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 .
Reopen Prosecution
In view of the Appeal Brief filed on October 13, 2025, PROSECUTION IS HEREBY REOPENED. New Grounds of Rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Status of Application
Receipt of Applicant’s remarks and amended claims filed on June 20,2024 is acknowledged.
Claims 1, 3-6, 9-17, and 19-20 are pending in this application.
Claims 2, 7-8, and 18 have been cancelled.
No claim amendments have been submitted.
Withdrawn Rejections
Claim Rejections - 35 USC § 103
The rejection of claims 1, 3-4, 6, 9-14, 16-17 and 19-20 under 35 U.S.C. 103 as being unpatentable over Lesniak et al. (WO 2016/048425) in view of Park et al. (EP 0 471 392 A2) has been withdrawn in view of a lack of teaching or direction of the hardness of the stick formulation.
Maintained Objections/Rejections
Claim Objections
Claim 1 and 11 are objected to because of the following informalities: the claims recite a. and b. to note different components. However, Applicant’s attention is directed to MPEP 608.01(m) which discloses each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. Appropriate correction is required.
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 3, 12, and 13 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 12, the claims recite the limitation "the primary antimicrobial" in line 1. There is insufficient antecedent basis for this limitation in the claim. The claim depends from claim 1 and 11, respectively, which has been amended to recite “an antimicrobial”.
Regarding claim 13, the claims recite the limitation "the primary antimicrobial" in line 1. There is insufficient antecedent basis for this limitation in the claim. The claim depends from claim 11, respectively, which has been amended to recite “an antimicrobial”.
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, 3-4, 6, 9-14, 16-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lesniak et al. (WO 2016/048425) in view of Allan et al. (CN 1329469) and further in view of Tanner et al. (EP 0295071).
Lesniak discloses a non-greasy personal care composition.
The anhydrous compositions comprise:
10-22 weight % zinc oxide; and
50-60 weight % caprylic/capric triglyceride (paragraph 0038).
It is noted that zinc oxide, an antimicrobial agent having deodorant properties.
The composition can be in stick form (paragraph 0040) is disclosed to not be an antiperspirant (paragraph 0041). None of the embodiments are disclosed to contain an aluminum salt.
The stick is disclosed to have a hardness of 300 to 500 g. The hardness is the absolute peak downstroke force that occurs during initial compression with a probe, e.g., measured using a TA Instruments XT Plus Stable Microsystems Texture Analyzer. The texture analyzer is equipped with a 45° Cone Perspex probe and am in compression mode at room temperature (23-25°C). The hardness measurement is reported in grams (paragraph 0106).
The composition comprises natural fragrances, including lavender oil, apricot oil, bay oil, for example (paragraph 0088). The fragrances are, therefore, not synthetic.
As noted above, the composition is disclosed to be anhydrous and none of the embodiments disclose the use of silicones.
Regarding claims 4 and 14, the composition further comprises a wax having a melting point of from 35°C to 72°C present in an amount of 5 to 25 weight % and a second wax having a melting point of 73 to 90°C present in an amount of 0.5 to 15 weight % (abstract), according to disclosed embodiments include 13.5- 15 weight % beeswax (paragraph 0039). It is noted that beeswax has a melting point of 62-65 ˚ Celsius.
Regarding claims 6 and 16, the composition is not disclosed to contain baking soda.
Regarding claims 10, 17, and 20, as noted above, natural fragrances including lavender oil, apricot oil, bay oil, for example, as disclosed for inclusion (paragraph 0088). The use of synthetic fragrances is not disclosed.
Lesniak does not disclose the use of antimicrobials selected from the group consisting of beryllium carbonate, magnesium carbonate, calcium carbonate, magnesium hydroxide, magnesium carbonate hydroxide, magnesium hydroxide and magnesium carbonate hydroxide, partially carbonated magnesium hydroxide, and piroctone olamine.
Lesniak additionally does not disclose the stick has a hardness from about 70 mm*10 to about 140 mm*10, as measured by penetration with ASTM D-1321 needle.
Allan discloses deodorant stick (abstract). The deodorant active is an inorganic antimicrobial substance. Examples include zinc oxide, magnesium hydroxide, and magnesium carbonate. Deodorizing actives are present in the amount of 0.01-20%.
Regarding claims 3 and 12-13, as noted above, magnesium hydroxide is disclosed.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have used magnesium hydroxide in place of the zinc oxide disclosed by Lesniak since both are known deodorizing components utilized in deodorant compositions in Allan. Allan additionally discloses deodorizing components are present in the amount of 0.01-20% which encompasses the range of the zinc oxide disclosed by Lesniak. Therefore, the skilled artisan would have the expectation of successfully providing a deodorant effect.
Tanner discloses cosmetic/deodorant sticks (abstract).
Tanner discloses the specific essential and optional materials to be included in specific stick compositions and their levels, are selected in order to produce a stick of desired hard-ness so as to maintain dimensional stability while depositing a suitable amount of active material on the skin during normal use. Hardness of sticks can be determined in a variety of methods, including American Society for Testing Materials (ASTM) Method D-5. This method involves the use of a needle or polished cone of particular weight and dimension, which is allowed to travel downward through the stick material for a predetermined period of time. The distance traveled by the needle or cone is a rela-tive measure of the stick hardness (page 6, line 55 through page 7, line 11).
Regarding claims 9 and 19, as noted above, Tanner discloses specific essential and optional materials can be added/optimized to adjust the hardness of the stick. Furthermore, there is no criticality associated with the hardness of the instantly claimed stick beyond a pleasant consumer experience which is noted by Tanner as motivation to adjust the hardness of the stick.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have adjusted the components of stick in order to produce a stick of desired hard-ness so as to maintain dimensional stability while depositing a suitable amount of active material on the skin during normal use. The skilled artisan would be motivated to adjust/optimize the percentages of the components (essentials and optional) in order to prepare a stick with the desired hardness to provide an acceptable skin feel to the consumer.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lesniak et al. (WO 2016/048425) in view of Allan et al. (CN 1329469) and further in view of Tanner et al. (EP 0295071) as applied to claims 1, 3-4, 6, 7-14, 16-17, and 19-20 above, and further in view of McCall (US 4,944,937).
The teachings of Lesniak, Allan, and Tanner are discussed above.
The combination does not disclose stearyl alcohol as a structurants.
McCall discloses a cosmetic stick comprises solidifying agents having wax-like characteristics. Examples includes beeswax and other wax like materials such as stearyl alcohol (column 4, line 41 through column 5, line 39).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have added stearyl alcohol as a structurants with beeswax disclosed by Lesniak since they are disclosed as functional equivalents useful for the same purpose. Applicant’s attention is directed to MPEP 2144.06 I which discloses It is generally considered to be prime facie obvious to combine compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose. The motivation for combining them flows from their having been used individually in the prior art, and from them being recognized in the prior art as useful for the same purpose. As shown by the recited teachings, instant claims are no more than the combination of conventional components of structurants useful is deodorant/cosmetic stick formulations. It therefore follows that the instant claims define prime facie obvious subject matter. Cf. In re Kerhoven, 626 F.2d 848, 205 USPQ 1069 (CCPA 1980).
Response to Arguments
Applicant has addressed the 35 USC 103 rejections together, therefore, the Examiner will address the arguments together.
Applicant argues:
*Lesniak does not disclose deodorant compositions and focuses on sunscreens and diaper creams as evidenced by the use of zinc oxide in every invention example.
The Examiner disagrees with Applicant’s interpretation of the intended use of the composition recited in the instant claims. The claims recite a “deodorant stick”, however, as noted in MPEP 2111.02 II which discloses If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). The recitation of “deodorant” is regarded as future intended use in the claims. Zinc oxide, however, is a known antimicrobial agent and is used in deodorant compositions in the same concentrations are used in Lesniak, as taught by Allan.
*Lesniak mentions antiperspirants. Antiperspirants require the use of aluminum salts in the US.
As noted above, Lesniak does not require an aluminum salt in his compoisition. None of the explicit embodiments require aluminum salts and as noted in the rejection, explicitly states the composition is not an antiperspirant. It appears in Applicant’s arguments that they are using deodorant and antiperspirant interchangeably. They are in fact not the same compositions. A deodorant composition acts my masking order by killing odor causing bacteria, while an antiperspirant blocks sweat using aluminum compounds to plug sweat ducts.
Furthermore, the standards for obviousness are distinct from FDA regulatory requirements.
Applicant’ arguments regarding Park (EP 04716392) have not been address, as the rejection of record does not utilize Park.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA S MERCIER whose telephone number is (571)272-9039. The examiner can normally be reached M-F 5:30 am to 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA S MERCIER/ Primary Examiner, Art Unit 1615