DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicant’s Preliminary Amendments and Remarks, filed 7 November 2024, in the matter of Application N° 18/863,662. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No claims have been added or canceled.
Claims 11 and 17-21 have been amended to remove improper recitations of multiple claim dependency. No new matter has been added.
Thus, claims 1-21 represent all claims currently under consideration.
Information Disclosure Statement
One Information Disclosure Statement (IDS) filed 24 December 2025 is acknowledged and has been considered.
Claim Objections
Claim 2 is objected to because it contains a typographical mistake in the last line of the claim: “…a and a…”. Appropriate correction is required.
Claim Rejections - 35 USC §102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 7, and 11-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (JPS 60-48705 (A); machine translation attached and cited).
The limitations recited by instant claim 1 are directed to a skin-care product comprising a sealed, liquid-permeable container containing a composition in the form of a powder. The contained powder is claimed as comprising a dermatologically effective material which becomes a paste upon contact with water and the container releases at least a portion of said paste.
Here, the Examiner broadly and reasonably interprets the claimed invention as being a dermatologically effective powder contained within a water-permeable container. That the powder becomes a paste which is released is conditional upon its combination with water. As such, water is not a required element of the claimed invention, and thus, neither is the powder being in the form of a paste. Such is deemed directed to an intentional use of the claimed invention.
Nakamura discloses a cosmetic material characterized by comprising a “non-aqueous cosmetic”, a water-soluble sheet bag for sealing the non-aqueous cosmetic, and a water-permeable porous sheet surrounding the water-soluble sheet bag (see e.g., claim 1; pg. 11 of the attached translation). The aforementioned “non-aqueous cosmetic” is also referred to as a powder or granules or as being in a non-hydrated state (see pg. 2, lines 1-5). Thus, the cosmetic composition contained therein is disclosed as being in powder form.
The reference additionally discloses that “when using the cosmetic material of the present invention, by applying water …, the water-soluble sheet bag can be dissolved, eliminating its shape as a bag, and the cosmetic contents can be released from the porous sheet” (see bridging sentence between pp. 3-4). The cosmetic composition is disclosed as being mixed with water and dissolved or dispersed prior to use (see pg. 4, lines 3-5). Use of the disclosed product as a cosmetic applicator occurs when “water is impregnated into the surface of the water-permeable porous sheet, and the cosmetic product inside the applicator is absorbed into the porous sheet. After that, the two porous sheets are separated from each other before use … and useful as disposable applicators” (see pg. 2, lines 8-11).
The foregoing is considered to teach the limitations recited by instant claims 1 and 11-16. Therein, Applicant’s recitation directed to the expansion of the pores of the container are considered to be synonymous to the dissolution of the bag containing the powder cosmetic.
The limitations recited by instant claims 17 and 19-21 are also considered to be anticipated by the foregoing disclosure, notably as they are considered to recite the same compositional and structural limitations as the claim from which they individually depend. Stated another way, the limitations of claims 17 and 19-21 are directed to the skin condition that is intended to be treated rather than the composition at issue.
Lastly, regarding the cosmetic powder contained within the water-soluble, dissolvable bag, the reference discloses that the powder may primarily contain vitamin C (see pg. 4, lines 5-6). Such is considered to read on the powder limitations recited by instant claims 1, 2, and 7.
As such, the reference is considered to anticipate the instantly claimed invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Applicants are 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 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Schnittger et al. (US Pre-Grant Publication Nº 2010/0203077 A1) in view of Monibi (US Pre-Grant Publication Nº 2017/0252390 A1) and Nakamura (JPS 60-48705 (A); machine translation attached and cited).
The limitations of the instantly claimed invention are discussed above as they pertain to claims 1, 2, and 11-21.
The limitations of claims 2-10 further limit the composition contained within the liquid-permeable container of claim 1. Therein, claim 2 is directed to the genera of compounds and are recited as being selected from the group consisting of a dermatologically acceptable clay, a dried plant material and/or extract thereof, an antioxidant, a keratolytic agent, and combinations thereof.
Claim 10 more specifically recites that the composition comprises kaolin clay, bentonite clay, rooibos leaves, rooibos leaf extract, chamomile flower extract, salicylic acid, maltodextrin, pomegranate extract, calendula officinalis (marigold) flower extract, and green tea extract.
Schnittger discloses compositions for treating the skin (i.e., for improvement, skin disorders, etc.)(see e.g., Abstract; claims). The practiced composition is taught as being produced in powder form or as being dispersed or solubilized in solvents such as water. See ¶[0035]. The applied cosmetic composition is taught as treating pigmentation of the skin and therefore, taught as comprising powder components that may be pigmented or non-pigmented. Paragraph [0101] defines such non-pigmentatious powders as including bentonite, kaolin, maltodextrin, and combinations thereof.
Paragraph [0133], for instance, discloses salicylic acid as an agent possessing skin lightening properties. See also Example 1, salicylic acid formulation.
Claim 12 of the reference discloses that the practiced compositions will additionally comprise one or more botanical extracts. Paragraph [0097] further defines suitable botanical extracts from plants as including herbs, roots, flowers, fruits, seeds, “and so on” as being selected from such plants as green tea and chamomile (see also Example 2). The list of botanicals is presented in ¶[0097] as being open-ended, and as evidenced by Example 2, is noted as further including, for instance, pomegranate juice extract.
Though the botanical disclosure provided by the reference is open-ended, the Examiner acknowledges that the reference does not expressly include leaves or leaf extracts of Aspalathus linearis (rooibos) or Calendula officinalis flower extract.
Monibi is considered to bridge this gap, teaching topical skin formulations comprising Calendula extract and rooibos extract (see e.g., Abstract; claims 1, 4, 6, and 24). Claim 3 discloses the different forms that the practiced composition may take with ¶[0001] further including powders are also used.
As with the teachings of Schnittger, Monibi teaches using its practiced topical compositions for treating a variety of dermatological conditions (see e.g., claims 28 and 29).
Where both references are deficient is with respect to the sealed, liquid-permeable container within which the claimed powder composition is contained.
The teachings of Nakamura are considered to remedy this deficiency.
Nakamura discloses a cosmetic material characterized by comprising a “non-aqueous cosmetic”, a water-soluble sheet bag for sealing the non-aqueous cosmetic, and a water-permeable porous sheet surrounding the water-soluble sheet bag (see e.g., claim 1; pg. 11 of the attached translation). The aforementioned “non-aqueous cosmetic” is also referred to as a powder or granules or as being in a non-hydrated state (see pg. 2, lines 1-5). Thus, the cosmetic composition contained therein is disclosed as being in powder form.
The reference additionally discloses that “when using the cosmetic material of the present invention, by applying water …, the water-soluble sheet bag can be dissolved, eliminating its shape as a bag, and the cosmetic contents can be released from the porous sheet” (see bridging sentence between pp. 3-4). The cosmetic composition is disclosed as being mixed with water and dissolved or dispersed prior to use (see pg. 4, lines 3-5). Use of the disclosed product as a cosmetic applicator occurs when “water is impregnated into the surface of the water-permeable porous sheet, and the cosmetic product inside the applicator is absorbed into the porous sheet. After that, the two porous sheets are separated from each other before use … and useful as disposable applicators” (see pg. 2, lines 8-11).
The foregoing is considered to teach the limitations recited by instant claims 1 and 11-16. Therein, Applicant’s recitation directed to the expansion of the pores of the container are considered to be synonymous to the dissolution of the bag containing the powder cosmetic.
The limitations recited by instant claims 17 and 19-21 are also considered to be anticipated by the foregoing disclosure, notably as they are considered to recite the same compositional and structural limitations as the claim from which they individually depend. Stated another way, the limitations of claims 17 and 19-21 are directed to the skin condition that is intended to be treated rather than the composition at issue.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed powdered cosmetic composition and arriving at the recited method of treating skin conditions by combining the contained powder to water to produce a paste that is then applied to the skin.
MPEP §2144.06(I) states that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.”
In the instant case, both of the disclosures of Schnittger and Monibi are directed to producing compositions that are topically applied to treat a variety of skin conditions and disorders such as wrinkles, age spots, eczema, rosacea, etc. Both references teach and suggest that their respective compositions may be produced as powders, and further combined with a solvent/dispersant such as water.
The teachings of Nakamura provide the ordinarily skilled artisan with guidance to package the cosmetic powder, to use it in combination with water to release the composition inside and lastly, to mechanically manipulate it in application to the skin.
Pursuant to MPEP §2143(I), the person of ordinary skill in the art would have been motivated to modify the teachings of Schnittger to include the Calendula/rooibos extracts of Monibi understanding that such a combination would have yielded the predictable result of a product that is useful in topically treating several skin conditions common to both disclosures. Owing to their respective teachings of producing the compositions as powders, the ordinarily skilled artisan would have further understood that such a cosmetic would need to be contained before being used (e.g., sold commercially in a packet). Modifying the teachings of Schnittger and Monibi to contain such a composition within an individual, sealed packet would have been well within the purview of the skilled artisan to accomplish. Nakamura’s disclosure that the packet is water-soluble in order to release the cosmetic for topical application would thus render the instantly claimed invention prima facie obvious since such applications would have been known to the skilled artisan in advance of the effective filing date.
Therefore, the 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 claimed invention, and absent a clear showing of evidence to the contrary.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. 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 or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
