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 .
DETAILED ACTION
Claims 1-5 are pending.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 11/16/23 and 7/8/25. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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, 2, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daiki et al. (JP 2015/212217; cited in IDS).
Regarding Claim 1, Daiki et al. disclose a hexagonal boron nitride powder comprising primary particles of hexagonal boron nitride, wherein an aspect ratio of the primary particles is 3-5 (i.e. 25 or less) and an oil absorption value is 100 mL/g or less, preferably 90 or 80 mL/g (i.e. 50 to 90 mL/100 g) (e.g. Claims 1 and 2, and paragraph 0030).
Regarding Claim 2, Daiki et al. teach that the BET specific surface area is 0.7-5.0 m2/g, preferably 1-3 m2/g (i.e. 1.5 to 5.0 m2/g) (e.g. paragraph 0029).
Regarding Claim 5, Daiki et al. teach that the boron nitride powder is part of a cosmetic (e.g. paragraph 0035).
Claims 1, 2, 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda et al. (JP 2021/116205; cited in IDS).
Regarding Claim 1, Takeda et al. disclose a hexagonal boron nitride powder comprising primary particles of hexagonal boron nitride, wherein an aspect ratio of the primary particles is 20 or less (i.e. 25 or less) and an oil absorption value is 40-100 mL/g or less, preferably 50-80 mL/g (i.e. 50 to 90 mL/100 g) (e.g. Claims 1 and 2, and paragraph 0027).
Regarding Claim 2, Takeda et al. teach that the BET specific surface area is less than 2.5 m2/g, and exemplify particles having a surface area of 2.0 m2/g (i.e. 1.5 to 5.0 m2/g) (e.g. Claim 1, paragraph 0023 and Table 2).
Regarding Claim 4, Takeda et al. teach that the total oxygen amount is less than 0.3%, or preferably 0.05-0.15 (i.e. 0.01% to 0.20%) (e.g. Claim 1, paragraph 0025).
Regarding Claim 5, Takeda et al. teach that the boron nitride powder is part of a cosmetic (e.g. Claim 7).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Daiki et al. (JP 2015/212217; cited in IDS) in view of Kurokawa et al. (JP 2018/108970; cited in IDS).
Regarding Claims 1, 2 and 5, Daiki et al. disclose a hexagonal boron nitride powder comprising primary particles of hexagonal boron nitride, wherein an aspect ratio of the primary particles is 3-5 (i.e. 25 or less) and an oil absorption value is 100 mL/g or less, preferably 90 or 80 mL/g (i.e. 50 to 90 mL/100 g) (e.g. Claims 1 and 2, and paragraph 0030). Daiki et al. teach that the BET specific surface area is 0.7-5.0 m2/g, preferably 1-3 m2/g (i.e. 1.5 to 5.0 m2/g) (e.g. paragraph 0029). Daiki et al. teach that the boron nitride powder is part of a cosmetic (e.g. paragraph 0035).
Daiki et al. are silent as to the tap density of the powder. This is made up for by the teachings of Kurokawa et al.
Kurokawa et al. teach a boron nitride powder for cosmetics, which is superior in spreading and hiding power as compared with the prior art (e.g. abstract). Kurokawa et al. teach that the tap density is 0.5 g/cm3 or less, or preferably 0.25 g/cm3 or less, which is within the claimed range (e.g. paragraph 0025). Kurokawa et al. teach that a small tap density has a soft feel and is characterized by a light feel when applied to the skin. When the tap density exceeds 0.5 g/cm3, the touch when applied to the skin becomes heavy, which is not preferable as a cosmetic (e.g. paragraph 0027).
Regarding Claim 3, it would have been obvious to one of ordinary skill in the art at the time of filing to produce a boron nitride powder having a tap density of 0.5 g/cm3 or less, or preferably 0.25 g/cm3 or less, as taught by Kurokawa et al. for the boron nitride powders of Daiki et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the disclosures are drawn to hexagonal boron nitride powders for cosmetics, and one of ordinary skill would have been motivated in order to provide the benefits of soft and light feel, as taught by Kurokawa et al.
Claims 1, 2, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Daiki et al. (JP 2015/212217; cited in IDS) in view of Koshida et al. (JP 2014/094878; cited in IDS).
Regarding Claims 1, 2 and 5, Daiki et al. disclose a hexagonal boron nitride powder comprising primary particles of hexagonal boron nitride, wherein an aspect ratio of the primary particles is 3-5 (i.e. 25 or less) and an oil absorption value is 100 mL/g or less, preferably 90 or 80 mL/g (i.e. 50 to 90 mL/100 g) (e.g. Claims 1 and 2, and paragraph 0030). Daiki et al. teach that the BET specific surface area is 0.7-5.0 m2/g, preferably 1-3 m2/g (i.e. 1.5 to 5.0 m2/g) (e.g. paragraph 0029). Daiki et al. teach that the boron nitride powder is part of a cosmetic (e.g. paragraph 0035).
Daiki et al. are silent as to the oxygen amount of the powder. This is made up for by the teachings of Koshida et al.
Koshida et al. teach a boron nitride powder for cosmetics, having exceedingly improved cold sense and transparent feeling (bare skin feeling) (e.g. abstract). Koshida et al. teach that particles have an oxygen content of 1.5% by mass or less (e.g. Claim 4). Koshida et al. teach that the boron nitride powder having water repellency is characterized by few surface functional groups. As impurities, oxygen and carbon occupy most of them, and oxygen exists as OH groups and carbonyl groups on the surface of the BN powder, thereby reducing the water repellency and oil absorption of the powder. Furthermore, when the oxygen content in the boron nitride powder exceeds 1.5% by mass, impurities such as boron oxide increase. When such boron is used in cosmetics, there is a disadvantage such as damage to the skin, therefore the oxygen is preferably 1.5% by mass or less, or more preferably, it is 1.0 mass% or less, which overlaps with the claimed range (e.g. paragraphs 0028, 0030).
Regarding Claim 4, it would have been obvious to one of ordinary skill in the art at the time of filing to produce a boron nitride powder having an oxygen content of 1 mass% or less, as taught by Koshida et al. for the boron nitride powders of Daiki et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the disclosures are drawn to hexagonal boron nitride powders for cosmetics, and one of ordinary skill would have been motivated in order to provide the benefits of water repellency, oil absorption, and reduced skin damage, as taught by Koshida et al. Regarding the claimed range of 0.01-0.2 mass%, this overlaps with the range taught by Koshida et al. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable Takeda et al. (JP 2021/116205; cited in IDS) in view of Kurokawa et al. (JP 2018/108970; cited in IDS).
Regarding Claims 1, 2, 4 and 5, Takeda et al. disclose a hexagonal boron nitride powder comprising primary particles of hexagonal boron nitride, wherein an aspect ratio of the primary particles is 20 or less (i.e. 25 or less) and an oil absorption value is 40-100 mL/g or less, preferably 50-80 mL/g (i.e. 50 to 90 mL/100 g) (e.g. Claims 1 and 2, and paragraph 0027). Takeda et al. teach that the BET specific surface area is less than 2.5 m2/g, and exemplify particles having a surface area of 2.0 m2/g (i.e. 1.5 to 5.0 m2/g) (e.g. Claim 1, paragraph 0023 and Table 2). Takeda et al. teach that the total oxygen amount is less than 0.3%, or preferably 0.05-0.15 (i.e. 0.01% to 0.20%) (e.g. Claim 1, paragraph 0025). Takeda et al. teach that the boron nitride powder is part of a cosmetic (e.g. Claim 7).
Takeda et al. are silent as to the tap density of the powder. This is made up for by the teachings of Kurokawa et al.
Kurokawa et al. teach a boron nitride powder for cosmetics, which is superior in spreading and hiding power as compared with the prior art (e.g. abstract). Kurokawa et al. teach that the tap density is 0.5 g/cm3 or less, or preferably 0.25 g/cm3 or less, which is within the claimed range (e.g. paragraph 0025). Kurokawa et al. teach that a small tap density has a soft feel and is characterized by a light feel when applied to the skin. When the tap density exceeds 0.5 g/cm3, the touch when applied to the skin becomes heavy, which is not preferable as a cosmetic (e.g. paragraph 0027).
Regarding Claim 3, it would have been obvious to one of ordinary skill in the art at the time of filing to produce a boron nitride powder having a tap density of 0.5 g/cm3 or less, or preferably 0.25 g/cm3 or less, as taught by Kurokawa et al. for the boron nitride powders of Takeda et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the disclosures are drawn to hexagonal boron nitride powders for cosmetics, and one of ordinary skill would have been motivated in order to provide the benefits of soft and light feel, as taught by Kurokawa et al.
Conclusion
No claim is allowed.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619