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 6/16/26 is acknowledged. Claims 1-17 are pending. Claims 3, 9-11 and 17 have been withdrawn. Claims 1 and 2 have been amended. Claims 1, 2, 4-8, and 12-16 are under consideration.
Rejections Withdrawn
The rejection of Claim 2 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claim
The rejection of Claims 1, 2, 4-8 and 12-16 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 (US 2015/0096581) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
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.
Claims 1, 2, 4-8, and 12-16 are 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 1 has been amended to recite “…comprises a water content ranging from 10% to 45% by weight”. However, Claim 1 also recites “(ii) shaping the paste by compacting and total or partial removal of the liquid phase”. It is not possible to both achieve “total removal of the liquid phase” and also comprise a water content ranging from 10% to 45% by weight. Accordingly, the metes and bounds of the claim are unclear. Claims 2, 4-8 and 12-16 are rejected as depending from and not clarifying claim 1.
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 Zamyatin et al. (US 2007/0218024) in view of Goldlum et al. (US 2014/0086861; cited in IDS) and Lambridis et al. (US 2015/0096581).
Zamyatin et al. teach a powdered water cosmetic composition comprising activatable pigments, a water phase comprised of water droplets, and a particulate phase comprised of non-wetting particulates operable to surround and sequester the individual water droplets from each other in the composition (e.g. abstract; Claim 1). Zamyatin et al. teach that the compositions provide a very light, non-greasy, color to the skin and may be in the form of a foundation, powder, eye shadow, lipstick, blush, bronzer, or any other type of color cosmetic product (e.g. paragraph 0063). Zamyatin et al. teach that the compositions comprise powders, including talc and spherical silica (i.e. fillers) (e.g. paragraph 0052; Examples); surface treated pigments, including ion oxides (e.g. paragraphs 0031, 0035, 0050, Examples); and 1-85%, preferably from about 2-60%, more preferably from about 5-55% by weight water (e.g. paragraph 0022), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Zamyatin et al. do not teach that the pigments are treated with sodium glycerophosphate, or that the powders are in the form of a compact powder. This is made up for by the teachings of Goldlum et al. and Lambridis et al.
Goldlum et al. teach that the dispersion of pigments in aqueous cosmetic compositions is more delicate and to this day, only very few treated pigments exist which are easily dispersible in an aqueous medium and that one of the goals of their invention is to provide a solution for easily and efficiently dispersing a pigment in a cosmetic composition notably an aqueous cosmetic composition. 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.
PNG
media_image1.png
110
360
media_image1.png
Greyscale
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). 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”.
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, and 12-16, it would have been obvious to one of ordinary skill in the art at the time of filing to include the surface treatment of Goldlum et al. and the compact powder format including the one or more wells of Lambridis et al. with the powder cosmetic of Zamyatin 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. Zamyatin et al. teach aqueous powder formulations and Goldlum et al. teach their additives provide a solution for easily and efficiently dispersing a pigment in a cosmetic composition notably an aqueous cosmetic composition. Goldlum et al. further 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 compact powder with 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.
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 Zamyatin et al. may be in the form of a foundation, powder, eye shadow, lipstick, blush, bronzer, or any other type of color cosmetic product (e.g. paragraph 0063); 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, Zamyatin et al. teach the inclusion of 0.1-50 wt% pigments, comprising one or more iron oxides, and exemplify 4.5 wt% pigment blend (e.g. claims 14 and 15; Example 1).
Regarding Claim 6, Goldlum et al. further teach the inclusion of magnesium aluminum silicate, bentonite, and hectorite (e.g. paragraph 0052), which as evidenced by the Specification on page 20 are suspending agents.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 4-8 and 12-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 extension fee 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 date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
Prosecution Insights