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 .
Status of Application
Claims 1-20 are pending in this application. No claim amendments have been submitted. All pending claims are under examination in this application.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on January 29, 2024 and October 15, 2024 is acknowledged. Signed copies are attached to this office action.
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.
Claims 1-20 are 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.
Regarding claims 1, 4-5, 9-12 and 20, the claims recite “at least about” or “at most about”, however said recitation is indefinite since “at least” indicates the recited hardness must be the minimum claimed amount, however, “about” indicates a range reasonably close to the claimed about. Therefore, it is unclear what the metes and bounds of the recited hardness is.
Claims not specifically recited are included in this rejection as they do not correct the indefiniteness of the recited claims.
Claim Objections
Claim 8 is objected to because of the following informalities: “cetyl alcohol” is misspelled as “cetly alcohol”. Appropriate correction is required.
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2020/0170901).
Banowski discloses a deodorant cosmetic composition comprising calcium silicate and baking soda (sodium bicarbonate) (abstract).
The deodorant composition is disclosed as preferably anhydrous (paragraph 0012).
Emollients can include natural ingredients, such as soybean oil, cottonseed oil, sunflower oil, palm oil, palm kernel oil, coconut oil, linseed oil, almond oil, castor oil, corn oil, rapeseed oil (paragraph 0048), for example.
The anhydrous deodorizing cosmetic composition contain at least one structurants. Suitable structurants are waxes, including esters and natural vegetable waxes and animal waxes (paragraph 0060). Examples include candelilla wax (68.5-72.5˚C), carnauba wax (80-88˚C), Japan Wax (48-56˚C), sugar cane wax (74-82˚C), cork wax (82-177˚C), and sunflower wax (74-77˚C), which all have melting points of at least 50˚C.
Other preferred lipid or wax components which can be added as structurants include linear primary C12-24 alkanols, such as cetyl alcohol, stearyl alcohol, and mixtures thereof (paragraph 0065).
Regarding claim 2, preference is given to deodorant active ingredients that are no antiperspirant aluminum and/or aluminum zirconium salts (paragraph 0017).
Regarding claim 3, while palm oil is disclosed as a suitable emollient, it is not a required component. Additionally, none of the recited examples include palm oil.
Regarding claims 4-5 and 9-12, the claims recite properties of the claimed deodorant stick. It is the position of the Examiner that since the prior art renders obvious to instant composition, it would necessarily have the claimed properties. Applicant’s attention is directed to MPEP 2112.01 I which recites where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 6 and 8, as noted above, Other preferred lipid or wax components which can be added as structurants include linear primary C12-24 alkanols, such as cetyl alcohol, stearyl alcohol, and mixtures thereof (paragraph 0065).
Regarding claim 7, the amount of the structurants is preferably in the range from about 1.0-60% by weight (paragraph 0066).
Regarding claim 13, ester waxes include isostearyl alcohol (paragraph 0047).
Regarding claim 14, as noted above, the deodorant composition includes sodium bicarbonate.
Regarding claim 15, the baking soda may advantageously be in powder form (paragraph 0029).
Regarding claim 16, water absorbing compounds including starches, including corn starch, arrowroot starch, tapioca starch, for example (paragraph 0068).
Regarding claim 17, as noted above, baking soda (sodium bicarbonate) is disclosed.
Regarding claims 18-19, other emollients include triglycerides of linear or branched, saturated or unsaturated, optionally hydroxylated C8-30 fatty acids, provided that these are liquid under normal conditions. Particularly preferred are synthetic triglyceride oils, especially Capric/Caprylic triglycerides with unbranched fatty acid residues and glyceryl triisostearin and glyceryl tri(2-ethyl hexanoate) with branched fatty acid residues (paragraph 0048).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have prepared a deodorant stick composition of the instant claims. While Banowski does not exemplify the instant composition, he does disclose the suitable alternatives for components in addition to preferred species.
Claims 1-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sturgis et al. (US 10,555,884).
Sturgis’s Table 4 discloses deodorant sticks comprising:
Mineral oil, Caprylic/capric triglycerides (a natural or naturally derived oil);
Magnesium carbonate and magnesium hydroxide and piroctone olamine (an antimicrobial); and
0.2% behenyl alcohol.
Additional structurants include waxes (column 14, lines 19-33).
Sturgis discloses piroctone olamine is an effective antimicrobial. The combination of piroctone olamine and other antimicrobials can provide significant antimicrobial activity (column 1, lines 23-34).
The formulas disclosed in table 4 do not include water (anhydrous)
Regarding claim 2, aluminum is disclosed as an optional component (column 14, line 60 through column 16, line 10).
Regarding claim 3, palm derived components are not disclosed or required.
Regarding claims 4-5 and 9-12, the claims recite properties of the claimed deodorant stick. It is the position of the Examiner that since the prior art renders obvious to instant composition, it would necessarily have the claimed properties. Applicant’s attention is directed to MPEP 2112.01 I which recites where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 6 and 8, examples of suitable additional structurants include stearyl alcohol and other fatty alcohols; hydrogenated castor wax; hydrocarbon waxes include paraffin wax, beeswax, carnauba, candelilla, spermaceti wax, ozokerite, ceresin, baysberry, synthetic waxes such as Fisher-Tropsch waxes, and microcrystalline wax; polyethylenes with molecular weight of 200 to 1000 daltons; solid triglycerides; behenyl alcohol, or combinations thereof (column 16, lines 19-35).
Regarding claim 7, the additional structurant may be present in an amount from 1% to about 10%, by weight of the composition.
Regarding claims 14 and 17, Formula’s 1 and 5 in Table 4 disclose the use of magnesium carbonate and magnesium hydroxide and piroctone olamine. Additional antimicrobials include hexamidine, magnesium carbonate, zinc carbonate, thymol, magnesium hydroxide, dead sea salt, a combination of magnesium hydroxide and magnesium carbonate, calcium carbonate, sodium carbonate, magnesium carbonate hydroxide, partially carbonated magnesium hydroxide, polyvinyl formate, salicylic acid, niacinamide, phenoxyethanol, eugenol, linolenic acid, dimethyl succinate, citral, triethyl citrate, sepiwhite, cinnamon essential oil, cinnamon bark essential oil, cinnamic aldehyde, and combinations thereof (column 8, lines 35-48).
Regarding claim 15, the antimicrobials may be used as powders (column 8, lines 50-51).
Regarding claims 18-19, as noted above, Sturgis’s Table 4 discloses deodorant sticks comprising Caprylic/capric triglycerides (a natural or naturally derived oil).
Regarding claim 20, as noted in the instant specification, piroctone olamine, salycilic acid, thymol, calcium carbonate, for example are materials with a water solubility of below 90 g/L at 25˚Celcius.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have prepared a deodorant stick composition of the instant claims. While Sturgis does not exemplify the instant composition, he does disclose the suitable alternatives for components in addition to preferred species.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,833,232. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the patented claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA S MERCIER whose telephone number is (571)272-9039. The examiner can normally be reached M-F 6:30 am to 4 pm EST.
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/MELISSA S MERCIER/ Primary Examiner, Art Unit 1615