UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/072,152
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`07/23/2018
`
`Ryousuke KAWAGUCHI
`
`HOKUP0383WOUS
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`2445
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`YU~ HONG
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`ART UNIT
`1612
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/22/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0,7709 A0170” Summary
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`Application No.
`16/072,152
`Examiner
`HONG YU
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`Applicant(s)
`KAWAGUCHI et al.
`Art Unit
`AIA (FITF) Status
`1612
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 07/23/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:l Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Datew.
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190316
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`

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`Application/Control Number: 16/072,152
`Art Unit: 1612
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`DETAILED ACTION
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`Claims 1-4 are pending in this application. This application is a national stage entry of
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`PCT/JP2016/005057, filled on 12/05/2016. This application claims foreign priority to JP
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`2016-023967, filed on 02/10/2016 in Japan.
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`Priority
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`Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which
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`papers have been placed of record in the file.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
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`

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`Application/Control Number: 16/072,152
`Art Unit: 1612
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`Page 3
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`Claims 1 and 2 are rejected under 35 U.S. C. 102(a)(1) as being anticipated
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`by Okada (US 2005/0265940 A 1).
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`Okada meets all of the limitations of claims 1 and 2. Okada discloses deodorant
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`compositions comprising ZnO in combination with a hydroxyl acid including ascorbic
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`acid, a betaine compound including cocoamidopropyl betaine, lauryl dimethyl amino
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`acetic acid betaine, etc., and solvent including water and exemplified a composition
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`comprising ZnO, ascorbic acid, cocoamidopropyl betaine (the claimed amphoteric
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`surfactant having same numbers of monovalent cation and monovalent anion), and
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`water in example 13 (entire reference, especially abstract, paragraph 17, 22, 30, 40,
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`example 13, and claims 3, 4, and 10).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
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`This application currently names joint inventors.
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`In considering patentability of
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`the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
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`the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for the examiner to
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`

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`Application/Control Number: 16/072,152
`Art Unit: 1612
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`Page 4
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`consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g)
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`prior art under 35 U.S.C. 103(a).
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103(a) are summarized as follows:
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`:PPONT‘
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`Determining the scope and contents of the prior art.
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`Ascertaining the differences between the prior art and the claims at issue.
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`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
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`Claims 3 and 4 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Okada (US 2005/0265940 A 1), as applied to claims 1 and 2.
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`Applicant’s claims
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`Applicants recite the amphoteric surfactant being lauryl dimethyl amino acetic
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`acid betaine (see claims 3 and 4).
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`Determination of the Scope and Content of the Prior Art
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`(MPEP 2141.01)
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`The teachings of Okada are discussed above and applied in the same manner.
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`Ascertainment of the Difference between Scope of the Prior Art and the Claims
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`MPEP 2141.02)
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`Okada does not specify lauryl dimethyl amino acetic acid betaine in combination
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`with ZnO, an acid, and water.
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`This deficiency is cured by Okada’s teachings of both cocoamidopropyl betaine
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`and lauryl dimethyl amino acetic acid betaine being exchangeable betaine compounds.
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`Finding of Prima Facie Obviousness Rational and Motivation
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`Application/Control Number: 16/072,152
`Art Unit: 1612
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`Page 5
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`(MPEP 2142-2143)
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`It would have been prima facie obvious at the time of the invention to a person of
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`ordinary skill in the art to combine Okada’s teachings in example 13 and in paragraph
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`30 to replace cocoamidopropyl betaine in example 13 with lauryl dimethyl amino acetic
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`acid betaine. Both cocoamidopropyl betaine and lauryl dimethyl amino acetic acid
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`betaine being exchangeable betaine compounds was well known to a person of
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`ordinary skill in the art at the time of the invention. The motivation for replacing
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`cocoamidopropyl betaine in example 13 with lauryl dimethyl amino acetic acid betaine
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`flows from both having been used in the prior art, and from both being recognized in the
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`prior art as useful for the same purpose.
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`Correspondence
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HONG YU whose telephone number is (571 )270-1 328.
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`The examiner can normally be reached on 9 am - 5:30 pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, Applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Frederick Krass can be reached on 571 -272-0580. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 16/072,152
`Art Unit: 1612
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`Page 6
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`/HONG YU/
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`Primary Examiner, Art Unit 1612
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`