DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1874 are pending and under current examination. Claims 2-5, 8, 10, 16, and 18-20 are cancelled.
Withdrawn Claim Objections and Rejections
All objections to claim 15 are withdrawn in view of the amendments to the claims filed 6/22/2026.
All rejections pertaining to claims 2-5, 8, 10, 16, and 18-20 are moot because the claims are cancelled in the amendments to the claims filed 6/22/2026.
All rejections under 35 U.S.C. 112(b) pertaining to claim 12 are withdrawn in view of the amendments to the claims filed 6/22/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 6/22/2026 have necessitated the new grounds of rejection.
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 1, 6-7, 9, 11-15, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski (U.S. Patent Application No. 2004/0234466, publication year: 2004, of record) in view of Sturgis (WO2019/182927, publication year: 2019).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1 and 21, Banowski teaches a cosmetic deodorant [0002] that may be in the form of a water-in-oil emulsion [0062]. The composition may contain glycolic or lactic acid in an amount of 0.01 to 5.0 wt.% [0009]. In water-containing forms of the invention, the water content is 5-98 wt.% [0075]. The composition may also comprise an emulsifier [0077]. The composition may include anti-perspirant aluminum compounds in a preferred embodiment [0106]. The emulsions can be transparent, translucent, or opaque [0063]. The Examiner considers the phrase “preferred embodiment” to read on an embodiment that does not comprise aluminum compounds. The Examiner considers the phrase “transparent, translucent, or opaque” to read on the “refractive index that is at most 0.01 different than the nonpolar phase” limitation of the instant claim 1. Banowski also teaches that the composition may contain an antimicrobial substance as a deodorant [0107].
Regarding claims 1, 11, and 17, Banowski does not disclose the surface tension or refractive index properties as recited in claims 1, 11, and 17. However, the invention as claimed is not structurally distinguishable from the disclosure of Banowski and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Regarding claims 6-7, Banowski teaches that the composition may be a water-in-silicone oil emulsion [0062].
Regarding claim 9, Banowski teaches that the water content is 5-98 wt.% [0075].
Regarding claim 12 and 13, Banowski teaches that the emulsions can be transparent, translucent, or opaque [0063]. The Examiner considers the phrase “transparent, translucent, or opaque” to read on the “refractive index that is at most 0.005 different” and “percent transmittance of at least 80% at 600nm” limitation of the instant claims 12 and 13.
Regarding claim 14, Banowski teaches that the composition may contain glycerol [0073].
Regarding claim 15, Banowski teaches that the composition may contain PEG [0073].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1 and 21, Banowski does not teach the inclusion of an antimicrobial recited by the instant claim. However, this deficiency is cured by Sturgis.
Sturgis teaches that piroctone olamine may be used as an antimicrobial compound in deodorant compositions (Claims 1 and 2) and is effective against two key underarm bacteria strains (pg. 15, Table 2).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1 and 21, it would have been prima facie obvious to include piroctone olamine as the antimicrobial agent in the deodorant composition of Banowski. One would have understood in view of Sturgis that piroctone olamine may be included as the antimicrobial agent and is effective against to key underarm bacteria strains. It would have been obvious to employ piroctone olamine as the antimicrobial agent taught by Banowski. One of ordinary skill in the art of filing would have been motivated to include piroctone olamine because it is an effective antimicrobial agent against two key underarm bacteria strains. The artisan of ordinary skill would have had reasonable expectation of success because Sturgis teaches that piroctone olamine may be used as an antimicrobial agent in a deodorant composition.
Response to Arguments
Applicant's arguments filed 6/22/2026 have been fully considered but they are not persuasive.
On page 6, Applicant argues that Banowski does not disclose, teach or suggest the claimed antimicrobials. This is not found persuasive. As described in the obviousness rejection above, it would have been prima facie obvious to one of ordinary skill in view of the teachings of Sturgis to include piroctone olamine as the antimicrobial compound present in the deodorant composition of Banowski.
On page 7, Applicant argues that there is no motivation to combine or select the claimed features and that this assertion in the non-final office action represents impermissible hindsight. This is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Please also refer to MPEP 2123 (I), which states: “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments”. As described in the obviousness rejection above, Banowski teaches a deodorant composition that may be in the form of a water-in-silicone oil emulsion, may contain lactic acid or glycolic acid, water, and an antimicrobial and is transparent. Sturgis teaches the use of piroctone olamine as an antimicrobial agent in deodorant composition. One of ordinary skill in the art could have therefore reasonably choose the limitations recited by the instant claims.
On page 7, Applicant argues that Banowski is completely silent regarding the relationship between refractive index matching, water concentration, and emulsion stability. This is not found persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the relationship between refractive index matching, water concentration, and emulsion stability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page 7, Applicant argues that the specific combination of features in amended claim 1 is the result of the Applicant’s discovery regarding emulsion stabilization. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The differences are unexpected and unobvious.
Differences are of both practical and statistical significance: The differences are of practical and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The instant claim 1 embraces a deodorant composition comprising lactic acid, malic acid, tartaric acid, succinic acid, tetrahydrofuran dicarboxylic acid, glycolic acid, oxalic acid, gluconic acid, salts and mixtures thereof, in any concentration and any microbial compound recited by the claim in any concentration. In order to be commensurate scope with the claims, the evidence of unexpected properties must demonstrate unexpected results for each and every species and concentration recited by the claims. However, the evidence of unexpected results is limited to compositions that comprise malic acid, glycolic acid, succinic acid at two to three concentrations each and a single concentration of a single antimicrobial compound. Furthermore, the amended claim 1 embraces any polar phase and any nonpolar phase and any concentration of both the polar and nonpolar phases. The evidence of unexpected results is limited to a silicone oil nonpolar phase and an aqueous polar phase at a single concentration of each. Therefore, the evidence of unexpected results is not in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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