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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/8/26 has been entered.
Claims 1-7 are pending. Claims 1 and 2 have been amended. Claims 1-7 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 and constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 8/1/25 and 3/6/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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.
Claims 1, 2, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nazrul et al. (JP 2004/067535 A; cited in IDS, full translation provided herein) in view of Abiko et al. (US 2015/0005393) and Ultrus Prospector (“Now Trending in Search: Talc Alternatives” 2016).
Nazrul et al. teach a powder which is used for cosmetics, has a sufficient transparent appearance, gives a natural finish, has a soft focus effect, and can effectively cover the dark shades, pores, stains, freckles, and unevenness of skins, and to provide a cosmetic containing the powder for the cosmetic (e.g. abstract).
Nazrul et al. exemplify a solid powder foundation comprising:
20 wt% of powder formulation 2, which comprises mica having an average particle size of 10-13 µm;
5 wt% of synthetic phlogopite; and
3.25 wt% squalane (e.g. paragraph 0030 and 0027).
Nazrul is silent as to the particle size of the synthetic phlogopite, and does not teach that the composition is free of talc. These deficiencies are made up for by the teachings of Abiko and Ultrus Prospector.
Abiko et al. teach pigments and particle which are useful in makeup composition (e.g. abstract; paragraph 0076; Examples). Abiko et al. teach that synthetic potassium phlogopite has a particle size of about 20 μm (e.g. paragraph 0090).
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 and 4, it would have been obvious to one of ordinary skill in the art at the time of filing to select the synthetic phlogopite of Abiko et al. having a particle size of 20 μm. Nazrul et al. are silent as to the commercial product or particle size and one of ordinary skill in the art would have been motivated to seek out additional guidance. One would have predicted success as Abiko et al. is also directed to particle-containing makeup formulations. The combination would result in a particle size difference of 7-10 μm, which is within the claimed range. In addition, 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 Nazrul et al. with other suitable alternatives also disclosed by Nazrul et al., including kaolin, synthetic talc, silica, and zinc oxide (e.g. paragraph 0017). One of ordinary skill in the art would have predicted success as Nazrul et al. teach them as suitable options.
Regarding Claims 2 and 6, 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. Nazrul et al. exemplify a formulation comprising 50 wt% of powder formulation 2, which comprises mica having an average particle size of 5-7 µm (e.g. paragraphs 0027 and 0029).
Claims 3, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nazrul et al. (JP 2004/067535 A; cited in IDS, full translation provided herein) 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; cited in IDS, full translation provided herein).
Regarding Claims 1, 2, 4 and 6, the teachings of Nazrul, Abiko, and Ultrus Prospector are described supra. They do not specifically recite a surface treatment or spherical particle. This is made up for by the tecahings of Hagino et al.
Hagino discloses solid powder cosmetics containing powders, sodium polyphosphate, and a water-swellable clay mineral (e.g. abstract). Hagino exemplify a foundation (e.g. Example 10) comprising:
- polydimethyl siloxane (i.e. an oil based component);
- sericite mica (average particle size 4 µm);
- spherical silica powder (i.e. spherical powder); and no talc.
Hagino teaches that the micas may be surface treated with a metallic soap (e.g. page 2, section 10).
Regarding Claims 3, 5 and 7, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the compositions of Nazrul, Abiko, and Hagino. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as all of the compositions are useful as makeup, and specifically foundations. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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.
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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