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 Amendment
Applicant’s response of 03/12/2026 has been received and entered into the application file. Claims 1 and 4-13 are pending in this application.
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 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 and 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Donizeti et al. (WO 2018/112586 A1, Translated), Gupta (US 2006/0110415), SoapQueen (Which Clay is Right for Your Skin, Soap Queen by Bramble Berry, 2017), and Rainforest Chica (Brazilian Clay – Black, 2017) further evidenced by Jackson et al. (WO 2011/030123 A2).
Donizeti discloses cosmetic compositions that provide a radiant effect, in addition to reducing oil ([0001]). The long-term oil control was surprisingly obtained by babassu starch ([0013]). Babassu has emollient properties and can be used in skin and hair care products ([0014]). Babassu starch is suitable for use in cosmetics because of its sensory modifying and oil-absorbing properties; it promotes oil absorption, particularly in face products ([0015]). Donizeti discloses Orbignya phalerata powder or babassu starch at about 0.1% to about 5% (See Table 1).
Donizeti does not explicitly mention other ingredients.
Gupta discloses topical delivery system for cosmetic and pharmaceutical agents (Abstract). Gupta teaches that the delivery system can be in the form of mask ([0048]). Gupta discloses that a skin protectant drug can be included such as kaolin. The quantities of such compositions can be safe and effective amounts as needed, and not limited to any specific limits (claim 24). Gupta discloses that the hydroxy acid is selected from the group consisting of salicylic acid and mandelic acid; in amounts safe and effective as needed, not limited to any specific limits (claim 14). A composition can also include additional skin beneficial ingredients such as clays, in amounts as needed (claim 36).
Gupta does not explicitly mention specific types of clay.
SoapQueen teaches different types of clay (page 2). Clays are commonly used in skincare because clay pulls oil from the skin, leaving it balanced and clean (page 3). Depending on your skin type, one clay may be better suited for your skin than another (page 3). In general, clays are best for normal to oily skin types because they absorb moisture (page 3). Kaolin clay is a very fine powdered clay, and can come in a variety of colors (page 6). French green clay is known for its terrific oil absorbing properties and commonly used in facial masks (page 5). One of ordinary skill in the art would, through routine experimentation, experiment with different types of clay within a cosmetic composition. As taught by SoapQueen, different clays have different benefits for skin types, and as such one of ordinary skill in the art would envisage different combinations depending on the skin type.
Rainforest Chica discloses black Brazilian clay. Brazilian clay has long been commercially available in black color. Additionally, the cosmetic use of black clay is well-known in the art.
Jackson discloses a dermatological or cosmetic composition for skincare which includes the salt of an alpha-hydroxy acid, beta-hydroxy acid with niacinamide (Abstract). Hydroxy acids include salicylic acid and mandelic acid (pg 1, line 18). Hydroxy acids improve skin turnover and the health of epidermis (pg 2, line 9). The hydroxy acid salt is preferably present in an amount of at least 0.1% by weight of the composition (pg 2, lines 28-30).
Donizeti teaches that babassu is beneficial for oily skin and can be used in cosmetic compositions. Gupta discloses that clay/kaolin, mandelic acid, and salicylic acid are all used commonly in cosmetic compositions. SoapQueen discloses differences in clay types. Rainforest Chica discloses black clay. Therefore, it would have been obvious to one of ordinary person in the art before the effective filing date of the claimed invention to have combined teachings of above to arrive at the present invention. This is taking some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Regarding claim 4, Gupta teaches that the composition can be water and oil emulsions, microemulsions or emulsions of nanoparticles (claim 35).
Regarding claim 5, Gupta teaches that the composition can include optional ingredients such as surfactants, skin cleansers, vitamins, minerals, plant extracts, moisturizers, skin protectants, skin penetration enhancers, solubilizers, and others (claim 36).
Regarding claim 6, Gupta discloses examples of facial mask compositions (Example 4).
Regarding claims 7-9, Donizeti teaches how babassu starch can reduce oiliness as discussed above. One of ordinary skill in the art would envisage that cosmetic compositions comprising babassu would help with reducing oiliness.
Regarding claims 10-12, Donizeti discloses that the invention provides an immediate tensor effect, which contributes to the desired beautification result, in addition to promoting a natural effect, collaborating with the elasticity and firmness of the skin ([0016]). Additionally, clay masks are known to shrink pore size and reduce oiliness of the skin (See attached evidence: Eminence organic skin care 2018, page 10).
Regarding claim 13, mask is discussed above.
Response to Arguments
Applicant’s arguments filed 03/12/2026 have been fully considered and the rejection is maintained.
On pages 4-5 of remarks, applicant argues that one of ordinary skill would not be motivated to make the combinations or modifications of prior art to arrive at the claimed invention. Applicant points that there was no reason to pick the combination of salicylic acid and mandelic acid from among the hydroxy acids. As previously explained in the Non-Final Rejection mailed on 12/23/2025, Gupta’s teaching is analogous to the claimed invention – a topical delivery system for cosmetic and pharmaceutical agents in the form of a mask comprising hydroxy acid selected from the group consisting of salicylic acid and mandelic acid (See page 3 of Non-Final Rejection). One of ordinary skill in the art would immediately envisage that hydroxy acids can be included in a cosmetic mask formulation. Any and all combinations of hydroxy acids can also be considered by one of ordinary skill in the art. The examiner cannot determine why the specific combination of salicylic and mandelic acid is unexpectedly better than a routine combination of hydroxy acids. The only example of a product is shown in paragraph 64 of instant specification. There are no other products to compare why one hydroxy acid would be unexpectedly superior than the other hydroxy acid. Jackson reference was incorporated to show that hydroxy acids and hydroxy acid salts are routinely used in cosmetic products.
On page 6 of remarks, applicant argues that the Office Action has not shown why a person of ordinary skill in the art would select salicylic acid and mandelic acid, in combination, from the vast universe of additives. The examiner’s obviousness is explained above. In turn, the examiner cannot determine why a person of ordinary skill in the art would specifically select a combination of salicylic acid and mandelic acid within a cosmetic composition when these are routinely used in such compositions.
On page 7 of remarks, applicant argues that the treatments involving clays and hydroxy acids may be aggressive to the skin. One of ordinary skill in the art would recognize that too much salicylic acid can be harmful/abrasive to the skin as with any other acidic component within a cosmetic formulation. Applicant points that their composition maintains the balance of skin microbiota. But the examiner cannot determine if this is unexpected and surprising because there are no data to support this statement. Applicant argues prolonged efficacy of their specific combination of ingredients. The examiner, again, cannot determine unexpected efficacy because there are no comparative examples provided within the specification. The 8 hours of prolonged efficacy is also no commensurate in scope of claim 1.
The applicants have not distinguished from teachings of prior arts because the ingredients within the instantly claimed cosmetic composition are routinely used within the field. The examiner cannot determine why the instantly claimed composition would have an unexpectedly better cosmetic results and/or the criticality of each ingredient’s concentration. Therefore, claims remain rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN SEUNGJAI KWON whose telephone number is (571)272-7737. The examiner can normally be reached Mon - Fri 8:00 - 5:00.
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/JOHN SEUNGJAI KWON/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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