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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
Status of Claims
Amendment filed on 03/16/2026 is acknowledged.
Claims 1 and 2 are amended.
Claims 1 and 2 are pending and being examined on the merits herein.
Priority
This instant application 18043559, filed on 02/28/2023, is a 371 of PCT/JP2021/035133, filed on 09/24/2021, claims foreign priority to Japan 2020-164365, filed on 09/30/2020.
Claim Rejections - 35 USC § 112
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.
Claims 1-2 are 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 1 recites “1 mass% to 20 mass% of pearlescent powder, relative to the total mass of the cosmetic, wherein the pearlescent powder comprises 3 mass% or less of population of particles having an average particle size of 40 um or more, relative to the total mass of the cosmetic”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “3 mass% or less” and the claim also recites “1 mass% to …”, which the is the narrower statement of the range/limitation “3 mass% or less”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is also unclear how the population of particles having an average particle size of 40 um or more presents at 3 mass% or less would represent in the total pearlescent powder population, when the total pearlescent powder is at low end of the amount range, such as 1-3 mass% relative to the total mass of the cosmetic. It is unclear in such circumstances whether the pearlescent powder population can allow entirely to be the particles having average particle size of 40 um or more.
Based upon specification, this population having an average particle size of 40 um or more is not
preferred, and average particle sizes are generally smaller. However, the claim language as discussed above fails to express the limitation scope as such. For the purpose of compact prosecution, the population of particles having particle size of 40 um or more can be absent in the composition.
Claim 1 also recites “the fatty acid of the particles consisting of magnesium myristate has 12 to 22 carbon atoms”. Since magnesium myristate is supposed to be the only ingredient in these particles, as “consisting of” language conveys, it is unclear why the carbon atoms have to be defined as 12 to 22 range instead of being known containing 14 carbon atoms in myristic acid. If it is meant to be having substituents in the fatty acid chain, the language does not express such. This renders the claim indefinite.
Claim 2 is rejected accordingly because it is depending on claim 1 and it does not clarify the issue in claim 1 as addressed above.
Claim Rejections - 35 USC § 103
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.
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.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Ashida et al. (EP2540670, 02/01/2013, in record of 05/29/2025), in view of Elliott et al. (US5340569, 08/23/1994) and Takasuka (JP2002173415, 06/21/2002, translation replied upon below, in record of 05/29/2025).
Ashida teaches a cosmetic composition comprising flaky particles coated with a fatty acid metal salt (Title), providing great comfort of use, excellent smoothness and transparency on skin for an excellent appearance (Abstract).
Ashida teaches that the fatty acid metal salt is not particularly limited, and one having an alkyl moiety that contains more carbon atoms is preferable, and especially, one having an alkyl moiety that contains 12 or more carbon atoms is more preferable (Claim 3), including lauric acid, myristic acid (14 carbon atoms, falling within 12 to 22 carbon atoms), palmitic acid, and stearic acid, etc. [0022], in view of pleasant feeling after application on skin, and excellent storage stability as a cosmetic composition containing the flaky particulate material, and magnesium salts are preferable examples of fatty acid metal salts [0022]. Ashida indicates that one or more species of flaky particle materials can be included in the cosmetic composition [0026], and other flaky particles such as color pigments [0028] like pearl pigment (for example, titanium oxide-coated mica, titanium oxide-coated bismuth oxychloride, titanium oxide-coated talc, color titanium oxide-coated mica, bismuth oxychloride, bismuth oxychloride, etc.) [0029] (corresponding to pearlescent powder). Ashida points out a pigment with a high reflection-intensity ratio (0°/45°) gives skin a matt appearance, and a cosmetic composition containing such a pigment can attain matt finish. In this respect, characteristics of the flaky particulate material of the present invention is different from that of boron nitride, which is highly glossy and cannot give skin a matt appearance. For a cosmetic composition, nonglossy and matt finish is often required. Thus, pigments that give skin a matt appearance are highly desired [0011] and Ashida teaches that pearlescent powder is suitable for such intended use [0029].
Ashida teaches the amount of aliphatic metal salts, e.g., magnesium myristate resulted from fatty acid moiety being myristic acid (e.g., [0022]), on a treated flaky particulate material should be 0.1 to 15% by mass (e.g., [0024]), overlapping with 1 to 30% of magnesium myristate particles as recited in instant claim 1. Ashida points out that the cosmetic composition contains 1 to 50% by mass of the flaky particulate material [0026], overlapping with pearlescent powder 1 to 20 mass% in instant claim 1.
Ashida specifies that it is preferable that a particle in the flaky particulate material has an average length of the major axis of 3 to 40 μm. If the average length of the major axis is less than 3 μm, a cosmetic composition containing such a flaky particulate material may cause frictional feeling when applied on skin and may have poor smoothness. If the length of the average major axis exceeds 40 μm, a cosmetic composition containing the flaky particulate material may be granular in touch when applied on skin and may have poor smoothness [0015]. Therefore, Ashida does not recommend pearlescent particles having particle size bigger than 40 um in the composition, and consequently, the population of pearlescent powder having particle size 40 um or more would be substantially free, overlapping with the 3 mass% or less as recited in instant claim 1.
Ashida teaches the ratio: (average length of the major axis) / (average particle thickness) of 3 to 300. If the ratio: (average length of the major axis)/ (average particle thickness) is less than 3, a cosmetic composition containing such a flaky particulate material may cause frictional feeling when applied on skin and may have poor smoothness. If the ratio: (average length of the major axis)/ (average particle thickness) exceeds 300, a cosmetic composition containing such a flaky particulate material may be granular in touch when applied on skin, and may have poor smoothness [0016]. The average length of the major axis means an average of the maximum diameters of 30 particles on a line that is drawn at random in a scanning electron micrograph of powdery flakes. The average particle thickness means an average value of the thickness of 30 particles, which is determine in a similar way [0017]. Taking into consideration of length of major axis is 3 to 40 um, and ratio of (average length of the major axis) / (average particle thickness) of 3 to 300, the average fatty acid magnesium salt particle thickness taught by Ashida is 3/300 = 0.01 um = 10 nm to 40/3 = about 13 um = about 1300 nm, which overlaps with the average thickness 250 to 600 nm of the fatty acid magnesium salt particles in instant claim 1.
Ashida does not explicitly teach the fatty acid magnesium salt is magnesium myristate, although myristic acid is one of the fatty acids that can be used to generate the magnesium fatty acid salt; Ashida does not directly teach the aspect ratio of (the major axis diameter of a particle / the minor axis diameter of a particle) in range of 1.0 -2.0 as recited in instant claim 1, or 1.0 to 1.6 in instant claim 2.
Elliottt throughout the reference teaches a powdered molded color cosmetic composition including an ultrafine boron nitride and a magnesium fatty acid salt (e.g., Abstract).
Elliottt claims that magnesium myristate can present from about 0.001 to about 30% in the composition (Claim 1), and Elliottt exemplifies the cosmetic formulation comprising jet milled magnesium myristate 2% (overlapping with 1-30% of magnesium myristate in instant claim 1), and colorants 8-10% (Col. 4, Example 1, Table 1) such as pearl substrate including mica and/or TiO2, carmine, iron oxides, ferric ferrocyanide, ultramarine rose, manganese violet, chromium oxide hydrous/anhydrous green, ferrocyanide, bismuth oxychloride (Col. 5, Table 2) (corresponding to pearlescent powder, overlapping with range 1 to 20% in instant claim 1). Elliottt specifies that all components in the composition will have similar average particle size, preferably between about 1 to about 8 um, optimally between 2 to 7 um (e.g., Col. 4, Lines 39-42), suggesting the pearlescent powder having average particle size of 40 um or more would be excluded in the composition, thus resulting in 3 mass% or less of such particles in the composition, as recited in instant claim 1.
Takasuka teaches a cosmetic flat powder having a permanent diffuse transmission layer that provides covering power with cosmetic effects of preventing three-dimensional blemishes such as the fine wrinkles from being visual, and the effects are hardly changed with time (Abstract), containing an organic polymer and particulate matter having a size of 10 um or less, the diameter of the particulate matter is 0.1 to 0.8 um (Claim 6), and the metal compound and/or organic polymer powder is selected from the group consisting of oxides, phosphates and silicates of magnesium, aluminum, zinc, cellulose, etc. (Claim 10).
Takasuka exemplifies powder compositions comprising pearl pigment, e.g., titanium mica (titanium oxide 60% coated synthetic mica (titanium synthetic mica) ([0012], Example 5), or (mica coated with 10% titanium oxide and 30% iron oxide, colored titanium mica) ([0014], Example 6). Takasuka specifies that the particles have a length-to-width aspect ratio of 0.2 or more (Claim 2), and more preferably a length-to-width aspect ratio of 0.5 to 1 [0005; 0006] (corresponding to aspect ratios in instant claims 1-2).
It would have been prima facie obvious to implement the composition containing fatty acid (e.g., myristic acid) magnesium salt with pearlescent pigment flaky material taught by Ashida and select magnesium myristate particles with confidence based on cosmetic formulation taught by Elliott using magnesium myristate as essential particle, and incorporate with the teaching from Takasuka to optimize the particle dimensions including aspect ratio to arrive at current invention. Because Ashida teaches myristic acid is one among the few fatty acid moieties suitable for the fatty acid magnesium salt (resulting in magnesium myristate) in the composition, while Elliott demonstrates using magnesium myristate particles with pearlescent particles in the cosmetic composition, it would motivate artisans to select the specific ingredient for reasonable expectations of success. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
The adjustable dimensions of particles, e.g., magnesium myristate aspect ratio or thickness, are inherent properties of the composition, which are taught by combined prior art of Ashida, Elliott and Takasuka. Chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Moreover, Ashida points out that the ratio of average length of the major axis / average particle thickness has ideal range between 3-300, and Takasuka demonstrates that length-to-width aspect ratio of 0.2 or more, and preferably 0.5 to 1 makes the flat particles a permanent diffuse-transmitting layer, especially the current composition does generate flat type of particles, it would have motivated scientists in the field to take into consideration to combine the teachings, and optimize the aspect ratio between major axis and minor axis of the particle for achieving the intended cosmetic benefit that already disclosed in both Ashida and Takasuka. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Furthermore, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). A prima facie case of obviousness typically exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art". 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). For this instance, the fatty acid carbon atom numbers, the aspect ratio, and the fatty acid magnesium particle thickness, and particle mass amounts in the composition all overlap with those in prior art. “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-2 and 4-5 of copending Applications No. 18043550, in view of Ashida et al. (EP2540670, 02/01/2013, in record of 05/29/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application No. 18043550 recites a cosmetic containing fatty acid magnesium salt particles having as aspect ratio of 1.0 to 2.0, expressed by formula (1) as the major axis diameter of a particle (um) / the minor axis diameter of the particle (um), the fatty acid has 12 to 22 carbon atoms being myristic acid (Claim 4), and the average thickness of the fatty acid magnesium salt particles is 250 nm to 600 nm (Claims 1 and 5), the median size of fatty acid magnesium salt particles have median size of 10.0 um to 40.0 um (Claim 2).
The above copending application does not recite pearlescent powder and its size or component mass amounts as recited in instant claim 1.
Ashida teaches pearlescent powder in the fatty acid magnesium flaky particle composition with particle size, and both pearlescent powder and magnesium salt of fatty acid amounts as discussed in greater detail above and incorporated herein.
It would have been prima facie obvious to incorporate pearlescent powder taught by Ashida into the fatty acid magnesium salt composition recited in the above copending application, because Ashida points out a pigment with a high reflection-intensity ratio (0° /45°) gives skin a matt appearance, and a cosmetic composition containing such a pigment can attain matt finish. In this respect, characteristics of the flaky particulate material of the present invention is different from that of boron nitride, which is highly glossy and cannot give skin a matt appearance. For a cosmetic composition, nonglossy and matt finish is often required. Thus, pigments that give skin a matt appearance are highly desired [0011] and Ashida teaches that pearlescent powder is suitable for such intended use [0029]. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). A prima facie case of obviousness typically exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art". 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). “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1 and 5 of copending Application No. 18043563, in view of Ashida et al. (EP2540670, 02/01/2013, in record of 05/29/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application No. 18043563 recites a cosmetic containing 1 to 30 mass% magnesium myristate particles and mica, the aspect ratio of the magnesium myristate particles is 1.0 or more and 1.5 or less, and the average thickness of the fatty acid magnesium salt particles is 300 to 450 nm (Claim 1) (overlapping with magnesium myristate amount, aspect ratio, and size range in instant claims), and it recites the median particle size of magnesium myristate is 15 to 35 um (Claim 5).
The above copending application does not recite pearlescent powder and its mass amount or size as recited in instant claim 1.
Ashida teaches pearlescent powder in the fatty acid magnesium flaky particle composition with particle size, and both pearlescent powder amount as discussed in greater detail above and incorporated herein.
It would have been prima facie obvious to incorporate pearlescent powder taught by Ashida into the magnesium myristate particle composition recited in the above copending application, because Ashida points out a pigment with a high reflection-intensity ratio (0° /45°) gives skin a matt appearance, and a cosmetic composition containing such a pigment can attain matt finish. In this respect, characteristics of the flaky particulate material of the present invention is different from that of boron nitride, which is highly glossy and cannot give skin a matt appearance. For a cosmetic composition, nonglossy and matt finish is often required. Thus, pigments that give skin a matt appearance are highly desired [0011] and Ashida teaches that pearlescent powder is suitable for such intended use [0029]. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). A prima facie case of obviousness typically exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art". 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). “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 6, 8, and 12 of copending Application No. 18713334, in view of Elliott et al. (US5340569, 08/23/1994). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application No. 18713334 recites a cosmetic powder composition comprising metallic soap with 0.1 to 30% by mass of the pigment and 0.1 to 5% by mass of a metallic soap (Claims 1 and 12) (overlapping with mass amounts of pearlescent powder and fatty acid magnesium salt in instant claim 1), wherein the metallic soap can be a C12-22 fatty acid magnesium salt (Claim 6), the particles of fatty acid magnesium salt satisfy an aspect ratio 1.0 or more and 2.0 or less represented by formula (1) as the aspect ratio = the major axis diameter of a particle (um) / the minor axis diameter of the particle (um), and the average thickness of the fatty acid magnesium salt particles is 250 to 600 nm (Claim 8).
The above copending application does not recite magnesium myristate as the fatty acid magnesium salt, and it does not recite pearlescent powder and its size/amount as recited in instant claim 1.
Elliott teaches pearlescent powder and magnesium myristate particle composition with particle size, pearlescent powder amount as discussed in great detail above and incorporated herein.
It would have been prima facie obvious to incorporate pearlescent powder and magnesium myristate taught by Elliott into the fatty acid magnesium salt composition recited in the above copending application. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). A prima facie case of obviousness typically exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art". 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). “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 3 and 6 of copending Application No. 18043558, in view of Elliott et al. (US5340569, 08/23/1994). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application No. 18043558 recites a cosmetic containing fatty acid magnesium salt particles and fine particle titanium oxide, wherein the fatty acid of the fatty acid magnesium salt particles has 12 to 22 carbon atoms, the aspect ratio of the fatty acid magnesium salt particles expressed by the formula (1) as the aspect ratio = the major axis diameter of a particle (um) /the minor axis diameter of the particle (um) is 1.0 or more and 2.0 or less, and the average thickness of the fatty acid magnesium salt particles is 250 to 600 nm (Claim 1), particle titanium oxide content is 10 mass% or less (Claim 3) (overlapping with pearlescent particle amount in instant claim 1), the cosmetic is a powder cosmetic (Claim 6).
The above copending applications do not recite fatty acid magnesium salt being magnesium myristate, and it does not recite pearlescent powder and its size/amount as recited in instant claim 1.
Elliott teaches pearlescent powder and magnesium myristate particle composition with particle size, pearlescent powder amount as discussed in great detail above and incorporated herein.
It would have been prima facie obvious to incorporate pearlescent powder and magnesium myristate taught by Elliott into the fatty acid magnesium salt composition recited in the above copending application. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). A prima facie case of obviousness typically exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art". 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). “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments/remarks filed on 03/16/2026 have been fully considered.
35 U.S.C. 112 rejections
Applicant requests to withdraw 35 U.S.C. 112 rejections because they are moot in light of amendments.
In light of claim amendments filed on 03/16/2026, most 35 U.S.C. 112 rejections are withdrawn. However, claim 1 language still renders claim scope indefinite. Please find details in the office action presented above.
Art rejections
Applicant asserts that Ashida and Takasuka are silent with amended claim 1 scope “1 mass% to 30 mass% of particles consisting of magnesium myristate”. The rejections should be withdrawn.
Ashida does teach using myristic acid as one of the fatty acids, as a result, magnesium myristate is still implied and suggested, if not explicitly taught by Ashida, and the amount of such salt, as an example of fatty acid magnesium salt, would follow the general teaching of Ashida, and therefore, the amount is also taught by Ashida. Moreover, new prior art Elliott is combined with Ashida and Takasuka to teach explicitly throughout the reference that magnesium myristate is the main ingredient for the cosmetic composition, which also can combine with pearlescent agents.
Please refer to the entire office action as presented above as a complete response to the remarks/arguments.
Non-statutory double patenting rejection
Applicant will address these rejections when, if ever, these rejections become non-provisional rejections.
The double patenting rejections of record have been maintained and updated based on copending application status and current invention amendments as no action regarding these rejections has been taken by Applicant at this time.
Conclusion
No claim is allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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