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 . Claims included in the prosecution are claims 1-5, 7-9 and 11-14.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/22/2026 has been entered.
Applicants' arguments, filed 06/22/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections - New
Claim 13 is objected to because of the following informalities: “dispersionon” should be recited as --- dispersion on ---. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: the term “and” should be recited immediately prior to the term “using” in the penultimate line. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “guage” should be recited as --- gauge ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112 - New
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 1-5, 7-9 and 11-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation one or more oils and/or waxes, and the claim also recites ratio of wax:oil is from 1:1 to 4:1 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13 recites the limitation "the pre-melted dispersion" in the fifth line. There is insufficient antecedent basis for this limitation in the claim. Claim 2 does not recite a pre-melted dispersion. Therefore, it is unclear whether the pre-melted dispersion is in reference to the pigment dispersion of claim 2 being pre-melted or to another pigment dispersion.
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, 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.
1. Claims 1-4, 7, 8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (US 2010/0266519, Oct. 21, 2010) (hereinafter Hasegawa) in view of Pahlck et al. (US 5,382,433, Jan. 17, 1995) (hereinafter Pahlck).
Hasegawa discloses a method of producing a powder cosmetic by mixing a powder component and an oil component as a binder (¶ [0033]). The powder component is not limited in particular so far as the powder is normally used in powder cosmetics. Examples of powder components include inorganic red pigments such as red iron oxide (¶ [0035]). The blending quantity of the powder component is preferably 65 to 97 mass % (¶ [0037]). Examples of oil components include jojoba wax and olive oil. The oil components may be used alone or by mixing two or more (¶ [0048]). The blending quantity of the oil component is preferably 3 to 35 mass % (¶ [0051]). The powdered cosmetic in powder or solid form may be utilized in a foundation, eyeshadow, or body powder (¶ [0066]). The powder component and the oil component are mixed with a facing rotor type mixing apparatus. Because the facing rotor type mixing apparatus is a dry mixing apparatus, it is not necessary to dissolve the powder component and the oil component in a suitable mixing solvent (¶ [0055]).
Hasegawa differs from the instant claims insofar as not disclosing wherein the pigment is grinded to a particle size of less than 15 µm.
However, Pahlck discloses a cosmetic formulation comprising activatable dormant pigments dispersed in an anhydrous base or vehicle (abstract). The composition is made by first forming an initial dispersion by mixing pigmented solid particles with a liquid carrier, grinding the mixture to yield a uniform particle size distribution in the initial dispersion, and then microencapsulating the pigment/liquid carrier dispersion by coacervation to yield microcapsules in the form of a stable, free flowing, dry powder. The microcapsules then are further processed by being dispersed in a compatible cosmetic vehicle or base (col. 2, lines 57-66). The ground pigment/liquid carrier dispersion is microencapsulated to form stable, dry, free flowing powder or micro-sized particles whose diameter ranges from about 2 to about 20 microns. It has been found that microcapsules having a diameter larger than 20 microns results in an unacceptable cosmetic product by feeling rough or gritty on the skin (col. 5, lines 8-15). Example IX discloses a stable, dry, free flowing powder comprising D&C Red 7 Calcium Lake and mineral oil. The pigment was micropulverized to a particle size less than about 10.0 microns (col. 12, lines 15-31).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have ground the pigment of Hasegawa to have a particle size of less than about 10 microns since this particle size allows for a cosmetic product to not feel rough or gritty on the skin as taught by Pahlck.
In regards to instant claim 1 reciting wherein the ratio of wax:oil is from 1:1 to 4:1, Hasegawa discloses wherein the oil components may be used alone or by mixing two or more and wherein the blending quantity of the oil component is preferably 3 to 35 mass %. Therefore, since jojoba oil and olive oil are both oil components, it would have been obvious to have selected amounts of each from this range. The ratio from the amounts selected overlaps with the claimed ratio. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
In regards to instant claim 2 reciting wherein all the oils and/or waxes are plant-based, Hasegawa discloses wherein the oil component may be one component. Thus, the claimed limitation would have been obvious when jojoba wax is used as the only oil component.
In regards to instant claims 3 and 4 reciting wherein the dispersion has a melting point greater than 30°C and 50°C, respectively, as discussed above, the powder cosmetic comprises jojoba wax. The instant specification discloses in Table 1, paragraph [0014] wherein hydrogenated jojoba oil (i.e., jojoba wax) has a melting point of 69°C. As such, the powder cosmetic of Hasegawa has a melting point greater than 30°C and 50°C.
Response to Arguments
Applicant argues that Hasegawa is silent regarding granular solid formation and flow of said low dusting granular solids. Hasegawa contains no teaching whatsoever regarding how to obtain a low-dusting dry powder composition with low-dusting properties since it does not address this problem in any way.
The Examiner does not find Applicant’s argument to be persuasive. Hasegawa teaches a powder cosmetic. Thus, Hasegawa teaches a granular solid formation. The claims in this rejection do not recite a low-dusting composition. Therefore, it is not necessary for the prior art to teach flow of low dusting granular solids and how to obtain a low-dusting dry powder composition. As such, Applicant’s argument is unpersuasive.
Applicant argues that there is no mention made in claims of Pahlck relating to particle size and only three examples are provided. However, all these examples require a microencapsulated pigment/oil dispersion to achieve the desired particle size.
The Examiner does not find Applicant’s argument to be persuasive. A prior art reference is evaluated for all that it reasonably suggests and is not limited to preferred embodiments or working examples. Also, the claims as currently recited do not exclude the inclusion of microencapsulation. As such, Applicant’s argument is unpersuasive and the rejection is maintained.
2. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (US 2010/0266519, Oct. 21, 2010) (hereinafter Hasegawa) in view of Pahlck et al. (US 5,382,433, Jan. 17, 1995) (hereinafter Pahlck), and further in view of Schlossman et al. (WO 2007/002030 A2, Jan. 4, 2007) (hereinafter Schlossman).
The teachings of Hasegawa and Pahlck are discussed above. Hasegawa and Palck do not teach wherein the powder cosmetic is low-dusting.
However, Schlossman discloses a range of low-dust or dust-free powder-derived products for cosmetics and other uses to avoid hazards arising from liberation during handling. The products can be made by employing suitable quantities of hydrophilic solvents or binders (abstract). Powder materials that contain dust particles that can become airborne during processing, end use, or other handling may be harmful to personnel and others who come into contact with the airborne particulates and who may inhale or otherwise ingest the dust. One useful pigment whose commercial forms may create dust levels is carbon black (page 1, lines 18-22). One embodiment of the treatment method comprises the additional of a suitable proportion of a hydrophilic solvent to a carbon black pigment powder, or other dust-containing powder to render it non-dusting (page 3, lines 14-16).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the powder cosmetic of Hasegawa to be low-dust or dust-free motivated by the desire to avoid hazards arising from liberation during handling as taught by Schlossman. One of ordinary skill in the art would have had a reasonable expectation of success since Schlossman discloses wherein the powder with a hydrophilic solvent or binder renders the powder to be non-dusting.
Response to Arguments
Applicant argues that if one would prefer a granular product, as taught by Schlossman, other steps are necessitated, i.e., the use of a binder is required to produce a granular product, which is not the case in the pending application.
The Examiner does not find Applicant’s argument to be persuasive. Claim 1 does not require the dispersion to be granular. Also, even if it did, Applicant’s argument would still be unpersuasive since the claims as currently recited do not exclude the inclusion of binders. As such, Applicant’s argument is unpersuasive and the rejection is maintained.
3. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (US 2010/0266519, Oct. 21, 2010) (hereinafter Hasegawa) in view of Pahlck et al. (US 5,382,433, Jan. 17, 1995) (hereinafter Pahlck), and further in view of Maitra et al. (US 2011/0104091, May 5, 2011) (hereinafter Maitra).
The teachings of Hasegawa and Pahlck are discussed above. Hasegawa and Pahlck do not teach wherein the powder cosmetic comprises coco-caprylate/caprate.
However, Maitra discloses a powder cosmetic composition comprising an ester oil (¶ [0055]). Suitable ester oils include coco-caprylate/caprate (¶ [0057]). The powder cosmetic may comprise pigments (¶ [0082]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. The powder cosmetic of Hasegawa comprises one or more oil components. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated coco-caprylate/caprate into the powder cosmetic of Hasegawa since it is a known and effective oil component compatible with pigments as taught by Maitra.
Response to Arguments
Applicant argues that the selection of a possible single oil, selected from the vast array of possible oils and combinations thereof, and to argue it to be an obvious choice allows the examiner tremendous latitude in stating what they feel and contend is obvious.
The Examiner does not find Applicant’s argument to be persuasive. As stated in MPEP 2143(I), choosing from a finite number of identified, predictable solutions support a conclusion of obviousness. Applicant has not shown wherein the prior art does not disclose a finite number of solutions. Also, a reference that “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Thus, multiple oils do not make a single oil less obvious. As such, Applicant’s argument is unpersuasive.
New Rejection
4. Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (US 2010/0266519, Oct. 21, 2010) (hereinafter Hasegawa) in view of Pahlck et al. (US 5,382,433, Jan. 17, 1995) (hereinafter Pahlck), and further in view of Hart et al. (US 2010/0048790, Feb. 25, 2010) (hereinafter Hart) and Cody et al. (WO 03/040226, May 15, 2003 (hereinafter Cody).
The teachings of Hasegawa and Pahlck are discussed above. Hasegawa and Pahlck do not teach wherein the powder cosmetic is pre-melted and placed on a pre-heated Hegman gauge with 50-0 micron channel, and using a scraper to obtain a continuous layer in the well from top to bottom.
However, Hart discloses a particulate glass cullet and a surface treated particulate glass cullet useful as anti-blocking pigments in polymer compositions (abstract). The particulate glass cullet may have a Hegman Gauge value of less than 20 µm (¶ [0038]). The Hegman gauge consists of a steel block into which machined a groove which is uniformly tapered along its length from 100 µm at one end to zero at the other. A scale denotes the depth of the groove at any point along its length. A portion of a dispersion is placed in the groove at the deep end and a blade is used to draw the liquid down the length of the groove. When the gauge is viewed at an angle, it is possible to note the point along the length of the groove where it becomes shallow enough for the pigment particles to protrude above the level of the liquid. The pigment particle size at this point can be read from the scale (¶ [0039]). The Hegman Gauge value of a dispersion is thus a measure value of the size of the wetted/dispersed particles (¶ [0040]).
Cody discloses compositions that are capable of being dispersed in a target medium (abstract). Approximately 0.2 grams of a test mixture is placed in both channels of a calibrated Hegman grind gauge. If the target medium is solid at room temperature, the test mixture can be heated to a temperature above the melting temperature of the target medium before applying the test mixture onto the grind gauge, and the grind gauge can also be heated to the same temperature (page 23 lines 29-31 – page 24, lines 1-2).
Accordingly, since it would have been obvious to have formulated the pigment of Hasegawa to have a particle size of less than about 10 microns as discussed above, it would have been prima facie obvious to one of ordinary skill in the art to have used a Hegman gauge for the pigment dispersion of Hasegawa motivated by the desire to determine the pigment particle size as taught by Hart. Also, it would have been prima facie obvious to one of ordinary skill in the art to have the pigment dispersion pre-melted and the Hegman gauge pre-heated since the test mixture needs to be melted when used on a Hegman gauge as taught by Cody. In regards to the gauge being pre-heated to 50°C, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed temperature based on the melting point of the test mixture.
Conclusion
Claims 1-5, 7-9 and 11-14 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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