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
This application is a National Stage entry of PCT/JP2022/046869, filed 12/20/2022. This application claims foreign priority to JP2021-212999, filed 12/27/2021.
Information Disclosure Statement
The IDS’s filed on 6/30/2026, 8/29/2024 have been considered. See the attached PTO 1449 form.
Election/Restrictions
Applicant's election with traverse of Group I (Claims 1-9 and 16) and silica particle as particle A and a modified silicone as surface treatment agent in the reply filed on 7/2/2026 is acknowledged. The traversal is on the ground(s) that the office has not provided any reasons to support a conclusion that the species are patentably distinct. Applicant argued that unity of invention does exist because there is a technical relationship that involves the same special technical feature and it is this technical feature that defines the contribution which each of the groups makes over the prior art. This is not found persuasive because as discussed in the restriction requirement office action and as provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e). Groups I-III and the species mentioned lack unity of invention because even though the inventions of these groups require the technical feature of a surface coated particle having a surface of a particle (A) coated with a surface treatment agent (B), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yukio (JP2019119720(A). Further, the examiner respectfully draws applicant’s attention to the prior art rejections below which also show the technical feature is not a special technical feature as it does not make a contribution over the prior art.
Claims 4, 8, 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Status
Receipt of Remarks filed on 7/2/2026 is acknowledged. Claims 1-9 and 12-16 are currently pending. Claims 4, 8, 12-15 have been withdrawn. Accordingly, claims 1-3, 5-7, 9, 16 are currently under examination.
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.
Claims 1-3, 5-7, 9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kamei et al. (US2004/0091440A1) (cited in IDS).
Kamei throughout the reference teaches hydrophilized powder and a composition comprising the same.
Kamei teaches hydrophilized powder wherein the powder is surface treated with polyether modified silicone. The powder is surface treated with 0.1 part by weight or more of the silicone relative to 100 parts by weight of the powder. The Kamei teaches specific example of powder include silica. Kamei teaches and requires only polyether modified silicone as the surface treatment agent, which would be 100% polyether modified silicone and thus reads on surface treatment agent comprises 50% or more of the modified silicone. (e.g. abstract; claims; examples; example 24; entire document).
Although Kamie does not explicitly teach the dynamic friction coefficient or the standard deviation of the dynamic friction coefficient, Kamie discloses surface treated particles prepared from the same or materially equivalent particle materials and surface treatment agents as those recited in the instant claims. These friction parameters are inherent physical properties of the resulting surface treated particles. Therefore, in the absence of any evidence and/or technical distinction affecting the particle surface or treatment, the surface treated particles of Kamie, when measured under the same conditions as recited in the instant claims, would exhibit dynamic friction coefficient and standard deviation values falling within the claimed ranges. Although Kamie does not disclose all the characteristics and properties of the composition disclosed in the present claims, based on the substantially identical process using identical components, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition disclosed by Kamie. Because the PTO has no means to conduct analytical experiments, the burden of proof is shifted to the Applicant to prove that the properties are not inherent. ““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” MPEP § 2112, I.
Claims 1-3, 5-7, 9, 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tachibana (US20060165629A1).
Tachibana throughout the reference teaches powder composition comprising polyglycerin modified silicone and powder and/or a coloring agent. Tachibana teaches the powder comprises silica and wherein 100 parts by weight of said powder is surface treated with 0.1 to 30 parts by weight of said polyglycerin-modified silicone. Tachibana teaches and requires only polyglycerin modified silicone as the surface treatment agent, which would be 100% polyglycerin modified silicone and thus reads on surface treatment agent comprises 50% or more of the modified silicone. Further, Tachibana specifically teaches KF6104 as the polyglycerin modified silicone. As disclosed in instant specification (e.g. Example 1) KF6104 is polyglyceryl-3 polydimethylsiloxyethyl dimethicone. (e.g. abstract; claims; examples; example 30; entire document).
Although Tachibana does not explicitly teach the dynamic friction coefficient or the standard deviation of the dynamic friction coefficient, Tachibana discloses surface treated particles prepared from the same or materially equivalent particle materials and surface treatment agents as those recited in the instant claims. These friction parameters are inherent physical properties of the resulting surface treated particles. Therefore, in the absence of any evidence and/or technical distinction affecting the particle surface or treatment, the surface treated particles of Tachibana, when measured under the same conditions as recited in the instant claims, would exhibit dynamic friction coefficient and standard deviation values falling within the claimed ranges. Although Tachibana does not disclose all the characteristics and properties of the composition disclosed in the present claims, based on the substantially identical process using identical components, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition disclosed by Tachibana. Because the PTO has no means to conduct analytical experiments, the burden of proof is shifted to the Applicant to prove that the properties are not inherent. ““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” MPEP § 2112, I.
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.
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, 5-7, 9, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Tachibana (US20060165629A1) in view of Kasei (JP2019119720A)(cited in IDS) and AGS (WO2021210472A1)(cited in IDS).
Tachibana throughout the reference teaches powder composition comprising polyglycerin modified silicone and powder and/or a coloring agent. Tachibana teaches the powder comprises silica and wherein 100 parts by weight of said powder is surface treated with 0.1 to 30 parts by weight of said polyglycerin-modified silicone. Tachibana teaches and requires only polyglycerin modified silicone as the surface treatment agent, which would be 100% polyglycerin modified silicone and thus reads on surface treatment agent comprises 50% or more of the modified silicone. Further, Tachibana specifically teaches KF6104 as the polyglycerin modified silicone. As disclosed in instant specification (e.g. Example 1) KF6104 is polyglyceryl-3 polydimethylsiloxyethyl dimethicone. (e.g. abstract; claims; examples; example 30; entire document).
Tachibana does not expressly teach the dynamic friction coefficient recited in instant claims. Kasei and AGS cure this deficiency.
Kasei also teaches surface treated inorganic powder. The surface treated inorganic powder has a dynamic friction coefficient of less than 0.5. Surface treated inorganic powder having a high refractive index and an ultraviolet blocking effect greatly improved by the surface treated inorganic powder having a dynamic friction coefficient of less than 0.5. It is not preferable that the coefficient of dynamic friction is 0.5 or more because the feel of smooth sliding is poor and a squeaky feeling is generated when extending on the skin. (see e.g. abstract; claims; examples; entire document).
AGS teaches hydroxyapatite supported on surface of silica particles. AGS discloses the need to provide a new particulate material that has a smooth feel without roughness and is also environmentally friendly. AGS taches the invention imparts a tactile sensation like urethane particles, specifically, a slippery sensation (powdery sensation) by lowering the dynamic friction coefficient when applied to the skin. AGS teaches the hydroxyapatite-supported porous silica particles of the present invention preferably have a coefficient of kinetic friction of 0.5 or less. (see entire document).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Tachibana, Kasei and AGS and have the dynamic friction coefficient of Tachibana’s powder composition to be less than 0.5 as suggested by Kasei and AGS. All of the cited references are direct to cosmetic makeup product applied to skin and Kasei and AGS teach surface treated particles having dynamic coefficient friction of less than 0.5 provides smooth feel and UV blocking effect is improved. Thus, it would have been obvious to one skilled in the art to have the dynamic coefficient friction of less than 0.5 for the benefits disclosed by Kasei and AGS.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Claims 1-3, 5-7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kamei et al. (US2004/0091440A1) in view of Kasei (JP2019119720A) and AGS (WO2021210472A1).
Kamei throughout the reference teaches hydrophilized powder and a composition comprising the same.
Kamei teaches hydrophilized powder wherein the powder is surface treated with polyether modified silicone. The powder is surface treated with 0.1 part by weight or more of the silicone relative to 100 parts by weight of the powder. The Kamei teaches specific example of powder include silica. Kamei teaches and requires only polyether modified silicone as the surface treatment agent, which would be 100% polyether modified silicone and thus reads on surface treatment agent comprises 50% or more of the modified silicone. (e.g. abstract; claims; examples; example 24; entire document).
Kamei does not expressly teach the dynamic friction coefficient recited in instant claims. Kasei and AGS cure this deficiency.
Kasei also teaches surface treated inorganic powder. The surface treated inorganic powder has a dynamic friction coefficient of less than 0.5. Surface treated inorganic powder having a high refractive index and an ultraviolet blocking effect greatly improved by the surface treated inorganic powder having a dynamic friction coefficient of less than 0.5. It is not preferable that the coefficient of dynamic friction is 0.5 or more because the feel of smooth sliding is poor and a squeaky feeling is generated when extending on the skin. (see e.g. abstract; claims; examples; entire document).
AGS teaches hydroxyapatite supported on surface of silica particles. AGS discloses the need to provide a new particulate material that has a smooth feel without roughness and is also environmentally friendly. AGS taches the invention imparts a tactile sensation like urethane particles, specifically, a slippery sensation (powdery sensation) by lowering the dynamic friction coefficient when applied to the skin. AGS teaches the hydroxyapatite-supported porous silica particles of the present invention preferably have a coefficient of kinetic friction of 0.5 or less. (see entire document).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kamei, Kasei and AGS and have the dynamic friction coefficient of Kamei powder composition to be less than 0.5 as suggested by Kasei and AGS. All of the cited references are direct to cosmetic makeup product applied to skin and Kasei and AGS teach surface treated particles having dynamic coefficient friction of less than 0.5 provides smooth feel and UV blocking effect is improved. Thus, it would have been obvious to one skilled in the art to have the dynamic coefficient friction of less than 0.5 for the benefits disclosed by Kasei and AGS.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
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 1-3, 5-7, 9, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 10-11, 15-17 of copending Application No. 18722946 in view of in view of Kasei (JP2019119720A) and AGS (WO2021210472A1).
‘946 claims surface coated inorganic particles comprising inorganic particle A and a surface treatment agent B coating all or portion of the surface. Particle A comprises silica and surface treatment agent B comprises modified silicone which include polyether modified silicone and specifically PEG-10 dimethicone, among many other recited and which also read on the instant claims. Amount of surface treatment agent B adsorbed to particle A is 0.1 parts by mass or more with respect to 100 parts by mass of particle A. Surface treatment agent B comprises 50% or more of modified silicon.
‘946 does not expressly teach the dynamic friction coefficient. However, as discussed supra, these friction parameters are inherent physical properties of the resulting surface treated particles. Further, Kasei and AGS teach surface treated particles having dynamic coefficient friction of less than 0.5 provides smooth feel and UV blocking effect is improved. Thus, it would have been obvious to one skilled in the art to have the dynamic coefficient friction of less than 0.5 for the benefits disclosed by Kasei and AGS.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/ALI S SAEED/Examiner, Art Unit 1616
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