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 .
Note
The location of your application has changed. Your new examiner is Robert A. Wax, SPE of Art Unit 1615.
Summary
Claims 1 - 11 are pending in this office action. Claims 1 and 11 are amended. All pending claims are under examination in this application.
Priority
The current application filed on August 29, 2023 is a 371 of PCT/JP2022/012473 filed March 17, 2022, which in turn claims priority to Japanese patent application JP2021-055610 filed on March 29, 2021.
Response to Amendment
Applicant’s response of March 27, 2026 has been received and entered into the application file. Amendment of claims 1 and 11 to recite triethoxycaprylylsilane as the coating material has necessitated a new ground of rejection. All claims remain rejected.
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.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ashida et al., (US 2014/0199251 A1, July 17, 2014) (cited by applicant on IDS 08/29/2023) (hereinafter Ashida) in view of Wada et al., (US 6,534,044 B1, March 18, 2003) (hereinafter Wada) and Nomura et al. (WO 2016143663 A1, September 15, 2016) (hereinafter Nomura)(the teachings are taken from the pdf document entitled Nomura et al. since the original document is in Japanese).
Ashida discloses a dispersion for cosmetics in which an inorganic powder subjected to a water-repellent organic surface treatment is uniformly dispersed in water, wherein the contents of a water-repellent inorganic powder, a dispersant, and water is 80% by weight or more based on the total amount of the dispersion (Abstract). The inorganic powder zinc oxide may be surface treated ([0033]) to be water-repellent ([0039]) using silicone or a silane-based agent ([0041]). The dispersion contains a dispersant so that the inorganic particles subjected to a water-repellent treatment successfully can be dispersed uniformly in a water-based medium. Any one of an anionic, cationic, and nonionic dispersants can be used, a nonionic dispersant is preferred, and the dispersion may be used as a combination of two or more dispersions ([0047]). The cosmetic can be a W/O type cosmetic ([0063]). The cosmetic may contain any water-based component or an oil-based component which can be used in the cosmetic field and the water-based component and the oil-based component may contain any component, including, but not limited to an oil solution, various powders, a surfactant (i.e., an emulsifier), a humectant (i.e. moisturizer), and a thickener ([0064]). Suitable surfactants include nonionic surfactant monoethanolamide (i.e., an alkanolamine) ([0067]) and cationic surfactants ([0068]). Preferably, some or all of powder components are hydrophobized and a composite powder other than the inorganic powder subjected to a water-repellent organic surface treatment may be blended and used ([0079]).
In Example 5 86 g of water and 4 g of a dispersant from Table 1, and further 10 g of silicone surface-treated zinc oxide microparticles (i.e., second hydrophobic powder) and 100 g of φ1.5 glass beads were added to a mayonnaise bottle. The contents were dispersed with a paint shaker. After separating the beads, aqueous dispersions were each obtained. The dispersant in Table 1, Example 5 was polyether-modified silicone (i.e., a silicone-based surfactant) ([0085]). Example 13 is a water-in-oil type suncut milky lotion comprising an oil phase with titanium oxide microparticle silicone dispersion in low viscosity silicone oil and an aqueous phase of purified water, 1,3-butylene glycol and the dispersion of Example 5. In the production method, (A) components 1-6 are mixed and homogenized then (B) components 7-11 and 13 are mixed and homogenized. Finally, (B) is added to (A) and the resultant is emulsified, and component 12 is added to obtain a water-in-oil type suncut milky lotion ([0108]). In the production method of Example 9, 30 g of isopropyl alcohol and 4 g of isostearic acid PEG-20 were mixed and dissolved. To the mixture were charged 40 g of silicone surface-treated, silica surface-treated titanium oxide microparticles. The mixture was heated with stirring to distill isopropyl alcohol away, thereby obtaining 44 g of a powder treated with the dispersant. In a mixture of 10 g of 1,3-butylene glycol and 46 g of water, 44 g of the powder treated with the dispersant was charged, and dispersed with a homomixer to obtain a uniform aqueous dispersion ([0093]). The dispersion may be dissolved and homogenized in an aqueous phase ([0113]).
Ashida differs from the instant claims insofar as not disclosing wherein the zinc oxide is treated with triethoxyethoxycaprylylsilane.
However, Wada discloses a cosmetic material comprising silica-coated metal oxide particles further surface-treated with a hydrophobicizing agent (Abstract). The metal oxide is zinc oxide (Claim 7). The hydrophobicizing agent is an organic alkoxysilane (Claim 3). The surface treatment with the alkoxysilane may be by either a liquid phase method or dry method (col 18, lines 43-45).
Wada does not disclose triethoxyethoxycaprylylsilane as the hydrophobicizing agent.
However, Nomura teaches surface-treating powders to render them more hydrophobic, one such coating is triethoxycaprylylsilane, see page 11, second full paragraph.
Generally, 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. Ashida discloses wherein the zinc oxide is treated with a silane-based agent. Accordingly, it would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to incorporate the triethoxyethoxycaprylylsilane of Nomura into the composition of Ashida since Wada teaches organic alkoxysilanes as effective hydrophobicizing agents and Nomura teaches that triethoxyethoxycaprylylsilane is a known such agent.
Regarding the limitation of claim 1 reciting wherein a first hydrophobic powder is dispersed in an external oil phase, as discussed above, Ashida teaches that the W/O type cosmetic may contain oil-based components such as oil solution and various powders, all of powder components are hydrophobized, and that a composite powder other than the inorganic powder subjected to a water-repellent organic surface treatment may be blended (i.e., dispersed) and used. Accordingly, it would have been obvious to one of ordinary skill in the art to have blended (i.e., dispersed) a hydrophobized composite powder (i.e., a first hydrophobic powder) other than the inorganic powder subjected to a water-repellent organic surface treatment into the external oil component of the W/O emulsion since oil-based components such as oil solution may contain various powders, as taught by Ashida.
Regarding claims 3 and 4, these claims are product-by-process claims. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process, see MPEP 2113. In the instant case, as discussed above, Ashida discloses an aqueous slurry comprising the second hydrophobic powder, an aqueous medium, and the dispersant that disperses the second hydrophobic powder in the aqueous medium. Therefore, since Ashida discloses a water in oil emulsion comprising the claimed aqueous slurry, and the instant specification does not establish any structural or functional differences between the claimed emulsion and the emulsion of Ashida, the claimed emulsion is obvious over Ashida.
Regarding the limitation of claim 11 reciting at 80°C to 90°C, as discussed above, Ashida teaches in the production method of Example 9, 30 g of isopropyl alcohol and 4 g of isostearic acid PEG-20 were mixed and dissolved then charged with silicone surface-treated, silica surface-treated titanium oxide microparticles. The mixture was heated with stirring to distil isopropyl alcohol away. While Ashida is silent to a temperature of 80°C to 90°C, one of ordinary skill in the art would have arrived at the claimed temperature through routine optimization based on the temperature needed to distill the alcohol away, as taught by Ashida. "[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." See MPEP 2144.05.
Regarding the order of method steps in claim 11, Ashida teaches in Example 14 dissolving the second hydrophobic powder after it has been mixed with a dissolved dispersant and alcohol, producing the aqueous slurry. However, the claim would have still been obvious since selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04(IV)(C).
2. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ashida et al., (US 2014/0199251 A1, July 17, 2014) (cited by applicant on IDS 08/29/2023) (hereinafter Ashida) in view of Wada et al., (US 6,534,044 B1, March 18, 2003) (hereinafter Wada) and Nomura et al. (WO 2016143663 A1, September 15, 2016) (hereinafter Nomura)(the teachings are taken from the pdf document entitled Nomura et al. since the original document is in Japanese) and further in view of Nakanishi (US 2002/0131947 A1, Sept. 19, 2002) (hereinafter Nakanishi).
As discussed above, the combined teachings of Ashida, Wada and Nomura make obvious the limitations of claim 1 but do not teach wherein the silicone-based surfactant is a mixture comprising a carboxylic acid-modified silicone.
However, Nakanishi discloses a polyhydric alcohol-modified silicone having the following general formula (1):
R1 aR2 bR3 cSiO(4-a-b-c)/2, where, R1 is a carboxyl-substituted alkyl group (i.e., a carboxylic acid-modified silicone) (Claim 1). The modified silicone compound has excellent emulsifying power and emulsion stability with regard to oil bases such as the silicone oils used in cosmetic products, and cosmetic materials containing them ([0020]). The modified silicone compound is used to make a W/O cream lipstick having excellent cosmetic lasting power ([0211]). As noted in Table 1, the examples comprising the inventive modified silicone compounds (Siloxane compounds 1,2, and 7), have a transparent appearance, rapid compatibility with lipstick and are very easy to remove, when compared to Comparative Examples 2-4, which comprise polyether-modified silicone and produce less satisfactory results in these categories ([0178]).
As discussed above, Ashida teaches the use of polyether-modified silicone (i.e., a silicone-based surfactant) that disperses a hydrophobic powder in the internal aqueous phase of a water in oil emulsion comprising a silicone oil base. Nakanishi teaches that the use of a polyhydric alcohol-modified silicone having a carboxyl-substituted alkyl group (i.e., a carboxylic acid-modified silicone) that exhibits excellent emulsifying power and emulsion stability with regard to oil bases such as silicone oils. Further, the polyhydric alcohol-modified silicone of Nakanashi provides superior results of a transparent appearance, rapid compatibility with lipstick and are very easy to remove, when compared to examples comprising polyether-modified silicone. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated polyhydric alcohol-modified silicone having a carboxyl-substituted alkyl group (i.e., a carboxylic acid-modified silicone) into the composition of Ashida instead of polyether-modified silicone since it is known and effective silicone-based surfactant and it provides superior results such as, a transparent appearance, rapid compatibility with lipstick, and are very easy to remove when compared to polyether-modified silicone, as taught by Nakanashi.
Regarding the limitation of claim 5 reciting wherein the surfactant is a mixture of a carboxylic acid-modified silicone and an alkanolamine, as discussed above, Ashida teaches that the dispersants may be combined, nonionic dispersants are preferred, and that the nonionic surfactant monoethanolamide (i.e., an alkanolamine) is suitable for use. Therefore, it would have been obvious to one of ordinary skill in the art to have used both a carboxylic acid-modified silicone and an alkanolamine as the dispersant.
3. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ashida et al., (US 2014/0199251 A1, July 17, 2014) (cited by applicant on IDS 08/29/2023) (hereinafter Ashida) in view of Wada et al., (US 6,534,044 B1, March 18, 2003) (hereinafter Wada) and Nomura et al. (WO 2016143663 A1, September 15, 2016) (hereinafter Nomura)(the teachings are taken from the pdf document entitled Nomura et al. since the original document is in Japanese), and further in view of Wagner et al., (US 5,948,416 A, Sept 7, 1999) (hereinafter Wagner).
As discussed above, the combined teachings of Ashida, Wada and Nomura make obvious the limitations of claim 1 but do not teach wherein the cationic surfactant is a dialkyldimethylammonium chloride represented by the following general formula:
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where R1 and R2 are hydrocarbon groups having 10 to 22 carbon atoms.
However, Wagner discloses leave on, skin care compositions, comprising an active ingredient and cationic surfactant, useful for delivering a wide variety of active ingredients to the skin (abstract). Cationic surfactants include distearyl dimethyl ammonium chloride (Claim 1(C)). The cosmetic compositions are in the form of emulsions (col 2, lines 44-45) such as lotions (col 3, lines 33-34).
Generally, 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. Ashida discloses wherein the cosmetic composition comprises a cationic surfactant. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated distearyl dimethyl ammonium chloride (i.e., a dialkyldimethylammonium chloride) into the composition of Ashida since it is a known and effective cationic surfactant for cosmetic compositions as taught by Wagner.
Regarding the limitation of claim 6 reciting wherein the dialkyldimethylammonium chloride is represented by following general formula:
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where R1 and R2 are hydrocarbon groups having 10 to 22 carbon atoms, as discussed above, Wagner discloses the use of distearyl dimethyl ammonium chloride as a cationic surfactant. As noted in paragraph [0035] of the instant specification, distearyldimethylammonium chloride is an example of a dialkyldimethylammonium chloride represented by the above general formula where R1 and R2 are hydrocarbon groups having 10 to 22 carbon atoms. Accordingly, the distearyl dimethyl ammonium chloride of Wagner necessarily meets the limitations of the claimed general formula where R1 and R2 are hydrocarbon groups having 10 to 22 carbon atoms.
Response to Arguments
Applicant’s arguments with respect to claims 1-11 have been considered but are moot because the new ground of rejection meets the new limitation. The sole argument was that the references of record do not teach triethoxyethoxycaprylylsilane as the hydrophobicizing agent. Newly-added Nomura cures this deficiency.
Conclusion
No claim is 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 Robert A. Wax whose telephone number is (571)272-0623. The examiner can normally be reached 8:00 AM -4:00 PM Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at (571) 272-1424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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