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 .
Receipt is acknowledged for preliminary amendment and IDS filed 06/21/2024.
Claims 4-8 are amended.
Claims 1-8 are pending.
Priority
This application is a 371 of PCT/JP2022/047719 filed 12/23/2022 which claims benefit of JP application 2021-214016 filed 12/28/2021.
Information Disclosure Statement
The IDS filed 06/21/2024 has been considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUKUMA et al. (WO 2021006289 A1 using US 20220265534 A1 as Eng. Trans of WO 2021006289 A1).
The Claimed invention: Claim 1 is an aqueous liquid composition comprising coated and uncoated pigment particles; the coated flaky particles B are the uncoated flaky particles A coated with/surface treated with at least one of crystalline cellulose, dextrin, thickening polysaccharide, emulsion particles containing 4-10 mass% acrylate copolymer; the uncoated particles are the flaky pigment A.
Scope and Content of the prior art: SUKUMA discloses aqueous/liquid cosmetic composition comprising 0.01 to 10 mass% flaky pigments coated with 1-20% mass% of an acrylic copolymer and water (see the whole document with emphasis on the abstract, paragraphs [0006], [0019]. [0020]) and the composition is filled in an applicator provided with a brush (paragraphs [0006], [0009], Fig. 1); the preferred amount of the acrylic copolymer is 1-10% (paragraph [0055]). The aqueous/liquid composition comprises thickening agent for inhibiting settling of the flaky pigment (paragraph [0057]) and the thickening agent is at least one of crystalline cellulose, dextrin, xanthan gum, gellan gum, guar gum, cellulose, hydroxycellulose meeting the limitation of thickening polysaccharide (paragraph [0058]). Specific crystalline celluloses, Ceolus RC-591, RC-N81, RC-591NF, CL-611, Ceolus Cream, all manufactured by Asahi Kasei are named (paragraph [0059]). SUKUMA further teaches that the aqueous/liquid composition can contain moisturizer, antimicrobial agent, inorganic pigment and organic pigment, dye, surfactant and water soluble organic solvent (paragraph [0062]). SUKUMA further teaches that the liquid composition comprises blend of organic pigment, AL lake pigment and dye and this blended pigments produce clear color tone in addition to the coated treated flaky pigment (paragraph [0067]). SUKUMA further teaches that Pearl pigment, aluminum flake pigment which is aluminum powder pigment, metal or metal oxide coating glass flake, metal or metal oxide coating glass flake and aluminum-coating polyester film are coated with cellulose hemicellulose, lignin, chitin or chitosan (paragraph [0031]). The flaky pigments in SUKUMA are aluminum flake pigments, metal oxide-coated glass flakes (METASHINE), metal oxide coated mica (LUMINA) (paragraph [0035]). Therefore, SUKUMA’S composition contains coated and uncoated pigments, the uncoated pigments reading of flaky pigment A, and the coated pigments meeting the flaky pigment B. The coated flaky pigment is present at 0.01 to 10% or 0.5 to 8% or 1 to 7% (paragraphs [0034], [0040] and the acrylate copolymer meeting the limitation of emulsion particle is at 1 to10% (paragraph [0055]). The 1 to 10% for the emulsion particles of acrylic based copolymer overlaps the claimed range of 4 to 10%. The 1-7% is a specific point within the claimed range of 1-9%.
Differences between the prior art and the claims: For Claim 1,The difference between the prior art and claim 1 is that the amount for the emulsion particles overlaps the claimed range of 4 to 10%.
Objective evidence and resolving the level of ordinary skill in the art: It has been established that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, the range of 1-10% for the emulsion particles allows for a range of 4-10% rendering the claimed range prima facie obvious. Therefore, before the effective date of the invention the artisan guided by the teachings of SUKUMA would use amounts of the emulsion particles, in the case the acrylate, in the liquid cosmetic that would predictably provide clear and brilliant coating film.
For claim 2, dextrin meets the limitation.
For claim 3, xanthan gum and guar gum meet the limitation.
For claim 4, the pH adjuster (see paragraph [0060], [0068], Table 1) meet the limitation.
For claim 5, the layered clay material is layered silicate mineral particles (paragraphs [0023], [0043], [0044], claim 4).
For claims 6 and 7, the size of the coated pigment is larger than the uncoated pigment (see at least paragraph [0036]), such that the particle size of the untreated/uncoated pigment particle is different from the particle size of the coated pigments.
For claim 8, the coated flaky pigment, which is flaky pigment B, is disclosed to have diameter of 5 mm to 100 mm (paragraph [0036]). The diameter of the uncoated pigment is not specifically disclosed. However, the ordinary skilled artisan needing to know how much coating material in terms of the size of the particle, would determine the size of the particle before and after coating to determine the difference between the coated and uncoated particles to predictably determine coating size.
Thus, SUKUMA renders claims 1-8 prima facie obvious.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-5 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11890363 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued liquid cosmetic composition comprising flaky pigment, surface coated flaky pigment with the coating selected from the group consisting of cellulose, hemicellulose, lignin, chitin and chitosan, layered clay mineral particles, acrylic copolymer; the composition further comprising thickener, the flaky component is aluminum flake pigment, and the layered clay mineral particles are layered silicate mineral particles teaches the claimed liquid cosmetic which is disposed in an applicator equipped with a brush.
No claim is allowed.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
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