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 .
Response to Arguments
Applicant's arguments and the Declaration, both filed 5/19/2026, have been fully considered (and addressed together below) but they are not persuasive.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
The 102 rejections of claims 1, 3-4 and 8 are withdrawn in view of amendment.
The 103 rejection of claim 4 is withdrawn in view of amendment.
The following rejections and/or objections are either reiterated or newly applied.
Claims 20 and 22 and claims 21 and 23 are objected to for being substantial duplicates.
New 112 rejections of claims 3, 18-19, and 29-31 are presented as necessitated by amendment.
New 103 rejections of claims 1, 3-4, 8, and 18-33 are presented as necessitated by amendment.
103 Rejection over Banowksi
Applicant argues that Banowksi never discloses or suggests a method for controlling the metabolism of a branched fatty acid in a microorganism wherein a viable bacterial count is substantially maintained before and after contact with the described composition. This is not persuasive because it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings. MPEP 2144. Banowski teaches the application of an oil-in-water emulsion deodorant comprising the instantly claimed C12 and C13 linear aliphatic alcohols to the skin, thus the prior art teaches the performance of the claimed steps with the claimed compounds.
Applicant also points to alleged unexpected results demonstrated with compounds of formula (1) wherein R is a linear C12 or C13 hydrocarbon group, compared to C16 cetyl alcohol taught by Banowski. This is not found persuasive. The proffered data is not commensurate in scope with the invention as claimed, as it demonstrates results with only Moraxella osloensis whereas the sole independent claim is much broader and directed to all microorganisms. Furthermore, the tests were performed using a fabric substrate, whereas the claims also recite the application of the claimed method to solid surfaces such as ceramic and metal. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP 716.02). Here, Applicant points to the metabolite suppression rate provided by C16 alcohol as evidence of unexpected results, but does not provide comparative data with any other compounds taught by Banowski, which include linear saturated alcohols having 12 to 30 carbon atoms [0064; claim 4]. It is therefore unclear if the results provided by dodecanol and tridecanol are truly surprising. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
New Claim Objections
Applicant is advised that should claim 20 be found allowable, claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Similarly, should claim 21 be found allowable, claim 23 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
New Claim Rejections - 35 USC § 112(b)
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 3, 18-19, and 29-31 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.
Regarding claims 3 and 18-19, these claims recite limitations referring to viable bacterial counts before and after contact with compounds of formula (1). The bacterial count for these claims is stated in unitless numbers and renders the claims indefinite. The instant specification discusses how the bacterial count may be expressed as a difference in logarithmic values (see, e.g., page 31 of the instant Specification), however the claims do not indicate these values as such. Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). For purposes of compact prosecution, the values recited in claims 3 and 18-19 will be interpreted as values obtained from subtracting the logarithm value of the viable bacterial count of the microorganism when a compound of formula (1) and the microorganism are brought into contact (i.e. logarithm value 2) from the logarithm value of the viable bacterial count of the microorganism when a compound of formula (1) and the microorganism are not brought into contact (i.e. logarithm value 1) [Instant Specification pg. 31].
Regarding claims 29-31, these claims recite the limitation “the solid”. There is insufficient antecedent basis for this limitation in these claims. For purposes of compact prosecution, claims 29-31 will be interpreted as depending from claim 28 instead of claim 27.
New 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.
Claims 1, 3-4, 18-28 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2006/0029624 A1, published 2/9/2006), as evidenced by Wang et al. (2020, previously cited in Office Action dated 2/20/2026).
Regarding claims 1, 3-4 and 18-25, Banowski teaches a deodorant/antiperspirant stick in the form of an oil-in-water emulsion comprising linear saturated C12 to C30 alkanols [claim 4] (instant claims 1 and 20-23), and a method wherein the deodorant is applied to the skin, particularly to that of the axillae [0137]. As evidenced by Wang et al., branched chain fatty acids are known to be present in human skin lipids [Wang et al., pg. 1; Abstract] (instant claim 4), Banowski further teaches that microbes present on the skin include staphylococci, micrococci, and corynebacteria [0098; claim 10] (instant claim 24), thus the application of deodorant to skin serves to bring the instantly claimed compounds into contact with these microorganisms and with branched chain fatty acids (instant claim 25). Banowski does not explicitly disclose that their method controls branched fatty acid metabolism in microorganisms. The prior art teaches the claimed method with the claimed compounds, and treatment of the same patient population with the same compounds would result in the expected property of controlling the metabolism of branched fatty acids in microorganisms absence evidence to the contrary. Banowski also does not explicitly address the limitation wherein a viable bacterial count of the microorganism is substantially maintained before and after contact with the instantly claimed compounds (instant claims 1, 3, and 18-19), however, as discussed, the prior art teaches the claimed method steps with the claimed composition. It is noted that a given viable bacterial count of the microorganism following treatment with the instantly claimed compounds is an expected property of the method. Thus, a property that results as a consequence of performing the claimed method to the same patient population would be expected absence evidence to the contrary.
Regarding claims 26-28 and 31, the deodorant of Banowski is an oil-in-water emulsion that comprises water [claim 1] (instant claim 26). Thus, the application of the deodorant to human skin (instant claims 28 and 31) will cause the instantly claimed compounds, water, and microorganism to be in an intermixed state (instant claim 27).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2006/0029624 A1, published 2/9/2006), evidenced by Wang et al. (2020, previously cited in Office Action dated 2/20/2026), as applied to claim 1 above, and further evidenced by Goto et al. (2016, previously cited in Office Action dated 2/20/2026) and Alkhatib et al. (2017).
Regarding claim 8, claim 8 depends from claim 1 (discussed above) and further recites that the metabolism of the branched fatty acid of the microorganism is beta oxidation. Banowski is silent as to the microorganism’s metabolism of the branched fatty acid. However, it is known in the art that bacteria of the genus Moraxella metabolize fatty acids through the beta oxidation pathway as evidenced by Goto et al. [page 1, paragraph 5]. Moraxella is part of the normal skin flora of humans [Alkhatib Introduction].
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2006/0029624 A1, published 2/9/2006), as evidenced by Wang et al. (2020, previously cited in Office Action dated 2/20/2026), as applied to claims 1 and 28 above, and further in view of Kubota et al. (2012), as evidenced by Modo Bath (accessed 7/21/2026).
Regarding claim 29, Banowski does not explicitly address the limitation wherein the instantly claimed method is used to control fatty acid metabolism in microorganisms on a textile product. Kubota teaches that unpleasant odor on laundry (reads on textile) is caused by 4-methyl-3-hexenoic acid (4M3H), which is generated by Moraxella bacteria [Abstract]. 4M3H is a metabolite that results from the metabolism of 14-methylhexanoic acid, a branched chain fatty acid. (See instant Specification at pg. 22, 59). Kubota further teaches that the relationship between microorganisms and malodors in the human environment is analogous to the relationship between microorganisms and human axillary odor [3317]. Since Banowski teaches a deodorant composition and method for reducing body/axillary odor [0137], it would be obvious to modify the teachings of Banowski with that of Kubota and adapt the deodorant of Banowksi for application to other surfaces where it would be desirable to eliminate bad odors, such as laundry and textiles.
Regarding claim 30, Banowski does not explicitly address the limitation wherein the instantly claimed method is used to control fatty acid metabolism in microorganisms on a solid surface wherein the solid is glass, metal, plastic or ceramic. As discussed above in the rejection of claim 29, Kubota teaches that the relationship between microorganisms and malodors in the environment is analogous to the relationship between microorganisms and human axillary odor [3317]. Kubota further teaches that Moraxella, the microorganism known to generate laundry odor, can be found on hard household surfaces such as kitchen sinks, washbasins, kitchen and bathroom drains, and bathroom floors and walls [Table 4]. As evidenced by Modo Bath, ceramic, metal, and glass are commonly used materials for use in bathroom walls/floors, sinks, hardware, and tubs. Since Banowski teaches a deodorant composition and method for reducing body/axillary odor [0137], it would be obvious to modify the teachings of Banowski with that of Kubota and adapt the deodorant of Banowski for use on other surfaces where it is desirable to eliminate bad odors, such as hard household surfaces, which often comprise of materials such as glass, metal, plastic or ceramic.
Claims 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2006/0029624 A1, published 2/9/2006), as evidenced by Wang et al. (2020, previously cited in Office Action dated 2/20/2026), as applied to claim 1 above, and further evidenced by Liu et al. (WO 2018/086797 A1, published 5/17/2018).
Regarding claims 32 and 33, Banowski does not explicitly address the contact time of the claimed compounds with the microorganism. As evidenced by Liu, deodorant/antiperspirant compositions are preferably of the leave-on type, wherein the composition is applied to the desired skin surface and left on for a period of time, e.g. from one minute to 24 hours [pg. 4 line 27]. Since it is known in the art that deodorant compositions are preferably left on the skin instead of immediately rinsed off, it would be obvious to apply the deodorant of Banowski in such a manner, such that the claimed compounds are in contact with the microorganism for an extended period of time as instantly claimed. (As previously discussed, the deodorant of Banowski comprises of water, thus reading on instant claim 33.)
Conclusion
No claims are allowed.
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 AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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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.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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