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
Claims 4, 7, 12-13, 15, 17-22, 24-28, 43-45, 58-61, and 63-64 are pending and under current examination.
Withdrawn Claim Rejections
All rejections under 35 U.S.C. 112 (b) are withdrawn in view of the amendments to the claims filed 6/4/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 6/4/2026 have necessitated the new grounds of rejection.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 4, 7, 12, 13, 15, 17, 18-22, 24-27, 58-61, and 63 are rejected under 35 U.S.C. 103 as being unpatentable over Doering (U.S. Patent Application No. 2014/0169856, publication date: 6/19/2014, of record) in view of Thomas (U.S. Patent Application No. 2020/0397688, filing date 6/17/2020, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 4, Doering teaches an anhydrous soft solid antiperspirant composition that may contain silicone oils [0063]. Volatile silicone oils are suitable because they impart a pleasant skin feel with little staining of clothing [0065]. The composition includes an antiperspirant active ingredient [0018].
Regarding claims 7 and 12, Doering teaches that the composition may contain waxes [0104] and contains at least one fatty alcohol having 12 to 18 carbon atoms, such as stearyl alcohol [0011 and 0173]. With regards to the “structuring agent” limitations of instant claims 7 and 12, the prior art teaches the same fatty alcohol as claimed and therefore, the structuring agent properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.”
Regarding claim 13, Doering teaches that the composition may contain silicas [0100]. With regards to the “suspension agent” limitations of instant claim 13, the prior art teaches the same silica as claimed and therefore, the suspension agent properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.”
Regarding claim 15, Doering teaches that the composition may include modified corn, rice, and potato starch [0100], hydrophobed hectorites and bentonites [0105], aluminum starch octenylsuccinate [0173], and zeolites [0125]. With regards to the “wetness absorber” limitations of instant claim 15, the prior art teaches the same compounds as claimed and therefore, the wetness absorber properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.”
Regarding claim 17, Doering teaches that the antiperspirant composition may contain at least one antiperspirant active ingredient from 3 to 35 wt.% [0019].
Regarding claim 18, Doering teaches that the antiperspirant active ingredient may be chosen from aluminum chlorohydrate [0022], aluminum sesquichlorohydrate, aluminum zirconium trichlorohydrex glycine, aluminum zirconium tetrachlorohydrex glycine, aluminum zirconium pentachlorohydrex glycine, and aluminum zirconium octachlorohydrex glycine [0024].
Regarding claim 19, Doering teaches that the antiperspirant composition may contain an odor absorber as a deodorant active ingredient [0124]. The deodorant active ingredient may be included at 0.1 to 10 wt.% [0131].
Regarding claim 20, Doering teaches that the composition may contain Dry FLO PC, or aluminum starch octenylsuccinate [0173]. Dry FLO PC may be included as a particulate filler [0100] and the particulate filler may be present in a total amount of 3 to 15 wt.% [0102]. With regards to the “malodor reduction agent” limitations of instant claim 20, the prior art teaches the same aluminum starch octenylsuccinate as claimed and therefore, the malodor reduction properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “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.”
Regarding claim 21, Doering teaches that the antiperspirant may contain at least one scent and/or at least one perfume oil [0120]. The perfume oils may include essential oils [0122].
Regarding claim 22, Doering teaches that the antiperspirant may contain an antioxidant such as tocopherol and derivatives thereof, including tocopheryl acetate [0133]
Regarding claim 24, Doering teaches that the antiperspirant may contain at least one deodorant active ingredient such as odor absorbers, deodorizing ion-exchangers, bacteriostatic substances, substances having a prebiotic effect and enzyme inhibitors [0124]. The composition may also contain a non-volatile non-silicone oil such as natural oils [0075] and an antimicrobial active ingredient [0127].
Regarding claim 25, Doering teaches that the antiperspirant active ingredient is included in an amount of from 3 to 35% by weight [0019]. The at least one scent and/or perfume oil may be present in a total amount of 0.01 to 10% by weight [0123].
Regarding claim 26, Doering teaches that the composition is anhydrous [0088].
Regarding claim 27, Doering teaches that the composition is a soft solid [0004].
Regarding claims 58 and 59, Doering teaches an anhydrous soft solid antiperspirant composition [0063].
Regarding claim 60, Doering teaches that soft solids are viscous compositions which have a creamy texture and which are pressed out through one or more openings of a dispensing device of the application before use [0003]. The Examiner considers the soft solid embraced by Doering to read on the “antiperspirant stick” limitation of the instant claim 60.
Regarding claim 61, Doering teaches the relevant limitations as described above.
Regarding claim 63, Doering teaches that a method for reducing or masking body odor, characterized in that the composition is applied to the skin in an effective amount using a suitable applicator [0141].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 4, Doering does not teach that the antiperspirant composition is silicone-free or that it may contain isoamyl laurate or at least one additional emollient. However, this deficiency is cured by Thomas.
Thomas teaches a cosmetic composition comprising isoamyl laurate and ethylhexyl olivate [0008]. The composition is for use as a silicone replacement [0010] and is suitable for use in a personal care product [0049]. The composition provides silicone-like benefits in formulations while reducing or eliminating real or perceived health and environmental risks associated with silicones [0005]. The isoamyl laurate present in the composition is light and fast spreading and is able to absorb into the skin in a slower fashion, leaving a cushioned after-feel [0025]. Ethylhexyl olivate is an emollient that promotes higher skin hydration and increases flexibility, elasticity and suppleness of the skin. Skin feels softer and smoother [0023].
Regarding claim 61, Doering does not teach a hardness of the composition.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 1, it would have been prima facie obvious to utilize the composition of Thomas in place of the silicone oils present in the antiperspirant of Doering. One of ordinary skill in the art of filing would have understood in view of Thomas that a composition comprising isoamyl laurate and ethylhexyl olivate may be used to replace silicone in personal care formulations. It would have been obvious to substitute the silicone oil present in the antiperspirant taught by Doering with the silicone replacement composition taught by Thomas. One of ordinary skill in the art of filing would have been motivated to substitute the silicone oil present in the antiperspirant taught by Doering in order to provide the same skin feel benefits while avoiding real or perceived health and environmental concerns associated with silicones. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Thomas teaches that the compositions may be used in personal care formulations.
Regarding claim 61, Doering do not disclose the hardness properties as recited in claim 61. However, the invention as claimed is not structurally distinguishable from the disclosure of Doering in view of Thomas and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Doering (U.S. Patent Application No. 2014/0169856, publication date: 6/19/2014, of record) in view of Thomas (U.S. Patent Application No. 2020/0397688, filing date 6/17/2020, of record), as applied to claims 4, 7, 12, 13, 15, 17, 18-22, 24-27, 58-61, and 63 above, and further in view of Dove (How to Apply Deodorant, available 4/11/2017, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Doering, in view of Thomas, renders obvious the relevant limitations as described above. Doering also teaches that the composition is applied to the skin in an effective amount using a suitable applicator [0141].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Doering does not teach that the composition may be applied to the underarm, under the feet, in the hands, intimate areas and/or under the breast. However, this deficiency is cured by Dove.
Dove teaches that a stick deodorant may be applied to the underarm (pg. 7).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to apply the antiperspirant composition taught by Doering to the underarms. One would have understood in view of Dove that deodorant sticks may be applied to the underarms. It would have been obvious to apply the antiperspirant composition of Doering to the underarms. One of ordinary skill in the art of filing would have been motivated to adapt the composition of Doering for application to the underarms in order to utilize the composition to mask or reduce malodor in the underarms. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Dove teaches that stick deodorants may be applied to the underarm.
Claims 43-45 and 64 are rejected under 35 U.S.C. 103 as being unpatentable over Cetti (U.S. Patent Application No. 2016/0089317, publication date: 3/31/2016, of record) in view of Thomas (U.S. Patent Application No. 2020/0397688, filing date 6/17/2020, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 43, 44, and 64, Cetti teaches an antiperspirant and deodorant composition that can comprise a volatile silicone solvent [0013] or volatile or nonvolatile silicone emollients [0056]. The Examiner interprets the term “can comprise” in Cetti to encompass embodiments of the composition that do not contain silicone and therefore reads on the “silicone-free” limitation of the instant claim. Cetti teaches that depending on the type of product form desired, the concentrations of emollients in the antiperspirant and deodorant composition can range from about 1%-95% by weight [0055]. INCI Decoder teaches that propylene glycol may also function as a humectant (pg. 1). The composition may contain from 0 to 30% by weight of structurants [0032]. Hydrogenated castor wax, paraffin wax, beeswax, and spermaceti wax may be present in an amount from 1 to 10% by weight [0109-0110]. The antiperspirant agent may be present in the composition from 1-25% by weight of the composition [0045]. The composition may also contain 0-30% of a structurant, residue masker, antimicrobial agents or mixtures thereof [0032] and from about 0% to about 12% by weight of perfume raw materials [0030]. The composition may contain solvent from about 0.1 to 99% by weight [0031]. The composition may also include emulsifiers [0123], antioxidants [0051], clay mineral powders such as bentonite [0121]. Clays and silicas may be present from about 5-35% by weight [0088]. Cetti also teaches that the solid structurant of the antiperspirant and deodorant composition may provide thickening properties to the composition [0087], the Examiner therefore considers the structurant taught by Cetti to read on the “thickener” limitation of the instant claims. With regards to the “wetness absorber” limitations of instant claims 43 and 44, the instant specification defines wetness absorber to include clays [00056 of instant specification]. The Examiner therefore considers the clays taught by Cetti to read on the wetness absorbers of the instant claims. With regards to the “additive(s)” limitations of instant claims 43 and 44, the instant specification defines additives to include antimicrobial agents [00019 of instant specification]. The Examiner therefore considers the antimicrobial agents embraced by Cetti to read on the “additive(s)” limitation of the instant claims.
Regarding claim 45, Cetti teaches that the antiperspirant and deodorant composition may be formulated as a cream [0008 and 0137].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 43, 44, and 64, Cetti does not teach a specific amount of emulsifier or antioxidant. Cetti also does not teach an amount of wetness absorber that lies within the range embraced by the instant claims or the presence of an emollient comprising isoamyl laurate. However, this deficiency is cured by Thomas.
Thomas teaches a cosmetic composition comprising isoamyl laurate and ethylhexyl olivate [0008]. The composition is for use as a silicone replacement [0010] and is suitable for use in a personal care product [0049]. The composition provides silicone-like benefits in formulations while reducing or eliminating real or perceived health and environmental risks associated with silicones [0005]. The isoamyl laurate present in the composition is light and fast spreading and is able to absorb into the skin in a slower fashion, leaving a cushioned after-feel [0025]. Ethylhexyl olivate is an emollient that promotes higher skin hydration and increases flexibility, elasticity and suppleness of the skin. Skin feels softer and smoother [0023].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 43 and 64, it would have been prima facie obvious to utilize the composition of Thomas in place of the silicone emollient present in the antiperspirant of Cetti. One of ordinary skill in the art of filing would have understood in view of Thomas that a composition comprising isoamyl laurate and ethylhexyl olivate may be used to replace silicone in personal care formulations. It would have been obvious to substitute the silicone emollient present in the antiperspirant taught by Cetti with the silicone replacement composition taught by Thomas. One of ordinary skill in the art of filing would have been motivated to substitute the silicone emollient present in the antiperspirant taught by Cetti in order to provide the same skin feel benefits while avoiding real or perceived health and environmental concerns associated with silicones. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Thomas teaches that the compositions may be used in personal care formulations.
Regarding claim 43, the weight percentage of emulsifier and antioxidant in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage in order to best achieve the desired results as such would provide advantageous emulsification and antioxidant effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Cetti teaches that the adjunct materials such as emulsifiers are known for use in antiperspirant and deodorant compositions [0120] and that antioxidants may be present in the composition [0051]. The Examiner considers it prima facie obvious to optimize the weight percentage of emulsifiers and antioxidants present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of emulsifier and antioxidant present in the composition would have a direct effect on an emulsified formulation and antioxidant properties of the composition, respectively, and therefore be an optimizable variable.
Regarding the weight percentage of wetness absorbers as specified in claims 43 and 44, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Cetti teaches that clays and silicas may act as solid structurants that are known or are otherwise effective in providing suspending, gelling, viscosifying, solidifying, and/or thickening properties to the composition [0087]. The Applicants' specification provides no evidence that the selected weight percentage in claims 43 and 44 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the role of the clays taught by Cetti in the structure of the final composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage. One of ordinary skill in the art would have been motivated to change the weight percentage as this could be expected to be advantageous for achieving the desired structural consistency of the composition.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive.
On page 11, Applicant argues that Doering teaches away from the manufacture of a silicone-free antiperspirant or deodorant composition. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (I), which states that a “reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component”. Please also refer to MPEP 2145 (D) (1) which states: “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” In order to teach away, the prior art reference must “criticize, discredit or otherwise discourage” the claimed invention. In re Fulton, 391 F3d 1195, 1201 (Fed. Cir. 2004). Please also refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[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 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. The silicone oils are the preferred oils disclosed by Doering, but the teachings of Doering do not criticize, discredit, or discourage a silicone-free composition. Furthermore, one of ordinary skill in the art would have recognized, based on the teachings of Thomas, that the composition of Thomas is intended as a replacement for silicone in personal care compositions and therefore would have reasonably concluded that the composition of Thomas may be used to replace the silicone of Doering. Therefore, the argument is not persuasive and the rejection is maintained.
On page 11, Applicant argues that there is no motivation in Doering to omit silicone or to use any silicone replacement. This is not found persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Please also refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[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 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. In this case, Thomas teaches that a composition comprising isoamyl laurate and ethylhexyl olivate may be used to replace silicone in a personal care composition. One of ordinary skill in the art of filing would have reasonably concluded that the composition of Thomas may be utilized to replace the silicone of Doering. Therefore, the argument is not persuasive and the rejection is maintained.
On page 12, Applicant argues that the combination of Doering with Thomas is legally improper since Thomas is not in the same field of endeavor of Applicant’s disclosure. This is not found persuasive. In response to applicant's argument that Thomas is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Thomas teaches that the silicone replacement may be utilized in personal care product [0049]. One of ordinary skill in the art would have therefore reasonably concluded that the silicone replacement of Thomas could be used in a personal care product such as the deodorant of Doering.
On page 13, Applicant argues that the rejection over Doering and Thomas is based on impermissible hindsight reconstruction. This is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On page 13, Applicant argues that Thomas teaches way from silicone-free composition since silicone is unequivocally an essential component of the composition. This is not found persuasive. In response, please refer to MPEP 2145 (D) (1) which states: “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” In order to teach away, the prior art reference must “criticize, discredit or otherwise discourage” the claimed invention. In re Fulton, 391 F3d 1195, 1201 (Fed. Cir. 2004). Please also refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[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 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. In the instant case, Thomas teaches that silicon is an essential component of the natural silicone replacement. However, silicon and silicone are not equivalents. Silicon is a naturally occurring element that is the second most abundant element in the Earth’s crust and is often found in nature bonding with oxygen in the form of silica. Silicone, on the other hand, is a synthetic polymer made up of silicon, oxygen, and other elements, most typically carbon and hydrogen. See pg. 2-3 and pg. 4 of Castro (Live Science, available 6/20/2013). The Examiner notes that the instant claim 13 embraces the presence of silica in the instant invention. One of ordinary skill in the art would have therefore reasonably concluded that the teachings of Thomas, which embrace a natural source of the element silicon, do not teach away from a silicone-free composition, especially in view of the explicit teaching of Thomas that the composition is intended as a silicone-replacement.
On page 14, Applicant argues that in the teachings of Thomas, isoamyl laurate has nothing to do with silicone replacement. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (I), which states: “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art”. Please also refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[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 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. In the instant case, Thomas teaches that the silicone replacement formulation includes the ingredient Arundinaria Gigantea ferment filtrate, saccharide isomerate, isoamyl laurate, isoamyl cocoate, and ethylhexyl olivate [0052]. One of ordinary skill in the art would have therefore reasonably concluded that isoamyl laurate was an essential component of the silicone replacement taught by Thomas.
On page 15, Applicant argues that the ethylhexyl olivate described in Thomas is not equivalent to the hydrogenated ethylhexyl olivate in the instant claims. This is not found persuasive. In response, please refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[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 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. In the instant case, one of ordinary skill in the art would have recognized that Thomas does not provide any referential CAS number of other identifying description to the term “ethylhexyl olivate” to strictly define it to only encompass unhydrogenated 2-ethylhexyl olivate. One of ordinary skill in the art would have understood that the term “ethylhexyl olivate” is a term that may encompass a mix of hydrogenated ethylhexyl olivate and hydrogenated olive oil unsaponifiables used as a natural emollient (see Cipher Skincare, pg. 1-2). Given the broadest reasonable interpretation of the claims, one of ordinary skill in the art of filing could have reasonably concluded that the term “ethylhexyl olivate” encompasses hydrogenated ethylhexyl olivate.
On page 16, Applicant argues that Thomas teaches away the presently claimed invention by using ethylhexyl olivate as a moisture agent. This is not found persuasive. In response, please refer to MPEP 2145 (D) (1) which states: “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” In order to teach away, the prior art reference must “criticize, discredit or otherwise discourage” the claimed invention. In re Fulton, 391 F3d 1195, 1201 (Fed. Cir. 2004). In the instant case, Thomas teaches ethylhexyl olivate as an emollient. The instant claims define hydrogenated ethylhexyl olivate as an emollient. Therefore, one of ordinary skill in the art would have reasonably concluded that ethylhexyl olivate may be present in the composition as an emollient and would not have considered the disclosure of Thomas to be teaching away from the inclusion of ethylhexyl olivate as an emollient.
On page 20, Applicant argues that there is nothing in Cetti that discloses or suggests that isoamyl laurate could be used as an emollient in an antiperspirant or deodorant composition. This is not found persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As described in the obviousness rejection above, it would have been prima facie obvious to utilize the composition of Thomas in place of the silicone emollient present in the antiperspirant of Cetti.
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 ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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