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 .
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 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over LaHood et al. (US 2008/0053476) in view of Brown et al. (US 2008/0152681) and Abergel (WO 2006/128737).
LaHood et al. disclose a process for making up, a process for manufacturing, an area of human keratin materials using a makeup device comprising a substrate (28) having at least one transfer surface, and a coat of cosmetic coloring ink (22; paragraph 18 see remarks section) borne by the transfer surface regarding the limitation “obtained by printing, using at least one printer” “digitally-printed”, the patentability of a product does not depend on its method of production. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). A cosmetic coating (22 (second cosmetic)), the cosmetic coating being borne by the transfer surface, the cosmetic coating being at least partially superposed on the coat of ink and laying above the coat of ink, the coat of cosmetic coloring ink is directly disposed onto the transfer surface and the cosmetic coating is spaced apart from the transfer surface with portion of the coat of cosmetic coloring ink position therebetween (see Figure 4), the process comprising the step of simultaneously transferring onto the area to be made up all or part of the coat of ink and all or part of the cosmetic coating superposed thereon (paragraph 8). LaHood et al. does not disclose the cosmetic coating of a cosmetic composition comprising an oil or the cosmetic coloring ink has a viscosity in a range from 1 to 10 millipascal-second at 25 degrees Celsius. However, one having ordinary skill in the art would find the parameters of the viscosity to be deemed matters of design choice, will within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results as evidence by Smith et al. that teaches a cosmetic/personal care composition with a viscosity within the claimed range (paragraph 47). Brown et al. teaches applying a colored base coating of cosmetic composition comprising a non-volatile oil (e.g. dimethyl polysiloxane; see table 3) onto an area of keratin material to be made up before applying a pigmented ink (see Fig. 5 and [0055]), the cosmetic composition being a foundation and forming a colored base coating on the keratin material (see [0066]-[0067], [0076], [0080]). Brown additionally discloses wherein the composition can or cannot comprise a pigment (see Table 3) can be used with or without a cosmetic colored top coat (see Figs. 4 and 5); is an emulsion (see Table 3); and also comprising at least one cosmetic additive chosen from film-forming polymers, waxes, pasty compounds, thickeners, surfactants, fragrances, preserving agents, sunscreens, fillers, dyestuffs, proteins, vitamins, provitamins, moisturizers, ceramides and pH regulators (see [0065], [0070], [0073], [0074]). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the method of LaHood et al. to include Brown’s teaching of applying a cosmetic composition (foundation) comprising an oil as the cosmetic coating, as such modification would provide improved smoothing and wrinkle reduction of the skin, and result in improved make up application (see Brown, abstract, citations above and Figs. 4-5).
Further the combination discloses ink and/or the cosmetic coating not being entirely dry at the time of transfer (i.e. to allow blending; paragraph 32). The coat of coloring ink being printed in a predefined pattern (paragraph 18). The printing of the coat of ink being performed on the transfer surface already partly covered with the cosmetic coating (see Figure 4). The cosmetic coating comprising a composition comprising an oil in an amount by mass ranging from 5% to 95% and preferably ranging from 10% to 80% relative to the total mass of the composition (see Brown et al). The composition also comprising at least one cosmetic additive chosen from film-forming polymers, waxes, pasty compounds, thickeners, surfactants, fragrances, preserving agents, sunscreens, fillers, dyestuffs, proteins, vitamins, provitamins, moisturizers, ceramides and pH regulators (see [0065], [0070], [0073], [0074]). The ink being aqueous; the cosmetic coating being colored (see [0066]-[0067], [0076], [0080]). The transfer surface being defined by all or part of: the outer surface of an applicator roller, the surface of an applicator pad, an element in sheet form, a patch, the surface of a porous foam, a sponge, a wipe (see Figure 1). The substrate comprising an indication regarding the nature of the keratin materials intended to be made up with the coloring ink and/or the substrate comprising at least one translucent or transparent area (see Figure 5; paragraph 23). A plurality of different devices, the devices differing by the chemical nature of the coat of coloring ink they bear and/or by the pattern thereby formed and/or by the cosmetic coating deposited on the transfer surface and/or by the form of the transfer surface intended to engage with the keratin materials (paragraph 18). Furthermore, LaHood et al. does not disclose printing being conducted by a digital printer. Abergel teaches a device for transfer to the user’s skin (page 14). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the ink be printed onto the substrate of LaHood et al. by a digital printer as taught by Abergel since Abergel lists screen printing and digital printing as known alternatives to coating a carrier with a cosmetic.
Response to Arguments
Applicant's arguments filed 8/1/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that LaHood is silent to a cosmetic coloring comprising a water-soluble dye is not persuasive. LaHood discloses in paragraph 18, “at least one cosmetic material 22 chosen from a group including a foundation having highlights and shadows, a concealer, a rouge or a blush, an eye-shadow 24, or a lip color 26. It should be understood that each of the cosmetic materials 22 includes a specific composition having several different ingredients, and that each of the cosmetic materials 22 is non-homogenous relative to the other cosmetic materials 22, regardless of the materials utilized in each composition. It is also contemplated that the cosmetic materials 22 may also include several different colors of a face paint, such as would be used for military camouflage, hunting camouflage, Halloween make-up, or theatrical make-up”. The use of water-soluble dyes in cosmetic materials is a common practice, as evidenced by patents (US 7,833,541; 7,030,985; 4,066,595) which claim their use in a variety of cosmetic formulations. These patents demonstrate that the cosmetic industry has long incorporated water-soluble dyes for specific functions, such as enabling visual confirmation of product application and providing color to aqueous-based formulations. Therefore; since LaHood discloses a wide known area of cosmetic materials it would have been well known in the art to have the cosmetic materials of LaHood contain a water-soluble dye.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
8/25/2025