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 . Claims included in prosecution are claims 1-5 and 9-12.
Previous Rejections
Applicants' arguments, filed 7/13/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 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.
1. Claim(s) 1-5 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ramos et al. (WO 2019/072831, Apr. 18, 2019) (hereinafter Ramos) in view of Aubrun et al. (WO 2013/013902, Jan. 21, 2013) (hereinafter Aubrun).
Ramos discloses a cosmetic method for the treatment of human perspiration and optionally body odors resulting from the perspiration, that includes the use of at least one cation Xn+ of valency n, of at least one anion Ym- of valency m and at least one modulating agent (Abstract). The method includes (i) either the mixing just before use of at least one composition A and of at least one composition B; said compositions A and B being packaged separately followed by the application of the resulting mixture on the surface of the skin; (ii) or the application on the surface of the skin simultaneously or sequentially of at least one composition A and of at least one composition B packaged separately; (iii) or the application on the surface of the skin of a composition comprising in the same support at least one composition A and of at least one composition B; said composition A comprising in a cosmetically acceptable medium at least one cation Xn+ of valency n; said composition B comprising in a cosmetically acceptable medium at least one anion Ym- of valency m; the mixture of said composition A with said composition B comprising in addition at least one modulating agent (satisfies steps of claim 1) (pg. 1, line 10-25). When the cation Xn+ of valency n, the anion Ym- of valency m and the modulating agent are formulated in an anhydrous medium, they can be present within the same composition (i.e. a single composition). Alternatively, they can be formulated in two different compositions, one comprising the cation Xn+ of valency n (composition A), and the other comprising the anion Ym- of valency m (composition B). The modulating agent can however be present in the composition A and/or in the composition B (satisfies claim 2-5) (pg. 3, line 6-12). The cation Xn+ is preferably magnesium (pg. 5, line 5-6). Preferably, the composition A comprises at least one cation Xn+ of valency n in a content between 1 % and 25% by weight of the total weight of the composition (satisfies claim 9) (pg. 6, line 18-20). The anion Ym- is preferably phosphate (pg. 6, line 39-41). The anions are introduced into the composition in the form of water soluble salts (pg. 5, line 48-50). Preferably, the anion Ym- will be introduced in the form of an alkali metal salt, in particular potassium salt (pg. 7, line 18-19). The molar ratio between the cation Xn+ and the anion Ym- is more preferably from 4:1 to 1:4 (satisfies ratio of claim 1) (pg. 7, line 26-27). Preferably, the composition comprises at least one anion Ym- of valency n in a content between 0.5% and 30% by weight of the total weight of the composition (satisfies claim 10) (pg. 7, line 37-42). The modulating agent can be chosen from: - mono or polycarboxylic acids, optionally hydroxylated, in free or salified form; - amino carboxylic acids in free or salified form such as aspartic acid, glutamic acid, serine, alanine, dehydroalanine and the oligomers thereof, iminosuccinic acid and the derivatives thereof, ethylene diamine tetraacetic acid; - monosaccharides, oligosaccharides, polysaccharides and the derivatives thereof; - ascorbic acid; - phytic acid; - polymers or copolymers of carboxylic acids in free or salified form; - polymers or copolymers of amino carboxylic acids in free or salified form; - polymers or copolymers of maleic or itaconic acid; - polymers or copolymers of carboxymethylinulin (satisfies claim 11) (pg. 8, line 19-47). Preferably, the compositions A and/or B (or the ready-to-use composition or the single anhydrous composition) comprise less than 5% by weight of aluminum salt (satisfies claim 12) (pg. 13, line 38-39). Magnesium oxide was used in Inventive Composition B4-3 (pg. 40, line 20-25).
Ramos differs from the instant claims insofar as not disclosing wherein the water-soluble phosphate acid salt is potassium dihydrogen phosphate.
However, Aubrun teaches a method for the treatment of human perspiration which utilizes a composition A' comprising at least one polyvalent cation salt and a composition B' comprising at least one anion salt (Abstract). A preferably used polyvalent cation present in composition A' is magnesium (pg. 5, line 20-25). Preferably used anions in the salt present in the composition B' include phosphate and the salt will preferably be made of an alkali metal salt, in particular potassium salt (pg. 6, line 30-45). Preferred salts include NaH2PO4 and KH2PO4 (i.e., potassium dihydrogen phosphate) (pg. 7, line 1).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Ramos discloses wherein the composition comprises an alkali metal salt, in particular a potassium salt, as the anion Ym-. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Ramos to comprise KH2PO4 as the anion Ym-, since it is a known alkali metal salt, in particular a potassium salt, used as an anion for use in a composition comprising a polyvalent cation such as magnesium and an anion, to be utilized in a method for the treatment of human perspiration as taught by Aubrun.
Alternatively, it is obvious to replace one component for another equivalent component if it is recognized in the art that the two components are equivalent and is not based on the Applicant disclosure. See MPEP 2144.06. Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the composition of Ramos to contain KH2PO4 in place of NaH2PO4 because they are taught as equivalents by Aubrun.
Regarding claim 1 reciting wherein compositions A and B are devoid of chloride, Ramos in view of Aubrun does not require the presence of chloride. Ramos in view of Aubrun merely requires the use of at least one cation Xn+ of valency n, of at least one anion Ym- of valency m and at least one modulating agent (Abstract). Accordingly, a composition A and B being devoid of chloride would have been obvious.
Regarding the ratio between the water-soluble phosphate acid salt and magnesium oxide recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Ramos in view of Aubrun disclose that the molar ratio between the cation Xn+ (i.e., magnesium oxide) and the anion Ym- (i.e., KH2PO4) is more preferably from 4:1 to 1:4. Accordingly, because the ratio recited in the instant claims lies inside the range disclosed by Ramos in view of Aubrun, the range disclosed by Ramos in view of Aubrun meets the instantly recited limitation.
Regarding the amounts of magnesium oxide and water-soluble phosphate acid salt recited in instant claims 9-10, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition of Ramos in view of Aubrun preferably comprises the cation Xn+ (i.e., magnesium oxide) in a content between 1 % and 25% and the anion Ym- (i.e., KH2PO4) in a content between 0.5% and 30% by weight of the total weight of the composition. Accordingly, because the ranges recited in the instant claims overlap with the ranges disclosed by Ramos in view of Aubrun, the ranges disclosed by Ramos in view of Aubrun meet the instantly recited limitations.
Therefore, the combined teachings of Ramos and Aubrun render obvious claims 1-5 and 9-12.
Response to Arguments
Applicant’s arguments filed 7/13/26 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that Ramos allegedly explicitly discourages the use of magnesium oxide, as a threshold matter, the Examiner has not found where Ramos discloses this alleged explicit teaching. Further, Ramos specifically uses magnesium oxide in an inventive composition which one of ordinary skill in the art would not reasonably conclude to be a teaching away from using said component. Ramos’ use of magnesium oxide in an inventive composition would lead one of ordinary skill in the art to reasonably conclude that magnesium oxide performs adequately for Ramos’ use, even taking into consideration its solubility. This is especially true in light of the fact that Ramos does not criticize, discredit, or otherwise discourage the use of magnesium oxide. As recited in MPEP § 2123 (II), "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Finally, assuming, purely arguendo, that the inventive composition comprising magnesium oxide would not be ideal for use in Ramos’ composition, this would constitute a non-preferred embodiment. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123 (II). As such, this alleged non-preferred embodiment would not constitute a teaching away from using said embodiment. Furthermore, a reference is relied upon for all it teaches and suggests, even non-preferred embodiments. See MPEP § 2141.02 (VI). As such, where in this, purely arguendo, non-preferred embodiment Ramos suggests the use of magnesium oxide as the magnesium salt, it would have been obvious for one of ordinary skill in the art to have used it as such.
Regarding Applicant’s arguments that the cited prior art does not recognize a combination of effects such as a an antiperspirant effect and a deodorant effect, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144 IV. A reason to make a composition comprising the components of the instant claims does not have to be for the same reason as Applicant. Therefore, one of ordinary skill in the art ordinary skill in the art would reasonably conclude that the methods/compositions of Ramos in view of Aubrun comprising a combination suggested therein at a ratio suggested therein would satisfy the method/composition instantly claimed. The Examiner would further point to the fact that Ramos and Aubrun disclose cosmetic methods for the treatment of human perspiration and optionally body odors resulting from the perspiration. As such, it would be reasonable for one of ordinary skill in the art to conclude that they recognize a combination of an antiperspirant effect and a deodorant effect.
Regarding Applicant’s arguments with respect to the molar ratio claimed, the Examiner again points to the fact that a reference is relied upon for all it teaches and suggests, even non-preferred embodiments. See MPEP § 2141.02 (VI). Ramos in view of Aubrun disclose that the molar ratio between the cation Xn+ (i.e., magnesium oxide) and the anion Ym- (i.e., KH2PO4) is more preferably from 4:1 to 1:4. The claimed ratio lies within the range disclosed by Ramos in view of Aubrun and would, therefore, be obvious.
Regarding allegations of unexpected results, any differences between the claimed invention and the prior art may be expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The burden is on applicant to establish that the results are in fact really unexpected and of statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992). See also MPEP § 716.02. Applicant does not appear to have discussed same with respect to objective data. Applicant’s findings do not appear unexpected. For instance, the test product that contained magnesium oxide on its own performed just as well as one of the inventive samples and outperformed the other inventive sample. Additionally, when the KH2PO4 was used on its own it provided no deodorant activity whatsoever and performed like the control. The results presented in Example 3 demonstrate what appears to be a predictable decrease in deodorant activity as the proportion of KH2PO4 increases, which appears to be consistent with the continued dilution of the apparent effective component, which is MgO. Accordingly, one cannot conclusively point to the molar ratio as the factor contributing to the deodorant activity and it is unclear if the findings are indeed “unexpected”.
Regarding Applicant’s arguments that MgO alone has no antiperspirant effect, the Examiner submits that arguments presented by Applicant cannot take the place of evidence in the record. See also MPEP § 2145(I). Additionally, factually uncorroborated assertions (such as those referenced in the specification) cannot take the place of evidence in the record. See MPEP § 716.01 (c)(Il). The data presented by Applicant demonstrates what has been discussed above and does not reflect information with respect to the antiperspirant effect. As such, no determination can be made about that aspect.
Regarding Applicant’s arguments that Ramos does not recognize the molar ratio as a result effective variable, the Examiner submits that the rejection with respect to the molar ratio is based on the fact that the art discloses a ratio range where the claimed ratio range lies inside the disclosed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). It is understood that a component must be a result effective variable in order to make a routine optimization argument. However, this is not the basis of the argument of record. The basis of the argument of record is that the claimed weight ratio would have been obvious from one selecting a ratio from the range disclosed by the prior art and arriving at a weight ratio range that overlaps with the claimed range.
Regarding Applicant’s argument about the use of the Aubrun reference, the Examiner submits that Aubrun cures any alleged deficiencies of Ramos where Aubrun teaches that KH2PO4 is a known alkali metal salt, in particular a potassium salt, used as an anion for use in a composition comprising a polyvalent cation such as magnesium and an anion, to be utilized in a method for the treatment of human perspiration.
Regarding Applicant’s argument that Aubrun preferably uses NaHCO3, the Examiner respectfully submits that a reference is relied upon for all it teaches and suggests, even non-preferred embodiments. See MPEP § 2141.02 (VI). Ramos discloses the composition wherein the anion Ym- will be introduced in the form of an alkali metal salt, in particular potassium salt and Aubrun discloses wherein KH2PO4 since it is a known alkali metal salt, in particular a potassium salt, used as an anion for use in a composition comprising a polyvalent cation such as magnesium and an anion, to be utilized in a method for the treatment of human perspiration. Accordingly, it would have been obvious for one of ordinary skill in the art to have utilized potassium dihydrogen phosphate in the composition. Assuming, purely arguendo, that this were not the case, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the composition of Ramos to contain KH2PO4 in place of NaH2PO4 because they are taught as equivalents by Aubrun.
In response to Applicant’s arguments 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). As discussed above, where Aubrun discloses that KH2PO4 is a suitable alkali metal salt/potassium salts for use in a composition comprising a polyvalent cation such as magnesium and an anion, to be utilized in a method for the treatment of human perspiration and/or wherein they disclose it is an equivalent to NaH2PO4, it would have been obvious for one of ordinary skill in the art ordinary skill in the art to have used KH2PO4 in the composition of Ramos. Accordingly, no improper hindsight was used in the conclusion of obviousness in the rejection of record and no undue reliance on was placed Applicant’s disclosure.
Regarding Applicant’s argument that Ramos and Aubrun share an inventor, the Examiner submits that the fact that the two prior art references share an inventor does not negate the fact that Aubrun does unambiguously disclose that KH2PO4 is a known alkali metal salt used as an anion for use in a composition comprising a polyvalent cation such as magnesium and an anion, to be utilized in a method for the treatment of human perspiration within the four corners of its disclosure.
Regarding Applicant’s arguments with respect to the unpredictability of the art, the Examiner submits that obviousness does not require absolute predictability, and conclusive proof of efficacy is not required to show a reasonable expectation of success. See MPEP § 2143.02. Aubrun provides strong motivation to incorporate KH2PO4 where they disclose that it is a known alkali metal salt used as an anion for use in a composition comprising a polyvalent cation such as magnesium and an anion, to be utilized in a method for the treatment of human perspiration. Furthermore, Aubrun does not teach away from using KH2PO4 in such compositions but rather discloses it as a preferable salt. As such, in light of the Aubrun disclosure, one of ordinary skill in the art would have been sufficiently motivated to formulate Ramos’s composition to comprise KH2PO4 with a reasonable expectation of success.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive and the rejection is maintained.
Conclusion
Claims 1-5 and 9-12 are rejected.
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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, Sahana Kaup can be reached at (571) 272-6897. 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.
/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights