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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a shaving aid, classified in A61Q9/02
II. Claims 11-16, drawn to a hair removal device comprising shaving aid comprising azoxystrobin, classified in B26B21/22.
III. Claims 17-18, drawn to a hair removal device comprising shaving aid comprising strobilurin, classified in B26B/21/22.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related product. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different design and components. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and II are directed to related product. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different design and components. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
A different field of search is required.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
During a telephone conversation with Andrea Velarde on 09/02/2026 a provisional election was made without traverse to prosecute the invention of invention group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1-18 are pending, claims 1-10 are under examination.
Priority
Acknowledge is made that this application is continuation of US patent application 17551982, filed on 12/15/2021; which claims priority from US provisional application 63/131374, filed on 12/29/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/14/2025 and 05/20/2026 is being considered by the examiner.
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.
Claim 5 is 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.
Claim 5 recites “the matrix polymer is ethylene vinyl acetate”, however, ethylene vinyl acetate is a monomer instead of polymer. Thus, the scope and boundary of claim is unclear. This is indefinite. For compact prosecution purpose, ethylene vinyl acetate is examiner as polyethylene vinyl acetate.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hayes et al. (US20160143836) in view of Johnson et al. (US20210401710).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Hayes et al. teaches A skin engaging member Suitable for use in a hair removal device, said skin engaging member comprising ethyl vinyl acetate having a low level of vinyl acetate and a water soluble polymer (abstract). The skin engaging member of the present invention is Suitable for use on a hair removal device (such as a razor), said skin engaging member consists of one or more layers of a shaving aid material, which can be of a polymeric material. The shaving aids of the present invention are formed of a polymeric matrix comprising a water Soluble polymer and a water-insoluble polymer comprising ethylene vinyl acetate (EVA). In one embodiment, the EVA is selected to have a '% vinyl acetate (% VA) of about 10% to about 18% (page 1. [0010, 0012]). In one embodiment, the skin engaging member comprises a solid polymeric matrix having a melting temperature from about 95° C. to about 205° C., said matrix comprising a water-insoluble polymer material comprising ethylene vinyl acetate and combined with a water-soluble polymer material and other optional adjunct or secondary ingredients. Suitable water soluble polymers which can be used in accordance with the present invention include, but are not limited to, one or more of a polyethylene oxide, polyvinyl pyrrolidone, polyacrylamide, polyhydroxymethacrylate, polyvinyl imidazoline, polyethylene glycol (page 2, [0023, 0025]). In one embodiment, the shaving aid is made at a controlled temperature such as below 130° C (page 2, [0027]). Various skin care actives (“actives') which are commonly used for topical application can also be used from about 0.01% to about 50% in the skin engaging member as a neat product and/or in an encapsulate, or as a coating. Skin active agent includes fatty alcohol, fatty acid, Antimicrobial and Anti-fungal agent (page 4, [0040, 0043-0044]; page 6, [0053). The process of making includes blending, mixing, solidifying after in a fluid or flowable form (page 7-8, [0065-0069]). The razor has a removal head (page 7, [0061]).
Johnson et al. teaches personal care composition comprising azoxystrobin (abstract). The personal care composition is in the form of shave preparation (page 9, [0103)). Azoxystrobin is a solid material having low solubility in water and has anti-fungal activity (page 2, [0021]; page 10, [0109-0113]). The azoxystrobin containing product may be a liquid, solid or powder or combinations (page 8, [0090]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Hayes et al. is that Hayes et al. do not expressly teach azoxystrobin. This deficiency in Hayes et al. is cured by the teachings of Johnson et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Hayes et al., as suggested by Johnson et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to include azoxystrobin as skin active agent in razor shaving aid polymeric matrix because azoxystrobin is a suitable antifungal skin active. Under guidance from Hayes et al. teaching antifungal skin active in the shaving aid polymeric matrix; Johnson et al. teaching azoxystrobin as antifungal active in shave preparation; it is obvious for one of ordinary skill in the art to include azoxystrobin as skin active agent in razor shaving aid polymeric matrix and produce instant claimed invention with reasonable expectation of success.
Regarding claims 1-5 and 8, the combination of prior art teaches a solid shaving aid polymeric matrix comprising polyethylene vinyl acetate (matrix polymer) and polyethylene oxide (lubricant according to applicant’s specification, since no other lubricant is required, polyethylene oxide is 100% and at least 50%) as well as antifungal active azoxystrobin (solid as evidenced by Johnson et al.). Since Hayes et al. teaches blending, mixing, solidifying after in a fluid or flowable form, azoxystrobin is considered being incorporated into (at least partly within) solid polyethylene oxide (lubticant).
Regarding claim 6, Hayes et al. teaches polyethylene vinyl acetate, which has a glass transition temperature less than 130ºC according to applicant’s specification (page 28, line 24-26).
Regarding claims 7 and 9, Hayes et al. teaches fatty alcohol and fatty acid, which are regarded as non-polymeric matrix according to applicant’s specification. stearyl alcohol is a common fatty alcohol, stearic acid is a known common fatty acid, it is obvious to have stearyl alcohol and or stearic acid. Both stearyl alcohol and stearic acid have melting points of less than 100ºC.
Regarding claim 10, Hayes et al. teaches skin care active including antimicrobial and antifungal agent from about 0.01% to about 50%, since antifungal azoxystrobin is skin care active, it is obvious to have azoxystrobin from 0.01% to 50%, encompassing applicant’s claimed amount.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hayes et al. (US20160143836) in view of Johnson et al. (US20210401710), as applied for the above 103 rejection for claims 1-10, further in view of Wang et al. (US20140090254).
In arguendo that stearic alcohol and stearic acid are not obvious from fatty alcohol, it is still obvious to have stearyl alcohol and stearic acid according to the following discussion.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Hayes et al. and Johnson et al. teaching have already been discussed in the above 103 rejection and are incorporated herein by reference.
Wang et al. teaches A skin engaging shaving aid (abstract). Fatty alcohol or fatty acid emollients include saturated and unsaturated higher alcohols, especially C12-C30 fatty alcohols and fatty acids, especially lauric, myristic, palmitic, stearic, arachidic or behenic ([0034]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Hayes et al. is that Hayes et al. do not expressly teach stearyl alcohol and stearic acid. This deficiency in Hayes et al. is cured by the teachings of Wang et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Hayes et al., as suggested by Wang et al., and produce the instant invention.
Regarding claim 9, under guidance from Hayes et al. teaches fatty alcohol and fatty acid, Wang et al. teaching C12-C30 fatty alcohols and fatty acids such as stearic acid in shaving aid composition, it is obvious to have C18 fatty alcohol (stearyl alcohol) and stearic acid, both stearyl alcohol and stearic acid have melting points of less than 100ºC.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10682778 in view of Johnson et al. (US20210401710)). The reference patent teaches razor comprising a removal head and shaving matrix comprising polyethylene vinyl acetate and polyethylene oxide and skin care active, in view of Johnson et al. teaching azoxystrobin as antifungal active in shave preparation; it is obvious for one of ordinary skill in the art to include azoxystrobin as skin active agent in razor shaving aid polymeric matrix and produce instant claimed invention with reasonable expectation of success.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10898425 in view of Johnson et al. (US20210401710)). The reference patent teaches razor comprising a removal head and shaving matrix comprising polyethylene vinyl acetate and polyethylene oxide (claim 5), in view of Johnson et al. teaching azoxystrobin as antifungal active in shave preparation; it is obvious for one of ordinary skill in the art to include azoxystrobin as skin active agent in razor shaving aid polymeric matrix and produce instant claimed invention with reasonable expectation of success.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10773405 in view of Hayes et al. (US20160143836) and Johnson et al. (US20210401710)). The reference patent teaches razor comprising a removal head and shaving matrix comprising polyethylene oxide and water insoluble polymer, in view of Hayes et al. teaching water insoluble polymer polyethylene vinyl acetate; Johnson et al. teaching azoxystrobin as antifungal active in shave preparation; it is obvious for one of ordinary skill in the art to include azoxystrobin as skin active agent in razor shaving aid polymeric matrix and produce instant claimed invention with reasonable expectation of success.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11872711 in view of Johnson et al. (US20210401710)). The reference patent teaches razor comprising a removal head and shaving matrix comprising polyethylene vinyl acetate (claim 18) and polyethylene oxide (claim 1), in view of Johnson et al. teaching azoxystrobin as antifungal active in shave preparation; it is obvious for one of ordinary skill in the art to include azoxystrobin as skin active agent in razor shaving aid polymeric matrix and produce instant claimed invention with reasonable expectation of success.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12194126. The reference patent teaches razor comprising a removal head and shaving matrix comprising polyethylene vinyl acetate (claim 5) and polyethylene oxide (claim 3) and azoxystrobin, it is obvious for one of ordinary skill in the art to produce instant claimed invention with reasonable expectation of success.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
Prosecution Insights