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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
Claims 1-20 are pending. Claims 14-20 are withdrawn. Claims 1-13 are under consideration in this action.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) and the following species in the reply filed on December 12, 2025 is acknowledged:
Silicates of claim 3: sodium silicate
Hyaluronic acids of claim 5: sodium hyaluronate
Clays of claim 6: hectorite
Additives of claim 9: antimicrobial agent
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 12, 2025.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities: the claims have a period after the listing of the components of the composition (e.g., “a. … i. … ii. …”). Periods may only be used at the end of the claim, and may not be used elsewhere in the claims except for abbreviations. See MPEP 608/01(m). Examiner suggests using the closed parentheses rather than the period for designation of the components (e.g. “a)…i)…ii)). 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 applicant regards as his invention.
Claims 2 and 13 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.
Claims 2 and 13 recite that the cosmetic composition is free or essentially free of polyol plasticizers, peptides, and plant extracts. However, the definition of “essentially free” is indefinite. The instant Specification discloses that “in some embodiments, a composition may be ‘essentially free’ wherein an excluded ingredient is present at a concentration that does not exceed 5% by weight, and in some instances is present not more than 3% by weight…and in some instances is present not more than 0.1% by weight…” (Spec., para.0098). Thus, as currently written, the term “essentially free” only discloses examples of what amounts may be deemed “essentially free”, not a set definition. For example, claim 13, which depends from claim 12, recites that the composition is free or essentially free of polyol plasticizer. However, claim 12 recites the required inclusion of butylene glycol (a polyol plasticizer) in an amount of 0.3 wt.%. While for claim 13, the amount of butylene glycol would be encompassed by “essentially free” if “essentially free” is an amount not to exceed 5% by weight, it would not be encompassed by “essentially free” if it were to be defined as “not more than 0.1% by weight. Thus, it is unclear what the phrase “essentially free” encompasses, and therefore the resulting claims do not clearly set forth the metes and bounds of the patent protection desired.
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.
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 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Manning et al. (Manning) (US 2017/0189298 A1; published Jul. 6, 2017), Wang et al. (Wang) (US 2022/0105020 A1; published Apr. 7, 2022), Ko et al. (Ko) (KR 20190001136A; published Jan. 4, 2019; citations from English machine translation; cited and copy of original with English machine translation provided with IDS submitted 10/30/2023), and Brillouet et al. (Brillouet) (US 2017/0128357 A1; published May 11, 2017).
With regards to Claims 1, 3, 5, Manning discloses cosmetic compositions that provide immediate skin-tightening and long-lasting improvements to the skin for the treatment of, for example, eye bags, facial wrinkles, and other age-related skin imperfections. The compositions comprise: (a) a first film former sodium silicate; (b) at least one second film former; (c) at least one polyvalent silicate thickener; (d) at least one anionic associative polymeric thickener; (e) at least one plasticizer; and (f) optionally at least one cosmetic powder (abstract; para.0022, 0040). The compositions are aqueous compositions, and thus contain water (para.0042; Table 1).
In an embodiment, the polyvalent silicate thickener is organically modified clay (para.0034).
The compositions typically include at least one plasticizer, such as sodium hyaluronate (para.0036).
The at least one anionic associative polymeric thickener increase the viscosity of water or form an aqueous gel when the cosmetic compositions of the disclosure are dispersed/dissolved in water (para.0035). The formulation may also be in various forms including a gel and a liquid-gel (par.0041).
With regards to Claim 2, Manning does not appear to require a polyol plasticizer, peptides, or plant extracts. Thus, absent evidence to the contrary, Manning encompasses compositions that are free of polyol plasticizers, peptides, and plant extracts.
With regards to Claims 7 and 11, the compositions can have an alkaline pH, e.g., in the range of 10 to 12 or 10.5 to 11.5 (para.0030). If the pH is below 10, the compositions became more solid. However, it was found that when the pH is in the range of 10 to 12, the composition exhibits special properties. For example, the composition exhibited excellent film-forming properties on the skin and the film exhibited unexpectedly long-lasting strength, durability, and flexibility (elasticity) (par.0062).
With regards to Claim 8, the at least one anionic associative polymeric thickener (e.g., acrylate copolymer) is present in an amount of about 0.5-15% by weight of the total composition (para.0026, 0035). The sodium silicate is present from about 1-10% by weight of the total composition (para.0023-0024, 0032). Thus, Manning encompasses ratios of polyacrylates to sodium silicate that overlap with the claimed range. Furthermore, Manning exemplifies a cosmetic formulation comprising acrylates copolymer in an amount of 3 wt.% and sodium silicate in an amount of 5 wt.% (a ratio of 1:1.67) (Table 2, example formula 6).
With regards to Claim 10, the sodium silicate is present in an amount of from about 1-10% by weight of the composition; the at least one anionic associative polymeric thickener (e.g., acrylate copolymer) is present in an amount of about 0.5-15% by weight of the composition; the sodium hyaluronate (plasticizer) is present in an amount of about 1-15% by weight of the composition; the clay (polyvalent silicate thickener) is present in an amount of 0.1-0.9% by weight of the composition; and water is present in an amount to make up the rest of the composition, such as from 20-80% by weight of the composition (para.0023-0028, 0031-00360042; Table 2).
Manning does not appear to explicitly disclose (i) the molecular weight of the sodium hyaluronate (Claim 1); (ii) wherein the at least one cross-linked polyacrylic acid thickener comprises a carbomer (Claim 1 and 4); (iii) the amount of sodium hyaluronate (Claims 10); or (iv) the inclusion of antimicrobial agents (Claim 9). Wang, Ko, and Brillouet are relied upon for these disclosures. Their teachings are set forth herein below.
Brillouet discloses a topical gel cream composition used for improving the appearance of at least one sign of skin aging by applying to skin in need of improving the appearance of at least one sign of skin aging (abstract; para.0014, 0101). “Sign of skin aging” is defined to include the presence of lines and wrinkles, loss of elasticity, uneven skin, and blotchiness (para.0014-0022).
In an embodiment, the topical composition comprises hyaluronic acid, which may be in a salt form, such as sodium hyaluronate. The molecular weight of the hyaluronic acid may vary as desired from very low molecular weight to very high molecular weight (para.0048).
Brillouet exemplifies the use of sodium hyaluronate as a skin conditioner in an amount of 0.05 wt.% and 0.1 wt.% of the composition; and as an emollient in an amount of 0.01 wt.% of the composition (para.0105-0110).
The composition may further comprise any of a variety of additional cosmetically active agents, such as antimicrobial agents (para.0062).
Wang discloses the moisturizing effect of hyaluronic acid is positively correlated with its molecular weight, and the high molecular weight hyaluronic acid has better moisturizing, film-forming, and lubricating properties. The high molecular weight hyaluronic acid added in current skin care products is usually greater than 800 KDa. When applied to the surface of skin, it not only has a good moisturizing effect, but also can achieve a lifting and firming effect, effectively improving rough skin and make the skin more delicate and smoother (para.0005).
Ko discloses cosmetic compositions for improving skin condition, in particular for providing skin wrinkle improvement, skin elasticity improvement, skin tone improvement, and a skin whitening effect. The composition has a short drying time after application to the skin, and the skin lifting effect can be maximized (abstract).
Ko discloses the use of carbomer as a thickener, which may be present in an amount of 1-3% by weight of the composition. If the content of the thickening agent exceeds 3% by weight, the skin-releasing property is deteriorated, and if the content of the thickening agent is less than 1% by weight, a problem of flowing down from the skin occurs during application (p.3, para.3). The composition comprising carbomer when applied to the skin has a drying time that is fastest, and the skin lifting effect is excellent even when the cosmetic composition is applied to the skin. The skin lifting effect may mean an effect of stretching and stiffening the stretched and stretched skin due to aging and the like (p.3, para.2).
With regards to inclusion of sodium hyaluronate and the molecular weight of the sodium hyaluronate as recited in Claims 1 and 10, both Manning and Brillouet are directed to topically applied gel compositions used for improving the appearance of skin, in particular for treatment of facial wrinkles and other signs of skin aging. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Manning and Brillouet and incorporate sodium hyaluronate as a skin conditioner or emollient in an amount ranging from 0.01-0.1 wt.%. One of ordinary skill in the art would have been motivated to do so in order to provide the beneficial effect of skin conditioning or skin protection when the composition is applied. One of ordinary skill in the art would have had a reasonable expectation of success in doing so Manning discloses that sodium hyaluronate is suitable for inclusion in their composition.
Further, in light of Wang’s disclosure that sodium hyaluronate with a high molecular weight of greater than 800 kDa is known to achieve a moisturizing, lifting, and firming effect to the skin, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Manning and Brillouet with the teachings of Wang and use high molecular weight sodium hyaluronate having a molecular weight of greater than 800 kDa. One of ordinary skill in the art would have been motivated to do so in order to obtain the benefit of not only skin moisturizing, but also skin lifting and firming effects, which are the objectives of Manning and Brillouet’s cosmetic compositions. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Brillouet discloses that high molecular weight sodium hyaluronate may be incorporated in the formulation, and Wang discloses molecular weights of sodium hyaluronate that are considered high and suitable for inclusion of topical skin cosmetics.
With regards to the inclusion of carbomer as recited in Claims 1 and 4, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Manning, Brillouet, and Ko, and include carbomer as the at least one anionic associative polymeric thickener in the cosmetic composition of the combined teachings of Manning and Brillouet discussed above. One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so as Ko discloses that carbomer (an anionic polyacrylate) is known as a thickener for inclusion into cosmetic compositions for improving skin condition, and compositions with carbomer when applied to skin has a drying time that is fastest, and excellent skin lifting effect. Furthermore, Manning discloses that the at least one anionic associative polymeric thickener is present in an amount of about 0.5-15% by weight of the composition. One of ordinary skill in the art would have found it prima facie obvious and would have been motivated to optimize the amount of carbomer in the composition of the combined teachings of Manning, Brillouet, and Ko to about 1-3 wt.% of the composition, as Ko discloses that amounts of carbomer below 1% by weight resulted in compositions that flow down the skin curing application, whereas when used in amounts that exceed 3 wt.%, the skin-releasing property is deteriorated.
With regards to the inclusion of antimicrobial agents as in Claim 9, in light of Brillouet’s disclosure, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Manning, Brillouet, and Ko and further include antimicrobial agents in the cosmetic composition of the combined teachings of the prior art references. One of ordinary skill in the art would have been motivated to do so in order to obtain the desired additional functionality when using the composition, such as antimicrobial activity. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Brillouet discloses that additional cosmetically active agents, such as antimicrobial agents are known to be incorporated into topical cosmetic compositions.
With regards to the amount of water as recited in Claim 10, as discussed above, Manning discloses that the water makes up the remainder of the formulation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In the present case, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation to determine the optimal or workable amount of water based on the amounts of the other components in the cosmetic composition and the desired consistency of the final composition. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claims 6, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Manning et al. (Manning) (US 2017/0189298 A1; published Jul. 6, 2017), Wang et al. (Wang) (US 2022/0105020 A1; published Apr. 7, 2022), Ko et al. (Ko) (KR 20190001136A; published Jan. 4, 2019; citations from English machine translation; cited and copy of original with English machine translation provided with IDS submitted 10/30/2023), and Brillouet et al. (Brillouet) (US 2017/0128357 A1; published May 11, 2017), as applied to Claims 1-5 and 7-11 set forth above, further in view of Montoya et al. (Montoya) (US 2020/0345596 A1; published Nov. 5, 2020).
The teachings of Manning, Wang, Ko, and Brillouet, and the motivation for their combination as they apply to Claims 1-5 and 7-11 are set forth above and incorporated herein. Additional relevant teachings of Manning are set forth herein below.
Manning discloses the inclusion of at least one plasticizer, which may be butylene glycol (Manning claim 1).
The combined teachings of Manning, Wang, Ko, and Brillouet does not appear to explicitly disclose (i) wherein the clay is hectorite (Claims 5 and 12), or (ii) wherein the butylene glycol is present in an amount of about 0.3% by weight of the composition (Claim 12). Montoya is relied upon for this disclosure. The teachings of Montoya are set forth herein below.
Montoya discloses skin-tightening composition, and method for using the same, which provide a long-lasting skin-tightening effect and a mattifying finishing effect. The skin-tightening compositions are useful for improving the appearance of skin, especially skin of the neck and face (abstract).
Montoya’s composition include clay, which may be hectorite or organically modified hectorites (para.0158). In some embodiments, the amount of the one or more clays may range from about 0.1-5% by weight of the composition (para.0047).
Montoya’s composition further includes polyols, such as butylene glycol, which may be present in an amount of about 0.1-7 wt.% (para.0060).
With regards to the inclusion of hectorite as recited in Claims 9 and 12, as discussed above, Manning discloses the inclusion of clays in their cosmetic composition for improving the appearance of skin, in particular for treatment of facial wrinkles and other signs of skin aging. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Manning, Wang, Ko, and Brillouet with the teachings of Montoya and further include hectorite clay into the cosmetic composition of the combined teachings of Manning, Wang, Ko, and Brillouet. One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so as Manning allows for clays to be included in their cosmetic compositions, and Montoya discloses hectorite as a clay known to be included in cosmetic composition used for improving signs of skin aging, e.g., providing a skin-tightening effect.
With regards to the amounts of hectorite and butylene glycol as recited in Claim 12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In the present case, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation to determine the optimal or workable amount of hectorite and butylene glycol based on the prior art known amounts, such as those disclosed by Montoya, and desired consistency and texture of the final cosmetic composition. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to Claim 13, the combined teachings of the prior art references as discussed above do not appear to require the inclusion of peptides or plant extracts. With regards to the inclusion of polyol plasticizer, as discussed above, Montoya discloses that butylene glycol (a polyol plasticizer) can be present in an amount as little as about 0.1% by weight. The instant Specification discloses that “essentially free” in some embodiments does not exceed 5% by weight (Spec., par.0098). Thus, the combined teachings of the cited prior art references encompasses being essentially free of polyol plasticizer.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/499,201 (Copending 201).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping cosmetic compositions comprising (a) combinable parts including (i) a lifting serum; and (ii) a gelling solution, wherein, upon mixing the combinable parts and application to a substrate, the composition forms a semi-solid gel film. Both the instant claims and Copending 201’s claimed lifting serum and gelling solutions include overlapping components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-13 are rejected. No claims are allowed.
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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