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. This is the first office action on the merits.
Information Disclosure Statement
The IDSs filed 12/28/2023 and 9/26/2025 have been reviewed.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) is acknowledged.
Election/Restrictions
Applicant’s election of Group I (claims 1-8), with traverse in the reply dated January 30, 2026 is acknowledged. The traverse is on the basis that nothing in Miyoshi suggests the physical forms of the micronized zinc oxide and micronized mica. Applicant further asserts that there would be no undue burden to search the claims of Group I and Group II together since the two fields of search would substantially overlap.
Applicant’s traversal of the restriction requirement is not found to be persuasive because the common technical feature of the groups is taught by the prior art, the groups lack unity of invention a posteriori and the common technical feature does not rise to the level of a special technical feature as required by PCT Rules 13.1 and 13.2. Thus, restriction between the groups is proper.
Applicant’s argument that there is no suggestion of the form of the micronized mica is not found to be persuasive, since mica comes in a plate-like form, as opposed to a spherical one as evidenced by ZME Science (The Mica minerals: geology, characteristics, types and uses). With respect to zinc oxide, spherical shapes are taught to be suitable in col. 1, lines 40 to 65.
The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). PCT Rule 13.1; MPEP § 1850. The requirement for unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. PCT Rule 13.2; MPEP § 1850.
Lack of unity of invention may be directly evident “a priori,” that is, before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” that is, after taking the prior art into consideration. In the case of independent claims to A + X (i.e., composition claims) and A + Y (i.e., method claims), unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. See MPEP § 1850(II).
In the instant case, it is the Examiner's position that the technical feature that is shared by the groups is the composite powder characterized in that a plate-like powder is adhered to a spherical powder coated with an oil agent.
However, this composition is known in view of the prior art of Taizo et al. US 5968531 (10/19/1999)(9/26/2025 IDS).
Taizo et al. 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). Applicants’ traversal is not found to be persuasive because there is no PCT requirement that a search burden be established.
For the reasons set forth herein, the requirement for restriction is still deemed proper and is therefore made FINAL.
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.
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 4-5 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.
Claims 4-5 are rejected under 35 USC 112(b) for reciting “at ordinary temperature”. The phrase “at ordinary temperature” in claims 4-5 is a relative term which renders the claim indefinite. The phrase “at ordinary temperature” 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. One skilled in the art, therefore, would not be reasonably apprised of the metes and bounds of the claims.
For the purposes of this office action claims 4-5 will be interpreted to mean at room temperature.
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.
Claims 1, 7 and 8 are rejected 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.
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.
Claims 1-8 are rejected 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.
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.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/SARAH ALAWADI/ Primary Examiner, Art Unit 1619