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 .
Priority
The instant application is the national stage entry of PCT/EP2023/065055 filed 6 June 2023. Acknowledgement is made of the Applicant’s claim of foreign priority to application EP22177918.4 filed 8 June 2022 and application EP22177924.2 filed 8 June 2022. The effective filing date of the instant claims is 8 June 2022.
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 1-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2012/0177589) in view of Seavone et al. (US 2008/0213203).
Banowski teaches antiperspirant compositions for personal body care (abstract). The composition is substantially water-free (i.e. anhydrous) and may contain no more than 7 wt% of water [0038]. Antiperspirant sticks can be water-free and in the form of a gel comprising at least one silicone component or they can be polyol-in-water emulsions [0204]. Water-free antiperspirant sticks contain about 30-70% cosmetic oil and 15-25% fatty component as well as filler (0.5-30 wt%) and oil-in-water emulsifier [0205]. Regarding the antiperspirant active, preferred agents include salts of aluminum and zinc wherein the active is present in amounts ranging from 5-40 wt% [0039-0040; 0068]. The composition further comprises a carrier fluid which can be a volatile silicon oil like cyclopentasiloxane (10-95 wt%) and/or a non-volatile cosmetic oil such as a non-silicone oil (10-95 wt%) [0090, 0092-0095, 0116]. The non-volatile non-silicon oil can be selected from the group comprising sunflower oil [0113]. The composition can further comprise an oil-in-water emulsifier with an HLB value of more than 7 [0160]. One example of a preferred emulsifier is an organosiloxane-oxyalkylene copolymer such as DOW CORNING 190 (aka PEG/PPG-18/18 dimethicone) [0168, 0170]. The emulsifier can be used in the water-free composition in amounts of 0.5-10 wt% [0183]. The composition can further comprise antioxidants as additional active agents [0225]. The antiperspirant of Banowski is designed with oils to provide a pleasant skin feel and low marking of clothes [0094].
Banowski does not specify the selection of antioxidant.
Seavone teaches antiperspirant compositions (abstract) that may comprise an antioxidant wherein the antioxidant may be selected from the group comprising butyl hydroxytoluene (BHT) [0092] (claim 8).
It would have been prima facie obvious to prepare a water-free antiperspirant composition as taught by Banowski wherein the stick comprises an active, a cosmetic oil, an emulsifier, and an antioxidant. That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of active agents, emulsifiers, oils, and antioxidants from within Banowski, to arrive at compositions “yielding no more than one would expect from such an arrangement.” The resulting combination would be an antiperspirant stick comprising aluminum salt active (5-40 wt%), sunflower oil (10-95 wt%), cyclopentasiloxane (10-95 wt%), PEG/PPG-18/18 dimethicone (0.5-10 wt%), and less than 7% water. The instant specification suggests that the HLB value of PEG/PPG-18/18 dimethicone is “less than 11” (pgs 8-11) and that sunflower oil has an iodine value of at least 100 (pgs 6-7). It is further noted that in the presence of cyclopentasiloxane, the emulsifier of Banowski reads on that of instant claims 4-6.
Regarding the ratio of active to surfactant, Banowski teaches a range of active from 5-40 wt% and a range of emulsifier (surfactant) of from 0.5-10 wt%, thus rendering obvious a ratio of 8:1 or less, as required in instant claim 2.
Regarding the concentrations of active, surfactant, and oil, the art teaches ranges that either overlap with or encompass the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
Banowski does not teach the amount of antioxidant, but refers to it as an active agent, which would make obvious the previously taught range of 5-40 wt%. The function of an antioxidant is well known in the art. That being said and in lieu of objective evidence of unexpected results, the concentration of antioxidant can be viewed as a variable which achieves the recognized result of successfully providing antioxidant effects, such as neutralizing free radicals. The optimum or workable range of antioxidant can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of antioxidant nonobvious. Regarding the species of antioxidant, it would have been obvious to use BHT as the antioxidant in the antiperspirant since Seavone teaches BHT as a useful antioxidant in antiperspirant compositions. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
Regarding the methods of instant claims 13 and 15, the composition of Banowski is an antiperspirant, which is applied to the underarms and skin of a patient, and is formulated with oils to reduce or minimize marks on clothing. Thus, a method wherein the antiperspirant is applied to a body part that comes in contact with fabric worn by the individual would have been necessarily obvious. Moreover, it would have been obvious to further wash and rinse said clothing after use. As such, the ability of the composition to minimize staining/yellowing or white marks is inherently present in the composition based on the selection of oils.
As such, the composition of Banowski renders obvious instant claims 1-13 and 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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