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 1-20.
Applicants' arguments, filed 08/28/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 1-7 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fukui et al. (US 2012/0294912, Nov. 22, 2012) (hereinafter Fukui) in view of Takeuchi et al. (JP-H1179969-A, Mar. 23, 1999) (hereinafter Takeuchi) and Otani et al. (WO 2020090874 A1, May 7, 2020) (hereinafter Otani), as evidenced by Kubota (US 2019/0133916, May 9, 2019) and Ataman Chemicals (Octyltriethoxysilane, Accessed on May 12, 2025).
Fukui discloses a cosmetic composition in the form of an O/W emulsion comprising (A) 1 to 20% by weight of a plate-like powder that has been surface treated with an alkylalkoxysilane (i.e., first powder), (B) 0.1 to 10% by weight of an oil that is solid at a temperature of 25°C, (C) 0.3 to 50% by weight of an oil selected from the group consisting of a hydrocarbon oil, an ester oil, and an ether oil, each having a viscosity of 500,000 mPa·s or less at a temperature of 25°C (i.e., liquid-state oily component), (D) 0.1 to 20% by weight of a nonionic surfactant, (E) 0.05 to 10% by weight of a water-soluble polymer, and (F) water (abstract). Suitable alkylalkoxysilanes include octyltriethoxysilane (¶ [0022]). Component (C) is an oil that is liquid at a temperature of 25°C (¶ [0034]). Water may be included in an amount of 20 to 60% by weight (¶ [0054]). The composition may comprise 1,3-butylene glycol (i.e., liquid-state polyol) in an amount of 10 wt. % (Table 1). The cosmetic composition may further include other components used in ordinary cosmetic compositions in addition to the above-mentioned components. Examples thereof include a powder except the above (¶ [0135]).
Fukui differs from the instant claims insofar as not disclosing wherein the composition comprises a spherical powder (i.e., second powder).
However, Takeuchi discloses wherein it is preferable to use a combination of a spherical powder and a plate-like powder as the powder. By combining both spherical powder and plate-like powder, excellent elongation and smoothness can be imparted even when applied to wet skin. The mixing ratio (weight ratio) of spherical powder and plate-like powder is preferably 5:1 to 1:5 in terms of sufficiently improving the elongation and the feeling of smoothness in a high-temperature and high-humidity environment (page 4 of translation).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated spherical powder into the composition of Fukui motivated by the desire to use the spherical powder in combination with the plate-like powder to formulate a composition with excellent elongation and smoothness as taught by Takeuchi.
In regards to the claimed amount of spherical powder, Takeuchi discloses wherein the ratio of spherical powder to plate-like powder should be 5:1 to 1:5 to obtain the excellent effects. Fukui discloses 1 to 20% plate-like powder. Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated, for example, 1% spherical powder when the composition of Fukui comprises 1% plate-like powder for a 1:1 spherical powder to plate-like powder ratio.
The combined teachings of Fukui and Takeuchi do not disclose wherein the plate-like powder (i.e., first powder) has an aspect ratio of from 1.5 to 170.
However, Otani discloses an emulsified cosmetic (page 1, Technical Field). The cosmetic comprises a plate-like powder, wherein the aspect ratio is preferably 5 to 500 (page 4, fourth paragraph).
Fukui discloses a composition comprising a plate-like powder but does not disclose its dimensions. Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the plate-like powder of Fukui to have an aspect ratio of 5 to 500 since this is a known and effective dimension for plate-like powders used in emulsions as taught by Otani.
In regards to instant claim 1 reciting wherein the first powder is nonspherical, as evidenced by Kubota, a plate shaped powder is distinguished from a spherical powder by having an aspect ratio of greater than 1 (¶ [0043]). Accordingly, the plate-like powder of the prior art is nonspherical when it has an aspect ratio of 5 to 500 as discussed above.
In regards to instant claim 1 reciting wherein the first powder has a hydrophobic particle surface, as discussed above, Fukui discloses wherein the plate-like powder may be surface-treated with octyltrimethoxysilane. As evidenced by Ataman Chemicals, octyltriethoxysilane is used as a hydrophobing agent for treating inorganic particles and surfaces (page 2, first paragraph). Therefore, surface-treating with octyltrimethoxysilane would produce a hydrophobic particle surface.
In regards to instant claim 1 reciting less than 0.1% by mass of a surfactant, such amount includes an amount of, for example, 0.09% surfactant. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I). Fukui discloses 0.1 to 20% by weight of a nonionic surfactant. An amount of 0.09% surfactant is so close to 0.1% that prima facie one of ordinary skill in the art would have expected them to have the same properties. Therefore, the claimed range would have been obvious since it includes an amount of 0.09%, which would have the same properties as 0.1% disclosed by Fukui.
In regards to instant claim 4 reciting wherein the second powder has an average aspect ratio of less than 1.2, as evidenced by Kubota above, a spherical powder has an aspect ratio of 1 or less. Therefore, the spherical powder (i.e., second powder) of the prior art would have an aspect ratio of 1 or less since it is spherical.
2. Claims 8 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fukui et al. (US 2012/0294912, Nov. 22, 2012) (hereinafter Fukui) in view of Takeuchi et al. (JP-H1179969-A, Mar. 23, 1999) (hereinafter Takeuchi), Otani et al. (WO 2020090874 A1, May 7, 2020) (hereinafter Otani), and further in view of Kubota (US 2019/0133916, May 9, 2019).
The teachings of Fukui, Takeuchi, and Otani are discussed above. Fukui, Takeuchi, and Otani do not disclose wherein the composition comprises PEG-240/HDI copolymer bis-decyltetradeceth-20 ether.
However, Kubota discloses an oil in water type solid cosmetic composition comprising 0.1 to 5% by mass of a hydrophobically modified polyether urethane (abstract). The hydrophobically modified polyether urethane is not limited, but from the viewpoint of elasticity, a (PEG-240/decyltetradeceth-20/HDI) copolymer may be favorably employed (¶ [0024]). PEG-240/decyltetradeceth-20/HDI) copolymer is used as a thickening component (Table 1). Skin cosmetic compositions containing associative thickening agents such as hydrophobically modified polyurethane have a unique sensation of elasticity, and therefore are utilized as beautifying solutions (¶ [0005]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated PEG-240/decyltetradeceth-20/HDI) copolymer into the composition of Fukui motivated by the desire to formulate a composition that delivers a sensation of elasticity as taught by Kubota.
3. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Fukui et al. (US 2012/0294912, Nov. 22, 2012) (hereinafter Fukui) in view of Takeuchi et al. (JP-H1179969-A, Mar. 23, 1999) (hereinafter Takeuchi), Otani et al. (WO 2020090874 A1, May 7, 2020) (hereinafter Otani), and further in view of Sasaki (US 2016/0310403, Oct. 27, 2016).
The teachings of Fukui, Takeuchi, and Otani are discussed above. Fukui, Takeuchi, and Otani do not disclose wherein the composition has a viscosity of from 1,000 mPa·s to 150,000 mPa·s.
However, Sasaki discloses an aqueous skin cosmetic product (abstract). The skin cosmetic product can be produced by separately mixing an aqueous component, a powder component, and an oily component and then adding the powder component and the oily component to the aqueous component, followed by stirring (¶ [0037]). The form of the skin cosmetic product may be a liquid, cream, or gel, and preferably a gel having a viscosity of 15,000 mPa·s or more and 200,000 mPa·s or less (¶ [0038]).
Fukui does not disclose the viscosity of the composition. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the composition of Fukui to have a viscosity of 15,000 mPa·s or more and 200,000 mPa·s or less since this is a known and effective viscosity for power-containing, oil-containing, and water-containing cosmetic compositions as taught by Sasaki.
4. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fukui et al. (US 2012/0294912, Nov. 22, 2012) (hereinafter Fukui) in view of Takeuchi et al. (JP-H1179969-A, Mar. 23, 1999) (hereinafter Takeuchi), Otani et al. (WO 2020090874 A1, May 7, 2020) (hereinafter Otani), and further in view of Mizuno (JP-2018043990-A, Mar. 22, 2018).
The teachings of Fukui, Takeuchi, and Otani are discussed above. Fukui, Takeuchi, and Otani do not disclose wherein the emulsion is a giant emulsion.
However, Mizuno discloses an oil-in-water emulsion (abstract). The oil-in-water emulsion preferably has an average oil droplet size of 0.04 to 50 µm (page 5). The emulsion can contain a physiologically active substance in its oil drops and is used as cosmetics (page 2).
Fukui discloses an oil-in-water emulsion but does not disclose the oil droplet size. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the oil-in-water emulsion of Fukui to have an oil droplet size of 0.04 to 50 µm since this is a known and effective oil droplet size for oil-in-water emulsions used in cosmetics and this oil droplet size is effective for containing physiologically active substances as taught by Mizuno.
Response to Arguments
Applicant argues that Fukui teaches 0.1 to 20% by weight of a nonionic surfactant as an essential component and teaches that amount is preferable. Accordingly, a person of ordinary skill in the art in reading Fukui would not be motivated to prepare a powder-containing composition containing less than 0.1% by mass of a surfactant.
The Examiner does not find Applicant’s argument to be persuasive. The claimed amount of less than 0.1% by mass of a surfactant includes an amount of, for example, 0.09% surfactant. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I). Fukui discloses 0.1 to 20% by weight of a nonionic surfactant. An amount of 0.09% surfactant is so close to 0.1% that prima facie one of ordinary skill in the art would have expected them to have the same properties. Therefore, the claimed range would have been obvious since it includes an amount of 0.09%, which would have the same properties as 0.1% disclosed by Fukui. Also, since amount disclosed by Fukui is “preferable” that would mean that the amount of surfactant disclosed is not absolutely required and one may choose a different amount. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1-20 are rejected.
No claims are 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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/TRACY LIU/Primary Examiner, Art Unit 1614