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 .
In view of the amendment, previous 112(b) rejection on claims 1-16, previous 112(b) rejection on claim 7 and previous 112(b) rejection on claim 15 are hereby withdrawn.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-7, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujihata (US 2010/0239621 A1) in view of Gerstein (5,139,771).
Tsujihata teaches ([0010]) a gel sheet comprising a hydrogel, the hydrogel comprising a water-soluble divalent metal salt and an anionic polymer compound. Tsujihata teaches ([0003], [0030] and [0184]-[0186]) that a cosmetic preparation in sheet form may be formed from the gel sheet of its invention, and such cosmetic preparation in sheet form is particularly useful as a facial mask. Specifically, in Example 3 (see Table 1), Tsujihata teaches a hydrogel formulation containing k-carrageenan (Tsujihata’s anionic polymer compound – see [0042] and [0046]), magnesium ascorbyl phosphate (Tsujihata’s water-soluble divalent metal salt – see [0035] and [0038]), glucomannan (Tsujihata’s viscosity-increasing polysaccharide ([0077]) – instant thickener), 1,3-butanediol (Tsujihata’s polyhydric alcohol compound ([0080] and [0082]) - instant solvent), 1 wt.% collagen tripeptide (instant under 2 wt% of hydrolyzed collagen of claim 15), 85.8 wt.% of water and O/W emulsion. The O/W emulsion (included in Tsujihata’s Example 3 formulation) contains tocopherol (vitamin E of instant claim 14) and glycerin (instant humectant of claim 4) (see [0190]-[0199]).
With respect to instant agar and instant acid, as shown above Tsujihata uses k-carrageenan as its anionic polymer ([0042] and [0046]) in its hydrogel formulation of Example 3. Tsujihata furthermore teaches ([0043]) that two or more anionic polymer compounds may be used in a mixture in its formulation and teaches ([0045]-[0046]) carrageenan, agar and hyaluronic acid among preferred and particularly preferred examples for its anionic polymer compound in view of simultaneously achieving water retention capability, gel strength and syneresis property. Based on Tsujihata’s teaching, it would have been obvious to one skilled in the art to use a mixture of carrageenan (already present in Example 3 formulation), agar and hyaluronic acid (instant acid of claim 6) as anionic polymer compounds in Tsujihata’s formulation of Example 3 with a reasonable expectation of simultaneously achieving water retention capability, gel strength and syneresis property.
Thus, Tsujihata renders obvious instant formulation for use as a cosmetic mask comprising instant components (a)-(f).
With respect to instant component (g), Tsujihata teaches ([0125], [0136]) that various additives, which examples include various extracts, may be added to its formulation depending on the purpose of use of the gel sheet of it invention. Among examples for the various extracts, Tsujihata teaches a cucumber fruit extract (Cucumis sativus). It would be obvious to one skilled in the art to include a cucumber fruit extract in Tsujihata’s formulation of Example 3 with a reasonable expectation of success. Tsujihata does not teach instant amount “no more than 2% of the total formulation” for such extract. However, as evidenced by Gerstein (see Examples 5 and 7), it is known in the art that in face mask compositions, plant extracts, such as aloe and citrus, can be used in the amount of 1% and 0.5%, respectively. Under such guidelines, instant amount for the Cucumis sativus (which is taught to be equivalent to aloe extract and Citrus extracts by Tsujihata in [0136]) would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Thus, Tsujihata in view of Gerstein renders obvious instant component (g) in the amount of no more than 2% of the total formulation.
With respect to instant limitation “wherein the formulation is a semi-solid starting formulation which forms a hydrogel when heated”, Tsujihata teaches ([0200]-[0202]) that the ingredients shown in Table 1 are heated then cooled to form the hydrogel. Thus, Tsujihata teaches instant limitation.
Thus, Tsujihata in view of Gerstein renders obvious instant claims 1, 4, 6, 7 and 15.
With respect to instant claim 2, claim 2 recites an intended use of the claimed invention, which does not result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since Tsujihata in view of Gerstein teaches instant formulation of claim 1 (Tsujihata also teaches that a cosmetic preparation in sheet form formed from the gel sheet of its invention can be used as a facial mask), Tsujihata in view of Gerstein renders obvious instant claim 2 as well.
With respect to instant claim 3, as discussed above, Tsujihata’s hydrogel formulation of Example 3 contains 1,3-butane diol as its polyhydric alcohol compound (a solvent). Tsujihata further teaches ([0080] and [0082]) the equivalence of 1,3-butanediol and 1,2-propanediol both as particularly preferred polyhydric alcohol compounds that can be used in its formulation. Thus, it would have been obvious to one skilled in the art to use 1,2-propanediol (instant solvent of claim 3) in place of 1,3-butanediol in Tsujihata’s Example 3 with a reasonable expectation of success. Thus, Tsujihata in view of Gerstein renders obvious instant claim 3.
With respect to instant claim 5, Tsujihata teaches ([0090]) the use of organic or inorganic fine particles in its hydrogel formulation in order to improve dimensional stability. Among preferred examples for the inorganic fine particles, Tsujihata teaches silica. It would have been obvious to one skilled in the art to use silica in Tsujihata’s hydrogel formulation of Example 3 with a reasonable expectation of improving dimensional stability. Thus, Tsujihata in view of Gerstein renders obvious instant claim 5.
With respect to instant claim 14, as shown above, Tsujihata’s hydrogel formulation of Example 3 already contains tocopherol (vitamin E of instant claim 14). Tsujihata further teaches ([0119] and [0131]) that its hydrogel formulation may further contain an organic acid so as to control pH, and among specific examples for such organic acid, Tsujihata teaches ascorbic acid (instant vitamin C). It would have been obvious to one skilled in the art to further add ascorbic acid to Tsujihata’s hydrogel formulation of Example 3 with a reasonable expectation of controlling pH of the formulation. Thus, Tsujihata in view of Gerstein renders obvious instant claim 14.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujihata (US 2010/0239621 A1) in view of Gerstein (5,139,771) as applied to claim 1 above, and further in view of Stosz et al (5,418,156).
Although Tsujihata does not expressly state that agar is derived from Gelidium cartilagineum, as evidenced by Stosz et al (col.2, lines 4-10), it is known in the art that in the United States, agar is mainly extracted from Gelidium cartilagineum. Thus, it would be obvious to one skilled in the art to use agar derived from Gelidium cartilagineum which is available the United States. Thus, Tsujihata in view of Gerstein, and further in view of Stosz renders obvious instant claim 8.
Claim(s) 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujihata (US 2010/0239621 A1) in view of Gerstein (5,139,771) as applied to claim 1 above, and further in view of Tamareselvy et al (US 2013/0183361 A1).
With respect to instant claim 11, Tsujihata teaches ([0075]-[0077]) that polysaccharides efficient in viscosity increase and gelation such as galactomannan may be used in its formulation to improve handleability and gel strength. Furthermore, Tamareselvy teaches ([0251], [0263], [0265]) that locust bean gum (a galactomannan) is used as an auxiliary thickener in cosmetics such as facial masks. It would have been obvious to one skilled in the art to use locust bean gum (which is a galactomannan) in Tsujihata’s formulation of Example 3 as an auxiliary thickener with a reasonable expectation of further improving handleability and gel strength. Thus, Tsujihata in view of Gerstein, and further in view of Tamareselvy renders obvious instant claim 11.
With respect to instant claim 12, Tamareselvy further teaches ([0204], [0263] and [0265) that copper chlorophyllin complex can be used as a deodorant in cosmetic compositions such as facial masks. It would be obvious to one skilled in the art to use copper chlorophyllin complex as a deodorant in Tsujihata’s formulation with a reasonable expectation of deodorizing the facial mask. Thus, Tsujihata in view of Gerstein, and further in view of Tamareselvy renders obvious instant claim 12.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujihata (US 2010/0239621 A1) in view of Gerstein (5,139,771) as applied to claim 1 above, and further in view of Son et al (US 2018/0193236 A1).
Tsujihata does not teach the use of a synthetic form of epidermal growth factor. Son teaches ([0118]) a composition for skin surface modification such as a facial mask, and teaches ([0068]) that epidermal growth factor (EGF) is used as an additive to prevent or improve wrinkles on skin. Since EGF can be either natural or synthetic, it would be obvious to one skilled in the art to use a synthetic (lab-created) EGF in Tsujihata’s formulation with a reasonable expectation of improving wrinkles on skin. Thus, Tsujihata in view of Gerstein, and further in view of Son renders obvious instant claim 13.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujihata (US 2010/0239621 A1) in view of Gerstein (5,139,771) as applied to claim 1 above, and further in view of Peterson (US 2018/0085303 A1).
Tsujihata’s formulation does not contain activated charcoal. Peterson teaches ([0065]) that an enhancing agent such as activated charcoal powder is especially useful in detoxifying cosmetic products, such as facial masks. It would be obvious to one skilled in the art to use an effective amount of activated charcoal powder in Tsujihata’s formulation in order to achieve detoxification of the skin. Thus, Tsujihata in view of Gerstein, and further in view of Peterson renders obvious instant claim 16.
Response to Arguments
With respect to instant 103 rejections over Tsujihata in view of Gerstein, applicant argue that none of the cited prior arts, either individually or in combination, contemplate the formulation including at least one oil or extract selected from the group consisting of Boswellia carterii, Pisum sativum and Cucumis sativus AND wherein the amount of the at least one oil or extract totals no more than 2% of the total formulation as recited in the amended claim 1. Applicant argue that although the Examiner points to Gerstein to suggest some prior teaching of an oil or extract, the only mention of the term "oil" in Gerstein was in the background of the application and it was meant to suggest the downside of including oils (such as mineral oils) found within moisturizing creams. Applicant also argue that the only "extracts" disclosed in Gerstein are aloe or citrus, neither of which are close to the listing of the genus/species of extracts found within claim 1. The Examiner disagrees. As already discussed above, Tsujihata teaches that various additives, which examples include various extracts, may be added to its formulation depending on the purpose of use of the gel sheet of it invention. Among specific examples for the various extracts, Tsujihata teaches a cucumber fruit extract (Cucumis sativus). Thus, it would be obvious to one skilled in the art to include a cucumber fruit extract in Tsujihata’s formulation of Example 3 with a reasonable expectation of success. As to instant amount of no more than 2% of the total formulation, since Tsujihata was silent about the amount of the various extracts, Gerstein was used (Examples 5 and 7) as a secondary (evidentiary) reference, merely to show that in face mask compositions, plant extracts, such as aloe and citrus (which are taught to be equivalent to Cucumis sativus by Tsujihata in [0136]), are known to be used in the amount of 1% and 0.5%, respectively. Under such guidelines available, instant amount for the Cucumis sativus would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
For the reason stated above, instant 103 rejections over Tsujihata in view of Gerstein still stand.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
June 4, 2026
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