amNotice 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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Claims 1-4, 6, 7, 10, 11, 13-16 and 18-23 are pending.
Claims 5, 8, 9, 12 and 17 are cancelled.
Claims 1, 2, 4, 7, 13-15, 20 and 22 are currently amended.
Claim 23 is new.
The Supplemental Response filed on February 25, 2026 is acknowledged.
No claims are cancelled, amended or added.
The Supplemental Response filed on March 30, 2026 is acknowledged.
Claim 7 is further amended to replace a comma with a period, claim 22 is further amended to remove material previously identified as deleted, and claim 24 is new.
Claims 1-4, 6, 7, 10, 11, 13-16 and 18-24 as filed on March 30, 2026 are under consideration.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn, all previous claim rejections under 35 USC 112(b) are withdrawn, and all previous claim rejections under 35 USC 112(d) are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claims 1, 11, 24 are objected to because of the following informalities:
Claims 1, 24: where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
Claim 11: the apparent underlines under the parentheses should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6, 7, 10, 11, 13-16 and 18-23 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 pre-AIA the applicant regards as the invention.
Claim 1 as currently amended recites a composition comprising a), b) and c) and claim 1 also recites in the first wherein clause the composition “consists essentially of from 10 to 16% by weight of a volatile cyclic polydimethylsiloxane having three to seven silicon atoms”. The transitional phrase “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements while the transitional phrase “consists essentially of” limits the scope of the composition to the specified materials "and those that do not materially affect the basic and novel characteristic(s)" thereof. See MPEP 2111.03. It is unclear how the composition can simultaneously comprise a), b) and c) and also consist essentially of volatile cyclic PMDS because the composition cannot be simultaneously open-ended and limited. Claims 3-4, 6, 7, 10, 11, 13-16 and 18-23 are included in this rejection because they depend from claim 1 and because they do not remedy the noted ambiguity.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14, 15 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 14, 15 and 22 independently recite the composition comprises … the volatile cyclic PDMS, however, claim 1 as currently amended from which claims 14, 15 and 22 depend recites the composition consists essentially of … a volatile cyclic PDMS. Because the transitional phrase "consists essentially of" limits the scope of claim 1 to the specified materials "and those that do not materially affect the basic and novel characteristic(s)" thereof (see MPEP 2111.03), the usage of the open transitional phrase comprising in the dependent claims appears to omit the limitation of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-4, 6, 7, 10, 11, 13-16 and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Parrott (US 6,086,887, published July 11, 2000, of record) as evidenced by ChemNet “110-36-1 butyl myristate,” of record and by Millipore Sigma “Mineral oil,” in view of Nabial (US 4,425,328, published January 10, 1984) and optionally in view of Deckner et al. (US 4,919,934, published April 24, 1990, of record).
Parrott teaches an antiperspirant or deodorant cosmetic composition comprising (title; abstract; claims):
an antiperspirant or deodorant active,
a carrier, and
about 0.05 to 20 wt% borage seed oil.
Borage seed oil comprises inter alia palmitic acid (column 2, lines 23-44), as required by instant claim 20.
The composition may comprise 10 to 30 wt% of the antiperspirant active (claim 3), as required by instant claim 10. In 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[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). See MPEP 2144.05. The antiperspirant active may contain zirconium (astringent metal) (claim 4). The antiperspirant active may include aluminum (astringent metal) salts such as aluminum chlorohydrate (column 2, lines 45-67), as required by instant claim 11.
The composition may comprise a volatile silicone carrier; said volatile silicone carrier is present from 10 to 70 wt% (claims 5, 7), as required by instant claims 14, 15, 22. Volatile silicones are selected from cyclic polysiloxane containing from 3 to 8, particularly 4 or 5 dimethylsilicone groups (cyclopentasiloxane) (column 3, lines 41-54), as required by instant claim 13. Regarding the recitation that the composition consists essentially of from 10 to 16 wt% volatile C3-C7 cyclic PDMS as required by instant claim 1, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03. The composition may comprise a structurant or thickening agent in a concentration sufficient to form a stick (claim 6). The structurant or thickening agent may comprise waxy (lipophilic) structurants including hydrogenated castor oil and may be present from 0.1 to 20 wt% (column 4, lines 11-53), as required by instant claim 7. The amount and type of structurant or thickening agent determines the hardness (column 4, lines 45-53).
The composition may comprise one or more non-volatile emollients; the total amount of emollient materials, excluding the borage oil, is from 1 to 70 wt% (column 3, lines 9-24; column 3, line 55 though column 4, line 10), as required by instant claim 6. Non-volatile emollients include esters containing about 12 to 25 carbons with one substituent containing at least 12 carbons such as butyl myristate (flash point of 158.5 ºC, boiling point 334.7 ºC, refractive index of 1.442 as evidenced by ChemNet), mineral oils (flash point of 200 ºC, boiling point of 300 to 500 ºC, refractive index of 1.467 as evidenced by Sigma) and ethers such as PPG(10-15) butyl ether (column 3, line 55 though column 4, line 7), as required by instant claims 2-4, 21, 23. Regarding the recitation that the at least one non-volatile emollient oil consists essentially of as required by instant claim 2, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03. Regarding the recitation that the at least one non-volatile emollient oil consists of as required by instant claim 24, while the consisting of language limits the at least one non-volatile emollient oil to those claimed, the claim is open to additional non-volatile emollient oils by virtue of the at least one modifier.
The composition may optionally comprise up to 25 wt% surfactants (emulsifier) (paragraph bridging columns 4 and 5).
The composition may optionally comprise alcohols inclusive of glycerol as part of the carrier material (column 3, lines 9-24, 41-54). Parrott is silent as to the presence of humectants, as required by instant claim 16. Regarding the exclusion of glycerin or/and PEG-4 as required by instant claim 16, Parrott is silent as to the presence of PEG-4 and although Parrott optionally embraces the presence of glycerol, optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123.
The exemplary stick formulation is anhydrous (Example 2; column 3, lines 9-40).
Parrott fails to specifically teach or exemplify an embodiment of composition falling within those comprising 25 to 40 wt% of at least one non-volatile emollient, 13 to 18 wt% of a lipophilic material inclusive of hydrogenated castor oil, less than 25 wt% antiperspirant active that is an astringent metal salt, and from 10 to 16 wt% of a volatile C3-C7 cyclic polydimethylsiloxane, wherein the composition is free of emulsifier and substantially free (as defined in the paragraph bridging pages 14 and 15 of the instant specification) of water as required by claim 1 and the claims dependent thereupon. However, Parrott renders obvious compositions in the form of sticks comprising 1 to 70 wt% non-volatile emollients inclusive of mineral oil, 0.1 to 20 wt% of structurant or thickening agent comprising hydrogenated castor oil, 10 to 30 wt% of antiperspirant actives inclusive of aluminum chlorohydrate, and 10 to 70 wt% volatile silicone carrier inclusive of cyclic polysiloxanes comprising 5 dimethylsilicone groups (cyclopentasiloxane), wherein the compositions need not comprise surfactants, water or glycerin and the exemplary stick does not comprise surfactants, water or glycerin. A reference is analyzed using its broadest teachings and the overlapping ranges taught by Parrott presumptively establish the prima facie obviousness of the instantly claimed compositions. See MPEP 2123 and 2144.05.
Although Parrott teaches non-volatile emollients inclusive of esters containing about 12 to 25 carbons with one substituent containing at least 12 carbons and ethers such as PPG(10-15) butyl ether, Parrott does not specifically teach isopropyl palmitate and PPG-14 butyl ether as required by claims 1, 2 and 24.
This deficiency is made up for in the teachings of Nabial.
Nabial teaches solid antiperspirant stick compositions wherein the amount of silicone may be reduced by using use of certain liquid polyoxypropylene-alkyl ethers such as PPG (14)-butyl ether as emollients (title; abstract; claims; column 3, lines 22-32; Example 1). The emollient further comprises mineral oil (claim 1). Other emollients which can be used for the practical replacement of silicone include fatty acid esters such as isopropyl palmitate (column 3, lines 33-43; claim 7). Nabial further teaches large amounts of volatile silicone are effective but expensive (column 1, lines 19-38).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the non-volatile emollients of the compositions of Parrott comprising mineral oil to further comprise PPG (14)-butyl ether and fatty acid esters such as isopropyl palmitate as taught by Nabial in order to reduce the content of expensive volatile silicones in the compositions. One would be motivated to do so because Parrott expressly teaches cost to be a concern (e.g., column 5, lines 33-38). There would be a reasonable expectation of success because the emollients of Nabial fall within the genus embraced by Parrott.
Regarding the properties of the at least one non-volatile emollient oil of a boiling point of 215 to 400 ºC, of 250 to 390 ºC, of 260 to 385 ºC, of a flash point of at least 80 ºC, of a refractive index of 1.35 to 1.55 as required by 1, 3, 4, 21, 23, 24, because the combined teachings of Parrott and Nabial render obvious non-volatile emollients as instantly claimed, it necessarily follows that the emollients of the stick compositions of Parrott and Nabial are also characterized by these properties. In further support of this presumption, mineral oil as taught by Parrott and Nabial has a flash point of 200 ºC, a boiling point of 300 to 500 ºC, and a refractive index of 1.467 as evidenced by Sigma.
Regarding the property of a stick hardness ranging from 60 to 100, from 62 to 100 mm*10 (as defined at page 12 of the instant specification) as required by claims 18, 19, because the combined teachings of Parrott and Nabial render obvious stick compositions as instantly claimed, comprising the same combination of ingredients in overlapping amounts, it necessarily follows that the stick compositions of Parrott and Nabial must also be characterized by the hardness claimed, absent evidence to the contrary. In further support of this presumption, Parrott expressly teaches hardness is determined by the amount and type of structurant or thickening agent.
Alternatively, they do not specifically teach a hardness ranging from 60 to 100, from 62 to 100 mm*10 (as defined at page 12 of the instant specification) as required by claims 18, 19.
This deficiency is made up for in the teachings of Deckner.
Deckner teaches cosmetic sticks comprising an active component such as an antiperspirant or deodorant (title; abstract; claims; columns 6-7, Antiperspirant Actives”). The sticks are sufficiently hard so as to maintain dimensional stability while depositing a suitable amount of active material on the skin during normal use; hardness can be measured with a Penetrometer and should yield a penetration value of from about 3 to 20 mm (about 30 to 200 mm*10) (column 10, lines 42-66).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sticks of Parrott in view of Nabial to have a hardness of from about 3 to 20 mm (about 30 to 200 mm*10) as taught by Deckner because this hardness is sufficiently hard so as to maintain dimensional stability while depositing a suitable amount of active material on the skin during normal use.
Claims 1-4, 6, 7, 10, 11, 13-16 and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Goel et al. (WO 2004/039344 A1, published May 13, 2004) as evidenced by Millipore Sigma “Mineral oil,” in view of Nabial (US 4,425,328, published January 10, 1984) and optionally in view of Deckner et al. (US 4,919,934, published April 24, 1990, of record).
Goel teaches improved solid stick compositions inclusive of antiperspirant stick compositions for topical application (title; abstract; claims; paragraph bridging pages 5 and 6). The sticks may have a hardness of greater than 0.5 N/mm2 or a harness of 0.005 to 0.1 N/mm2 (paragraph bridging pages 5 and 6), as required by instant claims 18, 19.
The sticks comprise (page 6, lines 11-22):
0.5 to 60 wt% of an antiperspirant active selected from astringent active salts such as aluminum chlorohydrate (page 7, lines 23-32; page 9, lines 12-15), as required by instant claims 10, 11, see MPEP 2144.05,
5 to 95 wt% of a carrier fluid that is generally an oil phase comprising 20 to 50 wt% volatile silicones inclusive of cyclic polydimethylsiloxanes having 4 and/or 5 and/or 6 silicon atoms and comprising oils which have a boiling point over 100 ºC such as mineral oils (flash point of 200 ºC, boiling point of 300 to 500 ºC, refractive index of 1.467 as evidenced by Sigma), esters inclusive of isopropyl palmitate, and ethers such as PPG-14 butyl ether (page 11, lines 4-17; paragraph bridging pages 11 and 12; paragraph bridging pages 12 and 13; page 13, lines 14-15), as required by instant claims 2-4, 6, 13, 21, 23, see MPEP 2111.03,
0.1 to 50 wt% of a structurant or gellant inclusive of linear fatty alcohols inclusive of stearyl alcohol (paragraph bridging pages 14 and 15), as required by instant claim 7.
The sticks may be anhydrous, i.e., contain no free water (page 9, lines 17-24, paragraph bridging pages 13 and 14). Aqueous formulations would normally further comprise an emulsifier (implying anhydrous formulations would not) (paragraph bridging pages 13 and 14). The compositions may further comprise essential oils such as thymol (page 19, lines 9-16), as required by instant claim 20.
Goel does not teach a humectant, does not teach glycerin, and does not teach PEG-4 (whole document), as required by instant claim 16.
Goel further teaches the desirability of cost saving (page 2, lines 4-6).
Goel does not specifically teach 10 to 16 wt%, 10 to 14.5 wt%, 12 to 15.5 wt%, 12 to 15 wt% of volatile C3-7 cyclic PDMS as required by claims 1, 14, 15, 22, 24.
This deficiency is made up for in the teachings of Nabial.
Nabial teaches solid antiperspirant stick compositions wherein the amount of silicone may be reduced by using use of certain liquid polyoxypropylene-alkyl ethers such as PPG (14)-butyl ether as emollients (title; abstract; claims; column 3, lines 22-32; Example 1). The compositions comprise about 30 to 55 wt% of emollient comprising about 15 to 28 wt% volatile silicone, about 15 to 25 wt% liquid POP-alkyl ethers and about 0 to 5 wt% mineral oil (claim 1). Other emollients which can be used for the practical replacement of silicone include fatty acid esters such as isopropyl palmitate (column 3, lines 33-43; claim 7). Nabial further teaches large amounts of volatile silicone are effective but expensive (column 1, lines 19-38).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carrier fluid of the compositions of Goel to comprise a lower amount of volatile silicones, e.g., less than 20 to 50 wt%, inclusive of cyclic PDMS having 4 to 6 carbon atoms because Nabial teaches volatile silicones are expensive and may be replaced with certain liquid ethers such as PPG (14)-butyl ether. One would be motivated to do so because Goel expressly teaches cost to be a concern. There would be a reasonable expectation of success because Goel embraces the presence of PPG-14 butyl ether in amounts from 5 to 95 wt%. It would have been obvious to further modify the carrier fluid of the compositions of Goel to specifically comprise PPG (14)-butyl ether and additional oils inclusive of mineral oil and esters inclusive of isopropyl palmitate because Nabial teaches such combination is a suitable replacement for silicones in antiperspirant stick compositions. There would be reasonable expectation of success because Goel embraces combinations of PPG-14 butyl ether with mineral oil and esters inclusive of isopropyl palmitate. It would take nothing more than routine experimentation to optimize the balance of volatile siloxanes and oils within the carrier fluid of the compositions of Goel and Nabial.
Regarding the properties of the at least one non-volatile emollient oil of a boiling point of 215 to 400 ºC, of 250 to 390 ºC, of 260 to 385 ºC, of a flash point of at least 80 ºC, of a refractive index of 1.35 to 1.55 as required by 1, 3, 4, 21, 23, 24, because the combined teachings of Goel and Nabial render obvious non-volatile emollients as instantly claimed, it necessarily follows that the oil carriers of the stick compositions of Goel and Nabial are also characterized by these properties. In further support of this presumption, mineral oil as taught by Goel and Nabial has a flash point of 200 ºC, a boiling point of 300 to 500 ºC, and a refractive index of 1.467 as evidenced by Sigma.
Regarding the property of a stick hardness ranging from 60 to 100, from 62 to 100 mm*10 (as defined at page 12 of the instant specification) as required by claims 18, 19, because the combined teachings of Goel and Nabial render obvious stick compositions as instantly claimed, comprising the same combination of ingredients in overlapping amounts, it necessarily follows that the stick compositions of Goel and Nabial must also be characterized by the hardness claimed, absent evidence to the contrary.
Alternatively, they do not specifically teach a hardness ranging from 60 to 100, from 62 to 100 mm*10 (as defined at page 12 of the instant specification) as required by claims 18, 19.
This deficiency is made up for in the teachings of Deckner.
Deckner teaches cosmetic sticks comprising an active component such as an antiperspirant or deodorant (title; abstract; claims; columns 6-7, Antiperspirant Actives”). The sticks are sufficiently hard so as to maintain dimensional stability while depositing a suitable amount of active material on the skin during normal use; hardness can be measured with a Penetrometer and should yield a penetration value of from about 3 to 20 mm (about 30 to 200 mm*10) (column 10, lines 42-66).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sticks of Goel in view of Nabial to have a hardness of from about 3 to 20 mm (about 30 to 200 mm*10) as taught by Deckner because this hardness is sufficiently hard so as to maintain dimensional stability while depositing a suitable amount of active material on the skin during normal use.
Response to Arguments
Applicant's arguments have been considered but are substantially moot in light of the modified / new grounds of rejection necessitated by Applicant’s amendments.
Applicant’s rehashed citation to the data within the instant specification at page 9 of the Remarks is noted but remains unpersuasive because the content of the specification has been considered as part of the Graham analysis. Examples 1 and 2 are not commensurate with the genus of compositions claimed. See MPEP 716 for information regarding allegations of unexpected results. Furthermore, Nabial is already in possession of compositions comprising PPG-14 butyl ether, mineral oil and esters inclusive of isopropyl palmitate for purposes of replacing volatile siloxanes within antiperspirant stick compositions. It cannot be credited that decreasing cyclopentasiloxane in the manner expressly taught by Nabial constitutes an unexpected result within the meaning of MPEP 716. Therefore, the rejections over Parrott are properly maintained in modified form and new grounds of rejection are applied herewith over Goel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner , Art Unit 1600
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