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 .
DETAILED ACTION
Acknowledgement is made of the Response filed 01/29/2026 to the Office Action dated 07/29/2025.
Claims 4 and 6-9 are pending and they are under examination to which the following grounds of rejections are applicable.
Withdrawn rejections:
Applicant's amendments and arguments filed 01/29/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
Allowable Subject Matter
Claim 4 is allowable upon resolving the below objection.
It would be hindsight, after exhausting all the other rationales to combine, to select the components and arrange them as applicant has claimed. The following case law would further strengthen that argument: "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). All compositions are made of the same substances, retaining their fixed chemical properties. But the elements are capable of an infinity of permutations, and the selection of that group which proves serviceable to a given need may require a high degree of originality. It is that act of selection which is the invention; ... B.G. Corp. v. Walter Kidde & Co., Inc., 79 F.2d 20, 21-22 (2d Cir. 1935).
Claim Objections
Claims 4 and 6-8 are objected to for the following minor informalities:
Claim 4 recites “caprylic glycol”, but which is typo of “caprylyl glycol”. The correct international nomenclature cosmetic ingredient (INCI) name is “caprylyl glycol”.
Each of claims 6-8 recites “a formulation”, but which would be better to recite “the formulation” because each claims require the formulation of claim 4.
Claim 7 misses conjunction word “and” between “making the skin smoother” and “improving the facial skin appearance” in line 5.
Appropriate correction is requested.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 6-7 are rejected under 35 U.S.C. § 101 as being drawn to “use” claims, which are non-statutory process claims, as defined in 35 U.S.C. § 101. See, Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967).
Specifically, these claims do not fall within at least one of the four categories of patent eligible subject matter recited in 35 USC 101 (process, machine, manufacture or composition of matter).
As one exemplified solution to overcome this type of rejection, the Examiner may suggest amending use claims 6 and 7 to “A method of ” without overlapping the subject matter of claim 8.
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.
Claims 6-9 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.
Each of claims 6-7 are indefinite because those claims merely recite a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2175.03(q). As a result, the Applicants are respectfully required to redraft the aforementioned use claims as statutory process claims that delimit active, positive steps on how to use a composition according to the invention as originally filed.
Each of claims 7-8 depends from canceled claim 1. It is noted that no claim depends from a canceled claim because it is not clear which claim it is supposed to depend from.
Claim 7 recites “the skin”, “the appearance”, and “the facial skin” in claim 7, and claim 8 recites “the facial skin”, but which lacks sufficient antecedent basis.
Each of claims 8-9 recites the term “suitable amount” in line 2. This term is relative. In this regard, the specification does not provide sufficient definition and/or explanation. That is, the specification does not define it sufficiently as to what degree is seen as “suitable amount”. What factors should be considered "suitable amount" varies widely in the art depending on the individual situation as well as the person making the determination of factors which may mainly depend on various ingredients, their amounts in the composition, and specific physiological condition. Thus, the metes and bounds thereof cannot be determined. Appropriate correction is requested.
In light of the foregoing, instant claims 6-9 are indefinite.
Conclusion
The instant case is not in condition for allowance.
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 KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. 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.
/KYUNG S CHANG/Primary Examiner, Art Unit 1613
Prosecution Insights