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 24 September 2024 and 2 April 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 continuation of PCT/JP2023/013708 filed 31 March 2023. Claims 1-15 are currently pending and examined on the merits within.
Claim Objections
3. Claims 4-9, 12-13, and 15 are objected to because of the following informalities: “claim1” should instead recite “claim 1”. Appropriate correction is required.
Claim Rejections – 35 U.S.C. 103
4. 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.
5. Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sano et al. (JP2010163369) in view of Shuvendu et al. (WO2020/262367).
Sano et al. teach a powder cosmetic having excellent finished feeling with covering effects for concealing the blemish of the skin and exhibiting good use feeling to the skin and spreadability. See abstract. Application Example 2 comprises 1% N-lauroyl lysine (5%) treated Bengala, 4% of N-lauroyl lysine (5%) treated yellow iron oxide, 0.5% of N-lauroyl lysine (5%) treated black iron oxide, 7% N-lauryl lysine (5%) treated titanium dioxide, 35.06% of N-lauroyl lysine (5%) treated sericite, 10% silicone treated hemp cellulose powder (component C), and 0.1% silk protein extract (component B). This equates to 2.378% N-lauryl lysine (component A), 0.1% silk protein (component B) and 10% cellulose powder (component C). Example 4 comprises 15% N-lauroyl lysine powder, 5% crystalline cellulose, 15% corn starch, and 4% mica titanium (inorganic powder). The plant derived powder may be calcium alginate, cellulose, corn starch, etc. See paragraph [0045]. It would have been well within the purview of the skilled artisan to substitute one type of powder for another based on the effective combinations of embodiments taught by Sano et al. to yield predictable results.
Sano et al. do not teach acyl lysine with a median diameter of volume based distribution of 9µm or less.
Shuvendu et al. teach a technique capable of imparting water-repellent and oil-repellent functions to the powder while improving the soft feel of the powder and producing the powder at low cost. Shuvendu et al. teach Nε-lauroyl lysine crystal or Nε-octanoyl lysine and Nε-lauroyl lysine mixed crystal in which 90% particle size D90 of the number reference distribution is 2.8 μm or less and having a bulk density of 0.34 g / mL or less. See pages 2-3. The powders include cellulose, glyceryl caprylate, polyacrylate cross polymers, etc. See page 8. Methods for preparing the treated powder include dry mixing in a mixer for 60 minutes or less. See page 3.
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to use the N-lauroyl lysine of Shuvendu et al. in the teachings of Sano et al. to impart water-repellant and oil repellant functions to the powders. One would have been motivated, with a reasonable expectation of success, because both Shuvendu et al. and Sano et al. are directed to similar combination of ingredients, including combining lauroyl lysine with cellulose. It would have been obvious to modify the amount of each ingredient based on known effective amounts taught by Sano et al. to optimize the formulation to achieve the desired properties and function. It would have been obvious to prepare the combination by dry mixing for less than 60 minutes because Shuvendu et al. teach this is an effective processing technique used to sufficiently mix the particles.
Double Patenting
6. 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.
7. Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-19, and 21-30 of copending Application No. 18/343239 (reference application) in view of Sano et al. (JP2010163369).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to powder compositions comprising acyllysine having a median diameter of volume based distribution of 9 µm or less and cellulose or starch. The only difference lies in the fact that the instant application optionally comprises a powder of a polymer having amino acids, hydroxycarboxylic acid, uronic acid, polyvalent carboxylic acid or polyhydric alcohols as monomers, while Application No. 18/343239 contains silica. However, the dependent claims of the instant Application include an inorganic compound. Thus the only difference in claim 1 is the option of the polymer discussed above, therefore the two are not patentably distinct. Sano et al. teach Application Example 2 comprises 1% N-lauroyl lysine (5%) treated Bengala, 4% of N-lauroyl lysine (5%) treated yellow iron oxide, 0.5% of N-lauroyl lysine (5%) treated black iron oxide, 7% N-lauryl lysine (5%) treated titanium dioxide, 35.06% of N-lauroyl lysine (5%) treated sericite, 10% silicone treated hemp cellulose powder (component C), and 0.1% silk protein extract (component B). This equates to 2.378% N-lauryl lysine (component A), 0.1% silk protein (component B) and 10% cellulose powder (component C). It would have been obvious to add a protein in the formulation of Application No. 18/343239 because Sano et al. teach this is a known effective ingredient combined with lauroyl lysine and cellulose. Thus the two are not patentably distinct. The dependent claims are included in this rejection for claiming similarities regarding amounts and properties, as well as similar methods of making.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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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