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 .
Claim Status
Claims 3-4 are new. Claims 1-4 are pending and under examination.
Priority
This application is a national stage entry of PCT/JP2022/035056 filed on 09/21/2022, which claims priority from Japan application JP2021-160364 filed 9/30/2021.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 12/17/2025 and 4/21/2026 were filed after the mailing date of the non-final rejection on 12/16/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Rejections Withdrawn
The objection over claim 1 is withdrawn per applicant’s correction to the claim.
The rejection under USC 101 is withdrawn per applicant’s amendment to claim 1 and their arguments. The claimed oil agent combines the components it consists of in ranges and ratios that provide good affinity to skin, emollient feel and powdery feel, and a suppressing of a slimy feel.
The rejections under USC 103 over Sawada JP2021011463A and over Lewis dissertation and Sawada JP2021011463A are withdrawn per applicant’s arguments and amendments. Namely the prior art does not reasonably teach or motivate an agent that consists of the claimed ingredients in claimed mass% amounts and ratios.
Maintained Objection
Objection to Abstract
The abstract of the disclosure is objected to because it has multiple indentations. Thus, this appears to have multiple paragraphs where the abstract is required to be a single paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Response to Applicant’s Amendment/Argument over the Abstract
Applicant amended the claims to provide for lower case “t” where appropriate. However, the claim still contains the indented lines which are construed as other paragraphs. The abstract must be presented as a single paragraph. Applicant may incorporate these lines as other lines or sentences in the same single paragraph. Applicant did correct the upper case “T” issue, and thus, the objection is updated to reflect that amendment.
New Rejection – As Necessitated by Amendments
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite for containing ranges and ratios that allow for total amounts of components A, B and C of less than 100% by mass total, where the claim consists of only (A), (B) and (C). For example, 35 mass% component (A), 35% mass% component (B) and 1 mass% component (C) provides for an agent that meets the mass% and ratio amounts, but only adds up to 71 mass%. Thus, it is unclear how that extra amount in those situations will be accounted for to make a complete composition with 100 mass% total since the agent consists of only those items. Applicant may clarify in the claim with “wherein the sum of components (A), (B) and (C) provide for 100 mass% of the cosmetic oil agent.”
Claims 2-4 are rejected as being dependent on an indefinite claim.
Claim 4 recites the limitation "said monovalent alcohol (C)" in the claim where claim 1 introduces “a component (C)”. Although monovalent alcohol is the ingredient that is component (C), it becomes unclear if this is referring to “said monovalent alcohol of component (C)” or if this might be referring to some new option monovalent alcohol (C) within the genus of the monovalent alcohols in this claim. There is insufficient antecedent basis for this limitation in the claim. Applicant may consider amending this portion to read “wherein said monovalent alcohol of component (C) is one or more….”
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 (dependent on claim 1) provides that “said monovalent alcohol (C) comprises one or more selected from…” where the “comprises” phrase opens the claim, which in claim 1 has “consisting of” as the transition phrase to other components of the prior art. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Here, applicant might amend the claim to say “said monovalent alcohol is one or more selected from……” to keep consistent with the closed structure introduced for the agent in claim 1.
Examiner Note
If applicant corrects the above identified 112 issues due to the amendments, applicant will have allowable claims barring any issues or new claims that might be added due to amendments. Applicant also needs to correct the Abstract to have it in standard single paragraph form (no other indentations). Applicant may correct the claims in an after final response.
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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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