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 18-26.
Applicants' arguments, filed 02/19/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 18-26 are rejected under 35 U.S.C. 103 as being unpatentable over Antonelli et al. (US 6,235,297, May 22, 2001) in view of Nijakowski (US 2016/0089323, Mar. 31, 2016) and Ueda et al. (JP 2022147656 A, Oct. 6, 2022).
Antonelli et al. disclose a cosmetic composition (abstract). The composition may be a water and oil emulsion lotion (col. 2, line 36). The water and oil emulsion may be an oil-in-water emulsion (col. 2, line 41). The water and oil emulsion may be in the form of a foundation makeup composition (col. 10, lines 54-55). The foundation makeup composition may contain 0.1-70% pigments, powders, or mixtures thereof, having particle sizes of 0.02 to 100 microns (col. 11, lines 2-6). Examples of powders include spherical silica (col. 11, line 10). The oil-in-water emulsion may comprise 20-70% water (col. 10, line 44) and 0.1-99% oil (col. 2, lines 43-44).
Antonelli et al. differ from the instant claims insofar as not disclosing wherein the composition comprises lauroyl lysine.
However, Nijakowski discloses a skin smoothing composition (abstract). The composition may be in the form of a oil-in-water emulsion (claim 14). The composition can comprise a pigment powder component (¶ [0048]). Commercially available pigment powder components include lauroyl lysine: Amihope LL available from Ajinomoto (¶ [0050]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. The composition of Antonelli et al. comprises pigments. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated lauroyl lysine, such as Amihope LL, into the composition of Antonelli et al. since it is a known and effective pigment for cosmetic compositions as taught by Nijakowski.
The combined teachings of Antonelli et al. and Nijakowski do not teach wherein the spherical silica has an oil absorption of from about 1 ml/100g to about 50 ml/100g.
However, Ueda et al. disclose an oil in water emulsified cosmetic comprising a hydrophilic spherical silica powder (abstract). The oil aborption of the hydrophilic spherical silica powder is not particularly limited, but is preferably 10 ml/100 g or more and 500 ml/100 g or less (page 2 of 8 of translation).
Antonelli et al. disclose wherein the composition comprises spherical silica, but does not disclose its physical properties. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the spherical silica of Antonelli et al. to have an oil absorption of 10 ml/100 g or more and 500 ml/100 g or less since this is a known and effective physical property for spherical silicas used in oil-in-water cosmetics as taught by Ueda et al.
In regards to instant claim 1 reciting wherein the lauroyl lysine has a flat polygonal shape and a mean particle size of from about 20 microns to about 30 microns, as discussed above, it would have been obvious to one of ordinary skill in the art to have incorporated Amihope LL into the composition of Antonelli et al. As noted by the instant specification on page 7, lines 17-20, Amihope LL has a flat hexagonal shape and a mean particle size of 20-30 microns. Therefore, since it would have been obvious to one of ordinary skill in the art to have incorporated Amihope LL into the composition of Antonelli et al., a composition comprising lauroyl lysine having a flat polygonal shape and a mean particle size of from about 20 microns to about 30 microns would have been obvious.
In regards to instant claim 1 reciting a weight ratio between the silica and the lauroyl lysine of from about 5:1 to about 1:5, as discussed above, Antonelli et al. disclose 0.1-70% pigments and powders. As discussed above, spherical silica is a powder and lauoryl lysine is a pigment. The claimed weight ratio would have been obvious to one of ordinary skill in the art by one selecting an amount of silica and an amount of lauroyl lysine from this range and arriving at a ratio that overlaps with the claimed ratios. 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.
In regards to instant claim 1 reciting a particle size ratio between the silica and the lauroyl lysine of from about 1:2 to about 1:20, as discussed above, Antonelli et al. discloses a particle size of 0.02 to 100 microns and it would have been obvious to have incorporated Amihope LL (mean particle size of 20-30 microns) into the composition of Antonelli et al. The claimed particle size ratios would have been obvious to one of ordinary skill in the art by one selecting a particle size of silica and a particle size of Amihope LL from these ranges and arriving at a ratio that overlaps with the claimed ratios. 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.
In regards to instant claim 1 reciting wherein the composition is free of cellulose powder, as shown in Example 4 of Antonelli et al., the composition does not have cellulose powder.
In regards to instant claim 1 reciting 0% cetyl alcohol and stearyl alcohol, as shown in Example 4 of Antonelli et al., the composition does not have cetyl alcohol and stearyl alcohol.
In regards to instant claims 18-20, as shown in Example 4 of Antonelli et al., the composition does not comprise shea butter and behenyl alcohol, thus meeting the limitation of a composition comprising up to about, 0.5%, 0.3%, and 0.1%, which includes 0%.
Response to Arguments
Applicant’s arguments have been considered but are moot because a new rejection necessitated by Applicant’s amendment has been made.
Conclusion
Claims 1, 3, 4 and 18-26 are rejected.
No claims are 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 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