Baltic Sea Salt Saves the Day for Mary Kay’s Patent
In these days of stress and peril, it is more important than ever to take good care of one’s skin. Ex parte Chadwick (Appeal 2023-002919, Application 16/425,646, PTAB Jan. 8, 2025) involved an attempt by Mary Kay Cosmetics to patent a method of moisturizing skin using an effective combination of (as recited in the main claim) “(a) saccharide isomerate; (b) sodium carrageenan; (c) sea salt from the Baltic Sea; and (d) sodium hyaluronate.” The Examiner rejected the claims as obvious over a combination of nine(!) references, and it was the recitation specifying that the sea salt be “from the Baltic Sea” that got the Examiner‘s rejection reversed at the PTAB, an outcome that is all the more remarkable because the application as filed has no mention of the Baltic Sea at all.
As originally filed, the claims in the Chadwick application more broadly recited just “sea salt.” A bedrock principle in patent law is you can’t add subject matter to an application after it has been filed. In US law such added subject matter is called “new matter,” and its prohibition is noted in 35 USC 132(a).[1] So how did the attorney prosecuting the application get “from the Baltic Sea” into the claims? An example formulation in the application as filed listed as an ingredient, “Sodium carrageenan and sea salts (AESTHIGELTM),” which the application described elsewhere as being available from “Barnet.” After unsuccessfully trying to get broader claim scope, the attorney for Mary Kay amended the claim to specify that the recited sea salt is “from the Baltic Sea.” Accompanying the amendment was a declaration from one of the inventors, a Ph. D. Biochemist for Mary Kay, which included a letter from Barnet Products that stated plainly, “Aesthigel is manufactured in France. The Sea Salt is sourced from the Baltic Sea.”
The Examiner pushed back against this amendment, but eventually dropped his rejection of the amended claims as not supported by the application as filed. All that is required for such support in the U.S. is that the application describe the claimed subject matter with “reasonable clarity.” As MPEP 2163.02 states, “The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement.”[2]
With the amendment accepted (and not an issue before the Board), the Board found that none of the references cited by the Examiner disclosed or suggested use of Baltic Sea salt in a topical composition. One reference made a passing reference to use of “baltic sea water” in regard to a previous study, but that was it. The Examiner did not contend that all sea salts are equivalent substitutes for one another, and indeed the references he applied supported the view that there may be differences between different sources of sea salt. Indeed, the declaration from the Mary Kay biochemist contended that the Baltic Sea salt from the AESTHIGEL additive produced unexpected results for the skin of users.
Details matter when writing a patent application, and getting even seemingly small details in the application as filed can turn out to be critical in obtaining a patent. It is good practice to include a multiplicity of details and possible advantages that may be used to craft fallback positions if the broadest claims are rejected.
[1] “No amendment shall introduce new matter into the disclosure of the invention.” The corresponding prohibition in the PCT system is found in PCT Articles 19(2) and 34(2)(b), both of which state that amendments “shall not go beyond the disclosure in the international application as filed.” In Europe the provision is in EPC Article 123(2): “The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.”
[2] Some other jurisdictions, such as Europe, tend to be stricter about the need for literal (or at least more literal) support for amendments.
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