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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/30/2026, has been entered.
Status of the Claims
Claims 1-19 are pending.
Applicants’ arguments, filed on 03/30/2026, have been fully considered. Rejections and/or objections not reiterated from previous Office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Applicants’ amendments filed on 03/30/2026, have been entered into the record. Applicants have amended claims 1, 6-7, 9-10, 12-13, 15-17 and 19. Therefore, claims 1-19 are subject of the Office action below.
Maintained Rejections
Claim Rejections - 35 USC § 112
Maintained/New Grounds of Rejection Necessitated by Applicants’ Amendments
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 1-19 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 2-5 depend from claim 1 and are therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth below. Claims 3-4 depend from claim 2 and are therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth below. Claims 7-11 depend from claim 6 and are therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth below. Claims 13-18 depend from claim 12 and are therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth below.
As per MPEP 2173.02, “[d]uring prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc).”
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
Claim 1 recites:
“wherein the cosmetic composition has a paste texture which is sufficiently thick to not run or slip off the skin when applied prior to rinsing; not slimy; and smooth without granulation or graininess”; and
“wherein the composition is a 3-in-1 paste formula base for acne-prone skin as a skin cleanser, as a spot treatment, and as a mask”.
However, a person skilled in the art would not be reasonably apprised of the meets and bounds of the composition that the Applicants are claiming. This is because, it is not clear from either the specification or the common teachings in the art how this limitation further limits the claim. For example, it is not clear if this limitation is limiting to a certain:
i) rhamnolipids, sophorolipids, glucolipids, trehalolipids, cellobiose lipids and mixtures thereof;
ii) salicylic acid or derivative thereof;
iii) polysaccharide derived from β-linked D-glucosamine and N-acetyl-D-glucosamine;
iv) clay;
v) solvents;
vi) surfactants; or
vii) an unnamed excipient.
The specification does not teach or provide a nexus between the functional result that Applicants claim to achieve by the claimed composition with any particular component of the composition or the manner in which it is made and/or administered. There is no description as to the pharmaceutical approach that makes this result possible (i.e., what cause, for example “wherein the cosmetic composition has …”), nor does Applicants teach any excipients or chemical approaches to avoid. Furthermore, it is unclear to one skilled in the art as to, for example:
1) what composition of claim 1, would not exhibit the function recited in claim 1; and
2) what composition of claim 1, would exhibit the function recited in claim 1.
Thus, a person of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claims. For the purpose of examination, any composition within the limitation of claim 1, is included in the interpretation of:
“wherein the cosmetic composition has a paste texture which is sufficiently thick to not run or slip off the skin when applied prior to rinsing; not slimy; and smooth without granulation or graininess”; and
“wherein the composition is a 3-in-1 paste formula base for acne-prone skin as a skin cleanser, as a spot treatment, and as a mask”.
It is recommended that Applicants amend claim 1 to recite specific composition(s) that perform(s) the recited functions of in order to overcome the rejection. Appropriate correction is required.
Claim 4 recites “the composition is water miscible and the cosmetic composition glides on when applied with shear stress, with low to high foaming and which dries clear”, and is therefore, also rejected as in claim 1 above. Appropriate correction is required.
Claim 6 further recites the limitation “wherein the composition has a wasabi-like paste texture which is sufficiently thick to not run or slip off the skin when applied prior to rinsing; not slimy; and smooth without granulation or graininess”, and is therefore, also rejected as in claim 1 above. Appropriate correction is required.
Claim 12 recites “wherein the composition has a wasabi-like paste texture which is sufficiently thick to not run or slip off the skin when applied prior to rinsing; not slimy; and smooth without granulation or graininess, and wherein the composition is a 3-in-1 paste formula base for acne-prone skin as a skin cleanser, as a spot treatment, and as a mask”, and is therefore, also rejected as in claim 1 above. Appropriate correction is required.
Claim 19 recites “wherein the composition has a paste texture sufficiently thick to not run or slip off the skin when applied prior to rinsing, the cosmetic composition is not slimy, the cosmetic composition is smooth without granulation or graininess, the cosmetic composition is water miscible and glides on when applied with shear stress, with low to high foaming, and dries clear, and wherein the composition is a 3-in-1 paste formula base for acne-prone skin as a skin cleanser, as a spot treatment, and as a mask”, and is therefore, also rejected as in claim 1 above. Appropriate correction is required.
Claim 1 is directed to a product (a cosmetic composition), but, claim 1 also recites “when applied prior to rinsing”, which appears to indicate a process of using the cosmetic composition. It is unclear to one skilled in the art as to whether the phrase “when applied prior to rinsing”, is referring to a process step, because claim 1 recites a product. A person skilled in the art cannot reasonably determine whether claim 1 is a composition or a process claim. This is indefinite because the claim recites both a product (a cosmetic composition) and a process of using the product (“when applied prior to rinsing”). Please see MPEP § 2713.05(p)(II). Accordingly, for the purpose of examination, claim 1 is being interpreted as a cosmetic composition. Appropriate correction is required.
Each of claims 4 and 19 recites “when applied with shear stress, with low to high foaming, and dries clear”, and are therefore, also rejected as in claim 1 above. Appropriate correction is required.
Each of claims 6 and 12 recites “when applied prior to rinsing”, and are therefore, also rejected as in claim 1 above. Appropriate correction is required.
This lack of clarity makes it impossible to ascertain with reasonable precision when that claim is infringed and when it is not. Lacking such clarity, the skilled artisan would not be reasonably apprised of the metes and bounds of the subject matter for which Applicants seek patent protection. Rather, a subjective interpretation of the claimed language would be required. However, as such is deemed inconsistent with the tenor and express language of 35 U.S.C. § 112, second paragraph, the claims are deemed properly rejected.
Response to Applicants’ Arguments/Remarks
Applicants raised several issues (see pages 9-10 of Remarks), alleging that the rejection is improper on the grounds that:
1) the recited functional limitation of, for example, “sufficiently thick to not run off the skin”, is a physical property of a composition of the claimed invention that can be measured by one skilled in the art, in order to determine which composition exhibits the recited functional limitation and which composition does not exhibit the recited functional limitation (see page 9-10 of Remarks).
Response
Applicants’ arguments have been fully considered but they are not found to be persuasive. This is because the lack of clarity regarding, for example:
a) what composition of claim 1, would not exhibit the function recited in claim 1; and
b) what composition of claim 1, would exhibit the function recited in claim 1,
makes it impossible to ascertain with reasonable precision when that claim is infringed and when it is not. Lacking such clarity, the skilled artisan would not be reasonably apprised of the metes and bounds of the subject matter for which Applicants seek patent protection. Rather, a subjective interpretation of the claimed language would be required. However, as such is deemed inconsistent with the tenor and express language of 35 U.S.C. § 112, second paragraph, the claims are deemed properly rejected. Appropriate correction is required.
2) the recitation of a process step of, for example, “when applied prior to rinsing”, in claim 1, would not be understood by a person skilled in the art as introducing process limitation into the composition (see page 10 of Remarks).
Response
Applicants’ arguments have been fully considered but they are not found to be persuasive, because a single claim which claims both a product and a process of using the product, is indefinite under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph (see MPEP § 2173.05(p)(II)).
For the reasons above, and those made of record in the previous Office action, the rejections are maintained.
Claim Rejections - 35 USC § 103-Maintained
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.
The rejection of claims 1-19 under 35 U.S.C. 103 as being unpatentable over Tan of record (WO2022162620A2) in view of:
1) Hiroaki of record (FR3114504A1, STIC Translation);
2) Oblong of record (U.S. patent No. 5,939,082); and
3) Otsuki of record (WO2022226209A1),
is maintained for the reasons of record set forth in the previous Office action, of which said reasons are herein, reiterated.
By way of a background, Applicants (see, e.g., ¶s 0002, 0008 and 0010 of the specification), disclose their invention as a skin care composition comprising at least one glycolipid and at least one salicylic acid derivative or salicylic acid, that can be (see, e.g., ¶s 0008 and 0039 of the specification): i) applied to a keratinous tissue; and ii) used for treating skin acne.
Under the broadest reasonable interpretation (BRI), consistent with the specification, Applicants’ invention is being interpreted as a cosmetic composition comprising:
i) about 2% to about 4% of at least one glycolipid selected from the group consisting of rhamnolipids, sophorolipids, glucolipids, trehalolipids, cellobiose lipids and mixtures thereof;
ii) about 1% to about 3% of salicylic acid or a derivative thereof;
iii) about 0.01% to about 0.2% of at least one polysaccharide derived from β-linked D-glucosamine and N-acetyl-D-glucosamine;
iv) about 13% to about 17% of at least one clay;
v) about 10% to about 30% of commercially acceptable solvents;
vi) about 10% to about 15% of at least one surfactant;
vii) about 0.8% to about 2% of carrageenan; and
viii) niacinamide as an additional active.
Regarding the Applicants’ invention, Tan (see abstract, ¶s 0003-0008 and 0019), similarly teaches a cosmetic composition that can be: i) applied to a keratinous tissue; and ii) used for treating skin with acne or skin that is prone to acne, wherein the composition comprises at least one beta hydroxy acid and an aqueous carrier comprising at least one cationic polymer.
The at least one beta hydroxy acid is selected from the group consisting of salicylic acid, n-octanoylsalicylic acid, salicylate, sodium salicylate, willow extract, beta hydroxybutanoic acid, tropic acid, and trethocanic acid (see ¶s 0006 and 0008) and can be in an amount ranging from about 0.01% to about 2% (see ¶ 0037).
The at least one cationic polymer includes, but not limited to chitosan (see ¶ 0012), which reads on polysaccharide derived from β-linked D-glucosamine and N-acetyl-D-glucosamine recited in instant claims (see, e.g., ¶ 0017 of the specification). The amount of at least one cationic polymer ranges from about 0.01% to about 10% (see Tan at ¶ 0051).
Tan (see ¶ 0007), states:
“The composition when applied to a keratinous tissue demonstrates deposition and retention of the beta hydroxy acid on the keratinous tissue after rinsing with water in an amount representing about 60% to about 250% as compared with an amount deposited with a composition that lacks the one or more cationic polymers, wherein the deposition and enhanced salicylic acid retention may be demonstrated by measurement of color change resulting from complex formation between the acid and a metal salt, such as FeCl3.” Emphasis added.
In some embodiments, the composition also include:
a) fillers such as kaolin (see ¶s 0090-0091), which reads “at least one clay” recited in instant claims. The amount of kaolin ranges from about 0.001 to about 20% (see Tan at ¶ 0051).
b) water in an amount ranging from about 5% to about 90% (see ¶s 0068-0069) and glycerin in an amount ranging from about 1% to about 10% (see ¶s 0073-0082), which reads on commercially acceptable solvents recited in instant claims.
c) at least one surfactant including, but not limited to sodium cocoyl isethionate (see abstract and ¶ 0064), which reads on at least one surfactant recited in instant claims. The at least one surfactant can be in an amount ranging from about 0.1% to about 20% or more (see ¶ 0065).
d) at least one thickener that can be present in a range from about 0.001-20 wt% (see ¶s 0018, 0091 and 0093).
At the time of the instant invention, one skilled in the art would have readily understood that Tan contemplates a cosmetic composition that can be: i) applied to a keratinous tissue; and ii) used for treating skin acne, wherein the composition comprises:
at least one beta hydroxy acid (e.g., salicylic acid);
at least one cationic polymer (e.g., chitosan);
fillers such as kaolin;
solvents comprising water and glycerin;
at least one surfactant; and
at least one thickener.
Tan differs from the claimed invention only insofar as Tan is not explicit in disclosing:
a) at least one glycolipid in the composition; b) carrageenan; and c) niacinamide as an additional active.
However, the claimed invention would have been obvious over Tan, because at the time of the instant invention, it was known in the art that:
a) a cosmetic composition that can be applied to a keratinous tissue, can comprise at least one glycolipid and salicylic acid or a salicylic derivative thereof;
b) carrageenan can be employed as a suitable thickening agent, in the formulation of a cosmetic skin composition.
c) vitamin B3 and derivatives thereof (e.g., niacinamide), can be employed in the formulation of a cosmetic skin composition.
For example:
a) similar to the Applicants’ invention and Tan (see discussions above), Hiroaki teaches a cosmetic composition that can be applied to a keratinous tissue, wherein the composition comprises: i) at least one glycolipid selected from the group consisting of rhamnolipids, sophorolipids, glucolipids, trehalolipids, cellobiose lipids and mixtures thereof (see abstract, ¶s 006-007, 0016, 0025, 0048 and 0098); and ii) at least one salicylic derivative of formula (I), which reads on the salicylic acid derivative of the claimed invention (see abstract, ¶s 0006, 0008-0009, and 0025), including, but not limited to 5-n-octanoylsalicylic acid (or capryloyl salicylic acid); 5-n-decanoylsalicylic acid; 5-n-dodecanoylsalicylic acid; 5-n-heptyloxysalicylic acid, and the correspond ing salts thereof (see ¶ 0126).
The composition further comprises water (see ¶ 0024) and at least one cosmetically acceptable solvent including, but not limited to glycerin (see ¶s 0145-0146). The inventive composition may also comprise optional ingredients including, but not limited to cationic polymers, surfactants, vitamins and thickeners (see ¶ 0162).
b) Otsuki discloses carrageenan among the examples of suitable thickening agents that can be present in a range of up to 5 wt% (see ¶ 0026) that can be employed in the formulation of skin care composition for treating or reducing skin conditions such as acne (see abstract, ¶s 0036-0037 and 0148). An embodiment of the composition comprises beta hydroxy acid such as salicylic acid present in an amount up to about 20 wt% (see ¶s 0007-0008).
c) Oblong discloses that a vitamin B3 compound, particularly niacinamide, can be used in the formulation of a skin care composition for the advantage of strengthening the energy state of cells regulating exfoliation, resulting in normalization of epidermal differentiation and keratinization (see column 4, lines 37-44). The vitamin B3 compound can be present in a range from about 0.01-50 wt%, more preferably from about 0.1-10 wt%, even more preferably from about 0.5-10 wt%, and still more preferably from about 1-5 wt%, most preferably from about 2-5 wt% (see column 4, lines 45-64).
The composition may also comprise: i) salicylic acid for increasing skin texture, and in an amount ranging from 0.1-10 wt% (see column 26, lines 9-25); ii) a thickening agent known in the art and in amount ranging from about 0.1-2 wt% (see column 10, line 53, column 18, lines 15-22, column 19, line 46); and ii) water (see column 17, line 39) and glycerin in amount ranging from 0.001-20 wt% (see column 17, lines 62-65).
Accordingly, at the time of the instant invention, a person skilled in the art would have envisaged a cosmetic composition comprising:
i) at least one glycolipid (e.g., rhamnolipids);
ii) at least one beta hydroxy acid (e.g., salicylic acid); b
iii) at least one cationic polymer (e.g., chitosan);
iv) fillers such as kaolin;
v) solvents comprising water and glycerin;
vi) at least one surfactant (e.g., sodium cocoyl isethionate);
vii) at least one thickener (e.g., carrageenan); and
viii) a vitamin B3 compound (e.g., niacinamide),
in the Tan, Hiroaki, Oblong and Otsuki disclosures.
One skilled in the art would have considered including niacinamide of Oblong in the composition for the beneficial effect of strengthening the energy state of cells regulating exfoliation, resulting in normalization of epidermal differentiation and keratinization (see discussions above).
A person skilled in the art would have had a reasonable expectation that the application of the composition to an acne skin or skin that is prone to acne, would treat the skin.
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
Regarding claims 1, 3, 6-7, 9-10 and 12-19, the claimed range of, for example:
i) about 2% to about 4% of at least one glycolipid;
ii) about 1% to about 3% of salicylic acid or a derivative thereof;
iii) about 0.01% to about 0.2% of at least cationic polymer;
iv) about 13% to about 17% of at least one clay;
v) about 10% to about 30% of commercially acceptable solvents;
vi) about 10% to about 15% of at least one surfactant;
vii) about 0.8% to about 2% of carrageenan;
viii) about 2 wt% for the niacinamide; and
ix) about 3.5-6.5 for the composition pH,
are result effective variables (see discussions above), that would have been routinely determined and optimized in the pharmaceutical art. For example:
1) Tan discloses that: i) kaolin can be present in a range from about 0.001-20 wt% (see ¶s 0091 and 0093); ii) glycerin can be present in a range from about 0.5-25 wt% (see ¶s 0076-0077); iii) at least one surfactant can be present in a range from about 0.1-20 wt% (see ¶s 0064-0065); iv) composition pH can be in the from about 3 to about 7 (see ¶ 0009); and v) the beta hydroxy acid can be present in a range of about 0.1-2 wt%.
2) Hiroaki discloses that: i) the at least one glycolipid can be present in a range of from 0.1-10 wt% (see ¶ 0019); ii) salicylic acid or at least one derivative thereof, can be present in a range from 0.01-5 wt% (see ¶ 0019); and glycerin can present in a range from 1-25 wt% (see ¶s 0146-0147).
3) Oblong discloses that vitamin B3 compound (e.g., niacinamide) can be present in a range from about 0.01-50 wt%, more preferably from about 0.1-10 wt%, even more preferably from about 0.5-10 wt%, and still more preferably from about 1-5 wt%, most preferably from about 2-5 wt% (see discussions above).
4) Otsuki discloses that carrageenan can be present in an amount of up to 5 wt% (see discussions above).
A prima facie case of obviousness exists in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (see MPEP § 2144.05). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP § 2144.05). As recognized by MPEP § 2144.05.
In the instant case, because the claimed ranges recited in claims 1, 3, 6-7, 9-10 and 12-19, overlaps or lies inside ranges disclosed by the prior art (see discussions above), a prima facie case of obviousness exists.
Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality (emphasis added) has been demonstrated in the specification with regard to the claimed ranges recited in claims 1, 3, 6-7, 9-10 and 12-19.
Furthermore, each of the functional limitations recited in the instant claims, is a property of a composition of the instant claims. Since Tan, Hiroaki, Oblong and Otsuki combine to disclose a composition of the instant claims (see discussions above), a composition of Tan, Hiroaki, Oblong and Otsuki, must necessarily exhibit the same properties of recited in the instant claims.
An inherent characteristic may “be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan.” Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018).
Therefore, claims 1-19, are obvious over Tan, Hiroaki, Oblong and Otsuki.
Response to Applicants’ Arguments/Remarks
Applicants raised several issues (see pages 10-12 of Remarks), alleging that the instant claims are non-obvious over the cited prior art on the grounds that:
1) Applicants merely cite a list of case law citations therein (see pages 10-11 of Remarks).
Response
Applicants’ arguments have been fully considered but they are not found to be persuasive, because the Applicants’ response fails to link the legal concepts to the facts of the application under examination.
2) Applicants have amended claims 1, 6, 12 and 19 to recite cosmetic compositions comprising, for example, from about 0.8% to about 2% of carrageenan and that the cosmetic composition has “a paste texture which is sufficiently thick to not run or slip off the skin when applied prior to rinsing, not slimy, and smooth without granulation or graininess” (see page 11 of Remarks).
Response
Applicants’ arguments have been fully considered but they are not found to be persuasive. This is because the limitation of from about 0.8% to about 2% of carrageenan in a cosmetic composition have been addressed in the previous Office action and reiterated in the discussions above. The Examiner therefore, appliers the same response hereto.
Furthermore, the recited “a paste texture which is sufficiently thick to not run or slip off the skin when applied prior to rinsing, not slimy, and smooth without granulation or graininess”, is a property of a composition of the instant claims. Since Tan, Hiroaki, Oblong and Otsuki combine to disclose a composition of the instant claims (see discussions above), a composition of Tan, Hiroaki, Oblong and Otsuki, must necessarily exhibit the same properties of recited in the instant claims.
An inherent characteristic may “be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan.” Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018).
3) Tan discloses use of carrageenan as a cationic polymer in the same list as chitosan of instant claims and in amount of 0.1% to 0.5% (see page 11 of Remarks).
Response
Although Tan is not explicit in disclosing cationic polymers including but not limited to carrageenan, a chitosan and xanthan gum as thickening agents, at the time of the instant invention, the cationic polymers disclosed in Tan (e.g., carrageenan) were also known to exhibit utility as thickening agents that can be employed in the formulation of skin care composition for treating or reducing skin conditions such as acne. For example, Otsuki (see ¶ 0026), discloses that at least one thickening agent including but not limited to carrageenan, a polysaccharide polymer (which encompasses chitosan of instant claims) and xanthan gum, can be present in an amount of up to 5% and can be employed in the formulation of skin care composition for treating or reducing skin conditions such as acne (see abstract, ¶s 0036-0037 and 0148). An embodiment of the composition comprises beta hydroxy acid such as salicylic acid present in an amount up to about 20 wt% (see ¶s 0007-0008).
4) Applicants have surprisingly and unexpectedly discovered that a cosmetic composition within the composition limitations of the instant claims, was found to exhibit wasabi-like texture and have the requisite characteristics to be a 3-in-1 paste formula base for acne-prone skin as a skin cleanser as a spot treatment and as a mask. Applicants cite: i) ¶ 0211 of the specification; and ii) the Pang declaration (filed on 03/30/2026), in support of the Applicants allegation (see pages 11-12 of Remarks).
Response
Regarding the advantageous results alleged by the Applicants for rebutting the obviousness of claimed invention, please note that advantageous results alone are not sufficient for overcoming an obviousness. The results must be unexpected. For the establishment of unexpected results, a few notable principles are well settled. It is Applicants’ burden to explain any proffered data and establish how any results therein should be taken to be unexpected and significant. See MPEP 716.02 (b). The claims must be commensurate in the scope with any evidence of unexpected results (emphasis added). See MPEP 716.02 (d). Further, A DECLARATION UNDER 37 CFR 1.132 must compare the claimed subject matter with the closest prior art in order to be effective to rebut a prima facie case of obviousness. See, MPEP 716.02 (e).
In instant case, the alleged advantageous results are not commensurate in the scope with the instant claims, because:
4a) a review of the instant specification (including ¶ 0211 of the specification cited by the Applicants in support of the Applicants allegation), fails to reveal any composition comprising components within the composition limitation of the instant claims and/or a composition comprising any other rheology agent(s) in place of carrageenan.
4b) ¶s 7-9 of the Pang declaration appears to be a reiteration of Applicants’ allegations citing ¶ 0211 of the specification (see discussions above), that a cosmetic composition within the composition limitations of the instant claims, was found to exhibit wasabi-like texture and have the requisite characteristics to be a 3-in-1 paste formula base for acne-prone skin as a skin cleanser as a spot treatment and as a mask. However, the declarant failed to provide any evidence of composition comprising components within the composition limitation of the instant claims and/or a composition comprising any other rheology agent(s) in place of carrageenan. There is nothing on the table recited on ¶ 7 of the Pang declaration which reveal any composition comprising components within the composition limitation of the instant claims and/or a composition comprising any other rheology agent(s) in place of carrageenan.
4c) ¶s 10-14 of the Pang declaration state that each of a composition having glycerin in an amount: i) below the claimed range (Comp 9); and ii) above the claimed range (Comp 8), was allegedly found to have inferior quality, when compared to a composition comprising components within the composition limitations of the instant claims. However, one skilled in the art cannot make any meaningful interpretation of the alleged results, because the declarant has not provided any factually supported objective evidence of:
i) a composition comprising components within the composition limitation of the instant claims; and/or
ii) a composition comprising components within the composition limitation of the instant claims, having glycerin in an amount below the claimed range and/or above the claimed range.
Furthermore, at the time of the instant invention, carrageenan was known to exhibit good adhesiveness on the skin. For example, Valenta et al of record (J. Controlled Release, 2004, cited in response to the Applicants’ and declarant’s allegations), discloses that Carrageenan is frequently used as food additive and has very interesting properties like good adhesiveness on skin which can be a benefit for topical application (see abstract). Therefore, it would not have been a surprising and unexpected observation that a skin care composition comprising carrageenan was found to exhibit good adhesiveness on skin.
For the reasons above, and those made of record in the previous Office action, the rejections are maintained.
Non-Statutory Obviousness-Type Double Patenting-Maintained
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 1-19 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Application Nos: i) 18/901,492; ii) 18/591,178; and iii) 18/591,930, is maintained for the reasons of record set forth in the previous Office action.
Response to Applicants’ Arguments/Remarks
Applicants have not properly addressed the specific grounds of rejections as discussed in the previous Office action setting. Applicants defer further discussion of the provisional rejections until such time as the present claims are determined to be otherwise allowable and any of the provisional rejections may ripen into non-provisional rejections (see page 12 of Remarks).
Response
Applicants’ comments are acknowledged. However, the rejections will be maintained until a terminal disclaimer is filed or the claims are amended to obviate the rejections.
Conclusion
No claim is allowable.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, 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.
/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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