DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 22 July 2026, in response to the Office Correspondence dated 25 March 2026, are acknowledged.
The listing of Claims filed 22 July 2026, have been examined. Claims 1-5, and 11-13 are pending. Claims 1-4 are amended, claims 6-10 are canceled, and new claims 11-13 have been added.
Information Disclosure Statement
The Information Disclosure Statement (IDS), filed 18 May 2026, is acknowledged and has been considered.
Response to Amendment
Amendment support
The amendments are entered for purposes of examination. Regarding the amendments to claims 1-4, the originally filed disclosure expressly identifies a four-member Group A consisting of polyaspartic acid, polylactic acid, polyphosphoric acid, and polyacrylic acid. The amendment limiting the polyorganic acid alternatives to polyaspartic acid or polylactic acid therefore does not select previously undisclosed species from an undifferentiated genus; it deletes two members from a finite list of four expressly identified alternatives.
Likewise, the specification expressly describes an aqueous solvent selected from water, a lower alcohol having five or fewer carbons, or a polyhydric alcohol and identifies methanol, ethanol, n-propyl alcohol, isopropyl alcohol, the butyl alcohol isomers, and pentyl alcohol among the specific lower alcohols. These expressly disclosed species are monohydric alcohols. Accordingly, limiting the lower-alcohol branch to a lower monohydric alcohol having five or fewer carbon atoms is reasonably conveyed by the originally filed disclosure.
Regarding new claims 11-13, The originally filed specification expressly states that the “(total) content” of the polyorganic acid or polyorganic acid salt is preferably 0.2 to 2.0 mass% relative to the total amount of the liquid cosmetic. Thus, the numerical range itself is expressly supported. However, a new issue is identified regarding the clarity of claim 11, as outlined in the new rejection under § 112(b), detailed below.
The specification expressly identifies titanium oxide among the inorganic pigments other than the iron oxide pigment that may be used in the first-disclosure cosmetic. Claim 12 therefore has direct written-description support. The specification expressly identifies salts of polyaspartic acid among the usable polyorganic acid salts and further states that polyaspartic acid or a salt thereof is particularly excellent in dispersion stability, with sodium polyaspartate being particularly preferred. Claim 13 therefore has direct written-description support.
Claim status
The previous informal claim objections to amended claims 1, 3, and 4 are withdrawn; the objections concerning canceled claims 6-8 are moot; the previous 35 U.S.C. §112(b) rejection is withdrawn in view of the amendment; the previous §103 rejection over Hayakawa in view of Kato is withdrawn because the prior combination does not adequately establish the newly claimed polyaspartic-acid/polylactic-acid limitation; and the provisional statutory double-patenting rejection of canceled claims 6-10 is moot.
However, the application is not in condition for allowance. Claims 1-5 and 11-13 are subject to the new 35 U.S.C. §112(b) rejection concerning the relationship between the “polyorganic acid” and “polyorganic acid salt” alternatives and claim 11 has additional clarity issues; claims 1, 4, 5, 11, and 13 are rejected under 35 U.S.C. §102(a)(1) as anticipated by Aota (US20050002881A1); claim 2 is rejected under 35 U.S.C. §103 over Aota; and claims 3 and 12 are rejected under 35 U.S.C. §103 over Aota in view of Ogino (US20200261330A1). Thus, the applicant’s request for withdrawal of all rejections and issuance of a Notice of Allowance is therefore respectfully declined.
The applicant has amended claims 1, 3, and 4 substantially in accordance with the recommendations in the prior Office correspondence. The prior objections to those claims are therefore withdrawn. The objections directed to claims 6-8 are rendered moot by cancellation of claims 6-10.
The applicant’s amendment has substantially addressed the basis of the previous rejection under 35 U.S.C. §112(b). The prior rejection had principally questioned the unqualified breadth of “polyorganic acid” and the meaning of “core-shell-type emulsion particles.” The present specification also gives concrete disclosure regarding the core-shell acrylate particles, including EMUPOLY-CE-119N and its polymer composition. Accordingly, the previous 35 U.S.C. §112(b) rejection is withdrawn. However, a separate clarity issue is nevertheless presented by amended claim 1, as outlined below as a new rejection under 35 U.S.C. §112(b).
The previous rejection of claims 1-10 under 35 U.S.C. §103 over Hayakawa in view of Kato/Kondo is not maintained. Amended claim 1 now recites that “the polyorganic acid is selected from polyaspartic acid or polylactic acid.” The applicant’s amendment therefore materially narrows the polyorganic-acid limitation. The previously applied Kato disclosure concerns principally polycarboxylic-acid dispersants based on polymers of acrylic acid, methacrylic acid, maleic acid, itaconic acid, and corresponding salts. Kato does not, in the portions previously relied upon for this limitation, establish polyaspartic acid or polylactic acid as a member of that disclosed polycarboxylic-acid genus.
The prior rejection additionally stated that substitution of “one known dispersant (e.g., polyaspartate) for another (e.g., polyacrylic acid) is routine.” However, the references then relied upon did not provide an adequate evidentiary basis for treating polyaspartate as an art-recognized substitute for the disclosed polyacrylate in the claimed formulation. The prior Hayakawa/Kato ground is therefore withdrawn and replaced by the following rejections based principally on Aota and Ogino, as outlined below.
Claims 6-10 have been canceled, therefore the prior provisional statutory double patenting rejection of claims 6-10 of the current application over claims 1-5 of co-pending U.S. Application No. 18/717,176 is therefore moot and is withdrawn.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 25 March 2026, as the applicant's new claims and claim amendments necessitate the new grounds of rejection presented below based on the amended/newly cited limitations.
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 Applicant regards as his invention.
Claims 1-5, and 11-13 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, regards as the invention.
Amended claim 1 recites, “a polyorganic acid or a polyorganic acid salt”, but subsequently states only “wherein the polyorganic acid is selected from polyaspartic acid or polylactic acid.” The latter limitation grammatically modifies only “the polyorganic acid” and does not expressly state whether the alternative “polyorganic acid salt” must likewise be a salt of polyaspartic acid or polylactic acid. The applicant’s remarks appear to interpret the claim as requiring the acid or its salt to be derived from polyaspartic acid or polylactic acid, but the actual claim language does not unambiguously say so. The applicant also argues in Applicant’s Arguments/Remarks Made in Amendment, for example, that neither reference discloses “a polyorganic acid, or polyorganic acid salt, of polyaspartic acid or polylactic acid.”
When a claim is reasonably susceptible to more than one interpretation concerning which species fall within its scope, an indefiniteness rejection is appropriate (see MPEP §2173.02; In re Packard, 751 F.3d at 1311; see also Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008), noting the desirability of resolving ambiguity during prosecution). Accordingly, claim 1 and dependent claims 2-5 and 11-13 are included in this rejection as being indefinite under 35 U.S.C. §112(b) because it is unclear whether the “polyorganic acid salt” alternative of claim 1 is unrestricted as to the identity of its parent polyorganic acid, or limited to a salt of polyaspartic acid or polylactic acid, and the dependent claims to not remedy this defect.
The applicant may resolve the issue, for example, by reciting, “a polyorganic acid or a polyorganic acid salt, wherein the polyorganic acid is selected from polyaspartic acid or polylactic acid and the polyorganic acid salt is a salt of polyaspartic acid or polylactic acid”, or other language accurately reflecting the applicant’s intended scope and having support in the original disclosure.
For purposes of compact prosecution, the prior-art rejections of the claims below under 35 U.S.C. §103 are examined under assuming the applicant’s narrower asserted meaning that the salt alternative encompasses salts of polyaspartic acid or polylactic acid. The prior-art rejections therefore do not depend upon the broader interpretation identified above.
In addition, claim 11 is separately rejected. Claim 11 recites, “wherein a content of the polyorganic acid or the polyorganic acid salt is 0.2 to 2.0 mass% relative to the total amount of the liquid cosmetic.” Claim 1, from which claim 11 depends, recites “a polyorganic acid or a polyorganic acid salt.” Because claim 1 employs the open-ended transitional term “comprising,” the claim does not preclude the presence of both a polyorganic acid and a polyorganic acid salt in the same composition. The specification likewise contemplates polyorganic acids and their salts and states that salts of polyaspartic acid, polylactic acid, polyphosphoric acid, and polyacrylic acid may be employed.
When both a polyorganic acid and a polyorganic acid salt are present, however, it is unclear from the language of claim 11 whether the recited range of 0.2 to 2.0 mass% applies to the polyorganic acid alone, the polyorganic acid salt alone, each of the acid and salt individually, either one of the two components so long as at least one satisfies the range, or the combined or total content of all polyorganic acid and polyorganic acid salt present in the composition. The specification indicates that the intended parameter appears to be the aggregate amount, stating that “[t]he (total) content of the polyorganic acid or the polyorganic acid salt is preferably 0.2 to 2.0 mass % … relative to the total amount of the liquid cosmetic.” Nevertheless, claim 11 does not expressly recite “total,” “combined,” or otherwise identify the basis on which the 0.2 to 2.0 mass% limitation is to be calculated.
A claim is indefinite when, after application of the broadest reasonable interpretation consistent with the specification, its metes and bounds are not clear. The determination is made from the perspective of one of ordinary skill in the art reading the claim, in light of the specification (see Power-One, Inc. v. Artesyn Technologies, Inc., 599 F.3d 1343, 1350, 94 USPQ2d 1241, 1245 (Fed. Cir. 2010). Here, the claim language permits more than one reasonable interpretation concerning what quantity must fall within the stated numerical range, such that the metes and bounds of claim 11 are not clearly ascertainable.
The rejection could be overcome, for example, by amending claim 11, if consistent with the applicant’s intended scope, to recite substantially, “wherein a combined total content of the polyorganic acid and the polyorganic acid salt present in the aqueous liquid cosmetic is 0.2 to 2.0 mass% relative to the total amount of the liquid cosmetic.”
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 5, 11, and 13 are rejected under AIA 35 U.S.C. § 102(a)(1) as being anticipated by Aota (US20050002881A1; published 06 January 2005).
A claim is anticipated only when a single enabling prior-art disclosure describes every limitation, expressly or inherently, arranged as required by the claim (Verdegaal Brothers, Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987); Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989)). Identity of exact wording is not required (see In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)). Where a claim recites alternatives, disclosure of one alternative within the claim is sufficient to anticipate the claim (see Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001); MPEP § 2131 and § 2131.02). The effective filing date of instant claims is 08 November 2021. Aota, published 06 January 2005, and therefore qualifies as prior art under AIA U.S.C. § 102(a)(1).
Aota teaches an aqueous liquid cosmetic stored in a pen-type applicator having a brush at an application portion. Aota explains that pigments dispersed in an aqueous medium were conventionally used in “a pen type eyeliner” in which cosmetic contained in a cylindrical storage space is applied by a “brush type nib” (¶[0002]). Aota specifically characterizes its invention as a water-type eyeliner and an eyeliner in which the pigment dispersion is filled into a pen-type container (¶[0011]-[0012]). More importantly, Aota states that the particular composition of Example 3 was “filled in a brush pen type container” and used for writing (¶[0054]).
Aota Example 3 teaches the following formulation black oxide of iron, 8.8 parts; red oxide of iron, 12.0 parts; Prussian blue, 2.4 parts; sodium polyaspartate, 1.2 parts; polyoxyethylene lauryl ether (21 EO, HLB 19.0), 2.0 parts; alkyl acrylate copolymer emulsion, 9.0 parts; 1,3-butylene glycol, 4.0 parts; additional conventional ingredients; and purified water, 59.1 parts (¶[0053]). Accordingly, Aota Example 3 expressly satisfies the instant claim 1 composition limitations of iron oxide pigment (i.e., both black iron oxide and red iron oxide) and a polyorganic acid or a polyorganic acid salt (i.e., sodium polyaspartate). Aota elsewhere identifies polyaspartic acid and salts thereof as suitable anionic dispersing agents (¶[0010], ¶[0022]-[0024]) and identifies sodium salts as examples of such salts (¶[0023]). Aota further states that polyaspartic acid and/or its salts are especially advantageous because they markedly lower viscosity, permit good dispersion at high pigment concentration, and increase the color density of the writing line (¶[0026]).
Thus, even under the narrower interpretation that the polyorganic acid salt must be a salt of polyaspartic acid or polylactic acid, Aota’s sodium polyaspartate is a salt of polyaspartic acid and falls within the amended limitation. The fact that amended instant claim 1 also encompasses polylactic acid does not distinguish the claim because disclosure of one claimed alternative is sufficient for anticipation (see MPEP §2131.02).
Further, Aota Example 3 satisfies the instant claim 1 composition limitations of emulsion particles comprising acrylate copolymer (i.e., 9.0 parts of an alkyl acrylate copolymer emulsion; further Aota additionally teaches generally that its aqueous cosmetic may contain polymer emulsions, including acrylic-resin and styrene/acrylic-resin emulsions (¶[0036])); a nonionic surfactant (i.e., polyoxyethylene lauryl ether (21 EO, HLB 19.0); further identified as a polyoxyethylene-type nonionic surface-active/dispersing agent (¶[0027]), wherein polyoxyethylene alkyl ethers having an HLB of 15-20 are preferred for dispersion stability (¶[0027])); and, an aqueous solvent (i.e., contains 59.1 parts purified water and 4.0 parts 1,3-butylene glycol; further Aota defines an aqueous-type dispersion as having at least 40 wt% water and teaches that the dispersion medium may additionally contain a water-soluble alcohol or polyvalent alcohol (¶[0019])).
Therefore, Aota’s Example 3 is a single working formulation containing the claimed components together (¶[0053]), expressly placed in a brush-pen container (¶[0054]). Aota consequently discloses each limitation of claim 1 in the claimed arrangement.
Instant claim 4 is also anticipated by Aota for the reasons stated for instant claim 1 and further because Aota discloses an aqueous solvent falling within the instant claimed alternatives. Example 3 contains purified water and 1,3-butylene glycol (a polyhydric alcohol) (¶[0053]). Aota additionally teaches that its aqueous dispersion medium may include a polyvalent alcohol (¶[0019]) and identifies 1,3-butylene glycol, propylene glycol, dipropylene glycol, glycerin, diglycerin, sorbitol, xylitol, and related polyhydric materials as humectants (¶[0031]).
Instant claim 5 is anticipated by Aota as well for the reasons stated for instant claim 1 and further because Aota Example 3 contains an additional inorganic pigment other than the iron oxide pigment. In addition to black iron oxide and red iron oxide, Example 3 contains 2.4 parts Prussian blue (¶[0053]), an inorganic pigment distinct from iron oxide.
Instant claim 11 is anticipated by Aota for the reasons stated for instant claim 1 and further because Aota Example 3 expressly contains sodium polyaspartate at a concentration falling within the instant claimed 0.2- 2.0 mass% range. Aota states that the terms “part” and “%” in the Examples are based on weight unless otherwise specified (¶[0041]). Example 3 contains 1.2 parts sodium polyaspartate, and the listed components of Example 3 total 100 parts by weight (¶[0053]). Sodium polyaspartate therefore constitutes 1.2 mass% of the total formulation, which falls within the instant claimed 0.2-2.0 mass% range. A prior-art example providing a specific value within a claimed range anticipates the claimed range (see Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985); UCB, Inc. v. Actavis Laboratories UT, Inc., 65 F.4th 679, 687 (Fed. Cir. 2023); MPEP §2131.03).
Instant claim 13 is also anticipated by Aota for the reasons stated for instant claim 1 and further because Example 3 expressly contains sodium polyaspartate (¶[0053]). Aota estates that suitable salts of polyaspartic acid include alkali-metal salts, specifically including sodium salts (¶[0022]-[0023]). Thus, sodium polyaspartate is expressly a polyaspartic-acid salt within the scope of instant claim 13.
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.
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.
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 set out in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and 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.
The analysis must consider the claim as a whole and provide an articulated reason with a rational underpinning for the proposed modification or combination (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418-22 (2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
A person of ordinary skill in the art at the relevant time would typically have had at least a bachelor’s degree in chemistry, chemical engineering, cosmetic science, pharmaceutical sciences, or a closely related field. More commonly, the skilled person would have an advanced degree (M.S. or Ph.D.) in a relevant area such as colloid/surface chemistry, polymer science, physical chemistry, or cosmetic formulation, particularly if the role involves designing complex aqueous dispersion systems.
A person of ordinary skill in the art at the relevant time would typically have had approximately 2-5 years of practical, hands-on experience formulating liquid color cosmetics, especially aqueous eyeliner, eyeshadow, eyebrow, or mascara products. The skilled person would be familiar with pigment dispersion and stabilization, emulsion technology, and cosmetic packaging. If the person holds a higher degree, the required practical experience may be somewhat less, but the person would still have applied knowledge of cosmetic formulation challenges.
A person of ordinary skill in the art at the relevant time would typically have had an understanding of pigment chemistry and dispersion, particularly iron oxide pigments and other inorganic colorants in aqueous media; knowledge of polymeric dispersants and polyorganic acids or salts (e.g., polyaspartic acid, polylactic acid, polyacrylic acid) and their function in preventing aggregation or sedimentation of pigment particles; familiarity with acrylate copolymer emulsions, including core-shell-type emulsion particles, and their role in film formation, fixation, and water resistance; working knowledge of nonionic surfactants, including their selection, HLB values, and effect on dispersion stability and application properties; familiarity with aqueous solvent systems for cosmetics, including water, lower monohydric alcohols, and polyhydric alcohols, and how solvent composition affects drying time, viscosity, and compatibility; understanding of packaging interactions, particularly pen-type or brush-tip applicators that rely on capillary force to deliver liquid from a reservoir to the application tip, and how formulation rheology and particle size affect flow and clogging; and the ability to design and evaluate formulations for stability, color intensity, line density, and fixation properties, and to optimize ingredient types and amounts through routine experimentation.
The skilled person would also be able to consult standard references and supplier technical literature for cosmetic ingredients and would have the ordinary creativity to combine known ingredients for predictable purposes.
Claims 1 and 2 are rejected under 35 U.S.C. § 103 as being unpatentable over Aota (US20050002881A1; published 06 January 2005).
The effective filing date of the instant claims is 08 November 2021. Aota, was published 06 January 2005, and therefore qualifies as prior art. Aota teaches all the limitations of instant claim 1, as discussed above, from which instant claim 2 depends, however does not explicitly anticipate the specific limitations of instant claim 2.
Example 3 employs sodium polyaspartate, rather than expressly employing free polyaspartic acid in that particular working formulation (¶[0053]). This is the distinction between Example 3 and instant dependent claim 2. Aota, however, teaches polyaspartic acid itself as a suitable anionic dispersing agent (¶[0022] polyaspartic acid and salts thereof; ¶[0023] identifies exemplary salt forms). Aota ¶[0024] states that use of these materials is particularly preferred because dispersion stability is excellent. Further, ¶[0026] teaches using polyaspartic acid and/or its salts and attributes to that selection markedly reduced viscosity, good dispersion even at high pigment concentration, and increased writing-line color density. Claim 4 likewise identify polyaspartic acid and its salts as alternatives in the same pigment-dispersant system (see also ¶[0010]).
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to employ Aota’s expressly disclosed free polyaspartic acid in the Example 3 composition in place of, or together with, the exemplified sodium polyaspartate. The motivation does not depend on hindsight or upon an unsupported assertion that all polymeric acids are interchangeable. Aota itself identifies polyaspartic acid as an alternative to its exemplified polyaspartate salt for the same pigment-dispersing purpose, and expressly identifies favorable dispersion, viscosity, pigment-loading, and line-density properties arising from polyaspartic acid and/or its salts (¶[0022]-[0026]).
Therefore, a person of ordinary skill in the art seeking to formulate Aota’s disclosed aqueous eyeliner using the expressly identified forms of its preferred polyaspartic dispersant would have had an affirmative reason to select free polyaspartic acid. A person of ordinary skill in the art would also have had a reasonable expectation that the substitution would successfully provide an aqueous cosmetic dispersion because Aota itself teaches the free acid and its salts as alternatives within the same disclosed dispersant class and for the same aqueous pigment-dispersion function. This is not an unexplored substitution between unrelated chemical classes.
A substitution of one known element for another where the substituted element and its function are known and the result would have been predictable can support obviousness (see KSR v. Teleflex, 550 U.S. 398, 415, 419-421 (2007); MPEP §2143 (B)), wherein Aota teaches polyaspartic acid and its salts for the same dispersant function. Aota’s identification of both forms for the same formulation purpose provides a reasonable expectation of success in doing so.
Claims 1, 3, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Aota (US20050002881A1; published 06 January 2005) in view of Ogino (US20200261330A1; published 20 August 2020).
The effective filing date of the instant claims is 08 November 2021. Aota, was published 06 January 2005, and Ogino was published 20 August 2020, and therefore qualify as prior art. Aota teaches all the limitations of instant claim 1, as discussed above, from which instant claims 3 and 12 depend, however does not explicitly teach the specific limitations of instant claims 3 and 12.
Aota Example 3, specifically teaches 9.0 parts alkyl acrylate copolymer emulsion (¶[0053]), however, Aota does not expressly characterize the alkyl-acrylate-copolymer emulsion of Example 3 as having a core-shell particle morphology. This is the relevant difference between Aota and instant claim 3.
Ogino is directed to the closely analogous field of water-based liquid makeup cosmetics, including eyeliner, eyebrow cosmetics, eyeshadow, and mascara (¶[0094]), and teaches pen-type products having an applicator comprising a brush and automatic dispensing by surface tension and capillary phenomenon (¶[0095]-[0097]). Ogino’s test products were filled into an automatic pen-type liquid-eyeliner container having a brush applicator (¶[0138]).
Ogino teaches that its water-based liquid cosmetic may contain a film-forming polymer emulsion for preventing secondary adhesion, imparting water resistance, and facilitating makeup removal (¶[0083]). Ogino also teaches that polymers in such emulsions include water-insoluble polymers or copolymers containing alkyl (meth)acrylate monomer units, and that the copolymer may have a random, graft, block, or core-shell-type architecture (¶[0084]). Ogino further identifies alkyl-acrylate-copolymer emulsions and alkyl-acrylate/styrene-copolymer emulsions as suitable film-forming emulsions (¶[0085]) and lists commercial products including YODOSOL GH41F, DAITOSOL 5000STY, and EMUPOLY CE-119N (¶[0086]). Ogino therefore teaches the missing instant limitation, wherein an acrylate-containing copolymer in core-shell form in a film-forming polymer emulsion for a water-based eye cosmetic.
Thus, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to employ a core-shell-type acrylate copolymer of the type taught by Ogino as the acrylate-polymer emulsion in Aota’s Example 3 composition. Both references concern low-viscosity/water-based eye cosmetics suitable for pen/brush applicators, and both employ acrylate-polymer emulsions as formulation components. Aota already establishes the desirability and operability of an alkyl-acrylate-copolymer emulsion in the precise polyaspartate/iron-oxide/nonionic-surfactant system (¶[0052]-[0055]). Ogino identifies core-shell morphology as one of the known architectures for the same class of acrylate-containing film-forming polymers and identifies the functional reasons for using the film-forming polymer emulsion as preventing secondary adhesion, imparting water resistance, and facilitating makeup removal (¶[0083]-[0088]).
Accordingly, a skilled cosmetic formulator seeking a known acrylate-emulsion architecture for Aota’s film-forming component would have had a reason to select Ogino’s expressly disclosed core-shell architecture to obtain the known film-forming properties of that component in the same type of water-based cosmetic. The proposed modification is a use of a known structural form of an acrylate-copolymer emulsion in a closely analogous product for its known function, falling within the predictable-combination/simple-substitution principles of KSR v. Teleflex, 550 U.S. 398, 416-418 (2007) (see also MPEP §2143). Aota and Ogino’s common use of acrylate-copolymer emulsions in water-based eye cosmetics and Ogino’s statement of their film-forming purposes provides the factual link between the prior art teachings.
In addition, a person of ordinary skill in the art would reasonably have expected the modification to succeed because Ogino expressly teaches core-shell acrylate-containing copolymers as suitable constituents of film-forming aqueous polymer emulsions in water-based liquid cosmetics, rather than teaching the core-shell structure in an unrelated technology. Ogino also uses sodium polyaspartate in its water-based liquid cosmetic (¶[0019], ¶[0030]-[0032]), reducing concern that the core-shell acrylate architecture would have been considered incompatible with a polyaspartate-containing aqueous cosmetic. Further, Aota permits acrylic polymer emulsions generally (¶[0036]). The proposed modification therefore would neither destroy Aota’s principle of operation nor render its aqueous pigment dispersion unsuitable for its intended brush-pen use. Therefore, instant claim 3 is prima facie obvious over Aota in view of Ogino.
Regarding instant claim 12, Aota Example 3, however, does not expressly contain titanium dioxide/titanium oxide pigment. However, Ogino teaches the addition of metal-oxide colorant component (D) to its water-based liquid cosmetic in order to impart coloring and suppress sedimentation (¶[0053]). Ogino’s Group D1 comprises of yellow iron oxide, red iron oxide, black iron oxide, titanium dioxide, and titanium oxynitride, while Group D2 comprises Prussian blue (¶[0053]). Ogino further teaches that whereas these pigments can be used individually, two or more may be used in combination in order to vary the characteristics of the cosmetic (¶[0055]). Ogino also identifies titanium oxide as having a specific gravity suitable for the disclosed compositions (¶[0062]). Thus, Ogino does not merely identify titanium dioxide somewhere in an unrelated list. It expressly teaches titanium dioxide and iron oxides as members of the same pigment component for a water-based liquid cosmetic and expressly instructs that two or more members can be combined.
Hence, it would have been prima facie obvious to one of ordinary skill in the art, prior to the instant effective filing date, to add titanium dioxide to Aota’s iron oxide-containing aqueous eyeliner when adjustment of the coloring, opacity, shade, or other cosmetic characteristics was desired. The motivation is supplied by Ogino, wherein component (D) is added to impart coloring and suppress sedimentation (¶[0053]), and two or more listed pigments may be combined in order to vary the characteristics of the cosmetic (¶[0055]). Ogino specifically places titanium dioxide, red iron oxide, and black iron oxide in the same finite pigment group.
Aota likewise already employs multiple inorganic pigments to obtain desired cosmetic coloration (i.e., black iron oxide, red iron oxide, and Prussian blue are combined in Example 3; see ¶[0053]), and Aota explains that its pigments may be blended to obtain desired hue (¶[0014]-[0015]). Thus, adding another known inorganic cosmetic pigment according to Ogino’s express multi-pigment teaching is consistent with Aota’s existing formulation strategy. The modification therefore represents combining familiar cosmetic pigment elements according to their known coloring functions to obtain a predictable variation in the cosmetic’s characteristics (see KSR v. Teleflex, 550 U.S. 398, 416-18; MPEP §2143).
A person of ordinary skill in the art would reasonably have expected titanium dioxide to function successfully as an additional pigment because Ogino identifies titanium dioxide for the same water-based liquid cosmetic environment, alongside the same iron-oxide pigments, and teaches combinations of those pigment ingredients. Ogino therefore supplies direct evidence of compatibility and intended function rather than requiring an assumption that all inorganic pigments behave identically. Further, Aota already uses a multi-pigment aqueous dispersion system and reports good storage and ink-discharge performance for Example 3 (¶[0052]-[0055]). Aota also permits additional body-color pigments (¶[0035]). Consequently, there would have been a reasonable likelihood that the known titanium-dioxide addition would produce an operable water-based cosmetic while performing its established pigment function (see MPEP §2143.02), and therefore instant claim 12 is obvious over Aota in view of Ogino.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 22 July 2026, have been fully considered.
The applicant argues that Hayakawa discloses hydroxy acids such as citric acid, lactic acid, tartaric acid, and glycolic acid, while Kato discloses polycarboxylic acids based on acrylic acid, methacrylic acid, maleic acid, itaconic acid, and related polymers, but neither reference expressly teaches polyaspartic acid or polylactic acid. The applicant therefore argues that the newly added species limitation is not taught or suggested by the combination. The applicant’s argument is persuasive with respect to the particular Hayakawa/Kato rejection previously made.
The previous statement that “[t]he substitution of one known dispersant (e.g., polyaspartate) for another (e.g., polyacrylic acid) is routine” was not supported by a cited disclosure establishing polyaspartate as the asserted art-recognized substitute. Although Kato’s disclosure of polyacrylate establishes one known dispersant, it does not by itself establish that polyaspartate or polylactate was a known equivalent suitable for the claimed formulation. Accordingly, the rejection of claims 1-5 previously made under 35 U.S.C. §103 over Hayakawa in view of Kato is withdrawn. Withdrawal of that particular rejection, however, does not establish patentability because additional prior art directly addresses the limitation upon which the applicant relies.
Aota’s black and red iron oxides satisfy the claimed “iron oxide pigment”; sodium polyaspartate is a polyaspartic-acid salt and therefore satisfies the claimed polyorganic-acid-salt alternative even under the applicant’s narrower asserted construction; the alkyl acrylate copolymer emulsion satisfies “emulsion particles comprising acrylate copolymer”; polyoxyethylene lauryl ether satisfies the claimed nonionic surfactant; Aota expressly describes polyoxyethylene alkyl ethers, including polyoxyethylene lauryl ether, as polyoxyethylene-type nonionic surface agents; and purified water and 1,3-butylene glycol constitute the claimed aqueous solvent. Every limitation of claim 1 is therefore expressly disclosed in the single Example 3 formulation and associated brush-pen use.
Claim 4 is likewise anticipated because Aota Example 3 contains both purified water and 1,3-butylene glycol, the latter being a polyhydric alcohol. Aota also expressly teaches that an aqueous dispersion medium may contain a water-soluble alcohol or polyvalent alcohol. Claim 5 is anticipated because Aota Example 3 additionally contains Prussian blue in addition to black and red iron oxides. Prussian blue is an inorganic pigment distinct from the iron oxide pigments. Indeed, the present specification itself treats iron blue/ferric ferrocyanide as an inorganic pigment falling within the “inorganic pigment other than the iron oxide pigment” terminology used in claim 5.
Claim 11 is anticipated because Example 3 contains 1.2 parts sodium polyaspartate in a 100-part-by-weight formulation, thereby expressly providing 1.2 mass% polyaspartic-acid salt, which lies within the claimed 0.2-2.0 mass% range. Aota states that the quantities in its examples are based on weight. A specific prior-art value falling within a claimed range anticipates that range (see MPEP § 2131.03). In addition, claim 13 is anticipated because Aota Example 3 expressly contains sodium polyaspartate, which is a sodium salt of polyaspartic acid. Aota separately confirms that alkali-metal salts, including sodium salts, are suitable salts of its disclosed polyaspartic acid dispersant.
Aota additionally and expressly teaches polyaspartic acid itself, as well as salts thereof, as alternative anionic dispersing agents, rendering it obvious to one of ordinary skill in the art to use the expressly disclosed free polyaspartic acid in place of the exemplified sodium polyaspartate in Aota Example 3 because Aota itself identifies the acid and its salts as alternative members performing the same pigment-dispersing function and expressly attributes the relevant favorable dispersion properties to polyaspartic acid and/or its salts. Thus, claim 2 is obvious as a predictable substitution of one expressly taught alternative for another to perform the same known function. Aota itself teaches both forms for the same aqueous cosmetic pigment-dispersion purpose and specifically attributes favorable viscosity, dispersion, and writing-density properties to polyaspartic acid and its salts, thus one would have a reasonable expectation of success in doing so.
Ogino is directed to the same field of water-based liquid cosmetics and pen-type cosmetic products. Ogino teaches film-forming polymer emulsions containing alkyl (meth)acrylate polymers and expressly states that the copolymer can be a random, graft, block, or core-shell-type copolymer. Thus, rendering it obvious to one of ordinary skill to employ the expressly taught core-shell morphology for the acrylate-copolymer emulsion in Aota’s aqueous brush-pen eyeliner. Therefore, claim 3 is obvious. The modification represents use of a known structural form of an acrylate film-forming emulsion in the same type of product to obtain its known and predictable film-forming properties. A person of ordinary skill would reasonably have expected the core-shell acrylate emulsion to remain compatible with the aqueous pigment dispersion because Ogino expressly teaches such emulsions for water-based liquid cosmetics and Aota already teaches acrylic-polymer emulsions in its own formulation.
Ogino also teaches a water-based cosmetic containing sodium polyaspartate and “at least one” inorganic pigment selected from yellow iron oxide, red iron oxide, black iron oxide, titanium dioxide, titanium oxynitride, and Prussian blue. Ogino states that this pigment component is incorporated for coloring and for suppression of sedimentation. Thus, rendering claim 12 obvious as well, to incorporate titanium dioxide as an additional inorganic pigment in Aota’s iron-oxide/polyaspartate aqueous eyeliner when adjustment of color, opacity, or related pigment properties was desired. Ogino teaches titanium dioxide for the same type of aqueous polyaspartate cosmetic and within the same expressly disclosed pigment group used for coloring. The proposed modification requires no change in the fundamental operating principle of Aota’s composition, wherein the titanium dioxide would continue to perform its conventional pigment function, while Aota’s polyaspartate/nonionic-dispersant system would continue to perform its pigment-dispersing function. The combination is therefore the predictable use of familiar cosmetic components according to their established functions (see In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)).
The applicant states that the claimed aqueous cosmetic does not cause aggregation or sedimentation of colorant particles, increases the density of drawn lines, improves fixation, and is suitable for eyeshadow, eyeliner, eyebrow, or mascara applications, citing ¶[0011] and Examples 1-12. These assertions have been considered but do not overcome the rejections.
First, with respect to claims 1, 4, 5, 11, and 13, Aota anticipates the claimed subject matter. Evidence of unexpected results or other secondary considerations cannot establish novelty where a single prior-art reference discloses every limitation of the claim (see In re Wiggins, 488 F.2d 538, 543 (CCPA 1973); MPEP §2131.04). Second, the alleged results are not recited as structural or quantitative limitations of the present claims. Claim 1, for example, does not require a specified level of fixation, sedimentation resistance, color density, or improvement relative to a control. Patentability cannot be predicated upon an unclaimed distinction (see In re Self, 671 F.2d 1344, 1348 (CCPA 1982)).
Third, the disclosures of the prior art materially undermine the assertion that the cited effects themselves establish unexpectedness. Aota expressly teaches that polyaspartic acid and its salts provide favorable dispersion, markedly reduced viscosity permitting high pigment concentrations, and increased writing-line density, and reports satisfactory brush-pen writing and storage behavior. Ogino similarly addresses dispersibility, redispersibility, and dispensability in pen-type water-based cosmetics.
The specification’s comparative results have nevertheless been considered. The Table 1 examples use, inter alia, sodium polyaspartate and the core-shell product EMUPOLY-CE-119N and report fixation, sebum resistance, water-resistant fixation, and drying-property results. Those comparisons do not establish, on the present record, an unexpected result attributable across the full scope of the limitations distinguishing dependent claims 2, 3, or 12 from the cited art. In particular, they do not establish unexpectedness for substituting free polyaspartic acid for its salt, for the claimed core-shell morphology relative to the closest prior-art acrylate emulsions, or for adding titanium oxide relative to the closest prior-art pigment systems.
Unexpected results must be supported by factual evidence and the showing must be commensurate in scope with the claimed invention (see In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980); MPEP § 716.02(d)). Accordingly, the applicant’s statements regarding advantageous properties do not overcome the present 35 U.S.C. §102 and §103 rejections.
Conclusion
No claims are allowed.
The 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). The 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 (87 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.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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