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 .
Detailed Action
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 26 December 2024 and 28 July 2026 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner. See attached copy of PTO-1449.
Status of Application
2. The instant application is a national stage entry of PCT/JP2023/021486 filed 9 June 2023. Claims 1-10 are currently pending and examined on the merits within.
Claim Rejections – 35 U.S.C. 102
3. 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.
4. Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitsui (U.S. Patent Application Publication No. 2010/0172850).
Regarding instant claims 1-3 and 10, Mitsui discloses a water-in-oil sunscreen cosmetic with superior emulsion stability, comprising particulate zinc oxide subjected to surface hydrophobizing treatment and/or particulate titanium dioxide subjected to surface hydrophobizing treatment and silicone branched type polyglycerin modified silicone and isosteric acid. See abstract. The particulate titanium dioxide is present in 5 to 20% by mass (component a). See paragraph [0023]. The particle size of the particulate titanium dioxide is between 1-50 nm in view of transparency and UV screening effect. See paragraph [0020]. The silicone branched type polyglycerin modified silicone is present in 1.5 to 10% by mass (component c). See paragraph [0029]. Additional components comprise 1,3-butylene glycol, glycerin, etc. See paragraph [0036]. Example 1 comprises 4% 1,3-butylene glycol and 1% glycerin (component b).
Regarding instant claim 4, the titanium dioxide is hydrophobized with fatty acids or metallic soaps including aluminum stearate and zinc stearate. See paragraph [0019]. The particulate titanium dioxide of Example 1 is treated with stearic acid. See paragraph [0048].
Regarding instant claim 5, 1,3-butylene glycol comprises two hydroxyl groups.
Regarding instant claim 6, examples of silicone branched type polyglycerin modified silicone include KF-6100 which is polyglyceryl-3 disiloxane dimethicone. See paragraph [0025].
Regarding instant claim 7, Example 1 comprises 3.5% silicon branched type polyglycerin modified silicone, 4% 1,3-butylene glycol and 1% glycerin. This equates to 3.5/5 or 0.7% which falls within the range of 0.35/1 to 1/1 (c/b).
Regarding instant claims 8-9, Example 1 comprises 20% water.
Thus the instant claims are anticipated by Mitsui.
Double Patenting
5. 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.
6. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/522227 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to 10-70% of hydrophobized fine particles of inorganic powder with a particle diameter of 10 to 200 nm, 1-30% of an aqueous component having at least two alcoholic hydroxyl groups, and 1 to 20% of polyglycerin modified silicone. The only difference lies in the fact that Application 19/522227 further identified the fine particles as titanium dioxide hydrophobized with silicone and that the composition comprises water. Thus the claims are much more specific. The invention of Application 19/522227 is in effect a "species of the "generic" invention of the instant application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus the claims are not patentably distinct. The dependent claims are included in this rejection as being directed to the same parameters such as component c further defined as polyglycerol-3-disiloxane dimethicone and ratios of ingredients.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
7. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 19/598196 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both application are directed to 10-70% of hydrophobized fine particles of inorganic powder with a particle diameter of 10 to 200 nm, 1-30% of an aqueous component having at least two alcoholic hydroxyl groups, and 1 to 20% of polyglycerin modified silicone. The only difference lies in the fact that Application 19/598196 further identified the fine particles as zinc oxide hydrophobized with silicone and broader ranges of ingredients. However, the instant specification states the fine particles can be titanium oxide or zinc oxide. See paragraph [0012]. Thus the claims are not patentably distinct. The dependent claims are included in this rejection as being directed to the same parameters such as component c being further defined as polyglycerol-3-disiloxane dimethicone and ratios of ingredients.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
8. No claims are allowed at this time.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WORSHAM whose telephone number is (571)270-7434. The examiner can normally be reached Monday-Friday (8-5).
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/JESSICA WORSHAM/Primary Examiner, Art Unit 1615
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