Office Action Predictor
Last updated: April 15, 2026
Application No. 18/271,521

COSMETIC PREPARATION

Non-Final OA §101§102§103§112
Filed
Jul 10, 2023
Examiner
SHIAO, YIH-HORNG
Art Unit
1691
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Shiseido Company, LTD.
OA Round
1 (Non-Final)
72%
Grant Probability
Favorable
1-2
OA Rounds
2y 4m
To Grant
99%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
683 granted / 942 resolved
+12.5% vs TC avg
Strong +74% interview lift
Without
With
+73.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
32 currently pending
Career history
974
Total Applications
across all art units

Statute-Specific Performance

§101
5.8%
-34.2% vs TC avg
§103
31.3%
-8.7% vs TC avg
§102
20.8%
-19.2% vs TC avg
§112
26.4%
-13.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 942 resolved cases

Office Action

§101 §102 §103 §112
DETAILED ACTION The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Preliminary amendment filed on 07/10/2023 has been entered. Claims 1- 7 are pending in this application and are currently under examination. Priority This application is a 371 of PCT/JP2022/003408 filed on 01/28/2022 and claims foreign priority of JAPAN 2021-020150 filed on 02/10/2021 . Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 . Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application. Information Disclosure Statement T h re e information disclosure statement s (IDS) filed on 07/10/2023, 01/07/2025, and 10/01/2025 with appropriate assertion under 37 CFR 1.98 have been considered. Claim Objections Claim 5 is objected to because of the following informalities: In claim 5, delete the redundant recitations “ , triethylenetetramine hexaacetic acid, sodium triethylenetetramine hexaacetate ” (lines 3 to 4 on page 4) and “ 1,3-diamino-2-hydroxypropane-tetraacetic acid, ” (line 8 on page 4) , which have been recited in the preceding line 7 of the claim and lines 7 to 8 on page 4, respectively. 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 appl icant regards as his invention. Claim 4 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 4 recites the limitation " claim 1… a cation constituting the salt " in line 2 . There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to delete the recitation “ a cation constituting ”. 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 1- 6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon or a product of nature without significantly more. The 2019 Revised Patent Subject Matter Eligibility Guidance (issued January 7, 2019) ” ( https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf ) and “ October 2019 Update: Subject Matter Eligibility (issued October 17, 2019 ) ” ( https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf ), are followed here. T he claim is directed to a statutory category, e.g., a composition of matter (Step 1: YES). The claim is then analyzed in Step 2A (Prong one) to determine whether it is directed to any judicial exception. The claims 1- 6 recite a cosmetic comprising a first agent containing at least one inorganic salt or organic acid salt (for example , sodium or calcium salt) and hyaluronic acid; and a second agent containing a chelating agent (for example , citric or phytic acid) , which are products of nature . Accordingly, the claim is directed to at least one exception (Step 2A , prong one : YES). The claim is then analyzed in Step 2A (Prong two) and is deemed that t his judicial exception is not integrated into a practical application because there is no indication that mixing them in the recited amount or weight average molecular weight (i.e., 0.005% by mass or more ; or 10,000,000 daltons or less ) changes the structure, function, or other properties of the first agent (for example , sodium or calcium salt and hyaluronic acid) and the second agent (for example , citric or phytic acid) in any marked way. Instead, the first or the second agent retains its naturally occurring structure and properties (e.g., moisturizing or chelating ) . Thus, the claimed mixture as a whole does not display markedly different characteristics compared to the closest naturally occurring counterpart. Accordingly, the Step 2A (Prong two) is NO . The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because p rior to applicant’s invention and at the time of filing the application, mixing of the first agent (for example , sodium or calcium salt and hyaluronic acid) and the second agent (for example, citric or phytic acid) was well-understood, routine and conventional in the field, as evidenced by the reference under the 102 / 103 rejection below. The recitation of specific amount or weight average molecular weight of hyaluronic acid does not affect this analysis, because it was also well-understood, routine and conventional at the time of filing to achieve commercially acceptable composition for different purposes. Thus, the mixing of the first agent (for example, sodium or calcium salt and hyaluronic acid at specific amount) and the second agent (for example, citric or phytic acid) , when recited at this high level of generality, does not meaningfully limit the claim, and the claim as a whole does not amount to significantly more than each “product of nature” by itself (Step 2B: NO). The claim does not qualify as eligible subject matter. Claim Rejections - 35 USC § 102/ 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. 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 . This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1-7 are rejected under 35 U.S.C. 102( a ) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Schmidt et al. ( US 2015/0320915 , Nov. 12, 2015 , hereinafter referred to as Schmidt ‘915) . With regard to structural limitations “ a cosmetic comprising: a first agent containing: an inorganic salt or organic acid salt (or a metal ion ) and hyaluronic acid (or at 0.005% by mass or more with respect to the total amount of the first agent ; or the weight average molecular weight of 10,000,000 or less ); and a second agent for swelling the hyaluronic acid, the second agent containing a chelating agent (or ethylenediaminetetraacetic acid (EDTA) , glycol ether diamine tetraacetic acid (EGTA) , or citric acid ) ” (claims 1 and 3-6), and “a cosmetic method (defined as “a method of beautifying a body surface by achieving a beautiful and orderly condition of the body surface or body hair” in the specification, p. 16, lines 23-25) comprising: applying the first agent to a body surface or body hair; and then applying the second agent to the application area of the first agent” (claim 7): Schmidt ‘915 disclosed a hydrogel film including uncrosslinked hyaluronic acid and crosslinked alginate and a calcium chelator , wherein the alginate is crosslinked with calcium , and the hydrogel film is configured so bioresorbability of the hydrogel film increases in response to applying the calcium chelator to the hydrogel film. The calcium chelator is selected from citrate, EDTA, EGTA, or BAPTA . In example 9, the hydrogel film comprises at least 1 % and no more than 33% hyaluronic acid (pages 12/15 to 13/15, [0080, 0082, and 0088] ). Hyaluronic acid has limited water solubility. Hyaluronate stocks for research and clinical use are predominantly salts, particularly sodium salts. Hyaluronate is an unusually large macromolecule that can reach molecular weights of up to several million (page 7/15, [0018 and 0019]). A method includes applying a hydrogel film to a subject , wherein the hydrogel film includes uncrosslinked hyaluronic acid and crosslinked alginate, and the alginate is crosslinked with calcium , followed by applying a calcium chelator to the hydrogel to increase bioresorbability of the hydrogel film in response to applying the calcium chelator to the hydrogel film (page 13/15, [0107-0109]). Thus, these teachings of Schmidt ‘915 anticipate Applicant’s claims 1-7 and would achieve the same properties and/or intended results, including “ swelling the hyaluronic acid ”, “the volume of the hyaluronic acid in the first agent increases by application of the second agent to the first agent”, and “cosmetic method for beautifying a body surface”, required by claims 1, 2, and 7. Or, in an alternative, skilled artisan would follow the teachings of Schmidt ‘915 to reduce the crosslinking of alginate by chelating calcium and thus to allow permeability of hyaluronic acid to beautify the skin. Conclusion No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT YIH-HORNG SHIAO whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-7135 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon- Thur , 08:30 am to 07:00 pm EST . 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, FILLIN "SPE Name?" \* MERGEFORMAT Deirdre (Renee) Claytor can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-8394 . 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. /YIH-HORNG SHIAO/ Primary Examiner, Art Unit 1691
Read full office action

Prosecution Timeline

Jul 10, 2023
Application Filed
Dec 13, 2025
Non-Final Rejection — §101, §102, §103
Mar 19, 2026
Response Filed

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12600744
METHOD FOR PRODUCING OLIGONUCLEIC ACID COMPOUND
2y 5m to grant Granted Apr 14, 2026
Patent 12595317
LIQUID AND AGAR FLUOROPHORE PHANTOM
2y 5m to grant Granted Apr 07, 2026
Patent 12594287
Human Milk Oligosaccharide for Improving Health of Intestinal Microenvironment and Use Thereof
2y 5m to grant Granted Apr 07, 2026
Patent 12589101
CYCLODEXTRIN PROTEIN DRUG CONJUGATES
2y 5m to grant Granted Mar 31, 2026
Patent 12590116
METHOD FOR PRODUCING ALLULOSE CRYSTALS
2y 5m to grant Granted Mar 31, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
72%
Grant Probability
99%
With Interview (+73.8%)
2y 4m
Median Time to Grant
Low
PTA Risk
Based on 942 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in for Full Analysis

Enter your email to receive a magic link. No password needed.

Free tier: 3 strategy analyses per month