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 13-32 were previously pending.
A non-final rejection office action was mailed 24 March 2026.
In response to that office action, Applicant filed an Amendment/Request for Reconsideration whereby Applicant amended claims 13, 18, 21, 25-29, and 32 were amended. No claims were cancelled or added.
Therefore, claims 13-32 remain pending and currently under examination.
Priority
Applicant has claimed the following priority:
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Withdrawn Claim Rejections
I. Claims 21-22 and 25-29 were previously rejected under 35 USC 112(b). Applicant’s amendments to the claims were sufficient to overcome the claim defects. Therefore, the previously held rejection is hereby withdrawn.
Maintained Claim Rejections
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 13-26 and 28-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. Claim 1 recites an anhydrous composition comprising: (i) at least one fragrancing substance in a concentration of 2 wv% of the composition; (ii) at least one natural wax; and (iii) at least one natural fatty substance other than (ii) natural wax(es).
In accordance with MPEP §2106(III), the first step in determining subject matter eligibility is determining, under the broadest reasonable interpretation of the claims, whether the claim is directed to a process, machine, manufacture, or composition of matter. The currently claimed invention as recited in instant claims 13-26 and 28-31 is drawn to a composition of matter. Step one is satisfied.
Step two is a two-prong analysis wherein step 2A first asks whether the claimed invention is directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea known as ‘the judicial exceptions.’ Here, the answer is yes, since the only compositional requirement set forth in the composition is a low water content (anhydrous) and a fragrance at 2 wv%, the claimed invention as recited in instant claims 13-26 and 28-31 is drawn to a product of nature.
The second prong of the analysis evaluates whether the claim recites additional elements that amount to significantly more than the judicial exception. Here, the answer is no. The claims simply do not recite anything else, compositionally or structurally, which provides an inventive concept that departs from a natural product. Reciting the intended use of a natural product (i.e., a fragrancing composition) does not amount to significantly more than the judicial exception. The composition contains naturally occurring ingredients that do not have markedly different characteristics from what occurs in nature. The recitation of the amounts of the ingredients which are naturally occurring (e.g., at least 2 wv% fragrance) do not arrive at any change in characteristics (structural or functional) that are different from what occurs in nature. Claim 13, for instance, encompasses a combination of naturally occurring ingredients: a natural fragrance such as an aroma of natural origin (see Specification p. 10, lines 24-26); a natural wax such as beeswax (see Specification p. 17, lines 13-17); and a natural fatty substance such as butters, gums, or natural oils (see Specification p. 23 and 24). Even if the claimed subject matter recites specific amounts or ratios, the claims are still patent ineligible because each naturally occurring product would still be structurally identical to what exists in nature. The test is not whether if said ingredients are all found combined together in nature but rather if they are a naturally occurring ingredient.
As such, the claims fail to recite subject matter that is patent eligible, and thus the claims do not amount to significantly more than the judicial exception.
Response to Applicant’s Arguments
Applicant argues the claimed composition is not a product of nature as the mixture of ingredients recited in claim 13 cannot be found as such in nature (Remarks, p. 6). Applicant further argues the disclosed manufacturing process includes mixing and heating the ingredients to obtain a homogenous composition (Remarks, p. 6-7).
Applicant’s arguments have been fully considered but are not found to be persuasive.
The mere fact that the claimed composition is prepared by human intervention or that the particular mixture is not ordinarily encountered in nature does not, standing alone, establish that a claimed natural product possesses markedly different characteristics from its counterpart or counterparts. Under the markedly different characteristics analysis, nature-based product limitations are evaluated by comparing their characteristics with the corresponding naturally occurring materials. Relevant characteristics may include structure, function, physical properties, chemical properties, or other characteristics. See MPEP 2106.04(c).
The amended claims recite a homogenous mixture of a fragrancing substance, a natural wax, and a natural fatty substance. However, the claims do not recite that homogenization produces any structural, chemical, functional, or other characteristic of the recited natural materials that is markedly different from the characteristics possessed by those materials in nature.
Applicant’s reliance on the manufacturing process in the disclosure is also not persuasive because the rejected composition claims are directed to the resulting composition, not to the particular process by which the composition is prepared. Limitations concerning heating, mixing temperature, processing time, or other manufacturing conditions are not recited in claim 13.
Applicant further argues that since claim 32 was not rejected under 35 USC 101, despite reciting application of substantially the same composition, the composition of claim 13 precludes its rejection. This argument is not persuasive because each claim is evaluated based upon the limitations actually recited therein. Claim 32 is directed to a method for fragrancing keratin materials comprising application of a solid fragrancing composition to said materials and therefore, presents a different statutory claim and a different eligibility analysis from the composition claims. See MPEP 2106.04(c)(I)(C).
Accordingly, Applicant’s amendment to claim 13 to recite a “homogenous mixture,” without more, does not establish the claimed natural composition possesses markedly different characteristics. The rejection under 35 USC 101 is therefore maintained.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13, 19, 21-22, and 30 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Cetti (US 2017/0296449 A1; published: 19 October, 2017).
Cetti discloses methods of making personal care compositions including solid sticks and soft-solid sticks (abstract, [0010]). Cetti discloses Example Compositions A-C are anhydrous, antiperspirant compositions comprising spray-dried polyacrylate microcapsules that encapsulate fragrance and a quantity of non-volatile oils ([0183]).
Regarding claim 13, Cetti discloses Composition C is a solid composition comprising:
Two fragrance substances at 3.75 wt%;
Ozokerite natural wax at 1.0 wt%; and
Hydrogenated castor oil at 2.90 wt%.
Wherein composition C contains no water. (Table 1a at p. 16 and [0185]).
Regarding claim 19, the ozokerite at 1.0 wt% in Cetti’s Composition C meets the definition of Applicant’s ‘hydrocarbon-based wax.’ See Specification at p. 16, lines 6-7.
Regarding claims 21 and 22, the castor oil at 2.90 wt% in Cetti’s Composition C meets the definition of Applicant’s ‘nonvolatile, hydrocarbon-based oils of plant origin.’ See Specification at p. 19, lines 21-24.
Regarding claim 30, Cetti’s Composition C further contains Vitamin E at 0.01 wt% (Table 1a at p. 16) which meets the definition of Applicant’s ‘cosmetic active agents.’ See Specification at p. 27, lines 13-22.
Therefore, the disclosures of Cetti anticipate that which is currently claimed in instant claims 13, 19, 21-22, and 30.
Response to Applicant’s Arguments
Applicant argues that Cettis does not disclose the claimed homogenous mixture because the fragrances of Cetti are encapsulated in microcapsules and are therefore not homogenously mixed with the wax and fatty substance.
Applicant’s argument concerning the homogenous mixture limitation is not persuasive.
Cetti is not limited to compositions in which all fragrance is encapsulated. Cetti expressly teaches that its personal care compositions may contain both a parent fragrance and one or more encapsulated fragrances ([0087]). Cetti defines the parent fragrance as a fragrance dispersed throughout the composition and typically not encapsulated when added to the composition ([0087]).
Cetti’s Example C, used as a basis for the previously held 35 USC 102 rejection, further demonstrates Cetti’s compositions are not confined within microcapsules. Example C is prepared by split stream process. The hot steam contains waxes and emollients, while the cold stream contains, among other components, spray-dried microcapsules and separately added fragrances ([0185]). The hot and cold streams are thereafter combined in a static mixer and Cetti expressly states the mixing operation ensures a “homogenous personal care composition” ([0187]).
Thus, Applicant’s contention that the fragrance in Cetti is necessarily confined within microcapsules is inconsistent with Cetti’s express disclosure. The presence of additional encapsulated fragrance also does not distinguish the claimed composition because claim 13 employs the open-ended transitional term ‘comprising’ and does not exclude additional fragrance delivery systems or microcapsules.
Accordingly, the amendment reciting a “homogenous mixture” does not distinguish the claimed subject matter from Cetti.
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 13-26 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Cetti (cited above).
The disclosures of Cetti are discussed above. In addition to disclosing Example Composition C, which anticipates instant claims 13, 19, 21-22, and 30, Cetti further discloses embodiments which make obvious the limitations of instant claims 13-26 and 29-32.
Regarding claim 14, Cetti discloses the personal care composition includes a fragrance present at a level from about 0.01 wt% to about 40 wt% of the personal care composition ([0102]). This range overlaps with the instantly claimed range (MPEP 2144.05(I)).
Regarding claim 15, Cetti discloses the fragrances used in invention embodiments can include naturally occurring plant and animal oils ([0103]) such as rosemary and lavender oils ([0105]). See Specification at p. 12, lines 13, 25, and 30 where Applicant defines ‘essential oils’ to include rosemary and lavender oils.
Regarding claim 16, Cetti discloses the fragrances used in invention embodiments can include vanillin ([0106]). See Specification at p. 13, line 19 where applicant defines ‘fragrancing substances’ to include vanillin, which is natural.
Regarding claims 17, 18, and 20, Cetti discloses the composition comprises a structurant, which can be a natural wax such as beeswax, carnauba, and candelilla wax ([0047]). These structurants are present in the personal care composition in a range from about 0.1 wt% to about 35 wt% ([0041]). Cetti discloses the concentration and type of structurant selected can be used to obtain a desired product form, viscosity, and hardness ([0041]). This range overlaps with the instantly claimed ranges in instant claims 17, 18, and 20 (MPEP 2144.05(I)).
Regarding claim 23, Cetti discloses the personal care composition can comprise xanthan gum ([0177]) and gum Arabic ([0182], [0183]). See Specification at p. 21, line 27-29 and p. 23, lines 16-17 where applicant defines ‘pasty fatty substances’ to include gums such as xanthan gum and gum Arabic.
Regarding claim 24, Cetti discloses the personal care composition can comprise a structurant, which can be a natural gelling agent such as triglycerides or fatty acids like caprylic acid ([0042]-[0043]). These structurants are present in the personal care composition in a range from about 0.1 wt% to about 35 wt% ([0041]). Cetti discloses the concentration and type of structurant selected can be used to obtain a desired product form, viscosity, and hardness ([0041]). This range approaches the instantly claimed range and could be considered routine optimization since Cetti modifies the disclosed range with ‘about’ and indicates the range can be fluctuated depending on desired product form, viscosity, and hardness where a more solid product has a higher concentration range of structurants (MPEP 2144.05(I)). See Specification at p. 20, line 16 where applicant defines ‘natural fatty substances’ to include caprylic/capric acid triglycerides.
Regarding claim 25, Cetti discloses the fragrances used in invention embodiments can include naturally occurring plant and animal oils ([0103]) such as rosemary and lavender oils ([0105]). See Specification at p. 5, lines 8-11 where Applicant defines ‘natural origin’ to include any compound obtained from a natural substance which has undergone one or more associated chemical or industrial treatments, giving rise to changes which do not affect the essential qualities of the substance. Essential oils, such as rosemary oil, are extracted by chemical or industrial methods and thereby meet the limitation of natural origin.
Regarding claim 26, Cetti discloses the composition comprises a structurant, which can be a natural wax such as beeswax, carnauba, and candelilla wax ([0047]). These structurants are present in the personal care composition in a range from about 0.1 wt% to about 35 wt% ([0041]). Cetti discloses the concentration and type of structurant selected can be used to obtain a desired product form, viscosity, and hardness ([0041]). This range encompasses the instantly claimed range (MPEP 2144.05(I)).
Regarding claim 29, Cetti discloses the personal care composition can comprise a structurant, which can be a natural gelling agent such as triglycerides ([0042]-[0043]). These structurants are present in the personal care composition in a range from about 0.1 wt% to about 35 wt% ([0041]). Cetti discloses the concentration and type of structurant selected can be used to obtain a desired product form, viscosity, and hardness ([0041]). This range approaches the instantly claimed range and could be considered routine optimization since Cetti modifies the disclosed range with ‘about’ and indicates the range can be fluctuated depending on desired product form, viscosity, and hardness where a more solid product has a higher concentration range of structurants (MPEP 2144.05(I)).
Regarding claim 31, Cetti discloses the composition is formulated into an anhydrous solid stick (Cetti claim 1 and [0010])
Regarding claim 32, Cetti discloses embodiments of the previously discussed personal care composition are solid sticks used as antiperspirants ([0010]) and methods of use involve application to the underarm or other suitable areas of the skin ([0109]). See Specification, lines 9-15 where Applicant defines ‘keratin materials’ as human keratin materials, notably the skin where application in intended for areas such as the hollows of the arms.
The difference between the applied reference and the claimed invention in claims 14-18, 20, 23-26, 29, and 31-32 is that the applied references may not teach the instantly claimed method with particularity so as to amount to anticipation. See MPEP “[t]he identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Cetti discloses various embodiments of a solid, anhydrous composition containing a fragrance, a natural wax, and a fatty acid substance, requiring the skilled artisan only pick and choose from disclosed species of the broader genus. Cetti further discloses methods of using said composition involving application of the stick formulation to underarms.
The applied reference discloses the components of the claimed composition and method of use with sufficient guidance, particularity, and with a reasonable expectation of success for the skilled artisan, that the invention would be prima facie obvious to one of ordinary skill in the art. Cetti discloses all the rejected claim limitations with a reasonable expectation of success – it would be obvious to pick and choose from components with which Cetti discloses as applicable to formulate a solid fragrance composition and expect success in doing so because Cetti discloses successful formulation using such components.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Cetti (cited above) as applied to claims 13-26 and 29-32 above, and further in view of Demson (US 2011/0300091 A1; published: 08 December 2011).
The disclosures of Cetti are discussed above. While Cetti discloses use of structurants in the anhydrous deodorant composition, Cetti does not explicitly recite hydrogenated jojoba oil as a structurant as required by claim 27. However, this limitation is made obvious in view of Demson.
Demson discloses a solid translucent deodorant stick (abstract) comprising waxes and fragrances ([0007]). As a component of the deodorant, Demson discloses a structurant in concentration ranges from about 1 wt% to about 40 wt% of the total stick composition ([0020]). This range encompasses the instantly claimed range (MPEP 2144.05(I)). Furthermore, Demson discloses hydrogenated jojoba oil as a preferably waxy structurant in solid deodorant compositions ([0021]-[0022]).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to substitute the structurant disclosed by Cetti with hydrogenated jojoba oil disclosed by Demson as a suitable structurant in solid deodorant compositions. This modification would have been obvious as the simple substitution of one known component for another to yield a predictable outcome. Therefore, claim 27 is obvious over Cetti in view of Demson.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Cetti (cited above) as applied to claims 13-26 and 29-32 above, and further in view of Deckner (US Patent 4,919,934; date of patent: 24 April 1990).
The disclosures of Cetti are discussed above. While Cetti discloses use of fatty acid esters as gelling agents in the anhydrous deodorant composition, Cetti does not explicitly recite cetyl palmitate as required by claim 28. However, this limitation is made obvious in view of Deckner.
Deckner discloses wax-based, solid antiperspirant/deodorant sticks (col. 1, lines 5-9). Essential to the composition, Deckner discloses, is a wax-type gelling agent at about 5 wt% to about 50 wt% of the total stick composition (col. 2, lines 12-13 and col. 3, lines 33-38). This range overlaps with the instantly claimed range (MPEP 2144.05(I)). Furthermore, Deckner discloses cetyl palmitate as a suitable wax-type gelling agent (col. 2, line 36).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to substitute the fatty acid ester gelling agent disclosed by Cetti with cetyl palmitate disclosed by Deckner as a suitable gelling agent in solid deodorant compositions. This modification would have been obvious as the simple substitution of one known component for another to yield a predictable outcome. Therefore, claim 28 is obvious over Cetti in view of Deckner.
Response to Applicant’s Arguments
Applicant principally argues that Cetti does not teach or suggest a homogenous mixture of fragrances, natural waxes, and fatty substances because Cetti’s fragrance is encapsulated and that a person of ordinary skill in the art would not have been motivated to eliminate Cetti’s encapsulation because preservation of the fragrance microcapsules is central to Cetti’s teachings.
Applicant’s arguments have been fully considered but are not persuasive.
As discussed above, Cetti expressly teaches compositions containing both encapsulated fragrance and a separately added parent fragrance. Further, Cetti expressly identifies these compositions as homogenous in Example C.
Thus, Cetti itself teaches the homogenous feature relied upon by Applicant to distinguish the independent claims.
Applicant’s argument that removal of Cetti’s fragrance microcapsules would defeat the purpose of Cetti is also not persuasive because the rejection does not require removal of the fragrance microcapsules. Cetti expressly contemplates the simultaneous presence of a dispersed parent fragrance and an encapsulated fragrance in a homogenous mixture. Claim 13 utilizes an open-ended transition and thus, does not preclude the presence of encapsulated fragrance in addition to the claimed ingredients.
Accordingly, no modification that destroys Cetti’s disclosed intended fragrance-release function is necessary.
Applicant further argues Demson does not cure the asserted deficiency of Cetti because neither Cetti nor Demson teaches or suggests the claimed homogenous mixture.
As discussed above, Cetti itself teaches formation of a homogenous personal care composition containing waxes, fatty/emollient material, and separately added fragrance. Demson is therefore not relied upon to provide the homogenous mixture limitation. Rather, Demson is relied upon for the limitation of claim 27 requiring the natural fatty substance to comprise hydrogenated jojoba oil. Applicant’s argument improperly requires Demson, the secondary reference, to independently disclose limitations already taught by the primary reference. The obviousness inquiry considers the combined teaching of the references rather than whether each reference separately contains every limitation of the claim.
Accordingly, Applicant’s arguments do not overcome the rejection, and the rejection of claim 27 under 35 USC 103 over Cetti in view of Demson is maintained.
Applicant further argues Deckner does not cure the asserted deficiency of Cetti because neither Cetti nor Deckner teaches or suggests the claimed homogenous mixture.
As discussed above, Cetti itself teaches formation of a homogenous personal care composition containing waxes, fatty/emollient material, and separately added fragrance. Deckner is therefore not relied upon to provide the homogenous mixture limitation. Rather, Deckner is relied upon for the limitation of claim 28 requiring the natural fatty substance to comprise hydrogenated jojoba oil. Applicant’s argument improperly requires Deckner, the secondary reference, to independently disclose limitations already taught by the primary reference. The obviousness inquiry considers the combined teaching of the references rather than whether each reference separately contains every limitation of the claim.
Accordingly, Applicant’s arguments do not overcome the rejection, and the rejection of claim 28 under 35 USC 103 over Cetti in view of Deckner is maintained.
Conclusion
Claims 13-32 are rejected. No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A. Rossi whose telephone number is (571)272-0138. The examiner can normally be reached M-Th 7:30-5:30 (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571)272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA A. ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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