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, 3-6, 8-14 and 19-22.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/17/2026 has been entered.
Applicants' arguments, filed 07/17/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 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, 4, 6, 8-14 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (WO 2019/156116 A1, Aug. 15, 2019) (hereinafter Kobayashi) in view of Horino et al. (JPH10194953A, Jul. 28, 1998) (hereinafter Horino).
Kobayashi discloses cellulose acetate particles having a total degree of acetyl substitution of 0.7-2.9. The cellulose acetate particles have an average particle size of 80 nm to 100 µm, a sphericity of 0.7-1.0, and a surface smoothness of 80-100%. The cellulose acetate particles are impregnated with a plasticizer. The cellulose acetate particles comprise 2-40 wt. % plasticizer. Suitable plasticizers include glycerin ester-based plasticizer. The cellulose acetate particles are used in a cosmetic composition. (abstract).
Kobayashi differs from the instant claims insofar as not disclosing wherein the composition comprises magnesium or calcium particles (i.e., metal compound-containing particles).
However, Horino discloses obtaining an antibacterial cosmetic by including a specific metal hydroxide. Horino specifically discloses an antibacterial cosmetic comprising one or more kinds of antibacterial particles, such as magnesium hydroxide and calcium hydroxide. The amount of antibacterial particles are preferably 0.05-40 wt. % based on the total cosmetic (abstract). The average particle size of the antibacterial particles can be 0.01 to 15 µm (¶ [0032]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated 0.05-40 wt. % magnesium hydroxide or calcium hydroxide with an average particle size of 0.01 to 15 µm into the cosmetic composition of Kobayashi motivated by the desire to formulate the cosmetic composition with an antibacterial effect as taught by Horino.
In regards to instant claim 10 reciting 2 to 20 carbons, Kobayashi discloses an acetyl group and an acetyl group contains at least 2 carbons.
In regards to the limitation of instant claim 6, Horino discloses 0.05-40 wt. % magnesium hydroxide or calcium hydroxide; thus, the claimed amount of magnesium or calcium would have been obvious from this range.
In regards to instant claim 22 reciting wherein the pH is .3 to 9.5 after adding 2.0 g of the cellulose acrylate composition to 50 ml of distilled water and stirring for 30 minutes, Example 10 of the instant specification discloses wherein a composition comprising cellulose acrylate and calcium hydroxide has pH of 9.5. Therefore, since the composition of the prior art comprises cellulose acrylate and calcium hydroxide, the composition of the prior art would necessarily have a pH of 9.5 wherein 2.0 g is added to 50 ml of distilled water for 30 minutes.
2. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (WO 2019/156116 A1, Aug. 15, 2019) (hereinafter Kobayashi) in view of Horino et al. (JPH10194953A, Jul. 28, 1998) (hereinafter Horino), and further in view of Arima et al. (JP 08059404 A, Mar. 5, 1996) (hereinafter Arima).
The teachings of Kobayashi and Horino are discussed above. Kobayashi and Horino do not teach wherein the antibacterial particles are aggregates.
However, Arima discloses antibacterial inorganic oxide particles comprising aggregated inorganic oxide microparticles comprising an antibacterial metal component for use in cosmetics (abstract).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the antibacterial particles as aggregates since this is another known and effective form for antibacterial particles to be provided in cosmetics as taught by Arima.
3. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (WO 2019/156116 A1, Aug. 15, 2019) (hereinafter Kobayashi) in view of Horino et al. (JPH10194953A, Jul. 28, 1998) (hereinafter Horino), and further in view of Wu et al. (US 2010/0185224, Jul. 22, 2010) (hereinafter Wu).
The teachings of Kobayashi and Horino are discussed above. Kobayashi and Horino do not teach wherein the cosmetic composition comprises sodium hydroxide particles.
However, Wu discloses wherein sodium hydroxide is an antimicrobial agent (¶ [0047]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated sodium hydroxide as the antibacterial particle into the composition of Kobayashi since it is another known and effective metal hydroxide compound with an antibacterial effect as taught by Wu.
Response to Arguments
Applicant argues that Kobayashi addresses biodegradation in the marine environment and measure the degree of biodegradation in activated sludge. In other words, the biodegradation targeted by Kobayashi is primarily due to the action of microorganisms. This is completely different from Block, where Block intended for degradability in the body.
The Examiner maintains that a biodegradable composition may contain antimicrobial agents. As evidenced by Masiero (BR-0302025, Mar. 22, 2005), Masiero discloses a cosmetic composition comprising solid exfoliating elements that are biodegradable (page 1). The particles are preferably composed of natural substances and are therefore biodegradable. Therefore, its use will not cause damage to the environment (page 2). The composition may optionally comprise antimicrobial agents page 8). Accordingly, a cosmetic composition comprising biodegradable particles may comprise antimicrobial agents and, thus, Applicant’s argument that antimicrobial agents will reduce biodegradability is unpersuasive.
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.
1. Claims 1, 3-6, 8-14 and 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application Nos. 17/435,128, 18/010,591, 18/564,333, 18/718,131, 18/290,466, and 18/848,724 in view of Horino et al. (JPH10194953A, Jul. 28, 1998) (hereinafter Horino).
The pending claims differ from the copending claims insofar as reciting the addition of metal compound-containing particles.
However, Horino discloses obtaining an antibacterial cosmetic by including a specific metal hydroxide. Horino specifically discloses an antibacterial cosmetic comprising one or more kinds of antibacterial particles, such as magnesium hydroxide and calcium hydroxide. The amount of antibacterial particles are preferably 0.05-40 wt. % based on the total cosmetic (abstract). The average particle size of the antibacterial particles can be 0.01 to 15 µm (¶ [0032]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated magnesium hydroxide or calcium hydroxide into the claimed composition motivated by the desire to formulate the composition with an antibacterial effect as taught by Horino.
This is a provisional nonstatutory double patenting rejection.
2. Claims 1, 3-6, 8-14 and 19-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. 11,628,134 and 11,434,348 in view of Horino et al. (JPH10194953A, Jul. 28, 1998) (hereinafter Horino).
The pending claims differ from the patented claims insofar as reciting the addition of metal compound-containing particles.
However, Horino discloses obtaining an antibacterial cosmetic by including a specific metal hydroxide. Horino specifically discloses an antibacterial cosmetic comprising one or more kinds of antibacterial particles, such as magnesium hydroxide and calcium hydroxide. The amount of antibacterial particles are preferably 0.05-40 wt. % based on the total cosmetic (abstract). The average particle size of the antibacterial particles can be 0.01 to 15 µm (¶ [0032]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated magnesium hydroxide or calcium hydroxide into the claimed composition motivated by the desire to formulate the composition with an antibacterial effect as taught by Horino.
Response to Arguments
Applicant has not addressed these rejections. Therefore, the rejections are maintained.
Conclusion
Claims 1, 3-6, 8-14 and 19-22 are rejected.
Claims 15-18 have been withdrawn.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
