DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicant’s Amendments and Remarks, filed 2 July 2026, in the matter of Application N° 18/717,176. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No claims have been canceled. Claims 6-11 have been added. Though the subject matter presented within the claims is supported, the each of the claims depending directly or indirectly contain new matter as discussed herein below (see New Rejections).
Claims 1, 2, and 4 have been amended. Claim 1 adds the limitation of “an emulsion containing particles having a core-shell structure” and “wherein the aqueous liquid cosmetic contains no diethylhexyl sodium sulfosuccinate.” The former limitation is supported by the originally-filed disclosure (see e.g., ¶[0017]), while the latter is not supported and is the subject of the forthcoming new matter rejection.
Claim 2 is amended to remove the indefinite language: “as a main component”.
Claim 4 is amended to recite that water represents 50% or more of the aqueous solvent. See ¶[0008] of the original disclosure for support.
Election/Restrictions
Newly submitted claim 11 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 11 is directed to a cosmetic applicator device having a brush or a pen core in which the subject composition at issue is stored.
Since Applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Thus, claims 1-10 now represent all claims currently under consideration.
Information Disclosure Statement
One new Information Disclosure Statements (IDS) filed 3 June 2026 is acknowledged and has been considered.
Withdrawn Rejections
Rejection under 35 USC 112
Applicant’s amendment to claims 1 and 2 removing the indefinite language is persuasive in overcoming the previously raised rejections. Said rejections are withdrawn.
Rejection under 35 USC 102
Applicant’s amendment to claim 1 adding the limitation that “the aqueous liquid cosmetic contains no diethylhexyl sodium sulfosuccinate,” overcomes the previously raised rejection. Though the application provides no support for this limitation, the sulfosuccinate compound is a required compound of the practiced invention. Since the current claims recite its exclusion, the rejection is summarily withdrawn.
Rejection under Statutory Double Patenting
Applicant’s amendments to claim 1, discussed above, are sufficient in overcoming the previously raised statutory double patenting rejection. The also Examiner notes Applicant’s remark intending to “abandon” (cancel) claims 6-10 in the copending application. However, until such time as the claims are no longer of record, they will be subject to consideration under provisional non-statutory double patenting. See New Rejections.
The current rejection is withdrawn.
New Rejections
Applicants’ amendments have necessitated the following ground(s) of rejection:
Claim Rejections - 35 USC §112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
As amended, claim 1 now recites:
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 capillary force, the aqueous liquid cosmetic comprising:
at least a pigment containing carbon; a water-soluble acrylate copolymer selected from Group A below; an emulsion containing particles having a core-shell structure; and an aqueous solvent;
wherein the aqueous liquid composition contains no diethylhexyl sodium sulfosuccinate;
Group A: (styrene/acrylate) copolymer and ammonium acrylate copolymer.
[emphasis added to reflect limitation at issue]
Having fully considered the originally-filed specification and claims, the Examiner notes that Applicant’s specification only appears to discuss the compound diethylhexyl sulfosuccinate in the context of Patent Document 2 (Yamawaki et al.; of record) in ¶[0003] as part of the background/state-of-the-art. Neither the specific compound nor the generic category of an anionic surfactant are mentioned anywhere else within the specification in any such positive discussion which would even suggest that Applicant is in possession the subject matter. Such possession must be shown in order to provide support for such a negative limitation as presently appears in the instant claims. See MPEP §2173.05(i), third paragraph.
Thus, it is respectfully advanced that Applicant’s amendment to the applied composition constitutes new matter. Claims 2-10 each depend directly or indirectly from amended claim 1 and therefore, each contain the newly added subject matter.
Consistent with MPEP §2163.06(I), the Examiner will still consider the subject matter of the amended claim in considering rejections based on the prior art since there exists the possibility that Applicant may potentially overcome the new matter rejection.
Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/706,826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As amended, instant claim 1 now recites:
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 capillary force, the aqueous liquid cosmetic comprising:
at least a pigment containing carbon; a water-soluble acrylate copolymer selected from Group A below; an emulsion containing particles having a core-shell structure; and an aqueous solvent;
wherein the aqueous liquid composition contains no diethylhexyl sodium sulfosuccinate;
Group A: (styrene/acrylate) copolymer and ammonium acrylate copolymer.
Reference claim 1 discloses:
An aqueous liquid cosmetic that is stored in a pen-type applicator having a brush at an application portion, the aqueous liquid comprising:
at least one iron oxide pigment;
a polyorganic acid or a polyorganic acid salt;
emulsion particles containing acrylate copolymer;
a nonionic surfactant; and
an aqueous solvent.
Reference claim 6 discloses:
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 the aqueous liquid composition contains no diethylhexyl sodium sulfosuccinate;
Group X: (styrene/acrylate) copolymer and ammonium acrylate copolymer.
Each of the foregoing disclosed liquid compositions is considered to teach and suggest the composition as instantly claimed.
Reference claim 1 differs slightly from instant claim 1 in terms of the pigment. However, both the instant and reference claims are open-ended and allow for more than one pigment as is dictated by their respective dependent claims (see e.g., new instant claims 8-10).
Similarly, instant claim 1 currently recites that the composition contains no diethylhexyl sodium sulfosuccinate. While the Examiner has correctly highlighted this limitation as raising the issue of new matter, the copending claims are notably silent to this compound. As such, the reference claims are considered to teach such a limitation as well.
The instantly amended solvent limitations of claim 4 are also considered to be met by the reference claims’ disclosure of the aqueous solvent being selected from water alone (see e.g., reference claims 4 and 9).
Reference claim 7 reads on instant claim 2.
Reference claim 8 reads on instant claim 3.
Reference claim 9 reads on instant claim 4.
Reference claim 10 reads on instant claim 5.
Thus, were the copending reference application available as prior art, the claims of the reference application would be expected to render the instantly claimed compositions prima facie obvious, where they did not anticipate them. A person of ordinary skill in the art would have a reasonable expectation of successfully producing the instantly claimed compositions absent a clear showing of evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC §103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Applicants are 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 Qi et al. (US Pre-Grant Publication Nº 2022/0175626 A1).
The limitations of the amended invention are discussed above.
Qi discloses a temporary hair coloring composition comprising: a core-shell toner particle and a vehicle comprising a liquid which is non-toxic and does not harm hair (see e.g., Abstract’ claim 1). Claim 2 discloses that the core-shell particle is an emulsion aggregation core-shell toner particle. Claim 1 additionally teaches that the core comprises an optional dye and an optional pigment, and that the shell comprises a shell polymer.
Claim 3 discloses that the core-shell toner particle wherein both the core and shell may comprise a polystyrene, acrylate, or polystyrene acrylate copolymer. See also claim 4.
Claims 5 and 6 disclose that the particles may contain a mixture of pigments and dyes and that carbon black is among the pigments which may be used. See also ¶[0069] and ¶[0070]. Claim 8 and ¶[0074] further defines pigments as being metallic and as including iron pigment (e.g., iron oxide).
Though the reference does teach and suggest that a generic anionic surfactant may be a part of the aqueous water phase (see ¶0068]), the reference is completely silent to using diethylhexyl sodium sulfosuccinate, thereby meeting the amended limitation.
Claim 9 discloses that the vehicle is selected from such liquids as detergent water.
The foregoing is considered to teach the limitations of claims 1-8.
The limitations of claim 9 recite that the pigment besides the carbon-containing pigment is a pearl pigment, such as mica.
Claim 6 discloses that the core will contain multiple pigmenting compounds, such as carbon black, but also pearlescent colorants and other generic colors (i.e., red, blue, yellow, etc.). Paragraph [0072] defines pearlescent pigments as including mica particles and surface-coated mica particles.
Paragraphs [0075]-[0078] further define the colorants that may be used as including Pigment Red 202, Pigment Blue 1, and the like.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed liquid cosmetic composition. As previously indicated, the applicator limitations recited in claims 1 and 5 are not considered to further limit the composition itself. Instead, these limitations are broadly and reasonably interpreted as being directed to an intended use.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
All claims have been rejected; no claims are allowed.
Conclusion
Applicants’ amendments 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (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 or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
Prosecution Insights