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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-7 and 9-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description
The instant claims recite a method of coloring a base cosmetic that requires the identification of the base to be colored and the printing of inks in a first zone and second zone that are adjacent and different from one another on its surface such that the zones have distinct, clearly defined edges or borders and maintain these distinct and clearly defined edges or borders between the first and second zones for 24 hours post-printing. The base composition is recited to be a pulverulent in compact powder form that is “hydrophobic” which the specification states is understood to mean that it repels water. At the same time, this composition is also recited to quickly absorb 20ml of water (under 12 seconds) and 20ml of an ink (under 15 seconds) as conditions that qualify it for use in the instant method. The structure that corresponds to this combination of functions is unclear because these functional requirements are nearly conflicting. The material is required to be water repellant, but not so repellant that it repels water too much. How this nuance manifests itself in the structure of the pulverulent compact powder that is required to practice the invention has not been made clear. The disclosure elaborates on the “hydrophobic” descriptor to suggest the presence of a fatty phase in the composition that can include liquids or solids and/or volatile or non-volatile forms. Fillers and customary compounds employed in pulverulent cosmetic compositions may also be present. A potential compressive strength for the compacted powder is also detailed. The components of tested base formulations are discussed in the instant specification. One such example is example 8 which is detailed to include talc along with silicone and hydrocarbon oils (see paragraph 121). When tested for water absorption time, the 20 ml droplet took more than 60 seconds to penetrate which is indicative of being hydrophobic, but falls far short of the additional requirement that the water penetration occur in less than 12 seconds. Other tested compositions that meet the water penetration time, such as in examples 1-4, only have talc and caprylyl glycol as common ingredients across them all. The numbers of components vary considerably across these examples and no clear collection of components is discernable that is required to achieve the required function to qualify as a base to employ in the claimed method. At best, the example compositions give suggestions as to some combinations of components to combine to try to yield the required water penetration time performance, but each also has a list of ingredients that “may” have been present and none detail the proportions of any of the included ingredients or any other details about their construction. The artisan of ordinary skill would not know based upon the disclosure or the functional description of the base composition how to assemble a collection of ingredients into a pulverulent compact powder that has the claimed functionality in order to begin to attempt practicing the instantly claimed method.
Three inks are recited as being employed in the method whether as a part of the identification process for the base or as part of the active steps of the method. The inks are aqueous with a viscosity from 1 to 500 mPa•s at 25⁰C and are 50% water in combination with an additional hydrophilic chosen from alcohols, glycols having from 2 to 8 carbon atoms, C3 and C4 ketones,C2-C4 aldehydes and polyols, and mixtures thereof. No other constituents are disclosed in the exemplary ink formulations. The composition and properties of the inks employed in tests to assess base composition qualification for the method and the printing steps are not detailed by the disclosure. The disclosure provides no connection between particular base composition formulations and particular ink formulations that need to be paired such that the claimed functionality is achieved. In the context of inkjet printing, the choice of ink and substrate are very important in regard to how quickly the ink penetrates and is retained in the desired location. Svanholm (previously cited) detail that the quality of the print is highly dependent on droplet spreading, which is controlled by both ink properties, such as surface tension and viscosity, and to a great extent by media absorption properties which include surface tension, roughness, and porosity (see page 10 second paragraph). None of these physical attributes of the base composition are detailed (e.g., surface tension, roughness, and porosity). In the instant specification, example 9 provides a water penetration time that is shorter than examples 1 and 3, which would seemingly qualify the example 9 base composition as hydrophobic. While it exceeds the td2 ink penetration time criteria by only about 13%, the example 9 base composition scores a 0 out of 5 for pattern sharpness compared to a score of 3 for examples 1 and 3. It is not clear which aspects of the structural differences between example 9 as compared to examples 1 and 3 is responsible for the difference in performance. Examples 1 and 3 have more ingredients in common with each other than with example 9; however, the key features of the composition and/or configuration of examples 1 and 3 that permit them to yield the requisite td2 penetration time is not evident nor discussed. Thus there is insufficient guidance to direct the pairing of a base composition with inks that are able to penetrate as necessary to fulfill the td2 absorption time requirement.
Choi et al. (KR 20040087095 - previously cited) discuss challenges of obtaining desired shape or design on the surface of solid powder cosmetics through the stress of commercial display (see page 4 first full paragraph-third-page 8). They note that printing via spraying to apply a desired shape and image did not yield satisfactory line boundaries (see page 7 first paragraph). They go on to teach applying a surface or intermediate pre-treatment layer that promotes adhesion of the ink to the cosmetic followed by printing the described ink image via inkjet printer (see page 9 last paragraph-page 10 first paragraph). The ink viscosity is detailed at 0.5 to 12 mPa•s and preferably 2 mPa•s and includes water and/or a solvent envisioned as components such as various alcohols and diols (glycols) (see page 16 last paragraph-page 24 first paragraph). The envisioned cosmetic products include compact cosmetic products such as compressed powder cosmetics (see page 17). Choi et al. further note the challenge of employing water based inks that are more commonly used due to the wax/oil content of these cosmetic base compositions and the resulting water repulsion, thus their pre-treatment on these products must be compatible with the ink to compensate (see page 15-page 18 first full paragraph). They also detail that mismatches between the surface tension of the ink and the product surface can also impede adhesion of the ink and the pre-treatment layer can overcome this difference (see page 18 second full paragraph-last paragraph). Choi et al teach the viscosity of the pre-treatment composition to range from 0.5 to 500 mPa•s and for its components to be 30 to 99% by weight solvent, 0.1 to 50% by weight plasticizer or humectant and 0.1 to 30% by weight surfactant, where film forming agent at 0.01 to 30% by weight and/or powder at 0.1 to 20% by weight are preferably present (see page 21 last paragraph-page 23). They also detail envisioned options for each category of component and provide an example pre-treatment formulation (see pages 24-27 and page 34 last paragraph). The approach detailed by Choi et al. is described and shown to produce a clear image when applied to a white pressed powder treated with their pre-treatment (see pages 34-35 and untranslated original figure 1). It is not apparent if ink penetration through the thickness of the pre-treatment coating layer accompanies the adhesion that Choi et al. detail for color placement retention. Choi et al. do not characterize water and ink penetration time into their pre-treatment coated pressed powder cosmetics and the instant disclosure does not discuss how the components in the base composition are arranged. While the issue the applicant seeks to address with their method was recognized, it is not clear if other approaches traverse the same path of water and ink penetration time limits in order for the details of the base composition and ink details in the prior art to fill the void in the instant description.
As a result, the disclosure is lacking in the necessary structure-function correlation to demonstrate possession of the claimed invention and adequately describe the claimed invention.
Enablement
Claims 1-7 and 9-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The factors that may be considered in determining whether a disclosure would require undue experimentation are set forth by In re Wands, 8 USPQ2d 1400 (CAFC 1988) at 1404 where the court set forth the eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Forman, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors:
1) the quantity of experimentation necessary,
2) the amount of direction or guidance provided,
3) the presence or absence of working examples,
4) the nature of the invention,
5) the state of the prior art,
6) the relative skill of those in the art,
7) the predictability of the art, and
8) the breadth of the claims.
These factors are always applied against the background understanding that scope of enablement varies inversely with the degree of unpredictability involved. In re Fisher, 57 CCPA 1099, 1108, 427 F.2d 833, 839, 166 USPQ 18, 24 (1970). Keeping that in mind, the Wands factors are relevant to the instant fact situation for the following reasons:
1. The nature of the invention, breadth of the claims, state and predictability of the art, and relative skill level
The invention relates to a process of coloring a base cosmetic composition by providing a base composition and printing aqueous ink in two different zones via an inkjet printer by the application on the base composition of an ink of a first color to a first zone and an ink of a second color to a second zone via 5 to 200 printing passes. The base composition is a pulverulent compacted powder and the process must yield the deposition of at least 0.2 mg/cm2 of ink that has at least 50 wt% water and contains an additional hydrophilic solvent chosen from alcohols, glycols having from 2 to 8 carbon atoms, C3 and C4 ketones, C3 -C4 aldehydes and polyols, and mixtures thereof, where the inks have a viscosity from 1 to 500 mPa•s at 25⁰C. To qualify for use in the method, the base composition must be hydrophobic and must allow a 20ml drop of water to penetrate its surface in less than 12 seconds at 20⁰C and atmospheric pressure as well as permit a 20ml drop of ink to penetrate its surface in less than 15 seconds at 20⁰C and atmospheric pressure. The ink of the first color and second color must also satisfy this latter criteria. After printing, the first and second zones must have distinct and clearly defined edges or borders 24 hours post-printing. The claims also recite the shape of the zones, penetration depth of the printed ink, the arrangement of multiple zones, the color of the base composition prior to printing and the application of a third compound.
The relative skill of those in the art is high, that of an MD or PhD. That factor is outweighed, however, by the unpredictable nature of the art. Lamminmaki et al. (previously cited) discuss the impact of the print surface on the ability of inks to penetrate due to inkjet printing (see abstract). Here, coating layers on paper that are based upon polyvinyl alcohol or styrene acrylate are compared in terms of the rate of penetration of a dye based ink (see page 381 second column first full paragraph). The coating thickness and polymer variety made a large difference in the rate of penetration (see figure 8). Svanholm teaches that inkjet inks come in several varieties that include aqueous, non-aqueous, and hot melt (see page 6 last paragraph). The colorant in the ink is either a dye or a pigment (see page 7 first full paragraph). Inkjet printing is a versatile technology, whose range of inks is vast and virtually any surface can be printed, but paper is by far the most common surface (see page 10 second paragraph). The quality of the print is highly dependent on droplet spreading, which is controlled by both ink properties, such as surface tension and viscosity and to a great extent by media absorption properties which include surface tension, roughness, and porosity (see page 10 second paragraph).
Choi et al. detail challenges of obtaining desired shapes or design on the surface of solid powder cosmetics noting that printing via spraying to apply a desired shape and image did not yield satisfactory line boundaries (see page 2 third-seventh paragraphs seventh paragraph). They go on to teach applying a surface or intermediate pre-treatment layer that promotes adhesion of the ink to the cosmetic followed by printing the described ink image via inkjet printer (see page 2 twelfth-thirteenth paragraphs).
Choi B (US 2015/0314141 – previously cited) details the use of inkjet printing to add color to a base cosmetic formulation where liquid inks are employed for pressed powder, gel, or cream base cosmetics (see paragraphs 38 and 55-56). Multiple printing passes are envisioned that are separated by a specified time interval to permit penetration of the applied ink (see paragraph 141). Additionally, Choi B teaches that the base cosmetic formulation to be colored can be divided into regions to which different colors are applied (see paragraph 104).
Post-filing discussions of Wang et al. (previously cited) detail the impact of processing conditions on liquid droplet penetration on the surface of products made of compacted powders (see abstract). Here a water droplet moved slower through compacted powder containing magnesium stearate that had been agitated (subjected to shear) more during processing (see page 113 first column second full paragraph-second column third full paragraph, page 114 first column first partial-first full paragraphs, page 117 first column and table 3 ta and tc). They detail that added agitation increased the lubricant distribution in the powder mixture and resulted in a shift in water penetration rate (see page 117 first column first full paragraph).
2. The amount of direction or guidance provided and the presence or absence of working examples
The prior art points to the nature of the inkjet ink and the printed substrate being very important to the penetration of the ink into the substrate. As discussed in the previous section under this statute concerning written description, the disclosure falls short of adequately describing the base composition and ink compositions such that the requisite penetration times of water and the ink are fulfilled. Four partially described examples of base compositions are provided that yield the required water penetration time, td1, and ink penetration time, td2 for one commercially available ink (see specification paragraphs 111-122 and paragraph 125 table). The ink composition is not detailed. These compositions and five other partially described base compositions are employed for printing two different inks in a checkerboard pattern. The additional ink also is not described. Some ingredients in the base composition are listed and an additional set of components are listed for each example as potentially being present. No examples of particular formulations that includes proportions or a definitive list of ingredients of the base cosmetic are provided. Aqueous inks are discussed in regard to the envisioned proportion of water and the presence of other hydrophilic solvents. More broadly, dyes are discussed that include water soluble varieties and a range of ink viscosities are also detailed in the claims and specification. The applicant provides no general direction in regard to matching an ink with a particular base composition such that the claimed penetration rates are achieved or detail how to select a base composition that has the required water penetration rate. Across the four compositions that met the td1 and td2 criteria, only talc and caprylyl glycol are present in each one (see specification paragraphs 114-117). Example 9 also met the criteria for water penetration time, td1, but did not meet the ink penetration time for the tested ink (see specification paragraph 125 table). Like the example compositions that met td1 and td2, it also contains talc and caprylyl glycol (see specification paragraph 122). Thus the ability of one fluid to penetrate the base composition, as desired, is not predictive of the performance of the other fluid. Further, the base composition formulations and configurations necessary to achieve both td1 and td2 are not evident from the examples and the combination of components common across all successful base-ink pairings are not predictive of achieving both td1 and td2 (see specification paragraphs 114-115, 122, and 125 table examples 1, 2, and 9).
In addition, there is no guidance about proportions and configuration of components in the base composition which prior art details is impactful to the ability of inkjet printer printed ink to be retained in the desired location (see Choi et al. page 2 seventh and twelfth-thirteenth paragraphs and page 3 fourth-sixth full paragraphs). Other processing variables on some powder compositions can impact water penetration speed as detailed by Wang et al. concerning compacted powder compositions comprising magnesium stearate. Instant examples 2, 3, and 9 each contain magnesium stearate. While examples 2 and 3 meet the instant limitation for td1 and td2, example 9 does not, yet all three compositions were susceptible to the impact of shear exposure during processing on water penetration capabilities due to the presence magnesium stearate. The disclosure provides no discussion of how the base composition examples were made. Thus the processing conditions and component arrangement necessary to obtain qualifying base compositions are also unpredictable.
Given the importance to print quality of media absorption properties which 1) are influenced by base composition processing parameters and configurations and 2) include surface tension, roughness, and porosity, as well as droplet spreading, which is also impacted by ink properties that include surface tension and viscosity, the absence of any correlation between the attributes of the ink and base composition in the context of the instant method and the absence of base composition processing guidance makes the performance of the claimed method unpredictable.
3. The quantity of experimentation necessary
Because of the known unpredictability of the art, and in the absence of experimental evidence, no one skilled in the art would accept the assertion that the instantly claimed method could be predictably practiced. Accordingly, the instant claims do not comply with the enablement requirement of §112, since to practice the invention claimed in the patent a person of ordinary skill in the art would have to engage in undue experimentation, with no assurance of success.
Relevant Prior Art
Choi et al. teaches addressing the issue of image sharpness produced from inkjet printing a water based ink, with the instantly claimed viscosity and additional solvent(s), onto a cosmetic compact powder. Choi et al. also show multiple printed zones with distinct, clearly defined edges as well as printing more than two regions of inks in alternation (see figure 1 of untranslated original). Choi B teaches the concept of printing colored ink onto a powder makeup base via multiple passes on adjacent regions. The prior art provides additional discussions of printing onto a powder material with a liquid ink. Hirayama (previously cited) detail the utility of water based inks for printing makeup actives onto a base. Miller et al. (previously cited) teach printing onto a medium via repeated passes over the same region. Collectively, the prior art teaches structurally defined aspects of the active steps of the instantly claimed method as well as functional aspects in the desire for the maintenance of printed image integrity and color on cosmetic powders that lasts through commercial display and reaches the desired consumer (see Choi et al.).
Response to Arguments
Applicant's arguments filed July 20, 2026 have been fully considered but they are not persuasive. Rejections no longer pertinent due to claim cancellation are withdrawn.
Regarding the rejection under 35 USC 112(a) – written description:
The applicant argues that the artisan of ordinary skill would understand that the claimed base composition is a pulverulent in a compact powder form and not a solid. The distinction between a solid and a pulverulent compacted power was not an issue raised in the rejection. The issue is the variability in the properties of compact pulverulent powders, their impact on the rate of penetration of a liquid into its surface, and the absence of guidance concerning the formulations and physical properties that are required in order for a base composition to qualify for use according to part (a) of the claimed method.
The applicant notes the presence of gaps between the particles of a compact pulverulent powder that allow for permeability and water absorption. The porosity in a compact pulverulent powder was clearly insufficient to qualify the base composition formulations in instant examples 5-8 for the instant method. They are all compact pulverulent powders and all repel water such that they are hydrophobic, but they also repel water to a degree that they also fail to qualify as a base composition according to step (a) of the instant method. Thus gaps in compact pulverulent powders are not enough to qualify such compacts for the instantly claimed base compositions.
The applicant asserts that the specification sets forth a detailed method for producing the claimed “base composition that is a pulverulent in compact powder form” where “the base composition is hydrophobic” with the claimed functionality. The applicant does not point to any section of the disclosure or quote any text that provides such a detailing. Instead, the specification gives a general listing in paragraphs 24-35 of possible categories of components to include in a hydrophilic or hydrophobic base composition with no discussion of any proportions for any constituent component or of any methodologies employed to assemble the materials into a compact pulverulent powder form. The specification states in paragraph 24 “[t]he expression ‘hydrophobic base composition’ is understood to mean a composition that repels water. In particular, a hydrophobic base composition is not soluble in water or in polar compositions or is very sparingly soluble in water or in polar compositions. In other words, a hydrophobic base composition does not create hydrogen bonds with the water molecules. Thus, a hydrophobic base composition comprises for the most part hydrophobic compounds”. As noted in the preceding paragraph, meeting the criteria of being hydrophobic by repelling water is not enough to qualify a base composition for the claimed method. Paragraph 39 in the specification details a range of contemplated compressive strengths. However the compressive strength is not reported for any of the examples in the table following paragraph 125. Thus it is unknown which compressive strengths within the disclosed range correlates with achieving the claimed td1 in order to qualify a compact pulverulent powder composition as a base composition for the method. Further, even in the examples that provide a listing of ingredients in the compositions that were tested for their ability to meet the td1 criteria, no proportions are provided, and the listings include several ingredients categorized as “may also be present”. Thus the identity of all the components in the tested compositions are not actually disclosed. Consequently, the disclosure does not contain a detailed method for producing the base composition.
Additionally, the applicant argues that the inks used for testing were adequately identified such that their identities and those of the instant claims are clear. While a commercial name is provided for two inks that were employed in testing, their viscosities were not disclosed. The claims recite the inks of the instant method to have a viscosity ranging from 1 to 500 mPa •s. The rate at which an ink with the viscosity of water is able penetrate a base composition is quite different than that of an ink that is 500 times more viscous. Thus the ability of a base composition to meet the td2 criteria depends on the choice of ink, where one ink may fail but another could succeed. Example 9 in the table after paragraph 125 fulfills td1 which tests water penetration, but failed td2 for the tested ink. Example 3 had a larger qualifying td1 value than example 9, indicating water penetrating into its surface was slower than in example 9, yet the reverse occurred for the tested ink, where the instantly claimed td2 was met for example 3 but was too high for example 9. There is no indication of why the water based ink performed worse in regard to penetration rate on the base composition that permitted water penetration better. There is no guidance provided to direct how to identify the ink compositions needed to fulfill td2 for a given base composition that fulfils td1. Thus the existence of commercial ink compositions does not ameliorate the lack of description provided in the instant disclosure concerning the inks in the claimed method.
Regarding the rejection under 35 USC 112(a) – enablement:
The applicant argues that working examples are provided in the instant disclosure along with a description of making the base composition which together sufficiently enable the practice of the claimed method without undue experimentation. The applicant also asserts that the disclosure “(1) provided examples of the base composition; (2) clearly provided water and ink absorbency rates (that are explicitly recited in claim 1); and (3) provides specific examples of commercially available suitable inks”. The specification does not disclose formulations of the tested base compositions which included 4 successful working examples, but instead gives listings of their ingredients, several of which may or may not have even been present. The disclosure of how these incompletely described base compositions performed when tested with two commercial inks is not demonstrative of the predictability of the scope of methods, given that a td1 qualifying base composition still failed to meet the td2 criteria with the tested inks, but still may meet td2 with another choice of ink. No guidance is provided as to how to select an ink for td1 qualifying base compositions such that td2 is achieved. The disclosure of two inks whose viscosity is not disclosed does not provide predictability across the scope of inks that are claimed via the component and viscosity recitations of the claimed method. Further, the paragraph noted at the end of the specification by the applicant, details maximum proportions for two categories of ingredients which still does not provide adequate guidance as to how to predictably assemble the base composition such that td1 is met or how to select an ink such that td2 is subsequently met and the method can be practiced. It remains the position of the examiner that the method as instantly claimed and disclosed requires an undue amount of experimentation to practice. The artisan of ordinary skill attempting to practice the claimed methods is left with a trial and error pursuit of the claimed outcome, where the necessary base composition as well as base composition-ink composition pairings are not predictable.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 CARALYNNE E HELM whose telephone number is (571)270-3506. The examiner can normally be reached Mon-Fri 9-5.
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/CARALYNNE E HELM/Examiner, Art Unit 1615
/MELISSA S MERCIER/Primary Examiner, Art Unit 1615
