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 . Claims included in the prosecution are claims 1-12.
Applicants' arguments, filed 02/11/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
1. Claims 1, 2, 7-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2015/0361242, Dec. 17, 2015) (hereinafter Nakamura) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3 2020) (hereinafter Piradashvili) and Fujiwara et al. (US 2005/0049133, Mar. 3, 2005) (hereinafter Fujiwara).
Nakamura discloses a black iron oxide that can yield sufficient blackness, opacifying effect and covering ability even if it is only added in a small amount for use with cosmetic material. The black iron oxide has a specific surface in a range of 8.0 to 20.0 m2/g (abstract). The specific surface of the black iron oxide is a value measured by the single point BET method (¶ [0021]). The cosmetic may be for skincare, such as sunscreen, and in the form of a solid powder or liquid oil (¶ [0042]). The cosmetic material may incorporate UV absorbers (¶ [0040]).
Nakamura differ from the instant claims insofar as not disclosing wherein the black iron oxide comprises a content of FeO and Fe2O3 and has a spinel structure.
However, Piradashvili discloses a cosmetic O/W emulsion with scleroglucan and iron oxide pigments (¶ [0002]). Iron oxide black is often given as Fe3O4, but in reality, it is a mixed crystal of Fe2O3 and FeO with an inverse spinel structure (¶ [0012]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art that the black iron oxide of Nakamura comprises a content of FeO and Fe2O3 and has a spinel structure since iron oxide black is a mixed crystal of Fe2O3 and FeO with an inverse spinel structure as taught by Piradashvili.
The combined teachings of Nakamura and Piradashvili do not teach the amount of Fe, FeO, and Fe2O3.
However, Fujiwara discloses a glass flake useful for cosmetics (abstract). When present in glass, iron (Fe) normally exists in the state of an iron oxide (FeO or Fe2O3). Fe2O3 is a component that enhances ultraviolet absorbing properties of glass and FeO is a component that enhances heat-ray absorbing properties (¶ [0076]).
Cosmetics with UV absorption and is a sunscreen is known in the art as taught by Nakamura. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amounts of FeO and Fe2O3 through routine experimentation based on the level of UV absorption and heat-ray absorption desired since FeO and Fe2O3 have UV absorption and heat-ray absorption properties, respectively, as taught by Fujiwara. With regards to the amount of Fe claimed, one of ordinary skill in the art would have arrived at the claimed amount of Fe after arriving at an effective amount of FeO and Fe2O3 since both FeO and Fe2O3 comprise Fe.
In regards to instant claim 2, the amounts listed for each element includes an amount of zero. Nakamura does not disclose wherein the black iron oxide is required to comprise any of the elements recited in the claim. Therefore, an iron oxide pigment that does not include an amount of the elements recited would have been obvious.
2. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2015/0361242, Dec. 17, 2015) (hereinafter Nakamura) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3 2020) (hereinafter Piradashvili), Fujiwara et al. (US 2005/0049133, Mar. 3, 2005) (hereinafter Fujiwara), and further in view of Geismar (GB 1465416, Feb. 23, 1977) and Schlegl et al. (US 2011/0048276, Mar. 3, 2011) (hereinafter Schlegl).
The teachings of Nakamura, Piradashvili, and Fujiwara are discussed above. Nakamura, Piradashvili, and Fujiwara do not teach wherein the black iron oxide has a spinel structure and a corundum structure.
However, Geismar discloses a process for the production of iron-containing pigments of spinel or corundum structure (first page, right column, lines 10-11).
Schlegl discloses wherein pigments may have a spinel and corundum phases (¶ [0134]).
Accordingly, since Geismar discloses wherein iron-containing pigments may be spinel or corundum in structure, formulating the black iron oxide to have both spinel and corundum structure would have been obvious since it is prima facie obvious to combine two compositions, each of which is taught to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06. One of ordinary skill in the art would have had a reasonable expectation of success since pigments having both spinel and corundum structures were known as taught by Schlegl.
With regards to the limitations of instant claim 3, as noted in the instant specification in paragraph [0016], in a case where the iron oxide pigment has spinel structure and a corundum structure, the intensity of diffraction lines derived from the corundum structure is desirably small. Specifically, it is desirable that, when the integrated intensity of diffraction lines of a (311) plane of a spinel-structured iron oxide appearing at a diffraction angle in a range of 35.10° or more and 36.10° or less in X-ray diffraction measurement is regarded as 100.00, the integrated intensity of diffraction lines of a (104) plane of a corundum-structured iron oxide appearing at a diffraction angle in a range of 32.60° or more and 33.60° or less is 10.0 or less. Therefore, since it appears that the property in instant claim 3 is from an iron oxide having a spinel structure and a corundum structure and it would have been obvious to have formulated the black iron oxide to have a spinel structure and corundum structure, the black iron oxide would have the property in instant claim 3.
3. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2015/0361242, Dec. 17, 2015) (hereinafter Nakamura) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3 2020) (hereinafter Piradashvili), Fujiwara et al. (US 2005/0049133, Mar. 3, 2005) (hereinafter Fujiwara), and further in view of Masubuchi et al. (TW 201302228 A, Jan. 16, 2013) (hereinafter Masubuchi).
The teachings of Nakamura, Piradashvili, and Fujiwara are discussed above. Nakamura, Piradashvili, and Fujiwara do not teach wherein the black iron oxide has an average short axis length of primary particles of 50 nm or more and 500 nm or less.
However, Masubuchi discloses a powder for a cosmetic (abstract). Example 14 discloses manufacture of an iron oxide composite high flat cellulose powder. The method comprises using yellow iron oxide having a short axis of 90 nm.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the black iron oxide of Nakamura to have a short axis length of 90 nm since this is a known and effective size for iron oxides use in cosmetics as taught by Masubuchi.
4. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2015/0361242, Dec. 17, 2015) (hereinafter Nakamura) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3 2020) (hereinafter Piradashvili), Fujiwara et al. (US 2005/0049133, Mar. 3, 2005) (hereinafter Fujiwara), and further in view of Uchida et al. (JP 2002308629 A, Oct. 23, 2002) (hereinafter Uchida).
The teachings of Nakamura, Piradashvili, and Fujiwara are discussed above. Nakamura, Piradashvili, and Fujiwara do not teach wherein the black iron oxide has a bulk density of 70 g/mL or less, a residue after the iron oxide pigment is passed through a sieve with a mesh size of 45 µm of 1 g/kg or less, and an oil absorption of 20 g/100 g or more and 50 g/100 g or less.
However, Uchida discloses a black magnetic iron oxide particle powder having excellent blackness (abstract). The degree of compression of the black magnetic iron oxide particles is calculated by measuring the bulk density and the tap density. The smaller the degree of compression, the better the fluidity (page 21, first paragraph). The oil absorption is usually 20 ml/100 g or less (page 10, first paragraph). Since the particle surface of the black magnetic iron oxide particles is coated with an organic compound having a hydrophobic group, the particles are not re-agglomerated and exists in a state of being separated one by one (page 24, second and third paragraphs). The black magnetic iron oxide particles have an average particle size of 0.05 to 1 µm (page 5, [0030]).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed bulk density through routine experimentation based on the degree of compression of the black iron oxide particle desired since bulk density affects compressibility which affects fluidity as taught Uchida. Where 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(II)(A).
It would have been prima facie obvious to one of ordinary skill in the art to have formulated the black iron oxide of Nakamura to have an oil absorption of 20 ml/100 g or less and a particle size of 0.05 to 1 µm since these are known and effective physical properties of iron oxides use in cosmetics as taught by Uchida.
It would have been prima facie obvious to one of ordinary skill in the art to have coated the black iron oxide of Nakamura with an organic compound having a hydrophobic group motivated by the desire to have the black iron oxide particles not be agglomerated as taught by Uchida. Thus, by having particles that are 0.05 to 1 µm and not agglomerated pass through a sieve with a mesh size of 45 µm, it would have been obvious to one of ordinary skill in the art that there would be no residue of iron oxide.
5. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2015/0361242, Dec. 17, 2015) (hereinafter Nakamura) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3 2020) (hereinafter Piradashvili), Fujiwara et al. (US 2005/0049133, Mar. 3, 2005) (hereinafter Fujiwara), and further in view of Droman (US 2009/0142291, Jun. 4, 2009).
The teachings of Nakamura, Piradashvili, and Fujiwara are discussed above. Nakamura, Piradashvili, and Fujiwara do not teach wherein the cosmetic is in the form of a gel.
However, Droman discloses a pigment dispersed in a silicone polymer combined with at least one cosmetic component to prepare a wide variety of cosmetic compositions (abstract). Examples of pigments include black iron oxide (¶ [0041]). The cosmetic composition may be an eyebrow gel (¶ [0053]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated the black iron oxide into an eyebrow gel since this is a known and effective cosmetic material comprising black iron oxide as taught by Droman.
Response to Arguments
Applicant argues that the Mr. Yoshimi points out that if the amounts of Fe2O3 and FeO provided in Nakamura are altered arbitrarily, the combination will not yield the black iron oxide (Fe3O4) with an inverse spinel structure disclosed in Nakamura. Fe3O4 is a mixed crystal of Fe2O3 and FeO with an inverse spinel structure only when Fe2O3 and FeO are mixed in a ratio of 1:1.
The Examiner does not find Applicant’s argument to be persuasive. Applicant’s argument is based off of the opinion of Mr. Yoshimi. In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Conclusory statements that results were "unexpected," unsupported by objective factual evidence, were not found to be of substantial evidentiary value. See MPEP 716.01(c)(II). In the instant case, Applicant has provided the conclusory statement that if the amounts of Fe2O3 and FeO provided in Nakamura are altered arbitrarily, the combination will not yield the black iron oxide (Fe3O4) with an inverse spinel structure. Applicant has not provided any objective factual evidence supporting this conclusory statement. It is unclear whether a specific shade of black cannot be achieved and how many ratios were tested to identify that a shade of black cannot be achieved. Also, a scientific reasoning as to why the ratio has to be 1:1 for a black shade has not been explained. Therefore, although this is Mr. Yoshimi’s opinion, the opinion evidence does not appear to have probative value. As such, Applicant’s argument is unpersuasive.
Response to Declaration
Declarant’s argument has been addressed above and is unpersuasive.
Conclusion
Claims 1-12 are rejected.
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/TRACY LIU/Primary Examiner, Art Unit 1614