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 19-21.
Applicants' arguments, filed 03/04/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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, 20 and 21 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.
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’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
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 19-21 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 19-21 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’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Conclusion
Claims 1, 3-6, 8-14 and 19-21 are rejected.
Claims 15-18 have been withdrawn.
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.
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/TRACY LIU/Primary Examiner, Art Unit 1614