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 .
Applicant’s election without traverse of Group I, claims 1-12 in the reply filed on 19 April 2026 is acknowledged. The election/restriction requirement is deemed proper and is therefore made FINAL. An Action on the merits of claims 1-12 is contained herein.
Group II, claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Priority
This application claims foreign priority to JAPAN 2023-052438 filed 03/28/2023, AND JAPAN 2023-163847 FILED 09/26/2023 under 35 U.S.C. 119(a)-(d). The certified copy of the priority documents has been filed in the instant application.
Claim Rejections - 35 USC § 102/103
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takahasi (WO 2022137679 A1; Machine English Translation, pages 1-17), or, in the alternative, under 35 U.S.C. 103(a) as obvious over Takahasi (WO 2022137679 A1; Machine English Translation, pages 1-17).
Takahashi teaches cellulose particles having particle size of 50mm or less as base particle which are surface treated with a surface treatment agent which covers the surface to form a coating (see paragraph before the last paragraph on page 5; Example 1 at page 10; part of the limitation of claim 1 regarding base particle and coating layer; limitation of claim 6 regarding diameter). The surface treatment agents that can be used are amino acid, and fatty acid metal salt (page 6, first paragraph; limitation of claims 7-8).
The surface coated cellulose particles are made by a coating method as done in the instant invention. Therefore, the percentage coverage of the base cellulose particles should be as recited in claims 1-3.
The amount of coating material, zinc stearate, is 1.5g and the amount of cellulose core beads is 50g. This equates to 3% by mass of coating layer with respect to the base particle as in claims 4-5.
To the extent that applicant may argue that Takahashi does not anticipate the instantly claimed invention, 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 make the cellulose particles as instantly claimed.
The artisan would be motivated to use the claimed particles (also taught by Takahashi) since the use of such coated particles in cosmetics resulted in products having excellent spreadability and moistness on the skin, as well as being soft and highly stable (Takahashi-page 15, last para). One of ordinary skill in the art would look for such particles having various coatings and percentage of coverage as alternatives for use in the applications taught by the prior art.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akihiro et al (JP 2022131884 A; machine English translation, pages 1-10).
Akihiro et al teaches cellulose particles having average particle size of 27.6mm coated with stearic acid, and sodium dilauroyl glutamate (Abstract; page 7, example 1; claims 1-2 of Akihiro; part of the limitations of claim 1 regarding the base particle and a coating layer; limitation of claims 6-8). The surface coated cellulose particles are made by a coating method as done in the instant invention. Therefore, the percentage coverage of the base cellulose particles should be as recited in claims 1-3.
The amount of coating material, stearic acid, is 2.5 parts, and the amount of cellulose is 55 parts. This equates to 4.5% by mass of coating layer with respect to the base particle as in claims 4-5.
To the extent that applicant may argue that Akihiro does not anticipate the instantly claimed invention, 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 make the cellulose particles as instantly claimed.
The artisan would be motivated to use the claimed particles (also taught by Akihiro) since the use of such coated particles in cosmetics resulted in products having an effect of concealing wrinkles and pores, and in addition has the characteristic of being excellent in the effect of adsorbing oily dirt and removing dirt smoothly (Akihiro-page 3, 5th full para). One of ordinary skill in the art would look for such particles having various coatings and percentage of coverage as alternatives for use in the applications taught by the prior art.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Masahiro et al (EP 3932974 A1; cited in IDS filed 06/03/2024) in view of Takahasi (WO 2022137679 A1; Machine English Translation, pages 1-17), and further in view of Akihiro et al (JP 2022131884 A; machine English translation, pages 1-10).
Masahiro et al teaches a resin particle which serves as the base particle, which has a first layer on the surface of the base particle and a second layer on the first layer (para 0009). The base resin particle can be cellulose (para 0009, parts 9 and 10; as in the instant claims). The first layer covering the base cellulose particle is a polyamine (para 0009; intermediate layer as in claims 9-10, and polyamine as in claims 11-12). The second layer is a compound layer over the first layer. The second layer is an anionic compound having a carboxyl group (paras 0179-0180).
Masahiro does not expressly teach that the coating layer, i.e., the second layer which is above the intermediate layer is a fatty acid, and the percentage coverage of the base particle as required by claim 9.
The teachings of Takahashi and Akihiro are set forth above. Both teach cellulose particles coated with fatty acid or fatty acid metal salt. In view of these teachings and that of Masahiro one of ordinary skill in the art will make the cellulose particles as in claims 9-12 wherein the intermediate layer is a polyalkylamine that is present between the base particle and the coating layer, which can be a fatty acid or its salt.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, cellulose particles having a fatty acid or fatty acid salt coating is known in the art and cellulose particle having an intermediate coating and a second coating layer over the intermediate layer is also suggested by the art.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art will be motivated to make the claimed cellulose particles since doing so would provide cellulose particles for use in cosmetics having the characteristics as taught by the secondary references and would also have a slow biodegradation rate (Masahiro-para 0008).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains Terminal Disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4-6, and 8 of U.S. Patent No. 12,325,779 (‘779), as being unpatentable over claims 1, 5 and 7 of U.S. Patent No. 12,460,054 (‘054), as being unpatentable over claims 1-7 and 9 of U.S. Patent No. 12,065,547 (‘547), as being unpatentable over claims 1-4, and 12 of U.S. Patent No. 12,187,861 (‘861), and as being unpatentable over claims 1-3 and 8-13 of U.S. Patent No. 12,378,403 (‘403) in view of Masahiro et al (EP 3932974 A1; cited in IDS filed 06/03/2024) and further in view of Takahasi (WO 2022137679 A1; Machine English Translation, pages 1-17), and Akihiro et al (JP 2022131884 A; machine English translation, pages 1-10). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claim 1 is drawn to a cellulose particle wherein cellulose is a main component and a coating layer that covers the base particle and wherein the coverage if the base particle with the coating layer is from 60% to 100% inclusive. Dependent claims 2-12 recite limitations drawn to percentage of coverage, percentage of coating mass of coating layer with respect to base particle, average particle diameter of the cellulose particle, specific coating layers, an intermediate layer, and specific components as intermediate layers.
Claim 1 of ‘779 is drawn to core cellulose particle and a coating layer which could be fatty acid, fatty acid salt or an amino acid. Dependent claims 4-6 and 8 recite limitations drawn to fatty acid chain length, metallic salt of fatty acid, an intermediate coating layer, and diameter of cellulose particle.
Claims 1, 5 and 7 of ‘054, claims 1-7 and 9 of ‘547, claims 1-4 and 12 of 861, and claims 1-3 and 8-13 of ‘403 are also drawn to the same type of particles. There is considerable overlap of the claims of the prior art over those of the instant claims.
The claims of the cited patents differ from the instant claims in that the instant claims are drawn to particles wherein the coverage if the base particle with the coating layer is from 60% to 100% inclusive. However, it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention that the claimed cellulose particles could be successfully made in view of the secondary references.
In the instant case the cited patents the coated cellulose particles including an intermediate layer that applicant claims. Although the claims of the cited patents are drawn to particles wherein the coverage if the base particle with the coating layer is from 60% to 100% inclusive, one of ordinary skill in the art would readily recognize that the claimed cellulose particles could be made with a reasonable expectation of success in view of the cited patents and the teachings of the secondary references. The use of known starting materials to make particles as taught in the prior art is not seen to render the instantly particles unobvious over the art. Once the general scheme has been shown to be old, the burden is on the applicant to present reason or authority for believing that the claimed particles are not obvious over the prior art. The artisan would make the claimed particles as alternatives for use in cosmetics for the beneficial properties as taught by the secondary references.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains Terminal Disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 2-12 of copending Application No. 18/151,132 (‘132), as being unpatentable over claims 4-7 of copending Application No. 18/449,174 (‘174), as being unpatentable over claims 1-14 of copending Application No. 18/444,627 (‘627), as being unpatentable over claims 1 and 20-21 of copending Application No. 18/461,482 (‘482), and as being unpatentable over claims 1-12 of copending Application No. 18/459,442 (‘442) ) in view of Masahiro et al (EP 3932974 A1; cited in IDS filed 06/03/2024) and further in view of Takahasi (WO 2022137679 A1; Machine English Translation, pages 1-17), and Akihiro et al (JP 2022131884 A; machine English translation, pages 1-10). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claim 1 is drawn to a cellulose particle wherein cellulose is a main component and a coating layer that covers the base particle and wherein the coverage if the base particle with the coating layer is from 60% to 100% inclusive. Dependent claims 2-12 recite limitations drawn to percentage of coverage, percentage of coating mass of coating layer with respect to base particle, average particle diameter of the cellulose particle, specific coating layers, an intermediate layer, and specific components as intermediate layers.
The claims of the copending applications are drawn to cellulose particles core base particles which are coated with compounds which can be polyamine, fatty acid, fatty acid metallic salt, hydroxy fatty acid and an amino acid compound, wherein the cellulose particle has a volume average diameter range, fatty acid chain length, cellulose particle having an intermediate layer, percentage of coating layer with respect to cellulose particle. There is overlap of the limitations between the instant claims and the copending claims.
The copending claims of the cited copending applications differ from the instant claims in that the instant claims are drawn to particles wherein the coverage if the base particle with the coating layer is from 60% to 100% inclusive. Although the claims of the copending applications do not recite a limitation regarding the percentage of coverage, one of ordinary skill in the art would, in view of the teachings of the copending claims and that of the secondary references, arrive at the claimed invention with a reasonable expectation of success.
The artisan would be motivated to make the claimed particles as alternatives for use in cosmetics for the beneficial properties they have as taught by the secondary references.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
1. Elected claims 1-12 (Group I) are rejected.
2. Group II, claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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