DETAILED ACTION
Claims 1-20 are pending. Of these, claims 3-7 and 14 are withdrawn as directed to a nonelected invention. Therefore, claims 1-2, 8-13, and 15-20 are under consideration on the merits.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/4/26 has been entered.
Status of the Rejections
The 112(b) rejection is withdrawn in view of the amendment, but a new rejection was necessitated by the amendment.
The 112(d) rejection is withdrawn in view of the amendment.
The 103 rejection is withdrawn in view of the amendment, and replaced with a rejection incorporating the teachings of a new secondary reference.
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 1-2, 8-13, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Claim 1 has been amended to recite that “the liquid fabric softener is capable of transferring said care additive from its surface to human skin,” but it is unclear what “its” is referring to. Is it a surface of the fabric softener or a surface of the multi-use article? Clarification is required. Since dependent claims 2, 8-13, and 15 do not clarify the point of confusion, they are also rejected.
Claim 12 has been amended to recite “a liquid fabric softener,” but base claim 1 also recites a liquid fabric softener. Claim 12 should read “the liquid fabric softener” to make it clear that the liquid fabric softener of claim 12 is the same as the liquid fabric softener of claim 1.
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 1-2, 8-13, and 15-20 are rejected under 35 U.S.C. 103 as unpatentable over Close et al. (US Pat. Pub. 2008/0103460; of record) in view of JP2003105669A as evidenced by the English translation thereof.
As to claims 1-2, 8-13, and 15-20, Close discloses an appliance for delivering a composition to the skin, wherein the appliance may be a sock (the elected species of multi-use article of claims 1 and 15-16)(paragraphs 7 and 74), and wherein the composition comprises a composition comprising a beneficial agent (a “personal care” formulation of claims 9 and 19) such as an anti-irritant such as bisabolol (the elected species of care additive of claims 1, 8, 10, and 18) or a vitamin derivative such as panthenol (paragraphs 128-132), and wherein the beneficial agent may be encapsulated (claim 11)(paragraphs 136-137) and may be applied to the appliance as a dispersion (a “slurry” of claim 1)(paragraph 138). Close discloses a specific embodiment wherein the panthenol beneficial agent is used in the amount of 0.5 wt% (see Example 4), which is within the range of the care additive recited by claim 17.
Regarding claim 2, the sock of Close is not a tissue or wipe, and although Close discloses that the appliance may comprise a nonwoven material (paragraph 97), Close nowhere requires that the article be a non-woven product.
Regarding claims 12 and 20, the care additive may be applied to the surface of the sock by any suitable process such as coating the sock with a liquid such as an aqueous solution comprising the care additive, which will result in impregnation of the surface (paragraphs 138-142). Although Close does not expressly disclose a drying step, the skilled artisan would recognize that the aqueous solution would naturally dry over time. Additionally, the Office notes that claims 12 and 20 are product by process claims such that their patentability is determined by the structure of the product and not by whether the prior art discloses the recited drying step used to make the product. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009).
As to claims 1-2, 8-13, and 15-20, Close does not further expressly disclose that the solution comprising the care additive is in the form of a liquid fabric softener as recited by base claims 1 and 16 such that the care additive is applied to the surface of the article by impregnation with the fabric softener (claim 12) and wherein the liquid fabric softener is capable of transferring the care additive to human skin (claim 1). Nor does Close expressly disclose the amount of the care additive as recited by claims 13 and 16.
JP2003105669A discloses a liquid fabric softener composition comprising a fragrance such as bisabolol, wherein the fabric softener is used to treat clothing (paragraphs 1, 54, 67)
As to claims 1-2, 8-13, and 15-20, it would have been prima obvious to one of ordinary skill in the art at the effective filing date of the present invention to apply the bisabolol additive to the sock by addition of a liquid fabric softener comprising the bisabolol and capable of transferring the bisabolol to human skin, because JP2003105669A expressly teaches that a care additive such as bisabolol may be applied to clothing by incorporating it into a fabric softener and then treating the clothing article with the fabric softener, such that the skilled artisan reasonably would have expected that the bisabolol taught by Close also could be applied to the sock taught therein by application of a fabric softener comprising the bisabolol. Such a modification is merely the combination of known elements according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
It further would have been prima facie obvious to apply the care additive in the form of a slurry, because Close expressly teaches that the formulation comprising the additive may be added in the form of a dispersion, and the skilled artisan would recognize that a slurry is a type of dispersion and therefore have a reasonable expectation of success in adding the care additive to the article of Close in the form of a slurry.
Regarding claims 13 and 17, it further would have been prima facie obvious to select an amount of the bisabolol that is within the claimed range, because the amount of a beneficial care additive is a result effective variable that will influence its therapeutic efficacy, and Close provides a reasonable expectation of success in arriving at the claimed range by disclosing that other beneficial care additives such as panthenol may be used in amounts within the recited range. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Applicant’s Arguments
Applicant argues the claims have been amended such that they cannot be characterized as product by process claims, such that the rejection no longer applies.
In response, the Office notes that claim 12 continues to recite product by process language, as does newly added claim 20. Regarding the remaining claims, the new ground of rejection does not rely on characterizing the claims as product by process claims, but rather relies on JP2003105669A for a motivation to apply a liquid fabric softener comprising the additive to the sock.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
