DETAILED ACTION
Claims 1-12, 15-20 and 22-23 are pending and under consideration on the merits.
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/15/26 has been entered.
Status of the Rejections
The claim objection is withdrawn in view of the amendment.
The 103 rejection is maintained and expanded to include newly added claims.
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 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.
Claims 1-12, 15-20, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Florence et al. (US Pat. Pub. 2016/0095814; of record in IDS) in view of Workman et al. (US Pat. Pub. 2006/0165623; of record in IDS) and Naveed (J. Pharm. Sci. & Res. Vol. 6(1), 2014, 338-341; of record in IDS).
As to claims 1-12, 15-20, and 22-23, Florence discloses cosmetic compositions (Title) that may comprise caprylic/capric triglyceride (the elected species of skin conditioning agent of claims 1-2) (paragraph 11), sunflower oil (the elected species of emollient of claims 1 and 3)(paragraphs 90-92), an essential oil (the elected species of scent of claim 11), and wherein the essential may be grapefruit oil which is a scent of “citris paradisi” of claim 12)(paragraphs 35 and 104), euphorbia cerifera wax (the elected species of nonaqueous viscosity increasing agent of claims 1 and 4)(paragraph 92), xanthan gum (the elected species of aqueous viscosity increasing agent of claims 1 and 5)(paragraph 11), corn starch (the elected species of absorbent of claims 1 and 7)(paragraph 87), aloe vera (the elected species of soothing agent of claims 1 and 8)(paragraph 87), and shea butter (the elected species of viscosity controlling agent of claims 1 and 10)(paragraph 92). Florence further discloses that the composition may be incorporated into a deodorant/antiperspirant (paragraph 39). Florence does not require the presence of any of the ingredients recited by claims 15-20 and 22. While Florence does disclose that the composition may comprise parabens as preservatives, Florence also discloses other, non-paraben preservatives that can be used, and does not require the presence of any preservative (paragraph 113). While Florence does disclose that the composition may comprise aluminum starch octenylsuccinate as an absorbent or aluminum hydroxide stearate as a waterproofing agent paragraph 87), it does not require the presence of these ingredients.
As to claims 11-12, 15-20, and 22-23, Florence does not further expressly disclose a specific embodiment wherein the composition comprises the foregoing ingredients and is in the form of a personal care deodorant product. Additionally, while Florence teaches that the composition may comprise a surfactant (paragraphs 78 and 96), it does not teach that the surfactant is the elected species, i.e., sodium stearate of claims 1 and 6), and while Florence teaches that the composition may be incorporated into a deodorant as discussed above, it does not expressly teach that the composition further comprises sodium bicarbonate (i.e., the elected species of deodorant agent of claims 1 and 9). Additionally, while Florence teaches that the composition may comprise stearic acid (paragraph 92), it does not expressly disclose that the stearic acid is in the form of its sodium salt as recited by claim 9.
Workman discloses a natural deodorant composition, and teaches that it is advantageous to avoid synthetic ingredients in deodorants to avoid adverse health effects such as skin irritation, allergic reactions, chemical sensitivity, and breakdown of the skin barrier (paragraphs 3-9). Workman teaches natural deodorants comprising all natural ingredients including sodium bicarbonate deodorant (paragraph 36) and sodium stearate as an emulsifier (paragraphs 9,18, 36).
Naveed discloses that commonly used cosmetic products including deodorants/antiperspirants contain active chemical which are known to be toxic such as endocrine disruptors, and that long term exposure to these chemicals in low doses from such cosmetics can cause them to build up in the body over time, leading to a risk of serous malignancies (Abstract and left column of page 338). Naveed expressly calls out parabens an example of an endocrine disruptor that is used in deodorants and also mentions phthalates and triclosans as other examples of endocrine disruptors (right column of page 338 and left column of page 339).
As to claims 1-12, 15-20, and 22-23, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to select from the lists taught by Florence the species of ingredients elected by Applicant since Florence expressly teaches these ingredients as suitable for the composition disclosed therein as discussed above and “[r]eading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle" (325 U.S. at 335, 65 USPQ at 301) and MPEP § 2144.07), and further to incorporate the Florence composition into a natural deodorant such as the sodium bicarbonate and sodium stearate-containing deodorant taught by Workman, since Florence expressly teaches incorporating its composition into a deodorant composition, and Workman teaches such a deodorant composition and further teaches that it is advantageous to avoid synthetic ingredients in deodorants, and additionally because Naveed expressly warns that compounds commonly used in cosmetic composition that are endocrine disruptors, such as parabens, triclosans, and phthalates, may be harmful to the user of the composition, which would have motivated the skilled artisan to preferentially select out from the lists of ingredients taught by Florence and Workman ingredients which are of natural origin and/or which are not endocrine disruptors, such as the ingredients that are the elected species of the present claims, and not selecting for incorporation any endocrine disruptors such as parabens. Such modifications are merely the combining of prior art elements according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
The resulting composition will reduce body odor when applied to the underarm as recited by claim 1, since it comprises the same ingredients recited by the present claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Response to Applicant’s Arguments
Applicant argues that the rejection does not take into account why one would look to a reference about an anti-aging composition as a starting point to form a deodorant.
In response, one of skill would have been motivated to look to modify the Florence composition by incorporating it into a deodorant because Florence expressly suggests doing so as discussed in the rejection.
Applicant argues, however, that Florence’s mention of deodorant is among a list of about twenty product types, and provides no guidance on how to formulate a functional deodorant product including amounts or working examples or specific ingredient selection. Applicant asserts that KSR requires there to be a reason that would have prompted a person of skill to combine the elements in the way of the claimed invention, and that the mere identification of the ingredients individually is not sufficient to establish a motivation.
In response, the reason that the skilled artisan reading Florence would have been motivated to select the claimed elements is because Florence expressly teaches that these elements are suitable for incorporation into the cosmetic composition taught therein. In fact, the court in KSR expressly stated that combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP 2143. The Office does not agree that a prima facie case of obviousness requires a specific motivation to select in combination the specific elements recited by the claim from lists in a prior art reference. The mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. See Merck v. Biocraft, 10 USPQ2d 1843, 1846 (Fed Cir 1985); In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed.Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”); In re Susi , 440 F.2d 442, 445, 169 USPQ 423, 425 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and it is of a class of chemicals to be used for the same purpose as appellant's additives”). Additionally, the U.S. Supreme Court has held that “reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." (325 U.S. at 335, 65 USPQ at 301). MPEP § 2144.07. Additionally, the present claims do not require the use of any amounts for the recited ingredients.
Applicant also argues that there was no reasonable expectation of success in arriving at the claimed invention because Florence includes working examples having a paraben which is an endocrine disruptor, and does not teach how to integrate the sodium bicarbonate taught by Workman such that stability and functionality is maintained. Applicant cites to Florence stating that it is important that the concentrations and combinations of ingredients be selected so that they are chemically compatible and do not precipitate from the product, and argues that the idea that Florence’s composition could be converted into a working deodorant is speculative and unsupported by the record.
In response, the Office again notes that Florence expressly teaches that its composition can be incorporated into a deodorant, and there is no evidence of record that the skilled artisan would lack a reasonable expectation that the Florence composition could be used in a deodorant successfully. Obviousness does not require absolute predictability; only a reasonable expectation of success is required. MPEP 2143 II.
Applicant also argues that there was no expectation that anti-aging peptides and stem cell extracts optimized for dermal matrix rebuilding would contribute to odor or perspiration control when applied to the underarm, or provide guidance on a formulation without endocrine disruptors.
In response, the rejection relies on Naveed, not Florence, for guiding the skilled artisan to avoid endocrine disruptors because they are known to be toxic and may build up in the body over time as discussed in the rejection, which would have motivated the skilled artisan to avoid the parabens that are optionally present in the Florence composition. Additionally, the prima facie case of obviousness does not turn on an expectation that anti-aging peptides and stem cell extracts optimized for dermal matrix rebuilding as taught by Florence would contribute to odor or perspiration control when applied to the underarm, because the rejection proposes to incorporate the Florence composition into a deodorant composition as expressly suggested by Florence, and specifically the Workman deodorant composition, which comprises sodium bicarbonate which will serve as the deodorizing agent when applied to the underarm.
Conclusion
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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