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 .
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.
Claim Status
Claims 1-10 are currently pending and are examined on the merits herein.
Priority
The instant application claims foreign priority to JP2024-020410 filed on 02/14/2024 and JP2024-208781 filed on 11/29/2024 as reflected in the filing receipt dated 4/08/2025. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/11/2025 and 08/06/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-10 are 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 the limitation “a closed cell porosity is 1% or more…”. The use of the term “a” rather than “the” makes it unclear whether more than one closed cell porosity is attainable, and if so, whether each of these must fall within the claimed range or if it is sufficient if only one closed cell porosity falls within the claimed range. Further, there is insufficient antecedent basis for this limitation in the claim. A measurement of porosity requires the presence of a porous structure. It is unclear how porosity can be measured when the claims do not require that the closed cells are pores, nor does it require that the resin particles are porous. It simply requires that the particles contain more than one “closed cell”, which is defined broadly in Applicant’s instant specification as “a cell confined by a wall” [0020] with no limiting definition of the term “cell”. In other words, a cell is not necessarily a pore. Because it is unclear how porosity can be measured for a structure that is not required, the scope of the claim is indefinite. Claims 2-10 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question. For the purposes of compact prosecution and because the claim requires a specific closed cell porosity, the Examiner is interpreting the claim to mean that the closed cells are closed pores, wherein closed cell porosity represents the percentage of the total particle that comprises closed cells.
Claim 1 recites the limitation “a volume-average particle size of 1 µm or more and 30 µm or less”. The inclusion of the limitations “or more” and “or less” make the metes and bounds of the claimed range unclear, as the upper boundary “or more” encompasses particle sizes of greater than 30 µm and the lower boundary “or less” encompasses particle sizes of less than 1 µm. Therefore, the scope of the claim is indefinite. Claims 2-10 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question. For the purposes of compact prosecution, the Examiner is interpreting the claim to mean that the resin particles volume-average particle size of from 1 µm to 30 µm.
Claim 1 recites the limitation “an average long axis length of 0.1 µm or more and 2.0 µm or less”. The inclusion of the limitations “or more” and “or less” make the metes and bounds of the claimed range unclear, as the upper boundary “or more” encompasses lengths of greater than 2.0 µm and the lower boundary “or less” encompasses lengths of less than 0.1 µm. Therefore, the scope of the claim is indefinite. Claims 2-10 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question. For the purposes of compact prosecution, the Examiner is interpreting the claim to mean that the closed cells have an average long axis length of from 0.1 µm to 2.0 µm.
Claim 1 recites the limitation “a closed cell porosity is 1% or more and 40% or less”. The inclusion of the limitations “or more” and “or less” make the metes and bounds of the claimed range unclear, as the upper boundary “or more” encompasses porosities of greater than 40% and the lower boundary “or less” encompasses porosities of less than 1%. Therefore, the scope of the claim is indefinite. Claims 2-10 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question. For the purposes of compact prosecution, the Examiner is interpreting the claim to mean that the closed cell porosity is from 1% to 40%.
Claim 4 recites the limitation “an average long axis length of 0.1 µm or more and 1.5 µm or less”. The inclusion of the limitations “or more” and “or less” make the metes and bounds of the claimed range unclear, as the upper boundary “or more” encompasses lengths of greater than 1.5 µm and the lower boundary “or less” encompasses lengths of less than 0.1 µm. Therefore, the scope of the claim is indefinite. Claim 9 is rejected by virtue of its dependency on claim 4, as it fails to resolve the ambiguity in question. For the purposes of compact prosecution, the Examiner is interpreting the claim to mean that the closed cells have an average long axis length of from 0.1 µm to 1.5 µm.
Claim 5 recites the limitation “a closed cell porosity is 1% or more and 20% or less”. The inclusion of the limitations “or more” and “or less” make the metes and bounds of the claimed range unclear, as the upper boundary “or more” encompasses porosities of greater than 20% and the lower boundary “or less” encompasses porosities of less than 1%. Therefore, the scope of the claim is indefinite. Claim 10 is rejected by virtue of its dependency on claim 5, as it fails to resolve the ambiguity in question. For the purposes of compact prosecution, the Examiner is interpreting the claim to mean that the closed cell porosity is from 1% to 20%.
Claim Interpretation
Regarding the limitation “main” recited in claim 2, the Examiner is interpreting the claim to mean that the biodegradable resin content relative to resin particles is 90% mass or more, as is consistent with the meaning of “containing a resin as a main component” provided in Applicant’s instant specification [0027].
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP2022041692A; published 03/11/2022; PTO-892).
Abe discloses biodegradable resin particles and cosmetic products comprising them, which provide excellent texture, spreadability on the skin, and transparency [abstract; claims; 0001; 0008].
Regarding claims 1 and 6: In Abe’s examples 1-5, which are subsequently manufactured as cosmetic products, the solidity of the resin particles is 85% to 97% by volume [0080; Table 1 machine translated on pg. 48; 0092]. The non-solid portions of the resin particles are clearly confined (i.e., closed) based on the cross-sectional view shown in Figure 2 [pg. 20]. Thus, the prior art particles meet the instant limitation of resin particles having closed cells inside. Further, since the solid portion of the resin particles is 85% to 97% by volume, the non-solid portion (i.e., the closed-cell portion) is necessarily 3% to 15% by volume, which lies within and thus reads on the instantly claimed closed cell porosity.
Regarding the instantly claimed volume-average particle size: In Abe’s examples 1-5, the volume-based cumulative 90% particle size (D90) is 7.2 µm to 23.1 µm and the the volume-based cumulative 10% particle size (D10) is 2.2 µm to 7.4 µm [0080; Table 1 machine translated on pg. 48]. Because 80% of the resin particles have a volume-based particle size in range of 2.2 µm to 23.1 µm, an ordinarily skilled artisan would reasonably conclude that the volume-average particle size of the resin particles in each of Abe’s examples lies well within the range of 2.2 µm to 23.1 µm, which lies within and thus reads on the instantly claimed range.
Regarding the instantly claimed average long axis length: Abe is silent as to the average long axis length of the non-solid portions (i.e., the closed cells) of the resin particles, which may in fact lie within the instantly claimed range. However, the non-solid portions of the exemplary resin particle shown in Abe’s Figure 2 each appear to have long axis lengths of less than 1 µm [see scale in Fig. 2], such that their average length reasonably overlaps the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Further, Abe further teaches that adjusting the solidity of the resin particles directly affects their transparency, oil absorption, strength, and stability [0006-0007; 0024]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manipulate the size of the non-solid portions of the resin particles in order to achieve a particular balance of properties such as transparency, oil absorption, strength, and stability, according to the desired effect of the final cosmetic product.
Regarding claims 2-3 and 7-8: In Abe’s examples 1-5, the cellulose content of the resin particles is either 90% or 100% by mass [0080; Table 1 machine translated on pg. 48; 0029 establishes that the percentage represents % by mass]. The amount of cellulose lies within and thus reads on the amount of cellulose required to meet the instant limitation wherein the particles comprise a biodegradable resin as a “main component” [see “Claim Interpretation” above].
Regarding claims 4 and 9: Again, the non-solid portions of the exemplary resin particle shown in Abe’s Figure 2 each appear to have long axis lengths of less than 1 µm [see scale in Fig. 2], such that their average reasonably overlaps the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manipulate the size of the non-solid portions of the resin particles in order to achieve a particular balance of properties such as transparency, oil absorption, strength, and stability, according to the desired effect of the final cosmetic product.
Regarding claims 5 and 10: Since the solid portion of the resin particles is 85% to 97% by volume, the non-solid portion (i.e., the closed-cell portion) is necessarily 3% to 15% by volume, which lies within and thus reads on the instantly claimed closed cell porosity.
Double Patenting
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.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/570,186 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other. The reference claims recite resin particles and a cosmetic comprising the same, wherein the resin particles contain a biodegradable resin as the main component, wherein the biodegradable resin is cellulose, wherein a volume average particle diameter is 1 µm or more and 30 µm or less, wherein the resin particles have independent pores having an average major axis diameter of 0.1 µm or more and 2.0 µm or less, and wherein the porosity due to the independent pores is 1% or more and 40% or less. The only difference is that the reference claims recite that the resin particles must have a transmittance at a wavelength of 550 nm of 4% or more and 20% or less in a case of being dispersed in an ester oil having a refractive index of 1.44 at 1% by mass, and the reference claims recite the terminology “independent pores” rather than “closed cells”. “Independent pores” and “closed cells” are each defined by their respective specifications as being closed or confined by a wall and, thus, terms do not appear to reference patentably distinct structural features [see reference spec., para. 0026; see instant spec., para. 0020]. While the reference claims recite a particular transmittance to which the instant claims are silent, the instant claims are not limited by any particular transmittance property. Therefore, the reference claims read on embodiments encompassed by the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 19/653,093 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other. The reference claims recite a cosmetic comprising resin particles, wherein the resin particles have independent pores inside, a volume average particle diameter is 1 µm or more and 30 µm or less, an average major axis diameter of the independent pores of 0.1 µm or more and 2.0 µm or less, a porosity due to the independent pores is 1% or more and 40% or less, and contains a biodegradable resin as a main component, wherein the biodegradable resin is cellulose. The only difference is that the reference claims recite the terminology “independent pores” rather than “closed cells”. “Independent pores” and “closed cells” are each defined by their respective specifications as being closed or confined by a wall and, thus, terms do not appear to reference patentably distinct structural features [see reference spec., para. 0021; see instant spec., para. 0020]. Accordingly, the conflicting claims are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/690,061 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other. The reference claims recite resin particles and a cosmetic comprising the same, wherein the resin particles wherein the resin particles have independent pores inside, a volume average particle diameter is 1 µm or more and 30 µm or less, an average major axis diameter of the independent pores of 0.1 µm or more and 2.0 µm or less, a porosity due to the independent pores is 1% or more and 40% or less, and the resin particles contain a biodegradable resin as a main component, wherein the biodegradable resin is cellulose. The only difference is that the reference claims recite that the resin particles must have a ratio of a diffuse reflected light intensity at a reflection angle of +0° to a specular reflection light intensity at a reflection angle of +45° when irradiated with light at an incident angle of -45° (diffuse reflected light intensity/specular reflection light intensity) is 0.90 or more and 1.35 or less, and a reflected light intensity when a perfectly diffuse reflected light intensity is set to 100 is 10 or more and 65 or less, and the reference claims recite the terminology “independent pores” rather than “closed cells”. “Independent pores” and “closed cells” are each defined by their respective specifications as being closed or confined by a wall and, thus, the terms do not appear to reference patentably distinct structural features [see reference spec., para. 0027; see instant spec., para. 0020]. While the reference claims recite a particular reflected light intensities to which the instant claims are silent, the instant claims are not limited by any particular reflectance property. Therefore, the reference claims read on embodiments encompassed by the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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