2012/0118309 A1) and Demarcq et al (US 2018/0360702 A1).
Regarding claims 1 and 9, Kobayashi teaches cosmetic composition comprising cellulose acetate particles having an average particle size of 80 nm or more and 100 μm or less, a sphericity of 0.7 or more and 1.0 or less, and a total degree of acetyl substitution of the cellulose acetate 0.7 or more and 2.9 or less (Abstract; [0001] and [0015]-[0149]; Fig(s) 1 and 2; claims 1-23). Kobayashi teaches the cellulose acetate particles are porous (Fig(s). 1 and 2).
While Kobayashi does not expressly teach the relative specific surface area of 3.0 or greater and 20 or less, as recited in claim 1, the cellulose acetate particles of Kobayashi is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that specific surface area property/characteristic of claim 1 would have been implicitly present the substantially same cellulose acetate particles of the prior art of Kobayashi. Per Taniguchi, it is known in the prior art that cellulose acetate particles have specific surface area of about 5 to 20 m2/g (Taniguchi: [0020]-[0036] and [0097]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
While Kobayashi does not expressly teach an oil absorption using linseed oil of 60 ml or greater per 100 g of the cellulose acetate particles, as recited in claim 1, the cellulose acetate particles of Kobayashi is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that oil absorption property/characteristic of claim 1 would have been implicitly present in the substantially same cellulose acetate particles of the prior art of Kobayashi. Per Demarcq, it is known in the prior art that cellulose acetate particles have an oil-absorbing capacity of from 0.25 to 3.5 mL/g (Demarcq: [0022] and [0472]-[0497]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Regarding claim 2, Kobayashi teaches the cellulose acetate particles have a surface smoothness of 80% or more and 100% or less (Abstract; [0038]).
Regarding claim 3, while Kobayashi does not expressly teach bulk specific gravity of 0.2 or greater and 0.7 or less, as recited in claim 1, the cellulose acetate particles of Kobayashi is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that bulk specific gravity property/characteristic of claim 1 would have been implicitly present the substantially same cellulose acetate particles of the prior art of Kobayashi. Per Taniguchi, it is known in the prior art that cellulose acetate particles have bulk specific gravity of about 0.3 to 0.5 g/cm3 (Taniguchi: [0020]-[0036] and [0097]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Regarding claim 5, as discussed above, Kobayashi teaches cellulose acetate particles have a total degree of acetyl substitution of the cellulose acetate 0.7 or more and 2.9 or less.
Regarding claim 6, as discussed above, the cellulose acetate particles of Kobayashi is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that specific surface area property/characteristic of claim 1 would have been implicitly present the substantially same cellulose acetate particles of the prior art of Kobayashi. Per Taniguchi, it is known in the prior art that cellulose acetate particles have specific surface area of about 5 to 20 m2/g (Taniguchi: [0020]-[0036] and [0097]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Regarding claim 7, Kobayashi teaches the cellulose acetate particles contain a plasticizer, and a content of the plasticizer is 2% by weight or more and 40% by weight or less based on a weight of the cellulose acetate particles ([0047]-[0064]; claims 1-23).
Regarding claim 8, Kobayashi teaches the plasticizer is at least one selected from the group consisting of a citric acid-based plasticizer, a glycerin ester-based plasticizer, an adipic acid-based plasticizer, and a phthalic acid-based plasticizer ([0047]-[0064]; claims 1-23).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-3 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daicel Corp. (JPH11255959A; published on 21 September 1999; English translation via EPO; hereafter as “Daicel”) in view of Shiomi et al (US 2010/0087552 A1), Kaully et al (US 2009/0162447 A1), Taniguchi (US 2012/0118309 A1) and Demarcq et al (US 2018/0360702 A1).
Regarding claim 1, Daicel teaches a cellulose acetate resin particles having a particle size of 150 µm or less, and a degree of substitution of 1.0 to 2.5 ([0001], [0004], [0006]-[0011], [0014]-[0018]; claims 1-3). As evidenced by Taniguchi, cellulose acetate resin particles of Daicel are porous (Taniguchi: [0030]-[0034]).
While Daicel does not expressly teach the sphericity of 0.7 or greater and 1.0 or less as recited in claim 1, the cellulose acetate particles resin of Daicel is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that sphericity property/characteristic of claim 1 would have been implicitly present in the substantially same cellulose acetate particles of the prior art of Daicel. Per Shiomi, cellulose fine particles used in cosmetic composition have sphericity from 0.70 to 1.00 (Shiomi: [0006], [0009], [0017]-[0018], [0031], [0035], [0063]-[0064], and [0123]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Alternatively, Per Kaully, the characteristics of round particles in the areas of food, pharmaceutics, and cosmetics ([0001]-[0002]). Kaully teaches many formulations comprise or are prepared from dry powders and the physical characteristics of the powder can impact the difficulty of processing by adhering to surfaces, consolidating during transportation and storage, and exhibiting poor flow ([0004]-[0005]). Kaully teaches one approach to avoiding these drawbacks is the use of spherical non-agglomerated particles, such as microcrystalline cellulose, because the shape permits better packing, increasing efficient use of space ([0015]-[0016]). Kaully teaches that powder flowability is “sensitive to the shape and smoothness of the particles of the powder, with better flowability to particles having low roughness and minimal or no sharp edges” and “the velocity field of flowing particles which are round and smooth is substantially laminar with minimal or no turbulences” ([0096]).
Kaully further teaches one method of assessing the rounded shape of the particles is the sphericity, which “generally quantifies the deviation of a particular geometrical shape from a perfect sphere” ([0123]). Kaully teaches the sphericity of particles is “at least 80% more preferably at least 85%” ([0128] and claim 29). Kaully teaches that the particles can be “a carrier or base for cosmetic compositions, including, without limitation, a makeup composition” ([0085]).
Thus, it would alternatively would have been obvious to one of ordinary skill in the art to modify the teachings of Daicel with the teachings of Kaully to arrive at the claimed cellulose acetate particles having the claimed sphericity because the use of a known technique to improve a similar product in a known manner yields predictable results. As discussed above, Daicel teaches the cellulose acetate of their invention to be “pulverized” into particles that are <150 mm in size ([0002]). As such, one of ordinary skill in the art would have been motivated to measure these attributes (i.e., sphericity) and select spherical particles with the sphericity detailed above in view of the teachings of Kaully because Kaully teaches the importance of these characteristics during manufacturing and packaging and an ordinary artisan would desire the improved efficiency provided by smooth, spherical particles, especially when used in the field of cosmetics.
While Daicel does not expressly teach the relative specific surface area of 3.0 or greater and 20 or less as recited in claim 1, the cellulose acetate particles resin of Daicel is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that specific surface area property/characteristic of claim 1 would have been implicitly present the substantially same cellulose acetate particles of the prior art of Daicel. Per Taniguchi, it is known in the prior art that cellulose acetate particles have specific surface area of about 5 to 20 m2/g (Taniguchi: [0020]-[0036] and [0097]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
While Daicel does not expressly teach an oil absorption using linseed oil of 60 ml or greater per 100 g of the cellulose acetate particles as recited in claim 1, the cellulose acetate particles resin of Daicel is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that oil absorption property/characteristic of claim 1 would have been implicitly present the substantially same cellulose acetate particles of the prior art of Daicel. Per Demarcq, it is known in the prior art that cellulose acetate particles have an oil-absorbing capacity of from 0.25 to 3.5 mL/g (Demarcq: [0022] and [0472]-[0497]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Regarding claim 2, as discussed above, Kaully the characteristics of round particles in the areas of food, pharmaceutics, and cosmetics ([0001]-[0002]). Kaully teaches many formulations comprise or are prepared from dry powders and the physical characteristics of the powder can impact the difficulty of processing by adhering to surfaces, consolidating during transportation and storage, and exhibiting poor flow ([0004]-[0005]). Kaully teaches one approach to avoiding these drawbacks is the use of spherical non-agglomerated particles, such as microcrystalline cellulose, because the shape permits better packing, increasing efficient use of space ([0015]-[0016]). Kaully teaches that powder flowability is “sensitive to the shape and smoothness of the particles of the powder, with better flowability to particles having low roughness and minimal or no sharp edges” and “the velocity field of flowing particles which are round and smooth is substantially laminar with minimal or no turbulences” ([0096]).
Kaully further teaches one method of assessing the rounded shape of the particles is the sphericity, which “generally quantifies the deviation of a particular geometrical shape from a perfect sphere” ([0123]). Kaully teaches the sphericity of particles is “at least 80% more preferably at least 85%” ([0128] and claim 29). Kaully teaches that the particles are “characterized by a substantially smooth surface. Smooth surfaces can be characterized by low rugosity or conversely by high smoothness, which is commonly defined as the reciprocal to the rugosity of the surface” ([0132]). Kaully teaches the preferred roughness of particles to be lower than 1%, which would be equivalent to a smoothness of >99% ([0136]). Kaully teaches that the particles can be “a carrier or base for cosmetic compositions, including, without limitation, a makeup composition” ([0085]).
Thus, it would have been obvious to one of ordinary skill in the art to modify the teachings of Daicel with the teachings of Kaully to arrive at the claimed cellulose acetate particles having the claimed surface smoothness because the use of a known technique to improve a similar product in a known manner yields predictable results. As discussed above, Daicel teaches the cellulose acetate of their invention to be “pulverized” into particles that are <150 mm in size ([0002]). As such, one of ordinary skill in the art would have been motivated to measure these attributes (i.e., sphericity and smooth) and select spherical particles with the surface smoothness detailed above in view of the teachings of Kaully because Kaully teaches the importance of these characteristics during manufacturing and packaging and an ordinary artisan would desire the improved efficiency provided by smooth, spherical particles, especially when used in the field of cosmetics.
Regarding claim 3, while Daicel does not expressly teach bulk specific gravity of 0.2 or greater and 0.7 or less, as recited in claim 1, the cellulose acetate particles resin of Daicel is substantially same as the cellulose acetate particles resin of claim 1, and thus, it would have been reasonably obvious that bulk specific gravity property/characteristic of claim 1 would have been implicitly present in the substantially same cellulose acetate particles of the prior art of Daicel. Per Taniguchi, it is known in the prior art that cellulose acetate particles have bulk specific gravity of about 0.3 to 0.5 g/cm3 (Taniguchi: [0020]-[0036] and [0097]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Regarding claim 5, as discussed above, Daicel teaches the cellulose acetate particles resin have a degree of substitution of 1.0 to 2.5.
Regarding claim 6, as discussed above, the cellulose acetate particles resin of Daicel is substantially same as the cellulose acetate particles of claim 1, and thus, it would have been reasonably obvious that specific surface area property/characteristic of claim 1 would have been implicitly present the substantially same cellulose acetate particles of the prior art of Daicel. Per Taniguchi, it is known in the prior art that cellulose acetate particles have specific surface area of about 5 to 20 m2/g (Taniguchi: [0020]-[0036] and [0097]). Thus, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01.
Regarding claim 7, Daicel teaches the cellulose acetate particle resin contains a plasticizer, and a content of plasticizer in the cellulose acetate particle resin is 20 to 100 parts by weight with respect to 100 parts by weight of cellulose acetate ([0004]-[0008]; claim 1), which overlaps the claimed range of “2 parts by weight or greater and 67 parts by weight or less relative to 100 parts by weight of the cellulose acetate. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the amount of plasticizer in the cellulose acetate particles would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 8, Daicel teaches the plasticizer is a phthalate-based plasticizer ([0007]).
Regarding claim 9, while Daicel does not expressly teach the use of cellulose acetate particles in a cosmetic composition, it would have been obvious to use cellulose acetate particles in cosmetic composition per guidance from Shiomi and Demarcq. Shiomi teaches cellulose particles are suitable for use in cosmetic applications due to the cellulose particles being chemically stable, amphipathic having both hydrophilicity and hydrophobicity, natural product that is regarded harmless to human, biodegradable, and environmentally friendly (Shiomi: [0006], [0009], [0017]-[0018], [0031], [0035], [0063]-[0064], and [0123]). Demarcq teaches cellulose acetate particles are suitable for use in cosmetic composition as filler due to their oil-absorbing capacity (Demarcq: [0001], [0022] and [0472]-[0497]). Thus, an ordinary artisan would have looked to including or using cellulose acetate particles of Daicel in cosmetic composition to provide a cosmetic product that is organic, biodegradable, and have good oil-absorbing capacity, and achieve Applicant’s claimed cosmetic composition with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Applicant argues that none of the cited prior arts teach the claimed relative specific surface area and said claimed relative specific surface area are also not obvious over the cited prior arts of record. Applicant alleges that “Taniguchi discloses the BET specific surface area but does not disclose the theoretical specific surface area for calculating the relative specific surface area.” Applicant further alleges that “Taniguchi further is silent on the particle size distribution of cellulose acetate particles, which is necessary to determine the theoretic specific surface area.” Applicant further alleges that paragraph [0035] of Taniguchi teaches the BET specific surface area is selected from “the range of about 0.1 to 100 m2/g” and “more preferably about 5 to 20 m2/g (particularly about 8 to 15 m2/g).” Applicant alleges that “the BET specific surface areas of the Examples disclosed in Table 1 of the specification are 0.30 to 7.26 m2/g, which is smaller than the preferable range taught by Taniguchi.” Thus, Applicant alleges that “it is not obvious for a person skilled in the art to select, from the broad range disclosed in Taniguchi US '309, the range of the present invention, which is not taught as preferred by Taniguchi US '309, and apply it to Kobayashi US '261 or Daicel JP '959 so as to obtain the claimed RSSA [relative specific surface area] recited in claim 1.” (Remarks, pages 5-7).
In response, the Examiner disagrees. As discussed above in the pending 103 rejections, Kobayashi or Daicel teach substantially the same in structure of cellulose acetate particles of claim 1. See 103 rejections, pages 3-5 and 7-11 of this office action. As discussed in the 103 rejection, it is noted that [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01. Applicant has not shown otherwise that the cellulose acetate particles of Kobayashi or Daicel being substantially the same in structure as the claimed cellulose acetate particles did not have a relative specific surface area in the claimed broad range of “3.0 or greater and 20 or less.”
Applicant alleges that “the BET specific surface areas of the Examples disclosed in Table 1 of the specification are 0.30 to 7.26 m2/g, which is smaller than the preferable range taught by Taniguchi.” However, at least Examples A5 (BET = 7.26), A6 (BET= 5.47) and A12 (BET=5.64) have BET surface area that falls within Taniguchi’s preferred BET surface range of about 5 to 20 m2/g. This is evident to show that the claimed invention encompassed cellulose acetate particles that are substantially the same as the cellulose acetate particles of Kobayashi, Daicel, and Taniguchi,. Thus, absence of objective evidence to the contrary, it is maintained that the relative specific surface area property/characteristic of claim 1 would have been implicitly present in the substantially same cellulose acetate particles of the prior art of Kobayashi or Daicel. Applicant has not shown otherwise and Example in Table 1, particularly Examples A5, A6, and A12 are cellulose acetate particles that are substantially the same as the cellulose acetate particles of Kobayashi, Daicel, and Taniguchi.
Applicant argues “paragraph [0486] of Demarcq US '702 discloses the oil-absorbing capacity of the filler. Paragraph [0494] of Demarcq US '702 exemplifies cellulose particles as a filler but does not disclose or suggest cellulose acetate particles.” Thus, Applicant alleges “Demarcq US '702 does not disclose the oil absorption of cellulose acetate particles. Even combination of the primary cited art (e.g., Kobayashi US '261 or Daicel JP '959) and Demarcq US '702 would not result in the claimed invention.” (Remarks, page 7, section (ii)).
In response, the Examiner disagrees. The oil absorption characteristic recited in claim 1 encompassed a broad range of 60 ml or greater per 100 g. This is to show that the claimed broad range encompassed an oil absorption characteristic that is also exhibited in known cellulose particles, which per Demarcq, an oil-absorbing capacity of from 0.25 to 3.5 mL/g. Thus, given the disclosure from Demarcq, there is reason to believe that the cellulose acetate particles of Kobayashi or Daicel being the substantially the same as the claimed cellulose acetate particles. As discussed above in the pending 103 rejections, [w]here 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). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP §2112.01. Applicant has not shown by objective evidence otherwise.
Applicant argues “neither Kobayashi US '261 nor Daicel JP '959 discloses that the cellulose acetate particles are porous (as recited in claim 1). Further, Kobayashi US '261 teaches that porous particles are excluded or unpreferred (e.g., see paragraph [0015]).” Thus, Applicant alleges “there is no motivation for a person skilled in the art to modify the particles of Kobayashi US '261 to have a porous structure.” (Remarks, page 8, section (iii)).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, Kobayashi does teach cellulose acetate particles that are porous (see Fig(s). 1 and 2 of Kobayashi). As for Daicel, as discussed above in the pending 103 rejection, as evidenced by Taniguchi, cellulose acetate resin particles of Daicel are porous (Taniguchi: [0030]-[0034]). Contrary, to Applicant’s allegation, the cellulose acetate particles of Kobayashi and Daicel are porous.
Applicant argues “Example 1 of Kobayashi US '261 corresponds to Comparative Example 1 in the present specification. As shown in Table 2 of the present specification, Comparative Example 1 has a RSSA of 2.6, and the oil absorption is 51 ml/100 g, which are outside the claimed range. Therefore, the property/characteristic of the claimed invention would not have been intrinsically or inherently present in the cellulose acetate particles of Kobayashi US '261.” (Remarks, page 8, section (iv)).
In response, the Examiner disagrees. Nowhere in Comparative Example 1 does it indicate that the cellulose acetate particles are of Example 1 of Kobayashi. Thus, evidence from Comparative Example 1 cannot be said to be of Example 1 of Kobayashi, as Example 1 of Kobayashi used 70 parts by weight of PVA as one of the components in forming the cellulose acetate particles (Kobayashi: [0082]-[0083]). Comparative Example 1 in Applicant’s Table 2 of the specification used 292 parts by weight of PVA, a content of PVA that is much higher than Kobayashi’s Example 1. Thus, the cellulose acetate particles of Kobayashi is not the same as the cellulose acetate particles of the alleged Comparative Example 1 of Applicant’s specification. Thus, it is maintained that the property/characteristic of the claimed invention would have been intrinsically or inherently present in the substantially same cellulose acetate particles of Kobayashi, as Applicant has not shown by objective evidence otherwise.
As a result, for at least the reasons discussed above, claims 1-3 and 5-9 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
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 1-3 and 5-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11628134.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘134 significantly overlap with the subject matter of the instant claims, i.e., cosmetic compositions comprising cellulose acetate particles having substantially overlapping average particle sizes, sphericity, and degree of acetyl substitution of cellulose acetate.
While the cellulose acetate particles of the instant claims also recites a relative specific surface area and an oil absorption capacity, and the claims in the Patent ‘134 recite a surface smoothness, it would have been reasonably obvious that such specific surface area and the oil absorption capacity properties/characteristics would have been implicitly present the substantially same cellulose acetate particles of the Patent ‘134 and vice versa, such surface smooth properties would have been implicitly present in the substantially same cellulose acetate particles of instant claims. It is also noted that the surface smooth of the claims in the Patent ‘134 can be from 80%, thereby the surface of the cellulose acetate particles of Patent ‘134 are porous. It is noted that [w]here 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). It is noted that that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11628134.
Claims 1-3 and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18115215 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘215 significantly overlap with the subject matter of the instant claims, i.e., cosmetic compositions comprising cellulose acetate particles having the same average particle sizes and sphericity, wherein the cellulose acetate particles contains a plasticizer
While the cellulose acetate particles of the instant claims also recites a relative specific surface area, degree of acetyl substitution of cellulose acetate, and an oil absorption capacity, and the claims in the copending application ‘215 recite a surface smoothness, it would have been reasonably obvious that such specific surface area, degree of acetyl substitution of cellulose acetate, and oil absorption capacity properties/characteristics would have been implicitly present the substantially same cellulose acetate particles of the copending application ‘215 and vice versa, such surface smooth properties would have been implicitly present in the substantially same cellulose acetate particles of instant claims. It is also noted that the surface smooth of the claims in the copending application ‘215 can be from 80%, thereby the surface of the cellulose acetate particles of copending application ‘215 are porous. It is noted that [w]here 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). It is noted that that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18115215.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Applicant argues that “upon entry of the current amendments to the claims, the claimed invention has been further defined over the claims of the cited patent and the cited copending application.” (Remarks, bottom of page 8 to page 9).
In response, the Examiner disagrees. Applicant’s amendments to claim 1 remained insufficient to obviate the double patenting rejections for the reasons discussed above in the pending double patenting rejections. See pages 21-23 of this office action, said pages 21-23 being incorporated herein in its entirety.
Thus, it is maintained that the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11628134 and copending Application No. 18115215
Conclusion
No claim is allowed.
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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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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