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, 3, 4 and 6-11.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/04/2026 has been entered.
Applicants' arguments, filed 01/22/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 1, 3, 4 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Shibano (JP 2018188411 A, Nov. 29, 2018) (IDS reference).
Shibano discloses a method for producing a water-in-oil emulsion cosmetic in which a slurry dispersion liquid, obtained by mixing (A) a hydrophobic coloring pigment and (B) volatile silicone oil, is mixed with an oil phase component containing (C) quaternary ammonium ion-substituted cationically modified clay mineral (i.e., organically modified clay mineral) of 0.01-5 mass % and (D) organic silicone resin of 0.03-4 mass %, and an aqueous phase component is further mixed therewith (abstract). The content of component (A) is preferably 1 to 30% by mass in the water-in-oil emulsified cosmetic (page 3, second paragraph). Suitable component (D) includes trimethylsiloxysilicate (page 4, penultimate paragraph), such as KF-7312J (page 5, second paragraph). The water-in-oil emulsified cosmetic can further contain oil phase components other than the components (B), (C) and (D) (page 6, sixth paragraph). Such an oil phase component may be an oil component that is liquid at 25°C (page 6, penultimate paragraph). Examples of oil components that are liquid at 25°C include linear or branched hydrocarbon oils (page 6, last paragraph). The oil components liquid at 25°C may be present from 10-60% by mass in the water-in-oil emulsion cosmetic (page 7, second paragraph).
Shibano differs from the instant claims insofar as not disclosing 0.1 to 10% by weight component (A), 33.4 to 89.9% by weight component (B), 10 to 40% by weight component (C), and 0.1 to 0.8% by weight component (D).
However, as discussed above, Shibano discloses 0.03-4% trimethylsiloxysilicate (Component (A)), 1 to 30% hydrophobic coloring pigment (Component (B)), and 10-60% oil component that is liquid at 25°C (Component (C)).
These ranges overlap with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A. For example, the composition may comprise 1% trimethylsiloxysilicate (Component (A)), 19% hydrophobic coloring pigment (Component B), 10% oil component that is liquid at 25°C (Component (C)) for a total amount of 30%. Since a slurry dispersion comprises components (A)-(C), the amount of component (A) may be 3.3% by weight of the slurry dispersion, the amount of component (B) may be 63.3% by weight of the slurry dispersion, and the amount of component (C) may be 33.3% by weight of the slurry dispersion.
In regards to instant claim 1 reciting a cosmetic comprising from 1 to 30% by weight of the slurry dispersion, since a slurry dispersion comprises components (A), (B), and (C), and Shibano discloses a water-in-oil emulsion cosmetic comprising 0.03-4% trimethylsiloxysilicate (Component (A)), 1 to 30% hydrophobic coloring pigment (Component (B)), and 10-60% oil component that is liquid at 25°C (Component (C)), the claimed amount of slurry dispersion (i.e., components (A), (B), and (C)) would have been obvious from these ranges as shown above.
In regards to instant claim 8 reciting components (A), (B), and (C) together, mixing an oil phase component with an aqueous phase component, and then mixing the mixture with (A), (B), and (C) therein, Shibano discloses mixing a hydrophobic coloring pigment (B) and volatile silicone oil (oil-phase component), then mixing in trimethylsiloxysilicate (A) and hydrocarbon oils (C), and then mixing an aqueous phase component therein. Although Shibano does not disclose the exact order of mixing, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04(IV)(C).
Response to Arguments
Applicant argues that Shibano does not teach a cosmetic containing 1 to 30% by weight of a slurry dispersion.
The Examiner does not find Applicant’s argument to be persuasive. According to claim 1, a slurry dispersion comprises components (A), (B), (C). Shibano discloses a water-in-oil emulsion cosmetic comprising 0.03-4% trimethylsiloxysilicate (Component (A)), 1 to 30% hydrophobic coloring pigment (Component (B)), and 10-60% oil component that is liquid at 25°C (Component (C)). The claimed amount of slurry dispersion (i.e., components (A), (B), and (C)) would have been obvious from these ranges. For example, the composition may comprise 1% trimethylsiloxysilicate (Component (A)), 19% hydrophobic coloring pigment (Component B), and 10% oil component that is liquid at 25°C (Component (C) for a total amount of 30% slurry dispersion. As such, Applicant’s argument is unpersuasive.
Applicant argues that the amount of hydrophobized color pigment is Shibano is 30% which is different from the present invention.
The Examiner does not find Applicant’s argument to be persuasive. The 1 to 30% hydrophobic coloring pigment disclosed by Shibano is relative to the water-in-oil emulsion cosmetic. The claimed amount is relative to a slurry dispersion. Since a slurry dispersion is the total amount of components (A)-(C), Shibano does teach the claimed range. For example, the composition may comprise 1% trimethylsiloxysilicate (Component (A)), 19% hydrophobic coloring pigment (Component (B)), and 10% oil component that is liquid at 25°C (Component (C)) for a total amount of 30% slurry dispersion. Therefore, the amount of component (B) may be 63.3% by weight of the slurry dispersion. As such, Applicant’s argument is unpersuasive.
Applicant argues that even if the same components are used, the different process can result in a different product. The claims clearly define the product, where the slurry dispersion contains the components (A), (B), and (C).
The Examiner does not find Applicant’s argument to be persuasive. It is unclear from Applicant’s showing whether the improvement with pigment dispersibility is through including trimethylsiloxysilicate in a slurry dispersion or whether the improvement is through incorporating trimethylsiloxysilicate after mixing of an oil phase component with an aqueous phase component. Claims 1, 3, 4, and 6 are composition claims and are not method claims. Therefore, if the improvement in pigment dispersibility is from the order of mixing, those claims would not be commensurate in scope with the showing. Furthermore, the results from the showing are specific to a water-in-oil emulsion cosmetic and claim 1 is not required to be a water-in-oil emulsion cosmetic. Applicant has not shown wherein the slurry dispersion comprising components (A), (B) and (C) is advantageous in non-water-in-oil emulsion cosmetics. One of ordinary skill in the art would not reasonably expect the same results with all cosmetics since dispersibility would depend on the number of phases a composition has and unexpected results with a multiphase composition may not be unexpected with a single-phase composition. Also, even if claim 1 were to recite a water-in-oil emulsion cosmetic, the claim would still not be commensurate in scope since there is nothing in the claim limiting the slurry dispersion to be separate from the oil phase component and aqueous phase component. Since order of mixing appears to be critical, there should be a separate oil phase component and aqueous phase component recited. Moreover, with regards to the method claims, the instant methods claims are also not commensurate in scope with the showing. The method claims do not recite amounts of each ingredient. One of ordinary skill in the art would not expect a slurry dispersion comprising minimal amounts of the pigment and carrier components to display an improvement in pigment dispersion. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1, 3, 4 and 6-11 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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