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 Status
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1, 3-5, 7-11, 14-15 and 18 are under current examination.
Applicants' remarks and amendments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Maintained Rejections
Claim Rejections - 35 USC § 112(b)-indefinite (maintained)
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.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3 recite the limitation "the magnesium salt is magnesium oxide”. There is insufficient antecedent basis for this limitation in the claim because claim 1 recites at least one magnesium salt. Therefore, it is unclear if “the magnesium salt” is referring back to the one or more than one magnesium salt required by claim 1. It is suggested that the claims should recite “the at least one magnesium salt is magnesium oxide”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5, 7-11, 14-15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Moujahed et al. (United States patent Publication 2019/0350824) in view of Banowski et al. (United States Patent Publication 2020/0170896).
Moujahed et al. teach anhydrous deodorant compositions comprising magnesium salt, a hydrocarbon based plant oil and at least one fatty acid ester, see paragraphs [0021]-[0025]. The magnesium salt includes magnesium oxide and can be present from 2-30% by weight, see paragraphs [068]-[0070]. The composition can comprise fatty alcohols including cetearyl alcohol (also known as cetostearyl alcohol- a C12-22 fatty alcohol), see paragraph [0197]. The anhydrous composition can comprise waxes of plant, animal, mineral and/or synthetic origin and are inclusive of cetearyl alcohol fatty alcohol and hydrogenated sunflower, see paragraphs [0185]-[0206]. Examples of hydrocarbon based plant oil include shea butter and rapeseed oil, see paragraphs [0072]-[0090]. The hydrocarbon based plant oils are added to reduce white marks after application, see paragraph [0073]. Moujahed et al. teach that the composition can comprise water absorbers including perlites, see paragraphs [0219]-[0246]. In preferred embodiments the composition is free of aluminum and its complexes, see paragraph [0339]. The composition can comprise hydrocarbon based oils in the alternative to silicone oil, thus the composition has embodiments which can utilize hydrocarbon based oils and does not contain a silicone oil, see paragraphs [00111]-[0129].
Moujahed does not expressly teach the presence of maize starch present from 15-40% by weight with a ratio of magnesium salts to starch being less than or equal to 1.
However, Banowski et al. teach anhydrous deodorant compositions which comprise water absorbing compounds such as perlites or Zea Mays corn starch (also known as maize starch), see paragraph [0067]. The water absorbing compound is preferably starch which can be present from 0-30% by weight, see paragraph [0074].
It would have been prima facie obvious to substitute the perlites in the anhydrous deodorant of Moujahed et al. for maize starch (corn starch) in amounts from 0-30% by weight.
One of ordinary skill in the art would have been motivated to do so because corn starch is taught as being a suitable water absorption compound and can be present from 0-30% by weight per the teachings of Banowski et al. The substitution of perlite water absorption compound for corn starch yields predictable results to one of ordinary skill in the art with imparting water absorption properties.
There would have been a reasonable expectation of success given both Moujahed et al. and Banowski et al. teach anhydrous deodorant compositions which contain water absorption compounds.
The combination of Moujahed et al. teaching 2-30% by weight magnesium oxide together with Banowski et al. teaching 0-30% by weight of corn starch overlaps and renders obvious the claimed range of magnesium salts from 5-25% by weight or 7-20% by weight, and starch from 15-40% by weight and a ratio inclusive of 1:1 as both Moujahed and Banowski have upper limits of 30% by weight and Banowski’ s range of 0-30% is inclusive of 2-30% by weight. 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).
Response to remarks
Regarding the 112(b) Applicants note that the amendments to the claims have overcome the rejections.
Examiner respectfully submits that claim 3 should recite “the at least one magnesium salt is magnesium oxide”.
Regarding the 103 rejection, Applicants argue that Moujahed describes anhydrous compositions having at least 0.3% of magnesium salt, hydrocarbon plant oil and fatty acid ester. All of the examples in Moujahed comprise MgO within a range of 5-25% by weight. However, Moujahed does not tech corn starch in amounts of 15-40% by weight as the reference does not even teach corn starch. Applicants argue that Moujahed also does not disclose at least one C12-22 fatty alcohol. Applicants argue that the examiner has not articulated why one of ordinary skill in the art would look to an alternative water absorbing compound to replace the perlite of Moujahed. Applicants argue that obviousness requires an additional showing that a person of ordinary skill would have selected and combined the prior art elements, citing Unigene Laboratories Inc V. Apotex Inc.
In response, Examiner respectfully submits that while Moujahed does not teach corn starch as the water absorber, Moujahed teaches perlite as a water absorber. Banowski et al. teach anhydrous deodorant compositions which comprise water absorbing compounds such as perlites or Zea Mays corn starch (also known as maize starch), see paragraph [0067]. The water absorbing compound is preferably starch which can be present from 0-30% by weight, see paragraph [0074]. Banowski recognizes the functional equivalence of corn starch and perlites in anhydrous deodorant compositions as these are both recognized a water absorbing compounds. Since Moujahed teaches water absorbing perlites one of ordinary skill in the art would have had a reasonable expectation of success in substituting art recognized functionally equivalent water absorbing compounds. Express suggestion to substitute one equivalent for another needed not be present to render such substitution obvious, see MPEP 2143. Regarding the at least one C12-C22 fatty alcohol, Moujahed expressly teaches the elected cetearyl alcohol, see paragraph [0197].
Applicants argue that the rejection utilizes hindsight.
Examiner respectfully disagrees and notes 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).
Applicants argue that the combination of starch and fatty alcohol of C12-22 makes it possible to obtain a stable solid stick with satisfactory deposit and deodorant properties (example 1, formula A as compared to C1 and C2). Based on Moujahed a person might be led to prepare compositions comprising at least 0.3% magnesium salt, hydrocarbon based plant oil and ester and in view of Banowski, a person of ordinary skill would be at best led to introduce calcium carbonate. There is no motivation to combined 5-25% of at least one magnesium salt with starch and fatty alcohol as claimed.
Examiner respectfully submits that Moujahed expressly teaches that their deodorant composition can advantageously reduce tack and produce a non greasy deposit, see paragraph [0027]. Furthermore, there is motivation to combine at least one magnesium salt with a water absorber which in the alternative to perlite includes starch with the reasonable expectation of maintaining water absorbing properties. The magnesium salt includes magnesium oxide and can be present from 2-30% by weight, see paragraphs [068]-[0070] of Moujahed. Although Moujahed teaches perlite as the water absorber, Banowski teaches perlite or corn starch are both art recognized water absorbers for deodorant compositions. In addition, the examiner brings to applicant's attention that 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, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Here, the substitution of one water absorption compound for another would have yielded predictable results.
In response to applicant's argument that Banowski at best teaches one of ordinary skill would at best be led to introduce calcium carbonate, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, both Moujahed and Banowski teach anhydrous deodorant products. Moujahed teaches perlite as the water absorber, however Banowski makes it known that both perlite and corn starch are art recognized water absorbers thus rendering it obvious to substitute the perlite of Moujahed for the corn starch of Banowski.
Conclusion
Applicant’s arguments/remarks are considered unpersuasive. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Currently, all claims are rejected and no claims are allowed.
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/ Primary Examiner, Art Unit 1619