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 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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moriyama et al. (JP 2012-206971 A; published 25 October 2012; of record; citations herein to English translation provided by applicant 21 February 2025; of record).
Regarding claim 1, Moriyama et al. discloses an oil-in-water massage cosmetic Example 8 comprising 15% w/w 2-decyltetradecanol (i.e., a primary alcohol having a branched chain and 20-30 carbon atoms; component A) and 2% w/w isostearyl alcohol (i.e., 16-methyl-1-heptadecanol, a primary alcohol having a branched chain and 12-19 carbon atoms; component B) (paragraph [0073]).
Further regarding claim 1, the total of components A + B is thus, 15% + 2% = 17% w/w, with component A being 15%/17% or about 88% w/w, and component B being 2%/17% or about 12% w/w, with component A plus component B corresponding to the claimed oil agent for cosmetics of claim 1.
Regarding claim 2, the oil agent for cosmetics of Moriyama et al. as discussed above regarding claim 1 is 17% w/w of the oil-in-water massage cosmetic Example 8 as discussed above regarding claim 1, and Moriyama et al. further discloses that the oil-in-water massage cosmetic Example 8 further comprises 10% w/w 1,3-butylene glycol (i.e., a divalent to hexavalent polyhydric alcohol having 3-6 carbon atoms; component C), polyglyceryl diisostearate (i.e., a non-ionic surfactant having an HLB value of 10; component D), and POE (60) hydrogenated castor oil (i.e., a non-ionic surfactant having an HLB value of 14; component D) (paragraph [0073]).
Further regarding claim 2, the ratio of components (A + B) / C is thus 17%/10% = 1.7.
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.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori (JP 2019-19077 A; published 07 February 2019; of record; citations herein to English translation provided by applicant 21 February 2025; of record) in view of Schwan-Stabilo (DE 10 2005 057 593 A1; published 11 January 2007; citations herein to English machine translation made 07 August 2026).
Regarding claim 3, Mori discloses a lip gloss cosmetic preparation Example 28 (paragraph [0087]) comprising 0.1% w/w octyl dodecanol (i.e., a primary alcohol having a branched chain and 20-30 carbon atoms; component A), 5% w/w decyltetradecanol (i.e., a primary alcohol having a branched chain and 20-30 carbon atoms; component A), 0.1% w/w isostearyl alcohol (i.e., 16-methyl-1-heptadecanol, a primary alcohol having a branched chain and 12-19 carbon atoms; component B), 1% w/w titanium dioxide (i.e., inorganic powder, component F), and 1% w/w iron oxide (i.e., inorganic powder, component F) (paragraph [0088]) wherein titanium oxide may be fine particle at 2% w/w (paragraph [0064]).
Further regarding claim 3, 1% titanium dioxide plus 1% iron oxide equals 2% w/w inorganic powder component F, and the ratio of component A/B = 5.1%/0.1% = 51.
Mori does not disclose that the titanium dioxide and iron oxide inorganic powder have an average particle size of 10 nm to 100 µm as in claim 3.
Schwan-Stabilo discloses cosmetic preparations (title) such as lip gloss (page 2 Description second paragraph) wherein titanium dioxide and iron oxide are pigments wherein commercial sizes thereof are about 0.1-200 µm (page 5 first paragraph).
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 combine the teachings of Mori and Schwan-Stabilo by using sizes of titanium dioxide and iron oxide of about 0.1-200 µm as suggested by Schwann-Stabilo as the titanium dioxide and iron oxide in the composition of Mori Example 28 as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art would have been motivated to do so to use titanium dioxide and iron oxide that is commercially available and is suitable for lip gloss cosmetic use as suggested by Schwann-Stabilo. Such particle size range of about 0.1-200 µm overlaps the claimed range of 10 nm to 100 µm, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
Prosecution Insights