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 .
Summary
Claims 1 - 5 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application filed on March 13, 2025 is a 371 of PCT/JP2023/033197 filed September 12, 2023, which in turn claims priority to Japanese patent application JP2022-148398 filed on September 16, 2022.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on March 13, 2025 is acknowledged. A signed copy of the form PTO/SB/08 is attached to this office action.
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.
Claims 1-5 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 is indefinite because it is unclear whether the 100 parts by weight of ethylhexyl methoxycinnamate are present in the particles or if the clause refers only to the latent ability of the particles to absorb the ethylhexyl methoxycinnamate.
Claims 2 -5 are included because they do not cure the defect.
Claim Rejections - 35 USC § 102
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.
(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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iguchi et al., JP 2006335978, published 2006-12-14 (Reference D1 on the IPER) as evidenced by Inokuchi et al., WO 2020095757 A1, published 2020-05-14, Inokuchi et al., US 20100112023 A1, published 2010-05-06 and Jansen et al., US 20160030313 A1, published 2016-02-04.
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Iguchi et al. teach elastomeric silicone spherical particles that have a diameter of 0.1 – 60 µm and comprise two different silicone monomers. Component a is represented by the average formula (C 6 H 5 ) a R 1 b R 2 c SiO (4-abc) / 2 . Here, R 1 is a substituted or unsubstituted monovalent hydrocarbon group having 1 to 6 carbon atoms excluding a phenyl group. R 2 is a monovalent olefinically unsaturated group having 2 to 6 carbon atoms. a, b, and c are positive numbers represented by 0 <a <3, 0 ≦ b <3, 0 <c <3, and 0.1 ≦ a + b + c ≦ 3. These parameters are the same as instant ingredient A except that the reference splits out the phenyl and non-phenyl substituents. Component b is represented by the average formula (C 6 H 5 ) d R 1 e H f SiO (4-def) / 2 . Here, R 1 is the same as described above, and d, e, and f are positive numbers represented by 0 ≦ d <3, 0 ≦ e <3, 0 <f ≦ 3, and 0.1 ≦ d + e + f ≦ 3. This is the same as instant ingredient B. Iguchi et al. teach that the particles are coated with polyorganosilsesquioxane in an amount preferably from 5 to 100 parts by mass.
Iguchi et al. are silent as to the oil absorption, refractive index and hardness of the particles.
Inokuchi et al. ‘757 teach silicone particles coated with polymethylsilsesquioxane for cosmetic purposes that have a refractive index of 1.44 - 1.57, see abstract.
Inokuchi et al. ‘023 teach silicone microparticles including 100 parts by mass of silicone elastomer spherical microparticles having a volume average particle diameter within a range from 0.1 to 100 µm, and 0.5 to 25 parts by mass of a polyorganosilsesquioxane that coats the surface of the silicone elastomer spherical microparticles, in which the silicone elastomer is capable of absorbing not less than 30 parts by mass of at least one oily substance selected from the group consisting of sebum, hydrocarbon oils and ester oils per 100 parts by mass of the silicone elastomer, see abstract.
The structure and composition of the claimed siloxane particles are taught by Iguchi et al. Inokuchi et al. ‘757 provides evidence that those particles have a refractive index within the claimed range and Inokuchi et al. ‘023 provides evidence that those particles absorb oil to the extent claimed.
Thus, Iguchi et al. anticipates claims 1-3.
With regard to claim 4, Jansen et al. teach silicone rubber particles coated with polyorganosilsesquioxane have a hardness in the range of 10 to 90 (e.g., 20 to 80, or even 25 to 75) (as measured by a sclerometer A as defined in JIS K 6253), see paragraph [0047]. This provides evidence that the particles taught by Iguchi et al. would have hardness within the claimed range.
With regard to claim 5, Iguchi et al. teach their particles in a cosmetic composition.
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.
This rejection is included as an alternative to the anticipation rejection presented above. Under this interpretation of the claims, the refractive index and hardness might not be inherent properties of the particles of Iguchi et al.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et al., JP 2006335978, published 2006-12-14 (Reference D1 on the IPER) in view of Inokuchi et al., WO 2020095757 A1, published 2020-05-14, Inokuchi et al., US 20100112023 A1, published 2010-05-06 and Jansen et al., US 20160030313 A1, published 2016-02-04 and further in view of Ohashi et al., US 20190192400 A1, published 2019-06-27.
The teachings of the references are outlined above.
Iguchi et al. teach the structure and composition of the claimed polyorganosilsesquioxane-coated siloxane particles. Iguchi et al. do not teach the claimed oil absorption or refractive index or hardness.
Inokuchi et al. ‘023 teach very similar silicone particles and discuss their particles’ ability to absorb oil. It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, that the instantly claimed particles would have a similar oil absorption capability for various oils including ethylhexyl methoxycinnamate. Ohashi et al. teach that ethylhexyl methoxycinnamate is a UV absorber widely used in cosmetics; this provides a reason why one might choose ethylhexyl methoxycinnamate as the standard for oil absorption.
Jansen et al. teach desirable hardness of silicone particles that are similar to ghose claimed, therefore, it would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to use the same hardness as instantly claimed with the expectation of achieving a well-performing product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A. Wax whose telephone number is (571)272-0623. The examiner can normally be reached 8:00 AM -4:00 PM Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at (571) 272-1424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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