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 1-12.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/01/2026 has been entered.
Applicants' arguments, filed 06/01/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Herrmann et al. (WO 990156 A1, Jan. 14, 1999) (hereinafter Herrmann) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3, 2020) (hereinafter Piradashvili).
Herrmann discloses a pigment preparation comprising A) at least one fine-particle organic or inorganic pigment (abstract). Examples of suitable pigments (A) include iron oxide brown, mixed brown, spinel and corundum phases (CI Pigment Brown 24, 29, and 31) (page 5 of translation). The pigment preparation can be printed on all types of substrate materials (page 12 of translation), such as cosmetics (page 13 of translation).
Herrmann differs from the instant claims insofar as not disclosing wherein the iron oxide brown comprises FeO and Fe2O3.
However, Piradashvili discloses wherein iron oxide brown usually does not designate a defined pigment, but a mixture of iron oxide yellow, red, and black. Iron oxide yellow is the name for FeO(OH). Iron oxide red is the name for Fe2O3 (page 2 of translation).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art that the iron oxide brown of Herrmann comprises FeO and Fe2O3 since iron oxide brown is a mixture of iron oxide yellow FeO(OH), iron oxide red Fe2O3, and iron oxide black as taught by Piradashvili.
In regards to the amount of FeO and Fe2O3 claimed, since FeO and Fe2O3 are obtained from iron oxide yellow and iron oxide red, respectively, and a mixture of both is required to formulate iron oxide brown, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amounts through routine experimentation based on the amount needed to produce a brown iron oxide. With regards to the amount of Fe claimed, one of ordinary skill in the art would have arrived at the claimed amount of Fe after arriving at an effective amount of FeO and Fe2O3 since both FeO and Fe2O3 comprise Fe.
In regards to instant claim 2, the amounts listed for each element includes an amount of zero. Piradashvili does not disclose wherein the mixture used to form iron oxide brown comprises or requires the claimed elements. Therefore, an iron oxide pigment that does not include an amount of the elements recited would have been obvious.
In regards to instant claim 3, as discussed above, Herrmann discloses wherein the iron oxide brown has spinel and corundum phases. As noted in the instant specification in paragraph [0016], in a case where the iron oxide pigment has spinel structure and a corundum structure, the intensity of diffraction lines derived from the corundum structure is desirably small. Specifically, it is desirable that, when the integrated intensity of diffraction lines of a (311) plane of a spinel-structured iron oxide appearing at a diffraction angle in a range of 35.10° or more and 36.10° or less in X-ray diffraction measurement is regarded as 100.00, the integrated intensity of diffraction lines of a (104) plane of a corundum-structured iron oxide appearing at a diffraction angle in a range of 32.60° or more and 33.60° or less is 10.0 or less. Therefore, since it appears that the property in instant claim 3 is from an iron oxide having a spinel structure and a corundum structure and the iron oxide brown of Hermann has a spinel structure and corundum structure, the iron oxide brown of Hermann would necessarily have the property recited in instant claim 3.
In regards to instant claim 12 reciting wherein the composition is used to produce dark color, this is merely a recitation of the intended use of the composition. Since the pigment preparation of Herrmann comprises iron oxide brown and is printed on a cosmetic, the cosmetic comprising iron oxide brown is usable for producing a dark color when used on something lighter than brown.
2. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Herrmann et al. (WO 990156 A1, Jan. 14, 1999) (hereinafter Herrmann) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3, 2020) (hereinafter Piradashvili), and further in view of Masubuchi et al. (TW 201302228 A, Jan. 16, 2013) (hereinafter Masubuchi).
The teachings of Herrmann and Piradashvili are discussed above. Herrmann and Piradashvili do not teach wherein the iron oxide brown has an average short axis length of primary particles of 50 nm or more and 500 nm or less.
However, Masubuchi discloses a powder for a cosmetic (abstract). Example 14 discloses manufacture of an iron oxide composite high flat cellulose powder. The method comprises using yellow iron oxide having a short axis of 90 nm.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the iron oxide brown of Herrmann to have a short axis length of 90 nm since this is a known and effective size for iron oxides use in cosmetics as taught by Masubuchi.
3. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Herrmann et al. (WO 990156 A1, Jan. 14, 1999) (hereinafter Herrmann) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3, 2020) (hereinafter Piradashvili), and further in view of Uchida et al. (JP 2002308629 A, Oct. 23, 2002) (hereinafter Uchida).
The teachings of Herrmann and Piradashvili are discussed above. Herrmann and Piradashvili do not teach wherein the iron oxide brown has a bulk density of 70 g/mL or less, a residue after the iron oxide pigment is passed through a sieve with a mesh size of 45 µm of 1 g/kg or less, and an oil absorption of 20 g/100 g or more and 50 g/100 g or less.
However, Uchida discloses a black magnetic iron oxide particle powder having excellent blackness (abstract) used for cosmetics ([0003]). The degree of compression of the black magnetic iron oxide particles is calculated by measuring the bulk density and the tap density. The smaller the degree of compression, the better the fluidity (page 21, first paragraph). The oil absorption is usually 20 ml/100 g or less (page 10, first paragraph). Since the particle surface of the black magnetic iron oxide particles is coated with an organic compound having a hydrophobic group, the particles are not re-agglomerated and exists in a state of being separated one by one (page 24, second and third paragraphs). The black magnetic iron oxide particles have an average particle size of 0.05 to 1 µm (page 5, [0030]).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed bulk density through routine experimentation based on the degree of compression of the iron oxide brown desired since bulk density affects compressibility which affects fluidity as taught Uchida. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
It would have been prima facie obvious to one of ordinary skill in the art to have formulated the iron oxide brown of Herrmann to have an oil absorption of 20 ml/100 g or less and a particle size of 0.05 to 1 µm since these are known and effective physical properties of iron oxides use in cosmetics as taught by Uchida.
It would have been prima facie obvious to one of ordinary skill in the art to have coated the iron oxide brown of Herrmann with an organic compound having a hydrophobic group motivated by the desire to have the iron oxide brown particles not be agglomerated as taught by Uchida. Thus, by having particles that are 0.05 to 1 µm and not agglomerated pass through a sieve with a mesh size of 45 µm, it would have been obvious to one of ordinary skill in the art that there would be no residue of iron oxide.
4. Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Herrmann et al. (WO 990156 A1, Jan. 14, 1999) (hereinafter Herrmann) in view of Piradashvili et al. (WO 2020239402 A1, Dec. 3, 2020) (hereinafter Piradashvili), and further in view of Arnaud et al. (US 2008/0008670, Jan. 10, 2008) (hereinafter Arnaud).
The teachings of Herrmann and Piradashvili are discussed above. Herrmann and Piradashvili do not teach wherein the iron oxide brown is in a skin cosmetic that is liquid, solid, or gel.
However, Arnaud disclose a composition for making up dark skin (abstract). The composition comprises coloring agents (¶ [0004]). Suitable coloring agents include pigments (¶ [0006]). Suitable pigments include iron oxide (¶ [0008]). The iron oxide may be brown iron oxide (¶ [0074]). The composition may be a liquid, a solid, or a gel (¶ [0205]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated the iron oxide brown of Herrmann into the composition of Arnaud since the composition comprises brown iron oxide and the iron oxide brown of Herrmann is a known and effective brown iron oxide for cosmetics.
Response to Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Response to Declaration
Declarant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Conclusion
Claims 1-12 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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