DETAILED ACTION
Claim Objections
Claims 5 and 6 are objected to because of the following informalities:
Claim 5 appears to be missing a “an” between ‘comprising’ and “activator’.
Claim 6 appears to be missing an “a” between ‘comprising’ and ‘fragrance’.
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.
Claims 1-6 and 8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alvarez et al. (US 2019/0159976) in view of Mckata (US 6581807).
Alvarez describes an aerosol antiperspirant product. The aerosol product is to be provided via a pressurized container wherein the pressurized container possesses a reservoir for containing the propellant and antiperspirant composition (see [0099]) (see instant claim 1(ii)), a valve for dispensing the antiperspirant composition (see instant claim 1(i)), the valve attached to a dip tube that is arranged for transport of the composition from the reservoir through the release valve (see [0098, 0099]) (see instant claim 1(iii)). The container is to have a vapor phase tap (VPT) of preferably less than 0.65 mm (see [0103]), with 0.5 mm being exemplified (see Example 1 of Table 1) and a restrictive tailpiece (RTP) of less than 0.7 mm (see [0104]) (see instant claim 9). The ratio of VPT to TRP is to be from 0.7:1 to 1:1 (see [0100]). In totality, the claimed TRP and VPT ranges are generally described by Alvarez.
The aerosol utilizes propellants which are low boiling point gases liquified by compression. Exemplified low boiling point gasses include propane, butane and isobutane (see [0091]) (see instant claim 9).
The antiperspirant product to be aerosolized is in the form of a suspension (‘base composition’) (see [0043, 0065]) wherein the suspension comprises a particulate solid active, e.g. an antiperspirant, suspended in a carrier oil (see [0065]) (see instant claim 1). An exemplified particulate antiperspirant is activated aluminum sesquichlohydrate (AASCH) (see [0048]) which is activated by a calcium salt (e.g. CaCl2) (see [0050]) (forming a calcium activated ASCH) (see instant claims 2, 5, 10 and 11). It is taught that the average particle diameter of the antiperspirant active (D50) is from 15-40 microns, more particularly 20-30 microns (see [0062]) (see instant claim 13). See MPEP 2144.05(I) regarding the obviousness of overlapping ranges. The AASCH is to be present in the composition in an amount of 9.4%, 8.1% or 6.9% by weight of the antiperspirant composition (see Table 1) (see instant claim 1).
The antiperspirant composition is to comprise a suspending aid such as bentonite or hectorite (see [0086]) (see instant claims 3 and 4) as well as fragrance in an amount of about 2.0% by weight of the antiperspirant composition (see [0083] and Table 1) (see instant claim 6).
Methods/application of the composition on to the skin are envisaged (see [0065, 0071]) (see instant claim 14).
Methods of making the container possessing the pressurized antiperspirant suspension is described by [0121]) wherein the suspension is prepared, the prepared suspension is placed into an aluminum container having a metering orifice and then sealing and pressurizing the contents of the container by injecting a hydrocarbon propellant (see instant claim 15).
Alvarez fails to teach the propellant as comprising a mixture of a compressed gas and a liquified gas at a weight ratio of from 0.1:99.9 to 10:90.
Mckata is directed to aerosol composition. Like Alvarez, the composition may comprise an antiperspirant (see column 5, lines 24-26). The propellant for dispensing the composition is to a mixture of compressed gas (e.g. nitrogen gas; see column 6, lines 64-66); see instant claim 12) and liquefied gas (e.g. butane, isobutane; see column 6, lines 51-53) (see claim 1). The liquified gas is blended in an amount of 30-99% by weight relative to the composition whereas the compressed gas is present in an amount of 0.1-10% by weight (see column 7, lines 11-25) thereby suggesting a liquefied:compressed gas ratio of 99:1-90:10 which overlaps within that of instant claim 1. Further, Mckata teaches that a mixture that comprises more than 10% compressed gas results in excessive pressure which is dangerous and a mixture that comprises more than 99% of liquefied gas diminishes the desired effect of the active component (see column 7, lines 11-27) which would suggest to a person of ordinary skill in the art to stay within a range similar to that claimed.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in absence of evidence to the contrary.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Alvarez et al. (US 2019/0159976) in view of Mckata (US 6581807) as applied to claims 1-6 and 8-15 above, and further in view of Shieh et al. (US 2008/0017671).
Alvarez teaches that the propellants used in their aerosol are to have a standard vapor pressure of 35-70 psi at 21oC (see [0092]).
Alvazrez fails to teach the pressure of the container comprising the suspension, prior to first use, as being from 85-125 psig (0.59-0.86 MPa) at 25oC.
Shieh is directed to the use of compressed gas propellants in aerosol compositions. The aerosol composition may comprise antiperspirants (see [0042]). The pressure within the container used to deliver the composition is to not exceed 100 psig at 130oF (54o). A container having 90 psig at 21oC is described wherein the pressure is that of the container prior to first use (see [0075]). Over 52 weeks, with no use, the pressure dropped by 11 psig (to 79 psig) (see [0075]). Although the references are silent regarding the pressure of the container being 85-125 psig at 25oC, it would have been obvious to modulate the pressure of Alvarez’s aerosol composition such that the contents could reliably be dispensed with such that the exiting composition was not over pressurized and were sufficiently pressurized to be capable of dispensing with the entire contents of the container. If the result was the finding that a pressure of 90 psig (or a similar pressure) at a temperature of 25oC resulted in successfully delivering the contents of the container, then that would have been the product of ordinary skill and common sense as such pressures were known to be suitable for delivery of the pressurized composition.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in absence of evidence to the contrary.
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.
Claim 6 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 6 recites, “…comprising fragrance at a level of from 0.1 to 5% by weight of the total composition (comprising the base composition and the propellant).” The prose written within the parenthesis is considered indefinite because it is not clear if it is intended to limit the claim. Clarification is requested
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/590499 (reference application) in view of Alvarez et al. (US 2019/0159976).
The instant and the reference application are both applications are directed to a cosmetic aerosol product comprising a pressurized container holding a base composition and a propellant which is a mixture of a compressed gas and a liquefied gas at a weight ratio of from 0.1: 99.9 to 10: 90; wherein the pressurized container comprises: i). a pressure release valve; ii). a reservoir containing all of the base composition and all of the propellant; and iii). a dip tube arranged for the transport of the base composition from the reservoir to the pressure release valve.
The reference application teaches the inclusion of an antiperspirant.
The reference application teaches comprising a fragrance from 1-50% by weight which overlaps with that instantly claimed.
The reference application teaches a container pressure of 85-125 psig at 25oC.
The reference application teaches a liquefied gas being C3-C4 hydrocarbons, e.g. butane, propane.
The reference application teaches a pressurized container having a RTP of 0.5-1.0 mm and a VTP of 0.30-0.50 mm.
The reference application teaches a compressed gas being nitrogen.
The reference application teaches methods of using/delivering the cosmetic composition to the body and methods of manufacture.
The reference application fails to teach a base composition as comprising a suspension of a particulate solid cosmetic active in a carrier oil wherein the particulate solid cosmetic active has a concentration of 5-40% by weight in the base composition.
Alvarez teaches an aerosol antiperspirant composition wherein the composition is in the form of a suspension (‘base composition’) (see [0043, 0065]) wherein the suspension comprises a particulate solid active, e.g. an antiperspirant, suspended in a carrier oil (see [0065]) and a suspending agent, e.g. bentonite. An exemplified particulate antiperspirant is activated aluminum sesquichlohydrate (AASCH) (see [0048]) which is activated by a calcium salt (e.g. CaCl2) (an activator) (see [0050]) (forming a calcium activated ASCH). It is taught that the average particle diameter of the antiperspirant active (D50) is from 15-40 microns, more particularly 20-30 microns (see [0062]). See MPEP 2144.05(I) regarding the obviousness of overlapping ranges. The AASCH is to be present in the composition in an amount of 9.4%, 8.1% or 6.9% by weight of the antiperspirant composition (see Table 1).
Thus, the instant claims are not patentably distinct over the reference application in view Alvarez.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611