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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 6, 2025 has been entered.
Claims 1-4 are pending.
Claim 1 is currently amended.
Claims 1-4 as filed on November 6, 2025 are under consideration.
Withdrawn Objections / Rejections
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Objections
Claim 1 is objected to because of the following informalities: “a content” is properly “the content” because antecedent basis is implicit. Appropriate correction is required.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Elliot et al. (US 5,340,569, published August 23, 1994, IDS reference filed February 28, 2023) in view of Hoshino et al. (JP 2016-074590 A, published May 12, 2016, as evidenced by the Google translation, of record); Nakano et al. (JP 2006-160920 A, published June 22, 2006, as evidenced by the Google translation, of record); and Hall-Goulle et al. (US 2011/0112234, published May 12, 2011, of record).
Elliot teaches a color cosmetic composition comprising ultrafine boron nitride and a magnesium fatty acid salt (title; abstract; claims). The magnesium fatty acid salt may comprise magnesium myristate (C14) having an average particle size of about 4 to 20 microns (claim 1; column 2, lines 12-20). The composition further comprises a vehicle chosen from inter alia mica (abstract; column 2, lines 21-27). Mica includes phlogopite and artificial or synthetic mica having a fluorine atom substituted for the hydroxyl group (synthetic fluorphlogopite) (paragraph bridging columns 2 and 3), as required by instant claim 3. The examples of Table II comprise 20 wt% of a magnesium fatty acid salt and 27.5 wt% mica, as required by instant claim 2.
Elliot does not specifically teach the magnesium fatty acid salt particles have an average thickness of 250 to 600 nm and an aspect ratio – defined as the ratio of the length to the width in paragraph [0013] of the instant specification – of 1 to 1.6 as required by claim 1.
Elliot does not specifically teach the average size of the mica is 15 microns or less as required by claim 4.
These deficiencies are made up for in the teachings of Hoshino, Nakano and Halle-Goulle.
Hoshino teaches a flaky mica powder having a median diameter of 5 to 30 microns and an average thickness of 0.05 to 0.35 microns (50 to 350 nm) and a cosmetic containing the same; the mica is excellent in oil absorption properties and has satisfactory glossy feeling and use feeling (title; abstract; claims), as required by instant claim 4. The mica of example 1 has a median particle size of 5 microns.
Nakano teaches fatty acid metal salt compositions; preferred fatty acid metal salts include calcium myristate and magnesium myristate (title; abstract; claims; pages 2-3, in particular page 3, 4th full paragraph). The fatty acid metal salt may be in any form inclusive of powder and plate; the average particle size is of the plate is 0.1 micron to 10 mm (page 4, middle, paragraph beginning “The fatty acid metal salt is …”).
Halle Goulle teaches pigment mixtures comprising graphite platelets and a pigment, especially a plate-like effect pigment comprising for example mica and talc and cosmetic products thereof (title; abstract; claims; paragraphs [0029], [0031]). The plate-like particles or flakes have a length from 1 micron to 5 mm, a width from 1 micron to 5 mm, a thickness of 20 nm to 2 microns, and a ratio of length to thickness of at least 2 or a thickness of 50 to 1000 nm and a “diameter” of about 1 to 60 microns (paragraphs [0068]-[0069]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the magnesium fatty acid salt particles of the mica-containing compositions Elliot to take the form of plates as taught by Nakano in order to improve compatibility with the mica which is also a flaky powder as taught by Hoshino. There would be a reasonable expectation of success because Elliot does not delimit the shape of the magnesium fatty acid salt particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the plate-like or flaky magnesium fatty acid salt particles of Elliot in view of Hoshino and Nakano having an average particle size of about 4 to 20 microns to have a length and width that span similar dimensions (encompasses 1:1 ratio) and a thickness that is at most ½ the length or a thickness of 50 to 1000 nm as taught by Halle Goulle because such dimensions define plate-like particles or flakes suitable for cosmetic compositions.
Regarding claim 4, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mica of the compositions of Elliot in view of Hoshino, Nakano and Halle Goulle to comprise the flaky mica powder of Hoshino having a median diameter of 5 to 30 microns or of 5 microns because this powder not only has satisfactory glossy feeling as expected for mica but also is excellent in oil absorption properties.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s argument that the claims as amended are tailored to the examples in the specification showing unexpectedly good cosmetic performance is acknowledged, however, Applicant has already been advised that the content of the specification has already been considered as part of the Graham analysis in the determination that that which is actually claimed is prima facie obvious and Applicant has already been advised that disclosed exemplary embodiments have limited nexus to the genus of generic compositions claimed. See MPEP 716.02 for information regarding allegations of unexpected results. Applicant bears the entire burden of establishing the significance of any proffered data in comparison with the prior art and in a manner commensurate in scope with the broadest claim(s).
Further consideration of the specification suggests Applicant is not in possession of that which is claimed (reproduced in part):
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because the specification suggests the fatty acid particles do not remain intact. Further consideration of the singular comparative pressed powder example (e.g., Table 1) does not illustrate the criticality of the geometry of the fatty acid particles for the exemplary pressed powders at least because the geometry of the comparative fatty acid particles is largely unknown (e.g., paragraph [0056]) and does not illustrate the criticality of the geometry of the fatty acid particles across the breadth of any pending claim. See MPEP 716.02(d) II for information regarding demonstrating the criticality of a range.
Further search suggests talc as exemplified (e.g., Table 1) is known in the art for imparting a natural cosmetic finish (e.g., Kim et al. (KR 2019-0066964 A, as evidenced by the Google translation), page 2, lower half) and suggests the combination of mica with metal soaps inclusive of magnesium myristate as exemplified is known in the art for imparting a matte (natural) cosmetic finish (e.g., Byun et al. (KR 2020-077169 A, as evidenced by the Google translation), whole document).
The totality of evidence of record weighs toward the obviousness of the compositions instantly claimed and therefore the rejections over Elliot are properly maintained.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable (1) over claims 1-6 of copending Application No. 18/043,550; (2) over claims 1-6 of copending Application No. 18/043,558; (3) over claims 1 and 2 of copending Application No. 18/043,559; and (4) over claims 1-12 of copending Application No. 18/713,334 in view of Elliot et al. (US 5,340,569, published August 23, 1994, IDS reference filed February 28, 2023) and Hoshino et al. (JP 2016-074590 A, published May 12, 2016, as evidenced by the Google translation, of record).
The instant claims are drawn to a cosmetic containing 1 to 30 wt% of C12-C22 fatty acid magnesium salt particles and mica, wherein the particles have a thickness of 250 to 600 nm and a ratio of the major/minor axis (length/width) of 1 to 1.6. The mica may be present at 5 wt% or more, may comprise synthetic fluorphlogopite, or may have an average size less than 15 microns.
The copending ‘550 claims are drawn to a cosmetic containing C12-C22 fatty acid magnesium salt particles, wherein the particles have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2.
The copending ‘558 claims are drawn to a cosmetic containing C12-C22 fatty acid magnesium salt particles and titanium oxide, wherein the particles have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2.
The copending ‘559 claims are drawn to a cosmetic containing 1 to 30 wt% of C12-C22 fatty acid magnesium salt particles and less than 3 wt% of a pearlescent powder having an average particle size of 40 microns or more, wherein the particles have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2 or of 1 to 1.6.
The copending ‘334 claims are drawn to a solid powder composition comprising 0.1 to 5 wt% of a metallic soap. The metallic soap may be a C12-C22 fatty acid calcium salt or magnesium salt. The C12-C22 fatty acid magnesium salt may have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2.
The instant claims differ from the copending claims with respect to the mica, however, this difference is obvious in view of the teachings of Elliot and of Hoshino as elaborated supra. It would have been obvious to one of ordinary skill in the art to modify the compositions of the copending claims to further comprise mica inclusive of phlogopite and artificial or synthetic mica having a fluorine atom substituted for the hydroxyl group (synthetic fluorphlogopite) in amounts of 27.5 wt% as taught by Elliot in order to provide a color cosmetic composition and it would have been obvious to modify the particle size of the mica to fall within the range of Hoshino of 5 to 30 microns because mica of this size is suitable for cosmetic compositions.
The instant claims also differ from the copending ‘550 and ‘558 claims with respect to the amount of the C12-C22 fatty acid magnesium salt particles, however, this difference is obvious in view of the teachings of Elliot as elaborated supra. It would have been obvious to one of ordinary skill in the art to modify the compositions of the copending ‘550 and ‘558 claims to comprise 20 wt% of the magnesium fatty acid salt because this amount is suitable for cosmetic compositions.
The instant claims are therefore an obvious variant of the copending claims in view of the knowledge of the prior art.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4 are directed to an invention not patentably distinct from claims 1-6 of commonly assigned Application No. 18/043,550, from claims 1-6 of commonly assigned Application No. 18/043,558 and from claims 1-12 of commonly assigned Application No. 18/713,334. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application Nos. 18/043,550, 18/043,558 and No. 18/713,334, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments: Double Patenting
Applicant’s request to the withdraw the double patenting rejections in view of the Remarks drawn to the examples in the specification is unpersuasive because the copending Applications all disclose the same magnesium particles as instantly claimed, rendering any result(s) of the proffered data moot because the magnesium particles of all of the copending claims will necessarily all possess the same properties as those instantly claimed. Therefore, the provisional double patenting rejections are properly maintained and made again.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al. (KR 2019-0066964 A, as evidenced by the Google translation) teaches a cosmetic base powder comprising inter alia mica and dry binders inclusive of magnesium myristate (title; abstract; claims; page 6, Example 4, Dry binder selection experiment).
Byun et al. (KR 2020-077169 A, as evidenced by the Google translation) teaches a talc-free matte type (natural) pressed powder comprising mica, a metal soap inclusive of magnesium myristate and an oil binder (title; abstract; claims; page 3, Example 1, Glossiness evaluation).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner , Art Unit 1600