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 .
Applicants' arguments, filed 04/30/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Specification
The amendment filed 04/30/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: According to 37 CFR 1.57(b) "an incorporation by reference must be set forth in the specification and must: (1) Express a clear intent to incorporate by reference by using words "incorporat(e)" and "reference" (e.g., "incorporate by reference"); and (2) Clearly identify the refernced patent, application, or publication". Applicant failed to incorporate by reference, in the specification, PCT/EP2022/070879, filed on July 26,2022, which claims priority to the European Patent Application No. 21189670.9. The incorporation by reference statement added after an application's filing date is improper because no new matter can be added to an application after its filing date.
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Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 102—New by Amendment
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 7-12, 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brooks (WO 2018/087148).
Brooks et al. teaches deodorant compositions comprising “at least one zinc carboxylate salt and aluminium chlorohydrate” and suspended in “at least essentially anhydrous solvent”, wherein the deodorant is a “deodorant spray” (Abstract).
The prior art teaches a specific embodiment below:
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(see p. 18, lines 10-15).
Here, the embodiment suffices as an ethanolic solution insofar as ethanol is the primary medium. Since water is not included, it has less than 0.25% by weight of free water excluding any volatile propellant that may be present therein, as per claim 2. The embodiment is an aerosol, as per claim 9, and comprises a propellant, i.e. pentane, as per claim 10. As an aerosol, the compositions suffices as homogenous, as per claim 11. The amount of zinc dicarboxylate is 4%, falling within ranges of claims 17 and 18.
The zinc neodecanoate addresses the limitation regarding zinc dicarboxylatge salt of a fatty acid having from 6 to 14 carbon atoms, and the crystallization inhibitor selected from neodecanoic acid. The amount of neodecanoate is sufficient to prevent or reduce crystal formation from the ethanolic solution in view of Table 1 of the instant specification indicating “No crystals formed” at 0.5% neodecanoic acid (see Specification at p. 9).
Excluding the propellant, the amount of ethanol in Sample 1, above, comes to about 76%, which falls within the range of claims 19 and 22.
The prior art is anticipatory insofar as it teaches an ethanolic deodorant comprising a zinc dicarboxylate salt of a fatty acid having from 6 to 14 carbon atoms, and a crystallization inhibitor selected from neodecanoic acid. Since the embodiment comprises neodecanoic acid, it anticipates claims 3 and 7 as well. Thus, the ratio of zinc dicarboxylate to crystallization inhibitor would be 1:1, as per claims 8 and 16.
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.
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) 1-4, 7-12, 15-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brooks (WO 2018/087148) as applied to claims 1-3, 7-12, 16-19 above.
Brooks, which is taught above, differs from claims 4, 15, 21-22 insofar as it does not teach where the crystallization inhibitor, i.e. neodecanoic acid, is from 0.08 to 3% or 0.05 to 3%. Instead, Brooks teaches, “the at least one zinc carboxylate salt is provided in an amount to obtain a concentration of the at least one zinc carboxylate salt in the deodorizing composition or deodorant consumer product of up to about 20 wt.%, more particular 2 to 10 wt%, more particularly still about 2 to 5 wt%, e.g. about 4 wt%” (p. 18, lines 4-7).
Given the preference for zinc neodecanoate, it would have been obvious and/or expected for the compositions to comprise neodecanoic acid, as per claims 1 and 22, insofar as zinc neodecanoate is soluble in ethanol. Accordingly, the artisan would have reasonably expected some level of dissociation of the salt resulting a combination of zinc needecanoate, free zinc, and free neodecanoic acid. Since the claimed range for the crystallization inhibitor lies inside the range for the at least one zinc carboxylate salt, a prima face case of obviousness exists.
In regard to claims 20, Brooks does not teach that ethanol comprises at least 70% or at least 90% by weight of the composition. Instead, Brooks teaches, “Suitable solvents include, but are not limited to, ethanol . . .” (p. 8, line 27). Brooks is silent concerning a range for ethanol; however, because it is taught to be a solvent, it would have been obvious to optimize a range for ethanol. Accordingly, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). Since the compositions of Brooks only require two ingredients, i.e. at least one zinc carboxylate salt and aluminum chlorohydrate (Abstract) that can amount to less than 10% of the deodorant (Example 1), it would have been obvious for the amount of ethanol to fall within the claimed range of at least 90 wt%, excluding any volatile propellant present therein.
Previous
2) Claim(s) 1-4, 7-12, 15-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brooks (WO 2018/087148) in view of Springer et al., (US 2009/0136437).
Brooks et al. is taught above regarding claims 1-4, 7-12, 15-22. However, claim interpretation may suggest an additional branched chain fatty acid other than zinc neodecanoate (which suffices as a crystallization inhibitor as per claims 3-7).
That being said, Springer et al. teaches cosmetic compositions comprising a “deodorant active compound” (Abstract) and “ethanol” as a solvent (see p. 6, para. [0092]).
Springer et al. includes “isostearic acid” as an emollient (p 3, para. 28; see also p. 9, para. [0127}, Formulation Example 5, where isostearic acid is use at 1%).
“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (see MPEP 2144.07).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to ad isosteric acid as emollient to the compositions of Brooks et al. based on its art recognized suitability for its intended use in deodorant compositions, as taught by Springer et al. The artisan would have reasonably expected success with the combination insofar as Brooks teaches “Deodorizing composition and deodorant consumer products of the present invention may contain an emollient” (p. 13, liens 24-25).
Accordingly, it would have been obvious to modify the emollient in the compositions, as per claim 8, for improving “good skin feel or skin moisturization” as discussed Brooks et al. (p. 14, lines 11-12).
Response to Arguments
Applicant argues that the rejection of the claims over Brooks and Springer should be withdrawn since the isostearic acid in Springer is found in a list of suitable emollients. Applicant postulates, “Such ambiguity leaves a long laundry list of ingredients without clear motivation for one skilled in the art to pursue a particular subset of said laundry list over another as a starting point for experimentation because the general conditions and parameters were not sufficiently disclosed in the cited reference” (p. 9).
The Examiner disagrees.
It is well settled that it is obvious for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as the prior art teaches that the selection will result in the disclosed effect. See Merck & Co., v. Biocrafi Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious."); See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims 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 this case, selection of isostearic acid from the list of emollients in the reference does not make its selection less obvious. It would have been obvious to use isostearic acid, as emollient, in the compositions of Brooks absence of any unexpected results.
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.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/WALTER E WEBB/Primary Examiner, Art Unit 1612
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