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 .
All previous rejections made under 35 U.S.C. 102 which were indicated in the Office action dated June 10, 2025 have been withdrawn in view of applicant’s amendment made to claim 13 which requires niacinamide in and excludes xylitol and erythritol from the claimed composition. A new rejection has been made to address the amended claims.
Terminal Disclaimer
The terminal disclaimer filed on September 10, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11786570 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Accordingly, the previous obviousness-type double patenting rejection made over the claims of the above patent has been withdrawn.
Allowable Subject Matter
Claim 32 is allowed.
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 30 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 30 depends on claim 13 and requires “wherein the sebum reducing agents and/or antiacne-agents comprise niacinamide, Tetraselmis suecica extract and mixtures thereof.” There is insufficient antecedent basis for this limitation in the claim.
New: Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under 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.
Claims 13, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 106726799 A, published on May 31, 2017) in view of Deckner et al. (US 5968528 A, published on October 19, 1999) (“Deckner” hereunder).
Amended claim 13 requires a cosmetic product comprising one or more sugar alcohols, the cosmetic product further comprising niacinamide, and further optionally comprising auxiliary substances and/or perfumes, wherein the cosmetic composition or cosmetic product is a skin and/or hair care product, and wherein the one or more sugar alcohol is selected from the group consisting of sorbitol, maltitol and mixtures thereof.
and wherein the amount of the one or more sugar alcohols is 0.0001 to 1 wt % in the cosmetic product.
Li discloses a moisturizing lotion comprising 1 % of niacinamide and 0.5 wt % xylitol. See translation, p. 2, claim 2. See present claims 13 and 26.
Although Li fails to teach sorbitol, Deckner teaches xylitol and sorbitol are polyhydric alcohols which are useful as conditioning compounds in skin care art. See col. 32, line 59 - col. 33, line 3. Deckner particularly teaches compositions comprising niacinamide as an antiaging agent.
Substituting art-recognized functional equivalents for same purpose is prima facie obvious. See MPEP 2144.06, II. In this case, since Deckner establishes that these polyols are humectants useful as a skin conditioner in a niacinamide-containing cosmetic composition, replacing erythritol with sorbitol to make a similar skin care composition would have been prima facie obvious. See present claims 13 and 23.
Regarding claims 23-24, the Li composition further contains the following components in percentage by weight: 1 % of niacinamide, 0.5 wt % xylitol, 4% propylene glycol and 2% glycerol, which make up 5 wt % of a liquid carrier.
Response to Arguments
Applicant’s remarks with respect to claims 13, 23 and 24 have been considered but are moot as all previous rejections have been withdrawn.
Conclusion
Claim 32 is allowed.
Claims 13, 23, 24 and 30 are rejected.
Claims 18-20, 22 and 25 have been withdrawn from consideration.
Applicant's amendment 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 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 GINA JUSTICE whose telephone number is (571)272-8605. The examiner can normally be reached M-F 9:00 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached at 571-272-6175. 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, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GINA C JUSTICE/Primary Examiner, Art Unit 1617
Prosecution Insights