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.
Applicants' arguments, filed 01/13/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (WO 2011/016143, Feb. 10, 2011) (hereinafter Suzuki).
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. The UV filter(s) and/or coloring pigment(s) is/are embedded in the matrix in the layer (page 6). 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).
The prior art discloses a composite pigment comprising a porous substrate at least in part covered by at least one layer (claim 1) that is porous (claim 4), wherein the porous substrate comprises silica (claim 7) and the at least one layer comprises a matrix composed of calcium phosphate (page 6 and claim 7). Together these would provide a composition as claimed instantly.
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
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 of Meguro et al. (US 4,640,943, Feb. 3, 1987) (hereinafter Meguro).
The teachings of Suzuki are discussed above. Suzuki does not teach wherein the inorganic material 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.
3. Claims 9 and 10 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 of Meguro et al. (US 4,640,943, Feb. 3, 1987) (hereinafter Meguro), and further in view of Kitamura (US 2010/0129412, May 27, 2010).
The teachings of Suzuki and Meguro are discussed above. Suzuki and Meguro do not teach wherein the coating layer matrix is hydroxyapatite.
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]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated hydroxyapatite as the matrix for the coating layer motivated by the desire to formulate the pigment to have enhanced oil adsorbability, which is desirable, as taught by Kitamura.
Response to Arguments
Applicant argues that one skilled in the art would not look to Suzuki to design a pigment system with oil-absorbing properties, but rather UV filtering properties.
The Examiner does not find Applicant’s argument to be persuasive. Rationale different from Applicant’s is permissible. See MPEP 2144(IV). Therefore, it is not necessary for the prior art to disclose the same purpose as Applicant. Additionally, the instant claims as currently recited do not require the pigment system to have oil-absorbing properties. Therefore, it is not required for the prior art to teach oil-absorbing properties. Also, even if the instant claims were to be amended to such, Suzuki teaches a pigment comprising substantially the same substrate (e.g., silica) and shell material (e.g., calcium phosphate) as claimed; thus, the pigment taught by Suzuki necessarily has oil-absorbing properties. As such, Applicant’s argument is unpersuasive.
Applicant argues that Meguro is in a remote technical field and the skilled person stating from Suzuki would have had no reason to consult with this document.
The Examiner does not find Applicant’s argument to be persuasive. In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. A reference is analogous art to the claimed invention if: the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem). See MPEP 2141.01(a). In the instant case, the claimed invention is used in a cosmetic formulation. Meguro is in the same field of endeavor since Meguro discloses in claim 6 a surface modified inorganic substance in a cosmetic formulation. Therefore, Meguro and the claimed invention are in the same field of endeavor by both being in the field of cosmetics. As such, Applicant’s argument is unpersuasive.
Applicant argues that the data present in the present application demonstrates that inventive examples 1-6 have high oil absorption and exhibit a strong soft-focus effect with oil-absorbing properties.
The Examiner does not find Applicant’s argument to be persuasive. Examples 1-6 have hydroxyapatite, while all comparative examples lack calcium phosphate. As discussed in the rejection, Kitamura teaches wherein hydroxyapatite has high oil adsorbability. Therefore, it is not unexpected for compositions comprising hydroxyapatite to have high oil absorption compared to composition not comprising hydroxyapatite. As such, Applicant’s argument of unexpected results with regards to high oil absorption is not persuasive.
With regards to exhibiting a strong soft focus effect, the specification discloses wherein a good soft focus effect is observed wherein SFFR is between 0.4-0.7 and SFFT is above 0.5. Although the inventive examples fall within these ranges as shown in Table 2, it is not clear what is considered a good soft focus effect such that the SFF ranges are of significance. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. Since the inventive examples and comparative examples comprise different ingredients, one of ordinary skill in the art would reasonably expect the inventive examples and comparative examples to have different SFF values. It is not clear how Applicant determined that a SFFR between 0.4-0.7 and a SFFT above 0.5 means that the soft focus effect is unexpected. For example, Inv. Example 1 has a SFFR value of 0.41 and a SFFT value of 0.75. Comp. Example 14 has a SFFR value of 0.37 and a SFFT value of 0.72. It is not clear how a difference of 0.04 in SFFR shows that Inv. Example 1 has a soft focus effect that is advantageous over Comp. Example 14. 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.
THIS ACTION IS MADE FINAL. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRACY LIU/Primary Examiner, Art Unit 1614