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 .
DETAILED ACTION
The Applicant’s reply filed on 1/26/26 is acknowledged. Claims 7, 10-12, 15, 18 and 19 are pending. Claim 7 has been amended. Claims 7, 10-12, 15, 18 and 19 are under consideration.
Rejections Withdrawn
The rejection of Claims 7-9, 11-14, 16, 17, and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Iwakuni et al. (WO 2018/180797) is withdrawn in view of the amended claims.
The rejection of Claim 10, 15 and 18 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Iwakuni et al. (WO 2018/180797) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 7, 10-12, 15, 18 and 19 are rejected under 35 U.S.C. 103 as obvious over Iwakuni et al. (WO 2018/180797).
Iwakuni et al. disclose titanium phosphate powder comprising plate-shaped crystalline particles of titanium phosphate (e.g. abstract; Claim 1). Regarding the preamble “a soft focus filler", if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case, the “soft focus filler” requires only the claimed titanium phosphate particles, therefore the claim is met.
Regarding Claim 7, Iwakuni et al. teach that the particles have an average diameter of 0.05-1.5 µm (e.g. page 3; Claims) and that the particles have an aspect ratio of 5 or more, which overlap with the claimed range (e.g. abstract; Claims). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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) (MPEP 2144.05.I).
Regarding Claim 10, Iwakuni et al. are silent as to the light transmittance and haze of the particles. However, the instant Specification links the light transmittance and haze to the particle size and shape, “The soft focus filler in the embodiment includes a powder including plate-shaped crystal particles of titanium phosphate and thus is excellent in both transmittance and haze. In the soft focus filler in the embodiment, the powder including plate-shaped crystal particles of titanium phosphate has a volume-based diameter D50% of 0.10 µm or more and 7.5 µm or less, a volume-based thickness D50% of 0.01 µm or more and 1.00 µm or less, and an aspect ratio of 5 or more, and thus the soft focus filler can satisfy both a total light transmittance of 80% or more and a haze of 55% or more” (emphasis added) (e.g. paragraph 0014). Therefore, the particles of Iwakuni et al. which include the claimed particles, particle diameter, aspect ratio, and hexagonal shape, necessarily also have the claimed transmittance and haze. “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the particle parameters, including transmittance and haze, in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. Iwakuni et al. teach that the particles may be used in a cosmetic composition, and one of ordinary skill in the art would have sought to optimize the properties thereof.
Regarding Claims 11 and 15, Iwakuni et al. disclose that the particles are hexagonal (e.g. Claim 3 and Examples 1-11 Table 1).
Regarding Claims 12, 18 and 19, Iwakuni et al. disclose a cosmetic comprising the titanium phosphate powder (e.g. Claim 11).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 7, 10-12, 15, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/245,761 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite a powder including plate-shaped crystal particles of titanium phosphate. Regarding the preamble “A soft focus filler", if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case the “filler” requires only the claimed powder and therefore the claims are met by the copending claims.
Claim 7 is met by copending Claims 1-3.
Claims 11 is met by copending Claims 1-4.
Claims 12 and 19 are met by copending Claims 1-4 and 6.
Claims 10, 15 and 18 are met by claims 1 and 3, and as being inherent properties of the particles.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7, 10, 12, 15, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/279,812 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite a powder including plate-shaped crystal particles of titanium phosphate. Regarding the preamble “A soft focus filler", if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case the “filler” requires only the claimed powder and therefore the claims are met by the copending claims.
Claims 7 is met by copending Claims 1 and 2.
Claims 12 and 19 are met by copending Claim 3.
Claims 10, 15 and 18 are met by claims 1 and 3, and as being inherent properties of the particles.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7, 10, 12, 15, 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,638,681.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a powder including plate-shaped crystal particles of titanium phosphate. Regarding the preamble “A soft focus filler", if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case the “filler” requires only the claimed powder and therefore the claims are met by the copending claims.
Claim 7 is met by copending Claim 1-3 and 5.
Claims 12 and 19 are met by copending Claim 4.
Claims 10, 15 and 18 are met by claims 1 and 3, and as being inherent properties of the particles.
Claims 7, 10-12, 15, 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,345,596
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a powder including plate-shaped crystal particles of titanium phosphate. Regarding the preamble “A soft focus filler", if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case the “filler” requires only the claimed powder and therefore the claims are met by the copending claims.
Claims 7 is met by copending Claims 1 and 2.
Claims 11 is met by copending Claims 3 and 4.
Claims 12 and 19 are met by copending Claim 5.
Claims 10, 15 and 18 are met by claims 1 and 3, and as being inherent properties of the particles.
Response to Arguments
Applicant's arguments filed 1/26/26 have been fully considered but they are not persuasive. Arguments relevant to the current grounds of rejection will be addressed below.
Applicant argues that although Iwakuni broadly discloses an average primary particle size, Iwakuni does not teach or suggest the recited volume-based 50% cumulative primary particle diameter (volume- based diameter D50%) is 0.53 m or more and 3.0 m or less. So one of ordinary skill in the art would not understand Iwakuni as disclosing the recited range, based on its average primary particle sizes.
This is not found persuasive. Iwakuni et al. teach that the particles have an average diameter of 0.05-1.5 µm, which overlaps with the claimed range (e.g. page 3; Claims).
Applicant further argues that regarding the recited "aspect ratio of 5 or more and 8 or less," Iwakuni does not teach or suggest the particular range stated in the claims, nor does Iwakuni disclose any upper limit on the aspect ratio. Rather, Table 1 of Iwakuni discloses the manufacturing examples with aspect ratios exceeding 8 when the average primary particle size is 0.05 µm to 1.5 µm. Iwakuni does not disclose any examples having the recited combination of average primary particle size and aspect ratio stated in amended claim 7.
This is not found persuasive. Iwakuni et al. teach that the particles have an average diameter of 0.05-1.5 µm (e.g. page 3; Claims) and that the particles have an aspect ratio of 5 or more, which overlap with the claimed range (e.g. abstract; Claims). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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) (MPEP 2144.05.I). The fact that the exemplified particles in Table 1 do not meet both the claimed size and aspect ratio at the same time does not teach away from the broader disclosure of Iwakuni et al. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Applicant further argues that the object of Iwakuni is to provide a powder suitable for applications such as additives and pigments, while the object of the present application is to provide a soft focus filler and cosmetic excellent in both transmittance and haze.
This is not found persuasive. The claims are drawn to a product and not to a method of use. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding the non-statutory double patenting rejections, it is noted that the terminal disclaimers filed 1/26/26 were disapproved. Accordingly, those rejections are maintained.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619