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
Claims 1-3, 5-14, 17, 18 and 21-23 are pending in a Response along with a Rule 1.132 Declaration of 10/21/2025.
Withdrawn objection/ rejections:
Applicant's Response and Declaration of 10/21/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
New grounds of rejection --- as necessitated by amendment
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3, 5-14, 17-18 and 21-23 remain rejected under 35 USC 103 as being obvious over Schneider et al. (US2016/158404A1, IDS of 08/04/2022, hereinafter Schneider ‘2016) with or without Schneider et al. (US2012/0003173A1, hereinafter Schneider ‘2012), and further in view of Cetti et al. (US2014/0170101A1, IDS of 08/04/2022).
Applicant claims the below claims 1, 17 and 21 filed on 10/21/2025:
Claim 1: A personal care deodorant composition comprising a halo active sulfonamide compound of formula (I) wherein R3 is COOR’ and a carrier, a gelling agent in the form of gel stick, wherein the composition can maintain odor-controlling performance for more than one day;
Claim 17: A method of deodorizing and cleansing skin or hair with a personal care composition comprising a halo active sulfonamide compound of formula (I) wherein R3 is COOR1 in the form of a gel or an aerosol spray, wherein the personal care composition is effective for over 24 hours; and
Claim 21: A personal care deodorant composition comprising a halo active sulfonamide compound of formula (I) wherein R3 is COOR1 and a carrier, a propellant in the form of aerosol spray, wherein the composition can maintain odor-controlling performance for more than one day.
For examination purpose, each of claims 1 and 21 is directed to a “product”, not a “method”. Thus, the limitations of “for body odor” and “the composition can maintain odor-controlling performance for more than one day by neutralizing sulfur-containing odor causing molecules” of instant claims 1 and 21 are mere an intended properties/advantageous effects. It is noted that "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).” MPEP 112.01. Further see MPEP2145(II): Prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the art. That is, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention, In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Thus when the prior art teaches the same composition, the claimed properties would be implicit.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the claimed invention was filed, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).
The level of ordinary skill will often predetermine whether an implicit suggestion exists to modify the prior art. Persons of varying degrees of skill not only possess varying bases of knowledge, they also possess varying levels of imagination and ingenuity in the relevant field, particularly with respect to problem-solving abilities. If the level of skill is low, for example that of a mere technician, then it may be rational to assume that such an artisan would not think to combine references absent explicit direction in a prior art reference. If, however, the level of skill is that of a cosmetic research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, pharmacy, physiology and chemistry— without being told to do so.
Indeed, MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). This is because “The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of filing the claimed invention.” (MPEP 2141.03(1)) and an artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. (MPEP 2141.03 (I)). “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(11)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Schneider ‘2016 teaches articles with odor-controlling composition or deodorant or body odor products that use the odor-controlling composition comprising the sulfonamide compound of the below formula (I) ([0024]) which reads on the claimed personal care deodorant; the composition has odor-controlling activity (=deodorizing activity) by absorbing unpleasant odor from body or bodily fluid including blood, sweat, semen, secretions, menstrual discharge, urine and fecal matter ([0003]) and the bodily fluid may have an unpleasant odor (-malodor) due to odor-causing molecules containing sulfur ([0004]) which suggests that the odor-controlling composition can be used to neutralize the unpleasant smell due to sulfur-containing odor-causing molecules; the composition comprises a solvent for mixing with formula I compound such as water, alcohol or another solvent ([0085], and [0096]) which reads on the claimed carrier water and a halo active aromatic sulfonamide of the below formula (I), e.g., N-chloro-4-carboxybenzenesulfonamide compound (II) which is also referred to BENZ ([0022], [0063] and [0085] and claims 1 and 5 of prior art) which reads on the claimed formula I and species of instant claim 2, and BENZ exhibits a lower chlorine smell and when BENZ is combined with at least one fragrance, there is no detectable chlorine smell for most humans ([0063]); and this prior art suggests the composition is applied to the body in order to control or reduce odor as deodorant ([0024]) which reads on the claimed method of deodorizing skin because skin is the largest organ of the body, or the composition could be used in wipe or pad ([0020]) which would finally apply to the skin; and the odor-controlling composition (=deodorant composition) is applied by pump spraying (Example 1), gel, solid, semi-solid, or liquid ([0096]) (instant claims 1, 17 and 21 (n part) and claims 2, 18 and 23), and the composition further comprises buffering agent such as sodium carbonate, potassium bicarbonate, sodium carbonate, acetate buffers, phosphate buffers, pH blended phosphates, sulfate buffer ([0075] and claims 6-7 of prior art) (instant claims 8-9) and alcohol or fragrance or surfactant (claim 10 of prior art)(instant claims 10, 12 and 18):
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Examples 1-2 require pump spraying the odor-controlling composition to the diaper of individual adults having incontinence problem in which the applied composition is seen as personal care composition to reduce malodor, and the sulfonamide is also useful in many different productions environments, and for example, they can be used in absorbent articles such as diapers, incontinence articles (older children to adults), and pads for various uses such as absorbent pads, feminine pads, pet pads, shoe insoles, nursing pads, sweat pads, underarm wipes, body wipes, wet wipes, moist towelettes, etc. ([0091]) which articles are used for personal care products to reduce e.g., body perspiration odor ([0096]).
Further, Schneider ‘2016 teaches articles with odor-controlling composition and provides the articles with a reduced amount of a halo active aromatic sulfonamide of formula (I), e.g., N-chloro-4-carboxybenzenesulfonamide compound (abstract and [0063]) in a hydrated or non-hydrated form in an amount of 0.1 to about 23% or 0.1 to about 5% of the composition ([0017]) in which the prior art amount is within the instant range of about 0.01 to about 5% (instant claim 1 – the amount of formula I); please note that when alcohol is used as a solvent, it would also act as gelling agent ([0083]); the composition has a pH of 6-14 ([0074] and claim 9 of prior art) which is the same claimed pH and the composition comprises buffering agent in a ratio of sulfonamide to buffering agent being about 50:1 to about 1:1 ([0085]) such as sodium bicarbonate ([0156]) where e.g., when the sulfonamide is used in an amount 1%, the buffering agent would also be used in the same amount to make the ratio of 1:1, in the absence of criticality evidence (instant claim 9 – buffering agent); and the composition comprises surfactant, wetting agent ([0082]), and fragrance in which the wetting agent and fragrance also read on the skin benefit agents in an amount of about 0.005 to about 5% ([0081]) which is within the instant range of about 0.0001 to about 5% (instant claims 13-14); and the composition can be applied to diaper, an adult incontinence article, sanitary napkin, tampon, wound dressing, bandage, underarm wipes or body wipes or wet wipes or feminine or pet pad ([0020] and claim 13 of prior art) to control odor which reads on the claimed personal care product comprising the composition that would finally contact to skin (instant claims 17-18); and the absorbent substrate has the compound and the substrate can be treated by washing ([0021]). Further the prior art teaches urine odor is reduced over 24 hours (Figs. 2A-2C, Fig. 3 and explanation thereof, [0028]-[0029] and the Examples). This prior art teaches sulfonamide reduces odor and this reduced odor remain when measured over a period of at least three days (i.e., 72 hours), at least one week (i.e., 168 hours) or even one month (i.e., 720 hours) ([0090]) which overlaps the instant range of over 24 hours (instant claims, 1, 17 and 21 – intended effective time).
Alternatively, Schneider ‘2012 does not expressly teach contacting the personal care composition to skin for deodorizing skin of instant claim 17. The deficiency is cured by Schneider ‘2012.
Schneider ‘2012 teaches odor-causing molecules in bodily fluids include blood, pus, sweat, semen, secretions, menstrual discharge, urine and fecal matter ([0003]) wherein as evidenced by Schneider ‘2016 at [0004], body fluid may have an unpleasant odor (malodor) due to odor-causing molecules including sulfur, and while the undesirable smell of the odor-causing molecules can be reduced or eliminated, the odor control composition itself may have a strong, pungent chlorine-like smell which is irritating, unacceptable, or unwanted in certain applications ([0003]); the odor control composition can be used in personal care products including deodorant ([0079]); to reduce odor, this prior art provides odor control compositions comprising a haloactive aromatic sulfonamide compound of formula (I) wherein R3 is COOR’ wherein R’ is hydrogen an alkali metal, an alkaline earth metal, substituted C1-C12 alkyl, or unsubstituted C1-C12 alkyl (abstract) such as N-chloro-p-carboxysulfonamide ([0060]), and the haloactive aromatic sulfonamide is used in an amount of about 0.25 to about 1.5% or about 0.5 to about 1.0% of the composition ([0069]); the composition further comprises water and solvent such as lower alcohol including ethanol and isopropanol ([0078] and[0075]); alcohol can be used in an amount of about 0.1 to about 5% ([0076]); the composition comprises buffering agent selected from sodium bicarbonate, potassium bicarbonate, sodium carbonate, potassium carbonate, acetate buffer, phosphate buffer, pH blended phosphates, or sulfate buffer ([0072]) and the buffering agent is used in an amount of about 0.25% to about 5% ([0074]) and the composition has a pH of between 6 and 14 ([0071]); the composition further comprises surfactant ([0077]), and at least one fragrance (abstract, [0078] and claim 1 of prior art) in an amount of 0.05 to 0.10%; the composition further comprises moisturizer ([0079]); and the composition is used in personal care products, particularly those that contact the skin, e.g., deodorants and thus, the composition is applied to the skin such as hand or forearm to reduce odor of skin ([0079] and [0089]-[0090]) in the form of spray, solid, gel or liquid ([0079] and [0089]).
However, Schneider ‘2016 or in view of Schneider ‘2012 does not expressly teach gel stick of instant claim 1; gelling agent of instant claim 1 and its amount of instant claim 5; the amount of carrier of instant claim 3; antiperspirant of instant claims 6-7; the amount of buffering agent of instant claim 9; the amount of surfactant of claim 11; aerosol spray form of claims 17 and 21; aliphatic hydrocarbon carrier of instant claim 21; and propellant and its amount of claims 21-22. The deficiencies are cured by Cetti.
Cetti teaches antiperspirant and deodorant compositions (title) for hair or skin ([0114]) in the form of creams, gels, soft solid sticks, body spray pumps and aerosol, or rinse-off application ([0009], [0059], [0164] and [0183]) (instant claims 1 and 20); the composition contains waxes, fatty acid, oils, sugars ([0045]) which reads on the claimed gelling agent; the compositions comprises a carrier such as water, alcohol, combinations thereof in an amount of about 1 to about 99.5% ([0099]) which overlaps the instant range of about 5 to about 99.9% (instant claim 3 – carrier and its amount), an aluminum chloride, aluminum chlorohydrate, aluminum zirconium complex, hydroxyhalide, etc. as active agents in an amount of about 1 to about 15% ([0116] and [0165]) which overlaps the instant range of about 1 to about 35% of antiperspirant (instant claims 6-7); the composition further comprises gellant (=thickener) such as clays, silicas in an amount of 0.1 to about 8% or about 0.1 to about 3% ([0151] and [0155]) which overlaps the instant range of about 1 to about 35% (instant claims 1 and 5); the concentrate can contain water, silicone, aliphatic hydrocarbon, etc. ([0072]-[0074], [0077], [0130]-[0134], [0137], [0146]-[0150], and [0166]-[0167]) which reads on the claimed carrier, and surfactant (=solubilizer) such as nonionic, cationic, amphoteric, zwitterionic surfactants and mixtures thereof in an amount of about 0.01 to about 5% ([0088] and [0090]) which is within the instant range of about 0.0001 to about 10% of surfactant (instant claims 11 and 18); the aerosol composition can comprises a concentrate, propellant and the propellant includes propane, n-butane, isobutene, etc. ([0101]) which reads on the claimed aerosol spray containing aliphatic hydrocarbon (instant claim 17- aerosol containing aliphatic hydrocarbon) in the amount of in an amount of 15-70% ([0101]) which overlaps the instant range of about 30 to about 95% of propellant (instant claim 22); the composition further comprises non-volatile organic fluids in an amount of about 15% or less including isopropyl myristate, butyl myristate, etc. ([01035]-[0137]) and the composition further comprises perfumes or fragrances in an amount of 0.000001 to about 10% (claims 1-2 of prior art), buffering agent in an amount of about 0.001 to about 0.75% ([0086]) which overlaps the instant range of about 0.0001 to about 5% of buffering agent (instant claim 9 – buffering agent amount).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
1. The difference between the instant invention and Schneider ‘2016 is that Schneider ‘2016 does not expressly teach a method of deodorizing skin of instant claim 17. The deficiency is cured by Schneider ‘2012.
2. The difference between the instant invention and Schneider ‘2016 or in view of Schneider ‘2012 is that the applied art does not expressly teach gel stick of instant claim 1; gelling agent of instant claim 1 and its amount of instant claim 5; aerosol spray form of claims 17 and 21; the amount of carrier of instant claim 3; antiperspirant of instant claims 6-7; the amount of surfactant of claim 11; aliphatic hydrocarbon carrier of instant claim 21; and propellant and its amount of claims 21-22. The deficiencies are cured by Cetti.
3. The difference between the instant invention and the applied art is that the applied art does not expressly teach the exact ranges of active benzene sulfonamide, gelling agent, antiperspirant, buffering agent, surfactant, carrier, propellant, and perfume or fragrance.
4. The applied art does not expressly teach the embodiments of instant claims 1, 17 and 21.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
1. It would have been prima facie obvious to modify the personal care deodorant composition for absorbent article of Schneider ‘2016 with application to skin of Schneider ‘2012 because Schneider ‘2016 and Schneider ‘2012 both refer to deodorant to reduce malodor of skin body fluid (e.g., body perspiration odor ([0096]) by applying the same halo active aromatic sulfonamide compound as an active agent, and both references also teach overlapping amount of aromatic haloactive sulfonamide compound. Therefore, there is motivation to apply the same haloactive compound to the skin area as taught by Schneider ‘2012, which would have yielded no more than the predictable results of reducing malodor of skin.
2. It would have been prima facie obvious to modify the personal care composition of Schneider ‘2016 or in view of Schneider ‘2012 with the teachings of Cetti, in the form of gel stick or aerosol spray in order to produce the claimed invention because Schneider ‘2016 or in view of Schneider ‘2012 teaches gel and spray pump and Cetti teaches personal care composition in the form of aerosol spray, gel, stick and soft stick (it could be gel stick), and therefore, selecting gel, aerosol spray or gel stick forms as a matter of choice or design would be an obvious variation from the teachings of Cetti and such variation would have yielded no more than the predictable results of controlling malodor. Even if Cetti’s soft stick would not be a gel stick, it would not be inventive because the applied art teaches gel, stick or soft stick forms and therefore from the knowledge and skill of the ordinary artisan, the gel stick form would be conceivable for deodorant use and obvious in the absence of evidence to the contrary.
Further, it would have been prima facie obvious to one of the skilled in the art before the effective filing date of the claimed invention to further add certain amount antiperspirant of Cetti to the personal care composition of Schneider ‘2016 or in view of Schneider ‘2012 in order to impart antiperspirant properties to the composition; it would have been prima facie obvious to further add certain amount of propellant to the composition of Schneider ‘2016 or in view of Schneider ‘2012 in order to provide suitable aerosol spray form as taught by Cetti; and it would have been prima facie obvious to further add certain amounts of surfactant and carrier of water/silicone of Cetti to the composition of Schneider ‘2016 or in view of Schneider ‘2012 in order to enhance the properties of the composition, in the absence of evidence to the contrary.
Although Schneider ‘2016 and ‘2012/Schneider in view of Cetti teach carrier of e.g., water and silicone, replacing such carrier with equivalent aliphatic hydrocarbon carrier such as petroleum of Cetti would be obvious matter of choice unless there is evidence to show carrier of aliphatic hydrocarbon leads to superior effects compared to water or alcohol. Further since Cetti teaches propellant selected from aliphatic hydrocarbon in an amount of 15-70%, when the aliphatic hydrocarbon of Cetti is used in the composition, it would also act as carrier in the absence of evidence to the contrary.
3. It would have been prima facie obvious to one of the skilled in the art before the effective filing date of the claimed invention to adjust or optimize the prior art ranges of said ingredients with the claimed ranges depending on the intended purpose and formulation type, relationship with other ingredients without undue experimentation because the prior ranges as noted above are inside or overlap the claimed ranges, in the absence of criticality evidence. MPEP 2144.05 states that [I]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
4. One of ordinary skill would be motivated to provide embodiments of instant claims 1, 17 and 21 because a reference is analyzed using its broadest teachings. MPEP 2123 [R-5].
Where, as here, the specific combination of features claimed is disclosed within the broad teachings of the reference but the references of Schneider 2016, 2012 and Cetti do not disclose the specific combination of variables (e.g., halosulfonamide with various excipients in the different form recited in instant claims 1, 17 and 21), in a specific embodiment or in a working example, “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989).
However, "when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious". KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious", the relevant question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that "[a] person of ordinary skill is ... a person of ordinary creativity, not an automaton." Id. at 1742.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention or at the time the invention was made to rearrange the disclosed elements and embodiments of (from Schneider 2016 and 2012, well-known odor masker of halosulfonamide compound (I), and from the Schneider/ Cetti references, various excipients of solvents, gelling agents, propellants, stick, gel, aerosol spray, etc.) to prepare the claimed composition. Such a rearrangement by a person of ordinary skill in the art who is not an automaton to yield the instantly claimed invention is within the purview of the ordinary skilled artisan upon reading the applied references and would yield predictable results of masking or reducing skin or body odor.
This rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 1943 C.D. 518. From MPEP 2143 A: “…all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at ___, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).”
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s amendments/arguments/Declaration of 01/03/2025 and 04/02/2025 have been fully considered, but are not persuasive.
Applicant argues that three Affidavits explaining why the present claims are not obvious over the cited art (especially Schneider ‘2016); and the unexpected results of the current Declaration using 0.25% of compound (I) are shown in comply with MPEP 2112.02(II) “the discovery of a new use for an old structure based on unknown properties of the structure can be patentable as a process of using”; and current claim 1 recites specific carrier/gelling agent-containing composition, while not requiring either alcohol or fatty alcohol of gelling agent.
The Examiner responds that as noted in the body of action, the personal compositions of instant claims 1 and 21 and the method of use of instant claim 17 would be obvious over Schneider 2016 with or without Schneider in view of Cetti. Specifically, Schneider ‘2016 teaches halosulfonamide compound (I) can be used in overlapping amount 0.1-5% ([0017]) for masking or reducing odor such as body perspiration odor ([0096]), the reduced odor can remain when measured over a period of at least three days (i.e. 72 hours), at least one week (i.e. 168 hours), or even one month (i.e. 720 hours) ([0090]), deodorant or body odor products use the odor controlling composition comprising the sulfonamide compound of formula I with the same mechanism of odor control ([0024]), and bodily fluid may have an malodor due to odor-causing molecules containing sulfur ([0004]); Schneider ‘2012 additionally discloses the personal care composition that contact the skin comprising the same compound can be used as deodorant ([0079]); consequently, application of haloactive sulfonamide of formula (I) to skin body for deodorizing effect is taught/suggested by Schneider ‘2016 with or without Schneider ‘2012; and Cetti directed to a deodorant and/or antiperspirant in the form of stick or aerosol discloses solvent of water, silicone oil & aliphatic hydrocarbon, and gelling agent such as clay, petrolatum, oils, wax, and silicas ([0045] and [0055]). It is well known that halosulfonamide (I) is effective to mask or reduce odor from body and/or skin from the teachings of Schneider 2016 and/or 2012, and Cetti directed to a deodorant discloses various excipients such as solvent, gelling agent, propellent, etc. and overlapping amounts thereof. Thus the combination of the applied art would achieve the claimed inventions. The filed Declaration did not test with a specific combination of water and silicone or aliphatic hydrocarbon in order to show unexpected results of the claimed composition and methods.
The applicant presents the third affidavit, and however, such results using 0.25% compound (I) would be expected from the applied art because Schneider 2016 discloses overlapping amount about 0.1 to about 5%of compound (I) ([0017]) for the same purpose of masking or reducing odor and reduced odor remains over 24 hours ([0090]). Further although the applicant argues the claimed gelling agent is specific, this is not true, and the claimed gelling agent broadly recites.
In light of the foregoing, applicant’s arguments are not persuasive.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 5-14, and 21-23 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 16 of patent no. 12,344,820 having application no. 17/136987.
Although the claims at issue are not identical, they are not patentably distinct from each other. Both claims require the same halo active sulfonamide compound of formula (I), N-chloro-4-carboxybenzenesulfonamide which is used for control odor, and carrier, surfactant, fragrance, and additives and overlapping amounts thereof. The difference between the claimed invention and patent ‘820 is that the claimed invention refers to a deodorant composition, and patent ‘820 relates to an antimicrobial or odor-controlling detergent composition and further requires deposition-aids. However, both compositions refer to odor-control by using the same ingredient benzene sulfonamide (I) and patent ’820 uses “comprising” which does not exclude the introduction of additional agent such as polysaccharide deposition aid. Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Claims 1-3, 5-14, 17-18 and 21-23 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US11,439,574B2 having application no. 17/136,803.
Although the claims at issue are not identical, they are not patentably distinct from each other. Both claims require the same halo active sulfonamide compound of formula (I), N-chloro-4-carboxybenzenesulfonamide which is used for control odor, and further comprise carrier, surfactant, fragrance, thickener, and additives and overlapping amounts thereof. The difference between the claimed invention and patent ‘574 is that the claimed invention refers to a deodorant composition in the form of gel or aerosol and patent ‘574 relates to a deodorant composition in the form of stick. However, both compositions for odor-control use the same ingredient benzene sulfonamide and carrier. however, such difference would be a result of choice or design and thus would be an obvious variation. Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
In addition to the obviousness-type double patenting rejection based on 17/136897 and patent ‘574, Applicant has a prolific patents/applications portfolio with at least these other patents/copending applications drawn to a composition relating to control odor comprising sulfonamide compound of formula (I) and methods of using them that read on the instantly claimed subject matter, for example: patent nos. 7371368; 73848999; 7465821; 7465829; 7513915; 7560592; 7629492; 7824448; 7939055; 8003823; 8425980; 8759399; 9040587; 9408940; 9987389; 10307702; 10653811, and application nos. 16/521212; 16/990471 Thus, to overcome possible rejections, Applicant is necessary to amend the instant claims to be distinct from those prolific patents/applications, and otherwise, terminal disclaimer submission would be required.
Further, if allowable subject matter is determined in the instant invention, then these and possibly other patents/applications will be re-assessed for double patenting rejections.
Response to Arguments
For the reasons set forth above, this double patenting rejections have maintained as Applicants have deferred to rebut the rejections under Obviousness Type Double Patenting Rejection.
Conclusion
The instant case is not allowable.
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.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613