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, 4, 5 and 8-18.
Applicants' arguments, filed 04/14/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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, 4, 5, 8, 9 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Barness et al. (US 2004/0235756, Nov. 25, 2004) (hereinafter Barness) in view of Mershon (US 2003/0008011, Jan. 9, 2003), KR 20150015580 A (Feb. 11, 2015), and KR 950005947 A (Mar. 20, 1995).
Barness discloses a protective agent suitable to protect the human skin against lesions caused by vesicants or other percutaneous chemical agents, which comprises a protective-effective amount of a hydrophilic water-based cream together with one or more additives selected from among the group consisting essentially of polyols, polysaccharides, and salts of inorganic or inorganic acids (abstract). The composition may comprise from 0% to 86% water (Table 1). Suitable additives include potassium carbonate (i.e., inorganic salt adjusting agent) (¶ [0023]). The addition of additives enhances repelling of sulfur mustard from the skin surface (¶ [0022]). While the presence of active materials is not a necessity in the protective agents, any suitable active agent can be added. Furthermore, the protective agent may further comprise reactive materials (¶ [0024]).
Barness differs from the instant claims insofar as not disclosing wherein the composition comprises plate-shaped inorganic particle powder.
However, Mershon discloses wherein several ointments or creams (topical skin protectants) were developed to shield skin from contamination with toxic chemical warfare agents. Some of these protectants incorporated camouflage pigments (¶ [0006]).
KR 20150015580 A discloses a cosmetic composition comprising a platelet pigment surface-treated with magnesium oxide as an active ingredient (page 2). The cosmetic composition has a soft-focus effect (page 2). A soft-focus effect means to express the surface of the object in a cloudy manner (page 3).
KR 950005947 A discloses wherein boron nitride is a plate-like pigment (abstract). The plate-like pigment has an average particle diameter in the range of 1 to 200 µm (claim 2).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated the platelet boron nitride of KR 95005947 A surface treated with magnesium oxide into the composition of Barness since skin protectant compositions comprise pigments as taught by Mershon, platelet pigment surface-treated with magnesium oxide is a known and effective pigment as taught by KR 20150015580 A, and boron nitride is a known and effective platelet pigment as taught by KR 95005947 A.
In regards to instant claim 8 reciting how the plate-shaped inorganic particle powder is surface treated, this is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Therefore, since a surface-treated plate-like inorganic particle is obvious from the prior art disclosing plate-like mica surface-treated with magnesium hydroxide, claim 8 is unpatentable even though the plate-like mica of the prior art was surface-treated using a different process.
In regards to instant claim 9 reciting wherein the inorganic substance is included at 0.5 to 20 parts by weight, since KR 20150015580 A discloses wherein surface-treating with magnesium oxide is what causes the soft focus effect, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount depending on the level of soft focus desired.
In regards to instant claim 17 reciting wherein the plate-shaped inorganic particle powder is included at 0.5 to 30 wt. %, since platelet boron nitride is a pigment, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount of platelet boron nitride depending on the level of pigmentation desired. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See 2144.05(II)(A).
2. Claims 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Barness et al. (US 2004/0235756, Nov. 25, 2004) (hereinafter Barness) in view of Mershon (US 2003/0008011, Jan. 9, 2003), KR 20150015580 A (Feb. 11, 2015), KR 950005947 A (Mar. 20, 1995), and further in view of Chilcott et al. (GB 2314020 A, Dec. 17, 1997) (hereinafter Chilcott), Avalle (US 6,004,541, Dec. 21, 1999) and Silibase (Silibase-9806 Dimethicone, Mar. 7, 2020).
The teachings of Barness, Mershon, KR 20150015580 A, and KR 950005947 A are discussed above. Barness, Mershon, KR 20150015580 A, and KR 950005947 A do not teach wherein the composition comprises liquid perfluoride.
However, Chilcott discloses a topical barrier composition which hinder or prevent passage of e.g. chemical warfare agent into the skin by containing a perfluorinated polymeric compound (abstract). Such compounds have low surface energy and thereby prevent portioning of volatile chemical into the topical composition and skin (page 2, lines 21-22). The perfluorinated polymeric compound is an oil (i.e., liquid perfluoride) (claim 2).
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. Barness discloses wherein the composition may comprise active agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated perfluorinated polymeric compound in oil form into the composition since perfluorinated polymeric compounds are known and effective active agents for hindering or preventing passage of chemical warfare agents into the skin as taught by Chilcott.
The combined teachings of Barness, Mershon, KR 20150015580 A, KR 950005947 A, and Chilcott do not teach wherein the composition comprises perfluorinated polymer powder.
However, Avalle discloses perfluoridated-derivatives covered powder for products which boasts protection against sunbeams or UV rays (col. 1, lines 7-9).
Barness discloses wherein the composition may comprise active agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated perfluoridated-derivatives covered powder into the composition since perfluoridated-derivatives covered powder are known and effective active agents for protection against sunbeams or UV rays as taught by Avalle.
Barness, Mershon, KR 20150015580 A, KR 950005947 A , Chilcott, and Avalle do not disclose wherein the composition comprises a liquid silicon-based material/silicon-based film-forming agent.
However, Silibase discloses a dimethicone with the following molecular formula:
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.
The compound has excellent spreading ability, enhances smoothness, and functions as a lubricating agent.
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. Barness discloses wherein the composition may comprise active agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated the dimethicone of Silibase into the composition since the dimethicone is a known and effective active agent for functioning as an excellent spreading agent (i.e., film-forming), enhancing smoothness, and lubricating agent as taught by Silibase.
In regards to the n value recited in claim 13, Silibase does not disclose what the n value is; however, it would have taken no more than the relative skills in the art through routine experimentation to have arrived at the claimed n value based on arriving at a compound that is effective as a spreading agent, smoothening agent, and lubricating agent.
In regards to the amount of silicon-based film-forming agent recited in instant claim 10, since the dimethicone of Silibase is a known and effective active agent for spreading, smoothening, and lubricating, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount depending on the level of spreading, smoothening, and lubricating desired.
In regards to the amount of liquid perfluoride recited, since perfluorinated polymeric compound in oil form are known and effective active agents for hindering or preventing passage of chemical warfare agents into the skin, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount depending on the level of additional protection from chemical warfare agents desired.
In regards to the amount of perfluorinated polymer powder recited, since perfluoridated-derivatives covered powder are known and effective active agents for protection against sunbeams or UV rays, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount depending on the level of protection against sunbeams and UV rays desired.
In regards to the amount of polyol and polysaccharide recited, since the additives of Barness are provided to enhance the protective effect, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amounts depending on the level of enhancement desired.
3. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Barness et al. (US 2004/0235756, Nov. 25, 2004) (hereinafter Barness) in view of Mershon (US 2003/0008011, Jan. 9, 2003), KR 20150015580 A (Feb. 11, 2015), KR 950005947 A (Mar. 20, 1995), and further in view of Chilcott et al. (GB 2314020 A, Dec. 17, 1997) (hereinafter Chilcott) and Trusiano et al. (Novel perfluoropolyalkylethers monomers: synthesis and photo-induced cationic polymerization, Apr. 25, 2021) (hereinafter Trusiano).
The teachings of Barness, Mershon, KR 20150015580 A, and KR 950005947 A are discussed above. Barness, Mershon, KR 20150015580 A, and KR 950005947 A do not teach wherein the composition comprises liquid perfluoride.
However, Chilcott discloses a topical barrier composition which hinder or prevent passage of e.g. chemical warfare agent into the skin by containing a perfluorinated polymeric compound (abstract). Such compounds have low surface energy and thereby prevent portioning of volatile chemical into the topical composition and skin (page 2, lines 21-22). The perfluorinated polymeric compound is an oil (claim 2).
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. Barness discloses wherein the composition may comprise active agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated perfluorinated polymeric compound in oil form into the composition since perfluorinated polymeric compounds are known and effective active agents for hindering or preventing passage of chemical warfare agents into the skin as taught by Chilcott.
The combined teachings of Barness. Mershon, KR 20150015580 A, KR 950005947 A, and Chilcott do not teach wherein the composition comprises the liquid perfluoride of claim 11.
However, Trusiano discloses
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(Page 1180, Scheme 3).
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. As discussed above, it would have been obvious to have incorporated a perfluorinated polymeric compound into the composition of Barness as taught by Chilcott. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated PFPAE acryl fluoride into the composition since PFPAE acyl fluoride is a known perfluorinated polymeric compound as taught by Trusiano.
In regards to the n value recited in claim 11, Trusiano does not disclose what the n value is; however, it would have taken no more than the relative skills in the art through routine experimentation to have arrived at the claimed n value based on arriving at a polymeric compound that is effective in hindering or preventing passage of chemical warfare agents into the skin.
4. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Barness et al. (US 2004/0235756, Nov. 25, 2004) (hereinafter Barness) in view of Mershon (US 2003/0008011, Jan. 9, 2003), KR 20150015580 A (Feb. 11, 2015), KR 950005947 A (Mar. 20, 1995), and further in view of Avalle (US 6,004,541, Dec. 21, 1999) and McCreery (US 5,607,979, Mar. 4, 1997).
The teachings of Barness, Mershon, KR 20150015580 A, and KR 950005947 A are discussed above. Barness, Mershon, KR 20150015580 A, and KR 950005947 A do not teach wherein the composition comprises perfluorinated polymer powder.
However, Avalle discloses perfluoridated-derivatives covered powder for products which boasts protection against sunbeams or UV rays (col. 1, lines 7-9).
Barness discloses wherein the composition may comprise active agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated perfluoridated-derivatives covered powder into the composition since perfluoridated-derivatives covered powder are known and effective active agents for protection against sunbeams or UV rays as taught by Avalle.
The combined teachings of Barness. Mershon, KR 20150015580 A, KR 950005947 A, and Avalle do not teach wherein the perfluoridated-derivatives covered powder has an average particle diameter of 1 to 10 µm and a specific surface area of 3 to 15 m2/g.
However, McCreery discloses suspensions of finely divided PTFE in a perfluorinated polyether base oil (col. 4, lines 18-19). The finely divided PTFE has an average particle size below about 5 µm and a surface area below about 4 m2/g (col. 4, lines 43-44). The composition may be in the form of a cream and affords good protection against chemical warfare agents (abstract).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the perfluoridated-derivatives covered powder to have an average particle size below about 5 µm and a surface area below about 4 m2/g since these are known and effective properties for particles used in skin care compositions for protecting skin against chemical warfare agents as taught by McCreery.
Response to Arguments
Applicant argues that there are no circumstances in which the plate-shaped pigment surface-treated with magnesium oxide of KR 10-201500015580 A can be recognized as an example of the camouflage pigment mentioned in Mershon. KR 10-2015-0015580 A discloses a plate-shaped pigment for use in a cosmetic composition having a soft focus effect.
The Examiner does not find Applicant’s argument to be persuasive. Rendering an object blurry through a soft focus effect is camouflaging since making an object blurry can make an object’s appearance harder to be seen, which is camouflaging. As such, Applicant’s argument is unpersuasive.
Applicant argues that a composition for protecting the skin against chemical agents and a cosmetic composition having a soft focus effect should be obviously distinct from each other.
The Examiner does not find Applicant’s argument to be persuasive. As discussed in the rejection, Mershon discloses wherein several ointments or creams (topical skin protectants) were developed to shield skin from contamination with toxic chemical warfare agents. Some of these protectants incorporated camouflage pigments. As discussed above, pigments that provide a soft focus effect have a camouflaging effect. As such, the prior art references are related and Applicant’s argument is unpersuasive.
Conclusion
Claims 1, 4, 5 and 8-18 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.
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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