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 .
Applicant canceled claims 21-23.
In view of the amendment, previous 103 rejections on claims 1-4, 6, 7, 9, 11, 14-18 and 24 over LaRosa’724 in view of De Feij’548, Buckley’052, Santora’907, Chaudhuri (EP’590) and Wells’403 and previous 103 rejection on claims 19 and 20 over LaRosa’724 in view of De Feij’548, Santora’907, Buckley’052, Wells’403 and Sengupta (CN’526) are hereby withdrawn: none of the cited prior arts teaches or suggests instant cosmetic composition of claims 1, 19 and 20 including instant combination of sodium cocoyl isethionate, glyceryl stearate and kaolin.
It is to be noted that the Examiner attempted calling Dr. David Marcus (applicant’s attorney) on July 22, 2026 to resolve the following objections and 112 rejections by the Examiner’s Amendment but Dr. Marcus was not available.
Claim Objections
Claim 1 is objected to because of the following informalities: on the 4th line from the bottom, applicant need to change “cationic polymer and the cosmetic composition” to --- cationic polymer, and wherein the cosmetic composition --- (so as to make the meaning of the claim clearer). Appropriate correction is required.
Claim 2 is objected to because of the following informalities: on lines 1-2, applicant need to change “wherein the deposition and enhanced beta hydroxy acid retention is demonstrated” to --- wherein the enhanced deposition and retention of the at least one beta hydroxy acid is demonstrated --- (so as to be consistent with instant claim 1) . Appropriate correction is required.
Claim 3 is objected to because of the following informalities: on lines 1-2, applicant need to change “wherein the deposition of beta hydroxy acid demonstrated is” to --- wherein the demonstrated deposition of the at least one beta hydroxy acid is --- (so as to be consistent with instant claim 1). Appropriate correction is required.
Claim 4 is objected to because of the following informalities: on line 3, applicant need to change “derivative” to --- a derivative ---. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: on the 3rd line from the bottom, applicant need to change “cationic polymer and the cosmetic composition” to --- cationic polymer, and wherein the cosmetic composition --- (so as to make the meaning of the claim clearer). Appropriate correction is required.
Claim 20 is objected to because of the following informalities: on the 3rd line from the bottom, applicant need to change “cationic polymer and the cosmetic composition” to --- cationic polymer, and wherein the cosmetic composition --- (so as to make the meaning of the claim clearer).Appropriate correction is required.
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.
Claim 15 recites the limitation "the at least one additional surfactant” and "the at least one additional anionic surfactant” in line 2. There are insufficient antecedent basis for these limitations in the claim.
Claims 19 and 20 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 each of instant claims 19 and 20, applicant recite that the combination of surfactants comprises sodium cocoyl isethionate, glyceryl stearate and at least one additional surfactant. Yet, in each of claims 19 and 20, applicant also recite that cosmetic composition is free of sodium cocoyl isethionate, thus rendering the scope of claims 19 and 20 indefinite.
Claims 19 and 20 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 19, applicant recite that water is present in the amount of about 50-85 wt.% based on the total weight of the cosmetic composition; the combination of surfactants is present in the amount of about 12-20 wt.% based on the total weight of the cosmetic composition; and kaolin is present in the amount of about 12-20 wt.% based on the total weight of the cosmetic composition. However, these limitations are confusing (thus rendering the scope of claim 19 indefinite) because when water is used in the amount of 85 wt.%, even if the minimum amount (about 12 wt.%) for the combination of surfactants and the minimum amount (about 12 wt.%) for the kaolin are used, the total weight of the cosmetic composition goes beyond 100 wt.% (i.e., 109 wt.%). The water amount cannot even be 76 wt.% because there are other ingredients (at least one acne treatment active, one cationic polymer, at least one salt, at least one water-soluble solvent) that are also required in the cosmetic composition.
Also, in claim 20, applicant recite that water is present in the amount of about 50-85 wt.% based on the total weight of the cosmetic composition; the combination of surfactants is present in the amount of about 12-24 wt.% (this amount being the sum of about 8-12 wt.% for the sodium cocoyl isethionate, about 3-7 wt.% for the glyceryl stearate and about 1-5 wt.% for the at least one additional surfactant) based on the total weight of the cosmetic composition; and kaolin is present in the amount of about 12-20 wt.% based on the total weight of the cosmetic composition. However, these limitations are confusing (thus rendering the scope of claim 20 indefinite) because when water is 85 wt.%, even if the minimum amounts for each of the combination of surfactants (i.e., about 8 wt.% for the sodium cocoyl isethionate, about 3 wt.% for glyceryl stearate and about 1 wt.% for the at least one additional surfactant) and the minimum amount (about 12 wt.%) for the kaolin are used, the total weight of the cosmetic composition goes beyond 100 wt.% (i.e., 109 wt.%). The water amount cannot even be 76 wt.% because there are other ingredients (at least one acne treatment active, one cationic polymer, at least one salt, at least one water-soluble solvent) that are also required in the cosmetic composition.
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 1-4, 6, 7, 9, 11, 14-20 and 24 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 claim(s) contains 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 inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, applicant recite that glycerin (the component (e)) is present in the amount of at least about 5 wt.% based on the total weight of the cosmetic composition (such limitation was added in the amendment of May 27, 2025). However, according to the originally filed disclosure (see [0075]-[0076] and [0079]-[0080] of present specification), if glycerin is used as a humectant, it is present in the amount of about 1-10 wt.% based on the weight of the composition, and if glycerin is used as a water-soluble solvent, it is present in the amount of about 0.5-25 wt.% based on the weight of the composition. Furthermore, it is the Examiner’s assumption that the glycerin in instant composition of claim 1 is being used as a humectant because applicant recite “at least one water-soluble solvent” in claim 1 separately from the glycerin. Thus, the limitation (that was added in the amendment of May 27, 2025) as to the glycerin being present in the amount of at least about 5 wt.%, without reciting the upper limit for the amount of the glycerin constitutes a new matter.
Instant 112(a) rejection can be overcome by changing “at least about 5 wt.%” for the amount of glycerin to --- about 5 wt.% to about 10 wt.% ---.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
July 24, 2026
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