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 .
Response for Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-11) in the reply filed on 6/4/2025 is acknowledged.
Election was made without traverse in the reply filed on 6/4/2025.
Therefore, claims 1-11 will be examined and claims 12-15 will be withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group.
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 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.
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.
Claims 1, 2, 7-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McAllister (US Pub No. 2016/0213908).
Regarding claim 1, McAllister discloses (Figure 2A-2B) a cosmetic process for a keratin substance such as skin and lips (Paragraph 0009), comprising the steps of: applying onto the keratin substance at least one composition comprising at least one coloring agent (dye as disclosed in Paragraph 0111); and applying onto the keratin substance, to which the composition has been applied, a microneedle sheet (200) (Figure 2A-2B) comprising a substrate sheet (216) and a plurality of microneedles (214) on the substrate sheet such that the microneedles are capable of penetrating into the keratin substance (Paragraph 0111).
Regarding claim 2, wherein the microneedle has a height of from 10 to 500 microns (Paragraph 0030).
Regarding claim 7, wherein the microneedles are capable of penetrating into the keratin substrate with repetitions (Paragraphs 0098-0099) [Fully capable in doing this since McAllister discloses all of the structural elements in the same arrangement as claimed].
Regarding claim 8, wherein the repetitions are based on the vibrating or tapping of the microneedle sheet (Paragraphs 0098-0099) [Fully capable in doing this since McAllister discloses all of the structural elements in the same arrangement as claimed].
Regarding claim 9, wherein the coloring agent is selected from dyes (Paragraph 0111).
Regarding claim 11, wherein the microneedle sheet is applied onto the keratin substance without a step of drying the composition on the keratin substance (Paragraph 0111).
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.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over McAllister (US Pub No. 2016/0213908) as applied to claim 1 above, and further in view of Ronnander (US Pub No. 2020/0206489).
Regarding claim 3, McAllister discloses the invention of claim 1 above expect for wherein the microneedle is in the shape of a pyramid.
Ronnander, in the analogous art of microneedles used on skin, teaches (Figure 1) microneedles in the shape of a pyramid (Paragraph 0007). It would have been an obvious matter of design choice to make the microneedles of McAllister in the shape of a pyramid as taught by Ronnander since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1966).
Regarding claim 4, McAllister modified by Ronnander discloses the invention of claim 3 above expect for wherein the base of the microneedle has a width of from 10 to 500 microns.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of McAllister modified by Ronnander to have the base of the microneedle to have a width of from 10 to 500 microns since the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
Regarding claim 5, McAllister modified by Ronnander discloses the invention of claim 3 above expect for wherein the ratio of (the height of the pyramid)/(the width of the base of the pyramid) of the microneedle is 1 or more.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of McAllister modified by Ronnander to have the ratio of (the height of the pyramid)/(the width of the base of the pyramid) of the microneedle to be 1 or more since the only difference between the prior art and the claims is a recitation of relative ratio of the claimed device and a device having the claimed relative ratio would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
Regarding claim 6, McAllister discloses the invention of claim 1 above expect for wherein the microneedles are made from inorganic materials.
Ronnander, in the analogous art of microneedles used on skin, teaches (Figure 1) microneedles made from inorganic materials such as silicon or metal (Paragraph 0007). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the microneedles of McAllister into inorganic materials such as silicon or metal as taught by Ronnander, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over McAllister (US Pub No. 2016/0213908) as applied to claim 1 above.
Regarding claim 10, McAllister discloses the invention of claim 1 above expect for wherein the amount of the coloring agent is from 0.001% to 20% by weight relative to the total weight of the composition.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of McAllister to have the amount of the coloring agent to be from 0.001% to 20% by weight relative to the total weight of the composition since the only difference between the prior art and the claims is a recitation of relative range of amount of the claimed device and a device having the claimed relative range of amount would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAJID JAMIALAHMADI whose telephone number is (571) 270-0172. The examiner can normally be reached on Monday-Friday 7am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAJID JAMIALAHMADI/Primary Examiner, Art Unit 3771