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
Formal Matters
Claims 3-4 are cancelled. Claims 6-11 are new. Claims 1, 2, and 5-11 are pending. Claims 6-11 are withdrawn by original presentation. Claims 1-2, and 5 are pending and under examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/06/2026 has been entered.
Priority
This application is a Continuation of PCT/JP2021/043026 filed on 11/24/2021, which claims priority to Japanese application JP2020-210120 filed on 12/18/2020.
Rejections Withdrawn
The rejection under USC 103 over Kusukame and Chitrattha is withdrawn per applicant’s amendments and arguments.
The rejection under non-statutory patenting over ‘461 and Chitrattha is withdrawn per applicant’s amendments and arguments.
As these rejections are withdrawn, applicant’s arguments toward the rejections are now moot. However, note that a new reference now replaces Chitrattha in the rejections under USC 103 and double patenting. Applicant will have to address these rejections that were added due to the amendment (see after final that was entered by RCE).
New Rejections to Address Applicant’s Amendments After Final (Entered by RCE)
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 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 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, 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kusukame US 20150265030 and Nair US 20150004391.
Kusukame provides for “an adhesive sheet for skin includes attaching a water-absorptive support to a water-permeable biocompatible film to prepare a stack including the biocompatible film and the support” (abstract and figures 1 and 2 and paragraphs 25-26). Kusukame teaches adhesive sheet for skin with water permeable biocompatible film attached to a support (abstract). Kusukame teaches cosmetic methods (paragraph 2) in its teachings. Kusukame teaches the support has a water capacity of no less than 1 mg/mm2 (claim 6 of Kusukame and paragraph 18). Also, Kusukame teaches not less than 4 mg/lmm2 for water absorption of the support (paragraph 34). Kusukame teaches water absorbing capacities of support materials (paragraph 35). Kusukame provides for 4.79 mg/mm2 for the filter paper (table 1). Kusukame also provides for polylactic acid sheets with film thickness (paragraph 49). Filter paper is used in example 2 with a polylactic acid sheet film (also see example 1). Kusukame teaches thicknesses of 10 nm to 800 nm for the film (paragraphs 21 and 33).
Kusukame does not teach pore sizes and pore content of the thin film as in applicant’ claims. Kusukame does provide for a polylactic acid thin film laminated on a high water capacity support that can hold water.
Nair teaches porous organic films with multiple discrete cavities (noted as pores in Nair) (abstract and paragraph 31). Nair provides thickness of the film will be based on the desired use (paragraph 76). Nair allows for pores of 2 nm to 50 nm and greater than 50 nm (paragraph 32). Nair allows for at least 200 nm and up to 5 microns as average diameters of the cavities (paragraph 33). Nair teaches various uses for the porous organic polymeric films including as supports and structural materials (paragraphs 34 and 71, paragraph 71 provides for support with the organic polymeric film). Nair teaches cosmetics among other uses (paragraph 35). Nair teaches total volume of discrete cavities of at least 5% up to 80% (paragraph 78 and paragraph 122). Nair allows for polymers including polylactic acid for the material (paragraph 44). Nair also provides for permeability of the film (paragraphs 83 and 146). Nair notes that using multiple discrete cavities (pores) can alter the opacity, hydrophobicity or other desirable properties compared to nonporous forms (abstract of Nair). Thus, one would adjust pores in the porous thin film to achieve such desired properties.
One of ordinary skill in the art before the time of filing would have considered modifying the cosmetic product taught by Kusukame which has a thin film layer attached (laminated) to a substrate capable of retaining water (water capacity) with teachings of Kusukame that motivates a substrate layer with high water capacity for products that can be used cosmetically and teachings of Nair that provides for porous polymeric thin film layers (also has use for cosmetic products in Nair) have pore size within that of applicant’s claims and provides for an overlapping range down to 5% pore volume which would be reflective of smaller pore sizes and/or a lower amount of pores throughout the film. Thus, pore size, porosity and water capacity are seen by the prior art as suitable variables to modify in products that may be used in cosmetics which have porous thin films of polymer as well as substrates desiring higher water capacity. One of ordinary skill in the art would have had a reasonable expectation of success in modifying these characteristics found in layered/laminated thin film/high water capacity substrate products of Kusukame to provide for useful cosmetic products with desirable material properties.
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 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, 8, 10, 13, and 16 of U.S. Patent No. 9585461 in view of Nair US 20150004391.
The claims of ‘461 provides for a water permeable film of overlapping thicknesses attached (laminated) onto a water absorbing support that can have high water contents. Polylactic acid (a film material of ‘461 claims) is hydrophilic.
‘461 claims do not have the pore size of the film.
Nair teaches porous organic films with multiple discrete cavities (noted as pores in Nair) (abstract and paragraph 31). Nair provides thickness of the film will be based on the desired use (paragraph 76). Nair allows for pores of 2 nm to 50 nm and greater than 50 nm (paragraph 32). Nair allows for at least 200 nm and up to 5 microns as average diameters of the cavities (paragraph 33). Nair teaches various uses for the porous organic polymeric films including as supports and structural materials (paragraphs 34 and 71, paragraph 71 provides for support with the organic polymeric film). Nair teaches cosmetics among other uses (paragraph 35). Nair teaches total volume of discrete cavities of at least 5% up to 80% (paragraph 78 and paragraph 122). Nair allows for polymers including polylactic acid for the material (paragraph 44). Nair also provides for permeability of the film (paragraphs 83 and 146). Nair notes that using multiple discrete cavities (pores) can alter the opacity, hydrophobicity or other desirable properties compared to nonporous forms (abstract of Nair). Thus, one would adjust pores in the porous thin film to achieve such desired properties.
One of ordinary skill in the art before the time of filing would have considered modifying the cosmetic product taught by ‘461 which has a thin film layer attached (laminated) to a substrate capable of retaining water (water capacity) with claims of ‘461 that motivates a substrate layer with high water capacity for products that can be used cosmetically and teachings of Nair that provides for porous polymeric thin film layers (also has use for cosmetic products in Nair) have pore size within that of applicant’s claims and provides for an overlapping range down to 5% pore volume which would be reflective of smaller pore sizes and/or a lower amount of pores throughout the film. Thus, pore size, porosity and water capacity are seen by the prior art as suitable variables to modify in products that may be used in cosmetics which have porous thin films of polymer as well as substrates desiring higher water capacity. One of ordinary skill in the art would have had a reasonable expectation of success in modifying these characteristics found in layered/laminated thin film/high water capacity substrate products of ‘461 to provide for useful cosmetic products with desirable material properties.
Conclusion
No claims are allowed.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613