DETAILED ACTION
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 .
Status of Claims/Application
Receipt of Remarks/Amendments filed on 03/22/2026 is acknowledged. The amendments to the specification and abstract are acknowledged. Claims 1, 3, and 5 are amended and claim 2 is canceled. Claim 8 is new. Claims 1 and 3-8 are currently pending and are examined on the merits herein.
Priority
The instant application filed 08/15/2023, is a 371 filing of PCT/JP2022/006346, filed 02/17/2022, which claims foreign priority to JP2021-025176, filed 02/19/2021.
Withdrawn Rejections
Claims 1-7 were rejected under 35 U.S.C. 112(b) for being indefinite. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
The following grounds of rejection are necessitated by amendment:
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.
1. Claims 1 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama, Y., (US 20200060958 A1, 02/27/2020, IDS dated 07/29/2024), hereinafter Matsuyama, in view of Koster Keunen. (08/20/2019). Rice Bran Wax No. 224 Technical Data Sheet, (on record), hereinafter Keunen, and Woo, K., et al. (US 20060286251 A1, 12/21/2006, IDS dated 08/15/2023), hereinafter Woo, as evidenced by Lehmann Ingredients. (2024, December 17). Corn starch waxy native, (on record), hereinafter Lehmann.
Matsuyama discloses a cosmetic composition which includes a starch particle and a lubricant that covers at least a portion of a surface of the starch partial and contains a fatty acid, in which a mass of the lubricant is 0.3 mass % to 20 mass % with respect to the total mass of the starch particle and the lubricant (abstract; [0014]). Most preferably, the mass of the lubricant is 1 mass % to 7 mass % with respect to the total mass of the starch particle and the lubricant ([0065]). The starch particle comprises amylose and amylopectin. The ratio of amylose and amylopectin varies depending on the raw material, but generally the content of amylopectin is 70 to 80 mass % with respect to the entire starch particle ([0045]). The starch may be a chemically modified starch, such as cross-linked starch and more ([0048]). The lubricant is at least one substance selected from the group consisting of metal soaps and waxes derived from vegetable oils and fats ([0015]). As the wax derived from vegetable oils and fats, carnauba wax, and candelilla wax and the like can be exemplified ([0059]).
The average particle diameter of the cosmetic composition (i.e., the coated particle) is at least 2 μm but not more than 80 μm ([0017]), more specifically, the average particle diameter of the cosmetic composition is at least 10 μm but not more than 20 μm ([0023]), which overlaps with the instantly claimed particle diameter. Matsuyama further discloses a particle diameter D90 which is defined as a value of a particle diameter at 90% cumulation viewed from the fine particle side in the cumulative particle size distribution curve ([0042]). In the particle size distribution analysis, as shown in Figure 5, particles are not observed with a diameter greater than 50 μm (Fig. 5). Furthermore, in the cosmetic composition of Example 12 (i.e., cosmetic product of Fig. 5), particles with a particle diameter of 20-40 μm were not confirmed ([0195]). In Example 12, the particle diameter D50 (i.e., average particle diameter) was 15.16 μm and the particle diameter D90 was 19.76 μm ([0195]). Given that no particles were identified in the 20-40 μm range, along with a D90 of 19.76, and the observed size distribution of the cosmetic product in Fig. 5, Matsuyama indirectly teaches a maximum particle diameter of less than 30 μm, as instantly claimed. Additionally, 4 times the amount of the average particle diameter (i.e., D50) of Example 12 would be ~60 μm. Figure 5 clearly illustrates that no particles are observed with a particle diameter of more than 50 μm, thus, the maximum particle diameter of Example 12 of Matsuyama is also 4 times or less the average particle diameter as instantly claimed.
Matsuyama discloses blending the cosmetic compositions of various examples as feel modifiers in eye shadows and blusher [0223]-[0227]), reading on the cosmetics of claim 7.
(D90−D10) which is a difference between the particle diameter D10 and the particle diameter D90 is preferably not more than 10 μm. As the difference between the particle diameter D10 and the particle diameter D90 is smaller, the variation of the particle diameter is smaller. If the difference between the particle diameter D10 and the particle diameter D90 is not more than 10 μm, the sensation on the skin when the cosmetic composition is used as a cosmetic product is improved ([0077]).
The teaching of Matsuyama differs from the instantly claimed invention in that Matsuyama does not teach wherein the lubricant (i.e., coating) is rice bran wax as instantly claimed. Furthermore, Matsuyama does not explicitly teach starch particles containing 90 wt% or more of amylopectin, as recited in claim 1, nor the particle variation coefficient of claim 8.
Keunen discloses rice bran wax. Rice bran wax is used in cosmetics, skin care, and hair care. Additionally, rice bran wax can be used as a substitute for Candelilla in many formulations (formulation guidelines).
Woo discloses starch-lipid composites prepared by heat treatment of thermally stable granular starch with lipids under controlled conditions. The products are useful as dispersing agents, thickening agents, fat substitutes and carriers for lipid-soluble active ingredients in foods, personal care and pharmaceutical applications (abstract). Starch granules used in the preparation of the starch-lipid composites have been chemically modified by cross-linking. The starch-lipid composites are generated by denaturing the surface-bound proteins on the intact starch granules. The denatured proteins present hydrophobic moieties that form favorable electrostatic interactions with lipids. Therefore, intact granules are coated with and electrostatically bound to lipids ([0010]). Cross-linked starch can be prepared using a wide variety of native starches, such as starches selected from wheat, corn, waxy corn, high amylose corn, oat, rice, tapioca, mung bean and potato ([0020]). For non-food applications, such as personal care applications, suitable lipids include but are not limited to, rice bran oil, waxes, and more ([0022]; claim 8).
I would have been prima facie obvious to combine the teachings of Matsuyama with those of Keunen and Woo before the effective filing date of the claimed invention by using rice bran wax as the lubricant coating in the particles of Matsuyama to yield the instantly claimed invention. Matsuyama teaches that the lubricant may be a wax derived from vegetable oils which includes candelilla wax, Keunen teaches that rice bran wax is a common substitute for candelilla in cosmetics, and Woo teaches that starch-lipid composites (i.e., lipid coated starch particles) for personal care applications may be prepared using rice bran oil. As such, it would have been prima facie obvious to use rice bran wax as the lubricant of Matsuyama since it entails no more than simple substitution of one known element for another to yield predictable results. See MPEP 2143. Additionally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Thus, the combined particles of Matsuyama, Keunen, and Woo read on starch particles having rice bran wax on its surface, wherein a maximum particle diameter of the coated particles is less than 30 μm and 4.0 times or less the average particle diameter (as taught by Matsuyama), as recited in claim 1.
Regarding the amount of rice bran wax in the coated particle, Matsuyama teaches the mass of the lubricant to be 1 to 7 mass % with respect to the total mass of the starch particle, which falls within the range of claim 1. Thus, it would have been obvious when substituting the lubricant with rice bran wax, to maintain the amount of lubricant taught by Matsuyama since this is a known and effective amount of lubricant to coat starch particles in, and the above combination requires no more than simple substitution of one lubricant for another.
Regarding the average particle diameter of the coated particles, Matsuyama teaches that an average particle diameter of the coated particles is preferably between 2 μm and 80 μm, more specifically, 10 μm and 20 μm, both of which overlap with the instantly claimed range (i.e., 0.5 to 10 μm). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding the amylopectin content, Matsuyama teaches that the content of amylopectin is generally 70 to 80 mass % with respect to the entire starch particle, but varies depending on the raw material. It is noted that Woo teaches waxy corn starch which contains no less than 97% amylopectin as evidenced by Lehmann. While the 70-80% of amylopectin taught by Matsuyama does not fall within the instantly claimed range (i.e., 90% or more) it is well within the abilities of an ordinary artisan to optimize the amount of amylopectin in the composition depending on the desired properties of the final product and the starch source used. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of amylopectin through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have had a reasonable expectation of success in adjusting amylopectin content since it can be achieved simply by substituting one starch source for another starch source with the desired amylopectin content. Given that waxy corn starch is a known and routine material for starch-lipid composites in personal care, it would have been prima facie obvious to substitute one starch for another to predictably yield the instant invention.
Regarding claim 7, Matsuyama teaches blending the lubricant coated particles as feel modifiers into eye shadows and blusher (i.e., cosmetics). It would have been prima facie obvious to do the same with the combined particles of Matsuyama, Keunen, and Woo since the combined particles are also lubricant coated particles and would therefore be useful for the same purpose.
Regarding claim 8, Matsuyama does not explicitly teach a particle variation coefficient (CV), however, Matsuyama discloses particle variation as a function of (D90−D10). As discussed above, the smaller the difference between D90 and D10, the smaller the variation in the particle size and the better the sensation is on the skin. As such, it would have been prima facie obvious to one of ordinary skill in the art to provide particles with as little variation as possible, as taught by Matsuyama. One of ordinary skill in the art would have been motivated to optimize the particle variation coefficient to be within the instantly claimed range (i.e., 40%) in order to decrease particle variation and improve the sensation and feel of the product. The optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B).
2. Claims 1, 3, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama, Keunen, and Woo as applied to claims 1 and 7-8 above, and further in view of Satoh, R., et al. (2019). Analysis of the distribution of rice allergens in brown rice grains and of the allergenicity of products containing rice bran. Food Chemistry, 276, 761-767, (on record), hereinafter Satoh, and Ogo, Y., et al. (2014), Generation of transgenic rice with reduced content of major and novel high molecular weight allergens. Rice, 7, 19, (on record), hereinafter Ogo.
The combined teachings of Matsuyama, Keunen, and Woo are discussed above.
The combined teachings of Matsuyama, Keunen, and Woo differ from that of the claimed invention in that Matsuyama, Keunen, nor Woo explicitly teach a globulin content of 0.02 wt% or less as recited in claim 3.
Satoh discloses the allergenicity of rice bran. Specifically, the distribution of rice allergens in brown rice grains was analyzed and the allergenicity of cosmetics and health foods containing rice bran determined. The 52-kDa globulin was identified as the most likely causative allergen of rice bran allergy. Results indicate that patients with rice bran allergy need to be careful about using products containing intact rice bran as a constituent (abstract). Several rice proteins have already been identified as rice allergens including the an α-globulin (19-kDa globulin), a 52-kDa and a 63-kDa globulin (introduction, para. 1). Satoh further discloses several cosmetics used in the study which were analyzed for rice allergen content with western blot analysis. Globulin proteins were not detected in several of the cosmetics comprising rice bran powder (table 1).
Ogo discloses that rice seed proteins contain antigens that provoke allergic responses in some individuals with food allergy (abstract). Symptoms of rice allergy include atopic dermatitis, eczema, and food-protein-induced enterocolitis syndrome. Multiple rice seed proteins are responsible for rice allergy, among them, α-globulin (26 kDa) (background, para. 1). Allergens have been removed from rice by several processing technologies such as enzymatic digestion, alkaline hydrolysis, and high hydrostatic pressure. Additionally, hypo-allergenic transgenic rice has been generated in which the levels of major seed allergen genes (26 kDa allergens) were suppressed (background, para. 2).
It would have been prima facie obvious to further combine the teachings of Matsuyama, Keunen, and Woo with those of Satoh and the Ogo before the effective filing date of the claimed invention to provide a cosmetic product with no globulin to yield the instantly claimed invention. One of ordinary skill in the art would have been motivated to provide a cosmetic without globulin since it is a known allergen which may cause dermatitis and eczema in allergic individuals as taught by Satoh and Ogo. Thus, it would have been desirable to provide a cosmetic wherein globulin is absent. One of ordinary skill in the art would have had a reasonable expectation of success in providing a composition without globulin since Ogo teaches methods in which such allergens have been removed from rice. Satoh further discloses cosmetic products in which globulin is not detected. Thus, one of ordinary skill in the art would have had no issue in selecting a raw material in which no globulin is present in order to produce a hypoallergenic cosmetic product.
3. Claims 1, 4, and 7-8 rejected under 35 U.S.C. 103 as being unpatentable over Matsuyama, Keunen, and Woo as applied to claims 1 and 7-8 above, and further in view of Watanabe, S., et al. (WO 2020004604 A1, 01/02/2020, US 20210259942 A1 used as English equivalent, on record), hereinafter Watanabe.
The combined teachings of Matsuyama, Keunen, and Woo are discussed above.
The combined teachings of Matsuyama, Keunen, and Woo differ from that of the instant invention in that Matsuyama, Keunen, nor Woo explicitly teach a sphericity of 0.85 or more as recited in claim 4.
Watanabe discloses that porous-cellulose particles having high sphericity have been achieved from a natural raw material. The porous-cellulose particles have an average particle diameter of 0.5 to less than 50 μm and a sphericity of 0.85 or more. Cosmetic products containing such porous-cellulose particles have excellent texture properties (abstract). Cellulose particles used as an alternative to plastic beads in cosmetic products have the requirement of having high sphericity and good fluidity for improving texture properties of cosmetic products ([0006]). Cosmetic products containing particles having a sphericity of less than 0.85 do not exhibit good rolling properties. Thus, the sphericity is preferably 0.90 or more ([0019]).
It would have been prima facie obvious to combine the teachings of Matsuyama, Keunen, and Woo with those of Watanabe before the effective filing date of the claimed invention to give the combined particle a sphericity of more than 0.85 as taught by Watanabe to yield the instantly claimed invention. The combined particle of Matsuyama, Keunen, and Woo is a cosmetic particle made from a natural raw polysaccharide (i.e., starch) with an average diameter of 10-20 μm. Similarly, Watanabe teaches cosmetic particles made from a natural raw polysaccharide (i.e., cellulose) with an average diameter of 0.5-50 μm and a sphericity of 0.85 or more. One of ordinary skill in the art would have been motivated to give the combined particles of Matsuyama, Keunen, and Woo the sphericity of Watanabe (i.e., 0.85 or more), since a sphericity in this range improves rolling properties and therefore the texture of the cosmetic product into which the particle is incorporated. One of ordinary skill in the art would have had a reasonable expectation of success in providing the combined particles of Matsuyama, Keunen, and Woo with the sphericity of Watanabe since both teach cosmetic particles generated from natural raw polysaccharides of similar sizes.
4. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Woo, K., et al. (US 20060286251 A1, 12/21/2006, IDS dated 08/15/2023), hereinafter Woo in view of Schlossman, D., et al. (WO 2009126859 A2, 10/15/2009, on record), hereinafter Schlossman, and Yuji, M., et al. (JP 2003146829 A, 05/21/2003, IDS dated 08/15/2023, PE2E translation used, on record), hereinafter Yuji, and Koster Keunen. (08/20/2019). Rice Bran Wax No. 224 Technical Data Sheet, (on record), hereinafter Keunen.
Woo discloses starch-lipid composites prepared by heat treatment of thermally stable granular starch with lipids under controlled conditions. The products are useful as dispersing agents, thickening agents, fat substitutes and carriers for lipid-soluble active ingredients in foods, personal care and pharmaceutical applications (abstract). Starch granules used in the preparation of the starch-lipid composites have been chemically modified by cross-linking. The starch-lipid composites are generated by denaturing the surface-bound proteins on the intact starch granules. The denatured proteins present hydrophobic moieties that form favorable electrostatic interactions with lipids. Therefore, intact granules are coated with and electrostatically bound to lipids ([0010]). Cross-linked starch can be prepared using a wide variety of native starches, such as starches selected from wheat, corn, waxy corn, high amylose corn, oat, rice, tapioca, mung bean and potato ([0020]). Cross-linked starch can be prepared using a wide variety of native starches, such as starches selected from wheat, corn, waxy corn, high amylose corn, oat, rice, tapioca, mung bean and potato ([0020]). For non-food applications, such as personal care applications, suitable lipids include but are not limited to, rice bran oil, waxes, and more ([0022]; claim 8). The lipids are present in an amount equal to preferably about 0.1-10 parts by dry weight of modified starch ([0027]).
Woo claims a method for preparing the starch-lipid composite, said method comprising the following steps: preparing an aqueous dispersion comprising a plurality of individual, cross-linked starch granules; heating said dispersion to denature surface-proteins of said starch granules; drying the denatured starch granules; and preparing a second aqueous dispersion at room temperature comprising the denatured starch granules and a lipid (claim 19). The starch-lipid composite is then isolated from said second aqueous dispersion (claim 20).
Example 3 of Woo comprises the steps of mixing ten parts granular starch and 50 parts water in a stainless steel container and mixing at high speed with a mixing paddle. Woo therefore teaches a first step of preparing a dispersion of granular starch as instantly claimed. The dispersion comprises 20 wt% based on the amount of water present (i.e., 10 parts starch in 50 parts water), which falls within the instantly claimed amount of starch particles. Steam jet cooking was then carried out at 121oF. The cooked starch was separated into 3 batches and cooled. Three parts silicone oil were added to each batch of starch as the lipid. The starch, oil and water mixture was mixed at the selected temperature and subsequently dried (Ex. 3).
The teachings of Woo differ from that of the instantly claimed method in that Woo does not explicitly teach a second step of adding rice bran wax to the dispersion, heating the mixture, and cooling the mixture in that order, nor does Woo explicitly teach subjecting the dispersion to solid-liquid separation, as recited in claim 5. Lastly, Woo does not explicitly teach the amylopectin content of 90 wt%, as claimed.
Schlossman teaches compositions for natural cosmetic products and, more particularly, to natural ester, wax or oil treated pigments (abstract). Organic pigments such as starch and cellulose are widely used in cosmetic products. Although they can be used without treatment, their performance can be significantly improved through surface treatment. Special properties such as water- proofness, low oil absorption, higher solids loading, softness, enhanced dispersibility, and resistance to low pH can be enhanced through surface treatment ([03]). Most common surface modifying agents, such as methicone, silane, dimethicone (i.e., silicone oils), titanate, magnesium myristate and perfluoroalcohol phosphate are all synthetic compounds and may involve undesirable complications ([04]). Thus Schlossman utilizes plant derived esters and wax to surface treat pigments and fillers. The treated pigments may be hydrophobic and have a nice skin feel and good adhesion ([05]). Suitable pigments include organic pigments such as starch and cellulose ([11]). Suitable surface modifying agents include jojoba ester, jojoba wax, jojoba oil, soya wax and candelilla ([24]). The process for making a natural surface treated pigment comprises providing a pigment; blending the pigment with a natural surface modifying agent to produce a blend; heating the blend to between about 80 degrees C to about 150 degrees C; and allowing the blend to cool to approximately 18 degrees C ([18]; claim 30).
Yuji discloses a method for obtaining a powder for cosmetics, which has excellent water repellency and oil repellency, excellent sense of use, especially soft feel to the skin and a cosmetic which contains the powder (abstract). Yuji specifically teaches surface treating microcrystalline cellulose with metal soap or hydrogenated lecithin by forming a suspension and allowing the fatty acid metal salt to adsorb on the surface of the crystalline cellulose, upon which the cake is filtered through a Nutsche or the like, and the cake obtained is dried at 80 to 100oC to obtain the metal-treated crystalline cellulose (p. 3, para. 12; p. 4, para. 1).
Keunen discloses rice bran wax. Rice bran wax is used in cosmetics, skin care, and hair care. Additionally, rice bran wax can be used as a substitute for Candelilla in many formulations (formulation guidelines).
Regarding the amylopectin content, Woo teaches that the starch may be waxy corn starch which contains no less than 97% amylopectin as evidenced by Lehmann. It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to use waxy corn starch as the starch in the lipid-starch composites of Woo, since waxy corn starch is a known and routine starch in the art. One of ordinary skill in the art could have replaced any other starch taught by Woo with waxy corn starch, through no more than simple substitution of one known starch for another to predictably yield the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success using waxy corn starch as the starch source since Woo teaches it as an exemplary raw material for the starch lipid composites.
It would have been prima facie obvious to combine the methods of Woo and Schlossman before the effective filing date of the claimed invention by starting with the aqueous starch dispersion of Woo and then carrying out the steps of Schlossman to give the instantly claimed method. Woo teaches a first step of preparing an aqueous dispersion of a plurality of individual cross-linked starch granules which reads on the first step of the instantly claimed method. Woo then teaches heating the dispersion, cooling the dispersion and then adding the lipid, which is a different order of steps than instantly claimed. Schlossman teaches the order of blending the particles to be surface treated with the surface modifying agent (i.e., the lipid), heating the blend, and then cooling the blend. It would have been obvious to reorder the steps of Woo according to the teachings of Schlossman since Schlossman teaches that such an order results in successful surface treatment of cosmetic particles with lipid compounds. It is considered prima facie obvious to apply a known technique to a known method ready for improvement to yield predictable results. See MPEP 2143. Additionally, the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). One of ordinary skill in the art would have had a reasonable expectation of success in combining the methods of Woo and Schlossman since both teach the surface treatment of particles for cosmetic use with a lipid. The particles of Schlossman include starch pigments and the surface modifying agents include natural oils and waxes.
Regarding the temperature to heat the mixture, Woo teaches heating the mixture to 121 oF (i.e., 50 oC). While, 50 oC does not fall within the instantly claimed range it is well within the abilities of an ordinary artisan to optimize the temperature of the method depending on the level of starch denaturation and melting point of the lipid. As such, one of ordinary skill in the art would have arrived at the instantly claimed temperature range through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, Schlossman discloses heating the blend of particles and surface treating agent to between about 80oC to about 150 oC, such a range overlaps with the instantly claimed range (i.e., 78-90 oC). It would have been prima facie obvious to one of ordinary skill in the art to optimize the temperature to be somewhere within this range, since these are known and routine temperatures used for surface treating starch particles with lipids. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
It would have been further prima facie obvious to modify the combined method of Woo and Schlossman with the teachings of Yuji by performing a final step of filtering the suspension through a Nutsche to isolate the final coated particles as a solid. The combined method of Woo and Schlossman provides the surface-treated particles dispersed in a solution, thus, it would have been obvious to perform any solid-liquid separation known in the art to obtain the final coated particles in their solid form for further use and/or storage. It is considered prima facie obvious to apply a known technique to a known method ready for improvement to yield predictable results. See MPEP 2143. One of ordinary skill in the art would have had a reasonable expectation of success in combining the methods of Woo, Schlossman, and Yuji since all teach the production of surface treated particles for use as cosmetics.
Lastly, it would have been prima facie obvious to modify the combined teachings of Woo, Schlossman, and Yuji with those of Keunen before the effective filing date of the claimed invention by using rice bran wax as the lipid/surface modifying agent in the combined method to yield the instantly claimed invention. Keunen teaches rice bran wax as a known and effective wax for use in cosmetics and Woo teaches that starch-lipid composites for personal care applications may be prepared using rice bran oil and waxes. Additionally, Schlossman teaches that silicone oils, such as those used in the example of Woo, are undesirable and that plant derived esters and waxes are preferred. As such, it would have been obvious to use rice bran wax as the lipid/surface modifying agent of the combined method since it is a known and effective natural wax for use in cosmetics, which entails no more than simple substitution of one known element for another to yield predictable results. See MPEP 2143. Additionally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Regarding the amount of rice bran wax to incorporate in the combined method, Woo teaches that the lipids in the starch-lipid composites are present in an amount equal to about 0.1-10 parts by dry weight of modified starch ([0027]). As such, one of ordinary skill in the art could have determined the amount of rice bran wax to incorporate in the combined method of Woo, Schlossman, Yuji, and Keunen depending on the amount of lipid desired in the final particle as optimized from the amount taught by Woo. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of rice bran wax, as recited in claim 6, through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 03/22/2026 have been fully considered but they are not persuasive:
(1) Regarding the rejection of claim 1, applicant argues there would have been no motivation to combined the cited art to arrive at the claimed features. First, applicant argues that the none of the cited art teaches or suggests the relationship between the smooth/dry feel and uniform spreadability with the content of amylopectin. Applicant then argues that particles with an average particle diameter above the instantly claimed range (i.e., 0.5-10 um) but within the range of Matsuyama (i.e., 10-20 um), such as in Example 4 of the instant specification, have reduced performance in cosmetics as compared to particles under 10 um (Examples 1-3 and 5-7). Applicant asserts these advantages are completely unexpected from the cited art and that superiority of a property is evidence of nonobviousness.
In response to applicant's argument that the references fail to show certain features of the invention in regards to the benefits of the claimed amylopectin content and average particle diameter, it is noted that the features upon which applicant relies (i.e., feel and spreadability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In response to applicant’s argument of unexpected results, an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). In this case, applicant has not provided a comparison to the closest prior art to sufficiently show unexpected results since there are other parameters in Example 4 which could be impacting the feel characteristics. Parameters such as the particle variation and maximum particle size in Example 4 could account for the slightly reduced feel characteristics of the powder. Matsuyama teaches particle variation is minimized and that particles in the 20-40 μm were not confirmed ([0077]; [0195]), contrary to the high variation and high max particle size in Example 4. Additionally, it is not unexpected to one of ordinary skill in the art that a smaller average particle size would result in better feel characteristics of a powder. Generally, decreasing particle size will result in a smoother product with better spreadability and reduced roughness. The decrease in particle size will also increase surface area, leading to better adhesion.
(2) Regarding the rejection of claim 5, applicant argues that Woo, alone or in combination, fails to teach or suggest the claimed amylopectin content and heating temperature.
As discussed in the prior art rejections above, both features are made obvious by Woo in combination with the other cited references. Applicant has not provided any evidence of criticality regarding these concentrations or temperatures. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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, Sue X Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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