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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/27/26 has been entered.
The amendment filed 4/27/26 has been considered and entered. Claism 11 and 12 have been added. Claims 1-12 remain in the application for prosecution thereof.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Considering the amendment filed 4/27/26, the 5 USC 112 rejection has been withdrawn.
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.
Claims 1,7-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665).
Kina (2018/0325783) teaches decorating powder composition for decorating the surface of a solid cosmetic material with a glossy powder. The method includes casing the decorated powder composition to adhere to a printing plate and then bringing the printing plate in contact with the surface of a solid cosmetic to transfer the decorated powder to the surface of the solid cosmetic to decorate it. (abstract)
Kina (2018/0325783) fails to teach decorating the solid cosmetic using a mask for patterning the decoration and removing the excess powder by suctioning.
Kobayashi et al. (5,698,374) teaches a similar patterning process whereby a patterned is formed on a substrate using a mask, sprinkling or spraying the particulate material on the surface of the substrate and removing excess particulate by suctioning (abstract, col. 4, lines 43-52 and col. 6, lines 30-45).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Kina (2018/0325783) process to perform the coating by utilizing a mask and suctioning process as taught by Kobayashi et al. (5,698,374) with the expectation of producing a patterned decorated coating.
Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) fail to teach suctioning excess particulate from the mask.
Branch (8,365,744) teaches using a stencil for applying dry powders whereby the dry powder can be removed by vacuum (claimed suctioning) and Herchen et al. (2015/0110665) teaches removing excess powder from a mask by vacuum [0073].
Therefore, it would have been obvious for one skilled in the art to have modified Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) process to include suctioning excess particulates from the mask as evidenced by Branch (8,365,744) and Herchen et al. (2015/0110665) with the expectation of reusing the mask/stencil and therefore saving on production costs.
Regarding claim 1, both Kina (2018/0325783) teaches a decorating powder composition which does not recite using a liquid carrier while Kobayashi et al. (5,698,374) teaches a particulate composition which may include a binder but it is not liquid. Also, the suctioning step would be inclusive of collecting the pigment not deposited on the exposed surface. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Further, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Regarding claims 7 and 8, Kobayashi et al. (5,698,374) teaches particulate sized from 1-100 microns (col. 5, lines 17-21).
Regarding claim 9, Kina (2018/0325783) teaches the glossy powder to have pearly luster or pearl agents (claimed pearlescent) [0019] and [0034].
Regarding claim 10, Kina (2018/0325783) teaches a decorated surface of a cosmetic product is formed (abstract).
Regarding claim 12, while the Examiner acknowledges the fact that the reference are silent with respect to the claimed suctioning flow rate of 5-35 m3/hour, the Examiner takes the position that the rate of suctioning would be a matter of design choice by one practicing in the art absent a showing of criticality thereof. If Applicant were to show criticality and amend all claims to include the suctioning flow rate of 5-35 m3/hour, the Examiner would reconsider his position.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) further in combination with Santillan et al. (10,954,036).
Features detailed above concerning the teachings of Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) are incorporated here.
Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) fail to teach forming the solid cosmetic product by pouring into a secondary package.
Santillan et al. (10,954,036) teaches a support element for cosmetic whereby the cosmetic product is formed by pouring into a mold (claimed secondary packaging) (col. 1, lines 20-35).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) process to form the solid cosmetic by pouring in a mold as taught Santillan et al. (10,954,036) with the expectation of producing the desired cosmetic product.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) further in combination with Beaudonnet et al. (2018/0154500).
Features detailed above concerning the teachings of Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) are incorporated here.
Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) fail to teach forming the solid cosmetic product by spraying at the claimed pressure of between 2-10 bars.
Beaudonnet et al. (2018/0154500) teaches method of modifying the appearance of a surface such as cosmetic finishing using a spray gun at low pressures of less than 4 or 3 bar [0005].
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) process to spray the coating at a pressure of less than 4 bar as evidence by Beaudonnet et al. (2018/0154500) with the expectation of coloring the surface thereof.
Regarding claim 6, the Examiner noted that the spray bar pressure is less than that claimed, however, the Examiner takes the position that the spray pressure is a result effective variable and would be optimized by one skilled in the art depending upon the coating particles utilized and the substrate being coated and hence would be within the skill of one practicing in the art absent a showing to the contrary.
Claims 3,4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) further in combination with Kornmeyer (9,228,256).
Features detailed above concerning the teachings of Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) are incorporated here.
Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) fail to teach placing the cosmetic product to be coated on a pallet with a grid to support the cosmetic product for coating.
Kornmeyer (9,228,256) teaches a substate support for holding substrates such as wafers during process including spray coating (abstract and claim 6).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Kina (2018/0325783) in combination Kobayashi et al. (5,698,374) further in combination with Branch (8,365,744) and Herchen et al. (2015/0110665) process to utilize a grid support holder for spray coating the cosmetic product as taught Kornmeyer (9,228,256) with the expectation of producing the claimed coating thereon.
Regarding claim 11, Kornmeyer (9,228,256) teaches transverse members (4,5) and traverse supports (2,3) which would meet the claimed “rim of the pallet” on which the mask is applied for decorative coating thereof.
Response to Amendment
Applicant's arguments filed 4/27/26 have been fully considered but they are not persuasive.
Applicant argued Branch (8,365,744) and Herchen et al. (2015/0110665) fail to teach suctioning excess particulates from the mask but only teach vacuuming but not from a surface of the mask.
The Examiner agrees. The combination rejection includes Kobayashi et al. (5,698,374) which is relied upon for using a mask, sprinkling or spraying the particulate material on the surface of the substrate and removing excess particulate by suctioning (abstract, col. 4, lines 43-52 and col. 6, lines 30-45). Branch (8,365,744) uses a stencil and Herchen et al. (2015/0110665) teaches removing excess powder from mask [0073].
Applicant argued the prior art failed to teach newly added claims 11 and 12.
These are addressed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM.
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/BRIAN K TALBOT/Primary Examiner, Art Unit 1712
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