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 .
Status of the Claims
Claim 5 was cancelled in a previous communication. Claim 3 has been cancelled.
Claims 1-2, 4 and 6 are pending and currently under examination.
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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US20110250160A1, Published 10/13/2011) in view Thompson (US20130230475A1, Published 09/05/2013).
Applicant’s Invention
Applicant’s claims are drawn to a water in oil type emulsion cosmetic comprising: (A) cetyl PEG/PPG 10-1 dimethicone; (B) silicone wax; (C) polyethylene glycol; and (D) a polar oil, wherein: the molecular weight of the (C) polyethylene glycol is within a range form 6000 to 20000.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Banowski teaches a transparent antiperspirant compositions in the form of a water-in-oil emulsion, which contain a balanced mixture of selected oil components and emulsifiers in order to improve the antiperspirant effect (abstract). Banowski also teaches, particularly preferred silicone-based water-in-oil emulsifiers are selected from Cetyl PEG/PPG-10/1 Dimethicone (paragraph [0108]). Banowski further teaches preferred oil components that represent symmetrical, asymmetrical, or cyclic esters of carbonic acid with linear or branched C6 to C22 alkanols are di-n-hexyl carbonate such as Diethylhexyl Carbonate (i.e., polar oil)(paragraph [0027]).
Regarding claim 2, Banowski teaches further perspiration-inhibiting compositions preferred according to the present invention are characterized in that cetyl PEG/PPG-10/1 Dimethicone is contained in a total quantity from 1 to 4 wt % (paragraph [0110]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Banowski does not teach silicone wax and polyethylene glycol. Banowski also does not teach wherein the molecular weight of the (C) polyethylene glycol is within a range from 6000 to 2000, and wherein an amount of the (C) polyethylene glycol is within a range of 0.5 to 5% by mass to the total amount of the cosmetic. However, these deficiencies are cured by Thompson.
In the analogous art of antiperspirant emulsions, Thompson teaches the antiperspirant emulsion product hereinafter referred to as the antiperspirant product, is a water-in-oil emulsion (paragraph [0012]) wherein the oil phase of the antiperspirant product includes at least one structurant and/or gellant (hereinafter referred collectively as structurant) that facilitates the solid consistency of the antiperspirant stick product. Naturally-occurring or synthetic waxy materials or combinations thereof can be used as such structurants. Examples of these waxy materials include those fatty alcohols that are solid at room temperature and hydrocarbon waxes or silicone waxes (paragraph [0013]). Thompson also teaches the present inventor discovered that in a water/oil emulsion antiperspirant formulation, tackiness imparted to a user is unexpectedly reduced or eliminated when a plurality of polyalkylene glycols are combined at a specific ratio, with each polyalkylene glycol having a molecular weight that falls in a predetermined range. Specific examples of suitable polyalkylene glycols are polyethylene glycol (paragraph [0028]). Thompson further teaches exemplary water-in-oil emulsion antiperspirant formulations include a plurality of polyalkylene glycols (i.e., polyethylene glycol) at a combined concentration ranging between about 1 wt. % and about 12 wt. % of the total antiperspirant product (paragraph [0027]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the time of filing to have silicone wax in Banowski’s antiperspirant composition. The artisan of ordinary skill would have been motivated to do so because Thompson teaches antiperspirant product includes at least one structurant and/or gellant that facilitates the solid consistency of the antiperspirant stick product. Naturally-occurring or synthetic waxy materials or combinations thereof can be used as such structurants. Examples of these waxy materials include those fatty alcohols that are solid at room temperature and hydrocarbon waxes or silicone waxes (paragraph [0013]. The skilled artisan would have had a reasonable expectation of success because Banowski teaches a transparent antiperspirant compositions in the form of a water-in-oil emulsion and Thompson teaches the antiperspirant emulsion product hereinafter referred to as the antiperspirant product, is a water-in-oil emulsion (paragraph [0012]), therefore silicone waxes would be suitable as a structurant in Banowski’s antiperspirant composition.
It would have been prima facie obvious to one of ordinary skill in the art before the time of filing to have polyethylene glycol in Banowski’s antiperspirant composition. The artisan of ordinary skill would have been motivated to do so because Thompson teaches tackiness imparted to a user is unexpectedly reduced or eliminated when a plurality of polyalkylene glycols are combined at a specific ratio, with each polyalkylene glycol having a molecular weight that falls in a predetermined range. Specific examples of suitable polyalkylene glycols are polyethylene glycol (paragraph [0028]). The skilled artisan would have had a reasonable expectation of success because Banowski teaches a transparent antiperspirant compositions in the form of a water-in-oil emulsion and Thompson teaches the antiperspirant emulsion product hereinafter referred to as the antiperspirant product, is a water-in-oil emulsion (paragraph [0012]) as well.
With regards to the molecular weight of polyethylene glycol, Thompson teaches the present inventor discovered that in a water/oil emulsion antiperspirant formulation, tackiness imparted to a user is unexpectedly reduced or eliminated when a plurality of polyalkylene glycols are combined at a specific ratio, with each polyalkylene glycol having a molecular weight that falls in a predetermined range. Specific examples of suitable polyalkylene glycols are polyethylene glycol (paragraph [0028]). Therefore it would have been prima facie obvious to one of ordinary skill in the art to select a polyethylene glycol with a specific molecular weight for Banowski’s antiperspirant compositions because Thompson teaches that having the polyethylene glycol having a molecular weight that falls in a range helps in reducing or eliminating tackiness.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US20110250160A1, Published 10/13/2011) in view Thompson (US20130230475A1, Published 09/05/2013) further in view of Panitch (US5635165A, Published 06/03/1997).
Applicant’s Invention
Banowski and Thompson render obvious all the limitations of claim 1. Applicants claim 4 further adds the limitation wherein the water in oil type emulsion cosmetic according to claim 1, further comprises € one of cellulose gum and a polysaccharide thickener.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Banowski teaches a transparent antiperspirant compositions in the form of a water-in-oil emulsion, which contain a balanced mixture of selected oil components and emulsifiers in order to improve the antiperspirant effect (abstract).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Banowski and Thompson do not teach one of cellulose gum and a polysaccharide thickener. However this deficiency is cured by Panitch.
In the analogous art of antiperspirants compositions, Panitch teaches gel antiperspirant compositions comprising an antiperspirant compound, a gelling agent selected from the group consisting of a sterol and a starch hydrolyzate ester (abstract). Panitch also teaches water is present in a sufficient amount such that the feel of the composition is not adversely affected, and the composition does not leave a tacky feel on the skin. The addition of water to the composition leads to the formation of a water-in-oil microemulsion, which helps decrease the tacky skin feeling attributed to the water (column 11, lines 49-55). Panitch further teaches the gelling agent is selected from the group consisting of a starch hydrolyzate ester of a fatty carboxylic acid having about 8 to about 22 carbon atoms (i.e., a C8 -C22 carboxylic acid), a sterol, and mixtures thereof . The gelling agent acts as a viscosity modifier or thickener to provide an efficacious and consumer-acceptable firmness, and does not contribute to whitening of skin or clothing(column 7, lines 4-10). Panitch also teaches that the antiperspirant composition of claim 1 wherein the starch hydrolyzate is selected from the group consisting of a polysaccharide (claim 15), wherein the starch hydrolyzate is selected from the group consisting of cellulose, chitin (i.e., polysaccharide thickener) (claim 16).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the time of filing to have one of cellulose gum and a polysaccharide thickener in Banowski’s antiperspirant composition. The artisan of ordinary skill would have been motivated to do so because Panitch teaches the gelling agent is selected from the group consisting of a starch hydrolyzate ester of a fatty carboxylic acid having about 8 to about 22 carbon atoms (i.e., a C8 -C22 carboxylic acid), a sterol, and mixtures thereof. The gelling agent acts as a viscosity modifier or thickener to provide an efficacious and consumer-acceptable firmness, and does not contribute to whitening of skin or clothing (column 7, lines 4-10). Panitch further teaches the antiperspirant composition of claim 1 wherein the starch hydrolyzate is selected from the group consisting of a polysaccharide (claim 15), wherein the starch hydrolyzate is selected from the group consisting of cellulose, chitin (i.e., polysaccharide thickener) (claim 16). The skilled artisan would have had a reasonable expectation of success because Banowski teaches a transparent antiperspirant compositions in the form of a water-in-oil emulsion and Panitch teaches water is present in a sufficient amount such that the feel of the composition is not adversely affected, and the composition does not leave a tacky feel on the skin and that the addition of water to the composition leads to the formation of a water-in-oil microemulsion, which helps decrease the tacky skin feeling attributed to the water (column 11, lines 49-55).
Response to Arguments
Applicant's arguments filed 10/06/2025 have been fully considered but they are not persuasive.
On pages 4-5 of Applicants remarks, Applicants argue that the present application demonstrates the advantageous effects in the Examples, wherein Comparative Example 2 (which does not contain polyethylene glycol) exhibits a viscosity reduction ratio of 0.889, which is more than 10% lower than in Examples 1-4, thus, the adoption of high molecular weight PEG is not a matter of mere design choice but rather provides an unexpected and remarkable effect in providing emulsion stability. Applicants further argue that Thompson discloses low molecular weight polyethylene glycol rather than the claimed high molecular weight polyethylene glycol.
These arguments are not persuasive. Insomuch as this may be an assertion of unexpected results, please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims. The Examiner points out that Applicants have not shown a side-by-side comparison to the closest prior art, wherein Thompson discloses tackiness imparted to a user is unexpectedly reduced or eliminated when a plurality of polyalkylene glycols are combined at a specific ratio, with each polyalkylene glycol having a molecular weight that falls in a predetermined range. Specific examples of suitable polyalkylene glycols are polyethylene glycol (paragraph [0028]). Therefore it would have been prima facie obvious to one of ordinary skill in the art to select a polyethylene glycol with a specific molecular weight for Banowski’s antiperspirant compositions because Thompson teaches that having the polyethylene glycol having a molecular weight that falls in a range helps in reducing or eliminating tackiness. Applicants argument of unexpected results rely on a comparison between the presence or absence of polyethylene glycol, however, Applicants have not shown criticality of the polyethylene glycol having a molecular weight of 6,000 to 20,000. The distinction between the instant claims and Thompson is the molecular weight of polyethylene glycol, therefore, Applicants have not met the burden to show how their instantly claimed molecular weight ranges are critical by comparing compositions with polyethylene glycol with molecular weights within the claimed range and outside the claimed range and are tied to any allegedly unexpected property. The Examiner further points out that the data is not commensurate in scope with the claims because the instant claims embrace a molecular range of 6,000 to 20,000 of polyethylene glycol, whereas the data in the examples use polyethylene glycol with a molecular weight of 6,000 only. For these reasons, no conclusions as to the unexpectedness of the data can be drawn.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614