Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined pursuant to the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of the Claims
Applicant filed claims 1 – 4 with the instant application on 24 February 2025. Currently, claims 1 – 4 remain available for active consideration.
Information Disclosure Statements
The Examiner has considered the information disclosure statement (IDS) filed 24 February 2025, and which has been made of record in the file. However, for those documents submitted in a language other than English, without an accompanying English-language translation, the Examiner will be able to consider only the information accessible on their face, such as Figures, chemical formulas, and the like, which, in the present case, is very limited. See MPEP § 609.05(b).
Priority
The Examiner acknowledges receipt of papers submitted pursuant to 35 U.S.C. §§ 119(a)-(d), which papers are now of record in the file.
Rejections Pursuant to 35 U.S.C. § 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.
Claim 2 is rejected pursuant to 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 2 recites the limitation “the content of the dispersant.” There is insufficient antecedent basis for this limitation in the claim, nor is there a recitation of dependency from another claim that could supply that basis. Appropriate correction or cancellation of the claim is required.
Rejections Pursuant to 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections pursuant to 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.
Claim 1 is rejected pursuant to 35 U.S.C. § 102(a)(1) as being anticipated by US 2024/0059916 A1 to Fukuda, T., published 22 February 2024 (“Fukuda ‘916”).
Fukuda ‘916 discloses a water-based pigment dispersion including an aluminum lake pigment and a pigment dispersant (see Abstract), wherein the aluminum lake pigment is a pigment using, as a dye component, at least one selected from the group consisting of Yellow No. 4, Yellow No. 5, Red No. 2, Red No. 3, Red No. 40, Red No. 102, Red No. 10441, Green No. 3, Blue No. 1, and Blue No. 2 (see ¶[0023]), wherein the water-soluble organic solvent is an organic solvent arbitrarily miscible with water (see ¶[0117]), such as polyhydric alcohols, polyhydric alcohol alkyl ethers, nitrogen-containing heterocyclic compounds, amides, amines, and sulfur-containing compounds (see ¶[0120]), and wherein the dispersion can comprise various additives such as surfactants (see ¶[0130]), preferably nonionic surfactants (see ¶[0132]).
Consequently, Fukuda ‘916 discloses each and every limitation of the claim at issue, rendering it anticipated pursuant to 35 U.S.C. § 102(a)(1).
Rejections Pursuant to 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. § 103 that 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 of this title, 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.
Claims 1 – 4 are rejected pursuant to 35 U.S.C. § 103, as being obvious over US Fukuda ‘916, in view of US 2013/0142854 A1 to Hayakawa, T. and M. Morita, published 6 June 2013 (“Hayakawa ‘’854”).
The Invention As Claimed
Applicant claims a pigment dispersion comprising an aluminum lake, at least one dispersant, such as polyorganic acids, and salts thereof, and nonionic surfactants, water, and a water-soluble organic solvent, and wherein the relative mass content of the dispersant is 0.05 to 17.00%.
Applicant also claims a composition comprising an aluminum lake present at a relative loading of from 0.00025 to 30.00% mass, a dispersant, such as polyorganic acids, and salts thereof, and nonionic surfactants, a film-forming agent at a relative mass loading of from 2.50 to 30.00% mass, water, and a water-soluble organic solvent, and wherein the composition has a viscosity of 1.5 to 20.0 mPa·s at 25°C and a shear rate of 192 s-1.
The Teachings of the Cited Art
Fukuda ‘916 discloses a water-based pigment dispersion including an aluminum lake pigment (A) and a pigment dispersant (B), and a composition comprising the suspension a water-soluble organic solvent (see Abstract), wherein the aluminum lake pigment is preferably a pigment using, as a dye component, at least one selected from the group consisting of Yellow No. 4, Yellow No. 5, Red No. 2, Red No. 3, Red No. 40, Red No. 102, Red No. 10441, Green No. 3, Blue No. 1, and Blue No. 2 (see ¶[0023]), wherein the content of the aluminum lake pigment in the pigment dispersion is preferably 3% by mass to 20% by mass or less (see ¶[0098]), wherein the content of the pigment dispersant in the pigment dispersion is 1% to 20% mass, or less (see ¶[0099]), wherein the content of water in the pigment dispersion invention is 50% to 90% by mass, or less (see ¶[0103]), wherein the viscosity at 20° C of the pigment dispersion is 1 to 15 mPa·s, or less (see ¶[0105]), wherein the water-soluble organic solvent is an organic solvent arbitrarily miscible with water (see ¶[0117]), such as polyhydric alcohols, polyhydric alcohol alkyl ethers, nitrogen-containing heterocyclic compounds, amides, amines, and sulfur-containing compounds (see ¶[0120]), wherein the dispersion can comprise various additives such as surfactants (see ¶[0130]), preferably nonionic surfactants (see ¶[0132]), wherein the content of the surfactant in the composition comprising the pigment dispersion is from 0.01% to 5% by mass, or less (see (see ¶[0142]). The reference does not disclose a composition comprising the pigment dispersion where the composition comprises a film-forming agent present at from 2.50 – 30.00% mass, or composition where the viscosity of the composition is from 1.5 to 20.0 mPa·s at a shear rate of 192 s-1. The teachings of Hayakawa ‘854 remedy these deficiencies.
Hayakawa ‘854 discloses a manicure composition comprising at least ethanol and propylene glycol monomethyl ether as solvents, two kinds of titanium oxide, and an acrylic resin (see ¶[0008]), wherein the acrylic resin functions as a coating film-forming agent and a dispersion stabilizer (see ¶[0033]), wherein the content of the above acrylic resins is from 1 to 20% by mass (see ¶[0034]), wherein the composition has a viscosity of 10 to 40 mPa·s at a shear rate of 3.83 s-1 and a viscosity of 10 to 30 mPa·s at a shear rate of 383 s-1 as measured with a corn plate type viscometer at a temperature of 25° C (see ¶[0043]), wherein allowing the composition to fall in these viscosity ranges at the prescribed shear rates makes it possible to allow the composition to flow from a pen feed, making it possible to coat the composition in the same manner as coating by a marker, reducing a fluctuation of the coated area and making it easier to draw and paint lines (see ¶[0044]), wherein the composition can also contain pigments such as Red No. 201, No. 202 and No. 220, Yellow No. 4AL (Lake) (see ¶[0044]).
Application of the Cited Art to the Claims
It would have been prima facie obvious before the filing date of the claimed invention to prepare a water-based pigment dispersion including an aluminum lake pigment and a pigment dispersant, as well as a composition comprising the dispersion and a water-soluble organic solvent, wherein the aluminum lake pigment is preferably a pigment using, as a dye component, at least one selected from the group consisting of Yellow No. 4, Yellow No. 5, Red No. 2, Red No. 3, Red No. 40, Red No. 102, Red No. 10441, Green No. 3, Blue No. 1, and Blue No. 2, wherein the content of the aluminum lake pigment in the pigment dispersion is preferably 3% by mass to 20% by mass or less, wherein the content of the pigment dispersant in the pigment dispersion is 1% to 20% mass, or less, wherein the content of water in the pigment dispersion invention is 50% to 90% by mass, or less, wherein the viscosity at 20° C of the pigment dispersion is 1 to 15 mPa·s, or less, wherein the water-soluble organic solvent is an organic solvent arbitrarily miscible with water, such as polyhydric alcohols or polyhydric alcohol alkyl ethers, wherein the dispersion can comprise various additives such as surfactants, preferably nonionic surfactants, wherein the content of the surfactant in the composition comprising the pigment dispersion is from 0.01% to 5% by mass, or less, as taught by Fukuda ‘916, wherein the composition comprises ethanol and propylene glycol monomethyl ether as solvents and an acrylic resin, wherein the acrylic resin functions as a coating film-forming agent and a dispersion stabilizer, wherein the content of the above acrylic resins is from 1 to 20% by mass, wherein the composition has a viscosity of 10 to 40 mPa·s at a shear rate of 3.83 s-1 and a viscosity of 10 to 30 mPa·s at a shear rate of 383 s-1 as measured with a corn plate type viscometer at a temperature of 25° C, and wherein the composition can also contain pigments such as Red No. 201, No. 202 and No. 220, Yellow No. 4AL (Lake), as taught by Hayakawa ‘854. One of skill in the art would be motivated to do so, with a reasonable expectation of success in so doing, by the teachings of Hayakawa ‘854 to the effect that preparing pigment compositions with viscosities in the disclosed ranges at the prescribed shear rates makes it possible to allow the composition to flow from a pen feed, further allowing the composition to apply a coating in the same manner as coating by a marker, reducing a fluctuations in the coated area and making it easier to draw and paint lines (see ¶[0044]).
With respect to the recitation in the preamble of claim 1 of a “pigment dispersion for aqueous cosmetic compositions,” the Examiner notes that claim 1 is directed to a composition of matter. Thus, its subject matter must be distinguished from the prior art by its structure or composition. Cf. Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (holding that “apparatus claims cover what a device is, not what a device does.’’). Statements of intended use or function normally are not given patentable weight because they are not structurally limiting. Cf Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1354-55 (Fed. Cir. 2020) (discussing effect of intended use recitations in claim preamble).
With respect to claims 2 – 4, which claims recite limitations directed to quantitative ranges of various quantities, the Examiner notes that the cited references do not disclose numerical ranges for these quantities that are exactly congruent with the claimed ranges. However, it is the Examiner’s position that the cited art teaches ranges of values of these quantities that significantly overlap with the claimed ranges and, as such, would render the claimed invention obvious. See MPEP § 2144.05. “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).”
Claim 4 recites a limitation directed to a range of viscosities of the pigment compositions. As addressed immediately above, the cited references, specifically Hayakawa ‘854, disclose a range of viscosity that at least overlaps with the recited limitations. As disclosed in the reference, the pigment compositions have a viscosity of 10 to 40 mPa·s at a shear rate of 3.83 s-1, and a viscosity of 10 to 30 mPa·s at a shear rate of 383 s-1, as measured at a temperature of 25° C. With respect to the shear rate limitation, it is the Examiner’s position that one of ordinary skill in the relevant art would recognize that the disclosed viscosities are reflective of behavior of typical non-Newtonian fluids where viscosity varies as a function of shear rates (and temperatures), with higher shear rates and temperatures yielding fluids with lower viscosities. Given these disclosures adjusting the flow rates to read on the recited flow rate would amount to nothing more than optimization of a result-effective variable, the operation of which would be well within the grasp of a skilled artisan. Consequently, in the absence of evidence as to the criticality of such parameter, this limitation cannot support patentability. See MPEP § 2144.05 II. A.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by claims 1 - 4 would have been obvious within the meaning of 35 USC § 103.
NO CLAIM IS ALLOWED.
CONCLUSION
Any inquiry concerning this communication or any other communications from the examiner should be directed to Daniel F. Coughlin whose telephone number is (571)270-3748. The examiner can normally be reached on M-F 8:30 am - 5:30 pm.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, David J Blanchard, can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/DANIEL F COUGHLIN/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/ Supervisory Patent Examiner, Art Unit 1619
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