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 .
DETAILED ACTION
The Applicant’s reply filed on 9/2/26 is acknowledged. Claims 1-7 are pending. Claims 1 and 2 have been amended. Claims 1-7 are under consideration.
Rejections Withdrawn
The rejection of Claims 1, 2, 4 and 6 under 35 U.S.C. 103 as being unpatentable over Nazrul et al. (JP 2004/067535 A) in view of Abiko et al. (US 2015/0005393) and Ultrus Prospector (“Now Trending in Search: Talc Alternatives” 2016) are withdrawn in view of the amended claims.
The rejection of Claims 3, 5 and 7 under 35 U.S.C. 103 as being unpatentable over Nazrul et al. (JP 2004/067535 A) in view of Abiko et al. (US 2015/0005393) and Ultrus Prospector (“Now Trending in Search: Talc Alternatives” 2016), as applied to claims 1, 2, 4 and 6 and further in view of Hagino (JP 2016/185925) are withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites that “least one of the mica (A) and the mica (B) is mica with a surface treated with a silicone elastomer or a metallic soap”, however this broadens claim 1 which has been limited to specific micas “selected from the group consisting of synthetic fluorphlogopite iron, elastomer-treated synthetic fluorphlogopite iron, magnesium stearate-treated synthetic fluorphlogopite, synthetic fluorphlogopite, and natural muscovite”. It is suggested to amend claim 3 to “least one of the mica (A) and the mica (B) is elastomer-treated synthetic fluorphlogopite iron or magnesium stearate-treated synthetic fluorphlogopite”, or similar.
Claim 5 recites that “wherein the mica is mica with a surface treated with a silicone elastomer or a metallic soap”, however this broadens claim 2 which has been limited to specific micas “selected from the group consisting of synthetic fluorphlogopite iron, elastomer-treated synthetic fluorphlogopite iron, magnesium stearate-treated synthetic fluorphlogopite, synthetic fluorphlogopite, and natural muscovite”. It is suggested to amend claim 5 to “wherein the mica is elastomer-treated synthetic fluorphlogopite iron or magnesium stearate-treated synthetic fluorphlogopite”, or similar.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
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.
Claim 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sonoyama et al. (US 2017/0216154) as evidenced by Tate et al. (WO 2017/142057) and in view of and Ultrus Prospector (“Now Trending in Search: Talc Alternatives” 2016).
Sonoyama et al. teach a solid powder cosmetic excellent in impact resistance and usability (e.g. abstract).
Sonoyama et al. exemplify a solid powder cosmetic comprising:
- dimethylpolysiloxane (i.e. an oily component);
- 20 wt% synthetic fluorphlogopite iron PDM-FE (which as evidenced by Tate et al. has an average particle size of 5-8 µm (page 5), i.e. less than 15 µm); and
- 10 wt% synthetic fluorphlogopite PDM-9WA (which as evidenced by Tate et al. has an average particle size of 10-13 µm (page 5), i.e. greater than 10 µm); and
- 7 wt% spherical nylon powder (e.g. paragraphs 0122, 0107 and 0112).
Sonoyama et al. also exemplify a solid powder cosmetic comprising:
dimethylpolysiloxane (i.e. an oily component);
20 wt% synthetic fluorphlogopite iron PDM-FE (which as evidenced by Tate et al. has an average particle size of 5-8 µm (page 5), i.e. less than 15 µm); and
20 wt% muscovite (which as evidenced by the instant Specification has a particle size of 10 µm) (e.g. paragraphs 0116, 0107 and 0112).
Sonoyama et al. do not teach that the compositions are free of talc. This is made up for by the teachings of Ultrus Prospector.
Ultrus Prospector teaches that cosmetics consumers are actively seeking products made without controversial ingredients, like talc, and formulators may also want to avoid talc to increase their products’ global reach, as talc is now restricted in the EU (e.g. page 1). Ultrus Prospector teaches that talc alternatives include silica, zinc oxide, and kaolin (e.g. pages 3-4).
Regarding Claims 1, 2, 4, 6 and 7, it would have been obvious to one of ordinary skill in the art at the time of filing to replace the talc of Sonoyama with the alternatives disclosed by Ultrus Prospector. Given the trend to avoid talc, as taught by Ultrus Prospector, one of ordinary skill in the art would have replaced the talc of the Example of Sonoyama with other suitable alternatives also disclosed by Sonoyama, including kaolin, silica, and zinc oxide (e.g. paragraph 0031). One of ordinary skill in the art would have predicted success as Sonoyama teach them as suitable options. In addition, regarding Claim 2, it is noted that the limitation “the powdery solid cosmetic produced by a wet forming method” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Sonoyama teaches the ingredients and amounts thereof required in claim 2, therefore the claim has been met.
Regarding Claims 3 and 5, Sonoyama et al. teach that the synthetic fluorphlogopite iron may be treated with a silicones or metal soap (e.g. paragraph 0025).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Togashi (US 2018/0235850) as evidenced by IMCD (“PDM 5L” < https://www.imcd.tn/product/pdm-5l/01t6900000AXm99AAD?business-group=beauty-personal-care>) and in view of and Ultrus Prospector (“Now Trending in Search: Talc Alternatives” 2016).
Togashi teaches a cosmetic product which includes a powder cosmetic layer and a support, wherein the powder cosmetic layer has sufficient adherence to the support, excellent dispensing properties, and a smooth texture during application, and in which generation of color unevenness is sufficiently suppressed (e.g. abstract).
Togashi exemplifies an eyeshadow (i.e. powdery solid cosmetic) comprising:
Simethicone KS-66 (i.e. an oily component);
46.32 wt% synthetic phlogopite PDM-5L (which as evidenced by IMCD is Synthetic Fluorphlogopite of an average particle size of 7 µm) (e.g. paragraphs 0082-0083).
Togashi does not teach that the composition is free of talc. This is made up for by the teachings of Ultrus Prospector.
Ultrus Prospector teaches that cosmetics consumers are actively seeking products made without controversial ingredients, like talc, and formulators may also want to avoid talc to increase their products’ global reach, as talc is now restricted in the EU (e.g. page 1). Ultrus Prospector teaches that talc alternatives include silica, zinc oxide, and kaolin (e.g. pages 3-4).
Regarding Claim 2, it would have been obvious to one of ordinary skill in the art at the time of filing to replace the talc of Togashi with the alternatives disclosed by Ultrus Prospector. Given the trend to avoid talc, as taught by Ultrus Prospector, one of ordinary skill in the art would have replaced the talc of the Example of Togashi with other suitable alternatives also disclosed by Togashi, including kaolin, silica, and zinc oxide (e.g. paragraph 0031). One of ordinary skill in the art would have predicted success as Togashi teach them as suitable options.
In addition, it is noted that the limitation “the powdery solid cosmetic produced by a wet forming method” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Togashi teaches the ingredients and amounts thereof required in claim 2, therefore the claim has been met.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claim is 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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