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 10/24/25 is acknowledged. Claims 1-7 are pending. Claims 1, 2 and 7 have been amended. Claims 1-7 are under consideration.
Objections Withdrawn
The objection to the abstract is withdrawn in view of the amended abstract.
Rejections Withdrawn
The rejection of Claim 7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claim.
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 4 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “the difference between the average particle size of the mica (A) and the average particle size of the mica (B) is 5 m or more”, and the claim also recites “wherein a difference between the average particle size of the mica (A) and the average particle size of the mica (B) is 5 to 10 um” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, it will be understood that the narrower language is merely exemplary of the remainder of the claim and therefore not required.
Claims 3, 4 and 7 are rejected as depending from and not clarifying claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hagino (JP 2016/185925; cited in IDS, full translation provided herein).
Hagino discloses solid powder cosmetics containing powders, sodium polyphosphate, and a water-swellable clay mineral (e.g. abstract).
Regarding Claims 1 and 7, Hagino exemplify an eyebrow solid composition (e.g. Example 9) comprising:
squalane and heavy liquid isoparaffin (i.e. an oil based component);
sericite (average particle size 4 µm) (i.e. mica (A));
amino-modified silicone-treated mica (average particle size 19 μm) (i.e. mica (B));
spherical silica powder (i.e. spherical powder); and
no talc.
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.
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 1-3, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hagino (JP 2016/185925; cited in IDS, full translation provided herein).
Regarding Claims 1 and 7, the teachings of Hagino are described supra.
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. Hagino exemplify in Example 9, 40 wt% of micas (i.e. sum of amino-modified silicone-treated mica (average particle size 19 μm), sericite (average particle size 4μm); and black iron oxide-coated mica titanium (average particle size 25 μm). The mixture of which would have an average particle size of 16 μm. The claim does not define how the average is calculated. In the alternative, it would have been obvious to one of ordinary skill in the art to vary the mica concentration and particle size through routine optimization to arrive at an average particle size of 5-20 microns. Hagino generally teach 70-99% by mass of powder, which includes micas (e.g. page 2, section 10), and exemplify particle sized within the claimed range. It is obvious to optimize within prior art conditions or through routine experimentation.
Regarding Claims 3 and 5, Hagino teaches that the micas may be surface treated with a metallic soap (e.g. page 2, section 10). It would have been obvious to one of ordinary skill in the art at the time of filing to include a metallic soap on one of the micas of Hagino because Hagino explicitly teaches that metallic soaps can be used as a surface treatment. 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.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hagino (JP 2016/185925; cited in IDS, full translation provided herein) as applied to claims 1-3, 5 and 7 above, and further in view of Ohno (JP 4141527 B2; 2008).
Regarding Claims 1-3, 5 and 7, the teachings of Hagino are described supra.
Hagino does not teach that one of the micas is synthetic fluorphlogopite iron. This is made up for by the teachings of Ohno.
Ohno teaches synthetic fluorophlogopite powder and the objective is to provide cosmetics which have the coloring agent a vivid color tone and transparency (e.g. paragraphs 0001 and 0006). Ohno teaches the mica is synthetic fluorphlogopite iron (e.g. paragraph 0007). Ohno teaches the form of the cosmetic may be powder form, a powder press form, a stick form, and a slurry form, and can be used as foundation, white powder, blusher, eye shadow, nail enamel and the like (e.g. paragraph 0013).
Regarding Claims 4 and 6, it would have been obvious to one of ordinary skill in the art at the time of filing to include the synthetic fluorphlogopite iron of Ohno in the cosmetics of 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 both of the compositions are directed to cosmetics comprising mica powders, which may be in stick form and for use as eye makeup, and one of ordinary skill would have been motivated in order to provide the benefits of vivid color tone and transparency, as taught by Ohno.
Response to Arguments
Applicant's arguments filed 10/24/25 have been fully considered but they are not persuasive.
Applicant argues that Hagino does not teach or suggest, "a difference between the average particle size of the mica (A) and the average particle size of the mica (B) is 5 to 10 µm," as recited in amended claim 1.
This is not found persuasive. Claim 1 recites both a broad and narrow range (see rejection under 112(b) above). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, it will be understood that the narrower language is merely exemplary of the remainder of the claim and therefore not required. The particle sizes exemplified in Hagino, and the difference between the particle sizes, are within the range recited in claim 1, lines 6-7 (i.e. 5 µm or more).
Applicant argues that amended claim 2 recites, "30 mass% or more of mica as the powder component ... wherein the mica has an average particle size of 5 µm to 20 µm." Hagino discloses sericite (average particle size 4 m) (16%) and amino-modified silicone-treated mica (average particle size 19 m) (20%) in Example 9. Since the amino-modified silicone-treated mica (average particle size 19 m) is present at 20%, Hagino cannot be understood as disclosing or suggesting that the mica is present at 30 mass% or more and "the mica has an average particle size of 5 to 20 µm," as recited in amended claim 2.
This is not found persuasive. Hagino exemplify in Example 9, 40 wt% of micas (i.e. sum of amino-modified silicone-treated mica (average particle size 19 μm), sericite (average particle size 4μm); and black iron oxide-coated mica titanium (average particle size 25 μm). The mixture of which would have an average particle size of 16 μm, and the claim does not define how the average is calculated. In the alternative, it would have been obvious to one of ordinary skill in the art to vary the mica concentration and particle size through routine optimization to arrive at an average particle size of 5-20 microns. Hagino generally teach 70-99% by mass of powder, which includes micas (e.g. page 2, section 10), and exemplify particle sized within the claimed range. It is obvious to optimize within prior art conditions or through routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619