DETAILED ACTION
Claims 1 and 3-9 are pending and under consideration on the merits.
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 .
Status of the Rejections
The 103 rejection is withdrawn in view of Applicant’s arguments and replaced with a new rejection incorporating the teachings of a new secondary reference.
The provisional double patenting rejection is expanded to include newly added claims.
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.
Claims 1, 3-4, and 6-9 are rejected under 35 U.S.C. 103 as unpatentable over Kuroda et al. (EP 1415639; published 5.06.2004; of record) in view of JP2007217361A (of record in IDS) as evidenced by the English translation thereof.
As to claims 1, 3-4, and 6-9, Kuroda discloses a powder cosmetic composition comprising one or more inorganic substances having a crystalline structure such as titanium dioxide (a “metal oxide powder” of claim 1) and silicon dioxide (i.e., “silica” of claim 4)(paragraphs 1, 8, 36). The inorganic substances preferably are surface treated with a metal soap (paragraph 48). The composition further may comprise an extender pigment which also may be treated with a metal soap such as talc, mica, kaolin, or aluminum stearate (claim 3)(paragraphs 55, 66). The metal oxide powder is present in the amount of 0.1-50 wt%, which overlaps the ranges recited by claims 1 and 7 (paragraph 23). Kuroda does not require the presence of any other ingredients, thereby reading on the “consists of” language of claims 8-9.
Regarding claim 2, the average particle size of the inorganic powder is 3-20 microns, which is within the range recited by the claim (paragraph 12).
As to claim 6, the cosmetic composition further may comprise an oil in the amount of 0.5-60 wt%, which encompasses the recited range (paragraphs 64-65).
As to claims 1, 3-4, and 6-9, Kuroda does not further expressly disclose that the average particle size of the metal oxide powder is 100 nm or less as recited by claim 1.
JP2007217361A discloses cosmetic compositions comprising a powder having UV protection properties and which is coated with a hydrophobic treatment agent such as a metal soap, wherein the powder may be titanium dioxide (paragraphs 7, 9-10, 14), and teaches that the average particle size is preferably 0.01 to 0.2 microns (i.e., 10-20 nm), which is within the range of claim 1 (paragraph 18).
As to claims 1, 3-4, and 6-9, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the teachings of Kuroda by selecting for at least some of the metal oxide particles a size range of 10-20 nm, since JP2007217361A teaches that metal oxide particles having such sizes are useful for their UV protection properties, such that the skilled artisan reasonably would have expected that the use of particles having such a size range in the Kuroda cosmetic composition would impart useful UV protection properties to the composition.
Claim 5 is rejected under 35 U.S.C. 103 as unpatentable over Kuroda et al. (EP 1415639) and in view of JP2007217361A as evidenced by the English translation thereof as applied to claims 1, 3-4, and 6-9 above, and further in view of Yuasa et al. (US Pat. Pub. 2021/0169756; filed 8/6/2019).
The teachings of Kuroda and JP2007217361A are relied upon as discussed above, but Kuroda does not further expressly disclose the specific surface area of the silica as recited by claim 5.
Yuasa discloses cosmetic compositions comprising a powder formed from particles such as silica, the particles having a specific surface area most preferably of 100 to 400 m2/g, which overlaps the range of claim 5 (paragraphs 42). Yuasa teaches that powders having a large specific surface area are preferred because they have an excellent ability to adsorb makeup-stains (paragraph 37).
It would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the teachings of Kuroda and JP2007217361A as combined supra by selecting a specific surface area for the silica that is within the range of claim 5, because Yuasa expressly teaches that such specific surface areas are advantageous for silica particles that are present in powder cosmetics because they have an excellent ability to adsorb makeup-stains. The strongest rationale for combining references is a recognition, as is the case here, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
Response to Applicant’s Arguments
Applicant argues that Kuroda does not disclose that the metal oxide particles have a size range within the range of claim 1 as amended and therefore does not disclose applying a metal soap treatment to a UV scattering agent within the scope of the claims.
In response, the new grounds of rejection rely upon JP2007217361A for providing a motivation to incorporate metal oxide particles having this size range as discussed in the rejection, supra.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 3-9 are rejected on the ground of nonstatutory double patenting as unpatentable over all claims of U.S. Pat. Appl. No. 19/110,497 and in view of Kuroda et al. (EP 1415639) and/or Yuasa et al. (US Pat. Pub. 2021/0169756) where indicated below.
The teachings of Kuroda are relied upon as discussed above.
The reference claims recite a powder cosmetic comprising a metal oxide powder such as titanium oxide having an average particle size of 10 nm or less and in an amount of 5 wt% or more, and silica having a specific surface area of 160 m2/g or more, wherein the metal oxide powder is surface treated with metallic such that comprises aluminum stearate. No additional ingredients are required, thus meeting the “consisting of” language of claims 8-9.
Although the reference claims do not recite the presence of an extender pigment surface treated with a metal soap such as aluminum stearate, it would have been prima facie obvious to incorporate same in light of Kuroda’s teaching that powder cosmetics comprising inorganic particles such as titanium dioxide benefit from additional coloring pigments such as aluminum stearate.
Although the reference claims do not recite the presence of an oil, present claim 6 recites a range of 10 wt% or less, which reads on an amount of zero oil.
Although the reference claims do not recite the specific surface area of the silica, It would have been prima facie obvious to select a specific surface area for the silica that is within the range of claim 5, because Yuasa expressly teaches that such specific surface areas are advantageous for silica particles that are present in powder cosmetics because they have an excellent ability to adsorb makeup-stains.
Response to Applicant’s Arguments
Applicant has not presented any substantive arguments against the rejection, which is therefore maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached on M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/ Primary Examiner, Art Unit 1600
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