DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-9 are pending. Claims 4-5 and 9 are amended.
Claim 9 is withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-8 are examined on their merits.
Information Disclosure Statement
The IDS filed 7/29/2026 has been reviewed.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 4-5 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.
Rejections Maintained
Claim Rejections - 35 USC §102(a)(1)
The following is a quotation of 35 U.S.C. 102(a)(1):
(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.
The rejection of claims 1, 7 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Taizo et al. US 5968531 (10/19/1999)(9/26/2025 IDS) as evidenced by ZME Science (The Mica minerals: geology, characteristics, types and uses) and the instant specification is maintained.
Taizo et al. (Taizo) teaches a particulate composite comprising a substrate particles surrounded by a plurality of metal oxide particles bound to the surface of the substrate particle by a binding agent that can be a hydrogenated vegetable or animal oil. (See Abstract and Example 2). The substrate particle can be mica and the metal oxide particles can be zinc oxide. (See Taizo claims 1-2).
Taizo discloses in Example 2 micronized mica which is mixed with micronized zinc oxide and hydrogenated egg oil. (See Example 2). A composite powder is produced in which the micronized zinc oxide (a spherical powder as taught in col. 1, lines 40 to 65 of Taizo) is coated with hydrogenated egg oil (an oil agent) and micronized mica is adhered to the zinc oxide powder. (See Example 2). Micronized mica has a plate-like shape as evidenced by ZME Science (The Mica minerals: geology, characteristics, types and uses). Taizo teaches mica and zinc oxide and hydrogenated egg oil and Example 2 does not contain plastic microbeads as called for in instant claim 8. Example 3 is a compressed powder foundation cosmetic containing the composite powder as called for in instant claim 7.
Taizo thus teaches each and every element of claims 1, 7 and 8.
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 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.
The rejection of claims 1-8 under 35 U.S.C. 103 as being unpatentable over Taizo et al. US 5968531 (10/19/1999)(9/26/2025 IDS) as evidenced by ZME Science (The Mica minerals: geology, characteristics, types and uses) and the instant specification is maintained.
Taizo et al. (Taizo) teaches a particulate composite comprising a substrate particles surrounded by a plurality of metal oxide particles bound to the surface of the substrate particle by a binding agent that can be a hydrogenated vegetable or animal oil. (See Abstract and Example 2). The substrate particle can be mica and the metal oxide particles can be zinc oxide. (See Taizo claims 1-2).
Taizo discloses in Example 2 micronized mica which is mixed with micronized zinc oxide and hydrogenated egg oil. (See Example 2). A composite powder is produced in which the micronized zinc oxide (a spherical powder as taught in col. 1, lines 40 to 65) is coated with hydrogenated egg oil (an oil agent) and micronized mica is adhered to the zinc oxide powder. (See Example 2). Micronized mica has a plate-like shape as evidenced by ZME Science (The Mica minerals: geology, characteristics, types and uses.
Taizo teaches that the diameter of the mica is 5.8 micrometers (expressed as microns). (See Example 2). Taizo teaches that for cosmetics, an aspect ratio of at least 10 is suitable for most cosmetic formulations. (See col. 3, lines 15-20). 5.8 micrometers is less than 50 micrometers as called for in instant claims 3 and 5. An aspect ratio of less than 10 overlaps with the aspect ratio of 2 to 200 called for in instant claim 3.
Hydrogenated vegetable or animal oils are semi-solid as evidenced by the instant specification at [0020]. Thus hydrogenated egg oil is a semi-solid as called for in instant claim 4.
Taizo teaches that the platelet like particle such as mica can be from 1 to 20 microns. The metal oxide particles such as zinc oxide should be less than or equal to one-tenth of the mean particle size of the mica or substrate particles. Thus, the zinc oxide can be 2 microns or less which overlaps with the 1 to 20 microns called for in instant claims 2 and 5.
Taizo teaches that the proportion of the particles of metal oxide to substrate particles depends on the desired degree of coating of the substrate particles as well as the relative sizes of the two types of particles. (See column 4). The metal oxide can be between 10 and 30%, the hydrogenated oil binding agent can be between 0.5 and 5% and the mica particles can depend on the desired degree of coating. (See Abstract and Example 2 and Examples). Taizo thus teaches that the amount of metal oxide to binding agent to mica particles can be varied since it is a results-effective variable, the result being the desired degree of coating. It would be no more than routine experimentation to experiment to arrive at the claimed ratios of 99.8/0.1/0.1 to 1/1/1 in claim 6.
Taizo teaches mica and zinc oxide and hydrogenated egg oil and Example 2 does not contain plastic microbeads as called for in instant claim 8. Example 3 is a compressed powder foundation cosmetic containing the composite powder as called for in instant claim 7. Taizo teaches that its composite powder has a smooth, lubricious feel on the skin and also retains its transparency. (See col. 2).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Taizo cosmetic composition to use a composite powder that is produced by micronized spherical zinc oxide of 2 microns or less being coated with hydrogenated egg oil and adhering micronized mica of 5.8 microns and an aspect ratio of less than 10 to the coated zinc oxide in order to have a cosmetic with a composite powder that has a smooth, lubricious feel on the skin and also retains its transparency.
Response to Arguments
Applicants’ comments of May 18, 2026 have been considered carefully and are found unpersuasive for the reasons described below. Applicants note the amendments to the claims and where support can be found for the amendments.
Applicants argue that the rejections over Taizo appear to be based on a misinterpretation of Taizo. Applicants assert that the mica substrate particles in Taizo Example 2 are nearly 300 times as large as the micronized ZnO particles, and therefore Taizo fails to disclose the essential structural feature of claim 1 – composite particles structure wherein a plate-like powder is adhered to a spherical powder coated with an oil agent- claim 1 is not anticipated by Taizo or obvious over Taizo.
Applicants assert that Taizo teaches away from claim 1 by explicitly requiring non-spherical (plate-like) substrates as the core, teaching that this shape provides desirable properties for cosmetic application. This is at odds with Applicants’ instant objective technical problem of how to modify a composite powder to provide an alternative to plastic microbeads that replicates their advantages in a cosmetic formulation.
Applicants’ arguments have been carefully reviewed and are not found to be persuasive.
With respect to the anticipation rejection, as described in the rejection above, Taizo discloses in Example 2 micronized mica which is mixed with micronized zinc oxide and hydrogenated egg oil. (See Example 2). A composite powder is produced in which the micronized zinc oxide (a spherical powder as taught in col. 1, lines 40 to 65 of Taizo) is coated with hydrogenated egg oil (an oil agent) and micronized mica is adhered to the zinc oxide powder. (See Example 2). The micronized mica is adhered to the zinc oxide powder. Claim 1 teaches a spherical powder which is coated in an oil agent and then the plate like substance is adhered to it. Taizo teaches a cosmetic with this composite powder as called for in claim 7, and the cosmetic does not contain microbeads as called for in claim 8.
Additionally, with respect to the anticipation rejection, applicants’ assertion that Taizo teaches away from claim 1 by explicitly requiring non-spherical (plate-like) substrates as the core is also not found to be persuasive. "Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102." Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998).
Regarding the arguments relating to the obviousness rejection, Applicants’ assertion that Taizo teaches away from claim 1 by explicitly requiring non-spherical (plate-like) substrates as the core is not found to be persuasive. Applicants’ assertion that Taizo teaches away is not found to be persuasive because there is absolutely no discouragement or disparagement of adhering a plate-like powder to a spherical powder coated with an oil agent in Taizo. Quite the opposite, actually. Taizo teaches the benefits of coating a micronized spherical zinc oxide of 2 microns or less with hydrogenated egg oil and adhering micronized mica of 5.8 microns to the coated zinc oxide include the ability for the composite powder to retain its transparency and provide a cosmetic with a good, smooth, lubricious feel on the skin. A teaching away must be clear. See MPEP Sec. 2143.03 (VI). Additionally, it should be noted that there is no requirement regarding a core in instant claim 1, so it is unclear what requirement Applicants are referring to, since no such requirement exists in the language of the claims. The only size requirements recited in the claims are taught by Taizo. Namely, Taizo teaches a cosmetic composition with a composite powder that is produced by micronized spherical zinc oxide of 2 microns or less being coated with hydrogenated egg oil and adhering micronized mica of 5.8 microns and an aspect ratio of less than 10 to the coated zinc oxide in order to have a cosmetic with a transparent composite powder that has a good smooth feel on the skin.
Additionally, it is not necessary that the prior art teach the same benefit or advantage that Applicants found for there to be a prima facie case of obviousness.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. The purpose in this instance is to have a cosmetic with a composite powder that has a smooth, lubricious feel on the skin and also retains its transparency. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
As described in the obviousness rejection above, it would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the Taizo cosmetic composition to use a composite powder that is produced by micronized spherical zinc oxide of 2 microns or less being coated with hydrogenated egg oil and adhering micronized mica of 5.8 microns and an aspect ratio of less than 10 to the coated zinc oxide in order to have a cosmetic with a composite powder that has a smooth, lubricious feel on the skin and also retains its transparency.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/
Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights