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 Objections
Claim 7 is objected to because of the following informalities: use of brackets which could be replaced with appropriate punctuation, spacing, or other notations. Appropriate correction is required.
Claims 7 and 8 are objected to because of the following informalities: use of “…” which could be replaced with appropriate punctuation, spacing, or other notations. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 and 9-12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being clearly anticipated by Martin (US 2005/0187128).
Martin teaches a foundation in the form of a compact powder comprising (A) “titanium dioxide coated with lauroyl lysine (95/5) 9.00 g”; (B) “magnesium stearate 3.00 g”;
(D) “Sunsphere (R) H-33 from Asahi-glass microbeads of silica: 1.00 g”; and (E ) “Trefil Powder (R) E-506 C from Dow Corning microbeads of paraffin wax: 8.00 g” or dimethicone/vinyl dimethicone crosspolymer. (Example 3, para.0123; see title; abstract; entire document). The composition sums up to 99.23 g with “preservatives” comprising “qs”. Therefore concentrations of component (A) and (B) are each within the ranges in claim 1. Martin further teaches using a high viscosity oils such as diisostearyl malate (para.0081; see paras.0078-91, 0096), i.e., component (C) in claim 9.
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.
Claim(s) 1-7 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Martin (US 2005/0187128) in view of Yoshimura (US 2018/0093938).
Martin does not specifically teach a calcium fatty acid salt as recited in claim 7.
Yoshimura is drawn to metal soap particles for powder cosmetics (title; abstract; para.0002). It teaches “metal soap particles in which the fatty acid has from 6 to 22 carbons”, with “cumulative diameter at 50% of the metal soap particles on a volumetric basis is 1.0 to 30.0 μm”, preferably 5.0 to 25.0 µm and 10 to 23.0 µm (paras.0010, 0048; see pars.0021-26), and “B≤2.00, where B denotes a granularity summary value represented by formula (2) below” (para.0013; see paras.0049-56). The “Granuarlity summary value” is formula (1) in claim 7 (paras.0013-16). “From the standpoint of improving anti-caking properties, flowability, or tactile feel of powders[sic], calcium or zinc is preferred” (para.0027; see para.0115; claim 3). The D50 of 5.0 and 10 µm falls within the range in claim 7.
Yoshimura does not expressly state the average thickness of its metallic soap particles. However Yoshimura teaches (Synthesis Examples 1-8 paras.0078-85); paras.0003-05, 0018, 0047, 0056; claim 5) the double decomposition method of producing the metal fatty acid soap particles and post-process drying and sieving, which the Specification here discloses (paras.[0028]-[0030]). Because the processes do not differ significantly except for the addition of talc as the inorganic nucleating agent in the prior art process and possibly differences in micronization, one would expect the average particle dimensions of Yoshimura (if it had been measured) to be similar to the claimed range. Furthermore, Yoshimura teaches comparative examples where the inorganic nucleation agent (i.e., talc) was intentionally removed from the process (Comparative Examples 1-4 in Table 1), which closely resembles the manufacturing process of the instant specification. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I)). In this case, Yoshimura teaches all general elements of the manufacturing process, as described in the instant specification, suggesting the production of substantially identical products from each process, including particle shape.
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Martin and Yoshimura as recited in the instant claim(s). The skilled person would have been motivated to do so because both are drawn to cosmetics comprising powders, and Yoshimura teaches that its calcium soap particles confer “improv[ed] anti-caking properties, flowability, or tactile feel” to solid powder cosmetics.
Claim(s) 1-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Martin (US 2005/0187128) in view of Le Bras-Roulier (US 5958389).
Martin does not specifically teach a magnesium fatty acid salt as recited in claim 8.
Le Bras-Roulier teaches “cosmetic composition in the form of a compact powder comprising a fatty phase and a pulverulent phase, said pulverulent phase comprising a first incompactible filler and at least a second filler which may be compactible or incompactible, these two fillers being of different types” (abstract). Le Bras-Roulier teaches as follows.
Among the compactible spherical organic type fillers, there may be mentioned: metallic soaps derived from carboxylic organic acids having 8 to 22 carbon atoms, preferably 12 to 18 carbon atoms, for example Zinc, magnesium or lithium stearate, zinc laurate, and magnesium myristate; these soaps, generally present in the form of particles having sizes of less than 10 µm, have an unctuous feel and facilitate the adhesion of the powder to the skin; …(Col.4 lines 3-11 (emphases added).)
Spherical particles would have an aspect ratio of about 1, including 1.0. The range of “less than 10 µm” includes 250-600 nm. For result-effective variables, in the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05 (citations omitted). Furthermore, optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted).
The term “unctuous” here appears to mean “creamy” or “smooth”, which is the machine translation of “un toucher onctueux” in counterpart EP 0717979 A2 (col. 4 line 34; see machine translation para.0018).
Le Bras-Roulier further teaches mica-nanotitanium, talc, and “lauroyl lysine “Ami[h]ope LL-11” as suitable incompactible fillers of the pulverulent phase (col.3 lines 27-44). Component (A) of claim 1 reads on these.
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Martin and Le Bras-Roulier and use magnesium stearate particles of Le Bras-Roulier in Martin’s compact powder formulations as recited in the instant claim(s). The skilled person would have been motivated to do so because both are drawn to compact solid cosmetics comprising identical pulverulent material including mica titanium, lauroyl lysine, and metallic soaps such as magnesium stearate, and Le Bras-Roulier teaches “spherical organic type fillers…, for example Zinc, magnesium or lithium stearate, zinc laurate, and magnesium myristate; …, generally present in the form of particles having sizes of less than 10 µm, have an unctuous [smooth] feel and facilitate the adhesion of the powder to the skin”.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, and 7 of copending Application No. 18/043550 (reference application) in view of Martin (US 2005/0187128).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to particles of magnesium salt of a fatty acid having 12-22 carbon atoms, with overlapping ranges of average particle thickness and aspect ratios, and compositions comprising the particles. The present claims recite a powder solid composition. However Martin teaches a foundation in the form of a compact powder comprising magnesium stearate, and the selection of a known material or mechanism based on its suitability for its intended use supports a prima facie obviousness determination. MPEP §2144.07 (citations omitted). The ‘559 application’s claims recite magnesium myristate specifically and therefore are narrower than the limitations here.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/043558 (reference application) in view of Martin (US 2005/0187128).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to cosmetic compositions comprising particles of magnesium salt of a fatty acid having 12-22 carbon atoms, with identical ranges of average particle thickness and aspect ratios. The difference is that the present claims recite a powder solid composition. However Martin teaches a foundation in the form of a compact powder comprising magnesium stearate, and the selection of a known material or mechanism based on its suitability for its intended use supports a prima facie obviousness determination. MPEP §2144.07 (citations omitted).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/043559 (reference application) in view of Martin (US 2005/0187128).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to cosmetic compositions comprising particles of magnesium salt of a fatty acid having 12-22 carbon atoms, with overlapping ranges of concentration and identical ranges of average particle thickness and aspect ratios. The difference is that the present claims recite a powder solid composition. However Martin teaches a foundation in the form of a compact powder comprising magnesium stearate, and the selection of a known material or mechanism based on its suitability for its intended use supports a prima facie obviousness determination. MPEP §2144.07 (citations omitted).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/043563 (reference application) in view of Martin (US 2005/0187128).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to cosmetic compositions comprising particles of magnesium salt of a fatty acid having 12-22 carbon atoms, with overlapping ranges of concentration, average particle thickness, and aspect ratios. The difference is that the present claims recite a powder solid composition. However Martin teaches a foundation in the form of a compact powder comprising magnesium stearate, and the selection of a known material or mechanism based on its suitability for its intended use supports a prima facie obviousness determination. MPEP §2144.07 (citations omitted).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12419820 in view of Martin (US 2005/0187128).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to compositions comprising a fatty acid calcium salt particle consisting of a calcium salt of a fatty acid having 12 to 22 carbon atoms, wherein the particle have a plate shape, the median size of the particle is 4.0 μm to 15.0 μm, the particle size digest A expressed by the following equation (1) satisfies the relation A≤2.0, and the average thickness is 350 to 800 nm: the particle size digest A=(D90−D10)/D50 equation (1), wherein 4.0≤D50≤15.0, wherein D10 is the 10% cumulative size in μm of the fatty acid calcium salt particle on a volumetric basis, D50 is the median size in μm of the fatty acid calcium salt particle on a volumetric basis, and D90 is the 90% cumulative size in μm of the fatty acid calcium salt particle on a volumetric basis. The present claims are different in reciting a solid powder composition also comprising 0.1 to 30% by mass of an inorganic pigment treated with a surface treatment agent comprising an amino acid and/or a derivative thereof and a concentration range of the fatty acid calcium salt particle or the “metallic soap”. However Martin teaches a foundation in the form of a compact powder comprising (A) “titanium dioxide coated with lauroyl lysine (95/5) 9.00 g” and metallic soaps of fatty acids comprising from 12 to 22 carbon atoms (paras.0050, 0064).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614
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