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 . Claims included in the prosecution are claims 1-11.
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 1, 2, 4-8, 10 and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claim(s) recite(s) a composition comprising water, one or more antiperspirant material, one or more alpha-hydroxycarboxylic acid, one or more oil agent, one or more structuring agent, caffeine, one or more skin conditioning agent, and one or more additional cosmetically acceptable auxiliary substance. An antiperspirant material may be zinc sulfate. An alpha-hydroxycarboxylic acid may be lactic acid. An oil agent may be avocado oil. A structuring agent may be starch. A skin conditioning agent may be mineral oil. An additional cosmetically acceptable auxiliary substance may be citric acid. Water, zinc sulfate, lactic acid, avocado oil, starch, caffeine, mineral oil, and citric acid are all found in nature. There is nothing recited in the claim that makes these ingredients chemically or physically different from its naturally occurring counterpart. Thus, the composition is not markedly different from its naturally occurring counterpart. This judicial exception is not integrated into a practical application because although the composition is for use as an antiperspirant cream, this is merely an intended use of the claimed invention and cannot integrate a judicial exception under the “treatment or prophylaxis” consideration. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite any required non-natural ingredients.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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 5, 6 and 8-11 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.
Claims 5, 6, and 9 recite wherein the one or more oil agents comprise: (a) one or more hard oils or fats; (b) one or more liquid oils or fats; (c) one or more ester oils; and (d) one or more higher alcohols. The claim is indefinite since, because the one or more oil agent may just be one oil agent, it is not clear whether the one or more oil agent is one selected from one or more hard oils or fats, one or more liquid oils or fats, one or more ester oils, and one or more higher alcohols, or whether the one or more oil agent comprises each of those types of oils. The specification discloses in paragraph [0060] wherein the one or more hard oils or fats, one or more liquid oils or fats, one or more ester oils, and one or more higher alcohols may each be 0 wt. %, thus contributing to the indefiniteness.
The term “higher” in claims 5, 6, and 9 is a relative term which renders the claim indefinite. The term “higher” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Although the specification discloses in paragraph [0031] wherein higher alcohols have 12 to 22 carbon atoms, the specification does not limit the higher alcohols to only alcohols having 12 to 22 carbon atoms. Thus, the scope of higher alcohols is unclear.
Claim 8 recites the limitation “wherein the one or more structuring agents comprise a starch.” There is insufficient antecedent basis for this limitation in the claim. Claim 8 depends from claim 7 and claim 7 recites wherein the one or more structuring agent comprises at least one starch. It is unclear whether “a starch” in claim 8 is further limiting the at least one starch of claim 7 or is an additional starch from the at least one starch of claim 7.
Claim 10 recites the limitation "one or more cosmetic auxiliary agents" in the fourth line. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the one or more cosmetic auxiliary agents is referring to the one or more skin conditioning agents and the one or more additional cosmetically acceptable auxiliary substance or is referring to only the one or more additional cosmetically acceptable auxiliary substances. If the latter, the claim would still be indefinite for being incomplete for omitting the inclusion of the skin conditioning agent, which is essential to prepare the composition since it is a required ingredient.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the inclusion of one or more structuring agents, one or more skin conditioning agents, and one or more additional cosmetically acceptable auxiliary substances. Since these ingredients are required in the composition, the method of preparing the composition need to have these ingredients in order to formulate the composition.
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.
1. Claims 1-8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock et al. (US 2009/0220444, Sep. 3, 2009) (hereinafter Teckenbrock) in view of Kux et al. (US 2007/0116656, May 24, 2007) (hereinafter Kux).
Teckenbrock discloses a cosmetic and dermatological antiperspirant and deodorant composition (abstract). The cosmetically or dermatologically acceptable carrier of the composition may be a cream (¶ [0045]). The cream may be present as a water-in-oil emulsion or oil-in-water emulsion (¶ [0047]). The amount of water may be 0.1-99 wt. % (¶ [0310]). The composition may comprise aluminum chlorohydrate as an antiperspirant active ingredient (¶ [0022]). The antiperspirant active ingredient is contained in a total quantity of 3-25 wt. % (¶ [0023]). The oil(s) is/are contained in a total quantity of 0.1-80 wt. % (¶ [0301]). Suitable oils include corn oil (i.e., (b) one or more liquid oils or fats) (¶ [0289]) and isopropyl myristate (i.e., (c) one or more ester oils) (i.e. myristate ester) (¶ [0292]). The composition may comprise shea butter (i.e., (a) one or more hard oils or fats) as a skin-soothing active ingredient (¶ [0321]). The cream may comprise 1.5-5% behenyl alcohol (i.e., (d) one or more higher alcohols) (¶ [0367]). The composition may further comprise butylene glycol (i.e., one or more skin conditioning agent) (¶ [0308]). At least one fragrance (i.e., one or more additional cosmetically acceptable auxiliary substance) may be further contained in the composition (¶ [0315]). The composition is formed through mixing (¶ [0335]).
Teckenbrock differs from the instant claims insofar as not disclosing wherein the composition comprises one or more alpha-hydroxycarboxylic acid and a starch (i.e., one or more structuring agent).
However, Kux discloses a cosmetic or dermatological preparation which comprises an aluminum containing antiperspirant active ingredient, an α-hydroxycarboxylic acid, and water (abstract). The aluminum compound may be aluminum chlorohydrate (¶ [0057]). A composition comprising at least one aluminum compound (which will usually be capable of exhibiting antiperspirant activity), at least one α-hydroxycarboxylic acid, preferably mandelic acid, and water permits the provision of a transparent or translucent, low-stick cosmetic or dermatological preparation (such as, e.g., an antiperspirant preparation) (¶ [0049]). The amount of α-hydroxycarboxylic acid may be from about 0.1% to about 10% (claim 19). The preparation may be present as an emulsion-based preparation (¶ [0096]). The preparation may be formulated as a cream (¶ [0060]). The cosmetic or dermatological preparation may also comprise fillers which, for example, further improve the sensory and cosmetic properties of the formulation and bring about or enhance a velvety or silky feel on the skin. Advantageous fillers for the purposes of the present invention are starch and starch derivatives (such as, for example, tapioca starch, distarch phosphate, aluminum or sodium starch octenylsuccinate and the like) (¶ [0127]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated about 0.1% to about 10% α-hydroxycarboxylic acid, preferably mandelic acid, into the composition of Teckenbrock motivated by the desire to formulate a low-stick composition since the composition of Teckenbrock comprises aluminum chlorohydrate and water and the combination of aluminum chlorohydrate, an α-hydroxycarboxylic acid, and water permits the provision of a low-stick cosmetic or dermatological preparation, which is desirable in the art as taught by Kux.
Also, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated tapioca starch into the composition of Teckenbrock motivated by the desire to improve the sensory and cosmetic properties of the composition and bring about or enhance a velvety or silky feel on the skin as taught by Kux.
In regards to the amount of structuring agent claimed, since tapioca starch affects sensory and cosmetic properties, such as a velvety or silky feel on the skin, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount of tapioca starch based on the sensory and cosmetic properties desired. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
In regards to instant claims 10 and 11, Teckenbrock discloses wherein the composition is prepared through mixing, but does not disclose the claimed order of mixing. However, the claims are still obvious since selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04(IV)(C).
2. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Teckenbrock et al. (US 2009/0220444, Sep. 3, 2009) (hereinafter Teckenbrock) in view of Kux et al. (US 2007/0116656, May 24, 2007) (hereinafter Kux), and further in view of Florido (WO 2022/178600 A1, Sep. 1, 2022).
The teachings of Teckenbrock and Kux are discussed above. Teckenbrock and Kux do not teach wherein the composition comprises 0.5 wt. % to about 5 wt. % caffeine.
However, Florido discloses an antiperspirant cosmetic composition which combines whitening actives and aluminum salts to achieve armpits whitening effect in combination with sweat protection and unpleasant odor (abstract). The composition comprises 0.1% to 3% of exfoliant peeling agent, 0.2% to 3% whitening agent, 2% to 10% vitamin, 0.5% to 5% of caffeine, and 5% to 50% of antiperspirant agent selected from aluminum salts (claim 1). The aluminum salt may be aluminum chlorohydrate (claim 6). The antiperspirant cosmetic composition may be in the form of a cream or emulsion (page 5, lines 8-11).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated the whitening actives of Florido, which includes 0.5% to 5% caffeine, into the composition of Techenbrock motivated by the desire to formulate a composition that not only provides sweat protection, but a whitening effect as well as taught by Florido.
Conclusion
Claims 1-11 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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