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
Claims 1-12 are currently pending and a preliminary amendment to the claims filed on 12/27/2024 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/27/2024 was filed before the mailing date of the instant first action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Specification
The abstract of the specification is objected to a minor informality.
Applicant is reminded of the proper content of an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc. See MPEP 608.01(b)
In the instant case, the current abstract consists of two paragraphs, not a single paragraph. Replacement of abstract is requested.
Claim Objections
Claim 10 is objected to a minor informality under 37 CFR 1.75.
Claim 10 would be better to write “a content of the bis-diglyceryl polyacyladipat-2” in line 2. Appropriate correction is requested.
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 11 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 11 recites “the liquid oil is one, two or more selected from among alkyl fatty acid esters, triglycerides, vegetable oils and hydrocarbon oils”. However, base claim 1 recites a content of a silicone oil in the liquid oil is 10 mass% or less”. Specifically, base claim 1 embraces the presence/absence of silicone oil. When claim 1 embraces the presence of silicone oil, claim 11 is indefinite because claim 11 is limited to one, two or more selected from among alkyl fatty acid esters, triglycerides, vegetable oils and hydrocarbon oils, which does not contain silicone oil. Thus, claim 11 is not clear.
Claim 12 is indefinite in the recitation of the term "type” in line 2 because it was unclear what “type” of water-in-oil was intended to convey. That is, it is not clear how close it has to resemble a water-in-oil cosmetic for the artisan to know when they are infringing or not, and thus, this term extends the scope of the expression so as to render it indefinite. See case law. The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
Appropriate correction is requested.
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 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.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lucie et al. (WO2015/021625A1).
Applicant claims the below claim 1 filed on 12/27/2024:
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Prior Art
Lucie discloses composition comprising pasty compounds and UV filters (see entire document); in the embodiment on pages 30-31, Comparative Example 2 contains 1% ethyhexyltriazone powder (Uvinul® T 150, yellow particles) as evidenced by the attached BASF document – available since 2020-12-03, and 3% butylmethoxydibenzoylmethane powder (NEO Heliopan 357, powder) as evidenced by the attached UL Prospector document -available since 2019-08-19, both agents reads on the claimed UV scattering agent particles; the composition contains bis-diglyceryl polyacyladipate-2 in an amount of 4% which reads on the claimed second agent and the amount is within the claimed range of 2-5%; and the composition contains stearyl heptanoate oil mixture and jojoba seed oil that reads on the claimed liquid vegetable oil not containing silicone (Instant claims 1 and 10-11), and Comparative example 3 also contains titanium dioxide in addition to those three ingredients.
It is well-established that consideration of a reference is not limited to the preferred embodiments or working examples, but extends to the entire disclosure for what it fairly teaches, when viewed in light of the submitted knowledge in the art, to a person of ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)).
In light of the foregoing, instant claims 1 and 10-11 are anticipated by Lucie.
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.
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 1-7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al. (US2021/0022974A1).
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic UV agent research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, medicine, pharmacy, physiology and chemistry— without being told to do so. In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Applicant claims the below claim 1 filed on 12/27/2024:
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Prior Art
Kaneko discloses a cosmetic excelling in terms of reduction of oil weight, reduction of powder weight, improvement of dispersion stability, and dispersion stability, and the cosmetic contains a metal oxide having an average particle diameter of 0.01 μm to 0.1 μm, a paste oil including a hydrophilic group, and an acrylates/ethylhexyl acrylate/dimethicone methacrylate copolymer (e.g., abstract); wherein the metal oxide includes zinc oxide and titanium oxide, and one type or a combination of two or more types of these metal oxides may be used, preferably, zinc oxide and/or titanium oxide because the said metal oxides have excellent ultraviolet protection ability, and those metal oxides may also be subjected to surface treatment using one type or two or more types of fluorine compounds, silicone compounds, metallic soaps, lecithin, hydrogenated lecithin, collagen, hydrocarbons, higher fatty acids, higher alcohols, esters, waxes, surfactants, or the like (e.g., [0020]), in which the mixture of surface treated titanium oxide and zinc oxide reads on the claimed combination of UV scattering agent particles. Although the prior art does not expressly teach specific species of surface treating agents, Kaneko teaches fatty acids and silicone oils, etc., selecting surface treatment agent as claimed 3-5 would be obvious and a matter of choice or design from the standpoint and skill of the ordinary artisan (instant claims 1-5: surface-treated UV scattering agent particles); the cosmetic further comprises glycerin fatty acid esters such as bis-diglyceryl polyacyladipate-2 as a paste oil (e.g., [0027] and Table 1 of the Examples) (instant claim 1: bis-diglyceryl polyacyladipate-2); and the paste oil can be one type or two or more types selected from N-acyl amino acid esters, dipentaerythritol fatty acid esters in addition to glycerin fatty acid esters (e.g., [0027]), hydrocarbons, oils, fats, waxes, fatty acids, vegetable oil, etc. ([0036]) and thus the said paste oil reads on the claimed liquid oil having no silicone oils (instant claims 1 and 11: liquid oil without silicone oil); the UV filter metal oxides are used in an amount of 0.1 to 25% (e.g., [0024]) that overlaps the instant range of 10 mass% or more (instant claim 6); the cosmetic contains water (see e.g., Table 1) and provided in the form of e.g., water-in-oil emulsion (e.g., [0040] and Example 17)(instant claims 7 and 12); and the oil is used in an amount of 0.1 to 25% that overlaps the instant range of 2.0-5.0 mass% (instant claim 10).
In light of foregoing, instant claims 1-7 and 10-12 are obvious over Kaneko.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al. (US2021/0022974A1) as applied to instant claims 1-7 and 10-12 in view of Tapley (US5,573,753A).
However, Kaneko does not expressly teach dispersing agent of instant claims 8-9. The deficiency is cured by Tapley.
Tapley discloses sunscreen composition comprising titanium oxide particles and zinc oxide particles dispersed in an oil (abstract) wherein the dispersant includes polyhydroxy stearic acid, and promote the dispersion of the particulate sunscreen agents (col. 4, lines 9-55); and the oil includes vegetable oils, e.g., fatty acid glycerides, fatty acid esters and fatty alcohols, castor oil, oleic and linoleic glycerides, oleyl alcohol, isopropyl palmitate, pentaerythritol tetracaprylate/caprate … (bridging paragraph cols. 3-4).
It would have been obvious to further add dispersant such as polyhydroxy stearic acid of Tapley to the composition of Kaneko in order to promote the dispersion of the particulate zinc oxide and titanium oxide as taught by Tapley.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that 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 was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
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