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 .
Priority
The instant application was filed 19 April 2024 and is the national stage entry of PCT/KR2022/016368 filed 25 October 2022. The Applicant claims priority to foreign application KR10-2021-0166108 filed 26 November 2021. An English copy of the foreign document has been provided as of 12 August 2026. Therefore, the effective filing date of the instant application is 26 November 2021.
Examiner’s Note
The Applicant's amendments and arguments filed 12 August 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 12 August 2026, it is noted that claim 1 has been amended, claim 2 has been canceled, and no new claims have been added. Support for the amendment can be found on pg. 14 of the instant specification. No new matter has been added.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1, 3-8, 11, 12, 15, 16, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sako (US 2005/0074474 A1) in view of Lee et al. (A 1,1’-biuracil from Epidermidibacterium keratini EPI-7 shows anti-aging effects on human dermal fibroblasts, Appl Biol Chem, 2019), as evidenced by wwwn.cdc.gov.
Regarding claim 1, Sako teaches a topical composition comprising porous silica impregnated with a water-insoluble skin beneficial agent (abs; entire teaching). The agents may be prepared and used in their extract form, where it is interpreted to have undergone an extraction step (para. 35). Regarding Applicant’s amendment to include “oil,” the composition comprising skin beneficial agents dissolved in mineral or soybean oil (abs, para. 73) or other water-insoluble agents (para. 7) is interpreted as the extract included in an oil.
Regarding claim 3, the extraction solvent is broadly interpreted as the solvent used to contain the extract. Sako teaches water-insoluble skin beneficial agents dissolved in emollients (abs). Emollients include mineral oil or soybean oil (para. 73).
Regarding claim 4, silica is interpreted as made of silicon dioxide, as evidenced by wwwn.cdc.gov, pg. 1).
Regarding claims 5 and 6, the surface of the porous silica may be treated with dimethicone (para. 31).
Regarding claims 7, 8, 11, 12, 15, 16, and 18-20, the formulation has cosmetic effects (para. 34), which includes treating aging and wrinkles (para. 4), or is provided as a cosmetic (claims 5 and 6).
Sako does not teach using a strain from Epidermidibacterium keratini in claim 1.
Lee teaches that Epidermidibacterium keratini has anti-aging effects on the skin (abs).
Since Sako does not use a strain from Epidermidibacterium keratini to impregnate the porous silica particles in claim 1, one of ordinary skill in the art would have been motivated to use Lee’s teaching with a reasonable expectation of success. Lee teaches that Epidermidibacterium keratini has an anti-aging effect on the skin. Therefore, a skilled artisan would have recognized the added benefit of using an extract from this strain to improve Sako’s composition, which also uses a water-insoluble skin beneficial agent to treat aging skin. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Response to Arguments
Applicant's arguments filed 12 August 2026 have been fully considered but they are not persuasive.
The Applicant argues that the prior art teachings do not teach an oil extract of an Epidermidibacterium keratini strain (Remarks, pgs. 6-8).
Applicant’s argument is not found persuasive. The Applicant points to Lee’s method of extraction of the strain. However, regarding Applicant’s amendment to include “oil,” the composition comprising skin beneficial agents dissolved in mineral or soybean oil (abs, para. 73) or other water-insoluble agents (para. 7) is interpreted as the extract included in an oil in Sako’s teaching. Furthermore, the claim is also interpreted as extracting the strain using an oil, which is interpreted as a product-by-process limitation. See MPEP 2113(I).
The Applicant argues that it would not be obvious to combine the teachings of Lee and Sako (Remarks, pgs. 8-9).
Applicant’s argument is not found persuasive. Since Sako does not use a strain from Epidermidibacterium keratini to impregnate the porous silica particles in claim 1, one of ordinary skill in the art would have been motivated to use Lee’s teaching with a reasonable expectation of success. Lee teaches that Epidermidibacterium keratini has an anti-aging effect on the skin. Therefore, a skilled artisan would have recognized the added benefit of using an extract from this strain to improve Sako’s composition, which also uses a water-insoluble skin beneficial agent to treat aging skin. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
The Applicant argues synergistic effects with the combination of the claimed ingredients (Remarks, pgs. 9-10).
Applicant’s argument is not found persuasive. To show synergy, the applicant must prove the invention exhibits more than mere additive effects. The effectiveness of the combination should be shown vs. the individual components, and the effectiveness also should be shown over what the closest cited prior art suggests. Furthermore, the Applicant notes that the negative feeling of using rice bran oil extract of E. keratini was offset by the positive feeling of using porous silica in their Examples (instant specification, pg. 18). Sako notes that there is an improved skin feel when using the porous spherical silica composition compared to compositions without the porous silica. Additionally, Lee notes that E. keratini has anti-aging properties for the skin. Therefore, the results of better prevention in skin aging, more pleasant skin feel, etc. are not unexpected or surprising.
Conclusion
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 Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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, Brian-Yong 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.
/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
