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 Interpretation
Claim 1 recites “fine fibrous cellulose”, while the word “fine” is a relative term, the claim goes on to limit the cellulose fiber to having an average fiber diameter of 1-1000nm,. For purposes of examination, cellulose fibers having the claimed fiber diameter will be deemed to be “fine” fibrous cellulose.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “oil-based” this render the claim indefinite as its unclear what “oil-based” os limited too. Must the composition simply comprise an oil ingredient, or must this oil be present in a specific amount to be considered “oil-based”. For purposes of examination and consistent with the filed specification the presence of 20-60% of an oil in the composition reads on “oil-based”.
Claims 2-12 are rejected in view of the dependency on claim 1 as they do not resolve the deficiencies of claim 1 and therefore are deficient for the same reasons.
The term “light” in claim 10 is a relative term which renders the claim indefinite. The term “light” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claim(s) 1, 3, 5-8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sano (WO 2020/138144), JP2017-014115 and Honda (WO 2009/142255), as evidenced by Kokusho (US 5,190,868) and Arauco (2016) .
For ease of examination, the Examiner relied upon US Publication 2021/0393502 as an equivalent English translation of the Japanese WO 2020138144 publication. All citations henceforth to Sano are locations in the US Patent.
Sano teaches cosmetics that contain cellulose nanofibers having an average fiber diameter of 10-1000nm (reading on fine fibrous cellulose) (Abs). The cellulose nanofibers have a pseudo particle size distribution curve of 1-100µm and an accumulated volume fraction of the nanofibers have a particle size of 100µum or smaller is 90% or more [0019]. If 90% or more of the fibers have a particle size ranging from 1-100µm, it’s reasonable to expect the average particle size to fall within the claimed range of 1-100 µm. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Sano teaches the cosmetic to comprise an oil phase as a dispersed phase [0077] in amounts of 1-50% [0021], reading on oil-based. The oil component can be one or more selected from petrolatum, liquid paraffin (reading on fluid oil), olive oil, etc. [0079-0080].
Sano teaches the cellulose fibers to be subjected to defibrating (i.e. making finer), Sano teaches that these fibers may be kept in the form of a slurry or dispersion [0070], which suggests that the nanofibers obtained can be used in dried form (i.e. not in a dispersion).
JP’115 teaches cosmetic compositions comprising a fine cellulose fiber composite (Abs) and teaches forming a cellulose fiber dispersion and teaches that the composite can be dried into a powder prior to use or can be used in the form of a dispersion (pg. 11).
Therefore, it would have been prima facie obvious to use the cellulose fibers of Sano in dried form by drying the obtained dispersion prior to use as JP’115 teaches that this is a well-established way to use cellulose fibers in cosmetics.
Sano does not teach the specific surface area of the cellulose powder to be 0.1-10 m2/g as recited by claim 1.
Honda teaches a cellulose powder having an average particle diameter of less than 30µm and a specific surface area of 0.1 to less than 20 m2/g (Abs). If the surface area is larger than 20 m2/g, then the interaction of the active ingredient becomes too strong and problems such as coloring can occur (pg. 9). The cellulose powder can be used in cosmetics (pg. 18).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Sano with those of Honda. One of skill in the art would have been motivated to formulate the cellulose particles of Sano to have a specific surface area ranging from 0.1 to less than 20 m2/g as Honda teaches that this range is ideal for compositions comprising active ingredients when used in cosmetics and its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan. One of skill in the art would have a reasonable expectation of success as both Sano and Honda teaches cosmetics comprising cellulose powders.
Regarding claim 3: As discussed above, Sano teaches that its known in the art to include petrolatum in W/O emulsions, as such its inclusion is prima facie obvious.
Regarding claim 5: As discussed above, Sano teaches that its known in the art to include olive oil in W/O emulsions, as such its inclusion is prima facie obvious. As evidenced by Kokusho and the originally filed specification olive oil has a melting point of -6°C (col. 31, lines 20-25) and is suitable for use.
Regarding claim 6: As discussed above, Sano teaches that its known in the art to include liquid paraffin in W/O emulsions, as such its inclusion is prima facie obvious.
Regarding claim 7: Sano teaches the cosmetic to comprise 0.01-3% of the cellulose nanofibers [0021].
Regarding claim 8: It is noted that this is a product-by-process step and recites the structure of the cellulose powder prior to inclusion in the composition and the patentability of the claimed rests in the final structure which does not require the cellulose to be dried. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps and “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Furthermore, “because validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed.Cir. 2009). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id at1370 (“a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim.”).
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). (“a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim.”) see Amgen Inc. v. F. Hoffman-La Roche Ltd., 580F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009) at 1370).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”
In the present case, the claimed product is found to be substantially the same as the product of the prior art which teaches using nanofibers not in the form of a dispersion or slurry.
Regarding claim 10: Sano exemplified the use of softwood bleached kraft pulp as the raw material of the cellulose fibers [0126], as evidenced by Arauco this pulp is white, this the cellulose powder of expected to be white.
Regarding claim 11: Sano teaches the addition of ingredients such as thickening agent, surfactants, etc. to the composition, these all read on additives.
Claim(s) 1, 2, 3, 5-8, 10-11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sano (WO 2020/138144), JP2017-14115, and Honda (WO 2009/142255), as evidenced by Kokusho (US 5,190,868) and Arauco (2016), as applied to 1, 3, 5-8, 10 and 11, and further in view of JP2012-51991.
As discussed above, Sano and Honda make obvious to the limitations of claims to 1, 3, 5-8, 10 and 11, however, they do not teach the composite particle to comprise glycerin as required by claims 2 and 12.
Sano teaches that when preparing the cellulose nanofibers dispersions, a part of the aqueous medium used can comprise other liquids compatible with water, for example lower alcohols [0070].
JP’991 teaches cellulose nanofiber dispersions and teaches a suitable medium includes water, lower alcohols and glycols including glycerin (pg. 3).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Sano and Honda with those of JP’991. Based on the teachings of JP’991 a skilled artisan would recognize water, lower alcohols and glycerin to be equivalent dispersion mediums for cellulose fibers, as such it would have been prima facie obvious to use both water and glycerin when formulating the nanofibers of Sano as its prima facie obvious to combine art recognized equivalents. One of skill in the art would have a reasonable expectation of success as Sano teaches that the aqueous medium used can comprise other liquids compatible with water.
Claim(s) 1, 3, 4, 5-8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sano (WO 2020/138144), JP2017-14115, and Honda (WO 2009/142255), as evidenced by Kokusho (US 5,190,868) and Arauco (2016), as applied to 1, 3, 5-8, 10 and 11, and further in view of WO2006/134886.
As discussed above, Sano and Honda make obvious to the limitations of claims to 1, 3, 5-8, 10 and 11, however, they do not teach the composition to have a B-type viscosity as claimed.
Sano teaches the cellulose nanofiber dispersion has a B-type viscosity ranging from 1000-20,000 cps, but does not teach the B-type viscosity of the cosmetic.
WO’886 teaches cosmetic compositions having a b-type viscosity ranging from 200-1000 mPa.s. If the viscosity is too low there is a problem with ease of use and if it’s too high, it’s difficult to take out of the pump container (pg. 8).
It would have been prima facie obvious to formulate the cosmetic of Sano made obvious above to have a b-type viscosity ranging from 200-1000 mPa.s as WO’886 teaches this to be an ideal viscosity range for cosmetics and its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan. One of skill in the art would have been motivated to optimize the viscosity in order to obtain desired properties of ease of use and a viscosity appropriate for the type of container with which the composition is being used. One of skill in the art would have a reasonable expectation of success as both Sano and WO’886 teach cosmetic compositions.
Claim(s) 1, 3, 5-8, 9, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sano (WO 2020/138144), JP2017-14115, and Honda (WO 2009/142255), as evidenced by Kokusho (US 5,190,868) and Arauco (2016), as applied to 1, 3, 5-8, 10 and 11, and further in view of JP2017-61614.
As discussed above, Sano and Honda make obvious to the limitations of claims to 1, 3, 5-8, 10 and 11, however, they do not teach the cellulose fiber to have a loose bulk density as claimed.
JP’614 teaches a method for producing a cellulose powder (abs) and teaches that it is important to control the loose bulk density when used in applications such as cosmetics (pg. 4). The loose bulk density ranges from 0.18-0.58 g/cm3 (i.e. 180-580 mg/cm3). By controlling the loose bulk density, the fluidity of the cellulose powder can be controlled, and can be usefully used in applications that require
a certain fluidity during use (pg. 5) and cellulose powders having the taught loose bulk density are less likely to cause problems of variation in fluidity and main ingredient content (pg. 4).
It would have been prima facie obvious to formulate the cellulose fibers of Sano made obvious above to have a loose bulk density ranging from 0.18-0.58 g/cm3 (i.e. 180-580 mg/cm3) as JP’614 teaches this to be a suitable density for cosmetics comprising cellulose fibers and its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan. One of skill in the art would have been motivated to optimize the loose bulk density in order to obtain desired properties of fluidity. One of skill in the art would have a reasonable expectation of success as both Sano and JP’614 teach cosmetic compositions.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
