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 .
Response to Arguments
Due to amendments, the 35 USC 112 rejections and 35 USC 102/103 rejections under KR 2004 have been withdrawn. Regarding the rejections under Urashima, Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive. The applicant argues that the most preferred materials in Urashima and the percentages given in their examples do not teach the claimed language. However, this argument is not convincing because despite there being different embodiments in Urashima, Urashima still teaches the claimed language in at least one embodiment.
The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but rather whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a court can take into account the inferences and creative steps that a person of ordinary skill in the art would employ”). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the techniques is obvious unless its actual application is beyond his or her skill.” See id. At 417.
The applicant argues that Urashima teaches other components that are not present in the claim. However, the composition “comprises” the materials in the claim, thereby not excluding other materials. The applicant further argues that Urashima or Urashima and KR 2020 do not teach the anti clumping result of the claimed invention. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Unexpected results cannot be used to overcome this rejection when the claim language is not commensurate in scope with the claims.
` New grounds of rejection are due to amendments.
Claim Rejections - 35 USC § 112
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 the applicant regards as his invention.
Claims 9-11 and 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 9, the language includes “wherein the surfactant is a glyceryl ester-based surfactant, a silicone-based surfactant, or a combination thereof having a Hydrophilic Lipophilic Balance (HLB) value of 3 to 8”. It is unclear if the HEB refers to each surfactant and the mixture, or just the mixture.
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.
Claim(s) 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Urashima et al. (US 2020/0095441 A1, hereafter Urashima)
As to claim 9, Urashima applies an ink composition to the surface of a cosmetic using an inkjet printing method (abstract) where the composition includes a water-soluble pigment (para 0026-0031, claimed percentage 0032), a water miscible organic solvent (para 0033-0034, percentage 0035), and a glyceryl ester or silicone-based surfactant (para 0037-0038 and silicone can be used as a dispersant (as a dispersant is a type of surfactant material) in para 0020). As for the HEB values, some of the materials in Urashima teach these values, but what is claimed is indefinite (see above). It would be obvious to one of ordinary skill in the art to combine the teachings of Urashima to arrive at the claimed invention as Urashima teaches the art recognized suitability and utility of the claimed limitations.
As to claim 13, the cosmetic is of a solid powder or oil-based formulation (para 0042).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Urashima in view of KR 2020-0077971A (hereafter KR 2020)
Urashima does not teach plasma treatment. KR 2020 teaches pretreating cosmetics before other coatings are applied by atmospheric plasma in order to improve the coating properties and process efficiency (abstract). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Urashima to include atmospheric plasma pretreatment as taught by KR 2020 in order to improve the coating properties and process efficiency.
Conclusion
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). 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 KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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