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.
Applicants' arguments, filed 09/23/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 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 1-5, 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.
Claim 1 recites one or more pigments approved for cosmetic use. The claim is indefinite since it is unclear who or where the approval is from, i.e., which jurisdiction, such that one of ordinary skill in the art would know which pigments are within the scope of the claimed invention. Not all jurisdictions approve of the same pigments. Although the specification provides examples of approved pigments in paragraph [0010], the examples are non-limiting and it is unclear what other pigments would be considered as an approved pigment.
Response to Arguments
Applicant argues that claim 1, as now amended, incorporates cancelled clams 6 and 10.
The Examiner does not find Applicant’s argument to be persuasive. The limitations of cancelled claims 6 and 10 do not address where the approval is from. Specifying particle size does not address where the approval is from. Therefore, the rejection is maintained.
Claim 13 recites a pigment that meets regulatory guidelines for cosmetic applications. The claim is indefinite since it is unclear which regulatory guideline is being referenced. Regulatory guidelines may be modified at will and any time and there is nothing claimed to limit the regulatory guideline to the regulatory guideline that was in effect when the application was filed.
Response to Arguments
Applicant argues that claim 13 is now dependent on amended claim 1.
The Examiner does not find Applicant’s argument to be persuasive. Claim 1 also does not recite what the regulatory guidelines are. As such, the rejection is maintained.
New Rejections
Claim 1 recites the limitation "the method" in the antepenultimate line. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is a composition claim. Therefore, it is unclear what “the method” is referencing to.
Claim 1 recites the limitation "the pre-melted dispersion" in the penultimate line. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the pre-melted dispersion is referring to a melted form of the solid pigment dispersion or to a different embodiment.
Claim Rejections - 35 USC § 103 - New
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 11-14 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).
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. 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 a method, even 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 the instant case, a pigment with a particle size of less than about 10 microns was known in the art; therefore, the claim is unpatentable even though the prior art does not disclose making the pigment with the claimed process.
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.
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.
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 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. Claim 1 does not recite wherein the dispersion is low-dusting. Therefore, Hasegawa, which was used to reject claim 1, does not need to teach such limitation. Furthermore, the limitation of low-dusting appears in claim 5. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. As discussed in the rejection, the limitation of claim 5 would have been obviousness from the teachings of Schlossman. Applicant has not addressed why a low-dusting dispersion would not have been obvious from the teachings of Schlossman. Therefore, the rejection is maintained.
Applicant argues that if one would like 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.
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.
Conclusion
Claims 1-5, 7-9 and 11-14 are rejected.
No claims are 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.
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/TRACY LIU/Primary Examiner, Art Unit 1614