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 .
DETAILED ACTION
The Applicant’s reply filed on 11/24/25 is acknowledged. Claims 1-17 are pending. Claims 16 and 17 are new. Claims 2, 4, and 6-8 have been amended.
Claims 3, 9-11 and 17 are withdrawn.
Claims 1, 2, 4-8 and 12-16 are under consideration to the extent that the additive comprises the elected species sodium glycerophosphate.
This action contains new grounds of rejection not necessitated by amendment, accordingly this action is NON-FINAL.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 11/24/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Objections and Rejections Withdrawn
The objection to the abstract is withdrawn in view of the amended abstract.
The rejection of Claims 2 and 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claims.
The rejection of Claims 1, 2, 4, 6, 7 and 12-15 under 35 U.S.C. 103 as being unpatentable over Goldlum et al. (US 2014/0086861; cited in IDS) is withdrawn in view of Applicant’s arguments.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 2, lines 7 and 8 include substituent definitions for n, R, and R2, which are not present in formula (II).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 4-8 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Goldlum et al. (US 2014/0086861; cited in IDS) in view of Lambridis et al. (US 2015/0096581).
Goldlum et al. teach a pigment composition comprising: a pigment, an additive of the following formula (I), to a method for preparation thereof, and to the cosmetic uses thereof.
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Goldlum et al. teach a solid powder comprising a solid phase comprising at least fillers and pigments treated with an additive (e.g. paragraphs 0078, 0081, 0104; Example 8; Claim 1). Goldlum et al. teach that the additive may be sodium glycerophosphate and the pigment may be iron oxides (e.g. paragraphs 0066 and 0080; Claims 5 and 7; Examples). While there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Goldlum et al. teach that the composition is a “solid foundation” used with an applicator moistened with water (e.g. Example 8), but do not explicitly recite that the composition is in the form of a “compact powder”. This is made up for by the teachings of Lambridis et al.
Lambridis et al. teach a cosmetic product including a pressed cosmetic powder cake (e.g. abstract). Lambridis et al. teach that the cake comprises one or more wells of varying shape (i.e. 3D relief patterns on the surface) (e.g. paragraphs 0008-0009; Figures). Lambridis et al. teach that pressed powder products (i.e. compact powder), such as face powder, eye shadow, blushes or the like have effectively replaced conventional loose powder products (e.g. paragraph 0008). Lambridis et al. teach that to make the water and powder mixing task easier for the user when using a brush or sponger application, the pressed powder cake that is formed with a depression in the pressed powder cake to receive a liquid or other material containing liquid (e.g. paragraph 0008). Lambridis et al. further teach the inclusion of powders, including talc and silica (i.e. fillers), which may be platelets or spherical (e.g. paragraph 0011).
Regarding Claims 1, 2, 5, 7, 8, 12, 13 and 16, it would have been obvious to one of ordinary skill in the art at the time of filing to include platelet or spherical filler particles, and to include the one or more wells of Lambridis et al. in the solid cosmetic of Goldlum et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Goldlum et al. exemplify a solid foundation comprising talc, and teach that that the solid foundation is used with an applicator moistened with water (e.g. Example 8). It would have been obvious to one of ordinary skill in the art at the time of filing to include the wells of Lambridis et al. in order to “make the water and powder mixing task easier for the user when using a brush or sponger application”, as disclosed by Lambridis. In addition, it would have been obvious to include either platelet or spherical talc as they are both taught as suitable and Goldlum are silent as to the particle shape.
Regarding the limitation “said composition being capable of being obtained by a process comprising the following steps…” appears to be a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In the instant case, the product of Goldlum et al. may be in the final form of an eye shadow, blush, foundation, and powder (e.g. paragraph 0104; Example 8) and Lambridis et al. as a pressed cosmetic powder cake (e.g. claim 1). Therefore, the composition is understood as being “capable of being obtained” by the recited process. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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).
Regarding Claim 4, Goldlum et al. exemplify a solid composition comprising 53.6 wt% of pigment (e.g. Example 8).
Regarding Claim 6, Goldlum et al. further teach the inclusion of xanthan gum (e.g. paragraph 0084, Examples, Claim 13), which as evidenced by the Specification on page 20 is a suspending agent.
Regarding Claims 14 and 15, Goldlum et al. teach that the composition may be in the final form of an eye shadow, blush, foundation, or powder (e.g. paragraph 0104; Example 8).
Response to Arguments
Applicant’s arguments with respect to the rejection(s) of claim(s) 1, 2, 4, 6, 7 and 12-15 under 35 U.S.C. 103 as being unpatentable over Goldlum et al. (US 2014/0086861; cited in IDS) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Goldlum et al. (US 2014/0086861; cited in IDS) in view of Lambridis et al. (US 2015/0096581).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619