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 1-6,8-10, 12-14, 20, 21, 24, 27, 28, 30, and 32-33 are pending and under current examination.
Information Disclosure Statements
Information Disclosure Statements (IDS) filed on 09/11/2023; 10/15/2025 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claim Objections
Claim 8 is objected to because of the following informalities: For readability of the claims, all abbreviations should be spelled out the first time the term appears in the claim. For example, The AMP in the algin aluminum starch ocetenylsuccinate AMP-acrylates copolymer of claim 8 at line 11 should be defined as aminomethyl propanol (AMP). PVA/MA should be spelled out, PPG-17/IPDI/DMPA should spell out the name of the polymer and PPG-26 and PVP should spell out the name where it first appears as polyvinylpyrrolidone (PVP).
ACRYLATES/OCTYLACRYLAMIDE COPOLYMER at lines 3-4 of claim 8 should not be capitalized because the copolymer is not a trademark.
Claim 8 at line 8 should have a comma after octylacrylamide copolymer.
PVP CROSSPOLYMER in claim 8 should not be in capital letters as this is not a trademark (see claim 8 last line at page 2).
HEXADECANE COPOLYMER in claim 8 should not be in capital letters as this is not a trademark (see claim 8 line 6 at page 3).
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 6, 8, 10,12-13,14, 21, 24, 27-28, 30, 32-33, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more.
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature, or natural phenomenon (Step 2A, Prong One).
In the instant application, the claims recite the following limitations: Claim 1 recites an antiperspirant composition comprising: an active component comprising aluminum salt, magnesium salt, or mixture thereof, film former and extract solution comprising nymphaea coerulea flower extract and nelumbo nucifera flower extract.
Claims 2-3 and 6 and 10 are directed to concentrations of each. Claim 8 is inclusive of pullulan. Claim 10 recites the presence of glycerin and propane diol with claim 13 specifying concentrations of each extract and the propanediol and glycerin. Claim 14 recites solvent. Claim 21 comprises a perfume, claim 24 a preservative. Claim 27 requires an inactive component in the recited concentration for instant claim 28. Claim 30 recites the active component concentration. Claim 32 recites a propellant which is present from 15-100% in instant claim 33.
The claims are directed to a judicial exception such as a natural phenomenon (e.g., product of nature) as the only compositional requirement set forth in the instant claims is that the composition comprises a combination of naturally occurring ingredients of magnesium or aluminum salt, a film former, and an extract solution of nymphae coerulea and nelumbo nucifera flower extract.
As evidenced by Longwood Gardens, the nelumbo nucifera is native to Asia and northern Australia and the Nympheae caerulea is a botanical name for waterlily also called blue lotus of the Nile, see pages 1-4. The instantly claimed flower extracts are derived from natural components.
Laird teaches natural deodorant stones made of aluminum called crystalized alum, naturally mined aluminum salt, see pages 1-5. Thus, aluminum salts can comprise naturally occurring products.
As evidenced by instant claim 8 the film former is inclusive of natural compounds such as pullulan. As evidenced by Grebow, pullulan is a natural water soluble polysaccharide made by the fungus Aureobasidium pullulans, see pages 2-3. As evidenced by Alexis, nitrogen is a natural propellant which makes up 78% of air, see page 4.
The solvent of the instant claims is not define and is inclusive of water.
The preservative and antioxidant are generic in the claims and include polyphenols which have strong antioxidant activity and act as a preservative compounds, see section 2.1 polyphenols of Parveen et al, see pages 4-6.
As evidenced by Ruggeri, propanediol is a natural solvent taken from corn sugar, see pages 1-2.
As evidenced by Vankat, glycerin occurs naturally in plants, see page 1.
Accordingly, the instant claims provide a mixture of naturally occurring ingredients.
MPEP 2106.04(c) states that the markedly different characteristics analysis is part of Step 2A Prong One: “Where the claim is to a nature-based product produced by combining multiple components (e.g., a claim to "a probiotic composition comprising a mixture of Lactobacillus and milk"), the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than its component parts. For instance, for the probiotic composition example, the mixture of Lactobacillus and milk should be analyzed for markedly different characteristics, rather than the Lactobacillus separately and the milk separately. See subsection II, below, for further guidance on the markedly different characteristic analysis.”
Further, from MPEP 2106.04(c): “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is not a product of nature exception.”
The guidelines for performing the markedly different characteristics analysis, include (a) selecting the appropriate naturally occurring counterpart(s) to the nature-based product limitation, (b) identifying appropriate characteristics for analysis, and (c) evaluating characteristics to determine whether they are "markedly different".
Regarding (a), MPEP 2106.04(c) recites: “When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. For example, assume that applicant claims an inoculant comprising a mixture of bacteria from different species, e.g., some bacteria of species E and some bacteria of species F. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, i.e., each naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature); Ambry Genetics, 774 F.3d at 760, 113 USPQ2d at 1244 (although claimed as a pair, individual primer molecules were compared to corresponding segments of naturally occurring gene sequence); In re Bhagat, 726 Fed. Appx. 772, 778-79 (Fed. Cir. 2018) (non-precedential) (comparing claimed mixture of lipids with particular lipid profile to "naturally occurring lipid profiles of walnut oil and olive oil").”
In the instant case, the closest counterparts to the claimed mixture are the individual components of the mixture: of natural occurring flower extracts, natural preservative, natural aluminum salt, natural film former, natural solvent and preservative and antioxidant and propellant.
Regarding (b), MPEP 2106.04(c) recites: “Appropriate characteristics must be possessed by the claimed product, because it is the claim that must define the invention to be patented. Cf. Roslin, 750 F.3d at 1338, 110 USPQ2d at 1673 (unclaimed characteristics could not contribute to eligibility). Examiners can identify the characteristics possessed by the claimed product by looking at what is recited in the claim language and encompassed within the broadest reasonable interpretation of the nature-based product. In some claims, a characteristic may be explicitly recited.”
In the instant case, the appropriate characteristic for composition is it is used as an antiperspirant, however magnesium salts can be naturally occurring thus does not impart markedly different characteristics to the naturally claimed composition.
Regarding (c), MPEP 2106.04(c)recites: “The final step in the markedly different characteristics analysis is to compare the characteristics of the claimed nature-based product to its naturally occurring counterpart in its natural state, in order to determine whether the characteristics of the claimed product are markedly different. The courts have emphasized that to show a marked difference, a characteristic must be changed as compared to nature, and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an incidental change in a characteristic of the naturally occurring counterpart. Myriad, 569 U.S. at 580, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, the inventor must have caused the claimed product to possess at least one characteristic that is different from that of the counterpart.
If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception. If there is a change in at least one characteristic as compared to the counterpart, and the change came about or was produced by the inventor’s efforts or influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception.”
A review of the instant disclosure does not indicate the claimed amounts achieve a markedly different characteristic for the naturally occurring composition thus there does not appear to be any markedly different characteristics.
Consequently, the claimed composition lacks markedly different characteristics and is a product of nature exception (Step 2A, Prong 1: YES)
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2).
This judicial exception is not integrated into a practical application because there are no additional elements recited in the claims beyond the judicial exception. From MPEP 2106.04(d): “Because a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.” (Step 2A, Prong 2: NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B).
As noted above, there are no additional elements recited in the claims beyond the judicial exception, and a judicial exception alone is not eligible subject matter (Step 2B: NO). The claims do not recite anything else, compositionally or structurally, which provides an inventive concept that departs from merely reciting a composition containing all naturally occurring components. The amounts recited in the dependent claims do not appear to add significantly more.
Therefore, simply combining the naturally occurring ingredients for an antiperspirant would not provide significantly more than the judicial exception.
Therefore, the claims 1-3, 6, 8, 10,12-13,14, 21, 24, 27-28, 30, 32-33 are not patent eligible subject matter under 35 USC § 101.
Examiner suggests one potential amendment to the claims can include a non-naturally occurring compound present (e.g. aluminum sesquichorohydrate).
Claim Rejections - 35 USC § 112(b) -indefinite
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 8, 10, and 12-13 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.
Claim 8 recites “"acrylates copolymer (and) acrylate/polytrimethylsiloxymethacrylate copolymer" in line 2 and 'acrylates/polytrimethylsiloxymethacrylate copolymer (and) laureth-1 phosphate" in line 9 and Polyurethane (and) AMP-acrylates copolymer at the 4th line up from the bottom of page 2 of claim 8. Thus, as the claim recites “and” in parenthesis it is unclear whether the limitation "(and)" in parentheses is meant to be limitation in the claim or not. It is suggested that Applicants can remove the parenthesis.
Claim 8 recites copolymers thereof at the second to last line, however claim 8 already recites copolymers for the recited polymers, so it is unclear how copolymers thereof adds to the already recited copolymers recited in claim 8. For example, acrylates copolymer is already a copolymer thereof. It is unclear if “copolymers thereof” is for the acrylates copolymer or if the copolymers thereof is meant for acrylates in combination with a different copolymer claimed. Furthermore, claim 8 recites “in specific claims, the film former can include sodium polyacrylate” in the last two lines. Here, it is unclear whether the sodium polyacrylate is part of the claimed invention or not, See MPEP § 2173.05(d). Applicants are reminded that each claim starts with a capital letter and ends with a period and that periods may not be used elsewhere in the claims except for abbreviations (MPEP 608.01 (m)).
Claim 10 recites the limitation "the extract is in the range from about 0.10% wt. to about 5% wt. of the active component”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the extract is referring to the extract solution, the nymphaea coerulea flower extract, or the nelumbo nucifera flower extract. For the purpose of examination the claim will be interpreted as “the extract solution” earlier recited in claim 1.
Claim 12 recites wherein the extract further comprises propanediol and glycerin. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the extract” is referring to the extract solution, the nymphaea coerulea flower extract, or the nelumbo nucifera flower extract. For the purpose of examination the claim will be interpreted as “the extract solution” earlier recited in claim 1. Claim 13 does not rectify the indefinite issue of claim 12 whether the propane diol and glycerin are part of the extract solution or the individual extracts.
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 1-6,8-10, 12, 14, 20, 21, 24,27, 28, 30 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (DE102017215011A1) in view of Novoseletsky (Provital Group Launches Ingredient to Reduce Skin Shine).
Banowski et al. teach antiperspirant compositions which comprise sodium polyacrylate (film former) present from 0.1-15% by weight, see abstract and page 15. The composition comprises an antiperspirant active such as aluminum sesquichorohydrate or aluminum chlorohydrate present from 2-40% by weight, see pages 12, 18 and 22. Aluminum sesquichorohydrate has the formula of Al2(OH)4Cl2XH20 wherein Q=chlorine, x=4 y=2, x+y=6. Aluminum chlorohydrate has the formula of Al2 (OH)5 Cl 2H20 meeting where Q is a chlorine, x is 5, y is 1, x+y=6, and wherein X is 2. Propellant (inactive component) can be present from 10-95% by weight which overlaps and renders obvious the instantly claimed inactive component from about 70-90% by weight, see pages 18-19. The formulation may further comprise at least one plant extracts taken from the flowers of plants present from 0.01-5% by weight, see pages 7 and 13-15. The antiperspirant can comprise an aerosol form, see pages 18-19. The aluminum antiperspirant and the sodium polyacrylate together (active components) encompass 2.1-55% by weight thus rendering obvious the active component of claim 1 present in a range of about 10-30% by weight of the composition. 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). The formulation can further comprise preservatives and perfume, see pages 2-3, 5, 8, 11-14, 17-18, and 20. Carriers include water (solvent), see pages 6-7.
Banowski does not expressly teach nymphaea coerulea flower extract and nelumbo nucifera flower extract as the flower extracts in the presence of glycerin and propanediol.
However, Novoseletsky teaches that NELUPRURE® containing propanediol, glycerin and the extracts of nelumbo nucifera flower extract with nymphaea coerulea flower extract provide the cosmetic benefits of reduction in sebum production and inflammation, see page 1.
Accordingly, it would have been prima facie obvious to provide the at least one flower extract of Banowski et al. as a combination of nymphaea caerulea, and nelumbo nucifera flower extract in propanediol and glycerin to help reduce over production of sebum in the cosmetic formulation of Banowski et al.
There would have been a reasonable expectation of success because the cosmetic formulation of Banowski further includes flower extracts.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (DE10201721501A1) and Novoseletsky (Provital Group Launches Ingredient to Reduce Skin Shine) as applied to all claims 1-6,8-10,12,14,20,21,24,27,28,30, and 32-33 above, and further in view of Happi as evidenced by SpecialChem (NELUPRURE® Provital).
The teachings of Banowski et al. and Novoseletsky are discussed above.
Neither Banowski et al. and Novoseletsky teach that the nymphaea coerulea flower extract can comprise about 0.000075 to about 0.04% by weight the extract; the nelumbo nucifera flower extract can comprise about 0.00075 to about 0.04% by weigh the extract and the propanediol from about 0.08 to about 4% by weight the extract and glycerin from about 0.01 to about 1% by weight of the extract.
However, as evidenced by SpecialChem, the NELUPRURE® product of Novoseletsky has from 0.5-1% by weight nymphaea coerulea flower extract, from 0.5-1% nelumbo nucifera flower extract, 70-90% propanediol, and from 10-30% glycerin, see page 1.
Happi teaches that NELUPRURE® suggested use is at a level of 2% the composition, see page 17. NELUPRURE® is a blended extract from two types of lotus flower, that delivers several benefits to the skin resulting in a flawless complexion. NELUPRURE® balances sebum secretion, diminishes skin shine and reduces blemishes. It reduces the expression of the leptin cellular receptor in sebocytes, which prevent it from triggering sebum production and inflammatory processes that cause skin blemishes. The results of in vivo studies on both male and female subjects showed that NELUPRURE® reduces excess sebum production in the skin and the processes that cause inflammation of the pores, leaving a smooth, radiant and pure complexion. NELUPRURE® yields a clearer, more radiant complexion after just one application, see page 17.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to provide the cosmetic antiperspirant NELUPRURE® product of Banowski et al. in view of Novoseletsky at 2% by weight because Happi teaches the suggested use of NELUPRURE® is at 2% for cosmetic products.
Providing the NELUPRURE® ingredients at 2% by weight wherein there is 0.5% nymphaea coerulea flower extract, 0.5% nelumbo nucifera flower extract, 70% propanediol, and 10% glycerin (i.e. 81 parts total for a 2% solution) would equal 0.0123% wt. of the nymphaea coerulea flower extract, 0.0123% of nelumbo nucifera flower extract, 1.728% of propanediol and 0.247% weight of the glycerin. These amounts overlap and render obvious the range of about 0.000075 to about 0.04% by weight the extract; the nelumbo nucifera flower extract can comprise about 0.00075 to about 0.04% by weigh the extract and the propanediol from about 0.08 to about 4% by weight the extract and glycerin from 0.01-1% by weight of the extract. 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). Furthermore, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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.
Claims 1-6,8-10,12-14,20,21,24,27,28,30 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-16, 18-19 of copending Application No. 18994988 (reference application) in view of Banowski et al. (DE102017215011A1), Novoseletsky (Provital Group Launches Ingredient to Reduce Skin Shine), Happi, and as evidenced by SpecialChem (NELUPRURE® Provital).
Claims 1-6,8-10,12-14,20,21,24,27,28,30 and 32-33 are directed to an invention not patentably distinct from 13-16, 18-19 of commonly assigned Application No. 18994988 Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘988 claim an antiperspirant comprising Nelumbo nucifera and Nymphaea caerulea flower extracts in overlapping ranges wherein the compositions can comprise a spray. The claims of Application ‘988 does not recite the presence of aluminum sesquichorohydrate, film forming polymer of sodium acrylate in the recited amount or the presence of glycerin and propanediol, preservative and fragrance.
Banowski et al. teach antiperspirant compositions which comprise sodium polyacrylate (film former) present from 0.1-15% by weight, see abstract and page 15. The composition comprises an antiperspirant active such as aluminum sesquichorohydrate or aluminum chlorohydrate present from 2-40% by weight, see pages 12, 18 and 22. Aluminum sesquichorohydrate has the formula of Al2(OH)4Cl2XH20 wherein Q=chlorine, x=4 y=2, x+y=6. Aluminum chlorohydrate has the formula of Al2 (OH)5 Cl 2H20 meeting where Q is a chlorine, x is 5, y is 1, x+y=6, and wherein X is 2. Propellant (inactive component) can be present from 10-95% by weight which overlaps and renders obvious the instantly claimed inactive component from about 70-90% by weight, see pages 18-19. The formulation may further comprise at least one plant extracts taken from the flowers of plants present from 0.01-5% by weight, see pages 7 and 13-15. The antiperspirant can comprise an aerosol form, see pages 18-19. The aluminum antiperspirant and the sodium polyacrylate together (active components) encompass 2.1-55% by weight thus rendering obvious the active component of claim 1 present in a range of about 10-30% by weight of the composition. 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). The formulation can further comprise preservatives and perfume, see pages 2-3, 5, 8, 11-14, 17-18, and 20. Carriers include water (solvent), see pages 6-7.
Novoseletsky teaches that NELUPRURE® containing propane diol, glycerin and the extracts of Nelumbo Nucifera flower extract with Nympheae Coerulea Flower extract provide the cosmetic benefits of reduction in sebum production and inflammation, see page 1.
Accordingly, it would have been obvious to provide the antiperspirant of Application ‘988 with aluminum sesquichorohydrate in amounts from 2-40% by weight, and sodium polyacrylate from 0.1-15% by weight, to include propellant from 10-90% by weight, preservative and perfume because Banowski teaches antiperspirant compositions which comprise aluminum salts as the antiperspirant which can further comprise preservatives and perfumes.
As evidenced by SpecialChem, the NELUPRURE® product of Novoseletsky has from 0.5-1% nymphaea coerulea flower extract, from 0.5-1% nelumbo nucifera flower extract, 70-90% propanediol, and from 10-30% glycerin.
Happi teaches that NELUPRURE® suggested use is at a level of 2% the composition, see page 17. NELUPRURE® is a blended extract from two types of lotus flower, that delivers several benefits to the skin resulting in a flawless complexion. NELUPRURE® balances sebum secretion, diminishes skin shine and reduces blemishes. It reduces the expression of the leptin cellular receptor in sebocytes, which prevent it from triggering sebum production and inflammatory processes that cause skin blemishes. The results of in vivo studies on both male and female subjects showed that NELUPRURE® reduces excess sebum production in the skin and the processes that cause inflammation of the pores, leaving a smooth, radiant and pure complexion. NELUPRURE® yields a clearer, more radiant complexion after just one application, see page 17.
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the cosmetic antiperspirant product of Application ‘988 which contains nymphaea coerulea flower extract and nelumbo nucifera flower extract in 2% by weight because Happi teaches the use of NELUPRURE® at 2% for cosmetic formulations which contains said extracts in solvent improves skin sebum secretion and complexion.
Providing the NELUPRURE® ingredients at 2% by weight wherein there is 0.5% nymphaea coerulea flower extract, 0.5% nelumbo nucifera flower extract, 70% propanediol, and 10% glycerin (i.e. 81 parts total for a 2% solution) would equal 0.0123% of nymphaea coerulea flower extract, 0.0123% of nelumbo nucifera flower extract, 1.728% of propanediol and 0.247% of the glycerin.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18994988 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-3, 6,8-10,12-13,14,20,21,24,27-30,32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3-9,11-18, and 21-22 of copending Application No. 18565018 (reference application) in view of Jimenez et al. (UsPgPub 20230310289-effective filing date of 12/2020).
Claims 1-2, 4, 6,8-10,12-13,14,20,21,24,27-30,32-33 are directed to an invention not patentably distinct from claims 1,3-9,11-18, and 21-22 of commonly assigned Application No. 18565018. Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of Application ‘018 recite antiperspirant compositions which comprise Nymphaea coerulea flower extract with Nelumbo nucifera extract in overlapping amounts. Both the instant claims and that of Application ‘018 can contain film former from 2-20% such as sodium polyacrylate. The active component is present in overlapping amounts, and the extract comprises propanediol and glycerin in overlapping amounts (see claim 9 of Application ‘018). Both Applications contain propellant in overlapping ranges.
The difference between the instant claims and that of Application ‘018 is the inclusion of magnesium salt as the active component since the instant claims do not require aluminum to be present in claim 1. The claims of Application ‘018 require an aluminum free formulation. Furthermore the instant claims have the inclusion of a perfume and preservative.
Jimenez et al. teach that antiperspirant active agents comprise magnesium or aluminum which are present in the alternative to each other and comprise 1-30% by weight, see claims 1 and 11 and paragraph [0037]. Magnesium actives reduce odor causing bacteria on the skin, see paragraph [0157]. The formulation can comprise a fragrance, see paragraph [0003], [0164] and embodiment 1.39.
Accordingly it would have been obvious to incorporate magnesium metal containing antiperspirant actives within the antiperspirant formulation of Application ‘018 in amounts of from 1-30% by weight because magnesium is taught in the alternative to aluminum to provide antiperspirant active properties. It would have been obvious to incorporate fragrances (perfume) and preservatives because Jimenez teaches their suitable incorporation for antiperspirant products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18565018 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions
Conclusion
Claims 1-6,8-10,12-14,20,21,24,27,28,30, and 32-33 are rejected and no claims are allowed.
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
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