DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 31 December 2025 has been entered.
Previous Rejections
Applicants' arguments, filed 31 December 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. In particular, the new matter rejection is overcome in view of the amendment to the claim. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8, 13, and 20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Song et al. (US Patent 8,147,814).
Song et al. discloses personal care compositions comprising dye-polymer complexes (abstract). The coloring complex is prepared from cationic polymers (column 1, lines 31-41), and an example of such a complex is the complex of anionic D&C red 4 dye with a copolymer of epichlorohydrin and dimethyl amine (example 1). This complex, with a higher molar amount of the cationic amine component relative to the anionic sulfate dye component, can be used in a variety of cosmetics (examples 16-33). And the preparation of this complex is such that when completed all the dye is complexed with the polymer, with none left in solution (example 1). And as for the solvent being the inclusion of both water and an alcohol, example 29 has both water and propylene glycol (an alcohol) and example 31 has both water and butylene glycol (an alcohol).
Instant claims 1-8, 13, and 20 further recite that the ingredients are in a bodypainting ink. Song et al. does not teach using the composition in such a manner. However, the claims are drawn to a composition, and the body of the claim (after the term “including”) recites a structurally complete invention. Furthermore, the use before the transitional phrase does not appear to result in a structural difference between the claimed invention and the prior art cosmetic compositions disclosed by Song et al. (the composition taught are applied to the body, such as hair or skin, and contain a colorant). As such, the preamble is not considered to further limit the claim and only states only an intended use. See MPEP 2111.02(II).
Instant claim 1 further recites that the bonding between the dye and the polymer is facilitated by stirring in the bodypainting ink. Song et al. teaches preparing a complex between these two ingredients, and this is done by “agitation” (example 1), which may be a different method step for preparing the complex (Song et al. does not further describe how the agitation is performed). Also, the complexing occurs before adding all of the remaining ingredients. Thus, there is a difference between instant claim 1 and the disclosure Song et al. with respect to the manner in which the steps are carried out.
The patent-ability of a product does not depend on its method of production, and if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Thus, while Song et al. is silent as to whether the agitation is performed by stirring, and agitates before all of the ingredients are added, the composition disclosed by Song et al. reads on the limitations instantly recited with regards to the composition. Further, the stirring step. As discussed in paragraph [23] of the instant specification, appears to show that the stirring step in the bodypainting ink facilitates bonding of the anion coloring agent and the cation monomer. This structural feature is present in the composition disclosed by Song et al., thus further supporting that the prior art product is the same as that instantly recited.
Instant claim 1 also recites that the resin constituted of the cation monomer firmly adheres to the skin and thus the bodypainting ink in which the coloring agent hardly comes off the skin. Song et al. is silent as to this specific property. However, the instant specification states that the property being recited arises when there is isolated amounts (such as less than 10 wt%) of the anion coloring agent and the coloring agent is complexed with the cationic monomer (paragraphs [12 & 16-17]). Song et al. teaches that the coloring agent is complexed completely with the cationic polymer. Thus, while the property instantly recited is not discussed by Song et al., it is reasonable to conclude that the complex taught would provide this property. The complex of the coloring agent and the polymer is all that is required for the property (as taught by the instant specification) and this is present in the complex taught by Song et al.
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.
Claims 9-11 (as well as the above rejected claims 1-8, 13, and 20) are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US Patent 8,147,814).
Song et al. discloses personal care compositions comprising dye-polymer complexes (abstract). The coloring complex is prepared from cationic polymers (column 1, lines 31-41), and an example of such a complex is the complex of anionic D&C red 4 dye with a copolymer of epichlorohydrin and dimethyl amine (example 1). Other suggested cationic polymers include those prepared from dimethylaminoethyl acrylate and dimethylaminoethyl methacrylate methyl chloride and methyl sulfate salts (column 2, line 32 – column 3, line 8 & claim 13), with such monomers being most preferred (column 3, lines 50-52).
Thus, Song et al. discloses compositions comprising the individual elements of the instantly recited combination (the specific polymer along with the coloring agent and resin) and together these would provide a composition as instantly recited. However, Song et al. is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been prima facie obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art. Since this modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions a prima facie case of obviousness exists. See MPEP 2141.
Claims 14-16 (as well as the above rejected claims 1-11, 13, and 20) are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US Patent 8,147,814) as applied to claim 1 above, and further in view of Midha et al. (US Patent 6,113,883).
Song et al. discloses most of the limitations recited by instant claims 14-16. However, the solvents instantly recited (water and propanol) are not taught therein. Song et al. does suggest the dye-polymer complex, which provide for outstanding stable coloration (column 1, lines 25-27) can be used in hair sprays (claim 23).
Midha et al. discloses hair sprays where the solvent is selected form (among the options) water, propanol, and mixtures thereof (abstract). Examples 7-20 contain both ethanol and water (with more ethanol than water). Propanol is an alternative to ethanol taught (abstract), and such a hair spray would have the solvent required by the instant claims. Midha et al. further suggests the inclusion of colorants (column 21, line 63 – column 22, line 15).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have included the dye-polymer complex taught by Song et al. into the hair spray compositions disclosed by Midha et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Claims 19 and 21-22 (as well as the above rejected claims 1-11, 13, and 20) are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US Patent 8,147,814) as applied to claim 1 above, and further in view of Kim et al. (US Patent 5,356,438).
Song et al. discloses most of the limitations recited by instant claims 19 and 21. However, the dye instantly recited (phloxine) is not taught therein. Song et al. does suggest the dye can be anionic, such as D and C dyes (column 6, lines 30-56).
Kim et al. discloses hair color cosmetic compositions, and teaches that useful dyes for such compositions include D&C red number 28, also known as phloxine, which is an anionic dye.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have included the D&C red number 28 taught by Kim et al. in the cosmetic taught by Song et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Response to Arguments
The Applicant argues that the rejection over Song et al. are not proper. The Applicant states that Song et al. teaches away from the composition of the amended claims. The sections cited to support this argument relate to the timing of the complexing of the dye and particle, which occurs prior to addition into the final composition. The Applicant also argues that the composition of amended claim is not preamble.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. The Examiner notes that the Applicant states that “[t]t is noted that the claim amendments are made only for more particularly pointing out the invention, and not for distinguishing the invention over the prior art” (page 5 of the remarks – emphasis originally present). Thus, in view of this statement, it would appear that Applicant is stating that the added feature (the limitation to the timing of when the dye and polymer are complexed) would not distinguish the invention over the prior art. Applicant states as much. Thus, this feature and the arguments relating to it would appear to be unpersuasive.
As for the argument relating to the preamble, the composition itself (the specific section quoted by Applicant) was not considered preamble. The use (as an ink for bodypainting) was referenced as such. But the body of the composition of the claim (the quoted section) was not treated as a preamble.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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