DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after January 26, 2023, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 01/26/2023 in the matter of Application N° 18/159,862. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after January 26, 2023, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1, 5, 7, 9-14, 19-27, represent all claims currently under consideration.
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, 5, 7, 9-14, 19-27, are rejected under 35 U.S.C. 103 as being unpatentable over Kosugi et al., (JP2004210765) and Aota et al., (JP2004175709), and Tanaka et al. (WO2003078507).
Kosugi et al. teach an oil in water type emulsified cosmetic contains, in addition to at least an aqueous component and oil component, a component 0.01-10 mass % polyasparagic acid salt (See abstract) Aspartic acid and asparagic acid are essentially the same molecule, with "asparagic acid" being an older name for it. The water-in-oil emulsion cosmetic of the present invention is composed of at least two components, an aqueous component and an oily component. At least here means that the aqueous component and the oily component are the water-in-oil emulsion cosmetic of the present invention. It means that in the water-in-oil emulsion cosmetic of the present invention, those containing a third component such as a powder component are also included in the scope of the invention (See 0010). Additionally, Kosugi et al. gives examples of spherical particles that are inorganic, such iron oxide (See 0033). The present invention relates to a water-in-oil emulsified cosmetic containing at least two components, an aqueous component and an oily component (See 0001). Furthermore, as long as the effects of the present invention are not impaired, components commonly used in cosmetics, for example, lipophilic surfactants and polymers other than component Substances, include pigments (See 0021). In addition, the water-in-oil type emulsified cosmetic aqueous component in the present invention may be generally mixed with an aqueous component which can be generally incorporated into a cosmetic (See 0020).
Regarding claims 2, 15 and claim 21, Kosugi et al. teach this oil in water type emulsified cosmetic contains, in addition to at least an aqueous component and oil component, and a component 0.01-10 mass % polyasparagic acid salt (See abstract).
Regarding claims 3 and 16, Tanaka et al. teach large and small spherical powders made of different material can be additionally used for implying specific skin benefits such as sebum absorption and pore hiding. Unlimited examples of materials useful for making the large spherical powder and the small spherical powder are; silicates, celluloses, silicones, and mixtures and complexes thereof. Specifically, materials useful herein include nylon, cross linked polymethyl methacrylate; silicates such as metal dioxides such as titanium dioxide and aluminium hydroxide; celluloses; polyalkylenes such as polyethylene, and polypropylene (See Description paragraphs 7-9).
Regarding claim 4, Aota et al. teach the particle size of the pigment used in the present invention is those having a particle size of 100 nm or more, fine particles, and ultrafine particles having a particle size of 1 to 100 nm can also be used. The shape of these pigments is not particularly limited, and any shape such as a needle shape and a spherical shape can be used (See 0010).
Regarding claims 5, 18, 23, and 26, Tanaka et al. teach from about 2% to about 99% of the entire cosmetic composition of the spherical powder (See claim 4).
Regarding claims 7 and 20, Kosugi et al. teach the content of the oily component of the water-in-oil emulsion cosmetic of the present invention is not particularly limited, but is preferably 3 to 60% (See 0019).
Regarding claims 6 and 19, Kosugi et al. teach the oily component in the water-in-oil type emulsified cosmetic of the present invention can be generally formulated with an oil agent that can be generally blended with the cosmetic. For example, etc., hydrocarbons, oils and fats, and silicone oils, are exemplified (See 0019). The properties are also good. Further, by containing a fatty acid ester having a branched chain in the molecule, an excellent water-in-oil type emulsified cosmetic having an even higher emollient feeling can be obtained (See 0042).
Regarding claims 8, and 27, Kosugi et al. teach polyoxyethylene, and dimethylpolysiloxane, (See 0039), and an oil in water type emulsified cosmetic contains, in addition to at least an aqueous component and oil component, a component 0.3-6 mass % polyoxyethylene dipolyhydroxystearate (See abstract).
Aota et al., teach Emulsifiers commonly used in cosmetics include sorbitan fatty acid esters, glycerin fatty acid esters, polyoxyethylene sorbitan fatty acid esters, and Ether, polyoxyethylene polyoxypropylene alkyl ether (See 0024).
Therefore, it would have been obvious to one of ordinary skill in the art before the instant effective filing date to incorporate the teachings of Kosugi et al. dimethylpolysiloxane into the teachings of Aota et al which teach polyoxyethylene, polyoxypropylene alkyl ether, sorbitan fatty acid esters, and glycerin fatty acid esters are examples that are frequently used in cosmetics.
Regarding claim 9, Kosugi et al. teach the content of the oily component of the water-in-oil emulsion cosmetic of the present invention is not particularly limited, but is preferably 3 to 60% from the viewpoint of feeling in use (See 0019).
Regarding claim 10, Aota et al., teach makeup cosmetics contain a pigment as a coloring agent. In particular, inorganic pigments are often used from the viewpoint of safety (See 0002).
Regarding claims 11, and 24, Kosugi et al. teach an oil in water type emulsified cosmetic having a good affinity to the skin, exhibiting a high tension feeling, and a high moisturizing and emollient effect, and also having a very good stabilization over time. This oil in water type emulsified cosmetic contains, in addition to at least an aqueous component and oil component, a component 0.3-6 mass % polyoxyethylene dipolyhydroxystearate, and a component 0.01-10 mass % polyasparagic acid salt (See abstract).
Regarding claim 12, Kosugi et al. teach examples of the salt include basic amino acid salts (See 0013).
Aota et al., teach the pigment dispersion for cosmetics of the present invention can be a pigment dispersion containing no organic solvent, and further uses a mild amino acid-derived dispersant for the skin, so that it is irritating to the living body (See 0023). The dispersing medium other than water is not limited, but can be selected from various dispersing media that can be used for cosmetics and can be used, and usually includes water-soluble alcohols and polyhydric alcohols (See 0011).
Regarding claim 13, Aota et al., teach the viscosity of the pigment dispersion for cosmetics of the present invention is not particularly limited, but the dispersion is good, for example, the viscosity is 20 mPa · s or less, and more preferably 10 mPa · s or less (See 0022).
Regarding claim 14, Kosugi et al. teach an oil in water type emulsified cosmetic having a good affinity to the skin, exhibiting a high tension feeling, and a high moisturizing and emollient effect, and also having a very good stabilization over time (See abstract).
Regarding claims 17, 22, and 25, Tanaka et al. teach a spherical powder component comprising: a large spherical powder having a particle size of from about 10µm to about 50µm; and a small spherical powder having a particle size of from about 1µm to about 10µm (See abstract).
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive.
The evidence is not commensurate in scope with the full breadth of the claims. Although applicant relies on results obtained with certain specific formulations, the claims encompass a much broader genus. For example, the claimed amount of component (a), polyaspartic acid or a salt thereof, is 0.01 to 1 mass%, while the examples appear limited to a narrower portion of that range, approximately 0.09 to 0.9 mass%. Likewise, the claimed spherical powder encompasses particles having an average particle size of 0.1 to 30 µm, whereas the relied-upon examples use only a limited number of particle sizes, primarily around 5 µm, with a few additional examples at 6 µm, and 0.8 µm. These limited data points do not reasonably establish that the asserted advantages would extend across the entire claimed range.
The evidence is also not representative of the full scope of the claimed lipophilic surfactant limitation. The claims require a lipophilic surfactant having an HLB value of 3 to 6. However, the relied upon examples appear to use surfactants having HLB values outside, or at least not representative of, the claimed range, including surfactants with HLB values of about 1 and 5. Thus, the data do not adequately demonstrate that the alleged benefits are attributable to the full claimed surfactant scope.
Applicant has not adequately shown that the asserted results are unexpected or superior to such a degree that they outweigh the prima facie case of obviousness. The differences in performance between the inventive examples and comparative examples do not appear substantial. The comparative examples perform similarly to at least some of the inventive compositions, including Examples 2 and 3, and the record does not demonstrate a marked or truly unexpected improvement. Rather, the differences appear to be the type of routine variation that would have been expected by one of ordinary skill in the cosmetic formulation art upon adjusting known ingredients and their amounts.
Further, the comparative data do not isolate a result that can fairly be attributed to the full scope of the claimed invention. Applicant states that only components (a) and (b) were changed in the examples, but even assuming the methodology is otherwise sound, the evidence still fails to demonstrate that the alleged advantages are due to the claimed combination across the entire scope now claimed. In particular, applicant has not sufficiently shown that the claimed “soft-focus effect” is established across the breadth of spherical powders, particle sizes, surfactant systems, and concentration ranges recited in the claims.
With respect to applicant’s arguments regarding Kosugi et al., the fact that Kosugi’s Example 8 may not expressly include a spherical powder corresponding to applicant’s component (b) does not establish nonobviousness. Kosugi et al. teaches water-in-oil emulsion cosmetics containing a polyaspartic acid salt and further teaches the use of various powder ingredients generally employed in cosmetics, including inorganic powders and pigment-containing powders. Tanaka et al. teaches spherical powders in cosmetics compositions, including particle sizes overlapping those claimed, and teaches benefits such as spreadability and adhesion. Aota et al. further evidences the general knowledge in the art regarding formulation choices for cosmetic emulsions. In view of these teachings, it would have been obvious to one of ordinary skill in the art to incorporate the known spherical powders of Tanaka et al. into the emulsion systems of Kosugi et al., with a reasonable expectation of obtaining the known benefits associated with such powders, including optical and application-related improvements.
Regarding claim 27, applicant argues that the claim excludes polyoxyethylene dipolyhydroxystearate, which is disclosed in Kosugi et al. as an essential component. This argument is unpersuasive. Although Kosugi et al. discloses examples containing polyoxyethylene dipolyhydroxystearate, applicant has not shown that Kosugi et al. requires that ingredient in all embodiments in such a way as to teach away from its omission. The mere presence of that surfactant in disclosed examples does not establish that one of ordinary skill in the art would have been discouraged from formulating a similar composition without it especially where the prior art otherwise teaches the claimed emulsion components and routine surfactant selection. Accordingly, omission of polyoxyethylene dipolyhydroxystearate would have been obvious matter of formulation choice absent persuasive evidence of criticality or unexpected results, which has not been established here.
Therefore, applicant’s evidence of alleged unexpected results is not sufficient to overcome the prima facie case of obviousness because: (1) the showing is not commensurate in scope with the claims, (2) the relied upon examples are not representative of the full claimed ranges, including particle size and surfactant HLB, and (3) the observed differences do not rise above expected variations that would have been anticipated by a person of ordinary skill in the art.
Conclusion
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.
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615