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
The listing of claims filed 02 May 2024, have been examined. Claims 1-10 are pending.
Claim Objections
Claims 1, 3, 4, and 6-8 are objected to because of the following informalities:
Claim 1 is objected to for grammar. Claim 1 recites “comprising: at least an iron oxide pigment” The phrase "at least an iron oxide pigment" is grammatically awkward. "At least" is typically used with plural or uncountable nouns (e.g., "at least one," "at least 5%"). Here, "an" is singular and indefinite. The applicant is advised to correct the phrasing to "at least one iron oxide pigment” or “an iron oxide pigment." This may also introduce an antecedent basis issue for “the iron oxide pigment” of claim 5 (see MPEP § 2173.05(e), wherein lack of antecedent basis or unclear numerical ranges renders a claim indefinite).
Claim 3 is objected to for grammar. Claim 3 recites, “wherein the emulsion particles containing acrylate copolymer are core-shell-type emulsion particles” which is grammatically awkward The phrase "emulsion particles containing acrylate copolymer" is used as a noun phrase, followed by "are core-shell-type emulsion particles." This results in a slight redundancy (i.e., "emulsion particles ... are ... emulsion particles"). The applicant is advised to consider amending the claim to "wherein the emulsion particles containing acrylate copolymer are core-shell-type particles." or "wherein the acrylate copolymer is present in the form of core-shell-type emulsion particles."
Claim 4 is objected to for the phrase, “wherein the aqueous solvent is selected from water, a lower alcohol having 5 or less carbons, or a polyhydric alcohol”. The phrase "5 or less carbons" should be "5 or fewer carbons" ("fewer" is more appropriate for countable items). Additionally, it is unclear whether the lower alcohol is a monohydric lower alcohol or includes polyhydric alcohols, since "polyhydric alcohol" is listed separately. The applicant is advised to amend the claim phrasing to "wherein the aqueous solvent is selected from water, a lower monohydric alcohol having 5 or fewer carbon atoms, and a polyhydric alcohol".
Claim 6 is objected to for punctuation and formatting. The claim recites, “the aqueous liquid cosmetic comprising: at least a pigment containing carbon as a main component; a water-soluble acrylic copolymer selected from Group X below; core-shell-type emulsion particles containing acrylate copolymer; and an aqueous solvent: Group X: (styrene/acrylate) copolymer and ammonium acrylate copolymer.” There is a colon after "comprising:" and then another colon after "aqueous solvent:" before Group X. The structure is confusing. Typically, the Group would be introduced before the list of components or set off in a separate sentence. The applicant is advised to consider reformatting for clarity: An aqueous liquid cosmetic that is stored in a type of applicator in which liquid is fed from an application liquid storage portion to an application portion using a capillary force, the aqueous liquid cosmetic comprising: at least a pigment containing carbon as a main component; a water-soluble acrylic copolymer selected from Group X below; core-shell-type emulsion particles containing acrylate copolymer; and an aqueous solvent; wherein Group X consists of: (styrene/acrylate) copolymer and ammonium acrylate copolymer. In addition, claim 6 contains an improper Markush group. The claim recites “selected from Group X below: Group X: (styrene/acrylate) copolymer and ammonium acrylate copolymer.” The use of “and” within the list of a Markush group is improper because a Markush group should be drafted using “or” to indicate that the members are alternatives (see MPEP § 2173.05(h); wherein “Markush groupings should be drafted using the transitional phrase ‘selected from the group consisting of’ followed by the members of the group separated by ‘or’”).
Claim 7 is objected to for reciting that the pigment “is selected from carbon black and/or graphite”. The use of “and/or” in a Markush-type selection makes it unclear whether the pigment must be carbon black and graphite in combination, or one or the other, or both. The proper form is “selected from the group consisting of carbon black, graphite, or a combination thereof”.
Claim 8 is objected to for the same grammatical issue as claim 4 ("less" versus "fewer"). Additionally, an inconsistency between claim 4 ("5 or less") and claim 8 ("6 or less") is noted. While not an error per se, this may indicate a deliberate distinction or a potential drafting oversight.
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 1-10 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.
With respect to claim 1, the specification discloses a “polyorganic acid or a polyorganic acid salt” and defines Group A in ¶[0051] as consisting of polyaspartic acid, polylactic acid, polyphosphoric acid, and polyacrylic acid. While the specification provides a closed group of four specific acids, claim 1 is not limited to these four acids. Instead, claim 1 broadly recites “a polyorganic acid or a polyorganic acid salt” without structural or functional definition. One of ordinary skill in the art would not be able to ascertain the full scope of the term “polyorganic acid” given that the specification provides no general definition, no structural parameters (e.g., molecular weight range, number of repeating units), and no functional criteria beyond the examples. Accordingly, the claim is indefinite. Dependent claims 2-5 are included in this rejection because they do not cure the defect noted above.
Similarly, claim 3 limits the “emulsion particles containing acrylate copolymer” of claim 1 to “core-shell-type emulsion particles” and claim 6 recites “core-shell-type emulsion particles containing acrylate copolymer”. It is not clear what is considered “emulsion particles containing acrylate copolymer”. The specification discloses only a single specific example of core-shell-type emulsion particles as EMUPOLY-CE-119N, identified as an ethylhexyl acrylate/methacrylic acid copolymer [(acrylate/methylstyrene/styrene) copolymer ammonium] in ¶[0059] and ¶[0119]. No general structural parameters (e.g., glass transition temperature ranges, core/shell ratios, molecular weights) are provided to define the genus of emulsion particles containing acrylate copolymer or core-shell acrylate copolymer emulsions that would be suitable and the specification fails to teach how to select appropriate emulsion particles containing acrylate copolymer or core-shell emulsion particles that would achieve the claimed functional properties (e.g., fixation, water-resistant fixation). Thus, the claims are indefinite, as one of ordinary skill in the art could not reasonably ascertain the metes and bounds of “core-shell-type emulsion particles” and “core-shell-type emulsion particles containing acrylate copolymer” with certainty.
In addition, with respect to claim 6, the specification recites that the water-soluble acrylic copolymer is selected from Group X. In the specification at ¶[0110], Group X is defined as “styrene acrylate copolymer, styrene acrylic acid copolymer, and methylstyrene-acrylic acid copolymer”. However, claim 6 defines Group X as: “(styrene/acrylate) copolymer and ammonium acrylate copolymer”. This discrepancy between the specification’s disclosure of Group X and claim 6’s definition of Group X renders the scope of claim 6 unclear. In addition, the specification does not describe “ammonium acrylate copolymer” as a water-soluble acrylic copolymer within Group X, nor does it describe the copolymer of claim 6 with sufficient particularity. The phrase “(styrene/acrylate) copolymer” is ambiguous as to whether it refers to a copolymer of styrene and an unspecified acrylate, or whether “styrene/acrylate” is intended as a specific polymer designation. This lack of clarity renders the metes and bounds of the claim uncertain. Dependent claims 7-10 are included in this rejection because they do not cure the defect noted above.
Claim 9 depends from claim 8. Claim 8 recites that the aqueous solvent is selected from "water, a lower alcohol having 6 or less carbons, or a polyhydric alcohol". The claim is indefinite as it assumes the presence of water where none may be present. Because the solvent optionally includes water, wherein it may be selected from alternatives that do not include water, claim 9 refers to "the water" without antecedent basis if the selected solvent in claim 8 does not include water (see MPEP § 2173.05(e)). To overcome this rejection, the applicant is advised to amend claim 9. This dependent claim should depend from a claim that mandates the presence of water, or should be rewritten to clarify "wherein, when the aqueous solvent comprises water, a content of the water is 50% or more based on a total weight of the aqueous solvent", or similar.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. § 102 and 103 (or as subject to pre-AIA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
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.
Claims 1-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Hayakawa (JP-4119297-B2; published 16 July 2008) in view of Kato and Kondo (WO2020230706A1; published 19 Nov 2020, herein after referred to as “Kato”).
Hayakawa teaches an aqueous liquid cosmetic containing an aqueous solvent (claim 1, ¶[0001], and ¶[0016]; polymer dispersed in water ¶[0028] and water other than in the polymer emulsions ¶[0042]; see also Example 5 using ion exchange water in the formulation ¶[0063]), wherein polyhydric alcohols (e.g., 1,3-butylene glycol (1,3-BG), isoprene glycol, glycerin, diglycerin, propylene glycol, dipropylene glycol and the like are specifically disclosed within ¶[0044]; see also Examples at ¶[0063]-[0074] wherein water is used as the balance with 1,3-BG and dipropylene glycol as co-solvents) and lower alcohols can be appropriately blended in the liquid cosmetic (¶[0042]), comprising iron oxide pigment (as black iron oxide; ¶[0001] and ¶[0057] Table 1), emulsion particles containing acrylate copolymer (¶[0028]-[0033] and ¶[0057], Table 1, as Iodosol GH34) and a nonionic surfactant ¶[0020], ¶[0021] as POE lauryl ether, POE cetyl ether, POE stearyl ether, POE oleyl ether, and POE behenyl ether, and ¶[0057], Table 1 as POE oleyl ether and POE behenyl ether). While not explicitly stated, the formulations show water as the balance component with solid components typically ranging from 15-35% (see Examples at ¶[0063]-[0074]), thus the water content inherently exceeds 50% and this limitation of instant claim 9 is considered inherently taught.
The aqueous liquid cosmetic taught by Hayakawa is stored in pen-type container with a brush tip applicator (claim 1 and 6, ¶[0002], ¶[0013], and ¶[0048]), wherein pen-type brush applicators inherently rely on capillary force to feed liquid from the storage portion to the brush tip (¶[0002] and ¶[0048] describe knock mechanism), thus Hayakawa explicitly teaches the applicator limitations of instant claims 1, 6, and 10.
Hayakawa also teaches blending of pigments (¶[0043]) and wherein the aqueous liquid cosmetic further comprising an inorganic pigment other than the iron oxide pigment (¶[0043] as bengara, yellow iron oxide, conger, etc. and ¶[0069] in Example 8 as transparent iron oxide bengara). Hayakawa teaches that it is known it the art to use carbon black as a pigment which has superior dispersibility as compared to black iron oxide as a black pigment, but may be regarded as problems in terms of safety (¶[0003] and ¶[0004]). Thus, Hayakawa does not explicitly teach the use of carbon black, however it would have been obvious to one of skill in the art, from the teachings of Hayakawa, to substitute the use of carbon black for the use of black iron oxide in the invention of Hayakawa with a reasonable expectation of success, motivated by the desire to improve dispersibility of the composition.
In addition, the invention of Hayakawa recites, “In addition to the above-described components, other components that are usually used in cosmetics can be appropriately blended in the liquid cosmetic as needed within a range that does not impair the effects of the present invention. Examples of the optional ingredients include… polymer compounds other than the present invention [which would include polyaspartic acid, polylactic acid, polyphosphoric acid, and polyacrylic acid], … organic acids other than the present invention [which would include polyaspartic acid, polylactic acid, and polyacrylic acid], … and the like.” (¶[0042]). However, the invention of Hayakawa does not explicitly disclose the use of polyorganic acids such as polyaspartic acid, polylactic acid, polyphosphoric acid, and polyacrylic acid.
As mentioned above, Hayakawa teaches acrylate copolymer emulsions however, core-shell-type structure of emulsion particles, as per the limitations of instant claims 3 and 6 are not explicitly characterized and a water-soluble acrylic copolymer of (styrene/acrylate) copolymer or ammonium acrylate copolymer are not explicitly disclosed in the invention of Hayakawa, as per the limitation of instant claim 6.
The instant specification explicitly specifies that Yodosol GH41F (available from Nouryon) and Daitosol 5000STY (available from Daito Kasei Kogyo Co., Ltd.) are suitable (styrene/acrylate) copolymers (¶[0058]), and Hayakawa explicitly teaches commercially available products such as a polymer emulsion of an acrylate copolymer such as, Daitozole (manufactured by Daito Kasei Kogyo Co., Ltd.), and Yodosol (NSC Japan manufactured) are suitable for embodiments of the invention (¶[0033]) and polyvinyl acetate polymer emulsions such as Vinyblan (manufactured by Nissin Chemical Industry Co., Ltd.). While the specific embodiments of the invention in the examples by Hayakawa use Daitozol 5000AD (SP) or Daitozol 5000SJ (¶[0063]-[0074]) and Yodosol GH34 (¶[0058]), it would have been obvious to one of skill in the art at the time of the invention to use the Daitozol 5000STY (styrene/acrylate) copolymer or Yodosol GH41F product instead with a reasonable expectation of success in doing so, as they are both used to perform the same function as film forming agents for use in the same cosmetic product applications. The motivation to substitute the use of Daitosol 5000STY for Daitozol 5000AD (SP) or Daitozol 5000SJ would be driven by a formulation goal desiring to maximize long-wear of the cosmetic film.
Hayakawa, in embodiment Example 9, uses Daitozol 5000AD (SP) (manufactured by Daito Kasei Kogyo Co., Ltd.) and Vinyblan UGV-5651 (manufactured by Nissin Chemical Industry Co., Ltd.) (¶[0071] and ¶[0072]), wherein Vinyblan UGV-5651 could reasonably be classified as a core-shell-type structure of emulsion particle (see evidentiary reference Nissin Chemical Industry Co., Ltd., Product information VINYBLAN 700 series comparison, describing existing Vinyblan (e.g., Vinyblan UGV-5651) in the 700 series schematic diagram on page 1-2).
Kato teaches explicitly teaches polyacrylic acid dispersant (page 3, paragraphs 1, 2 and 5 and formulation example Table 1, component 11 as, “(B) ポリアクリル酸Na” or sodium polyacrylate, with footnote 6 as, “商品名：ジュリマー ＡＣ－１０３（東亜合成製）：固形分濃度40%” or Product name: Julimer AC-103, manufactured by Toagosei, solid content 40%. Thus, Kato teaches the limitation of instant claims 1 and 2 of polyacrylic acid and its salts as sodium polyacrylate component (B), the polycarboxylic acid dispersant.
Regarding the acrylate copolymer emulsions core-shell-type structure of emulsion particles and (styrene/acrylate) copolymer, as per the limitations of instant claims 3 and 6, Kato explicitly teaches the use of (styrene / acrylate) copolymer (INCI name; Stylerene / Acrylates Copolymer), specifically as the commercially available products of such polymers as Yodosol GH41F (manufactured by AkzoNobel) and Daitosol 5000STY (manufactured by Daito Kasei Kogyo Co., Ltd.) and composite core-shell polymer emulsions composed of a copolymer of an ethylenically unsaturated carboxylic acid-based monomer and a styrene-based monomer and another polymer and / or a copolymer include acrylic acid as in Emmapoly CE-119N (manufactured by Gifu Celac), which is an emulsion of a core-shell type copolymer of -2-ethylhexyl acrylate, methyl methacrylate, and α-methylstyrene. (page 3, paragraph 9 and 10). The instant specification states, “Specific examples of the emulsion of the core-shell-type polymer emulsion containing a copolymer of an ethylenically unsaturated carboxylic acid monomer and a styrene monomer and another polymer and/or copolymer include EMUPOLY-CE-119N (available from Gifu Shellac Mfg. Co., Ltd.), which is an emulsion of core-shell-type copolymer of ethylhexyl acrylate/methacrylic acid copolymer [(acrylate/methylstyrene/styrene) copolymer ammonium]” (¶[0059]; see also instant specification ¶[0119]), hence Kato precisely teaches the acrylate copolymer emulsions of the instant claims.
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to incorporate the polyorganic acid dispersant taught by Kato and substitute the specific core-shell-type emulsion particles containing acrylate copolymer also taught by Kato in the composition taught by Hayakawa, as the combination of acrylate-based copolymers (including styrene/acrylate types) with other cosmetic ingredients was well established in the art prior to the instant invention. The substitution of one known dispersant (e.g., polyaspartate) for another (e.g., polyacrylic acid) is routine. Selecting the polyorganic acid dispersant and a core-shell acrylate copolymer, as taught by Kato, for use in the instant claimed composition would have been a routine formulation choice and one of skill in the art would have a reasonable expectation of combining such choices with the teachings of a formulation as Hayakawa, as the substitutes are known for the same purpose.
The components are all known cosmetic ingredients with recognized functions (pigment, dispersant, film former, surfactant, solvent) and the use of pen-type applicators with brushes for eyeliner compositions is standard practice. The combination yields no unexpected results beyond the predictable properties of the individual components.
Claim Rejections – Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. § 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. § 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. § 101.
Claims 6-10 provisionally rejected under 35 U.S.C. § 101 as claiming the same invention as that of claim 1-5 of co-pending US Application No. 18/717,176 (“reference application”). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 6-10 of the instant application are materially identical and patentably indistinct from to the reference application claims 1-5. Claim 6 of the instant application corresponds to claim 1 of the reference application and dependent claims 7-10 to reference application claims 2-5, respectively. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications (see MPEP § 822).
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at: http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615