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 .
Status of Claims
Claims 1-5 and 8-9 are pending. Claims 6-7 are canceled. Claims 1, 3 and 4 are amended.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 3-4 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the joint inventor regards as the invention is withdrawn.
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 1-5 and 8 under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (4/8/2010)(7/19/2023 IDS) is withdrawn.
In light of the amendments to the claims the rejection of claims 6-7 under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (4/8/2010)(7/19/2023 IDS) as applied to claims 1-5 and 8 and further in view of De Luigi WO 2018/078561 (10/27/2016) is withdrawn.
In light of the amendments to the claims the rejection of claim 9 under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (4/8/2010)(7/19/2023 IDS) as applied to claims 1-5 and 8 and further in view of Hishinuma et al. JP 2007/186437 (7/26/2007)(7/19/2023 IDS) is withdrawn.
New Rejections
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (published 4/8/2010)(7/19/2023 IDS) in view of JP 6277205B2 (published 3/24/2016)(“JP”).
Shogen et al. (Shogen) teaches a powder solid cosmetic and a method of making the powder solid cosmetic. The method involves filling a container with a cosmetic base that on its surface has at least two repeating units having at least one uneven portion with a difference in level to form a three dimensional pattern of protrusions and depressions. (See Abstract and [0022] to [0027]).
The container that is filled is referred to in Shogen as the thin shallow container and it reads on the tray in instant claim 1. (See [0006]). The powder solid cosmetic in the saucer reads on the solid cosmetic which is held in a tray in instant claim 1. The three dimensional pattern of protrusions and depressions is referred to as the three dimensional pattern having at least one uneven part with a difference in level in Shogen and it reads on the region of fine recesses and protrusions with differences in height that include inclined surfaces being formed on an upper surface of the solid cosmetic as called for in instant claim 1.
Shogen teaches that the difference in height between the deepest part of the depressions and the top part of the protrusions in the three dimensional pattern is 0.5 mm or more. (See [0022] and claim 2). 0.5 mm overlaps with the 0.1 to 10 mm called for in instant claim 1. Shogen teaches that its powdered solid cosmetic composition exhibits a high design appearance by using a known method such as compression molding so that the surface has a three-dimension pattern with a height difference. (See [0022]). Shogen teaches that it is preferable that it can be performed. Additionally, this 0.5 mm height difference contributes to the maximum benefit of the impact resistance effect of the present invention. (See [0022]).
The powder solid cosmetic has glass flakes that has an average particle diameter of 20 to 60 micrometers and the glass flakes are adhered to the surface of the three dimensional pattern. (See claim 3). This reads on the colorant with a primary particle diameter that is added to a portion of the upper surface of the solid cosmetic that includes at least a portion of the region of fine recess and protrusions called for in instant claim 1.
The attached glass flakes may be mixed with bright pigments such as general pearl pigments, and the glass flakes can be titanium dioxide coated glass flakes. The glass flakes can also be boron nitride coated glass flakes (9-25 micrometers for boron nitride and glass 20 -60 micrometers which together 29-85 micrometers falls within the 10 to100 micrometers called for in instant claim 1 for the colorant. (See claim 1). Glitter powder is also taught to be useable as well as composite powders. (See [0019, 0022-0025, 0027] This reads on the colorant being a glossy powder as called for in instant claim 2. The colorant is sprayed and adhered which reads on dispersive adhesion called for in instant claim 1. (See Preparation Method (A through E in second to last paragraph).
As seen in the Preparation Method (A through E in second to last paragraph) the solid cosmetic has an upper surface which is formed to be flat and the region of protrusions and depressions is formed on the upper surface as called for in instant claim 5. This region of protrusions and depressions is formed on the upper surface by compression molding. This forms a raised portion having a predetermined pattern (the pattern on the mold) on the upper surface of the solid cosmetic as called for in instant claim 3. This also forms a recessed portion having a predetermined pattern (the pattern on the mold) on the upper surface of the solid cosmetic as called for in instant claim 4.
This preparation method reads on the method in claim 8. Although Shogen does not teach the steps in the exact order they are laid out in claim 8 (the tray is filled with the solid cosmetic before the pattern is made with the compression molding in Shogen), it is prima facie obvious when the prior art steps are disclosed in any order. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.)
Shogen does not teach wherein the upper surface of the solid cosmetic is sectioned into a plurality of regions of different colors. This deficiency is made up for with the teachings of JP
JP teaches a cosmetic palette that includes a flat surface containing at least four cosmetic products in a side-by-side arrangement. (See JP [0003] on page 3). JP teaches that some of the most sophisticated make-up styles are achieved by placing various shades of cosmetic products on the skin. (See [0003] on page 3). JP teaches that in order for cosmetic consumers to be able to achieve a specific make-up style, multiple color cosmetic products can be arranged side by side as a palette of colors and solid in a single package. Even with only a few basic colors, the number of shades and tone gradations that can be realized is enormous. (See [0003] on page 3). JP teaches that the cosmetics may be of the same type, differing only in color or shade. (See [0011] on page 4). JP teaches that its product can accommodate 20 different colors or shades of a single powder foundation product. (See [0011] on page 4).
JP thus teaches a solid cosmetic that has multiple regions that have a different color solid cosmetic as called for in instant claim 1. (See [0003] on page 3).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Shogen composition to follow the Shogen preparation methods to pour the solid cosmetic into a tray to form a flat upper surface and then use compression molding to form a region of protrusions and depressions with a difference in height of 0.5 mm or more on the upper surface in order to take advantage of the high design appearance and maximize the benefit of the impact resistance effect as taught by Shogen. A boron nitride coated glass flakes are then spray adhered to the region of protrusions and depressions to form a glossy powder which will give the cosmetic gloss and transparency as well as aesthetic appeal as taught by Shogen.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Shogen composition with a region of protrusions and depressions on the upper surface to make the composition have different colors side by side as a palette of colors as taught by JP in order to have a multiple color cosmetic product that can be arranged side by side as a palette of colors and sold in a single package for users to be able to achieve a sophisticated make-up style as taught by JP.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (published 4/8/2010)(7/19/2023 IDS) in view of JP 6277205B2 (published 3/24/2016)(“JP”) as applied to claims 1-2, 5 and 8 and further in view of JP 2017/171615 (published 9/28/2017)(“JP 2017”).
Shogen in view of JP teaches a method of making a solid cosmetic but does not teach making the region of protrusions and depressions on a raised portion of the cosmetic. This deficiency is made up with the teachings of JP 2017.
JP 2017 teaches a solid cosmetic with a convex shape. (See Abstract and Figure 4). This reads on a raised portion on the upper surface of the cosmetic as called for in instant claim 3. JP 2017 teaches that the convex shape increases the stability of the cosmetic over time by increasing its impact resistance. (See Abstract and page 1 [0005]).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Shogen in view of JP composition of a solid cosmetic to make the solid cosmetic a convex shape and to place the region of protrusions and depressions on the upper surface of this convex shape in order to have a cosmetic with increased stability over time by increasing impact resistance as taught by JP 2017.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (published 4/8/2010)(7/19/2023 IDS) in view of JP 6277205B2 (published 3/24/2016)(“JP”) and JP 2017/171615 (published 9/28/2017)(“JP 2017”) as applied to claims 1-3, 5 and 8 and still further in view of Eng US 6,058,942 (issued 5/9/2000).
Shogen in view of JP and JP 2017 teaches a method of making a solid cosmetic but does not teach making the region of protrusions and depressions on a recessed portion of the cosmetic. This deficiency is made up with the teachings of Eng.
Eng teaches a solid cosmetic product which is shaped to have a base and a top projecting from the base. (See Eng claim 9). The base is close to a floor of the container. (See Eng claim 9). This reads on a recessed portion as called for in instant claim 4. Eng teaches that it will be appreciated by those skilled in the art that the molds may be used to make any number of different shapes based on those that are desired by the formulator. (See col. 4, lines 10-21).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Shogen in view of JP composition of a solid cosmetic to make the solid cosmetic have a base and to place the region of protrusions and depressions on the base in order to have a cosmetic with a base with a region of protrusions and depressions as well as a cosmetic with increased stability over time by increasing impact resistance as taught by JP 2017.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shogen et al. JP 2010/077043 (published 4/8/2010)(7/19/2023 IDS) in view of JP 6277205B2 (published 3/24/2016)(“JP”) as applied to claims 1-2, 5 and 8 and further in view of Hishinuma et al. JP 2007/186437 (published 7/26/2007)(7/19/2023 IDS).
Shogen in view of JP teaches a method of making a solid cosmetic but does not teach dispersing a composition that contains a colorant via a mask having an opening that corresponds to a range onto which the colorant is to be dispersively adhered. This deficiency is made up with the teachings of Hishinuma et al.
Hishinuma et al. teach a method of making a cosmetic with a glossy powder that is sprayed to be adhered to the patterned solid cosmetic. (See [0029-30]). The spray nozzle (See 11 in Figure 4) and direction are selected such that they correspond to the surface area of the solid cosmetic. (See Figure 4). This reads on the composition being dispersed onto the upper surface of the solid cosmetic via a mask having an opening that corresponds to a range onto which the colorant is to be dispersively adhered as called for in instant claim 9.
Hishinuma teaches that the resulting differing gloss strengths on the uneven stamped surface results in an increased three-dimensional effect, resulting in a more excellent eye-catching effect. (See [0030]).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Shogen in view of JP composition of a solid cosmetic with a region of protrusions and depressions on the upper surface and sections of different colors to select a spray nozzle and direction that corresponds to the surface area of the stamped solid cosmetic in order to have a resulting differing gloss strengths on the uneven stamped surface providing an increased three-dimensional effect and more excellent eye-catching effect as taught by Hishinuma.
Response to Remarks
The comments provided on June 12, 2025 have been fully reviewed and are found to be only partly persuasive.
Applicants note the amendments of the claims and request the withdrawal of the 112 rejections to which these canceled claims were subject. In light of the amendments to the claims the rejections have been withdrawn above.
Applicants argue that the cited Shogen, De Luigi and Hishinuma references do not teach or suggest the presently claimed solid cosmetic, nor do these references teach or suggest the advantageous effects of the presently claimed solid cosmetic. The instant claims provide a solid cosmetic in which the upper surface is sectioned into a plurality of regions, the solid cosmetic is colored to be a different color in each of the regions, and a region of fine recesses and protrusions is provided over the plurality of regions resulting in superior visual product appeal.
Shogen does not teach the region of fine recesses and protrusions called for in the instant claims. Applicants argue that Shogen notes the height difference is for the three-dimensional pattern of the solid cosmetic product corresponds to the “predetermined pattern” of present claims 3 and 4, not the region of fine recesses and protrusions. Thus, Shogen does not teach or suggest a solid cosmetic having a region of fine recesses and protrusions.
The combination of Shogen and De Luigi would not lead to the present claims. De Luigi is directed to a process for producing a decorated cosmetic composition in solid form. Even if a person of ordinary skill in the art were to use the process of De Luigi to prepare a decorated cosmetic having different colors, this combination would not lead to the present claims because Shogen does not teach a solid cosmetic having a region of fine recesses and protrusions.
Additionally, Shogen and De Luigi do not teach the advantageous effects of the present claims, and such an effect is unexpected by those skilled in the art. Thus, a person of skill in the art in reading Shogen and De Luigi and would not arrive at the presently claimed solid cosmetic. Hishinuma does not cure the deficiencies of Shogen.
In light of the amendments to the claims the rejection is withdrawn above.
Applicants’ argument that Shogen does not teach the region of fine recesses and protrusions called for in the instant claims is unpersuasive because Shogen teaches that its powdered solid cosmetic composition exhibits a high design appearance by using a known method such as compression molding so that the surface has a three-dimension pattern with a height difference.
Applicants argument that Shogen noting the height difference is for the three-dimensional pattern of the solid cosmetic product corresponds to the “predetermined pattern”, not the region of fine recesses and protrusions is not found to be persuasive because Shogen teaches that its powdered solid cosmetic composition exhibits a high design appearance by using a known method such as compression molding so that the surface has a three-dimension pattern with a height difference. Shogen teaches that it is preferable that it can be performed. Additionally, this 0.5 mm height difference contributes to the maximum benefit of the impact resistance effect of the present invention. Shogen teaches performing compression molding to form this region of protrusions and depressions on the upper surface of the cosmetic. This forms a raised portion having a predetermined pattern (the pattern on the mold) on the upper surface of the solid cosmetic as called for in instant claim 3.
Applicants’ argument that Shogen does not teach the advantageous effects of the present claims, and such an effect is unexpected by those skilled in the art is found to be unpersuasive. Shogen teaches that its powdered solid cosmetic composition exhibits a high design appearance by using a known method such as compression molding so that the surface has a three-dimension pattern with a height difference. Shogen teaches that it is preferable that it can be performed. Additionally, this 0.5 mm height difference contributes to the maximum benefit of the impact resistance effect of the Shogen cosmetic composition. Shogen expressly teaches and recognizes the advantages of its cosmetic composition and the design formed by compression molding specifically in the form of the advantages of appealing design and impact resistance.
JP teaches that having different colors side by side as a palette of colors allows users to be able to achieve a sophisticated make-up style and multiple colors of make-up can be solid in a single package. Since both Shogen and JP teach numerous advantages of their cosmetics, the advantages are not unexpected.
The remainder of Applicants’ argument are moot in view of the new rejections applied above.
Conclusion
Claims 1-5 and 8-9 are rejected.
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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619