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
Status of Application
1. Applicants’ arguments/remarks filed 17 November 2025 are acknowledged. No amendments have been made. Claims 1-16 are currently pending and examined on the merits within.
Maintained Rejections
Claim Rejections- 35 USC § 103
2. 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.
3. Claim(s) 1-10 is/are again rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2020/0179261) in view of Ukita et al. (US 20160032020).
Kobayashi et al. teach cellulose acetate particles having excellent biodegradability and touch feeling (abstract). The average particle sizes are 80 nm or more or 100 µm or less (abstract and para 0033). Paragraph 33 demonstrates that it's the average volume particle sizes. The cellulose acetate has a total degree of acetyl substitution of 0.7 or more to 2.9 or less. The acyl groups are acetyl groups.
Kobayashi et al. do not teach the total degree of acetyl substitution of 0.05 or more to less than 0.7 as in claim 1.
Ukita et al. teach cellulose acetate having a total degree of acetyl substitution of 0.4 to 1.1 which overlaps with the claimed range (abstract). Ukita et al. teach cellulose acetate with a low degree of substitution that can give formed articles, such as films and fibers, having strength/elongation at high levels (para 0001). It is highly soluble in water and may be used as a water-soluble polymeric material typically for or in tablet binders, tablet coating agents, cosmetic thickeners, cosmetic moisturizers, excipients or fillers and materials for formed articles (para 0001). A cellulose acetate having total degree of acetyl substitution within the range of 0.4-1.1 is highly soluble in water (para 0031).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the total degree of acetyl substitution of the cellulose acetate particles such that they would be 0.4. One would have been motivated to do so because these levels have shown high solubility in water as taught by Ukita et al.
4. Claims 1-2 and 11-12 are again rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2020/0179261) in view of Ukita et al. (US 20160032020) as applied to claims 1-10 above, and further in view of Kobayashi et al. (US 20220142900).
Kobayashi et al. does not teach base particle containing the cellulose acetate as a main component, and a coating layer coating the base particle and containing at least one coating material selected from the group consisting of fatty acid, fatty acid metal salts, amino acid compounds, lipid compounds, silicone compounds, fluorine compounds and ceramide compounds.
Kobayashi et al. (US 20220142900) (hereinafter the '900 reference) teach cellulose acetate particles that contain a lipophilicity-imparting agent such as silicone- based compounds (abstract and para 0064). The lipophilicity-imparting agent refers to a compound capable of being deposited on the cellulose acetate particles and increasing the lipophilicity of the cellulose acetate particles. The silicone-based component has properties of being physiologically inert, highly safe, and stable, and thus is suitable for using the particles containing cellulose acetate particularly in cosmetics directly touching the skin (para 0062-0072).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to coat the cellulose acetate particles of Kobayashi et al. with a material such as silicone compounds as disclosed in the '900 reference. One would have been motivated to do so to increase the lipophilicity of the particles.
5. Claims 1-2 and 15-16 are again rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2020/0179261) in view of Ukita et al. (US 20160032020) as applied to claims 1-10 above, and further in view of Kobayashi et al. (US 20250049645).
Kobayashi et al. do not teach inorganic particles that are externally added.
Kobayashi et al. (US 20250049645) (hereinafter '645) teach cellulose particles surface treated (abstract). The surface treatment includes inorganic powders such as zinc oxide (paras 0019 and 0040). The '645 reference discloses the composition of the present disclosure, including, as a surface treatment compound, an organic compound having a long-chain alkyl group and/or an inorganic powder having an average particle size of ½ of the average particle size of the particles of the cellulose derivative, enables good tactile feel and achieves high particle dispersibility in various solvents and formulations to be used in cosmetic compositions (para 0019).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include inorganic particles on the surface of the cellulose acetate particles. One would have been motivated to do so to provide good tactile feel and achieve high particle dispersibility in various solvents and formulations as disclosed by the '645 reference.
Claim Objections
6. Claims 13 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicants’ arguments filed 17 November 2025 have been fully considered but they are not persuasive.
7. Applicants argued, “Kobayashi teaches that when the total degree of acetyl substitution is less than 0.7, the water solubility is high, particle sphericity may decrease which may result in poor touch feeling. Kobayashi strictly prohibits the total degree of acetyl substitution to be less than 0.7 as an adverse effect would occur. One would not be motivated as it would be a teaching away to lower the degree of acetylation. Kobayashi 900 and Kobayashi 645 cannot cure the deficiencies.”
In response to applicants’ arguments, the prior art of Ukita et al. was provided to make obvious modification of the degree of acyl substitution. Ukita teaches that the lower degree of acetyl substitution results in higher water solubility which coincides with the teaching of Kobayashi. Thus, it would have been obvious to modify the degree of acyl substitution to optimize the formulation based on the solubility desired. This does not equate to a teaching away, because this does not teach that lower substitution makes the particle non-functional for its intended use, but instead changes the properties. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Since the rejections are maintained, there are no deficiencies for the prior art of Kobayashi 900 and Kobayashi 645 to cure.
Thus this rejection is maintained.
Conclusion
8. 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.
Correspondence
9. No claims are allowed at this time.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WORSHAM whose telephone number is (571)270-7434. The examiner can normally be reached Monday-Friday (8-5).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WORSHAM/Primary Examiner, Art Unit 1615