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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/11/2026 has been entered.
Response to Amendment
Claims status
Claims 16, 18-21, and 23-25 are pending and examined in this office action.
Currently amended – Claim 16
Cancelled – Claim 36 (subject matter now included in claim 16)
Applicant Remarks on May 11, 2026
Applicant argues Fournial is limited to glycation induced skin fatigue and does not apply or treat skin with enlarged pores.
2 responses
Aging increases pore size and leads to skin detioriation. Fournial’s products are intended to be applied to anyone including older patients. (See page 7 lines 3-7). When you get older your pores are enlarged. This is seen in the instant application were applicant acknowledges that pore size is determined by genetic, environmental, and physiological factors and includes ageing impacts. (See paragraph 0004 of applicant’s specification).
Applicant’s specification is unclear what causes the pore minimization in their formulation. Applicant’s Specification does not establish that any particular recited ingredient, as opposed to the composition as a whole, is responsible for the alleged pore-reducing effect, and Applicant has not provided persuasive evidence demonstrating a causal nexus or unexpected result attributable to the claimed combination.
The rejection is a 103 rejection and a combination of ingredients. Why would the prior art combination act any different than the claimed combination. Applicants cannot argue against the references individually and must address the proposed combination.
Fournial is not limited to glycation but treats tired skin, detoxify skin, iprove brightness or radiation of skin complexion, improve suppleness, eye bags, and dark circles. (See page 4). Additionally, as stated in the rejection Fournial teaches additional components for skin tightening (reducing pore size) including retinol/niacinamide (p. 10 (tightening agents), p. 38 lines 15-16, p. 6 line 23, p. 31).
As evidence, examiner cites Oblong et al. (USP 6217888) which teaches that niacinamide (Vitamin B3) is known to treat enlarged pores due to ageing and ultimately reduce the pore size. (See claim 11 and column 3 lines 46-67).
As the office now cites Oblong in the rejection the remaining arguments are moot as it is clear that in the skin repair art that at the minimum niacinamide can apply a skin minimizing affect when applied to ageing skin with enlarged pores.
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 16, 18-21, and 23-25 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.
The term “enlarged” in claim 16 is a relative term which renders the claim indefinite. The term “enlarged” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Applicants seem to be arguing that a pore that is “enlarged” is a state that is an irregular state that needs to be evaluated first. Another interpretation could be any pores even if in an normal state could be enlarged when compared to an shrunken/minimized pore after treatment. For the sake of compact prosecution, examiner will interpret the claims that any pore would be enlarged when compared to a minimized pore after a skin treatment.
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.
Claim(s) 16, 18-21, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fournial (WO213046137 A2) and further in view of Liu (WO2013106996 A1) in further in view of Chevreau (US2015/0306022 A1) and Oblong et al. (USP 6217888).
Regarding claims 16, 18-21,and 23-25, Fournial teaches cosmetic use of Albizia julibrissin bark extract to treat conditions associated with glycation of skin including dark circles under eyes and inflamed skin (See entire document including p.3, lines 5-8). They contemplate many different types of topical formulations (creams, lotions, gels – see page 7 lines 26-36))comprising Albizia julibrissin bark extract as an active ingredient (p.7-8) and exemplify several of these different types of formulations (p. 26-38) including:
- eye formulations to treat dark circles (p.28 and 37),
- creams (p. 26, 30, 31),
- emulsions (p. 26-27), and
Microcapsules (p. 8)
Fournial teaches that these Albizia julibrissin bark extract cosmetic formulations can include:
Shea butter (p. 12 and 26),
Propanediol/propandiol (p. 29),
Glycerin (nearly all exemplified compositions),
Capric triglycerides (p. 27-28),
Betaine (p. 29 and 39),
Panthenol (p. 12),
Glyceryl stearate (p. 31),
PEG-100 stearate (p. 31),
Dimethicone (p.30),
Carbomber (p. 26, 29-32, 35),
Butylene glycol (p. 4, 7, 15, 28, 32, 33, 37),
Sodium hydroxide (p. 26, 30, 31, 35-36), and
Sodium benzoate (p. 26-28).
Components for skin tightening (reducing pore size) including retinol/niacinamide (p. 10 (tightening agents), p. 38 lines 15-16, p. 6 line 23, p. 31).
Oblong et al. (USP 6217888) which teaches that niacinamide (Vitamin B3) is known to treat enlarged pores due to ageing and ultimately reduce the pore size. (See claim 11 and column 3 lines 46-67).
It would have been obvious to apply niacinamide to a patient dealing with ageing skin, wrinkling, glycation, and enlarged pores in a single formulation as these issues most if not all of the ageing population.
Fournial does not teach that the compositions used comprise chlorphenesin, synthetic flourphlogopite, and tin oxide.
Liu teaches cosmetic compositions especially foundations used to give skin an aesthetic color and to hide skin imperfections/marks and redness (p. 1). Liu teaches a skin care gel formulation that comprises chlorphenesin and microcapsules Magic 60-WP0105 produced by Korea Particle Technology which comprise synthetic fluorphlogopite and tin oxide (for color) (p. 19, 49, 60) with disodium EDTA (Example 2). They also contemplate that active agents in their microcapsule containing compositions can be plant extracts (p. 56).
At the time of filing, it would have been prima facie obvious for a person of ordinary skill in the art to combine the teachings of Fournial and Liu to use the microcapsules of Liu as a means to microencapsulate the Albizia julibrissin bark extract for delivery to the skin. A person of ordinary would have recognize multiple reasons of combines these teachings: 1) Fournial teaches microencapsulation of Albizia julibrissin bark extract, 2) Liu teaches microcapsules can be used for delivering plant extracts, 3) the microcapsules of Liu can help hide skin imperfections/discoloration, 4) Fournial teaches that Albizia julibrissin bark extract can improve skin discoloration included dark circles under eyes. A person of ordinary skill in the art would have put these teachings together to realize that microencapsulated Albizia julibrissin bark extract with Magic 60-WP0105 would have had the benefit of a product that treats dark circles under eyes and other skin discoloration while simultaneously hiding the current skin imperfections. Additionally, the different compounds in the compositions are well-known elements of cosmetic composition and there use amounts to design choices imparted by the additional functionality desired by the cosmetic designer, absent any evidence to the contrary. For example, a formula designed for people with dry skin will have more moisturizing compounds in the composition. This can clearly variability based on design choice can clearly be seen in the example compositions of Fournial.
With respect to claims 16, 18-21, and 23-25, the combination of Fournial and Liu do not teach compositions further comprising: hydrogenated coco-glycerides, steareth-21, ethylhexylglycerin, dimethiconol, or tocopherol-acetate.
Fournial and Liu collectively teach all the limitations of claim 16.
Fournial and Liu do not collectively teach that that the compositions used comprise hydrogenated coco-glycerides, steareth-21, ethylhexylglycerin, dimethiconol, , or tocopherol-acetate.
Chevreau teaches topical compositions for decreasing oxidative stress. They teach that the compositions can include a number of different compounds including the moisturizers hydrogenated coco-glycerides, dimethiconol, ethylhexylglycerin (they also teach that this can be in an eye serum comprising Albizia julibrissin bark extract, p. 8), and tocopherol-acetate (also a well-known antioxidant); and the emulsifier steareth-21.
At the time of filing, it would have been prima facie obvious for a person of ordinary skill in the art to modify the collective teachings of Fournial and Liu include any of the components of Chevraeu as they are all either well-know moisturizers or emulsifiers. There is extensive contemplation in Fournial to provide Albizia julibrissin bark extract as part of an emulsion or a moisturizing composition.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16, 18-21, and 23-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim all claims of U.S. Patent No.11833243, 11033487, 10251833 in view of the references above (if needed).
The reference patents all deal with same extract with the same ingredients to treat skin in the same way. These are obvious variants in view of one another.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMJAD A ABRAHAM whose telephone number is (571)270-7058. The examiner can normally be reached Mon-Friday 830 AM to 500 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad A Abraham can be reached at 571-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AMJAD A. ABRAHAM
SPE AU 1663
Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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