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 .
Priority
The instant application claims foreign priority to JP2021-090643 filed 05/28/2021. The instant application is a 371 of PCT/JP2022/013642 filed 03/23/2022.
Information Disclosure Statement
The information disclosure statement filed 10/27/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein that has been struck out, No. A10, A13, and A16, have not been considered.
Oath/Declaration
The Examiner would like to note that the oath and declaration filed 10/27/2023 currently shows a signature only for Shiho IWAMI.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fukui et al. (US Patent Application Publication 20120301523A1).
Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5). Example 13 recites plate-like octylsilylated zinc oxide (Production Example 2) at 4.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 6.0% (Fukui at Table 8). Example 14 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 5.0% (Fukui at Table 9). It should be noted that MZ500 zinc oxide particles by Tayca corporation have an average size of 25 nm (Tayca corporation specification for MZ500 NPL 1). Fukui teaches that Production Example 2 Production of Plate-like Octylsilylated Zinc Oxide consists of a slurry composed of 93% by weight of the plate-like zinc oxide powder obtained in Production Example 1, 7% by weight of octyltriethoxysilane and toluene was formed, and the slurry was pulverized and cracked by using a bead mill (DYNO-Mill manufactured by Shinmaru Enterprises Corporation). And then, after toluene was evaporated by heating under reduced pressure, the slurry was heat treated at 150° C. for 4 hours by using an air flow type dryer to obtain a plate-like octylsilylated zinc oxide powder. The thus obtained powder was observed under a scanning electron microscope to confirm that the powder had flaky particles. The obtained powder had an average particle diameter of 0.20 μm, and a plate ratio of 10 (Fukui at [0129-0130]). Fukui further teaches that component (A) in cosmetic compositions according to the present invention is a plate-like powder that has been surface-treated with an alkylalkoxysilane, and among these, a flaky powder having an average particle diameter of 0.1 to 10 μm (Fukui at [0018]). Fukui teaches examples 9 to 14 which are W/O emulsified cosmetic compositions having the following compositions were produced in the same manner as in Examples 1 and 2. The obtained cosmetic compositions had an excellent ultraviolet ray protective effect and a high moisture retaining property (Fukui at [0147]). Fukui teaches the method of production wherein component (B), a solid oil, component (C), an oil, component (F), a nonionic surfactant, an ultraviolet absorber, and the like were mixed, and the mixture was dissolved uniformly at 80° C. The obtained oil phase was transferred to an Agi-homomixer, cooled to room temperature, and then, a powder phase obtained by uniformly dispersing the powder of component (A) into a mixture solution of component (E) methyl polysiloxane, N-propionyl polyethylene imine-methyl polysiloxane copolymer and ethanol, was added and stirred. Furthermore, a water phase containing a polyol was added thereto. The mixture was stirred at high speed by using an Agi-homomixer, followed by degassing thereof. Thus, a W/O emulsified cosmetic composition was obtained (Fukui at [0136]). The Tables 5, 8 and 9 are reproduced below;
PNG
media_image1.png
902
525
media_image1.png
Greyscale
PNG
media_image2.png
820
534
media_image2.png
Greyscale
PNG
media_image3.png
844
564
media_image3.png
Greyscale
.
Fukui differs from the instant claims in this rejection insofar as it does not teach the combination of the instantly recited components with sufficient specificity for anticipation. Fukui teaches the components of the instant recited composition and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment or a preferred composition. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Fukui to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
Regarding instant claim 1, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5). Fukui further teaches that component (A) in cosmetic compositions according to the present invention is a plate-like powder that has been surface-treated with an alkylalkoxysilane, and among these, a flaky powder having an average particle diameter of 0.1 to 10 μm (Fukui at [0018]), which overlaps with the instantly claimed range of 100nm or less. 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(I).
Regarding instant claim 2, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5).
Regarding instant claim 3, Fukui teaches a composition that is physically the same as the instantly claimed invention and would therefore have the same inherent properties including viscosity. "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). See MPEP2112.01(II).
Regarding instant claim 4, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5).
Regarding instant claim 5, Fukui teaches that Production Example 2 Production of Plate-like Octylsilylated Zinc Oxide consists of a slurry composed of 93% by weight of the plate-like zinc oxide powder obtained in Production Example 1, 7% by weight of octyltriethoxysilane and toluene was formed (Fukui at [0129-0130]).
Regarding instant claim 6, Fukui teaches examples 9 to 14 which are W/O emulsified cosmetic compositions having the following compositions were produced in the same manner as in Examples 1 and 2. The obtained cosmetic compositions had an excellent ultraviolet ray protective effect and a high moisture retaining property (Fukui at [0147]).
Regarding instant claim 7, Fukui teaches examples 9 to 14 which are W/O emulsified cosmetic compositions having the following compositions were produced in the same manner as in Examples 1 and 2. The obtained cosmetic compositions had an excellent ultraviolet ray protective effect and a high moisture retaining property (Fukui at [0147]).
Regarding instant claim 8, Fukui teaches examples 9 to 14 which are W/O emulsified cosmetic compositions having the following compositions were produced in the same manner as in Examples 1 and 2. The obtained cosmetic compositions had an excellent ultraviolet ray protective effect and a high moisture retaining property (Fukui at [0147]).
Regarding instant claim 9, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% and water (Fukui at Table 5).
Regarding instant claim 10, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5). It should be noted that MZ500 zinc oxide particles by Tayca corporation have an average size of 25 nm.
Regarding instant claim 11, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5).
Regarding instant claim 12, Fukui recites examples 10, 13, and 14 (Fukui at Tables 5, 8, and 9). Example 10 recites plate-like octylsilylated zinc oxide (Production Example 2) at 5.0% and silicone-coated zinc oxide fine particle (powder substance obtained by coating the surface of zinc oxide MZ500 fine particle (manufactured by TAYCA CORPORATION) with silicone) at 10.0% (Fukui at Table 5). Fukui teaches that Production Example 2 Production of Plate-like Octylsilylated Zinc Oxide consists of a slurry composed of 93% by weight of the plate-like zinc oxide powder obtained in Production Example 1, 7% by weight of octyltriethoxysilane and toluene was formed (Fukui at [0129-0130]).
Regarding instant claim 13, Fukui teaches the method of production wherein component (B), a solid oil, component (C), an oil, component (F), a nonionic surfactant, an ultraviolet absorber, and the like were mixed, and the mixture was dissolved uniformly at 80° C. The obtained oil phase was transferred to an Agi-homomixer, cooled to room temperature, and then, a powder phase obtained by uniformly dispersing the powder of component (A) into a mixture solution of component (E) methyl polysiloxane, N-propionyl polyethylene imine-methyl polysiloxane copolymer and ethanol, was added and stirred. Furthermore, a water phase containing a polyol was added thereto. The mixture was stirred at high speed by using an Agi-homomixer, followed by degassing thereof. Thus, a W/O emulsified cosmetic composition was obtained (Fukui at [0136]).
Conclusion
No claims are presently allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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, Sahana S. Kaup, can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights