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 .
Claim Status
Claims 1-20 are pending.
Restriction/Election of Species
Applicant’s election without traverse of i) water (solvent) ii) esters (perfume raw materials) iii) ethanol (short-chain alcohol) and iv) silica (metal oxide/semi-metal oxide) in the reply filed on April 30, 2026 is acknowledged.
Claims 12-13 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 30, 2026.
Consequently, claims 1-11, 14-17, and 19-20 are under consideration to the extent of the elected species, e.g., water as the solvent, esters as the perfume raw materials, ethanol as the short-chain alcohol, and silica as the metal oxide/semi-metal oxide.
Specification
The use of the term Kathon®, Bronidox L®, Bronopol®, Glydant Plus®, ect, which are a trade name or a mark used in commerce, has been noted in this application, e.g., see pp 9-10. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 8 is 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 is indefinite in reciting “about 5% to about 10% ethanol.” The claim is unclear because no units for the percent are given (e.g. vol/vol, wt/vol, wt/wt) and one skilled in the art, therefore, would not be reasonably apprised of the metes and bounds of the claims.
For compact prosecution, the percentages were interpreted as wt%.
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 1-7, 9-11, and 14-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Therrien (WO2020148392A1, published 7/23/2020) in view of Verhovnik (US20200268623A1, published 8/27/2020).
Therrien teaches an antiperspirant or deodorant composition comprising an active material, optional carrier, and perfume composition comprising perfume raw materials (abstract). Further, Therrien teaches that the composition comprises substantially of water, up to 95 wt% (i.e. between 0 and 95 wt%) (page 17 line 17). Therrien also suggests that the composition may contain a perfume composition that is encapsulated in the form of microcapsules (page 9 line 7) and may contain perfume raw materials including esters (page 4 line 15). The composition may also be in the form of a stick as taught by Therrien (page 11 line 30), and may further comprise ethanol (page 12 line 10).
However, Therrien does not teach a population of capsules as a component of the composition wherein the capsules comprise a core of perfume raw materials (i.e. esters) and an inorganic shell as required by claim 1, wherein the shell comprises silica. Therrien is silent regarding the inorganic shell as further required by claims 15-16.
This deficiency is made up for by the teachings Verhovnik.
Verhovnik teaches a microcapsule having an oil-based core and a polymeric shell coated with at least a cationic polymer (abstract). Verhovnik also teaches that these microcapsules may be included in suitable perfumery consumer products including but not limited to a cosmetic preparation such as a deodorant or antiperspirant (paragraph [0163]). Verhovnik continues to exemplify said microcapsules that can be included in a cosmetic preparation by defining the shell as consisting of polymeric material, including polysiloxane (paragraph [0060]). When the shell is entirely consisting of polysiloxane (i.e. silica oxide polymer), there is inherently 0 wt% organic content included in the shell. Verhovnik’s capsules are reported to have a mean diameter of between about 1 and 3000 micrometers (paragraph [0053]). Further, Verhovnik describes the core of the microcapsule as well, and refers to perfuming co-ingredients including esters as a perfume raw material (paragraph [0155]). These particular microcapsules as taught by Verhovnik “have a particularly high rate of deposition when applied on a substrate and which can be advantageously used in several industries, particularly tin the perfumery industry” (paragraph [0001]).
It would have been prima facie obvious to one skilled in the art before the effective filing date of the instant application to produce an antiperspirant/deodorant stick of Therrien comprising an encapsulated perfume composition, wherein the microcapsules have a mean diameter of between about 1 and 3000 micrometers and consist of a polysiloxane shell wherein there is 0 wt% organic material, along with esters as a perfume raw material comprising the core as taught by Verhovnik. One of ordinary skill in the art would have been motivated to modify the microcapsules of Therrien’s anitpersperant/deodorant stick with Verhovnik because of the higher deposition rate of Verhovnik’s microcapsules, and the application in the perfume industry (paragraph [0001]). One would have a reasonable expectation of success in doing so as Therrien already mentions the inclusion of microcapsules in their composition, so it would be reasonable to modify Therrien’s composition with the specific microcapsules of Verhovnik.
Regarding claim 2, Verhovnik describes the microcapsules as having a mean diameter of between about 1 and 3000 micrometers, as described above. This range is inclusive of the instantly claimed diameter of about 1 to about 200 micrometers. Therefore, claim 2 is rejected (see MPEP 2144.05, in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)).
Regarding claims 3-5, permeability is an inherent quality of the shell material. As evidenced by the instant specification, the shell is comprised of inorganic materials, preferably metal/semi-metal oxides, and most preferably SiO2 (instant specification page 25 lines 18-21). By definition, SiO2 is a polysiloxane. Polysiloxane microcapsule shells of the antiperspirant/deodorant stick of Therrien and Verhovnik (paragraph [0060]), and therefore it follows that the permeability will necessarily be identical to the instant claims, as the chemical structure is the same, and permeability is a characteristic and product of chemical structure. 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). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Regarding claim 6, Therrien teaches that the deodorant or antiperspirant composition may be in the form of “wax-based sticks, soap-based sticks, [or] compressed powder sticks” to name a few exemplary forms (page 11 line 30). Each of these forms are solid sticks, as is claimed in instant claim 6. Therefore, claim 6 is rejected.
Regarding claims 7 and 14, Therrien teaches that the deodorant or antiperspirant composition may further comprise suitable deodorant actives, which includes “alcohol such as ethanol” (page 12 line 10). Further, ethanol may be included in other roles such as a carrier (page 15 line 7). Regardless of the role ethanol plays in the overall composition, the inclusion of it reads on instant claim 7. Therefore, claim 7 is rejected. Further, as ethanol is necessarily a short-chain alcohol and ethanol was elected by Applicant, claim 14 is also rejected.
Regarding claim 9-10 and 17, which all refer to the amount of solvent in the composition, Therrien teaches that water (i.e. the solvent elected by Applicant) can be in the amount of up to 95 wt% as described supra. As this is inclusive of “at least about 5% by weight” (instant claim 9), “at least 70% by weight” (instant claim 10), and is further inclusive of “about 20% to about 80% by weight” (instant claim 17), the teachings of Therrien read on all previously stated claims. Therefore, claims 9-10 and 17 are rejected.
Regarding claim 11, Verhovnik teaches that the perfume oil that may be contained in the core of the microcapsules includes combinations of “perfuming ingredients with substances to improve, enhance or modify the delivery of the perfuming ingredients, such as… emulsions…” (paragraph [0057]). This emulsion may be present when applying the teachings of Verhovnik to Therrien, as it imparts benefit in improving or enhancing the delivery of the perfume. This reads on instant claim 11. Therefore, claim 11 is rejected.
Regarding claim 15-16, Applicant elected silica (i.e. SiO2) as the metal/semi-metal oxide comprising the inorganic shell of the capsule. As described supra, Verhovnik teaches that the shell of their microcapsules may comprise polysiloxane, which is a polymer of SiO2 (paragraph [0060]). As the shell in both the instant invention and the prior art comprise the exact same material, the instant claims 15 and 16 are rejected.
Regarding claim 19-20, as polysiloxane is inherently inorganic, and the shell may comprise entirely of polysiloxane, there exists no organic material in the shell, or 0 wt% organic material. Therefore, there is clearly less than 5 wt% organic material comprising the capsule shell, and further clearly less than 1 wt% organic material. Claims 19 and 20 are therefore rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Therrien (WO2020148392A1, published 7/23/2020) and Verhovnik (US20200268623A1, published 8/27/2020) as applied to claims 1-7, 9-11, 14-17 and 19-20 above, and further in view of Goldberg (US5176903A, published 1/5/1993).
Neither Therrien nor Verhovnik teach the amount or ethanol included in the overall composition. However, this deficiency is made up for by the teachings of Goldberg.
Goldberg teaches an antiperspirant or deodorant composition containing a cosmetically effective amount of microcapsules which encapsulate a composition comprised of fragrance and an ester (abstract). Goldberg further teaches the inclusion of a drying enhancer, which promotes the composition to dry more quickly, and includes ethanol as an exemplary drying enhancer (col. 6 line 7). When included in the composition as claimed by Goldberg, the “alcohol is included in the composition [in] a range of 1-10%...” (col. 6 line 9).
It would have been prima facie obvious to one in the art prior to effective filing date of the instant application to incorporate the ethanol range as taught by Goldberg (with ethanol being the drying enhancer as described supra) into the composition as described by Therrien and Verhovnik. As described supra, Therrien teaches the inclusion of ethanol into the composition, and as a dry feel is a desirable trait in the art, one would reasonably expect the inclusion of a drying enhancer in the composition in the amount taught by Goldberg. As ethanol is taught to be incorporated into a deodorant or antiperspirant composition in 1-10%, which overlaps about 5% to about 10% as in the instant claim, claim 8 is rejected (See MPEP 2144.05).
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
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 1-11, 14-17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-14 of U.S. Patent No. 11938349.
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims in all the applications are drawn to deodorant or antiperspirant compositions that comprise microcapsules comprising a core and a shell, wherein the core comprises perfume raw materials. Patent No. ‘349 recites an antiperspirant or deodorant that comprises a population of capsules wherein the capsules comprise a core and a shell surrounding the core, wherein the core comprises perfume raw materials (such as esters), wherein the shell comprises inorganic material such as silica polymers (i.e. polysiloxanes) (claims 1-3, 6-10). The capsules are further characterized by a mean diameter of about 10-200 micrometers, an average shell thickness of about 170-1000 nm, a volumetric core/shell ratio of from about 50:50 to 99:1 and no more than about 5 wt% organic content (claim 4). Further, the composition of ‘349 includes ethanol in about 5-10% (claims 11-12) and water comprising at least about 5 wt%, or at least about 70 wt% (claims 13-14).
Instant claims 1-11, 14-17, and 19-20 are patentably indistinct from claims 1-4 and 6-14 of Patent No. ‘349 because ‘349 recites an invention that is a species within the instantly claimed genus (i.e. an inorganic shell comprising a metal oxide, further comprising silica) that reads on the instant claims. Therefore, the instant claims 1-11, 14-17, and 19-20 are patentably indistinct from claims 1-4 and 6-14 of Patent No. ‘349 as recited in Patent No. ‘349.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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