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 .
Information Disclosure Statement
The submitted information disclosure statement (IDS) was filed on 03/11/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 non-obviousness.
Claim(s) 1-2, 4-6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuroda et al. (EP 1415639 81).
Claims 1-2, 4
Kuroda et al. teach the cosmetics including foundation, whitening powder, eye shadow, concealer, eye liner, eyebrow liner, mascara, cheek and face powder and powder foundation, powder eye shadow, face powder, powdered cheek color and other powdered solid cosmetics, as other finishing cosmetics or cosmetic bases and agents serving as cosmetic base. (0082). Oily solid cosmetics as exemplified powdered solid cosmetics and powder foundation have conventionally used agents such as coloring materials including various pigments with organic coloring matter, pearl pigments and inorganic powders such as pigment-grade titanium oxide, pigment-grade zinc oxide, cerium oxide. (0069). The total blending amount of coloring material used is preferably 0.3 to 15% by mass with respect to the total amount of oily solid cosmetics. (0070). Octylsilane-treated silica alumina-treated titanium oxide has average primary grain size: 12 nanometers, (0112), so titanium oxide average particle size should be lower than 12 nanometers, which are obviously close to 10nm or less. In addition to treated silica metal oxide (0069), a lubricant like spherical silica beads (0058) or spherical amorphous silica powder, (0099) are included.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to have cosmetic powder, comprising titanium oxide, pigment-grade zinc oxide, cerium oxide, with average particle size less than 12 nm, and with 0.3 to 15% by mass with respect to the total amount of oily solid cosmetics in terms of the total amount of blended coloring material, and silica beads taught by Kuroda et al. since they have proven it would be feasible to do so.
With regard to claim 5,
Kuroda et al. teach the powder obtained in this manner is then subjected to coating treatment with a water repellent or hydrophilic surface treatment agent. Examples of the water repellent or hydrophilic coating treatment include a metallic soap treatment. (0051).
With regard to claim 6,
Kuroda et al. teach aluminum stearate. (0069, line 10).
With regard to claim 8,
Kuroda et al. teach using any mixing oily agent that is generally used in cosmetics; however, silicone oils, ester oils and hydrocarbon oils are particularly preferable. In addition, in the case of using an aqueous dispersion, it is preferable to use this in combination with a surfactant during crushing. (0060). The blending amount of an oily agent that is a paste or solid at 25°C is preferably 0.5 to 60% by mass with respect to the total amount of oily solid cosmetic. (0067).
Claim(s) 1-4, is/are rejected under 35 U.S.C. 103 as being unpatentable over Masubuchi (JP 2015071587 A).
Claims 1-2, 4
Masubuchi teaches a powder cosmetic, (Abs), containing the following component (a) and (b): component(a) is a flat silk powder; and component (b) is an amphiphile. The component (b) in the powder cosmetics. 0.01 to 10% of the component (b) in the powder cosmetics, is excellent in the effect which improves the dispersibility of a component (a) and reduces the burden of skin. Components (b) comprise titanium oxide, black titanium oxide, cerium oxide, zinc oxide, (pg. 5, last par.), 3. Fine zinc oxide (average particle size 15 nm) 8% (pg. 14) and titanium oxide containing silica, zinc oxide containing silica. (pg. 6, 1st par.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to have cosmetic powder, comprising titanium oxide, pigment-grade zinc oxide, cerium oxide, with average particle size 15 nm, which is obviously closed to 10nm, and with 0.3 to 15% by mass with respect to the total amount of oily solid cosmetics in terms of the total amount of blended coloring material, and silica taught by Masubuchi et al. since they have proven it would be feasible to do so.
Claim(s) 1 and 3, is/are rejected under 35 U.S.C. 103 as being unpatentable over Masubuchi (JP 2015071587 A) in view of Yamazaki et al. (US 20230338269Al).
The teachings of Masubuchi are described in claim 1 above.
Masubuchi does not teach a content of the (b) silica is 10% by mass or more with respect to the total amount of the cosmetic.
Yamazaki et al. teach powder composition that can be used for cosmetics. (Abs). The cosmetic can be blended with a component which can be generally used in cosmetics as long as the advantageous effects of the present invention is not impaired. Such a component includes, for example, oil materials, inorganic powders. (0115). The inorganic powders include zinc oxide, fine particles of zinc oxide, titanium oxide, fine particles of titanium oxide, silica, porous silica, cerium oxide. (0117). Titanium oxide, dimethicone, 8%, Titanium oxide, Al stearate, 3% and Zinc oxide, methicone, 2% (Tables 9-1 and 9-2) (0162), so total of Titanium, and Zinc oxides are 13%, including coating dimethicone or methicone. Application Publication No. 2020-97552 describes a microplastic bead-free cosmetic, containing (a) 6 to 10% by weight of fumy hydrophobized silica, (0002), porous spherical silica, 10%-64%. (Table 15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to have cosmetic powder, comprising titanium oxide, pigment-grade zinc oxide, cerium oxide, with average particle size less than 15 nm, which is obviously closed to 10nm, and with 0.3 to 15% by mass with respect to the total amount of oily solid cosmetics in terms of the total amount of blended coloring material, taught by Masubuchi et al. and silica percentages are 6-64%, taught by Yamazaki, since they have proven it would be feasible to do so.
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuroda et al. (EP 1415639 81) in view of Uchida et al. (BR 112021002129 A2).
The teachings of Kuroda et al. are described in Claim 1 above.
Kuroda et al. do not teach a specific surface area of the (b) silica is 160 m2/g or more.
Uchida et al. teach “solid oil-based cosmetic” containing, relative to the total cosmetic volume: (a) 1% to 30% by mass of solid oil component; (b) 50% to 95% by weight of liquid oil component; (c) 3% to 40% by weight of non-ionic surfactant; (d) 0.1% to 20% by weight of powder having; and (e) 0.1% to 10% by mass aerosol silica.. (Abs). Component includes Silica (Specific surface area 200 m2/g). (pg. 11, line 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to have cosmetic powder, comprising titanium oxide, pigment-grade zinc oxide, cerium oxide, with average particle size less than 12 nm, and with 0.3 to 15% by mass with respect to the total amount of oily solid cosmetics in terms of the total amount of blended coloring material, and silica beads taught by Kuroda et al. and to have silica with Specific surface area 200 m2/g since they have proven it would be feasible to do so.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application 18/692081 (Document ID: US 20240382397 A1) in view of Yamaguchi et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference is that the instant application claims has particle size of the metal oxide powder is 10 nm or less patentably distinct from 100 nm in the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No Claim is allowed.
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/NGOC-ANH THI NGUYEN/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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