DETAILED ACTION
Claims 1-3, 10, and 12 are pending and under consideration on the merits.
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 .
Status of the Rejections
The 103 rejections are revised in view of the amendment
The 112(b) rejection is withdrawn in view of the amendment.
A new claim objection is applied in view of the amendment.
Claim Objections
Claim 1 is objected to because of the following informalities:
in part b) of the claim, “color mathcing” should be “color matching,” and “pigment formulations for clor matching” should be “pigment formulations for color matching.” Correction is required.
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.
Claims 1-3, 10, and 12 are rejected under 35 U.S.C. 103 as unpatentable over Jeong et al. (WO 2018/101572) as evidenced by its English language equivalent, US Pat. Pub. 2019/0295728) in view of Jeong et al. (KR20160117074A; of record in IDS; hereinafter “Jeong’059”) as evidenced by its English language equivalent, USS 2018/0342059 (of record in IDS) and KR 10-2006-0109797 (of record in IDS) as evidenced by the English translation thereof.
As to claims 1-3, 10, and 12, Jeong discloses a system for mixing a customized cosmetic composition (paragraph 6) comprising a diagnosis device comprising a measurement unit for diagnosing a skin condition via the values of measurements taken (“skin measurement module”)(paragraphs 11, 18), a control unit (“control module” of claim 1) comprising an analysis unit and a storage unit (“calculation unit” of claim 1) for calculating a mixing ratio useful for generating a customized cosmetic by using a table mapping the measurements to colors corresponding to the measurements obtained from the diagnosis device (paragraphs 81, 87), the control unit further comprising a communication unit for transmitting and receiving information on the recommended customized cosmetic to and from the diagnosis device and the manufacturing device (“input unit” and “output unit” of claim 1)(paragraphs 18 and 145), the manufacturing device (“mix module” of claim 1) receiving information from the control unit and generating a customized cosmetic based upon the received information (paragraphs 7-8), the manufacturing device further comprising canisters for holding the pigment formulation (“vessels” of claim 1), and a nozzle for transporting the pigment formulations through a pipe (a “control device” of claim 1) using a pump (“control unit” of claim 1) to a mixer that mixes the pigments together in a predefined mixing ratio to form a pigment formulation that is color matched to the skin (paragraphs 167-171 and 296-302). The skin condition that is measured by the diagnosis device may be the color or pigmentation of the skin (paragraph 19). Jeong further teaches that the pigments that are mixed to match the skin color may include pink, yellow, and beige, but Jeong teaches that these are merely exemplary colors (paragraph 169). The system may be for formulating a makeup composition as recited by claim 1 (paragraph 66). Additionally, claim 1 merely recites an intended use of the color mixing system, and therefore the recitation that the system is for a cosmetic composition that is a base make-up, eye make-up, or lip make-up composition is not granted additional patentable weight since it does not place any additional structural limitations on the color mixing system.
Regarding claim 2, the diagnosis device may comprise a camera that takes a photograph of the skin (paragraph 97).
As to claim 3, Jeong teaches that the control unit analyzes the skin by extracting RGB color values (paragraphs 98-100).
Regarding claims 13-14, the manufacturing device comprises a plurality of canisters each of which holds one of the pigments for supplying to the mixer at the selected mixing ratio, a pump, and a nozzle that mixes the pigments together (paragraphs 298-299).
As to claims 1-3, 10, and 12, Jeong does not further expressly disclose that the pigments may be white, yellow, red, black, or green as recited by claims 1 and 10, or that the color matching process involves deriving values using the inverse matrix recited by claim 1 and having the mixing ratios recited by claim 10. Nor does Jeong expressly disclose that the mixed pigment composition is formed by mixing the pigments with a standard bulking agent (claim 1) such as one of the bulking agents recited by claim 12 such as alumina, talc, or sericite, or that the pigments are formulated as one of the compositions recited by claim 1 such as a cream.
Jeong’059 discloses a method for proposing personalized cosmetics by photographing the skin and mapping the photograph to a spectral comparison table and the matching a personalized cosmetic to the comparison table (paragraph 8). Jeong’059 also teaches that it is known to use yellow, read, and black pigments in a white base in a color matching system for generating a personalized makeup composition (paragraph 5). The personalized cosmetic composition may comprise a wavelength reinforcement powder to increase the spectral intensity of a selected wavelength of light by reflecting light when applied to skin, wherein the powder may be alumina, talc, or sericite (paragraphs 49-51). Jeong’059 also teaches that it is known to use yellow, read, and black pigments in a white base in a color matching system for generating a custom makeup composition (paragraph 5). Jeong’059 further teaches using blue, green, and yellow colored materials for the color matching system (paragraphs 57-62).
KR 10-2006-0109797 discloses a system for preparing a customized cosmetic by mixing a base product and a skin improvement product, wherein the cosmetic may be in the form of a lotion or cream (Abstract and 1st two paragraphs of page 2).
Regarding claims 1-3, 10, and 12, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the teachings of Jeong by incorporating white, red, green, and black pigments into the manufacturing device in addition to the yellow and pink pigments disclosed by Jeong so that the device is capable of mixing white, yellow, red, and black pigments, because Jeong’059 teaches that it is known to use yellow, read, and black pigments in a white base in a color matching system for generating a custom makeup composition, such that the skilled artisan reasonably would have expected that these pigments could be used for matching skin color in the Jeong color matching system. Such a modification is merely the combining of prior art elements according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143. The Office notes that while claim 1 refers to an algorithmic repeated color matching process conducted by deriving values for MW, MY, MR, MB, and MK using the recited inverse matrix, and claim 10 recites ranges for mixing ratios of the pigments and bulking agent, the recited color matching process merely involves mixing the white, yellow, red, and black pigments and bulking agents via the mix module in ratios that will result in a match to the skin color of the person subjected to the skin measurement. The color mixing system of Jeong and Jeong’059 as combined above, however, also matches the color of the skin of a subject by mixing white, yellow, red, and black pigments with bulking agents via a mix module. Therefore, the modified color mixing system of the prior art as discussed above is viewed as reading on the color matching process recited by the claims. Additionally, the present claims are product claims and not process claims. Therefore, the foregoing recitations are viewed as intended uses of the claimed system. The Jeong color mixing system comprises the same components as the claimed system as discussed above and is intended for the same purpose of producing a mixed pigment formulation that matches the skin as discussed above, and is therefore viewed as capable of being used to conduct a color matching process with mixing ratios of the raw pigments derived from Equation 1 of claim 1, and to use mixing ratios within the ranges of claim 10. Additionally, it is well within the purview of the skilled artisan in the field of cosmetics to select mixing ratios of different colored pigments that will result in a match to a selected skin color. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It further would have been prima facie obvious to incorporate alumina, talc, or sericite bulking agents into the pigment formulation as recited by claims 1 and 12, because Jeong’059 teaches that doing so will increase the spectral intensity of a desired wavelength range, which the skilled artisan would recognize would improve the ability to generate a pigment formulation having the desired skin color matching properties. While claim 1 distinguishes between a raw bulking agent and a standard bulking agent, paragraphs 44 and 46 of the present specification as published define both of these terms as referring to an additive that is mixed in to prevent agglomeration of the raw pigments, and paragraph 47 expressly teaches that both terms may refer to the same bulking agent. Therefore, the agents taught by Jeong’059 are viewed as reading on both the standard and raw bulking agents of the claims.
It further would have been prima facie obvious to formulate the customized cosmetic composition in the form of a cream as recited by claim 1, because KR 10-2006-0109797 expressly teaches that customized cosmetics may be in the form of a cream or lotion, such that the skilled artisan reasonably would have expected that the Jeong composition also could be formulated as a cream or lotion. Such a modification is merely the combining of prior art elements according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143.
It further would have been prima facie obvious repeat the color matching process as recited by claim 1 since the skilled artisan would have recognized an advantage to doing so in order to obtain a closer match to the skin color (see Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed Cir. 2009)(holding that the iterative repeating of steps in a method claim was obvious even though the prior art did not disclose the reiteration, because the use of common sense would allow one to appreciate the value of the reiteration)).
Response to Applicant’s Arguments
Applicant argues that the cited references do not teach or suggest the calculation unit adapted for determining the mixing ratio of the pigment formulations by employing Equation 1 as recited by claim 1. Jeong is said to at best disclose the mixing of raw pigments, using a system and method that may be cumbersome and that color matching results may vary each time due to variances in the raw pigments, while the claimed system solves these problems, and Jeong’059 and KR20160117074A also do not fairly suggest the use of standard pigments or the inverse matrix of formula 1.
In response, the patentability of a system claim is determined by the structure of the system as recited by the claim. The Jeong system also comprises a control unit for recommending a customized cosmetic based upon the result obtained from a core module, and wherein the customized cosmetic is formed by mixing together pigments in a predefined mixing ratio to form a pigment formulation that is color matched to the skin as discussed in the rejection and as recited by present claim 1, and the rejection proposes to modify the Jeong system by incorporating a bulking agent as disclosed by Jeong ‘059. Therefore, the system of the prior art as modified by the rejection is viewed as reading on the structure of the system as recited by the claims and as possessing the same pigments and bulking agent which are mixed in a selected ratio in order to color match the skin. While Applicant argues that the method described by Jeong may be cumbersome in the color matching method and results which may vary each time due to variances in the raw pigments, Applicant has not pointed to any structural element of the claimed system which is responsible for reducing variances in the raw pigments and which is not possessed by the prior art system as modified by the rejection.
Applicant further argues that the calculation unit recited by claim 1 as amended is a structural limitation, and that the cited art does not teach or suggest a calculation unit.
In response, and as discussed in the revised rejection supra, Jeong does in fact disclose that its system comprises an analysis unit and a storage unit which determines a mixing ratio of the pigment formulations for color matching, and which therefore corresponds to the calculation unit recited by the claim.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached M-F 9AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/ Quality Assurance Specialist , Art Unit 1600