DETAILED ACTION
Claims are pending. Of these, claims are withdrawn as directed to a nonelected invention. Therefore, claims are 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/14/2024 was filed prior to the mailing date of a first Action on the merits.. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, it was considered by the Examiner.
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 1-4 and 6 are rejected under 35 U.S.C. 103 as unpatentable over Kuroda et al. (EP 1415639; published 5.06.2004).
As to claims 1-4 and 6, 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 range recited by claim 1 (paragraph 23).
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 1-4 and 6, Kuroda does not further expressly disclose a specific embodiment wherein the metal oxide is titanium dioxide and the composition comprises an extender pigment, and wherein both the metal oxide and the extender pigment have been surface treated with metal soap, as recited by claim 1.
As to claims 1-4 and 6, 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 a metal oxide such as titanium dioxide and an extender pigment, both of which have been treated with a metal soap, for inclusion in the composition, because Kuroda expressly teaches that the composition may comprise the foregoing ingredients. "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." (325 U.S. at 335, 65 USPQ at 301). MPEP § 2144.07.
Claim 5 is rejected under 35 U.S.C. 103 as unpatentable over Kuroda et al. (EP 1415639) as applied to claims 1-4 and 6 above, and further in view of Yuasa et al. (US Pat. Pub. 2021/0169756; filed 8/6/2019).
The teachings of Kuroda 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 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).
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 1-6 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.
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.
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