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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 10/01/2025 and 10/09/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1-16 are pending and under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/01/2025 is being considered by the examiner.
Terminal Disclaimer
The Terminal Disclaimer is not proper because the applicant cited on the TD is not exactly as cited on the ADS form.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to natural phenomenon without significantly more. The claim(s) recite(s) a composition comprising all natural ingredients oil, gas bubble and ingredient such as tocopherol which are not markedly different from its naturally occurring counterpart because there is no indication that nanobubble in oil to cause gas or oil or tocopherol to have any characteristic that are different from the naturally occurring gas or oil. This judicial exception is not integrated into a practical application because no additional element is required. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no additional ingredient that are sufficient to amount to significantly more than judicial except because the claim does not recite any additional elements.
Response to Argument:
Applicants argue that specific average bubble diameter and nano bobble being maintained in nano bubble-liquid for at least one month under room temperature are different from naturally gas or oil.
In response to this argument: this is not persuasive. The gas or oil is not different from naturally occurring gas or oil, thus, the claimed invention is still directed to natural phenomenon without significantly more, and the 101 rejection is still proper.
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 of this title, 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.
Claims 1,3,5,7,9,11,13 and 15, are rejected under 35 U.S.C. 103 as being unpatentable over Kohama et al. (US20060284325).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Kohama et al. teaches a method for generating bubbles by the injection and dispersion of a gas into a liquid (abstract). The average bubble diameter of
the monodisperse bubbles can also be freely adjusted in particular within the range of about 0.2 to 200 μm by adjusting the pore diameter (page 2, [0030]). There are no particular limitations on the gas used by the present invention, and a desired gas can be used as appropriate. The gas used by the present invention can be exemplified by at least one selection from the group consisting of substances that are gases at ambient temperature, such as air, nitrogen gas, oxygen gas, ozone gas, carbon dioxide, methane, hydrogen gas, ammonia, and hydrogen sulfide, and the vapors of substances that are liquid at ambient temperature, such as ethyl alcohol, water, and hexane. There are also no particular restrictions on the liquid used by the present invention, and a variety of liquids can be used. The liquid used by the present invention can be exemplified by water and by oil-miscible liquids such as oils, fats, and organic solvents (page 2, [0036-0039]). Additional additive such as polyglycerol fatty acid ester and polyethylene glycol can be included in the liquid (page 3, [0043-0044]). The nanobubbles are stable and can be used in food or cosmetic such as hair setting materials and skin cream (page 4, [0057-0059]). Otherwise, bringing the body into contact with nanobubbles or microbubbles at, for example, a bathhouse or hot spring, provides better stimulation of blood flow, a better temperature maintenance effect, a better skin reviving effect, and so forth (page 4, [0061]). The nano bubble is generated by bubble generating apparatus (page 1, [0019-0021]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Kohama et al. is that Kohama et al. is not specific enough for anticipation.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claim 1,3,5 and 7, Kohama et al. teaches air bubble in oil with bubble diameter about 0.2um to 200um (about 200nm to 200um) as skin cream, additional additive such as polyglycerol fatty acid ester and polyethylene glycol are regarded as cosmetic ingredient. Furthermore, skin cream generally includes moisturizer, which is also cosmetic ingredient.
Regarding the limitation of the nano bubbles are generated by a nano bubble generator, Kohama et al. teaches nano bubble is generated by bubble generating apparatus. Furthermore, this is product by process claim. With respect to the USC 102/103 rejection above, please note that in product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Please note that the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicants’ hydrated (vitrified matrix) collagen gel differs and, if so, to what extent, from that of the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Regarding the limitation of “the nanobubbles are maintained in the nano bubble-liquid for at least one month under room temperature”, since Kohama et al. teaches the nanobubbles are stable and can be used in food or cosmetic such as hair setting materials and skin cream, the nanobubbles of Kohama et al. are expcted to be stable and maintained in the nano bubble-liquid for at least one month under room temperature. Since prior art teaches the same composition, this same composition is expected to have the same properties.
Regarding claims 9,11,13, and 15, prior art bubble diameter about 200nm to 200um is interpreted broadly to overlapped with claimed range of 80 to 140nm. The term “about 200nm to 200um” can be broadly interpreted as to overlap with “80 to 140nm", because use of the word 'about' in a claim is appropriate where the claim contains a range of components with no absolute boundaries, and is only limited to the extent that prior art exists which would limit broad interpretation of the claim. See Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1217-1218, 18 USPQ2d 1016 (Fed. Cir. 1991). In the instant case, there is no prior art teaching that would limit the range recited prior art solely to between 200nm and 200um. Accordingly, the range recited by Kohama et al. is interpreted broadly. Thus, bubble diameter about 200nm to 200um reasonably overlapped with the claimed "80 to 140nm”.
Regarding “quickly conform to skin”, since prior art teaches the same or substantially same bubble in oil, this same or substantially same bubble in oil is expected to quickly conform to skin.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 2,4,6,8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kohama et al. (US20060284325), as applied in the above 103 rejection for claims 1,3,5,7,9,11,13 and 15, in view of Bauer (US20160236158) and Yaniv et al. (US20190060223).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Kohama et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Bauer teaches nanobubble-containing liquid solution (abstract). The nanobubble is size from 10nm to 150nm in one embodiment (page 7-8, [0117]). Nanobubble-containing oils, including anti-rust oil, auxiliary fluids for use with abrasives for the oil well industry, baby oil, bath oil, vegetable, mineral and animal oils, catalysts for use in oil processing, chemical additives for oil well drilling fluid, cooking oil, drilling fluids for oil and gas wells, drilling mud for oil well drilling, edible oil, fuel oil, heating oil, high pressure water jetting system for the gas and oil industry, industrial oil, insulating oil for transformers, motor oil, motor oil additives, oil for use in the manufacture of candles, oil for use in the manufacture of cosmetics, oil for use in the manufacture of paints, rubbing oil for wood, petroleum (page 10, [0189]).
Yaniv et al. teaches nanobubbles infused into the liquid have an average diameter of less than 500 nanometers. (abstract). In some embodiment, the diameter of bubble is 100nm to 200nm (page 3, [0038]). The liquid contains different type of gas (e.g., oxygen (02), nitrogen (N2), CO2, 0 3, air, and/or any other desired gas). The liquid may be pumped through a combination of such plurality of nanobubblers 100, and then the liquid combined as it exits from each nanobubbler 401 for resulting contact with a person's skin. Alternatively, a single nanobubbler 100 may be configured to generate nano bubbles in the liquid with a plurality of different gasses (e.g., oxygen (02), nitrogen (N2), CO2, O3, air, and/or any other desired gas), whereby either the different plurality of gasses are simultaneously passed through the diffuser 101, or in an intermittent basis, one after the other (page 3, [0040]). The liquid is selected from the group consisting of water, alcohol, oil, and any combination thereof (claims 1 and 9). The liquid with nanobubble can be use din cosmetic (page 3, [0039]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Kohama et al. is that Kohama et al. do not expressly teach mineral oil. This deficiency in Kohama et al. is cured by the teachings of Bauer.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Kohama et al., as suggested by Bauer, and produce the instant invention.
One of ordinary skill in the art would have been motivated to have nanobubble in mineral oil because mineral oil is a suitable oil for nanobubble in cosmetic. MPEP 2144.07. Under guidance from Kohama et al. nanobubble in oil for cosmetic, Bauer teaching nanobubble in mineral oil for cosmetic, it is obvious to have nanobubble in mineral oil and produce instant claimed invention with reasonable expectation of success.
In arguendo that “about 200nm to 200um” does not overlap with 80-140nm, one of ordinary skill in the art would have been motivated to have nanobubble size from 80-140nm because this is optimization through routing experimentation or under prior art condition. MPEP 2144.05. Under guidance from Bauer teaching nanobubble size of 10nm to 150nm, Yaniv et al. teaching nanobubble size of 100nm to 200nm, it is obvious for one of ordinary skill in the art to have nanobubble size from 80-140nm and produce instant claimed invention with reasonable expectation of success.
Regarding “quickly conform to skin”, since prior art teaches the same or substantially same bubble in oil, this same or substantially same bubble in oil is expected to quickly conform to skin.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Declaration:
The declaration of Fujita under 37 CFR 1.132 filed 10/01/2025 is insufficient to overcome the rejection of claims 1,3,5,7,9,11,13 and 15 based upon Kohama et al. (US20060284325) as set forth in the last Office action because: the specific nano bubbles generator (lab-nano-2004-GN-J-F” is not cited in claim, Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the 103 rejection is still proper.
.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Argument:
Applicants argue that "physicochemical properties of MB and NB are very sensitive to and greatly dependent on a method of creating microscopic bubbles, exhibiting a wide variety of characteristics." D1 describes "Various MB/NB creation methods have been invented, and they mainly take the form that "bubble water" comprising MB/NB is released into a liquid phase, rather than injecting gas into the liquid phase to generate MB/NB directly. In D2, which is shown below, it is described that characteristics of micro bubbles greatly depend on the producing methods, regarding the physiological properties. Moreover, D4 describes that a blood flow enhancement effect was shown by micro bubbles generated by rotational flow method, and an enhancement of blood flow and a supply of micro bubbles were observed simultaneously, while the enhancement of blood flow had stopped at the same time as the supply stopped. A bubble generator using rotational flow method is also used as a nano bubble generator, as described in D1.
In response to this argument: this is not persuasive. As discussed in the above 103 rejections, Kohama et al. teaches nano bubble is generated by bubble generating apparatus. Furthermore, this is product by process claim. Thus, the 103 rejection is still proper.
Applicants argue that declaration regarding pore style generator
In response to this argument: this is not persuasive. As discussed in the above 103 rejection and response to declaration, the specific nano bubbles generator (lab-nano-2004-GN-J-F” is not cited in claim, Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 11-15 of copending Application No. 17863099 in view of Kohama et al. (US20060284325) and Bauer (US20160236158). The reference application teaches nanobubble in water for cosmetic, but silent about nanobubble in oil, in view of Kohama et al. teaching oil is alternative to water to have nanobubble for cosmetic, Bauer teaching nanobubble in mineral oil for cosmetic, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is 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 JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613