DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed December 11, 2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 4, 7, and 14 are cancelled.
Claims 1 – 3, 5, 6, 8 – 13, and 15 – 21 are examined here-in.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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 non-obviousness.
Claims 1 – 3, 5, 6, 8 – 13, and 15 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Guenin (US 6,036,964, of record) and further in view of Tamarkin (US 8,636,982 B2, of record).
Guenin teaches an antiperspirant or deodorant composition (abstract, column 2 lines 63 – 67). Guenin teaches the composition has 40 – 50% isopropyl myristate (or a C16 – C24 fatty alcohol), 1 – 3% sorbitan stearate, 3 – 4% polysorbate-60, and 10 – 25% water (column 1 lines 8 – 9, column 10 lines 15 – 20). Guenin does not teach the inclusion of aluminum or zirconium.
Guenin teaches the composition can be in the form of a solid, soft solid, gel, or cream (column 8 line 55 to column 10 line 30).
Guenin does not teach the organic compound is a fatty acid, that the composition is in the form of an aerosol, or a method of reducing perspiration.
Tamarkin teaches the missing elements of Guenin.
Tamarkin teaches the inclusion of a fatty alcohol or fatty acid in the amount of about 35% by weight, but with a possible range of about 30 to 60% by weight (column 3 lines 5 – 8, column 4 lines 27 – 30, column 5 lines 8 – 13, column 7 lines 10 – 13, column 11 lines 32 – 36, column 20 lines 22 – 32, column 43 lines 10 – 11, column 66 lines 24 – 25, claims 1, 4, 11, 49, 57).
Tamarkin teaches that a saturated fatty acid such as isostearic or stearic acid is preferable for the composition because it has high stability, which leads to improved skin feeling (column 20 lines 39 – 47).
Tamarkin teaches the inclusion of one or more surfactants in the composition in the possible amount of 0.05 to 20% (column 26 lines 50, 65 – 66, column 32 lines 52 - 55). Tamarkin teaches that surfactants influence foam formation and that the combination of non-ionic surfactants which have significant hydrophobic and hydrophilic components increases the emulsifier or foam stability (column 27 lines 14 – 16, column 31 lines 7 – 14). Tamarkin teaches the composition may include a first surfactant that has an HLB value of less than 9 and a second surfactant having an HLB value of 9 or more (column 31 lines 16 – 20).
Tamarkin teaches sorbitan stearate and sorbitan monooleate as two non-ionic surfactants with an HLB of less than 9 and polysorbates 60 and 80 as non-ionic surfactants with an HLB greater than 9 (column 10 lines 11 – 42, column 28 lines 25 – 42, column 31 lines 1 – 3, claims 8, 51).
Tamarkin teaches that increasing the amount of surfactant from 3% to 10% leads to foam of good quality in the case of polysorbate 80 (column 60 lines 29 – 34).
Tamarkin teaches the composition is filled into an aerosol container and pressurized with a propellant (column 15 lines 30 – 32, column 52 lines 44 – 47).
Tamarkin teaches a method of treating, ameliorating, or preventing a disorder by administering the composition to a target site which may be the skin(column 5 lines 64 – 67, column 15 lines 9 – 12, line 38).
Claims 1 – 3, 5, 6, 8 – 13, and 15 – 21 are rendered prima facie obvious over the teachings of Guenin and Tamarkin because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results (MPEP 2143(I)(a)). A person of ordinary skill in the art would be motivated to modify the antiperspirant composition of Guenin with Tamarkin’s teachings to include a fatty acid because Tamarkin teaches that the inclusion of a saturated fatty acid such as isostearic or stearic acid is advantageous because they have high stability, which leads to improved skin feeling (column 20 lines 39 – 47). Furthermore, Tamarkin teaches that the fatty component may be a fatty acid or a fatty alcohol, thus substitution of Tamarkin’s fatty acid for Guenin’s fatty alcohol would be prima facie obvious according to MPEP 2143(i)(b), because Tamarkin suggests that the fatty acid and fatty alcohol are interchangeable (column 3 line 5). The combination of Guenin and Tamarkin’s teachings is prima facie obvious because all the claimed elements (e.g., hydrophobic sorbitan esters, hydrophilic sorbitan esters, fatty acids, fatty alcohols) were known in the prior art (e.g., cosmetic compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., an antiperspirant composition) to one of ordinary skill in the art.
Guenin’s teaching for an antiperspirant or deodorant composition with 40 – 50% isopropyl myristate (or a C16 – C24 fatty alcohol), 1 – 3% sorbitan stearate, 3 – 4% polysorbate-60, and 10 – 25% water (column 1 lines 8 – 9, column 10 lines 15 – 20) in combination with Tamarkin’s teaching for isostearic acid as a fatty acid in the amount of about 35% by weight, but with a possible range of about 30 to 60% by weight (column 3 lines 5 – 8, column 4 lines 27 – 30, column 5 lines 8 – 13, column 7 lines 10 – 13, column 11 lines 32 – 36, column 20 lines 22 – 32 lines 39 - 47, column 43 lines 10 – 11, column 66 lines 24 – 25, claims 1, 4, 11, 49, 57) would lead a person of ordinary skill in the art to include isostearic acid in Guenin’s composition instead of isopropyl myristate. The substitution of one known element for another to yield a predictable results is prima facie obvious according to MPEP 2143(I)(b). Therefore, Tamarkin’s teaching for isostearic acid reads on instant claim 1.
Sorbitan stearate is a hydrophobic sorbitan ester and polysorbate-60 is a hydrophilic sorbitan ester, therefore the inclusion of these compounds in amounts of 1 – 3% and 3 – 4%, respectively, as taught by Guenin (column 1 lines 8 – 9, column 10 lines 15 – 20) reads on parts i), ii), and a weight ratio of 1:10 to 5:1 as recited in instant claim 1. As an example, 3% sorbitan stearate and 3% polysorbate-60 is a weight ratio of 1:1, which falls within the recited range of 1:10 to 5:1. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Guenin’s teaching of 1 – 3 % sorbitan stearate (column 10 lines 15 – 20) reads on instant claim 2.
Guenin’s teaching of 3 – 4% polysorbate-60 (column 10 lines 15 – 20) reads on instant claim 3.
Guenin’s teaching of a C16 – C24 fatty alcohol (column 10 lines 15 – 20) reads on instant claim 5, which recites isostearyl alcohol (18 carbons).
Tamarkin’s teaching that a composition which includes 30% fatty acid and 10% surfactant leads to good foam quality (column 60 lines 29 – 34) is a weight ratio of organic compound to surfactant of 3:1. Tamarkin’s teaching that a composition with a weight ratio of 3:1 overlaps on the instantly claimed range of weight ratio of 1:5 to 5:1 as recited in claim 6. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Guenin’s teaching of 1 – 3% sorbitan stearate and 3 – 4% polysorbate-60 (column 10 lines 15 – 20) falls within the claimed ranges of 2 to 80 wt. %, anticipating instant claims 8 and 9.
Guenin’s teaching for 40 – 50% isopropyl myristate or a C16 – C24 fatty alcohol (column 10 lines 15 – 20) falls within the claimed range of 5 to 90 wt. %, anticipating instant claim 10.
Guenin’s teaching that the composition can be in the form of a solid, soft solid, gel, or cream (column 8 line 55 to column 10 line 30) reads on instant claim 11.
Tamarkin’s teaching the composition is filled into an aerosol container and pressurized with a propellant (column 15 lines 30 – 32, column 52 lines 44 – 47) reads on instant claim 12.
Tamarkin’s teaching for a method of treating, ameliorating, or preventing a disorder by administering the composition to a target site which may be the skin (column 5 lines 64 – 67, column 15 lines 9 – 12, line 38) reads on instant claim 13.
Tamarkin’s teaching for the inclusion of a fatty alcohol or fatty acid in the amount of about 35% by weight, but with a possible range of about 30 to 60% by weight (column 3 lines 5 – 8, column 4 lines 27 – 30, column 5 lines 8 – 13, column 7 lines 10 – 13, column 11 lines 32 – 36, column 20 lines 22 – 32, column 43 lines 10 – 11, column 66 lines 24 – 25, claims 1, 4, 11, 49, 57) and for the inclusion of one or more surfactants in the composition in the possible amount of 0.05 to 20% (column 26 lines 50, 65 – 66, column 32 lines 52 - 55) reads on instant claim 15. As an example, fatty acid in the amount of 35% and total surfactants in the amount of 11.7% is a weigh ratio of 3:1, overlapping the instantly claimed range of 1:3 to 3:1 as recited in claim 15. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Guenin’s teaching of 1 – 3% sorbitan stearate, and 3 – 4% polysorbate-60 (column 10 lines 15 – 20), falls within the claimed ranges of 1:5 to 5:1 and 1:3 to 3:1, reading on instant claims 16 and 17. As an example, 3% sorbitan stearate and 3% polysorbate-60 is a weight ratio of 1:1, which falls within the recited ranges.
Tamarkin’s teaching that the combination of the surfactants may be in the amount of 0.05 to 20% (column 32 lines 52 - 55) reads on instant claims 18 and 19. A combination of surfactants in the amount of 0.05 to 20% overlaps on the instantly claimed amounts of 5 to 40 wt. % and 5 to 20 wt. % for hydrophobic and hydrophilic sorbitan esters as recited in instant claims 18 and 19. For example, according to Tamarkin’s teaching hydrophobic sorbitan ester could be in the amount of 10% and hydrophilic sorbitan ester could be in the amount of 10% to total 20% surfactant. A person of ordinary skill in the art would be motivated to include surfactants in these amounts because Tamarkin teaches that the identity and amount of surfactants influences foam quality ( column 10 lines 11 – 42, column 27 lines 14 – 16, column 28 lines 25 – 42, column 31 lines 1 – 3, column 31 lines 7 – 14, 16 – 20, column 60 lines 29 – 34, claims 8, 51).
Guenin’s teaching for 40 – 50% isopropyl myristate or a C16 – C24 fatty alcohol (column 10 lines 15 – 20) and Tamarkin’s teaches the inclusion of a fatty alcohol or fatty acid in the amount of about 35% by weight, but with a possible range of about 30 to 60% by weight (column 3 lines 5 – 8, column 4 lines 27 – 30, column 5 lines 8 – 13, column 7 lines 10 – 13, column 11 lines 32 – 36, column 20 lines 22 – 32, column 43 lines 10 – 11, column 66 lines 24 – 25, claims 1, 4, 11, 49, 57) each overlap the claimed range of 20 to 80 wt. %, reading on instant claim 20.
Guenin’s teaching for 40 – 50% isopropyl myristate or a C16 – C24 fatty alcohol (column 10 lines 15 – 20) and Tamarkin’s teaches the inclusion of a fatty alcohol or fatty acid in the amount of about 35% by weight, but with a possible range of about 30 to 60% by weight (column 3 lines 5 – 8, column 4 lines 27 – 30, column 5 lines 8 – 13, column 7 lines 10 – 13, column 11 lines 32 – 36, column 20 lines 22 – 32, column 43 lines 10 – 11, column 66 lines 24 – 25, claims 1, 4, 11, 49, 57) each overlap the claimed range of 40 to 80 wt. %, reading on instant claim 21.
Examiner’s Reply to Attorney Arguments Dated December 11, 2025
Applicant’s arguments have been considered but are moot because the new grounds of rejection specifically addresses the claims as presently amended.
However, for the sake of compact prosecution, the Examiner will address Applicant’s arguments that Tamarkin does not remedy the deficiencies of Guenin (Remarks page 8), that a person of ordinary skill in the art would not have been motivated to combine Guenin and Tamarkin (Remarks page 8), and that the Examiner “relies on applicant’s disclosure rather than the prior art reference” (Remarks page 9).
With regards to Applicant’s argument that Tamarkin does not remedy the deficiencies of Guenin (Remarks page 8), the Examiner disagrees because Tamarkin teaches the missing elements of Guenin and provides motivation to modify the composition of Guenin, as discussed in the body of the rejection above. In brief, a person of ordinary skill in the art would be motivated to modify the antiperspirant composition of Guenin with Tamarkin’s teachings to include a fatty acid because Tamarkin teaches that the inclusion of a saturated fatty acid such as isostearic or stearic acid is advantageous because these fatty acids have high stability, which leads to improved skin feeling (column 20 lines 39 – 47). Furthermore, Tamarkin teaches that the fatty component may be a fatty acid or a fatty alcohol, thus substitution of Tamarkin’s fatty acid for Guenin’s fatty alcohol would be prima facie obvious according to MPEP 2143(i)(b), because Tamarkin suggests that the fatty acid and fatty alcohol are interchangeable (column 3 line 5). Therefore, the combination of Guenin and Tamarkin’s teachings is prima facie obvious because all the claimed elements (e.g., hydrophobic sorbitan esters, hydrophilic sorbitan esters, fatty acids, fatty alcohols) were known in the prior art (e.g., cosmetic compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., an antiperspirant composition) to one of ordinary skill in the art.
With regards to Applicant’s argument that a person of ordinary skill in the art would not have been motivated to combine Guenin and Tamarkin (Remarks page 8): The Examiner disagrees because according to MPEP 2141.01(a), a reference is analogous art to the claimed invention if it is 1) from the same field of endeavor (even if it addresses a different problem) or 2) the reference is reasonably pertinent to the problem faced by the inventor. In the instant case, each of Guenin and Tamarkin are directed to cosmetic compositions containing hydrophobic sorbitan esters, hydrophilic sorbitan esters, fatty acids, and/or fatty alcohols. Furthermore, Tamarkin teaches the possible inclusion of antiperspirant compounds, (column 13 line 6, column 16 line 42, column 38 line 36), thereby suggesting that the cosmetic composition would be suitable for use as an antiperspirant.
With regards to Applicant’s argument that the Examiner “relies on applicant’s disclosure rather than the prior art reference” (Remarks page 9), the Examiner disagrees. The presentation of the facts as taught by the prior art references discussed above illustrates how each of the claim limitations have been rendered obvious by the prior art. Applicant’s disclosure was not relied upon for any of the prior art teachings.
Furthermore, Applicant argues that the combination of at least one hydrophobic sorbitan ester having an HLB value between 1 and 7 and at least one hydrophilic sorbitan ester having an HLB value between 7 and 20 results in unexpected results being “capable of forming aggregation/agglomeration when in contact with aqueous saline media” (Remarks page 8).
As an initial matter, the Examiner notes that a proper side-by-side comparison to the closest prior art as required by MPEP 716.02(e) does not appear to have been made. In Example 1 of the Specification, Table 2 appears to present three compositions A, B, and C, which are not compositions of the invention. In a capillary test, the results of Table 4 indicate that compositions A, B, and C did not agglomerate like compositions 1 – 6 of the invention. The Examiner disagrees that the comparison of compositions A, B, and C to compositions 1 – 6 is a comparison to the closest prior art of Guenin and Tamarkin, which each teach the claimed ingredients in the claimed amounts.
Furthermore, assuming purely arguendo that a proper side-by-side comparison was made, Applicant has not fully explained the significance of the data in arriving at the conclusion that results are unexpected as required by MPEP 716.01(c)(II) and 716.02(b)(II). Applicant does not explain how the combination of a hydrophobic sorbitan ester and hydrophilic sorbitan ester with an organic compound results in the allegedly unexpected aggregation/agglomeration. As such, it is not clear to the Examiner how Applicant’s argument is supported by the proffered evidence.
Finally, and purely arguendo, even if Applicant has in fact shown unexpected results (of which the Examiner is not persuaded at this time), the Examiner notes that Applicant’s alleged showing is in regards to aggregation/agglomeration behavior resulting from the combination of Span80, Tween80, and oleic acid which does not appear to be “reasonably representative” of the claims in their current scope. See MPEP 716.02(d). The Applicant has allegedly demonstrated unexpected aggregation/agglomeration behavior resulting from contacting a simulated sweat composition with the combination of Span80, Tween80, and oleic acid, however if this is in fact true it would only have been shown for a specific combination of hydrophobic sorbitan ester, hydrophilic sorbitan ester, and organic compound (Example 1 Tables 2 – 4). It is unclear that a composition containing the specific combination Span80, Tween80, and oleic acid would be reasonably representative of compositions containing other hydrophobic sorbitan esters, hydrophilic sorbitan esters, or organic compounds, thereby falling within the broader scope of what is presently claimed.
Double Patenting (Maintained)
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Double Patenting over U.S. Application No. 18/565,098
Claims 1 – 3, 5, 6, 8 – 13, and 15 – 21 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/565,098.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to an antiperspirant composition comprising at least one hydrophobic sorbitan ester having an HLB value between 1 and 7; at least one hydrophilic sorbitan ester having an HLB value between 5 and 20; at least one organic compound selected from C7 – C24 fatty acid or fatty alcohol, wherein the organic compound is selected from oleic acid, linoleic acid, ricinoleic acid, isostearic acid, palmitoleic acid, arachidonic acid, timnodonic acid, docosahexaenoic acid, octanoic acid, vaccenic acid, and erucic acid; and a cosmetically acceptable carrier wherein the composition comprises no higher than 40% water.
Conflicting claim 1 is drawn to an antiperspirant composition comprising lecithin; a non-ionic surfactant having an HLB value lower than 4.7 or higher than 8.6; at least one organic compound selected from C10 – C22 fatty acid or fatty alcohol; and a cosmetically acceptable carrier wherein the composition comprises less than 30 wt. % water.
The inclusion of non-ionic surfactant, one organic compound, a cosmetically acceptable carrier, and less than 30 wt. % water in the conflicting claim reads on the hydrophobic sorbitan esters, at least one organic compound, a cosmetically acceptable carrier, and less than 40% water as recited in the instant claim. The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of lecithin and instant claim 1 does not. Although these claims differ, the requirement for lecithin in the conflicting claims reads on the “comprising” language of the instant claims.
Conflicting claim 2 recites the surfactants have HLB from 1 to 4.5 or from 9 to 20, which reads on the recited values of 1 to 7 and 7 to 20 as recited in instant claim 1.
Conflicting claim 3 recites the inclusion of sorbitan ester, reading on instant claims 1 and 3.
Conflicting claim 4 recites the organic compound is a fatty acid selected from oleic acid, linoleic acid, ricinoleic acid, isostearic acid, palmitoleic acid, arachidonic acid, timnodonic acid, docosahexaenoic acid, octanoic acid, vaccenic acid, and erucic acid, reading on instant claim 1.
Conflicting claims 7 and 17 recite the amount of non-ionic surfactant is in the range of 3 to 80 wt. % and 5 to 40 wt. %, respectively, reading on instant claims 8, 9, 18, and 19.
Conflicting claims 8 and 18 recite the inclusion of 3 to 80 wt. % and 20 to 70 wt. % organic compound, respectively, reading on instant claims 10, 20, and 21.
Conflicting claim 9 recites the antiperspirant composition is in the form of lotion, spray, firm solid, soft solid, cream or an emulsion packaged in a roll-on applicator, reading on instant claim 11.
Conflicting claim 10 recites the composition includes a propellant and is in the form of an aerosol, reading on instant claim 12.
Conflicting claims 11 and 12 recite a method for applying the composition, reading on instant claim 13.
Conflicting claim 19 recites the inclusion of polysorbates 20 and 80 reading on instant claim 3.
Conflicting claim 20 recites the composition is less than 15 wt. % water, overlapping on the instantly claimed amount of less than 40% as recited in instant claim 1.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments Dated December 11, 2025
According to MPEP 804(1), a complete response to a non-statutory double patenting rejection is either a showing that the claims subject to the rejection are patentably distinct from the reference claim or the filing of a terminal disclaimer. The Examiner notes that Applicant’s argument is not a showing that the claims are patentably distinct from the reference claims. As such, the non-statutory double patenting rejections are maintained.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612