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 .
DETAILED ACTION
Claims 1 and 3-20 are currently pending and amendments to the claims filed on 11/25/2025 are acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/25/2025 was filed before the mailing date of the instant action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Withdrawn rejections:
Applicant's amendments and arguments filed 11/25/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn. In particular, the double patenting rejection with respect to 17/276836 has been withdrawn due to the abandonment of 17/276836.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
New Grounds of Rejection --- as necessitated by Amendment
Claim Objections
Claim 3 is objected to a minor informality.
Claim 3 recites “the non-ionic surfactant is selected from polyethylene glycol dodecyl ether … hepta(oxyethylene)dodecyl ether”, but which would be better to write “the fatty alcohol ethoxylate is selected from polyethylene glycol dodecyl ether … hepta(oxyethylene)dodecyl ether”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 20 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.
Claim 20 recites “base formulation” in line 2, but it is not clear whether base formulation is the antiperspirant composition or other composition except for propellant. Appropriate correction is requested.
Claim Rejections - 35 USC § 103
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 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 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1 and 3-20 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Cropper et al. (US2017/0181935A1) in view of Gale et al. (US2012/024409A1, IDS of 06/15/2023).
Applicant claims the below claim 1 filed on 11/25/2025:
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Level of Ordinary Skill in the Art (MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a medical/pharmaceutical/cosmetic personal care research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Cropper teaches a particle to absorb and retain odiferous compounds comprising core comprising a first hydrophobic polymer and shell comprising a second hydrophobic polymer structure (claim 1 of prior art) and the composition is used for personal care composition, preferably selected from antiperspirant ([0133]); the core of the composition contains as a benefit active agent an antiperspirant active (claim 6 of prior art) wherein the antiperspirant active includes aluminum, zirconium and mixed aluminum/zirconium salts, including both inorganic salts, salts with organic anions and complexes, and preferred astringent salts include aluminum, zirconium and aluminum/zirconium halides and halohydrate salts, such as chlorohydrates ([0165]) which reads on the claimed metal based antiperspirant active in an amount of 0.r to 50% ([0164]) which overlaps the instant range of 1 to 50% (instant claims 1, 5, 6, 7 and 15 – antiperspirant active and its amount); the composition further comprises natural oils/extracts such as sunflower seed oil, coconut oil, safflower oil, etc. in an amount of 10% which touches the claimed 10% ([0076]-[0077] and [0161]) (instant claims 1, 8-10 and 16 – natural oils and amount thereof); the composition further comprises antioxidant ([0076]) and BHT (butyl hydroxy toluene) in an amount of 0.01 to 0.1% ([1076]) which overlaps the instant range of 0.01 to 2% (instant claims 1, 11 and 12 – antioxidant and its amount); the composition further comprises non-ionic surfactant having HLB value in the region of 6 to 10 ([0178]), e.g., steareth-2 ([0179]) and [0255]) which overlaps the instant HLB range of less than 11; the non-ionic surfactant includes polyethylene glycol sorbitan monolaurate and monopalmitate (Tween 20 and 40), Brij™-35 for the formation of stable emulsion ([0117] and [0119]) and alkyl polyglycolides [0137] and [0151]) in an amount of 1-50% ([0160]) which overlaps the instant range of 0.5 to 5% (instant claims 1 and 4 – non-ionic surfactant and amount thereof); the composition can be anhydrous ([0163]) and many suitable aerosol compositions are anhydrous ([0180]) and thus do not contain a discernible aqueous phase, and but if present, any water can be contained from 10% ([0163]) in which the anhydrous composition reads on the claimed range of less than 10% (instant claim 1 – water and its amount); the composition the composition may be aerosol composition or stick form ([1080]) (instant claim 13); and the embodiment includes applying the composition to the woven cotton textile, which would typically include washing, rinsing, and drying ([0064], [0190], [0199]-[0200], [0255]-[0256], etc.). and thus, it would be obvious to modify the teachings of Cropper with application of the composition to the person body and then the washing/rinsing/drying is typical process of fabrics (instant claim 14); embodiment (e.g., Table 4) discloses compositions of unfragranced antiperspirant composition containing sunflower oil, surfactant (=emulsifiers) such as steareth-2 and 20, aluminum chlorohydrate, particles 1 or 2 and water ([0255]). The amounts of said ingredients overlap the claimed ranges. MPEP 2144.05 states that [I]n 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); the composition is in the form of gel ([0132])(instant claim 17); composition further contains gellants or thickeners ([0171]) and humectant such as sorbitol or glycerin ([0136]) which reads on the claimed gellant (instant claim 18); the composition may be aerosol compositions contain propellant ([0180]) (instant claim 19); in the aerosol composition, the base composition contains antiperspirant active 5-60% and carrier oils 50-95% ([0180]) and thus, when the propellant is present, their ratio of propellant and base composition (5% active + 50% oil) may be 45 to 55 which is within 95:5 to 5:95. MPEP 2144.05 above (instant claim 20).
However, Cropper does not expressly teach specific combination (a)-(e) of antiperspirant composition of instant claim 1; and species of antioxidant of instant claim 11 other than BHT. The deficiencies are cured by Gale.
Gale discloses an antiperspirant composition that reduces/eliminates yellowing on clothing (title) and the antiperspirant composition contains base, antiperspirant active, at least one antioxidant; the antioxidant includes a combination of butylated hydroxytoluene (BHT) and pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (claim 2 of prior art) in an amount of 0.05 to 0.5% or 0.03 to 0.5% ([0010]); the base includes all other materials in an antiperspirant composition ([0019]); the composition can be in the form of stick, a roll-on or an aerosol ([0019]); the antiperspirant composition can be used in a method to reduce and/or eliminate yellowing of clothing, and the antiperspirant composition can be applied to a person in a typical application to an axillary area, and the person then wears clothing, and during wearing, some of the antiperspirant composition is transferred to the clothing in areas that are in contact with the area where the antiperspirant composition is applied ([0097]).
It would have been obvious to further define the species of antioxidant with the specific species of Gale in order to prevent oxidation of the composition.
Further, as to the claimed embodiments of (a)-(e), one of ordinary skill would be motivated to provide such embodiments this because a reference is analyzed using its broadest teachings. MPEP 2123 [R-5].
Where, as here, the specific combination of features claimed is disclosed within the broad teachings of the reference but the reference does not disclose the specific combination of elements in a specific embodiment or in a working example, “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989).
However, "when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious". KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious", the relevant question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that "[a] person of ordinary skill is ... a person of ordinary creativity, not an automaton." Id. at 1742.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the disclosed elements and embodiments of antiperspirant active, natural oil, antioxidant, non-ionic surfactant with or without water of the cited references Cropper and Gale to prepare the instantly claimed composition. Such a rearrangement by a person of ordinary skill in the art who is not an automaton to yield the instantly claimed invention is within the purview of the ordinary skilled artisan upon reading the cited reference and would yield predictable results.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments have been considered, but are not persuasive.
Applicant argues that Cropper teaches non-ionic surfactants having both HLB value of greater than and less than 11 while the instant specification demonstrates the significance of HLB less than 11 in light of whitening effects and stain removal. (see instant Tables 2-3); Cropper discloses more than 10% of water and while the claimed invention is effective only for anhydrous compositoin (e.g., Example 11), but not for water-containing composition.
The Examiner responds that Cropper teaches alkyl polyglycosides (APGs), and the surfactant of HLB 6-10 can be used and in the Example, Cropper teaches streath-2 (Table 4 –[0255]) which has HBL of less than 11; and even if unexpected results using surfactant using HLB of less than 11 would be considered, it is noted that the tested data of Tables 2, 3, 4 and 7 are not commensurate of the scope of instant claims because the data requires specific amounts of (a)-(e); and the composition of Cropper can also be anhydrous ([0163]), and in this respect, please note that it is well-established that consideration of a reference is not limited to the preferred embodiments or working examples, but extends to the entire disclosure for what it fairly teaches, when viewed in light of the submitted knowledge in the art, to a person of ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
In light of the foregoing, applicant’s arguments are not persuasive.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 3-16 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending application No. 17/628917 in view of Cropper.
Although the claims at issue are not identical, they are not patentably distinct from each other because both set claims require antiperspirant active, natural oil, carrier, and antioxidant. But copending ‘917 does not contain non-ionic surfactant as claimed. The deficiency is cured by Cropper disclosing non-ionic surfactant such as Brij and alkyl polyglucosides having HLB of less than 11 ([0117], [0119], [0137], [0151] and [0178]) for stabilize emulsion. Thus it would be obvious to further add such non-ionic surfactant to the composition of copending ‘917 to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending ‘917 subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Claims 1 and 3-16 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-13, and 15 of copending application No. 18/865623 in view of Cropper.
Although the claims at issue are not identical, they are not patentably distinct from each other because both set claims require metal-based antiperspirant active, natural oil, carrier, nonionic surfactant and antioxidant. But copending ‘623 does not contain nonionic surfactant as claimed but contains silicone nonionic surfactant. However, taking certain nonionic surfactant would be a matter of design or choice, and thus, replacement of silicone nonionic surfactant with the claimed non-ionic surfactant would have yielded no more than the predictable nonionic surfactant effects.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending ‘623 subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Response to Arguments
For the reasons set forth above, this double patenting rejection has maintained as Applicants have deferred to rebut the rejection under Provisional Rejection, Obviousness Type Double Patenting.
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 KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613 .