UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/072,152
`
`07/23/2018
`
`Ryousuke KAWAGUCHI
`
`HOKUP0383WOUS
`
`2445
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`YU~ HONG
`
`ART UNIT
`1612
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/21/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`16/072,152
`Examiner
`HONG YU
`
`Applicant(s)
`KAWAGUCHI et al.
`Art Unit
`AIA (FITF) Status
`1612
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`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).
`
`Status
`
`1). Responsive to communication(s) filed on 02/18/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D This action is non-final.
`
`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.
`
`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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`flis/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1_—7 is/are rejected.
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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).
`
`Priority under 35 U.S.C. § 119
`
`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
`
`c)l:i None of the:
`
`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D 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)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [3 Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200416
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 2
`
`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.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`DETAILED ACTION
`
`Status of claims
`
`The amendments files on 02/18/2020 is acknowledged. Claims 1-7 are under
`
`examination in the instant office action.
`
`Rejections withdrawn
`
`Applicant’s amendments and arguments filed on 02/18/2020 are acknowledged
`
`and have been fully considered. Any rejection and/or objection not specifically
`
`addressed below is herein withdrawn. The following rejections and/or objections are
`
`either reiterated or newly applied. They constitute the complete set of rejections and/or
`
`objections presently being applied to the instant application.
`
`Rejections remained
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 3
`
`The following rejection of the claims are remained for reasons of record and the
`
`following. The rejection is modified based on the amendments. The text of the section of
`
`Title 35, U.S. Code not included in this action can be found in a prior Office action.
`
`Claims 1-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Sawai et al. (JP 2004035461 A) in View of Okada (US 2005/0265940 A 1).
`
`Applicant’s claims
`
`Applicants claim a deodorizer comprising zinc oxide; an organic acid comprising
`
`at least one of glycine, etc.; an aqueous solvent; and from 0.2 to 2.1% by weight of an
`
`amphoteric surfactant having one of a carboxylate group or a carboxyl group with a ZnO
`
`to organic acid mass ratio of 1:3 to 1:40 (see claim 1).
`
`Claims 3-5 recite the amphoteric surfactant being having same numbers of
`
`monovalent cation and monovalent anion within molecule and being lauryl dimethyl
`
`amino acetic acid betaine.
`
`Claim 5-7 recite the organic acid comprising glycine, alanine, and sarcosine.
`
`Determination of the Scope and Content of the Prior Art
`
`(MPEP 2141.01)
`
`Sawai et al. teach odorproof deodorants for skin comprising a deodorant such as
`
`ZnO or green tea extract (paragraph 25), 0.01 to 20% by total weight of amino acids
`
`such as glycine, alanine, valine, leucine, etc., (paragraph 15), and surfactant including
`
`amphoteric surfactant such as lauryl dimethyl amino acetic acid betaine, hydrophilic
`
`nonionic surfactant, etc., (paragraph 21 and 23) and exemplified a composition
`
`comprising water and 1% by weight of hydrophilic nonionic surfactant (paragraph 43).
`
`Ascertainment of the Difference between Scope of the Prior Art and the Claims
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 4
`
`MPEP 2141.02)
`
`Sawai et al. do not specify: i) the specific combination of ZnO, an organic acid,
`
`an aqueous solvent, and an amphoteric surfactant; ii) the mass ratio between ZnO and
`
`organic acid, i.e., the weight percentage of ZnO; iii) the amino acid including sarcosine
`
`(claim 7); and iv) the weight percentage of an amphoteric surfactant.
`
`The 1St deficiency is cured by the rational that it would have obvious to have
`
`selected various combinations of various disclosed ingredients (deodorant, antibacterial,
`
`solvent, and amphoteric surface active agents) from within a prior art disclosure, to
`
`arrive compositions “yielding no more than one would expect from such an
`
`arrangement”.
`
`The 2nOI deficiency is cured by Okada who teaches deodorant compositions
`
`comprising from 0.05 to 5% by total weight of ZnO in combination with a hydroxyl acid
`
`including ascorbic acid, a betaine compound including cocoamidopropyl betaine, lauryl
`
`dimethyl amino acetic acid betaine, etc., and solvent including water (entire reference,
`
`especially abstract, paragraph 15, 17, 22, 30, 40, example 13, and claims 3, 4, and 10).
`
`The 3rd deficiency is cured by the rational that homologs differing only in the
`
`substitution of hydrogen with methyl, are prima facie obvious.
`
`The 3rd deficiency is cured by Sawai et al.’s teachings of a composition
`
`comprising 1% by weight of hydrophilic nonionic surfactant.
`
`Finding of Prima Facie Obviousness Rational and Motivation
`
`(MPEP 2142-2143)
`
`Although Sawai et al. do not specifically teach the combination of ingredients as-
`
`claimed within a single embodiment, the deodorant of Sawai et al. may contain water
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 5
`
`(for example in a roll-on deodorant preparation 38) and preferably contains glycine as
`
`an antibacterial component which is required by instant claim 1 and suggests the
`
`incorporation of amphoteric surface active agents of which lauryl dimethyl amino
`
`acetate is a species (paragraph 21). Therefore, one of ordinary skill in the art reading
`
`Sawai et al. would have recognized that the instantly-claimed composition is an obvious
`
`variation of the Sawai et al. teachings and that combining the instantly-claimed
`
`ingredients would have required no more than selecting alternative ingredients already
`
`disclosed by Sawai et al. as being effective equivalents for incorporating into their
`
`deodorant composition.
`
`It would have been prima facie obvious at the time of the invention to a person of
`
`ordinary skill in the art to combine the teachings in Sawai et al. and Okada to specify the
`
`weight percentage of ZnO as a deodorant in the composition taught by Sawai et al.
`
`being from 0.05 to 5%. Incorporating from 0.05 to 5% by weight of ZnO as a deodorant
`
`was well known to a person of ordinary skill in the art at the time of the invention. The
`
`motivation for specifying it flows from its having been used in the prior art, and from its
`
`being recognized in the prior art as useful for the same purpose. The weight ratio
`
`between ZnO and organic acid is thus calculated to be 0.05:20 to 5:001, i.e., 1:400 to
`
`500:1. A prima facie case of obviousness typically exists when the range of a claimed
`
`composition lies inside the range disclosed in the prior art, such as in the instant
`
`rejection. The claimed range of mass ratio between ZnO and organic acid is 1:3 to 1:40
`
`and the range of mass ratio between ZnO and organic acid taught in the prior art is
`
`1:400 to 500:1 and therefor, includes the claimed range. Please refer to MPEP
`
`2144.05.|I.A.
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 6
`
`It would have been prima facie obvious to one of ordinary skill in the art at the
`
`time the invention to replace H- on the —NH2 in glycine with -CH3 to form sarcosine.
`
`Homologs differing only in the substitution of hydrogen with methyl, are prima facie
`
`obvious, and require no secondary teaching. An obviousness rejection based on
`
`similarity in chemical structure and function entails the motivation of one skilled in the
`
`art to make a claimed compound, in the expectation that compounds similar in structure
`
`will have similar properties. Please refer to MPEP 2144.09 II.
`
`It would have been prima facie obvious at the time of the invention to a person of
`
`ordinary skill in the art to combine Sawai et al.’s teachings in paragraph 21, 23, and 43
`
`specify the weight percentage of an amphoteric surfactant in the composition taught by
`
`Sawai et al. being 1%. Both amphoteric surfactant and hydrophilic nonionic surfactant
`
`being exchangeable surfactant in deodorant compositions and 1% by weight of
`
`hydrophilic nonionic surfactant being incorporated in deodorant compositions were well
`
`known to a person of ordinary skill in the art at the time of the invention. The motivation
`
`for specifying the composition taught by Sawai et al. comprising 1% by weight of an
`
`amphoteric surfactant flows from both amphoteric surfactant and hydrophilic nonionic
`
`surfactant have been in the prior art, and from their being recognized in the prior art as
`
`useful for the same purpose.
`
`Response to Applicants’ arguments:
`
`Applicants’ arguments based on the amendments are addressed in the modified
`
`rejection above.
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 7
`
`Conclusion
`
`No claims are allowed.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HONG YU whose telephone number is (571 )270-1 328.
`
`The examiner can normally be reached on 9 am - 5:30 pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, Applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Frederick Krass can be reached on 571 -272-0580. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/072,152
`Art Unit: 1612
`
`Page 8
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/HONG YU/
`
`Primary Examiner, Art Unit 1612
`
`