DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 08, 2023, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 03/08/2023 in the matter of Application N° 18/118,854. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 08, 2023, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1-19 represent all claims currently under consideration.
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 16-19 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.
Claims 16-19 contain parentheses which render the claims indefinite. Although Applicant amended the claims to remove the term “preferably”, deleted reference numeral “(20)” in certain claims, and cancelled claim 3, claims 16-19 still recite parenthetical numerals that render the scope of the claims unclear.
Specifically, the parenthetical numerals lack antecedent basis and appear to reference structural elements without explanation as to whether such numerals correspond to features shown in the drawings (e.g., Figure 3) or merely represent internal labels. The claims do not clarify the meaning or function of the parenthetical numerals, nor do they establish a clear relationship between the recited elements and any disclosed structure. Accordingly, claims 16-19 remain indefinite.
Because Applicant did not correct all identified issues of indefiniteness, the 112(b) rejection is maintained. Applicant is required to amend the claims to resolve the remaining indefiniteness or provide a clear explanation supporting the current claim language.
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.
Claims 6, 9-13, and 16-28 are rejected under 35 U.S.C. 103 as being unpatentable over Sunkel et al. (US9713580B2) and Someya et al. (JP2002265314A) and Brambilla (EP2189150A1), and Caprarotta et al. (US9357826B2), and 6 Makeup tips that will seriously improve your shopping experience: Refinery29.com/en-us/makeup-swatches-guide#slide-1, Mi-Anne Chan, March 8, 2016.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed on 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.
Sunkel et al. teach an applicator for applying a cosmetic composition to a target surface. More specifically, Sunkel discloses an applicator for applying a natural looking cosmetic composition to skin in the form of a multitude of dots arranged in a discontinuous stochastic pattern (See column 1, paragraph 1). The solid cosmetic, which comprises 30 to 95% by mass of the component and furthermore contains components (a) 1 to 20% by mass, 0.5 to 5% by mass of the components (b) and (c), and 0.05 to 5% of the components (d), respectively, is not taught by Sunkel products.
Someya et al. teach foundations, eye shadows, teak hues, white powders, and other cosmetic preparations are examples of solid cosmetics. These solid cosmetics comprise an oily solid type, where the oil is solidified with wax or something similar, a powder solid type. Powder solids are made by mixing powder and oil components and then compressing them (See 0002). Further, the solid cosmetic, which contains 30 to 95% by mass of the component, and further contains the component (a)1 to 20% by mass, a total of 0.5 to 5% by mass of the component (b) and the component (c), and 0.05 to 5% of the component (d), respectively. Someya et al. provides a solid cosmetic (See 0004). The solid cosmetic of the present invention contains powder as component (f) in addition to the above components, it can improve the feel and enhance the cosmetic effect. Such a component (f) is a powder other than the component (d), If it is a powder usually used for cosmetics, it is in the form of a plate, spindle, it is not particularly limited by the shape such as needle shape, the particle size, the particle structure such as porous or non-porous, etc., and inorganic powders, glitter powders, organic powders, pigment powders, composite powders and the like. These powders may be used alone or in combination of two or more (See 0015). Example 11: Solid sunscreen charge (component) (% by mass) Carrageenan (Note 5) 14. Example 12: Solid eyeshadow (component) (% by mass) Carrageenan (Note 1) 1.5 4.
Therefore, it would have been obvious to one of ordinary skill in the art before the instant effective filing date to incorporate the teachings of Sunkel et al. applicator for coating a target surface with a cosmetic component. More precisely, the application reveals an applicator for applying a cosmetic composition that looks natural to skin by arranging a large number of dots in a discontinuous stochastic pattern into the teachings of Someya et al. which teach solid cosmetics include things like eye shadows, foundations, teak colors, white powders, and other cosmetic preparations. These solid cosmetics include a powder solid type and an oily solid type, in which the oil is solidified with wax or a comparable substance.
Regarding claims 9 and 10, Caprarotta et al. teach once the cosmetic product has been dried, it should be stuck within the final container for sale, and for this purpose, the product may directly be placed within the final container or a shaped strap 9 may be placed on the liquid paste 8, immediately after the dosing step, in contact with the upper surface of the cosmetic product, as shown in FIG. 3. (See column 4, lines 16-21). The thickness of such a strap may range between 3 mm and more, and its shaping will correspond to that of the base of the intended shape. Without distinctions, the material employed for strap 9 may be a natural product, such as baked clay, porcelain, chalk, paper or cellulose agglomerates, etc., but also compacted synthetic materials, e.g. plastics such as polycarbonate, Plexiglas, etc. or expanded materials, such as expanded polyurethane, expanded polyethylene, resins, etc. The strap may be employed as such or coated with a proper adhesive, to enhance the gripping abilities thereof. As already mentioned, the drying operation may be carried out upon extraction of the jellified cosmetic product from container 1. In such a case, the product-strap assembly may also be overturned so that strap 9 serves the function as a support for the cosmetic product, as shown in FIG. 4 (See column 4, lines 25-42).
However, in Caprarotta et al. 0.5-1.5 mm and 1 mm is not mentioned but Caprarotta et al. teaches 3 mm.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the instant effective filing date modify the thickness taught by Caprarotta et al., wherein, such straps can have thicknesses ranging from 3 mm to greater, and their shapes will match the required shapes basis into the teachings of Davide et al. wherein the support is covered with paste that is between 0.5 and 1.5 mm thick.
Regarding claims 11, 12, and 13 Caprarotta et al. teach the heat treatment is usually carried out at temperatures between 20° C. and 90° C., preferably between 35° C. and 80° C. This heat treatment may be carried out by any suitable heating method. Such as for example in an air-recycle, humidity-controlled vent oven, a micro-wave oven or other (See column 4, lines 4-8). The heating should be performed over a sufficient period to make the product substantially anhydrous and this depends on the amount of water in the paste and on the temperature at which the heating is carried out. In the case of humidity-controlled, forced ventilation ovens, the heating may last 12-24 hrs. (See column 4, lines 9-15).
However, in Caprarotta et al. 5-10 hours is not mentioned but Caprarotta et al. teaches the heating may last 12-24 hrs.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to incorporate the teachings of Caprarotta et al., wherein, the heating time of ovens with forced ventilation and humidity control may be 12 to 24 hours, into the teachings of Davide et al., wherein for ideally five to ten hours, the paste is dried in an oven set to about 40 degrees Celsius.
Regarding claim 16, Sunkel et al. teach a cosmetic applicator for providing a natural looking cosmetic benefit, comprising a substrate and a solid, transferable cosmetic composition disposed on the Substrate. The cosmetic composition is configured as a multitude of dots arranged in a discontinuous stochastic pattern. The cosmetic composition comprises a colorant and an adhesive and has an L* value of from about 30 to 80, a c value of from about 10 to 50, and an h value of from about 30 to 80 (See column 3, lines 37-45). The colorant being a plurality of pigment particles dispersed in the adhesive; a ratio of pigment to adhesive in the composition being from about 1:10 to 1:1 (See column 3, lines 65-67).
Regarding claim 16, Chan teaches applying a sample of a product such as foundation, eyeshadow, or even eyeliner on your skin to show off its color and finish is known as swatching. The lipstick in the container never looks the same on your lips, as you have already noticed. This is why it’s crucial to swatch a potential lip purchase in order to determine its actual hue. Although testing lipstick on your own lips is usually ideal, it’s not always possible, therefore, your hands are the next best thing. However, your wrist or back of the hand is not the ideal location, despite what you may have been taught in the past. The best way to try out lipstick is to swatch the color on the slightly pinky part of your fingertips. Once you’ve watched, you may test whether the shade complements your skin tone by placing your finger over your lips (See Lipstick, slide 1). To test concealer or foundation, run a small amount of the product down the bottom portion of your cheeks to your jawline rather than on the back of your hand. By doing this, you can check whether the foundation matches your face and neck because you want your base product to look the same on both (See Foundation & Concealer, slide 2).
Regarding claim 16, Aydin teaches swatches have a lot of power. Before a customer purchases a product, you can apply product samples to their skin to show them the color and mix capabilities. Swatches of concealer, eyeshadow, blush, foundation, and bronzer can be made on the arms by a cosmetics photographer. One to one and a half inches above the wrist crease is a decent starting point. Using stencil swatch stickers is the simplest method for producing a consistent shape. These stencils, which are available in various sizes and shapes, will make it easier for you to apply the product while keeping its shape (See create swatches on the arms for beauty products and Tools needed to create swatches on the arms).
Regarding claims 17, 18 and 19, Sunkel et al. teach the applicator may be formed to the desired size and shape using a suitable cutting means Such as a conventional die cutting process. The applicator may be sized and shaped at any step during the manufacturing process. For example, the backing layer may be shaped and/or sized before and/or after application of cosmetic composition. In another example, the applicator may be sized and/or shaped after application of the cosmetic composition and optional release layer, but before the placement of an optional cover layer. In this example, one or more cosmetic-containing applicators may be placed on a rigid Support structure (e.g., cardboard or card material) to provide a suitable package for commercial sale. Continuing with this example, the optional cover layer may be placed over the applicator(s) after being joined to the rigid Support structure Such that a sealed package is provided. The cover layer may be configured to be reclosable so as to enable convenient removal of an applicator but still provide a suitable barrier over any remaining applicators in the pack when the cover layer is replaced (See column 13, lines 10-29).
Response to Arguments
Applicant's arguments filed October 13, 2025 have been fully considered but they are not persuasive. Applicant argues that the cosmetic product of Brambilla is a “compacted baked cosmetic product” requiring a base and therefore cannot qualify as a flexible solid form, asserting that Brambilla’s product has no form per se and is not self-supporting. This argument is not persuasive. Brambilla teaches preparing a cosmetic composition by mixing cosmetic powders with a water/silicone emulsion, kneading the mixture to obtain a cohesive mass, and drying and compacting the composition to form a solid cosmetic product.
The claims do not exclude compacted or molded solids, nor do they require that the cosmetic product be permanently unsupported during all stages of preparation. A cosmetic product that is temporarily supported by a base or mold during processing may nevertheless result in a self-supporting solid form once removed. Applicant’s interpretation improperly imports limitations into the claim that are not explicitly recited. Further, flexibility is a functional characteristic of the final product that may result from formulation parameters (e.g. binder content, water content, polymer selection) and does not require an express disclosure of “flexibility” in the prior art. Brambilla’s teaching of a kneaded, cohesive mass that is dried to form a solid cosmetic product reasonably encompasses a solid from having flexibility.
Applicant argues that Brambilla fails to disclose mixing cosmetic powders with an emulsion comprising water and at least one carrageenan, asserting that Brambilla instead teaches a water/silicone emulsion. This argument is not persuasive. Brambilla expressly teaches mixing cosmetic powders with an aqueous emulsion to form a kneaded composition. Carrageenan is a well-known hydrocolloid thickener and binder commonly used in cosmetic formulations to impart cohesion, elasticity, and flexibility. Substituting or including carrageenan as a thickening or structuring agent in an aqueous emulsion constitutes a routine formulation modification that would have been obvious to one of ordinary skill in the art seeking to adjust texture and mechanical properties of the cosmetic product. The claim use of carrageenan does not result in an unexpected function beyond its known role as a gelling and binding agent.
Applicant argues that Brambilla does not disclose spreading a layer of paste on a solid flat support because Brambilla sieves and compacts dries powder. This argument is not persuasive. Brambilla teaches forming a kneaded composition prior to drying and compaction. Such a kneaded mass inherently constitutes a paste-like material capable of being deposited, spread, or shaped on a surface or within a mold prior to drying. Spreading a paste on a solid flat support represents an obvious shaping step and an alternative to compaction that would have been within the ordinary skill in the art. The claims do not require a specific spreading technique beyond applying the paste to a support, which is a predictable variation of known cosmetic processing methods. Applicant asserts that Brambilla fails to disclose drying a paste by placing a support in an oven. The argument is not persuasive. Brambilla teaches drying and baking steps to remove water from the cosmetic composition. Drying by placing the composition on a support in an oven is merely a routine implementation detail of the drying step and does not patentably distinguish the claimed process from Brambilla.
Applicant argues that Brambilla’s product cannot be removed from a base and therefore cannot disclose removing a dried layer or die-cutting the cosmetic product. This argument is not persuasive. Temporary containment in a mold or base during drying or shaping does not preclude removal after solidification. Die-cutting a solid cosmetic sheet to obtain a desired shape is a well-known finishing operation and represents an obvious alternative to molding or compacting individual units directly into shape.
Die-cutting and compacting are both well-known shaping techniques for cosmetic solids. Substituting one shaping method for another to obtain a desired product shape is an obvious modification yielding predictable results.
One of ordinary skill in the art would have been motivated to combine Brambilla and Someya to improve solid cohesion and flexibility of Brambilla’s cosmetic solids; utilize carrageenan, a known cosmetic gelling agent, in place of or in addition to silicone binders; and obtain alternative cosmetic formats (e.g. flexible solid sheets or shapes). Such combination involves routine optimization and predictable use of known cosmetic ingredients.
Brambilla teaches the claimed cosmetic powder mixture, Kneading conditions, and drying steps. Someya teaches the use of carrageenan to produce cohesive and flexible solid cosmetic products. The combination of Brambilla and Someya renders the claimed process and product obvious.
Taking as a whole, Brambilla teaches a process for preparing a solid cosmetic product by mixing cosmetic powders with an aqueous emulsion, kneading to obtain a cohesive mass, drying the composition to form a solid, and shaping the product. Modifying Brambilla’s process to include carrageenan as a known binder, spreading the paste on a flat support, drying in an oven, and die-cutting the resulting solid represents routine optimization and predictable variations that would have been obvious to one of ordinary skill in the art.
Accordingly, the rejection of claims 6 and 9-13, and 16-28, under 35 U.S.C. 103 is maintained and made final.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kimberly Barber whose telephone number is (703) 756-5302. The examiner can normally be reached on Monday through Friday from 6:30 AM to 3:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615