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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated February 23, 2026 is acknowledged.
Claims 1-16 are pending.
Claims 1-16 are currently amended.
Claims 7 and 9-16 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-6 and 8 as filed on February 23, 2026 are pending and under consideration to the extent of the elected species, e.g., the species of at least one chromophore is aryl-carbon and the species of polyol with reactive functional groups is polypropylene oxide.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn, and all previous claim rejections under 35 USC 112(b) are withdrawn.
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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
Claim 1 is objected to because of the following informalities: in the final wherein clause “a surface” should presumably recite “the surface” because there is only one surface and antecedent basis is implicit. Appropriate correction is required.
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112(b)
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 1-6 and 8 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “the polymeric chromophore” in the final wherein clause. There is insufficient antecedent basis for the polymeric chromophore because the antecedent recites at least one polymeric chromophore and it is unclear whether the polymeric chromophore references one, more than one or all of the at least one polymeric chromophores of the antecedent. Claims 2-6 and 8 are included in this rejection because they depend from claim 1 and thus they also encompass the embodiment under rejection. Claim 4 is also included in this rejection because claim 4 also recites “the polymeric chromophore”.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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 as of the effective filing date of the claimed invention(s) 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 as of the effective filing date of the later invention in 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Vasudevan (US 2006/0089422, published April 27, 2006, of record) as evidenced by Smith et al. “The nature and activity of carbon black surfaces,” Rubber Chemistry and Technology 23(3):625-634, 1950, of record.
Vasudevan is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
Vasudevan teaches a polymeric colorant comprising a pigment having a polymer covalently attached thereto, a dye covalently attached to the polymer, wherein the dye covalently attached to the polymer includes a reactant coupled to the dye and to the polymer (title; abstract; claims).
Dyes include phthalocyanine dyes (paragraph [0030]), as required by instant claim 2. The dye comprises active groups inclusive of carboxyl which can be reacted with polymers having alcohol groups (paragraph [0029]; claim 2), as required by instant claim 3.
Polymers include acrylic polymers (paragraph [0028]).
Pigments include carbon black (comprise hydroxy groups as evidenced by Smith, e.g., summary) (claim 25), as required by instant claims 4, 5. Linking groups and/or functional groups attach the pigments to the polymers, although certain polymers can be directly attached (paragraph [0044]).
The pigment particle to polymer chain weight ratio can be from about 10:1 to 1:10 (paragraph [0045]).
Vasudevan does not specifically teach or exemplify an embodiment of a powder comprising 0.1 to 50 wt% of at least one polymeric chromophore chemically linked to a polyol with reactive functional groups and 50 to 99.9 wt% of a powder having superficial reactive groups as instantly claimed and therefore anticipation cannot be found. However, Vasudevan renders obvious colorants comprising pigment particles inclusive of carbon black (which comprises surface hydroxy groups) in a weight ratio of about 10:1 to 1:10 with respect to a polymer chain inclusive of an acrylate polymer (polyol) covalently attached to a dye inclusive of a phthalocyanine dye (chromophore). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding the recitation of a cosmetic composition and of at least one cosmetic powder, such recitations of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Vasudevan (US 2006/0089422, published April 27, 2006, of record) as evidenced by Smith et al. “The nature and activity of carbon black surfaces,” Rubber Chemistry and Technology 23(3):625-634, 1950, of record as applied to claims 1-5 above, and further in view of Bruhnke et al. (US 5,766,268, published June 16, 1998, of record).
Vasudevan is applied herewith on the elected embodiment
The teachings of Vasudevan have been described supra.
Vasudevan does not teach an aryl-carbon dye chromophore as required by the elected embodiment of claim 2.
Vasudevan does not teach polypropylene oxide as required by claim 8.
These deficiencies are made up for in the teachings of Bruhnke.
Bruhnke teaches poly(oxyalkylene)-substituted colorants comprising an organic chromophore inclusive of phthalocyanine or diarylmethane (aryl-carbon), an electrophilic reactive group, a nucleophilic linking group and a poly(oxyalkylene)-containing moiety inclusive of polypropylene oxide (title; abstract; claims; paragraph bridging columns 3 and 4; paragraph bridging columns 4 and 5), as required by instant claims 2, 8. The colorants are suitable for ink and non-ink applications (columns 1 and 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the poly(oxyalkylene)-substituted colorants of Bruhnke comprising an organic chromophore inclusive of diarylmethane (aryl-carbon) and a poly(oxyalkylene)-containing moiety inclusive of polypropylene oxide as taught by Bruhnke for the dye covalently attached to the polymer of the polymeric colorant of Vasudevan because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Vasudevan (US 2006/0089422, published April 27, 2006, of record) as evidenced by Smith et al. “The nature and activity of carbon black surfaces,” Rubber Chemistry and Technology 23(3):625-634, 1950, of record as applied to claims 1-5 above, and further in view of Vilner et al. (US 2015/0118494, published April 30, 2015, of record).
The teachings of Vasudevan have been described supra.
Vasudevan does not teach a pearlescent pigment as required by claim 6.
This deficiency is made up for in the teachings of Vilner.
Vilner teaches surface modified pigment particles suitable for inks (title; abstract; claims). Pigments comprising surface hydroxyl groups are most suitable and include inter alia carbon black or/and reflecting pigments inclusive of titania coated mica (pearlescent) (paragraphs [0153], [0154], [0163], [0166]; [0175]), as required by instant claim 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute pigments inclusive of titania coated mica (pearlescent) as taught by Vilner for the pigment of the polymeric colorant of Vasudevan because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant at page 7 of the Remarks cites to MPEP 2111.02 in support of the argument that the “cosmetic” is not an intended use but rather a structural feature. This is not found persuasive because it is not seen what structural feature is imparted by the term cosmetic. A cosmetic is understood as a product intended to be applied to the skin. .
Applicant at page 7 of the Remarks cites to page 5, lines 8-12 of the instant specification in support of the argument that polymeric chromophores do not penetrate the skin. This is not found persuasive because the claims are not drawn to polymeric chromophores per se but rather to polymeric chromophores chemically linked to the surface of a powder. Presumably the product claimed, being bigger than a polymeric chromophore per se, also would not penetrate the skin.
Applicant at pages 7-8 cites to the ink-jet printing systems of Vasudevan in support of the apparent argument that an ink is not a cosmetic. This is not found persuasive because Vasudevan, as a whole, is drawn to the polymeric colorant per se as well as a corresponding ink composition (e.g., title). Vasudevan expressly teaches other applications are suitable for the polymeric colorants and that the ink application is non-limiting (e.g., paragraphs [0024], [0056]).
The polymeric colorant of Vasudevan (e.g., claim 1) does not requires any features that would render the polymeric colorant unsuitable for application to the skin.
Applicant at page 8 states Vasudevan does not teach the claimed ranges of claim 1. This is not found persuasive because Vasudevan does teach the weight ratio of 10:1 to 1:10 which corresponds to ranges of about 9 (1/11) to 91 (10/11) wt% and 91 to 9 wt%, where the total weights necessarily sum to 100 wt%. These ranges overlap the instantly claimed ranges, sufficient to establish prima facie obviousness as set forth in the rejections.
Applicant at page 8 states Smith has nothing to do with cosmetics. This is not found persuasive because Smith is merely relied upon to evidence an inherent feature of Vasudevan.
Applicant at pages 8-9 states it is unpredictable to combine Vasudevan with Smith. This is not found persuasive because Vasudevan and Smith are not in fact combined.
Applicant at page 9 states carbon black is not a suitable substrate for the claimed invention. This is not found persuasive because the claims, at broadest, recite a cosmetic powder such as a pigment (e.g., claims 1, 5). Carbon black falls within the scope of the instant claims. Carbon black is also suitable for cosmetic applications, and is used in particular in mascaras.
Applicant at page 9 concludes the Examiner has failed to properly articulate the necessary findings of fact as set forth in MPEP 2143 in order to sustain the rejection. This is not found persuasive because Applicant mischaracterizes the rejection as one based on the KSR rationale of combining known elements. In fact, no combination has been made.
Applicant at pages 9-10 states not all polymeric chromophores with PAO are suitable for bonding the powder and concludes Bruhnke cannot be combined with Vasudevan. This is not found persuasive because the instant claims embrace all polymeric chromophores with PAO and given that the colorants of Bruhnke are suitable for ink applications it seems evident that Bruhnke is combinable with Vasudevan. Notably, Bruhnke expressly teaches non-ink applications of the PAO substituted colorant thereof to include detergents and soaps (column 6, lines 9-19). Soaps are broadly and reasonably understood as products intended to be applied to the skin.
Applicant at page 10 states Vilner does not teach the composition of claim 1 and states Vilner cannot be combined with Vasudevan because the technical effects of carbon black and pearlescent pigments are totally different. This is not found persuasive because Vilner is not relied upon to teach the composition of claim 1 and because Vasudevan in fact embraces any pigment (e.g., claim 1). Pearlescent pigments fall within the scope of pigments.
Therefore, the rejections over Vasudevan are properly maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schehlmann et al. (US 2009/0291107) teaches chromophore coated metal oxide particles (title; abstract; claims).
Buchholz et al. (US 6,685,924) teaches conjugates comprising an inorganic pigment and an active organic covalently bound through a spacer group (title; abstract; claims).
Soane et al. (WO 2007/021731, IDS reference filed August 30, 2023, ISR “X” reference) teaches a dye inclusive of a chromophore attached with a multifunctional coupling agent comprising Si and at least one member inclusive of a hydroxyl group to a pigment particle (title; abstract; claims, in particular 1, 10, 12; paragraphs [0023], [0031], [0073], [0097]). The multifunctional, preferably but not necessarily silane, coupling agents of Soane are not polyols as instantly claimed. Furthermore, it is not possible to calculate the degree of dye capture from the Examples of Soane (inclusive of Example 39 comprising APTES as the silane coupling agent) and Soane does not render obvious the ranges instantly claimed.
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 ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600