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, 7 and 9-14.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/16/2026 has been entered.
Applicants' arguments, filed 06/16/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
1. Claims 1, 3, 4 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (WO 2011/016143, Feb. 10, 2011) (hereinafter Suzuki) in view Kitamura (US 2010/0129412, May 27, 2010).
Suzuki discloses a composite pigment comprising a porous substrate, said porous substrate being at least in part covered by at least one layer comprising at least one UV filter and/or at least one coloring pigment (claim 1). The at least one layer is porous (claim 4). The porous substrate has a mean diameter ranging from 0.1 µm to 30 µm (claim 2). The porous substrate comprises at least one inorganic material and/or at least one organic material (claim 6). Suitable inorganic material includes calcium carbonate, hydroxyapatite, calcium phosphate, silica, aluminum oxide, kaolin, and mixtures thereof (claim 7). The least one layer may be referred to as a coating layer. The coating layer comprises a matrix, which can be the main component of the layer, composed of the same material(s) as the one(s) forming the porous substrate (page 6). The coating layer may comprise, other than the matrix, UV filter(s) and/or the coloring pigment(s), and any additional material(s) (page 7). Suitable UV filters include cysteine (i.e., additive) (claim 11). The composite pigment can be used in a cosmetic composition (page 22). The composition may be in the form of a foundation (page 25).
Suzuki differs from the instant claims insofar as not disclosing wherein the coating layer matrix comprises hydroxyapatite (i.e., calcium phosphate mineral).
However, Kitamura discloses a bright pigment containing a scaly substrate and an outermost coating that covers the scaly substrate, that is provided as an outermost layer, and that contains at least one member selected from the group consisting of hydroxyapatite and hydrocalumite (abstract). Bright pigments and cosmetic compositions containing such pigments that are known in the art are not satisfactory in spreadability, feel upon application and biocompatibility due to their poor oil adsorbability when applied to the outer skin and the surface of a keratinous material (¶ [0018]). Although amorphous calcium phosphate has high oil adsorbability and superior acidic material adsorbability, it is highly soluble in water and swear and is problematic in being unstable as a coating (¶ [0019]). Kitamura discloses a bright pigment that has enhanced oil adsorbability and a cosmetic composition that has good spreadability over, and a good feel upon application to, the outer skin and the surface of a keratinous material (¶ [0021]).
Suzuki discloses wherein the coating layer may comprise additional material(s). Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated hydroxyapatite (i.e., calcium phosphate) into the coating layer as an additional material motivated by the desire to formulate the pigment to have enhanced oil adsorbability, which is desirable, as taught by Kitamura.
In regards to instant claims 3 and 4 reciting wherein the porous substrate has a d50 from 2-100 µm or 0.5-35 µm, respectively, as discussed above, Suzuki discloses that the porous substrate has a mean diameter ranging from 0.1 µm to 30 µm, which overlaps with the claimed ranges. 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. As such, the claimed ranges would have been obvious.
2. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (WO 2011/016143, Feb. 10, 2011) (hereinafter Suzuki) in view Kitamura (US 2010/0129412, May 27, 2010), and further in view of Meguro et al. (US 4,640,943, Feb. 3, 1987) (hereinafter Meguro).
The teachings of Suzuki and Kitamura are discussed above. Suzuki and Kitamura do not teach wherein the porous substrate is diatomaceous earth.
However, Meguro discloses wherein diatomaceous earth is an inorganic pigment (claim 7).
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. Suzuki discloses wherein the porous substrate comprises at least one inorganic material and/or at least one organic material. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated diatomaceous earth into the composition of Suzuki since it is a known and effective inorganic material for forming pigments as taught by Meguro.
Response to Arguments
Applicant argues that combining Kitamura with Suzuki’s silica substrate or Meguro’s diatomaceous earth substrate would still contradict Suzuki’s fundamental teaching that the coating matrix must be the same material as the substrate.
The Examiner does not find Applicant’s argument to be persuasive. Suzuki discloses wherein the matrix of the coating layer is composed of the same material(s) as the one(s) forming the porous substrate. Suzuki then discloses wherein the coating layer may comprise, other than the matrix, additional material(s). Thus, adding hydroxyapatite as an additional material to the coating layer would not contradict Suzuki’s fundamental teaching since hydroxyapatite is added as an additional material and not as a matrix, which is composed of the same material(s) as the one(s) forming the porous substrate. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1, 3, 4, 7 and 9-14 are rejected.
Claims 15-18 have been withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 pm.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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