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 . Claims included in the prosecution are claims 1-6, 8-12, 14-16 and 18-23.
Applicants' arguments, filed 02/13/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112(b)
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 1-6, 8-12, 14-16 and 18-23 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially” in claims 1 and 9 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear to what degree the particles are spherical. Although page 13 of the instant specification discloses wherein, for example, it may be that no less than about 50 wt. %, for example, no less than about 60 wt. %, or no less than about 70 wt. %, or no less than about 80 wt. %, or no less than about 90 wt. %, or no less than about 95 wt. %, or no less than about 99 wt. %, of the particles of the alkaline earth metal carbonate, for example, calcium carbonate (e.g., PCC), are substantially spherical, this is merely exemplary and it is not clear if “substantially” spherical particles are required to be within these ranges.
Response to Arguments
Applicant argues that the phrase would be understandable to a person of ordinary skill in the art.
The Examiner does not find Applicant’s argument to be persuasive. Applicant has not shown wherein one of ordinary skill in the art would understand the degree of sphericity of “substantially spherical.” As such, Applicant’s argument is unpersuasive.
New rejection
Claims 20-22 recite the limitation "the coating.” There is insufficient antecedent basis for this limitation in the claim. Neither claim 1 nor claim 19 recite wherein the alkaline earth metal carbonate comprises a coating. Therefore, the scope of “the coating” is unclear.
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.
1. Claims 1-3, 5, 8-10, 12, 15, 16, 18, 19 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Budde et al. (US 2020/0397672, Dec. 24, 2020) (hereinafter Budde).
Budde discloses the use of a surface-reacted calcium carbonate in a cosmetic and/or skin care composition as an agent for modifying the biomechanical properties of the skin. The surface-reacted calcium carbonate has a volume median particle size d50 from 0.1 to 90 µm, and is a reaction product of precipitated calcium carbonated with carbon dioxide and one or more H3O+ ion donors (¶ [0007]). Modification of the biomechanical properties of the skin refers to skin firmness, skin elasticity, or skin plasticity (¶ [0034]). The surface-reacted calcium carbonate has a specific surface area of from 15 m2/g to 200 m2/g, measured using nitrogen and the BET method (¶ [0010]). The surface-reacted calcium carbonate may have different particle shapes, such as e.g., the shape of golf balls (i.e., spherical), roses, and/or brains (¶ [0079]). The precipitated calcium carbonate has an aragonitic, vateritic, or calcitic crystal form (claim 4). In one embodiment, the surface-reacted calcium carbonate is provided in the form of granules. Granules are agglomerates of the surface-reacted calcium carbonate and comprise primary particles of the surface-reacted calcium carbonate (¶ [0101]). The surface-reacted calcium carbonate is used as an anti-wrinkle agent in the cosmetic and/or skin care composition (¶ [0105]). The cosmetic and/or skin care composition further comprises water and/or at least one oil (i.e., claimed at least one other component) (¶ [0015]).
Budde differs from the instant claims insofar as not disclosing wherein the calcium carbonate has a BET specific surface area of at least about 60 m2/g to about 140 m2/g.
However, Budde discloses a specific surface are of from 15 m2/g to 200 m2/g, measured using nitrogen and the BET method, which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A. Therefore, the claimed BET specific surface area is obvious.
In regards to instant claims 1 and 9 reciting wherein at least 90% of the particles are substantially spherical, Budde discloses wherein the surface-reacted calcium carbonate may have different particle shapes, such as e.g., the shape of golf balls (i.e., spherical), roses and/or brains. Thus, the shape may be of golf balls only, which means all of the particles are substantially spherical.
In regards to instant claims 1, 9, 18 and 23 reciting wherein the alkaline earth metal carbonate has a D50 @ T90 from about 7 µm to about 20 µm, Budde discloses a d50 of 0.1 to 90 µm. Budde does not disclose the d50 @ T90. However, since a d50 of 0.1 to 90 µm is required to formulate a surface-reacted calcium carbonate effective for modifying the biomechanical properties of the skin (see ¶ [0007] and claim 1 of Budde), it would have been obvious to one of ordinary skill in the art to have the d50 of the surface-reacted calcium carbonate be from 0.1 to 90 µm at any T value in order to arrive at a surface-reacted calcium carbonate effective for modifying the biomechanical properties of the skin.
In regards to instant claims 3, 10 and 19 reciting wherein an agglomeration rate of at least about 85%, wherein the agglomeration rate is defined by
PNG
media_image1.png
56
168
media_image1.png
Greyscale
, since it would have been obvious to one of ordinary skill in the art to have the d50 of the surface-reacted calcium carbonate be from 0.1 to 90 µm at any T value, the claimed agglomeration rate would have been obvious from Budde disclosing a d50 of 0.1 to 90 µm.
2. Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Budde et al. (US 2020/0397672, Dec. 24, 2020) (hereinafter Budde) in view of Kawamoto et al. (WO 2021/132044 A1, Filed Dec. 11, 2020) (hereinafter Kawamoto) and Fageon et al. (US 2014/0294975, Oct. 2, 2014) (hereinafter Fageon).
The teachings of Budde are discussed above. Budde does not teach wherein the particles of the alkaline earth metal carbonate have an HS circularity of at least about 0.8.
However, Kawamoto discloses a cosmetic composition comprise at least one spherical hydrophobic silica aerogel (abstract). The spherical hydrophobic silica aerogel may have an average circularity of 0.8 or more (page 2, lines 9-10). Due to the spherical shape, the hydrophobic silica aerogel can provide cosmetic compositions with good smoothness (page 3, lines 48-49). When the average circularity approaches 1, the shape of each of the particles becomes more spherical (page 4, lines 18-19).
Accordingly, it would have been prima facie obvious to have formulated the circularity of the surface-reacted calcium carbonate particles to be 0.8 or more since this would provide the cosmetic composition with good smoothness as taught by Kawamoto.
In regards to instant claim 4 reciting an HS circularity, the instant specification discloses on page 14, lines 18 and 25 wherein HS circularity is a measure of how close a shape is to a perfect circle, wherein a value of 1 is a perfect circle. Kawamoto discloses that when the average circularity approaches 1, the shape of each of the particles becomes more spherical. Therefore, the average circularity of Kawamoto and the claimed HS circularity appear to have the same meaning.
The combined teachings of Budde and Kawamoto do not teach wherein the particles of the alkaline earth metal carbonate have an elongation of no greater than about 0.2.
However, Fageon discloses lamellar particle which may be discoid shape (circular surface). When the shape is circular, the length and the width are identical (¶ [0074]).
The instant specification discloses on page 14, line 29 wherein elongation is measured as E = 1 – (W/L), wherein W is the particle width and L is the particle length. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art that E may be 0 since the surface-reacted calcium carbonate of Budde is golf ball shaped (i.e., circular) and circular particles have the length and width identical as taught by Fageon.
3. Claims 6, 14 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Budde et al. (US 2020/0397672, Dec. 24, 2020) (hereinafter Budde) in view of Takada (JPS 5595617 A, Jul. 21, 1980).
The teachings of Budde are discussed above. Budde does not disclose wherein the alkaline earth metal carbonate is coated with stearic acid.
However, Takada discloses a process for producing spherical calcium carbonate particles. By treating the spherical calcium carbonate particle with a higher fatty acid, it is possible to obtain a stable one in which the particle shape does not change even in hot water. The higher fatty acid treatment is wherein calcium carbonate is dispersed and mixed in, for example, a stearic acid solution, and then heated and dried. The spherical calcium carbonate may be blended in cosmetics (¶ [0002]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have coated the surface-reacted calcium carbonate of Budde with stearic acid motivated by the desire to obtain a surface-reacted calcium carbonate that does not change even in hot water, which is desirable in the art, as taught by Takada.
In regards to the amount of stearic acid recited in instant claims 6, 14 and 20-22, since stearic acid affects stability of calcium carbonate, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount depending on the level of stability desired. Where 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. See MPEP 2144.05(II)(A).
Response to Arguments
Applicant argues that Budde does not suggest varying its parameters to enhance a soft focus effect.
The Examiner does not find Applicant’s argument to be persuasive. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144(IV). As such, it is not necessary for Budde to disclose varying its parameters for the same reasons as Applicant. As discussed in the rejection, Budde discloses wherein its parameters are for modifying the biomechanical properties of the skin. As such, Applicant’s argument is unpersuasive.
Applicant argues that Budde’s exemplary pigment materials do not teach or suggest the claimed ranges.
The Examiner does not find Applicant’s argument to be persuasive. A prior art reference is evaluated for all that it reasonably suggests and is not limited to working examples. As such, Applicant’s argument is unpersuasive.
Applicant argues that as summarized in Atble 3, PCC1, PCC2, and PCC9-PCC21 (having BET specific surface areas between 64 m2/g and 134 m2/g and D50 @T90 between 8.0 and 18.3) displayed acceptable soft focus properties. But PCC3-PCC8 (with parameters outside these ranges) did not.
The Examiner submits that although Applicant’s showing appears to be probative of unexpected results, the claims are not commensurate in scope with the showing. Claims 1 and 9 recite wherein the BET specific surface area may be about 60 m2/g and the D50 @ T90 may be about 7 µm. Claims 1 and 9 as currently recited would encompass PCC6, which Applicant stated does not have acceptable soft focus properties. PCC6 has a BET surface area of 51 m2/g and a D50 @ T90 of 5.2. Applicant does not define the term “about.” However, as evidenced by Cardamone et al. (US 2014/0044664, Feb. 13, 2014), the term “about” is defined as plus or minus ten percent. For example, about 100 degrees F would mean 90-degree F to 110-degree F (¶ [0021]). Thus, using this definition, the parameters of PCC6 would be within the claimed range. Therefore, the claims are not commensurate in scope since it includes undesirable embodiments. Furthermore, the claims are further not commensurate in scope since claims 1 and 9 do not recite an agglomeration rate. It is unclear from Applicant’s showing whether the soft focus property is due to a specific BET surface area only, due to a specific D50 @ T90 only, due to a specific BET surface area and D50 @ T90, or due to a specific BET surface area, D50 @ T90, and agglomeration rate. Table 2 shows wherein all the PCCs with acceptable soft focus properties have a high agglomeration rate, while those PCCs with unacceptable soft focus properties have a low agglomeration rate. Thus, appears that agglomeration rate is critical to achieving soft focus properties. Additionally, the claims are not commensurate in scope since claims 1 and 9 do not recite an amount of the alkaline earth metal carbonate. One of ordinary skill in the art would not reasonably expect a minimal or negligible amount of alkaline earth metal carbonate to provide a soft focus effect.
Applicant argues that Takada would not guide the ordinary artisan to arrive at the claimed amount of about 1 wt. % to about 20 wt. % when Takada fails to provide any disclosure on fatty acid amounts.
The Examiner does not find Applicant’s argument to be persuasive. Takada discloses in the examples an amount of stearic acid from which one would be capable of optimizing from. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1-6, 8-12, 14-16 and 18-23 are rejected.
No claims are 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 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 TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 pm.
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, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRACY LIU/Primary Examiner, Art Unit 1614