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 .
Priority
The instant application was filed 18 December 2023 and the Applicant does not claim priority to any other documents. Therefore, the effective filing date of the instant application is 18 December 2023.
Examiner’s Note
The Applicant's amendments and arguments filed 30 June 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. 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and/or objections not reiterated from previous office actions are hereby withdrawn.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. In the Applicant’s response, filed
30 June 2026, it is noted that claims 1 and 11-20 have been amended, claim 21 remains withdrawn, no claims have been canceled, and claims 22-24 have been newly added. Support for the amendment(s) and/or new claim(s) were made for clarification regarding the numbering of claims or can be found on at least pg. 8 of the instant specification. No new matter has been added.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-14, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitra (US 2022/0249342 A1) and Pernodet (US 9125843 B2).
Mitra teaches a cosmetic composition (abs; entire teaching) comprising a coagulant system that is prepared through a reaction product of an oil component and synthetic polymer component (para. 14), such as linseed oil and poly(isobutyl methacrylate) (para. 45), addressing claims 2-4, 7-9. Applicant’s election is interpreted as addressing the limitations in claims 5 and 6. The composition may be an oil-in-water emulsion (para. 33) and may comprise oils/oily components (para. 25) or oil solvents (para. 27). The cosmetic product may further comprise colorants/coloring material (paras. 25, 66, 138), isododecane (para. 76), and triglycerides (para. 80), addressing claim 11. The composition may comprise 1-25% of the coagulant system (para. 23), 10-90% of an oily phase (para. 69), and 0.001-20% (para. 139) of coloring materials (para. 138), which addresses claim 16. Since the oily phase may be in an amount of 10-90% (para. 69) and water phase may be 1-90% (para. 89), it is interpreted as addressing the ratio in claim 18. The cosmetic composition in the form of an oil-in-water emulsion (para. 33) is interpreted as addressing claims 17, 19, and 20.
Regarding the amendments in claim 1, Mitra teaches 1-25% of a polymer that is the reaction product of linseed oil and poly(isobutyl methacrylate) (coagulate system), 10-90% of an oily phase (para. 69), and 0.001-20% (para. 139) of coloring materials (para. 138).
Mitra does not specifically teach caprylic/capric triglycerides from the Applicant’s election, pigment particles dispersed in the solvents in claim 1, or specific pigments recited in claims 12-14.
Pernodet teaches a cosmetic composition comprising particulate material, such as pigments (col. 14, lns. 29-37), and may be in the form of an emulsion and may comprise an oil and an aqueous phase (Example 5). Suitable thickeners include caprylic/capric triglyceride (col. 4, lns. 14-22) and particulate materials include titanium dioxide (col. 14, lns. 39-57) and anthraquinone (col. 14, lns. 59-67), addressing claims 12-14. The pigment particulate materials are interpreted as dispersed within the emulsion system or solvent. The Hansen Solubility Parameter of claim 10 is interpreted as an inherent property of Applicant’s elected species, caprylic/capric triglyceride. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
Since Mitra does not specifically teach caprylic/capric triglycerides from the Applicant’s election, pigment particles dispersed in the solvents in claim 1, or specific pigments recited in claims 12-14, one of ordinary skill in the art would have been motivated to use the teaching from Pernodet with a reasonable expectation of success. Mitra’s composition includes a coagulating system and colorant/coloring material and may be used as a cream or lotion (para. 33) and Pernodet’s composition includes dispersed pigment particles for use as a cosmetic to improve skin appearance. Therefore, a skilled artisan would have recognized the advantage and benefit of incorporating Pernodet’s composition for improved skin appearance with Mitra’s cosmetic composition to improve softness and smoothness of the skin (paras. 33, 43). Generally, it is prima facie obvious to combine or substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
Claim(s) 1-20, 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitra (US 2022/0249342 A1), Pernodet (US 9125843 B2), and ulprospector.com.
In regards to claim(s) 1-14, 16-20, Mitra and Pernodet, as applied supra, is herein applied in its entirety for its teachings of a skin cosmetic composition comprising a coagulating system, solvent, and pigment particles.
Regarding claim 22, Mitra teaches a cosmetic composition (abs; entire teaching) comprising a coagulant system that is prepared through a reaction product of an oil component and synthetic polymer component (para. 14), such as linseed oil and poly(isobutyl methacrylate) (para. 45). Applicant’s election is interpreted as addressing the limitations regarding the weight of linseed oil and poly(isobutyl methacrylate) that is used to form the hydrophobic polymer. The composition may be an oil-in-water emulsion (para. 33) and may comprise oils/oily components (para. 25) or oil solvents (para. 27). The cosmetic product may further comprise colorants/coloring material (paras. 25, 66, 138), isododecane (para. 76), and triglycerides (para. 80). The composition may comprise 1-25% of the hydrophobic polymer (coagulant system) (para. 23), 10-90% of an oily phase (para. 69) or 0.5-90% (para. 97) of ethanol (para. 95), and 0.001-20% (para. 139) of coloring materials (para. 138). Regarding the limitation of exhibiting reduced agglomeration of the pigments, the limitation is interpreted as the final composition having little to no coagulation or agglomeration. Mitra teaches that coagulant system congealing upon application on the skin (para. 13) and is otherwise close to or similar to a single-phase solution before application (para. 141).
Regarding claims 22 and 23, Pernodet teaches a cosmetic composition comprising particulate material, such as pigments (col. 14, lns. 29-37), and may be in the form of an emulsion and may comprise an oil and an aqueous phase (Example 5). Suitable thickeners include caprylic/capric triglyceride (col. 4, lns. 14-22) and particulate materials include titanium dioxide (col. 14, lns. 39-57) and anthraquinone (col. 14, lns. 59-67).
Regarding claim 24, Mitra teaches an oil-in-water emulsion (para. 33) wherein the oily phase may be in an amount of 10-90% (para. 69) and water phase may be 1-90% (para. 89). The weight ratio may therefore fall within the range of 1:4 to about 2:1 (for example, 10% oil and 40% water).
Mitra does not teach a particle size of pigment particles in claims 15 and 22.
Ulprospector.com teaches that titanium dioxide used as pigments in paints, inks, and plastics, typically have a particle diameter size below 100 nm (pg. 2).
Since Mitra does not teach a particle size of pigment particles in claims 15 and 22, one of ordinary skill in the art would have been motivated to use Ulprospector.com’s teaching that titanium dioxide used as pigments has a diameter size of below 100 nm. Mitra teaches coloring agents in their cosmetic composition and Pernodet’s composition may comprise titanium dioxide as their colored or non-colored pigment particles powders. Therefore, a skilled artisan, would have recognized the benefit of using titanium dioxide in this size range to improve the compositions of Mitra and Pernodet.
Response to Arguments
Applicant's arguments filed 30 June 2026 have been fully considered but they are not persuasive.
The applicant argues that a person of ordinary skill in the art would not have been reasonably motivated to use Mitra’s composition to fabricate a pigment particle dispersion (Remarks, pgs. 9-10).
Applicant’s argument is not found persuasive. Mitra’s use of colorants or coloring agents is interpreted broadly to include any substance capable of producing color, which includes pigments. Furthermore, Mitra’s composition may include a variety of additional ingredients, including powders (para. 25), actives, sun filtering agents (para. 130), etc. Titanium dioxide, for example, is known in the art as a UV filter as well as providing pigment. Therefore, it is interpreted that a skilled artisan would have had sufficient motivation to combine the teachings with a reasonable expectation of success.
The Applicant argues that a person of ordinary skill in the art would not have looked to Pernodet to modify the compositions of Mitra, since Pernodet is not concerned with compositions containing the type of polymers required in Mitra’s composition (Remarks, pg. 10).
Applicant’s argument is not found persuasive. As acknowledged, Mitra does not specifically teach caprylic/capric triglycerides from the Applicant’s election, pigment particles dispersed in the solvents in claim 1, or specific pigments recited in claims 12-14. Mitra’s composition includes a coagulating system and colorant/coloring material and may be used as a cream, emulsion, or lotion (para. 33) and Pernodet’s composition includes dispersed pigment particles for use as a cosmetic to improve skin appearance in the form of a cream (col. 15, lns. 47-49). Therefore, a skilled artisan would have recognized the advantage and benefit of incorporating Pernodet’s composition for improved skin appearance with Mitra’s cosmetic composition to improve softness and smoothness of the skin (paras. 33, 43). Generally, it is prima facie obvious to combine or substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
The Applicant argues that hindsight reasoning was used (Remarks, pgs. 10-12).
Applicant’s argument is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Furthermore, the Applicant is reminded that the teachings of KSR are actually an endorsement and expansion of the flexible and expansive approach to obviousness, which clearly invites continued reliance on such broad and flexible analyses concerning the utility of selecting alternative embodiments of components providing art-recognized utility, with no substantial change in the overall utility of a composition so formulated. See KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395-96 (U.S.2007) (“the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”; “When a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious”; “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions” exemplified by the holdings of cases such as Merck v. Biocraft.
The Applicant argues that Peijinchem.com does not overcome the deficiencies of Mitra and Pernodet (Remarks, pg. 13).
The teachings from Peijinchem.com have been removed as prior art and the arguments against them will not be addressed.
The electronic Terminal Disclaimer filing for 18/455,195 has been acknowledged and the Double Patenting rejection has been withdrawn as a result.
Conclusion
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 Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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