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 12/16/25 is acknowledged. Claims 1-4, 6, and 8-22 are pending. Claim 14 has been withdrawn. Claims 1, 2, 6, 13, 16, 19 and 20 have been amended. Claims 21 and 22 are new. Claims 1-4, 6, 8-13 and 15-22 are under consideration.
Rejections Withdrawn
The rejection of Claims 1-13 and 15-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21 and 22 refer to the specific surface area of the composition. There is no support for this limitation in the original disclosure. The lines pointed to by Applicant refer to the specific surface area of the porous silica, and not to the composition as a whole.
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 1-4, 6, 8-13 and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Farran et al. (US 2020/0276093; cited previously) in view of Sunkel (US 2017/0281477) and Ferritto et al. (US 2016/0331673 A).
Farran et al. teach cosmetic compositions that when applied to skin instantaneously and dramatically improve the appearance of the skin (e.g. abstract). Farran et al. teach a method of improving the appearance of skin comprising applying the cosmetic composition to skin, wherein the improving is: reducing the appearance of fine lines of the skin; reducing the appearance of wrinkles of the skin; and/or reducing the appearance of pores and/or scars (e.g. paragraphs 0019, 0195; Claim 20). Farran et al. teach the inclusion of polymer soft-focus particles (e.g. paragraph 0164; Claims 15-17; Examples). Farran et al. teach the inclusion of 1-40 wt% silicone elastomers, including DC9509 dimethicone/vinyldimethicone crosspolymer (e.g. paragraphs 0064-0104, 0083, Examples), which as evidenced by the instant Specification in Example 1, has an average diameter of 3 microns. Farran et al. does not teach the method comprises (i) determining the color of a skin surface in need of treatment of the individual; and (ii) choosing a skin care composition having substantially same color as the skin surface in need of treatment, wherein same color means that the color difference of the skin surface before and after the application of the skin care composition with a dosage of 2 mg/cm2 is 0 to 5.5 in CIELAB color space as measured by a Delta E value. This is made up for by the teachings of Sunkel et al. and Ferritto et al.
Sunkel et al. teach a cosmetic applicator for providing a natural looking cosmetic benefit to skin in the undereye area of a user (e.g. abstract; claim 1). Sunkel et al. teach that the cosmetic may be a foundation or concealer (e.g. paragraph 0024). Sunkel et al. teach that the color of the cosmetic composition is an important factor in providing a natural looking cosmetic benefit. The color of the cosmetic composition should be selected to provide a suitable color match to the normal skin color of the use (e.g. paragraph 0060). Sunkel et al. disclose the method can be used to measure the color difference between two target skin surfaces (e.g., a blemished skin surface and a normal skin surface) or the color change of a target skin surface before and after treatment with a cosmetic composition (i.e. steps (i) and (ii)) (e.g. paragraph 0089). Sunkel et al. teach that when used as intended, the applicator herein can provide a natural looking cosmetic benefit defined by a ΔE value of less than 10 (e.g., less than 6 or less than 3 and ideally 0) (e.g. paragraph 0061) and exemplify Delta E of 1.55, 2.20, and 1.97 (e.g. Table 2).
Sunkel et al. are silent as to a dosage of application in mg/cm2. This is made up for by the teachings of Ferritto et al.
Ferritto et al. teach cosmetic compositions which may be foundations or concealers (e.g. paragraphs 0190 and 280-283). Ferritto et al. teach that the composition is applied at a dosage of 1-3 mg/cm2. 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).
Regarding Claims 1, 2, 6, 12, 13, 16, 19 and 20, it would have been obvious to one of ordinary skill in the art at the time of filing to select the method of matching cosmetics to skin tone as taught by Sunkel et al. and the dosage of Ferritto et al. for use with the cosmetics of Farran 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. One of ordinary skill in the art would have predicted success as all of the compositions are useful as cosmetic foundations and concealers, and one of ordinary skill would have been motivated in order to provide the benefits of natural looking coverage as disclosed by Sunkel et al. In addition, as both Farran and Sunkel are silent as to the dosage applied to skin, one of ordinary skill in the art would have been motivated to seek out additional guidance of an appropriate amount of application. “When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976).
Regarding Claims 3, 4, and 15, Farran et al. teach the inclusion of colored and/or white pigment, including iron oxide and titanium dioxide in amounts of 0.01-10 wt%, which overlaps with the claimed range (e.g. paragraphs 0156-0158, 0215; Examples). 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).
Regarding Claims 8-10, 17, 18, 21 and 22, Farran et al. teach the inclusion of 0.1-20 wt% soft focus powders, including silica (e.g. paragraph 0162-0165). Farran et al. also teach the inclusion of 1-20 wt% hydrophobic silica aerogel particles having a specific surface area of 600-800 m2/g and a diameter of 5-20 microns, which lie within or overlap with the claimed ranges (e.g. paragraph 0052 and 0055; Examples).
Regarding Claim 11, Farran et al. teach the inclusion of 5-40 wt% water (e.g. paragraph 0214), which overlaps with the claimed range (e.g. paragraph 0214; Examples).
Regarding Claims 3, 4, 6, 8-11 and 15-18, 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.
Response to Arguments
Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive. Applicant states “In view of the present amendments made to the pending claims, Applicant respectfully requests the withdrawal of this rejection. In view of the above, it is respectfully submitted that all claims, as now presented, comply with 35 U.S.C. §103”.
This is not found persuasive. The claims are met by the teachings of Farran et al., Sunkel, and Ferritto et al. as described.
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