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 Status
Applicant’s election without traverse of Group I, claims 1-10 drawn to a deodorant composition in the reply filed on 07/24/2026 is acknowledged.
Claims 11-18 of non-elected Groups II-III are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse for Group I in the reply filed on 07/24/2026.
Applicant's election with traverse of the species: water as the carrier; both C16-C22 linear fatty alcohol and C16-C22 fatty acid glyceride as a rheology modifier; nonionic emulsifier system and glycerol humectant in the reply filed on 07/24/2026 is acknowledged. Examiner will rejoin a perfume of claim 10 with the elected species. The traversal is on the ground(s) that the species are already encompassed by the elected claims drawn to the same deodorant composition having zinc neodecanoate and lactic acid. Because those ingredients can be searched together with the elected composition without requiring distinct prior art searches Applicants argue that the species requirement is improper.
This is not found persuasive because the species claimed would require different search queries. Applicants argue that the ingredients are searchable together, however an aqueous composition (water) as a carrier is distinct and requires separate search queries than a search for anhydrous deodorant compositions. Furthermore, a search for PEG oligomer requires different search queries to glycerol as each of the species are structurally distinct. Examiner notes that Applicants did not elect a particular species of the fatty acid glyceride and fatty alcohol or nonionic emulsifier system, however the election will be interpreted as both in the composition.
Claims 1-10 are under current examination as directed to a composition having lactic acid, water and zinc neodecanoate with the elected composition inclusive of a C16-C22 linear fatty alcohol, a C16-C22 fatty acid glyceride, nonionic emulsifier system, glycerol and fragrance.
Information Disclosure Statement
Information Disclosure Statement (IDS) filed on 06/12/2025 and 04/04/2025 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
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.
Claim(s) 1-4 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sengupta et al. (United States Patent Publication 20160136080) in view of Matthew Peter Brooks- hereafter Brooks (United States Patent Publication 20200046619).
Sengupta et al. teach cosmetic products including deodorants which comprise zinc ricinoleate as a deodorizing agent, see abstract, paragraphs [0179] and [0117]. The composition can further comprise structuring agents and pH adjusting agents, see paragraph [0180]. Each of the deodorizing agents, pH adjusting agents and structuring agents can be included from 0.001-90% by weight or from 0.5-10% by weight, see paragraph [0181]. Examples of pH adjusters are inclusive of organic acids such as lactic acid, see paragraph [0118]. As the pH adjusting agent such as lactic acid and deodorizing agent such as zinc ricinoleate can each be present in a range inclusive of 0.5-10% by weight, Sengupta suggests 1:1 ratios of each. The composition can comprise o/w emulsions thus the carrier comprises water, see paragraphs [0113], [0171] and [0178]. Examples of structuring agents include PEG glycol ether of stearyl alcohol and stearyl alcohol (a C18 fatty alcohol) see paragraph [0124]. The composition can comprise fragrances, see paragraph [0048] and [0100]. The composition can comprise emulsifiers, see paragraph [0098]. The viscosity of the emulsion is from 40,000 mPa.s or less, see paragraph [0099]. Sengupta et al. teach that the viscosity of the emulsion can comprise 40,000 mPa.s or less, see paragraph [0099]. Although the viscosity is not measured at 10/s 20 degrees Celsius, Sengupta et al. each that the structuring agent assists in providing rheological characteristics to the composition which helps contribute to the stability of the composition. Thus, it would have been obvious to adjust the viscosity of the deodorant taught in Sengupta to obtain the desired rheological properties, see paragraphs [0099] and [0123]. Sengupta et al. teach that suitable humectants for use in the composition include glycerin (aka glycerol), see paragraph [0114].
Sengupta et al. teach deodorant actives including zinc ricinoleate present at 0.5-10% by weight, see paragraph [0117] and [0181]. However, Sengupta does not teach zinc neodecanoate as the deodorant active.
Brooks teaches deodorizing compositions comprising zinc neodecanoate, see abstract. Zinc ricinoleate was compared to zinc neodecanoate and it was found that zinc neodecanoate has significantly lower malodor intensity than underarms treated with zinc ricinolate. Zinc ricinoleate is taught to be less effective at deodorant effect and can leave white residue due to its poor solubility, whereas zinc neodecanoate does not leave white marks, see paragraphs [0010], [0047], [0125]. Zinc neodecanoate delivers deodorant benefits and has pleasant scent impression, see paragraphs [0012]. The zinc neodecanoate can comprise up to about 20% by weight or from 2-10% by weight, see paragraph [0047].
It would have therefore been prima facie obvious to substitute the zinc ricinoleate of Sengupta for zinc neodecanoate in order to provide a sustained scent and deodorant benefit to a source of malodor.
One would have been motivated to do so because Sengupta teaches deodorant compounds such as zinc ricinoleate and Brooks teaches that zinc neodecanoate has significantly lower malodor intensity for underarms than underarms treated with zinc ricinoleate. There would have been a reasonable expectation of success as Sengupta et al. teach the incorporation of deodorant actives. The combination of zinc neodecanoate from 2-10% by weight and lactic acid from 0.5-10% by weight overlaps and therefore renders obvious the claimed ratio of 1:2 to 10:1 of zinc neodecanoate to lactic acid. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sengupta et al. (United States Patent Publication 20160136080) in view of Matthew Peter Brooks- hereafter Brooks (United States Patent Publication 20200046619) as applied to all claims 1-4 and 9-10 above, and further in view of Anconi et al. (United States Patent Publication 20160296453).
Although Sengupta suggests emulsifiers can be present, Sengupta does not teach that their deodorant composition comprises a nonionic emulsifier system having ethoxylated alcohol with HLB of less than 8 to ethoxylated alcohol of more than 12 being from 1:1 to 1:10 by weight.
Anconi et al. teach deodorant compositions which can comprise zinc actives, see abstract and paragraph [0032]. The composition contains emulsifiers which are surface active agents. Surface active agents retain the water absorbing agent on the skin and provide stability, see paragraph [0016]. Examples of the surface active agents include nonionic emulsifiers, see paragraph [0017]. High HLB comounds provide good water or polar solvent solubility of the emulsifier while lower HLB values provide good solubility in non polar oils. Emulsifiers can be selected such that there is a combination of both high and low HLB emulsifiers with a combination of steareth- 21 (ethoxylated alcohol emulsifier) having a high HLB and steareth-2 (ethoxylated alcohol) having a low HLB, see paragraph [00018]. The low HLB emulsifier is preferably from 2-6.5 and the high HLB emulsifier has a HLB value of preferably 12-18, see paragraph [0017]. Anconi teaches that it is desirable to employ a mixture of ethoxylated alcohol emulsifiers in a wight ratio of an emulsifier having a lower HLB value of less than 6.5 to an emulsifier of higher HLB value of greater than 8 in a ratio of 1.5:1 to 6:1, see paragraphs [0021]-[0022]. Anconi teaches compositions in the form of oil-in-water emulsions, see claim 6.
It would have been prima facie obvious to provide the emulsifier of Sengupta as a nonionic emulsifier system having an HLB of lower than 6.5 and an HLB of higher than 8 or preferably from 12-16 in a ratio of 1.5:1 to 6:1 as taught by Anconi.
One of ordinary skill in the art would have been motivated to do so in order to provide the desired solubility of the emulsifier system. One of ordinary skill in the art would have had a reasonable expectation of success because Sengupta teaches that their oil in water composition can comprise emulsifiers and per the teaching of Anconi, suitable nonionic emulsifiers include mixtures of both high and low HLB ethoxylated alcohols with an overlapping ratio to the claimed range of 1:1 to 1:10. . 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sengupta et al. (United States Patent Publication 20160136080) in view of Matthew Peter Brooks- hereafter Brooks (United States Patent Publication 20200046619) as applied to all claims above, and further in view of Alonzo et al. (WO2002003830).
The teachings of Sengupta are discussed above. Sengupta does teach one or more structuring agents such as stearyl alcohol (a fatty alcohol of C18) , see paragraphs [0123]-[0124].
Sengupata does not teach that the structuring agent also includes a fatty acid glyceride of C16-C22.
However, Alonzo et al. teach deodorant products which comprise structurants, see abstract and page 13, lines 13-31. Examples of structurants include fatty acid derivatives of polyols such as glyceryl monostearate (fatty acid glyceride of C21) and fatty alcohols such as stearyl alcohol (C18 fatty alcohol) which can be used individually or in mixtures, see page 13, lines 25-31 to page 14, lines 1-12.
It would have been prima facie obvious to substitute the structuring agents of Sengupta for glycerol monostearate as the additional structuring agent which can be combined with the stearyl alcohol of Sengupta.
One of ordinary skill in the art would have been motivated to do so because stearyl alcohol and glyceryl monostearate are taught as suitable non-polymeric structuring agents for use with deodorant compositions. The substitution of Sengupta’s structurants for stearyl alcohol with glycerol monostearate structurant would have yielded predictable expectation of success in providing rheological properties to the deodorant composition. Furthermore, Alonzo et al. teach that glycerol monostearate can be combined in a mixture comprising stearyl alcohol and Sengupta et al. teach their structurants can comprise mixtures which include stearyl alcohol.
Claims 1 and 3, 6, and 9-10 are rejected under 35 U.S.C. 103 as being obvious over Cornmell et al. (WO2024033154) in view of Sengupta et al. (United States Patent Publication 20160136080)
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Cornmell et al. teach deodorant compositions comprising water wherein the deodorant composition contains zinc neodecanoate, nonionic emulsifier and structurants, see page 8, lines 28-30, page 10, lines 15-18, page 11, lines 1-10. The composition can contain glycerin (aka glycerol) as a humectant and a fragrance material, see pages 6, lies 17-24 and page 7, lines 1-10 and page Cornell teaches that the structurant increases the viscosity of the composition, see page 8, lines 27-30 and page 11,lines 5-10. The zinc decanoate can comprise 0.1-20% by weight of the deodorant composition, see page 10, lines 20-25.
Cornmell does not teach the presence of lactic acid wherein the zinc neodecanoate to lactic acid ratio is from 1:4 to 10:1, wherein the structurant is a C16-C22 linear fatty alcohol and C16-C22 fatty acid glyceride, or that the viscosity is from 10,000mPa.s to 200,000 mPa.s at 10/s and 20 degrees Celsius.
Sengupta et al. teach cosmetic products including deodorants which comprise zinc ricinoleate as a deodorizing agent, see abstract, paragraphs [0179] and [0117]. The composition can further comprise structuring agents and pH adjusting agents, see paragraph [0180]. Each of the deodorizing agents, pH adjusting agents and structuring agents can be included from 0.001-90% by weight or from 0.5-10% by weight, see paragraph [0181]. Examples of pH adjusters are inclusive of organic acids such as lactic acid, see paragraph [0118]. As the pH adjusting agent such as lactic acid and deodorizing agent such as zinc ricinoleate can each be present in a range inclusive of 0.5-10% by weight, Sengupta suggests 1:1 ratios of each. The composition can comprise o/w emulsions, see paragraphs [0113], [0171] and [0178]. Examples of structuring agents include PEG glycol ether of stearyl alcohol and stearyl alcohol, see paragraph [0124]. The composition can comprise emulsifiers, see paragraph [0098]. The viscosity of the emulsion is from 40,000 mPa.s or less, see paragraph [0099]. The composition can comprise fragrances, see paragraph [0048] and [0100]. Sengupta et al. teach that the viscosity of the emulsion can comprise 40,000 mPa.s or less, see paragraph [0099]. Although the viscosity is not measured at 10/s 20 degrees Celsius, Sengupta et al. each that the structuring agent assists in providing rheological characteristics to the composition which helps contribute to the stability of the composition. Thus, it would have been obvious to adjust the viscosity of the deodorant taught in Sengupta to obtain the desired rheological properties, see paragraphs [0099] and [0123]. Sengupta et al. teach that suitable humectants for use in the composition include glycerin (aka glycerol), see paragraph [0114].
It would have been prima facie obvious to incorporate lactic acid into the deodorant composition of Cornmell et al. in order to adjust the pH of the deodorant to the desired pH range.
There would have been a reasonable expectation of success because both Cornmell and Sengupta teach deodorant composition having zinc compounds. The lactic acid incorporated at 0.5-10% by weight which together with Cornmell’s teaching of 0.1-20% zinc neodecanoate overlaps the claimed range of from 1:4 to 10:1 of zinc neodecanoate to lactic acid.
It would have been prima facie obvious to adjust the viscosity of Cornmell’s deodorant composition utilizing structuring agents such as the stearyl alcohol (C18 fatty alcohol) as Sengupta teaches that the viscosity of deodorant emulsions can comprise 40,000 mPa.s and that the structuring agent assists in providing rheological characteristics to contribute to stability of the emulsion.
Claims 4-5 are rejected under 35 U.S.C. 103 as being obvious over Cornmell et al. (WO2024033154) in view of Sengupta et al. (United States Patent Publication 20160136080) as applied to all claims 1 and 3-4, 6, and 9-10 above, and further in view of Alonzo et al. (WO2002003830).
Cornmell teaches the use of structuring agents but does not teach the structuring agent of a C16-C22 fatty acid glyceride or C16-C22 fatty alcohol.
However, Alonzo et al. teach deodorant products which comprise structurants, see abstract and page 13, lines 13-31. Examples of structurants include fatty acid derivatives of polyols such as glyceryl monostearate (fatty acid glyceride of C21) and fatty alcohols such as stearyl alcohol (C18 fatty alcohol) which can be used individually or in mixtures, see page 13, lines 25-31 to page 14, lines 1-12.
It would have been prima facie obvious to substitute the structuring agents of Cornmell for glycerol monostearate and stearyl alcohol (fatty alcohol) as the additional structuring agent.
One of ordinary skill in the art would have been motivated to do so because glyceryl monostearate and stearyl alcohol are taught as suitable non-polymeric structuring agents for use with deodorant compositions.
The substitution for glycerol monostearate structurant and stearyl alcohol would have yielded predictable expectation of success in providing rheological properties to the deodorant composition. Furthermore, Alonzo et al. teach that glycerol monostearate can be combined in a mixture comprising stearyl alcohol for use as structuring agents in deodorants.
Claims 7-8 are rejected under 35 U.S.C. 103 as being obvious over Cornmell et al. (WO2024033154) in view of Sengupta et al. (United States Patent Publication 20160136080) as applied to all claims 1 and 3-4, 6, and 9-10 above, and further in view of Anconi et al. (United States Patent Publication 20160296453).
The teachings of Cornmell are discussed above. Although Cornmell teaches nonionic emulsifiers, the reference does not teach an ethoxylated alcohol of HLB less than 8 and ethoxylated alcohol of HLB greater than 12 at a ratio of 1:1 to 10:1.
Anconi et al. teach deodorant compositions which can comprise zinc actives, see abstract and paragraph [0032]. The composition contains emulsifiers which are surface active agents. Surface active agents retain the water absorbing agent on the skin and provide stability, see paragraph [0016]. Examples of the surface-active agents include nonionic emulsifiers, see paragraph [0017]. High HLB comounds provide good water or polar solvent solubility of the emulsifier while lower HLB values provide good solubility in non-polar oils. Emulsifiers can be selected such that there is a combination of both high and low HLB emulsifiers with a combination of steareth 21 (ethoxylated alcohol) having a high HLB and stearath-2 (ethoxylated alcohol) having a low HLB, see paragraph [00018]. Anconi teaches that it is desirable to employ a mixture of ethoxylated alcohol emulsifiers in a wight ratio of an emulsifier having a lower HLB value of less than 6.5 to an emulsifier of higher HLB value of greater than 8 in a ratio of 1.5:1 to 6:1, see paragraphs [0021]-[0022]. Anconi teaches compositions in the form of oil-in-water emulsions, see claim 6. The high HLB emulsifier is taught to preferably be from 12-18.
It would have been prima facie obvious to provide the emulsifier of Sengupta as a nonionic emulsifier system having an HLB of lower than 6.5 and an HLB of higher than 8 including from 12-16 in a ratio of 1.5:1 to 6:1 as taught by Anconi.
One of ordinary skill in the art would have been motivated to do so in order to provide the desired solubility of the emulsifier system. One of ordinary skill in the art would have had a reasonable expectation of success because Cornmell teaches that their deodorant composition can comprise nonionic emulsifiers and per the teaching of Anconi suitable nonionic emulsifiers include mixtures of both high and low HLB ethoxylated alcohols.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18943458 (reference application) in view of Sengupta et al. (United States Patent Publication 20160136080) in view of Matthew Peter Brooks- hereafter Brooks (United States Patent Publication 20200046619).
Claims 1-10 are directed to an invention not patentably distinct from claims 1-11 of commonly assigned Application No.18943458.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘458 are directed to deodorant compositions which can be o/w emulsions (i.e. containing water) having a nonionic emulsifier system, zinc neodecanoate and a rheology modifier that has a combination of C16-C22 linear fatty alcohol and C16-C22 fatty acid glyceride with overlapping viscosity ranges at 10/s and 20 degrees Celsius. Both the instant claims and that of Application ‘458 have a fragrance and glycerol humectant and a nonionic surfactant system having ethoxylated alcohol of HLB less than 8 and an ethoxylated alcohol of greater than 12 being from 1:1 to 1:10.
The difference between the instant claims and that of Application ‘458 is the recitation of lactic acid wherein the ratio of zinc neodecanoate to lactic acid is from 1:4 to 10:1.
However, Sengupta et al. teach cosmetic products including deodorants which comprise zinc ricinoleate as a deodorizing agent, see abstract, paragraphs [0179] and [0117]. The composition can further comprise structuring agents and pH adjusting agents, see paragraph [0180]. Each of the deodorizing agents, pH adjusting agents and structuring agents can be included from 0.001-90% by weight or from 0.5-10% by weight, see paragraph [0181]. Examples of pH adjusters are inclusive of organic acids such as lactic acid, see paragraph [0118]. As the pH adjusting agent such as lactic acid and deodorizing agent such as zinc ricinoleate can each be present in a range inclusive of 0.5-10% by weight, Sengupta suggests 1:1 ratios of each. The composition can comprise o/w emulsions, see paragraphs [0113], [0171] and [0178]. Examples of structuring agents include PEG glycol ether of stearyl alcohol and stearyl alcohol, see paragraph [0124]. The composition can comprise emulsifiers, see paragraph [0098]. The viscosity of the emulsion is from 40,000 mPa.s or less, see paragraph [0099]. The composition can comprise fragrances, see paragraph [0048] and [0100]. Sengupta et al. teach that the viscosity of the emulsion can comprise 40,000 mPa.s or less, see paragraph [0099]. Although the viscosity is not measured at 10/s 20 degrees Celsius, Sengupta et al. each that the structuring agent assists in providing rheological characteristics to the composition which helps contribute to the stability of the composition. Thus, it would have been obvious to adjust the viscosity of the deodorant taught in Sengupta to obtain the desired rheological properties, see paragraphs [0099] and [0123]. Sengupta et al. teach that suitable humectants for use in the composition include glycerin (aka glycerol), see paragraph [0114].
Brooks teaches deodorizing compositions comprising zinc neodecanoate, see abstract. Zinc ricinoleate was compared to zinc neodecanoate and it was found that zinc neodecanoate has significantly lower malodor intensity than underarms treated with zinc ricinolate. Zinc ricinoleate is taught to be less effective at deodorancy and can leave white residue due to its poor solubility, whereas zinc neodecanoate does not leave white marks, see paragraphs [0010], [0047], [0125]. Zinc neodecanoate delivers deodorant benefits and has pleasant scent impression, see paragraphs [0012]. The zinc neodecanoate can comprise up to about 20% by weight or from 2-10% by weight, see paragraph [0047].
It would have been obvious to provide the deodorant of Application ‘458 with lactic acid in an amount of 0.5-10% by weight in order to adjust the pH of the deodorant composition to the desired pH range. Furthermore, it would have been obvious to provide the zinc neodecanoate of Application ‘458 in an amount of from 2-10% by weight because Brooks teaches that these amounts provide a suitable deodorizing property. The combination of the lactic acid being from 0.5-10% by weight and zinc neodecanoate from 2-10% by weight overlaps and renders obvious the instantly clamed range of 1:4 to 10:1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 18943458, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1 and 3-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 9 and 11 of copending Application No. 18997677 (reference application) in view of in view of Sengupta et al. (United States Patent Publication 20160136080) in view of Matthew Peter Brooks- hereafter Brooks (United States Patent Publication 20200046619), Anconi et al. (United States Patent Publication 20160296453) and Alonzo et al. (WO2002003830).
Claims 1-10 are directed to an invention not patentably distinct from claims 1-2, 9 and 11 of commonly assigned Application No.18997677.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘677 are directed to deodorant compositions which can comprise zinc neodecanoate, fragrance and nonionic emulsifiers and a structurant. Application ‘677 is water dispersed in oil (i.e. w/o emulsion).
The difference between the instant claims and that of Application ‘677 is that claim 1 comprises lactic acid with the zinc neodecanoate wherein the ratio of the zinc decanoate to lactic acid is 1:4 to 10:1. Furthermore, the instant claims have a structurant that is a C16-C22 linear fatty acid and C16-C22 fatty acid glycerols with a nonionic emulsifier system having an ethoxylated alcohol of HLB less than 8 and an ethoxylated alcohol of HLB of greater than 12 at a ratio of about 1:1 to 1:10, and wherein the instant claims further comprise a humectant of glycerin.
Sengupta et al. teach cosmetic products including deodorants which comprise zinc ricinoleate as a deodorizing agent, see abstract, paragraphs [0179] and [0117]. The composition can further comprise structuring agents and pH adjusting agents, see paragraph [0180]. Each of the deodorizing agents, pH adjusting agents and structuring agents can be included from 0.001-90% by weight or from 0.5-10% by weight, see paragraph [0181]. Examples of pH adjusters are inclusive of organic acids such as lactic acid, see paragraph [0118]. As the pH adjusting agent such as lactic acid and deodorizing agent such as zinc ricinoleate can each be present in a range inclusive of 0.5-10% by weight, Sengupta suggests 1:1 ratios of each. The composition can comprise o/w emulsions, see paragraphs [0113], [0171] and [0178]. Examples of structuring agents include PEG glycol ether of stearyl alcohol and stearyl alcohol, see paragraph [0124]. The composition can comprise emulsifiers, see paragraph [0098]. The viscosity of the emulsion is from 40,000 mPa.s or less, see paragraph [0099]. The composition can comprise fragrances, see paragraph [0048] and [0100]. Sengupta et al. teach that the viscosity of the emulsion can comprise 40,000 mPa.s or less, see paragraph [0099]. Although the viscosity is not measured at 10/s 20 degrees Celsius, Sengupta et al. each that the structuring agent assists in providing rheological characteristics to the composition which helps contribute to the stability of the composition. Thus, it would have been obvious to adjust the viscosity of the deodorant taught in Sengupta to obtain the desired rheological properties, see paragraphs [0099] and [0123]. Sengupta et al. teach that suitable humectants for use in the composition include glycerin (aka glycerol), see paragraph [0114].
Brooks teaches deodorizing compositions comprising zinc neodecanoate, see abstract. Zinc ricinoleate was compared to zinc neodecanoate and it was found that zinc neodecanoate has significantly lower malodor intensity than underarms treated with zinc ricinolate. Zinc ricinoleate is taught to be less effective at deodorizing and can leave white residue due to its poor solubility, whereas zinc neodecanoate does not leave white marks, see paragraphs [0010], [0047], [0125]. Zinc neodecanoate delivers deodorant benefits and has pleasant scent impression, see paragraphs [0012]. The zinc neodecanoate can comprise up to about 20% by weight or from 2-10% by weight, see paragraph [0047].
Anconi et al. teach deodorant compositions which can comprise zinc actives, see abstract and paragraph [0032]. The composition contains emulsifiers which are surface active agents. Surface active agents retain the water absorbing agent on the skin and provide stability, see paragraph [0016]. Examples of the surface active agents include nonionic emulsifiers, see paragraph [0017]. High HLB comounds provide good water or polar solvent solubility of the emulsifier while lower HLB values provide good solubility in non polar oils. Emulsifiers can be selected such that there is a combination of both high and low HLB emulsifiers with a combination of steareth 21 having a high HLB and stearath-2 having a low HLB, see paragraph [00018]. Anconi teaches that it is desirable to employ a mixture of ethoxylated alcohol emulsifiers in a wight ratio of an emulsifier having a lower HLB value of less than 6.5 to an emulsifier of higher HLB value of greater than 8 in a ratio of 1.5:1 to 6:1, see paragraphs [0021]-[0022]. Anconi teaches compositions in the form of oil-in-water emulsions, see claim 6.
Alonzo et al. teach deodorant products which comprise structurants, see abstract. Examples of structurants include fatty ester derivatives of polyols such as glyceryl monostearate and fatty alcohols such as stearyl alcohol which can be used individually or in mixtures, see entire document.
It would have been obvious to provide the deodorant of Application ‘677 with lactic acid in an amount of 0.5-10% by weight in order to adjust the pH of the deodorant composition to the desired pH range. Furthermore, it would have been obvious to provide the zinc neodecanoate of Application ‘677 in an amount of from 2-10% by weight because Brooks teaches that these amounts provide a suitable deodorizing property. The combination of the lactic acid being from 0.5-10% by weight and zinc neodecanoate from 2-10% by weight overlaps and renders obvious the instantly clamed range of 1:4 to 10:1.
It would have been obvious to incorporate glycerol with the composition of Application ‘677 as glycerol is taught to impart humectant properties.
It would have been obvious to provide the structurant of Application ‘677 claimed as a C16-C22 fatty acid glyceride and C16-C22 fatty alcohol (i.e. stearyl alcohol) because Alonzo teaches that stearic acid (fatty alcohol) and glyceryl monostearate (fatty acid glyceride) are taught as suitable non-polymeric structuring agents for use with deodorant compositions
Lastly it would have been obvious to provide the nonionic emulsifiers of Application ‘677 as a nonionic emulsifier system having a HLB of lower than 6.5 and an HLB of higher than 8 in a ratio of 1.5:1 to 6:1 as taught by Anconi. A HLB of higher than 8 is inclusive of 12.
One of ordinary skill in the art would have been motivated to do so in order to provide the desired solubility of the emulsifier system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 18997677, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Currently, claims 1-10 are rejected and no claims are allowed.
Correspondence
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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