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 the Claims
Claims 12-16 remain withdrawn. New claims 22 and 23 have been added. Claims 2, 8, and 10 have been canceled. Accordingly, claims 1, 3-7, 9, and 11 and 17-23 are pending and under current examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/14/2026 has been considered by the examiner.
Response to Arguments and Withdrawn Rejections
Applicant’s arguments filed 1/22/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows. All rejections of claims 2 and 10 have been withdrawn in view of Applicant’s cancelation of these claims.
Applicant notes that a new combination of claim limitations is presented in claim 1 as amended and includes limitations previously addressed in claims 2 and 8 as well as colorant content quantitative limitations. The previously issued rejections do not address the particular combination of elements and, accordingly, the following rejections are withdrawn in view of the claim amendments filed 1/22/2026: the rejection of claims 1, 4-6, 9-11, and 17-19 under 35 U.S.C. 103 as being obvious of Fukui and the rejection of claims 1-7, 9-11, and 17-21 under 35 U.S.C. 102(a)(1) as being anticipated by Numata. Applicant’s argument to this effect is persuasive, and new grounds of rejection necessitated by amendment are presented below.
Regarding Applicant’s statement at the bottom of page 8 of Remarks that the claimed range is outside Numata’s preferred range of pigment, this argument is not persuasive to overcome the applicability of Numata since a preferred range is not considered a teaching away from a non-preferred or broader disclosed acceptable range. Numata is not limited to a reading of its preferred pigment amount disclosed in [0057] particularly since its examples include values of colorant within the claimed range.
Otherwise regarding Applicant’s delineation of new claims and/or new claim language, these are addressed below by the new grounds of rejection necessitated by amendment.
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 depends from claim 2 which has now been canceled. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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, 4-7, 9, 11, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over JP2018058775A (hereafter “Numata”, provided by Applicant in IDS dated 12/5/2022) in view of KR2010090404A (Lim et al., “Lim”, newly cited, translation enclosed).
The claims are drawn to a cosmetic composition comprising a solvent A; a solvent B; a polymer C; a colorant,; and a dispersive polymer D, as further specified in the claims. The solvent A may be ethanol, n-propanol, or isopropanol or a combination thereof. Solvent B is present in an amount of 5 to 40% by mass and is “compatible” with solvent A. Solvent B has specified boiling point and solubility parameters further specified in the claims. Polymer C is soluble in solvent A and insoluble in solvent B. The colorant is dispersed within dispersive polymer D and is present in an amount of 3% to 15% by mass of the total formulation. The ratio of solvent A/solvent B is between 1 and 15. See also Ra and Hansen solubility parameter equation and components thereof as recited in equation (1) of claim 1; claim 1 is considered to recite meaningful limitations beyond generally linking the use of a judicial exception to a particular technological environment, and the equation (1) is considered to describe a characteristic of the solvent B component of claim 1.
Regarding claims 1 and 3, Numata teaches a composition for application to human hair. The composition is a mascara formulation (limitation of claims 11 and 17) comprising 86.7% ethanol (solvent A as in instant claim 1; limitation of claim 7 also); 5.0% by mass isododecane (solvent B as in claim 1; has a boiling point of 177 degrees Celsius and Hansen solubility parameter Ra of 45; limitation of claims 5 and 19), 4.2% by mass methacryloyloxyethylcarboxybetaine-alkyl methacrylate copolymer which is Yukaformer SM made by Mitsubishi Chemical, and 2.0% by mass Yellow No. 205 (corresponds to polymer C as in claim 1 and meets claims 4, 9, 18, and 21). The Yellow No. 205 corresponds to the colorant of the instant invention and is a dispersion of 10% Yellow No. 205 (limitation of claim 1 as amended), 21% methacryloyloxyethylcarboxybetaine-alkyl methacrylate copolymer (corresponds to dispersive polymer D of the instant invention), and ethanol. The ratio of solvent A to solvent B is within the claimed range of 1 to 15 as in claim 1; the equation (1) as in claim 1 appears met by the inherent characteristics of the components addressed above; the solvent B is “compatible” with solvent A and polymer C soluble in solvent A and insoluble in solvent B as in claim 1; and the claimed ratio as in claim 20 of polymer C to polymer D appears to meet and/or overlap the amounts disclosed. Further regarding claim 6 and the amounts of other components addressed above, the content of water would be 5% by mass or less as instantly recited.
Numata teaches each and every formulation component as outlined above, however it is noted that Numata’s example cited above includes a colorant in an amount of 2% by mass, which is outside the newly recited range of 3 to 15% as in claim 1. Numata as a whole specifies that the range of pigment is preferably 1 to 2.5% by mass (see bottom of “pigment (c)” section of translation), however Numata does not exclude alternate amounts. Numata is not considered limited to preferred embodiments. Nevertheless, there is insufficient motivation in Numata for increasing the amount of colorant to arrive at the claimed invention.
Regarding claim 1 and further regarding new claim 22, Lim cures this deficiency. Lim teaches a transient hair coloring composition to improve persistence without staining skin or cloth. Lim’s formulation specifies that the hair coloring composition includes a lower alcohol in an amount of 10 to 50% by weight, a dispersing agent, and 0.0 to 10% of an organic pigment, as further specified in the claims. See abstract, in particular.
Numata and Lim are both directed to hair color formulations which include dispersed components and alcoholic solvent. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to use Lim’s colorant in Numata’s product and/or to increase the colorant from Numata’s embodied and/or preferred amount of 1 to 2.5% to a value within Lim’s range of 0 to 10%, with a reasonable expectation of success. One would have been motivated to do so in order to achieve a greater color concentration and color payload effect upon application to the hair. Moreover, it is noted that Numata’s invention includes all claimed composition components and further is intended to be used for the very same purpose as the claimed composition.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over JP2018058775A (hereafter “Numata”, provided by Applicant in IDS dated 12/5/2022) in view of KR2010090404A (Lim et al., “Lim”, newly cited, translation enclosed) as applied to claims 1, 4-7, 9, 11, and 17-22 above, and further in view of US 2015/0190333A1 (“Tanimura”, newly cited).
The teachings of Numata and Lim have been delineated above. Neither of these quantitatively describes the viscosity of their hair products. Tanimura cures this deficiency.
Tanimura teaches a hair cosmetic composition comprising a copolymer in water or another solvent which may be a lower alcohol or polyol (see abstract, in particular; see also [0037]); the formulations may include additional functional components including a dispersant, a thickening agent, an ultraviolet absorber, an antioxidant, an antiseptic, a colored dye, a dye fixer, and a propellant for instance (see [0039]). Tanimura specifies that the viscosity of the hair cosmetic composition is preferably 0.1 mPa s or more and 100 mPa s or less, preferably 20 mPa s or less thereby causing adequate stickiness and desirable ability to for a mist for smooth application to the hair without clogging a sprayer device (see [0042]).
Numata, Lim, and Tanimura are all directed to hair cosmetic formulations. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to ensure the viscosity of the product of Numata and Lim was within the range suggested by Tanimura, also applicable to the hair for the very same purpose. One would have been motivated to do so and to perform necessary viscosity adjustments in order to do so, if needed, in order to ensure the desirable applicability and properties for coating hair as quantified and suggested by Tanimura to be facilitated based on the viscosity characteristic.
Conclusion
No claim is allowed.
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 AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
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