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 .
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 10/06/2023 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claims Status
Applicant’s election without traverse of Group I (claims 1-10 and 15-20) and the species of kaolin selection for a), composition in powder form in the reply filed on 02/04/2026 is acknowledged.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/04/2026.
Claims 1-10 and 15-20 are under current examination to the extent of a powder formulation and kaolin selection for part a).
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, 3-4, 7, 10 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yi et al. (United States Patent 9,480,632).
Claim 1 recites a method for preparing a cosmetic formulation, comprising adding to the cosmetic formulation a whitening composition, said whitening composition comprising: - from 0 to 30% by weight of a whitening agent selected from kaolin optionally calcined, cerium oxide, a citrate salt, mica and a mixture thereof, - from 70 to 100% by weight of a mixture of zinc oxide and of boron nitride, the proportions being with respect to the cumulative weight of whitening agent, of zinc oxide and of boron nitride, wherein the ratio of the weight of zinc oxide to the weight of boron nitride is 0.9 to 5.0, the whitening composition being free of titanium dioxide. Claim 1 does not require kaolin present.
Yi et al. at Table 1 teaches a cosmetic formulation comprising boron nitride and zinc oxide as the only colorants therefore making up 100% (i.e. all) of the colorants, see Table 1, Ex. 2. The ratio of the zinc oxide to boron nitride is 1, see Example 2 at Table 1. The zinc oxide and boron nitride are mixed together in an oil phase, all water phase ingredients are then mixed and thus making a cosmetic water in oil cosmetic emulsion, meeting a process of adding to cosmetic a zinc oxide and boron nitride, see column 4, lines 45-64, Table 1 and examples 1-7. Since the colorants consist of boron nitride and zinc oxide they are necessarily a “whitening composition”. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. A weight ratio of 1 of zinc oxide to boron nitride anticipates a range from 0.9-5, a range of 0.9-3, and 0.9-2 as claimed. Example 2 at Table 1 does not contain titanium dioxide. Yi et al. teach that the cosmetic powder formulation can comprise a foundation, see column 4, lines 1-3, line 38 and column 1 at lines 18-21.
Accordingly, claims 1, 3-4, 7, 10 and 19 are anticipated by the teachings of Yi et al.
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, 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) 1-5, 7, 9-10, 15-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (United States Patent Publication 20130052246).
Claim 1 recites a method for preparing a cosmetic formulation, comprising adding to the cosmetic formulation a whitening composition, said whitening composition comprising: from 0 to 30% by weight of a whitening agent selected from kaolin optionally calcined, cerium oxide, a citrate salt, mica and a mixture thereof, from 70 to 100% by weight of a mixture of zinc oxide and of boron nitride, the proportions being with respect to the cumulative weight of whitening agent, of zinc oxide and of boron nitride, wherein the ratio of the weight of zinc oxide to the weight of boron nitride is 0.9 to 5.0, the whitening composition being free of titanium dioxide. Claims 1-7, 9-10 and 15-20 do not necessarily require the kaolin present given the 0% by weight recitation.
Ito et al. teach cosmetic compositions comprising boron nitride and a metal oxide including zinc oxide, see claims 1-2. The boron nitride metal oxide complex is made by a process of mixing with a cosmetic composition, see paragraph [0026] and at Example 1. Zinc oxide is taught in the alternative to titanium dioxide and thus titanium dioxide is not required, see claim 2 and paragraph [0013]. The weight ratio of boron nitride to metal oxide is 75/25 to 30/70 thus the boron nitride can comprise a range of 30-75% weight while the metal oxide which is inclusive of zinc oxide can comprise 25-70%, see claim 7. A ratio of 70% weight zinc oxide to 30% boron nitride is 2.3. However, the zinc oxide can comprise from 25-70% weight. A ratio of 70% of metal oxide and 75% boron nitride is a weight ratio of zinc oxide to boron nitride of 0.933. Since boron nitride can range from 30-75% by weight, and the metal oxide from 25-70% by weight, a ratio of 70% by weight zinc oxide to 40% boron nitride is 1.75. Thus, the weight ratios of zinc oxide (metal oxide) to boron nitride taught by Ito et al. overlap and render obvious the weight ratios claimed of from 0.9-5.0, 0.9-3.0, 1.5-3.0, and 0.9-2.0. The cosmetic formulation can comprise a powder, see abstract. The size of the boron nitride can comprise an average size of 1-30 microns as measured by laser diffraction, see paragraph [0029]. The particle size of the metal oxide comprises an average from 0.1-2 microns as measured by laser diffraction, see paragraphs [0042]-[0043]. The metal oxide includes zinc oxide, see paragraph [0013] and [0031]. The cosmetic composition may further comprise components used in cosmetics including kaolin, see paragraphs [0068] and [0070]. Since the cosmetic formulation comprises the same ingredients claimed to kaolin, boron nitride and zinc oxide, the cosmetic composition is necessarily a whitening composition. In addition, both the boron nitride and metal oxide taught by Ito et al. can be white, see paragraphs [0028] and [0030]. The cosmetic product of Ito et al. includes powder foundation, see paragraphs [0022] and [0057]-[0058].
Ito et al. teach a composition comprising overlapping amounts of zinc oxide and boron nitride with an overlapping weight ratio of each, wherein the composition can further contain kaolin.
Ito et al. do not teach the combination of zinc oxide and boron nitride in the claimed amount and ratios with sufficient specificity to anticipate the instantly claimed intention. However, it would have been prima facie obvious to combine the zinc oxide and boron nitride and kaolin in overlapping amounts and ratios because Ito expressly teaches that boron nitride complexed with metal oxide including zinc oxide provides smoothness to the touch, a lively finish with fine texture and natural glow with good adhesion to skin, see paragraph [0001], [0010] and claims 1- and 18-19. The weight ratios disclosed by Ito overlap and therefore render obvious the instantly claimed weight ratios. 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).
Accordingly, claims 1-5, 7, 9-10, 15-17 and 19-20 are rendered obvious by the teachings of Ito et al.
Claim 6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (United States Patent Publication 20130052246) as applied to claims 1-5, 7, 9-10, 15-17 and 19-20 above, and further in view of Aso et al. (JP2002212032A).
The teachings of Ito et al. are discussed above.
Ito et al. do not expressly teach that the weight ratio of zinc oxide to boron nitride can be inclusive of 3.5 to 5.0
Aso et al. teach cosmetic formulations comprising zinc oxide and an extender pigment of boron nitride, see abstract and pages 4, 6 and 8. The ratio of mixing zinc oxide with an extender component which includes boron nitride can be anywhere from 1:50 to 50:1 by weight, see pages 8-9 and claims 1 and 6. The composition provides for improvement of skin roughness, see page 3-4, 6, 8, 11-12 and 17 and entire document. It is suggested that zinc oxide is combined with an extender pigment to improve cosmetic properties thus zinc oxide and extender can be used alone since the composition can comprise zinc oxide and extender pigment (a) and or pearlescent (b), see page 17. Thus, Aso suggests embodiments comprising all of zinc oxide and extender piment combined alone thus constitutes 100% (i.e. all of) of the composition.
It would have been prima facie obvious to provide the zinc oxide and boron nitride of Ito in a weight ratio from 1:50 to 50:1 because Aso et al. teach that zinc oxide combined with extenders which are inclusive of boron nitride in this ratio provide for a cosmetic that improves skin roughness. A ratio of 1:50 to 50:1 overlaps and renders obvious the claimed ratio of from 3.5 to 5.0. 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).
There would have been a reasonable expectation of success because both Ito et al. and Aso et al. teach cosmetic formulations which comprise zinc oxide and boron nitride.
Regarding instant claim 18, as discussed above, Ito et al. teach that the size of the boron nitride can comprise an average size of 1-30 microns as measured by laser diffraction, see paragraph [0029]. The particle size of the metal oxide comprises an average from 0.1-2 microns as measured by laser diffraction, see paragraphs [0042]-[0043]. Thes amounts overlap the 1-30 microns for boron nitride and 30nm to 20 microns claimed. 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).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (United States Patent Publication 20130052246) as applied to claims 1-5, 7, 9-10, 15-17 and 19-20 above and further in view of Blin et al. (WO2010070595).
The teachings of Ito et al. are discussed above.
Ito et al. do not expressly teach that the kaolin in the cosmetic composition can be present from 1-30% by weight in the cosmetic product.
Blin et al. teach cosmetic powder compositions which comprise pigments and fillers, see pages 2-4, 8 and claims 11-12. The filler component comprises preferably 1 to 80% by weight and include particles that are colorless and white, see page 8. Examples of fillers include kaolin, see page 8 and claim 13.
It would have been prima facie obvious to provide the kaolin of Ito et al. in amounts from 1 to 80% by weight because Blin et al. teach that filler particles including kaolin are preferably added within this range to powdered cosmetics. It would have been obvious to adjust the amount of kaolin added to achieve the desired adhesion of the powder to skin because Ito et al. teach that kaolin can improve adhesion to skin, see paragraph [0002]. The amount of 1-80% by weight of filler taught by Blin overlaps and renders obvious the claimed range of from 1-30% by weight. 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).
There would have been a reasonable expectation of success because both Ito et al. and Blin et al. teach cometic powder formulations with Ito including kaolin powder.
Conclusion
Currently, no claims are allowed and claims 1-10 and 15-20 are rejected.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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