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, 3-14 and 19-21.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/10/2026 has been entered.
Applicants' arguments, filed 04/10/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 15-18 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 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 Accordingly, claims 15-18 are withdrawn from consideration as being directed to a non-elected invention.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 § 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 10 and 20 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 10 recites wherein the green liquid cosmetic consists of Prussian blue, an iron oxide pigment, a water-soluble basic substance, and water. The claim is indefinite since it depends from claim 9 and claim 9 requires the green liquid cosmetic to comprise an organic acid having a molecular weight of 300 or less. The consist of language in claim 10 does not allow the green liquid cosmetic to have the organic acid. Therefore, the scope of claim 10 is unclear since it not clear whether the claim requires the organic acid.
Claim 20 recites wherein the red iron oxide comprises red α-Fe2O3, brown γ-Fe2O3, black Fe2O3, or yellow Fe2O3. The claim is indefinite since it is unclear how an iron oxide of red color may be brown, black, or yellow.
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, 4, 6-8, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuma et al. (US 2018/0369081, Dec. 27, 2018) (hereinafter Sakuma).
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]). Colors having good hue are obtained by combining suitable inorganic pigments. For example, the good hues of a black color, a brown color, and the like can be displayed by selecting and using the inorganic pigments of a black color and a brown color such as carbon black, iron oxide particles, red iron oxide, Prussian blue, and the like (¶ [0047]). The inorganic pigments have an average particle diameter of preferably 20 to 200 nm (¶ [0048]). A content of the inorganic pigment is preferably 1 to 30% (¶ [0050]). Using the inorganic pigments having the average particle diameters described above makes it possible to realize high dispersibility without causing aggregation in water (¶ [0049]). Optional components used for the liquid cosmetic composition include pigment dispersants, neutralizing agents, chelating agents, and surfactants (¶ [0054]). Suitable surfactants include nonionic surfactants (¶ [0055]). A dispersant can be added in order to further enhance a dispersibility of the pigment (¶ [0057]). Suitable chelating agents include citric acid in an amount of 0.01 to 0.5% (¶ [0059]). Suitable neutralizing agents include aminomethylpropanol (i.e., claimed water-soluble basic substance having an amino group) (i.e. amine) in an amount of 0.1 or 0.2 wt. % (Table 1). 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]). A content of the water is a balance obtained by excluding the amounts of the respective components described above and optional com ponents described later from the whole amount of the liquid cosmetic composition (¶ [0053]).
The prior art discloses a liquid cosmetic composition comprising inorganic pigments, water (abstract), and aminomethylpropanol (i.e., water-soluble basic substance) (Table 1), wherein the pigment is dispersed (¶ [0049]) and the pigment is Prussian blue (¶ [0045]). 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 regards to instant claim 1 reciting wherein the mass ratio of the water-soluble basic substance to the Prussian blue is 0.025 to 0.25, the claimed ratio would have been obvious from Sakuma disclosing 0.1 or 0.2 wt. % aminomethylpropanol and 1 to 30% inorganic pigments, which include Prussian blue.
In regards to instant claim 8 reciting further comprising an iron oxide pigment dispersion, when an iron oxide pigment dispersion is added to a Prussian blue dispersion, one dispersion comprising Prussian blue and iron oxide pigment is formed. As discussed above, Sakuma discloses a cosmetic composition comprising a dispersion of pigments wherein the pigments are Prussian blue and red iron oxide. Therefore, Sakuma teaches one dispersion comprising Prussian blue and iron oxide pigment, thus meeting the instant claim limitation.
2. Claims 9, 11, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuma et al. (US 2018/0369081, Dec. 27, 2018) (hereinafter Sakuma) in view of Okuyama et al. (JP 2009161442 A, Jul. 23, 2009) (hereinafter Okuyama) and Kido (JP 2002322384, Nov. 8, 2002).
The teachings of Sakuma are discussed above. Sakuma does not teach wherein the liquid cosmetic composition 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 cosmetic composition of Sakuma the color green since the cosmetic composition 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 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 regards to instant claim 9 reciting a Prussian blue dispersion comprising Prussian blue, a water-soluble basic substance, and water, and a red iron oxide dispersion comprising red iron oxide, an organic acid having a molecular weight of 300 or less, and water; when the Prussian blue dispersion is combined with the red iron oxide dispersion to form the green liquid cosmetic, one dispersion of Prussian blue, water-soluble basic substance, water, red iron oxide, and organic acid having a molecular weight of 300 or less is formed. As discussed above, Sakuma discloses a liquid cosmetic composition comprising water, aminomethylpropanol (i.e., water-soluble basic substance), citric acid (i.e., organic acid having a molecular weight of 300 or less), and dispersed pigments, wherein the pigments are Prussian blue and red iron oxide. Therefore, Sakuma teaches one dispersion comprising Prussian blue, water-soluble basic substance, water, red iron oxide, and organic acid having a molecular weight of 300 or less, thus meeting the instant claim limitation.
In regards to instant claim 9 reciting wherein the mass ratio of the water-soluble basic substance to the Prussian blue is 0.05 to 0.13, the claimed ratio would have been obvious from Sakuma disclosing 0.1 or 0.2 wt. % aminomethylpropanol and 1 to 30% inorganic pigments, which include Prussian blue.
In regards to instant claim 21, one of ordinary skill in the art would have arrived at the claimed content of red iron oxide in the red iron oxide pigment dispersion from Sakuma disclosing 1 to 30% inorganic pigments, such as red iron oxide, 0.1 to 0.5% chelating agents, such as citric acid (i.e., claimed organic acid), and balanced water.
3. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Sakuma et al. (US 2018/0369081, Dec. 27, 2018) (hereinafter Sakuma) in view of Russell (WO 2017/132198 A1, Aug, 3, 2017).
The teachings of Sakuma are discussed above. Sakuma does not teach the pH of the composition.
However, Russell discloses cosmetic compositions, such as eye shadows (page 24). The cosmetic composition is preferably formulated at a pH close to that of the skin, for example, at a pH of between about 5 and about 6, although products outside of this pH can be used (page 25).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the pH of Sakuma’s composition to be between about 5 and about 6 since the composition may be an eyeliner that contacts skin and it is desirable to have compositions that contact skin to have a pH closed to that of the skin, such as a pH of between about 5 and about 6, as taught by Russell.
4. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sakuma et al. (US 2018/0369081, Dec. 27, 2018) (hereinafter Sakuma) in view of Okuyama et al. (JP 2009161442 A, Jul. 23, 2009) (hereinafter Okuyama), Kido (JP 2002322384, Nov. 8, 2002), and Sandstrom (US 2012/0207801, Aug. 16, 2012).
The teachings of Sakuma, Okuyama, and Kido are discussed above. Sakuma, Okuyama, and Kido do not teach wherein the composition comprises α-Fe2O3.
However, Sandstrom discloses a cosmetic composition (abstract). The composition may comprise a colorant such as iron oxides (α-Fe2O3, γ-Fe2O3, Fe3O4, FeO) (¶ [0032]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated α-Fe2O3 into the composition since Sakuma discloses wherein the composition may comprise iron oxide particles and α-Fe2O3 is a known and effective iron oxide particle for cosmetic compositions as taught by Sandstrom.
5. Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hakiri et al. (US 2003/0196571, Oct. 23, 2003) (hereinafter Hakiri) in view of Blumenfeld (GB 385315A, Dec. 19, 1932).
Hakiri discloses a pigment dispersion including a pigment, a dispersant, and a dispersion medium comprising water, wherein the pigment is dispersed in the dispersion medium (claim 1). Suitable pigments include Prussian Blue and yellow iron oxide. The pigments may be used alone or in combination (¶ [0057]).
Hakiri differs from the instant claim insofar as not disclosing wherein the pigment dispersion comprises a water-soluble basic substance.
However, Blumenfeld discloses wherein sodium or potassium hydroxide and ammonia are dispersing agents (abstract).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated sodium or potassium hydroxide or ammonia into the pigment dispersion of Hakiri since the pigment dispersion comprises a dispersant and sodium or potassium hydroxide or ammonia are known dispersing agents as taught by Blumenfeld.
In regards to instant claim 10 reciting a green liquid cosmetic, as noted in the instant specification in paragraph [0003], a blue-based pigment provides a green color when used in combination with a yellow coloring matter. Therefore, since Hakiri discloses wherein Prussian Blue and yellow iron oxide may be used together, a green liquid cosmetic would have been obvious.
Response to Arguments
Applicant argues that one having ordinary skill in the art would not have found it obvious to combine the specific features claimed.
The Examiner does not find Applicant's argument to be persuasive. Applicant has not explained why or how the rationales and teachings discussed in the rejection do not make the claimed invention obvious. As such, Applicant's argument is unpersuasive since no explanation has been provided.
Applicant argues that the coloring composition of Okuyama’s Example 11 and of Kido’s Comparative Example 2 is different from that of the present invention.
The Examiner does not find Applicant’s argument to be persuasive. No one piece of prior art is required to teach each and every claim limitation. The rejection does not state wherein Okuyama's or Kido’s teachings alone teach the claimed invention. As such, Applicant's argument is unpersuasive.
Applicant argues that it cannot be supposed to set the molar ratio of the water-soluble basic substance to Prussion blue of 0.025 to 0.25 from Sakuma. If the ratio in Sakuma’s Example 3 is changed, the pH of the dispersion would vary significantly.
The Examiner does not find Applicant's argument to be persuasive. Applicant still has not explained why one of ordinary skill in the art would not have arrived at the claimed ratio from Sakuma disclosing 0.1 or 0.2 wt. % aminomethylpropanol and 1 to 30% inorganic pigment. If the ratio is to be limited to Example 3, it is not clear why Sakuma would disclose 0.1 or 0.2 wt. % aminomethylpropanol and 1 to 30% inorganic pigment. Furthermore, Applicant has not shown that if the ratio is changed that the pH of the dispersion would vary significantly. Also, even if the pH were to vary significantly, this would not teach away from the independent claims since the independent claims do not require the composition to have a particular pH. As such, Applicant's argument is unpersuasive.
Conclusion
Claims 1, 3-14 and 19-21 are rejected.
Claims 15-18 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
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