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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/5/2026 has been entered.
Status of the Claims
Claims 1-5 and 10-12 have been canceled. Claims 8, 9, and 13-17 remain withdrawn. Claims 6 and 7 remain pending and under current examination.
Withdrawn Rejections
The rejections of claims 6 and 7 under 35 U.S.C. 112(a) on account of new matter as previously presented are withdrawn in view of the claim amendments filed 2/5/2026. It is noted that in view of the new amendments, new matter rejections are newly presented below. The rejections of claims 6 and 7 under 35 U.S.C. 103 as previously presented are withdrawn in view of the claim amendments; the rejection of claim 6 is newly presented as necessitated by amendment.
Declaration of “Paras Shah” Under 37 C.F.R. 1.132
The declaration of “Paras Shah” under 37 C.F.R. 1.132 as filed 2/5/2026 has been considered and is addressed as follows. The declarant is a named inventor in the instant application. The declarant is considered at least of ordinary skill in the art and his delineation of the claims as amended on pages 1 and 2 of 6 of the declaration are noted.
On page 2 of 6 of the declaration, the declarant lists diagnostic evidence and standards used in the instant application.
On page 3 of 6 of the declaration, the declarant concludes that paragraph 6 results demonstrated “unexpected technical superiority consistent” and assert that applicant’s “commercial data” demonstrates “quantified unexpected results that could not be predicted form the cited prior art combination”. In reply, Applicant’s argument has been considered, however the association between the alleged unexpected result and the claimed subject matter is not established. Applicant’s delineation of a conventional slurry as a control experiment showing significantly less process capability is appreciated, however a nexus between the claimed process and the product disclosed must be established. As presented, the arguments in the declaration pertain to evidence of unexpected results of a particular product in comparison with a process, however what is claimed is a process of making.
As to Applicant’s allegations of “industry recognition” problem solving are noted but pertain to a dry shampoo, and it is not apparent how this point in points no. 7 -9 of the declaration relate to the claims under examination, which are process claims. Moreover, as to declarant’s statement in point no. 8 “A long-felt need”, there is no evidence that is objective that an art recognized problem existed in the art for a long period of time without solution. Moreover, there is no evidence that for instance there was a lack of technical know-how prior to the details encompassed in the instant invention.
Response to Arguments
Applicant’s arguments filed 2/5/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows. The declaration filed 2/5/2026 has been addressed above.
Applicant has inserted into the remarks a request for an interview. Applicant’s remarks were filed 2/5/2026 and must be acted upon in a timely manner. Should Applicant wish to schedule an interview, Applicant may call the examiner directly for scheduling or file an automated request into the file wrapper for prompt consideration. The examiner will contact Applicant as requested and separately from the current action should an interview be believed to result in expediting allowance in the instant application. Please see MPEP 713.01 for interview policies.
Claim Objections, Modified as Necessitated by Amendment
Claims 6 and 7 are objected to because of the following informalities: the grammatical structures of the claims do not appear in the form of a sentence for each claim.
In claim 6, multiple clauses are listed in sequence and connected by semi-colons, however the grammar, modifiers, and/or syntax included in the list of clauses is not complete in the form of a sentence. For example, in claim 6, what is modified by “preventing particle agglomeration of the powder; and reducing any interaction between the liquid and powder until filling, the powder is coming into contact with the propellant” (see last line on page 2 of claim set)? In other words, what structural components or object “prevents” and “reduces” as claimed? What is modified by or what is said to take place when “the powder is coming into contact with the propellant” as in the first line on page 3 of the claim set filed 2/5/2026?
In claim 7, the claim recites in lines 2 and 3 the following “further comprising powder filling equipment include a plurality…”. Should this recite “including” instead of “include”? Accordingly, the objection previously raised is maintained since Applicant has again presented claims which are not in final form and structure.
Response to Arguments - Claim Objections
Applicant states that the claims have been “amended accordingly”, however the claims remain grammatically ambiguous. Applicant’s argument is not persuasive. The objections are modified as necessitated by amendment, as noted above. It is noted that the amendments filed resolved most issues previously raised.
New Rejections Necessitated by Amendment
Claim Rejections - 35 USC § 112(a), New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6 and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 recites “…to prevent particle agglomeration that would increase average particle size by more than 75% as demonstrated through comparative scanning electron microscopy analysis” and “wherein the liquid phase is heated…and a nitrogen purge is applied…”. These features do not appear to be described in the specification as filed and accordingly constitute new matter. Additionally, the comparative feature recited in the last three lines of claim 6 also appears to lack support in the specification as filed and also constitutes new matter. Any recitations in the claim which are not supported in the specification as filed constitute new matter.
In claim 7, “a plurality of” filling nozzles are newly recited. While the specification supports nozzles in plural, the specification does not support a large number or a differentiated number of nozzles. Any meaning of “plurality” which is separate from a simple plural number of nozzles is not considered supported in the specification as filed. See [0043] for what matter find support in the specification as filed. In claim 7, the “blanket system” is a newly described feature constituting new matter. Similarly, additional elements lack support in the specification as filed with the following representing examples of new matter encompassed in claim 7: “blanket system”, “antistatic coating…on all auger surfaces”, “orbital welding construction”, “mirror polis surface”, “intrinsically safe design”, “comparative SEM” properties, etc. Any recitations in the claim which are not supported in the specification as filed constitute new matter. It is noted that the specification as filed is dated 4/18/2024 in the file wrapper and is 11 pages in length.
Modified Rejections as Necessitated by Amendments of 2/5/2026
Claim Rejections - 35 USC § 112(b)
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 6 and 7 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. The grounds of the previously issued rejection are maintained: the claims as amended include indefinite terms.
In claim 6, line 11, what constitutes “heavy” as recited to modify a powder content. Does “heavy” describe a large concentration or a high density, for instance? In claim 6, it remains unclear if the amounts recited in lines 23, 25, and 26 are ranges for each of the three phases described or if the ranges respectively refer to amounts of magnesium stearate and essential oils. Also, in claim 6 at the end of the claim, what is “a statistical process control capability improvement”, and what are the units used to measure this? Also, what are “conventional slurry-based methods” vaguely and generally referenced at the end of the claim. Limitations are not imported form the specification into the claim, nevertheless the specification as filed 4/18/2024 does not define these terms.
In claim 7, what is considered a crevice “where powder accumulation could occur”? One person’s interpretation of what could happen, in the hypothetical sense, may vary from another. In claim 7, what constitutes “intrinsically safe design”? How does one ascertain what is “intrinsic”? This term is interpreted similarly to the term “essentially” In claim 7, what are Ra values measuring? Ra is not defined. What constitutes “safe handling” of flammable and electrostatically charged powders? What constitutes “particle size control”, what “analysis” from SEM demonstrates this and what constitutes “baseline measurements”?
Appropriate clarification is required. Correct grammatical structure and readable syntax is required to ascertain the metes and bounds of the claim and of the terms within the claim.
These claim interpretations are extended to the rejections below under 35 U.S.C. 103 at least so the claims may be further evaluated on their merits.
Claim Rejections - 35 USC § 112(b)- Response to Arguments
Applicant has copied the rejection previously issued into the remarks. On page 8 of Remarks, Applicant argues that a claim is indefinite only when “it is not amenable to construction or is insolubly ambiguous” and that minor grammatical flaws do not render a claim indefinite; Applicant continues and takes the position that without defining a second conflicting construction the examiner has not met the burden under certain case law. In reply, Applicant’s position is understood, however the claim must be in the form of a sentence, and to be a sentence requires correct grammatical structure.
To properly interpret a claim, the sentence structure must be complete with unambiguous modifiers. Applicant’s amendments have resolved most issues previously raised, and the rejections above are considered necessitated by amendment. As to Applicant’s allegation that the Examiner’s points are “purely editorial” and do not reach the statutory bar of 112(b), in reply, and in view of the claim amendments, Applicant’s position is appreciated, however all clauses must make sense. For example, claim 6 appears a string of clauses essentially a list wherein the relationship between clauses is not always apparent. The examiner has not raised editorial issues suggesting differentiating between the use of commas and semicolons because in these instances the clarity and meaning of claim words may generally be understood. Nevertheless, the claims as newly presented are addressed herein.
Moreover, it is noted that the specification as filed at paragraph [0045] specifies that “…where a method claim does not specifically state in the claims or description that the steps are to be limited to a specific order, it is no way intended that an order be inferred, in any respect. This holds for any possible non-express basis for interpretation, including matters of logic with respect to arrangement of steps or operational flow, plain meaning derived from grammatical organization or punctuation, or the number or type of aspects described in the specification”. The claims have been interpreted according to the specification as filed, and in view of the specification’s express statement that matters or arrangement or logic, essentially, are not to be read into the claim, it is particularly important that the claim structure is clear.
Applicant argues on pages 8 and 9 that the specification explicitly defines contested terminology. In reply, Applicant’s detailed remarks are noted, however in the instant case (1) limitations are not imported from the specification into the claim and (2) the new claim language introduces many new terms and features which are not at all described in any terminology in the specification originally filed in the instant application, as detailed in the new matter rejections herein. There is no “contested terminology” in the instant claims since the meaning of the words themselves is clear; rather, it is the relationship between and among parts that is not necessarily clear as applicable to a process as claimed.
Applicant’s statement that the Markush language of the list which includes anti-chafing spray, antiperspirant spray, etc. is persuasive.
Further, as to Applicant’s assertion that “functional terms are acceptable”, this is correct, and the claims have been and will be examined accordingly. While functional terms are acceptable, a relationship between structure and function must be present, and it is noted that the instant claims are interpreted as process claims requiring requisite steps. Effects resulting from the performance of the claimed steps are essentially interpreted as functional effects met by the structure claimed.
On page 9 of Remarks, Applicant notes particle size control, process parameters, performance criteria, and equipment specification, however these components do not find support in the specification as filed and are not all themselves defined. For instance, what is “Cpk” and what is “Ra”?
Applicant’s arguments are generally persuasive, and the rejections have been modified in view of the amendments filed 2/5/2026.
Modified Rejections as Necessitated by Amendments of 2/5/26
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO2009013213 (“Di Giovanni”) in view of US2012/0282190A1 (“Hammer”), GB1218222, US2018/0015238A1 (“Schwab), US 5635469 (“Fowler”), and US 20180066206 (“Horenziak”).
Please see the claim interpretation presented above with regard to the metes and bounds of claim 6 as addressed under 35 U.S.C. 112(b).
The instant claims are drawn to a process of filling an aerosol container comprising a first phase, a second phase, and a third phase. The first phase comprises a powder blend including a mixture of corn/rice/tapioca starch, benzethonium chloride, calamine powder, kaolin, sodium bicarbonate, and magnesium stearate in an amount between about 8 and 12% w/w. The second phase comprises a liquid blend including a mixture of alcohol, silicone, sorbitan oleate, bisabolol, isopropylmyristate, fragrance, essential oils, all together in an amount between about 8 and 12% w/w. The third phase comprises a propellant blend including a mixture of propellants including HFC152a, propane, and isobutane, all together present in an amount between about 75% and 85% w/w. The functional effects, formulation component characteristics, and results otherwise described in claim 6 and including the newly recited “wherein the powder remains in powder format…that would increase average particle size…as demonstrated through comparative scanning electron microspopy analysis” and “statistical process control capability” characteristic are interpreted to be inseparable from the performance of the method steps recited. It is noted that the claim does not actively recite a scanning electron microscopy (SEM) process step or a Cpk step but rather these are effects claimed. The newly claimed feature of heating to 35 degrees Celsius and nitrogen purge is addressed below.
Di Giovanni teaches a method of charging an aerosol canister with a propellant drug formulation wherein an aerosol canister is selected and to which a dry powder active drug form is added, and a propellant is separately introduced into said aerosol canister (see abstract, in particular). This teaching is considered to teach the stepwise addition of a first phase and subsequently a third phase to an aerosol canister. Other components may be added such as surfactants, solvents, excipients, and adjuvants in liquid form for instance and may be added subsequent to the metered addition of the powder form to the aerosol container (see page 7, lines 12-16 in particular); this teaching is considered to meet the instant limitation of stepwise introducing a liquid excipient to a canister subsequent to a powder composition and prior to addition of a propellant because the effects of performing Di Giovanni’s steps appear to be indistinguishable from perfoming the claimed steps. Further regarding claim 7 in particular, Di Giovanni describes separate filling of a canister with non-propellant components wherein a first step includes the addition of dry powder form into the canister by metering which suggests a nozzle present and capable of performing the function otherwise described in claim 7 (see Di Giovanni page 2, first paragraph; paragraph bridging pages 2 and 3; see also page 3, third paragraph; see also Figures 3C as further described in the paragraphs bridging pages 12 and 13; see also page 14; Figure 5b and description thereof which includes a valve skirt which may constitute a special filling nozzle component as instantly claimed). Although Di Giovanni specifies addition of a powder comparable to the instant “second phase” then addition of a solvent comparable to the instant “first phase”, like the instant invention Di Giovanni’s disclosure suggests a solvent and powder may be combined prior to addition of a propellant. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the order of adding components to a canister in this way and reasonably would have expected success from doing so since the effect of mixing would have been the same or substantially the same. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Di Giovanni does not specifically teach the particular phase one through three components as instantly recited which are otherwise addressed below. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to incorporate the powder, liquid, and propellant components further addressed below in a canister loaded as taught by Di Giovanni, with a reasonable expectation of success. One would have been motivated to do so for each of the specific reasons outlined below with regard to each phase and component thereof.
Regarding the first phase components, Hammer teaches aerosol formulations as well as their methods of making; the formulations may be used in body-treating applications such as a dry shampoo product (see abstract, in particular). The dry shampoo product may comprise at least one starch material which desirably functions as an oil absorber; rice starch is named as an example of a suitable starch material (see first five lines of [0013]). A clay material may be included for its desirable benefits as an oil absorber and/or a suspending agent wherein kaolin is named as a suitable clay agent (see [0012]). Hammer teaches that in some embodiments magnesium stearate in the alternative is not included where no colored residue is desired; this teaching indicates an alternative embodiment in which magnesium stearate may be included for instance in a low amount (see [0027]). As to the stepwise addition of these components, Hammer explicitly teaches that the aerosol dry shampoo formulation may be prepared by loading an aerosol container with a dry shampoo composition for instance as a powder followed by addition of a propellant (see [0028]). As to propellants, Hammer overlaps Di Giovanni’s teaching by teaching a propellant may be included; Hammer specifies isobutane for instance in an amount of 75-80% by weight of the total formulation (see [0034], Example 1 for instance).
Hammer does not teach in the first phase the additional claimed components which are calamine powder and sodium bicarbonate or the total amount of powder components.
GB1218222 cures this deficiency. GB1218222 teaches a process for preparing a dry shampoo in aerosol form (see title, in particular). GB1218222 teaches the combination of dry powder components with a propellant and dispersant agents. GB1218222 teaches benzethonium chloride to be present as a dispersing agent (see claim 8) as well as sodium bicarbonate as a mild alkali desirably and necessarily included (see claim 6)(limitation of “Sodium bicarbonate” in first powder component of instant claim 6). The dry shampoo powder is noted to also include rice starch (see Example) wherein the dry powder components are present in an amount of “about 6%” which is considered overlapping with the instantly claimed range of 8 to 12%; see GB1218222’s Example at the top of page 3 of the publication. See also MPEP 2144.05 regarding obviousness of routine optimization procedures.
Both Hammer and GB1218222 are directed to formulations for dry shampoos including propellants and their methods of making. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to include sodium bicarbonate as taught by GB1218222 to the aerosol shampoos of Hammer, with a reasonable expectation of success. One would have been motivated to do so to convey its desirable mild alkali benefit properties in combination with additional known dry powder shampoo components including benzethonium chloride and starch components as taught by GB1218222.
Hammer does not teach the calamine powder component instantly recited in claim 6 in the first phase. Schwab cures this deficiency. Schwab teaches a spray canister device for spraying a solution to a surface area of a human body (see abstract, in particular). Calamine, kaolin, and topical starch are taught as commonly included elements to be administered by spray canister device (see [0025]).
Both Hammer and Schwab are directed to formulations for topical spray application, and Di Giovanni and Schwab are both directed to methods of filling spray canisters with body treating formulations. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add calamine as taught by Schwab into the canister devices of Di Giovanni in formulations of Hammer with a reasonable expectation of success. One would have been motivated to do so in addition to or in place of a portion of kaolin or topical starch components commonly used as taught by Schwab to be state of the art in spray canister cleaning or medicated solution to be applied to the human body by spray application from a canister.
Regarding the second phase components, Di Giovanni teaches alcohol components preferably ethanol may be included to improve dispersion (see page 27, line 13) and further regarding particular dry shampoo formulations, Hammer teaches alcohol such as ethanol maybe included in an amount between about 1 to about 20% (see [0026]) as well as cyclomethicone in an amount between about 0.1 and 15% (cyclomethicone is a silicone), as well as at least one additive in an amount of 0.1 to 10% (see [0026]), components present in a range overlapping or nearly overlapping the instantly recited range of 8 to about 12%. Fragrance oils and natural fragrance oils are included among additive components (“fragrance” and “essential oil” as in claim 6)(see [0015] and [0017]). GB1218222 specifies that isopropyl myristate and sorbitan monolaureate are used in particular combination with perfume and alcohol which is ultimately added to a dry shampoo powder component along with a propellant.
Hammer teaches herb and/or plant extracts may be included as additives or functional agents but does not specify bisabolol in particular (see [0015]), nor does Hammer teach sorbitan oleate.
Fowler cures this deficiency. Fowler teaches a cleansing product wherein sorbitan oleate and sorbitan [mono]laurate are taught as functional equivalent emollient components (see column 12, lines 11 and 13) such that it would have been obvious to substitute one for the other in the formulations of Hammer and GB1218222 otherwise addressed above. Fowler further specifies bisabolol among additional active ingredients which may be provided for aesthetic benefit (see column 17, line 48) alongside or in the alternative to essential oil and/or fragrance type functional components otherwise addressed above in regard to Hammer.
Hammer and Fowler are both directed to topically applicable cleansing formulations. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add sorbitan oleate, bisabolol, and isopropyl myristate as in Hammer, GB1218222, and Fowler into a single formulation where each is respectively known in the art for its functional benefit. One would have been motivated to include sorbitan oleate as an emollient as taught by Fowler, bisabolol as an aesthetic benefit agent as taught by Fowler, and isopropyl myristate as taught by GB1218222 in an embodiment and as further taught by Fowler as an acceptable conventional emollient (column 11, line 58).
Regarding the third phase which is the propellant mixture, Di Giovanni generally teaches propellants to be liquified gas propellants including fluorocarbons or hydrogen-containing chlorofluorocarbon propellants (see page 26, lines 9-27), however Di Giovanni does not teach the particular instantly elected combination of HFC152A, isobutane, and propane. As noted above, Hammer teaches overlapping propellant components to be useful in a range within the instantly claimed range in an analogous formulation which is a dry shampoo; see Hammer’s Example 1 as noted above. An additive such as an anti-dandruff agent which may be benzethonium chloride may be included (see [0018]). Hammer also teaches isobutane among aerosol propellants for instance (see [0022]). None of the aforementioned references teaches all of HFC152A, isobutane, and propane propellants as instantly elected.
Horenziak cures this deficiency. Horenziak teaches the manufacture of a spray product in a container wherein particles and/or perfume components and additional components are loaded and may be in the form of an aerosol (see [0090]) wherein a solvent system may comprise alcohols such as ethanol, propanol, isopropanol, and butanol for instance (see [0095]) in a packaged dispenser (see [0108] and [0110]). The packaged spray product may include a propellant which may be a liquefied gas propellant such as HFC hydrofluorocarbon propellants (see [0119] and [0120]) and further may comprise a mixture of propane and isobutane for instance (see [0126]), thereby suggesting eliminating interaction between a powder component and liquid solvent and liquid propellant components such that liquids are combined into a total liquid for subsequent combination with powder or solid components. Examples include these particular components (see [0127] and [0129]). Because there is not a single composition embodiment particularly combining HFC152A, isobutane, and propane but rather two embodiments wherein a first embodiment comprises propane and isobutane and wherein a second embodiment comprises butane and HFC152a (see [0127] and [0129]), it is the examiner’s position that it would have been prima facie obvious to one of ordinary skill in the art to mix and match these known functional equivalents from among those particular chosen for embodiments in Horenziak’s teachings, with a reasonable expectation of success. One would have been motivated to do so since Horenziak generally teaches these propellants as functional equivalents which may be used in combination (see [0126] and [0126] for instance). One reasonably would have expected success from doing so because absent evidence to the contrary one reasonably would have expected each known functional propellant to retain its functional efficacy in combination with another functional propellant known to be useful in sprayable product applications as demonstrated in Horenziak’s embodiments. Moreover, it is the examiner’s position that to do so would have constituted a combination of prior art elements according to known methods to yield predictable results and/or a simple substitute of one known element for another to obtain predictable results. In the instant case, as shown above, the prior art teaches each propellant instantly elected wherein the only missing piece is the lack of actual combination in a single embodiment. Additionally, one would reasonably expected to combine the known elements since the prior art teaches propellants to be used in combination and that in doing so each propellant would have merely performed the same function as if done separately as one of ordinary skill in the art would have recognized specifically based on Horenziak’s teachings of each of these known propellant agents used in a method of dispensing a cosmetic and/or pharmaceutical product from a package with a reasonable expectation of predictable results.
As to the newly claimed step of heating and purging to maintain anhydrous conditions, Di Giovanni teaches the aerosol canister to be purged of air, a process which corresponds to purging of water present in air (see page 15, line 11) and the purging step may be carried out prior to or subsequent to metering components into the canister (page 7, lines 4-11) with a propellant. Di Giovanni does not specify purging with nitrogen in particular. Horenziak specifies that the propellant may be nitrogen for instance (see [0020]), and GB1218222 provides that moisture must be excluded which may be performed at the filling step including at a “high temperature” to avoid undesired condensation of air humidity (and water therein) (see page 1, column 2, line 80-85 for instance). Accordingly, Di Giovanni taken together with Horenziak and GB1218222 in combination with what these references reasonably would have suggested to the ordinary artisan reasonably suggest heating to a “high temperature” (approximately above room temperature, a range overlapping with the claimed “approximately 35 degrees Celsius”) and purging the liquid phase with any propellant including nitrogen as specified by Horenziak which would replace undesired water presence therein. To do so would have been obvious based on the combination of teachings considered for what they reasonably would have suggested to the ordinary artisan, and one would have been motivated to do so based on the skill of the ordinary artisan in view of the explicit teaching that packing at a temperature to avoid undesired water condensation in an aerosol product is desirable (see GB1218222).
As to the newly claimed effects in claim 6, agglomeration prevention and statistical process control capability features, these features are considered effects from performing the process steps addressed above.
Response to Arguments - Claim Rejections - 35 USC § 103
Applicant’s arguments filed 2/5/2026 (hereafter, “Remarks’) have been fully considered and are addressed as follows.
Applicant argues that there is no established motivation for combining six references. In reply, rationale is clearly articulated in the record. In response to any argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). Applicant’s delineation of what the cited refences teach as outlined on page 15 of Remarks is noted.
Applicant argues on pages 14 and 15 of remarks that there are “missing critical integration elements”. In reply, these newly claimed features are addressed above in the new grounds of rejection necessitated or modified by amendment and under 35 U.S. C. 112. Claim 6 has been examined in as much as the structure claimed may be assessed from the claim language in view of the specification as filed. It is noted that claim 7 is examined at least as much as supported in the specification as filed. Applicant argues that the claimed sequence is absent, however the claims have been examined as supported in the specification as filed. Applicant may not add entirely new matter mid-prosecution including new structural components and/or functional effects not originally disclosed.
Applicant asserts unpredictable technical results on pages 15 and 16 of Remarks. In reply, Applicant’s argument has been considered but is not persuasive because it is not supported by a clear control experiment and evidence of practical and statistical significance and commensurate ins cope with the claimed process.
Applicant argues that the prior art teaches away from and provides no motivation to combine the three-propellant blend and narrow weight ranges. In reply, first of all, the weight ranges claimed remain unclear and the rejections under 35 U.S.C. 112(b) as previously presented are maintained. Secondly, alternate embodiments in a single reference do not constitute a teaching away. Finally, rationale for combining propellants separately taught in the prior art embodiments is detailed in the record. Further, it is maintained that Di Giovanni generally teaches propellants and that Horenziak teaches HFC152 ( see [0127] and [0129]) as well as rationale for combining propane and isobutane (Horeniak at [0126]) and that Hammer provides rationale for a propellant equivalent and overlapping isobutane range (see page 12 of CTFR 8/5/2025 for detailed reasons). Accordingly, Applicant’s arguments on page 16 of Remarks are unpersuasive.
Applicant’s allegations of secondary consideration as outlined on pages 16-18 of Remarks have been addressed above specifically in regard to the declaration.
As to the new matter rejection, Applicant argues on pages 18 and 19 that the declaration provides written description support including commercial examples and detailed equipment descriptions as newly claimed. In reply, this is not persuasive because no new matter may be included after the filing date of the application, and the items listed (i.e., and also listed in claim 7 as filed 2/5/2026) constitute new matter and not merely description or explanation of existing matter.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617