DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
INFORMATION DISCLOSURE STATEMENT
2. Information Disclosure Statement filed 6/22/2026 is acknowledged.
Claim Rejections - 35 USC § 112
3. 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.
Claim 4 is 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.
Claim 4 recites “batting type storage portion” and the metes and bounds are unclear as to what constitutes a “batting type”.
Claim Rejections - 35 USC § 103
4. 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Inou et al. (WO 2022091971) in view of Rossi (US 20110044749) and Pfaff et al. (US 20130164356).
Inou et al. (WO 2022091971) (hereinafter Inou et al.) disclose marker composition for skin that contains 1 to 5 % acidic dye, an aminoalkyl methacrylate copolymer, water-soluble organic solvent and water and having a pH value of less than 7.0, in which the aminoalkyl (meth)acrylate copolymer is a copolymer produced by polymerizing monomers respectively selected from the group A and the group B shown below and the content ratio of the monomer selected from the group B is 2 to 20% by mass in the copolymer. Group A: ethyl (meth)acrylate, methyl (meth)acrylate, n-propyl (meth)acrylate and the like; group B: 2-(dimethylamino)ethyl (meth)acrylate, 2-(diethylamino)ethyl (meth)acrylate and 3-(dimethylamino)propyl (meth)acrylate (abstract). The water-soluble organic solvent is a lower alcohol having 5 or less carbon atoms (para 0018). The dyes are inclusive of those such as Red 2 (a legally permitted cosmetic dye).
Inou et al. disclose 1 to 5 % acidic dye where the claims recite 0.95-4.75 %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Inou et al. does not teach impregnating the composition into a batting type storage portion having a porosity of 88 to 96 % or the application tool having a fiber bundle core of 2 to 5 denier.
It is not clear what is meant by batting type storage however, it is assumed to be the shape of the tool.
Rossi (US 20110044749) (hereinafter Rossi) discloses having a shape and configuration as desired and may be typical of many compact cases for cosmetic materials known in the art (para 0032). In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Rossi discloses the plurality of fibers of the first layer can have a linear mass density of about 1.5 denier to about 3.5 denier and the apparatus has a layer with porosity of 70 to 90 % (abstract and paras 0010, 0015). The porosity is sufficient to retain the liquid material (para 0017-0018). Although exemplary applicator 200 illustrated in FIGS. 2 and 3 includes two layers of fibrous material, those of ordinary skill in the art should recognize that the present disclosure may encompass an applicator that includes only a single reservoir layer of non-woven fibrous material (para 0050). The amount of liquid material that can be retained in such voids is determined by the porosity and specific gravity of second layer 220 (para 0044). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize the porosity and denier of the apparatus. One would have been motivated to do so to retain the liquid cosmetic material.
Inou et al. does not teach “flaky pigments” however Pfaff et al. (US 20130164356) teach that effect pigments has a high color saturation and exhibits a high hiding powder that does not lose its optical properties and is based on flake-like substrates with rounded shapes (para 0005-0006). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to apply flake pigments such as the effect pigments in Pfaff et al. to the cosmetic composition of Inou. One would have been motivated to do so in order to achieve high color saturation.
CORRESPONDENCE
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danah Al-awadi whose telephone number is (571) 270-7668. The examiner can normally be reached on 9:00 am - 6:00 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.
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/DANAH AL-AWADI/Primary Examiner, Art Unit 1615
