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, 3, 4, 7, 22-27, 29-34 and 36-39.
Applicants' arguments, filed 09/25/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Election/Restrictions
Newly submitted claims 28, 35 and 40 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The product as claimed can be made by another materially different process, for example, without mixing another component or a film-forming agent.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 28, 35 and 40 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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, 3, 7, 22, 23, 29-31, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Aota (US 2005/0129637, Jun. 16, 2005), as evidenced by Stobec (Sodium Salt of Polyaspartic Acid (PASP), 2026).
Aota discloses a pigment dispersion for cosmetic products containing pigment particles. The pigment dispersion preferably also contains a dispersing medium and a dispersant (abstract). The pigment dispersion comprises at least one pigment (claim 2). Examples of pigments include red oxide of iron, yellow oxide or iron (¶ [0015]), and Prussian blue (¶ [0016]). The mean particle size of the pigment is not limited, but is preferably not more than 0.3 µm (¶ [0043]). The dispersing medium contains water and may contain no organic solvent (¶ [0022]). The pigment dispersion may have an improved stability of the dispersed state by using a dispersant (¶ [0023]). The dispersant may be a water-soluble polymer or various kinds of surfactants (¶ [0023]). Suitable water-soluble polymers include polyaspartic acid and their salts such as sodium salts (¶ [0024]). Suitable surfactants include nonionic surfactants (¶ [0027]). The ratio of the dispersants is preferably from 0.1 to 40 parts by weight, based on 100 parts by weight of pigment (¶ [0029]). The pigment dispersion may include pH-adjusters, such as monoethanolamine (¶ [0034]). The pigment dispersion may also include chelating agents (¶ [0035]). The viscosity of the pigment dispersion is not limited (¶ [0044]). The cosmetic product may be an eyeliner (¶ [0045]).
As evidenced by Stobec, the sodium salt of polyaspartic acid is alkaline.
The prior art discloses a pigment dispersion (abstract) containing Prussian blue (¶ [0016]), sodium salt of polyaspartic acid (i.e., water-soluble basic substance) (¶ [0024]), and water (¶ [0022]). Together these would provide a composition as claimed instantly.
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
In regard to instant claim 3, as discussed above, Aota discloses wherein the inclusion of a dispersant is merely preferable and wherein the pigment dispersion is still a dispersion without a dispersant since the dispersant may improve stability of the dispersed state. As such, it would have been obvious to one of ordinary skill in the art that inclusion of a dispersant is not necessary and to have a pigment dispersion comprising Prussian blue, water, and monoethanolamine (i.e., compound having an amino group).
In regard to instant claims 29 and 31, ad discussed above, Aota teaches a pigment dispersion comprising Prussian blue as the pigment, nonionic surfactant as the dispersant, water as the dispersing medium, and monoethanolamine as the pH adjustor.
2. Claims 4 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Aota (US 2005/0129637, Jun. 16, 2005) in view of Sakuma et al. (US 2018/0369081, Dec. 27, 2018) (hereinafter Sakuma), as evidenced by Stobec (Sodium Salt of Polyaspartic Acid (PASP), 2026).
The teachings of Aota are discussed above. Aota does not teach wherein the pigment dispersion has a viscosity of 50 mPa·s or less at a shear rate of 383 s-1 and comprises citric acid and polyoxyethylene alkyl ether, and wherein the cosmetic product is a liquid.
However, Sakuma discloses a liquid cosmetic composition suitable for eye makeup. The liquid cosmetic composition comprises inorganic pigment and water (abstract). The inorganic pigment is used as the color material (¶ [0044]). Suitable inorganic pigments include, at least one of (alone or a mixture of two or more kinds thereof) Prussian blue and iron oxide particles (yellow iron oxide and red iron oxide) (¶ [0045]). Optional components used for the liquid cosmetic composition include surfactants and chelating agents (¶ [0054]). Suitable surfactants include polyoxyethylene alkyl ethers (¶ [0055]). Suitable chelating agents include citric acid (¶ [0059]). The viscosity of the composition at a temperature of 25°C and a shear rate of 383 s-1 is preferably 5 to 20 mPa·s (¶ [0066]). The liquid cosmetic composition is suitable for an eyeliner (¶ [0001]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the pigment dispersion of Aota to have a viscosity at a temperature of 25°C and a shear rate of 383 s-1 of 5 to 20 mPa·s since Aota discloses wherein the viscosity is not limited and this is a known and effective viscosity for a composition comprising pigments to be used as a cosmetic as taught by Sakuma.
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. Aota discloses wherein the pigment dispersion comprises chelating agents. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated citric acid into the pigment dispersion of Aota since it is a known and effective chelating agent as taught by Sakuma.
Additionally, Aota discloses wherein the pigment dispersion comprises various surfactants. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated polyoxyethylene alkyl ether into the pigment dispersion of Aota since it is a known and effective surfactant as taught by Sakuma.
Furthermore, Aota discloses wherein the cosmetic product may be an eyeliner. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the eyeliner to be liquid since this is a known and effective form for eyeliners comprising pigments as taught by Sakuma.
3. Claims 24-27 and 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Aota (US 2005/0129637, Jun. 16, 2005) in view of Sakuma et al. (US 2018/0369081, Dec. 27, 2018) (hereinafter Sakuma), and further in view of Okuyama et al. (JP 2009161442 A, Jul. 23, 2009) (hereinafter Okuyama) and Kido (JP 2002322384, Nov. 8, 2002), as evidenced by Stobec (Sodium Salt of Polyaspartic Acid (PASP), 2026).
The teachings of Aota and Sakuma are discussed above. Aota and Sakuma do not teach wherein the liquid eyeliner is green.
However, Okuyama discloses wherein eyeliners may be green (Example 11).
Kido discloses wherein a blue dye aqueous solution, a yellow dye aqueous solution, and a red dye aqueous solution were mixed at a weight ratio of 1:1:1 to prepare a green dye aqueous solution (Comparative Example 2).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the liquid eyeliner of the prior art to be the color green since the cosmetic product may be in the form of an eyeliner and eyeliners may be green as taught by Okuyama.
One of ordinary skills in the art would have had a reasonable expectation of success since the composition of the prior art comprises Prussian blue, red iron oxide, and yellow iron oxide and blue, yellow, and red colorants form a green composition as taught by Kido.
In regard to instant claim 24 reciting a Prussian blue dispersion consisting of Prussian blue, a water-soluble basic substance, and water, and a iron oxide dispersion consisting of iron oxide, an organic acid having a molecular weight of 300 or less, and water; when the Prussian blue dispersion is combined with the iron oxide dispersion to form the green liquid cosmetic, one dispersion of Prussian blue, water-soluble basic substance, water, iron oxide, and organic acid having a molecular weight of 300 or less is formed. As discussed above, Aota discloses a pigment dispersion comprising water, sodium salt of polyaspartic acid (i.e., water-soluble basic substance), Prussian blue, red iron oxide, and yellow iron oxide, and it would have been obvious to have incorporated citric acid (i.e., organic acid having a molecular weight of 300 or less) into the dispersion from the teachings of Sakuma. Therefore, one dispersion consisting of Prussian blue, water-soluble basic substance, water, iron oxide, and organic acid having a molecular weight of 300 or less would have been obvious.
In regard to instant claim 36 reciting a Prussian blue dispersion consisting of Prussian blue, a water-soluble basic substance, a nonionic surfactant, and water, and a iron oxide dispersion consisting of iron oxide, an organic acid having a molecular weight of 300 or less, and water; when the Prussian blue dispersion is combined with the iron oxide dispersion to form the green liquid cosmetic, one dispersion of Prussian blue, water-soluble basic substance, nonionic surfactant, water, iron oxide, and organic acid having a molecular weight of 300 or less is formed. As discussed above, Aota discloses a pigment dispersion comprising water, sodium salt of polyaspartic acid (i.e., water-soluble basic substance), nonionic surfactant, Prussian blue, red iron oxide, and yellow iron oxide, and it would have been obvious to have incorporated citric acid (i.e., organic acid having a molecular weight of 300 or less) into the dispersion from the teachings of Sakuma. Therefore, one dispersion consisting of Prussian blue, water-soluble basic substance, nonionic surfactant, water, iron oxide, and organic acid having a molecular weight of 300 or less would have been obvious.
Response to Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Conclusion
Claims 1, 3, 4, 7, 22-27, 29-34 and 36-39 are rejected.
Claims 15, 28, 35 and 40 are withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRACY LIU/Primary Examiner, Art Unit 1614
