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 Claims
Claims 1-15 are pending, of which Claims 1 & 10 are independent. All claims are examined on the merits.
Claim Objections
Claims 3-4 are objected to because of the following informalities:
Re Claims 3-4, the list of menthol compounds do not need to be capitalized. Also in each claim, Examiner suspects that the compound of “menthol menthyl ether” (fourth in the list in claim 3 and third in the list in claim 4) should be “menthol methyl 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 12-15 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.
Re Claim 12, the claim depends on itself. It is believed that Claim 12 should depend from Claim 11. Additionally, the phrase "particularly" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 13-14 are rejected for being dependent on Claim 12. Additionally, since Claim 12 requires that the sanitary product be a diaper, it does not make sense that the sanitary product is also a panty liner or a sanitary pad (which is interpreted as a feminine pad for absorbing menses). For examination, it is assumed that Claims 13-14 each depends from Claim 11.
Claim 15 recites “particular female body odors,” which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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.
Claims 1-9, 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhuang et al. (US 2016/0235608).
Re Claim 1, Zhuang discloses a composition for fighting malodors (Abstract and e.g., [0008] “an extruded water-soluble article made using a homogeneous material”), comprising
(a) at least one physiological cooling agent ([0008] discloses “blocking agent” in the homogeneous material and [0151] discloses “blocking agents include menthyl acetate”), and
(b) at least one water-absorbing polymer and/or hydrogel ([0044] “the polymer used in the present disclosure is … polyacrylamide”; note that polyacrylamide is an absorbent polymer and is also a material recited in current Claim 6 as a water-absorbing polymer).
Re Claim 2, Zhuang discloses claim 1 and further disclosing wherein said malodors are selected from the group consisting of female body odors, urine (see Abstract), ammonia, protein degradation products, and mixtures thereof.
Re Claim 3, Zhuang discloses claim 1 and further disclosing wherein said at least one physiological cooling agent is a menthol compound ([0151] discloses “blocking agents include menthyl acetate) is selected from the group consisting of: menthol; menthol glyceryl acetal; menthol glyceryl ketal; menthol methyl ether; menthone glyceryl acetal; menthone glyceryl ketal; menthoxy-1,2-propandiol; menthoxy-2-methyl-1,2-propanediol; menthyl acetate; menthyl ethylene glycol carbonate; menthyl formiate; menthyl glutamate; menthyl glycerol carbonate; menthyl hydroxy isobutyrate; menthyl isobutyrate; menthyl lactate; menthyl malonate; menthyl methyl ether; menthyl N-ethyl oxamate; menthyl propylene glycol carbonate; menthyl pyroglutamate; menthyl-(2-methoxy)acetate; menthyl-(2-methoxyethoxy)acetate; menthyl succinate; O-menthyl succinic acid ester amide; O-menthyl succinic acid ester-NN-(dimethyl)amide; menthane carboxylic acid-N-(4-cyanophenyl)amide; menthane carboxylic acid-N-(4-cyanomethylphenyl)amide; menthane carboxylic acid-N-ethylamide (WS-3); (WS-4); N.sup.α-(menthane carbonyl) glycine ethylester (WS-5); (1R,2S,5R)—N-(4-Methoxyphenyl)-5-methyl-2-(1-isopropyl)cyclohexane-carboxamide (WS-12); (WS-14); 2,3-dimethyl-2-(2-propyl)-butyric acid-N-methylamide (WS23); isopulegol acetate; p-menthane-3,8-diol; Cubebol; 3-methyl-2(1-pyrrolidinyl)-2-cyclopentene-1-one); tetrahydropyrimidine-2-one; N-(2-(pyridin-2-yl)ethyl)-3-p-menthanecarboxamide; [(1R,2S, 5R)-2-isopropyl-5-methyl-cyclohexyl]2-(ethylamino)-2-oxo-acetate; and mixtures thereof.
Re Claim 4, Zhuang discloses claim 3 and further disclosing wherein said menthol compound ([0151] discloses “blocking agents include menthyl acetate) is selected from the group consisting of: menthol glyceryl acetal; menthol glyceryl ketal; menthol methyl ether; menthone glyceryl acetal; menthone glyceryl ketal; menthoxy-1,2-propandiol; menthoxy-2-methyl-1,2-propanediol; menthyl acetate; menthyl ethylene glycol carbonate; menthyl formiate; menthyl glutamate; menthyl glycerol carbonate; menthyl hydroxy isobutyrate; menthyl isobutyrate; menthyl lactate; menthyl malonate; menthyl methyl ether; menthyl N-ethyl oxamate; menthyl propylene glycol carbonate; menthyl pyroglutamate; menthyl-(2-methoxy)acetate; menthyl-(2-methoxyethoxy)acetate; menthyl succinate; O-menthyl succinic acid ester amide; O-menthyl succinic acid ester-NN-(dimethyl)amide; and mixtures thereof.
Re Claim 5, Zhuang discloses claim 4 and further disclosing wherein said menthol compound is menthyl acetate ([0151] discloses “blocking agents include menthyl acetate).
Re Claim 6, Zhuang discloses claim 1 and further discloses wherein said at least one water-absorbing polymer is selected from the group consisting of polyacrylates, polyacrylamides ([0044]), polyvinyl pyrrolidones, amylopectin, gelatin, cellulose, and mixtures thereof.
Re Claim 7, Zhuang discloses claim 1 and further discloses wherein said at least one water-absorbing polymer is selected from the group consisting of polyacrylamide copolymers (e.g., [0044] and [0046]), ethylene maleic anhydride copolymers, cross-linked carboxymethyl celluloses, polyvinyl alcohol copolymers, cross-linked polyethylene oxides, starch grafted copolymers of polyacrylonitrile, and mixtures thereof.
Re Claim 8, Zhuang discloses claim 1 and further disclosing compounds (a) and (b) in ratios by weight of from about 10:90 to about 5:95 ([0048] “the active agent(s) is present in a total amount of 2% to 10% by weight of the article”).
Re Claim 9, Zhuang discloses claim 1 and further discloses compounds (a) and (b) in ratios by weight of from about 0.1:99.9 to about 1:99 (Abstract).
Re Claim 11, Zhuang discloses a sanitary product (Abstract) comprising the composition of claim 1 (see discussion for Claim 1).
Re Claim 12, Zhuang discloses claim 11 and that the sanitary product is a diaper (see Abstract).
Re Claims 13-14, Zhuang discloses claim 11 and that the sanitary product is a panty liner or a sanitary napkin ([0074]).
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.
Claims 10 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhuang in view of Marchant et al. (US 2017/0319462).
Re Claim 10, Zhuang discloses a method for producing the composition of claim 1, comprising the following steps:
(a) providing at least one menthol derivative ([0151], “menthyl acetate”);
(b) providing at least one water-absorbing polymer and/or hydrogel ([0044] “polyacrylamide”); and
(c) bringing said at least one water-absorbing polymer and/or hydrogel into contact with said at least one menthol derivative ([0055]-[0056]).
Zhuang does not disclose that the menthol derivative is in an aqueous solution but does disclose that a homogeneous blend is formed from the two components and the blend is extruded, thus the blend must be a fluid.
Marchant discloses a transdermal patch in the form of a film formed from a polymer, such as polyacrylamide ([0208]), and an active agent, which may include menthol (e.g., [0115]), wherein the menthol may be in stock solution form and the mixed with the polymer until reaching a homogeneous blend before casting into a film ([0333]). It would have been obvious to one skilled in the art to glean from Marchant, in addition to Zhuang’s own teachings, to provide the menthol derivative in a solution form such that it can be easily blended with the polymer into a homogeneous mixture to form into a film.
Re Claim 15, the above combination teaches claim 10, and Zhuang also discloses an additional step of (d) fighting, masking and/or neutralizing malodors, by applying said thus-produced composition (see Abstract).
Conclusion
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/SUSAN S SU/Primary Examiner, Art Unit 3781 7 February 2026