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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-8, 12-14, 16 and 19-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 1, the specification and drawings as originally filed to not contain support for the recited limitation of “wherein each particle is integral such that it does not include a coating surrounding a filler.” The specification and drawings do not disclose the absence of a coating, and the mere disclosure of “a solid material” does not provide support for the above limitation as a coated solid material is equivalent to “a coating surrounding a filler” as a solid can still be viewed as a filler. Additionally, there is no reason to believe that the term “particle” necessarily excludes the presence of a coating. This is evidenced by the fact that core-shell particles, which necessarily have a coating in the form of a shell, are commonly referred to as “particles.” See the title of Hayes et al. (“Core-shell particles: Preparation, fundamentals and applications in high performance liquid chromatography;” Journal of Chromatography A, 1357 (2014) 36-52). Thus, the limitation does not have original support. To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that “the inventor invented the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966(1997); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”) Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
Claims 4-8, 12-14, 16 and 19-22 are rejected based upon their dependence on claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-5, 7-8, 12-14, 16, 19-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Veliath et al. (US 2017/0204223; hereinafter “Veliath”) in view of Popplewell et al. (US 7,105,064; hereinafter “Popplewell”).
In regard to claims 1, 8 and 13, Veliath discloses a composition for diffusing volatile substances for use as an air freshener (see [0082]) or insecticide (see [0085], [0117], [0176]) comprising wax (necessarily a component of a candle; [0076] and [0082]) and a solid material other than wax in the form of microcapsules (core-shell microcapsule; [0060]) that includes volatile substances (fragrances; see at least [0050]), wherein the solid material is ethylene-vinyl acetate (wall forming material using ethylene vinyl acetate copolymer (see [0060]).
Veliath is silent to wherein the microcapsules are in the form of integral particles such that it does not include a coating surrounding a filler. It is noted that Veliath also discloses that the microcapsules can also be used in fabric care products ([0067]), skin care products ([0113]-[0144]), hair care products ([0148]-[0161]), or surface cleaners ([0072]-[0075], [0079]-[0080], and [0084]).
Popplewell discloses a particulate fragrance composition composed of integral ethylene-vinyl acetate particles having a substantially solid or viscoelastic three-dimensional porous infrastructure surrounding a free volume (i.e. without an outer shell or coating) and a fragrance composition placed within the solid or viscoelastic infrastructure free volume via absorption. Popplewell teaches that the particles are on the micro-scale as they have a volume average diameter of from about 0.01 microns to about 1000 microns. Popplewell teaches that the particles deliver fragrance when mixed with a fabric, skin, or hair care product or a surface cleaner. See col. 2, line 52 through col. 3, line 10; col. 4, lines 42-54; col. 5, lines 26-54; and Figure 3.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the solid EVA particles having a fragrance composition absorbed therein as disclosed by Popplewell for the core-shell microcapsules containing fragrances of Veliath as the structures are functionally equivalent as both structures contain the same materials in different structural form for the purpose of delivering a fragrance composition by being mixed with a composition for use such as candle wax. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Veliath and Popplewell are silent in regard to the relative volatile substance absorption capacity of the solid particles (ethylene vinyl acetate) and wax. Further, Veliath and Popplewell are silent to wherein, when the composition is heated to a temperature sufficient to melt the wax, the solid particles remain solid within the molten wax to provide a lengthened release time for the volatile substances compared to a composition including only the wax and the volatiles substances. However, the Courts have held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Therefore, it is held that the materials used by Veliath and Popplewell inherently have the claimed relative volatile substance absorption capacities as the disclosed materials are the same as the claimed materials.
In regard to claims 5, 14 and 20, Veliath and Popplewell are silent in regard to the relative volatile substance absorption capacity of the ethylene vinyl acetate encapsulation material and wax. However, the Courts have held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Therefore, it is held that the materials used by Veliath and Popplewell inherently have the claimed volatile substance absorption capacities as the disclosed materials are the same as the claimed materials.
In regard to claims 4, 12, 16 and 19, Veliath does not disclose the weight percentage of wax and solid material used in a candle. It is noted that the instant application does not show the criticality of the claimed percentages. Therefore, it would have been within the ambit of one of ordinary skill to have discovered a workable range of mixing wax and solid material containing a fragrance for forming a candle by routine experimentation for the purpose of delivering a desired amount of fragrance from the candle without producing any new or unexpected results. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In regard to claims 7 and 22, it is viewed that the disclosure of Veliath necessarily discloses wherein only the solid material of ethylene vinyl acetate copolymer comprises volatile substances as the term “candles” means a formation of only of wax material and a wick that is lit to produce light by definition. Thus, by the ordinary meaning of the words used by Veliath, the wax does not include any fragrance material and the fragrance is only included in a sequestered form as discussed in [0049].
Claims 6-7 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Veliath in view of Popplewell and Zaunbrecher et al. (US 5,955,034; hereinafter “Zaunbrecher”).
In regard to claims 6-7 and 21-22, Veliath does not explicitly disclose whether or not the wax contains volatile substances and does disclose wherein the solid material is ethylene vinyl acetate as noted above.
Zaunbrecher teaches that candles can be “formed of a solid body of wax” and can optionally contain a fragrance oil in the wax in order to deliver a fragrance when burnt. See col. 1, lines 16-37.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have formed the candle of the above combined composition having wax which contained a different fragrance than in the solid material or did not contain any fragrance as disclosed by Zaunbrecher as it is well understood that candle wax can optionally contain fragrance oils in a limited extent. Additionally, it is well understood that different fragrance components can be mixed to deliver a desirable combined fragrance and it would not have produced any new or unexpected results by incorporating different fragrances in the solid material and the wax. Thus, one of ordinary skill in the art would have been motivated to have combined different fragrances by incorporating the fragrances either in the wax or in the solid material microcapsules. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Response to Arguments
Applicant's arguments filed 3 March 2026 have been fully considered but they are not persuasive.
Applicant argues that “the particle 10 includes a clearly defined periphery (shell or cover) which is filled with the composition. Thus, as previously explained, the particle in Popplewell includes ‘a coating surrounding a filler,’ contrary to requires of amended claim 1.” The Examiner has fully considered the argument but has not found it to be persuasive. It is noted that Popplewell does not recite the words “capsule” or “shell” in any form in their disclosure. It appears that Applicant is pointing to the dashed line designated as “particle 10” as proof of a coating or shell absent of any evidence. The Examiner holds that the dashed line border of particle 10 as shown in Figure 1 merely designates the exterior delineation of the particle and in no way is evidence of a coating or shell. The disclosure of Popplewell teaches that the particles are formed of a solid porous infrastructure surrounding a free volume which contains a fragrance composition and wherein the particles have solid surfaces. See col. 2, line 52 through col. 3, line 6 and col. 4, lines 4-11. Thus, no coating or shell would be required to contain the fragrance composition. The Examiner rejects Applicant’s statement that “the Examiner essentially admits that the particle 10 includes an exterior coating with a filter of fragrance” as the Applicant has not provided any logic as to why an “exterior surface” is equivalent to a coating.
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In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Examiner has correctly identified in the instant office action and previous office actions that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the solid EVA particles having a fragrance composition absorbed therein as disclosed by Popplewell for the core-shell microcapsules containing fragrances of Veliath as the structures are functionally equivalent as both structures contain the same materials in different structural form for the purpose of delivering a fragrance composition by being mixed with a composition for use such as candle wax. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Applicant argues that it would not have been obvious to modify the microcapsule of Veliath to include the alleged particle of Popplewell. The Examiner has not found the argument to be persuasive. The Examiner has not argued that the microcapsule of Veliath would include the alleged particle of Popplewell. Instead, the Examiner stated that it would have been obvious to have substituted the solid EVA particles having a fragrance composition absorbed therein as disclosed by Popplewell for the core-shell microcapsules containing fragrances of Veliath as the structures are functionally equivalent as both structures contain the same materials in different structural form for the purpose of delivering a fragrance composition by being mixed with a composition for use such as candle wax. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Applicant argues that the prior art teaches away from the modification as suggested by the Examiner in view of the different environments that are used in Veliath and Popplewell. The Examiner respectfully disagrees. It would have been obvious to one of ordinary skill in the art to have substituted the fragrance particles of Popplewell for the fragrance microcapsules in the composition of Veliath as the compositions were similar and both structures provided the same function. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, F.).
Applicant argues that the prior art does not disclose “wherein the solid particles have a volatile substance absorption capacity greater than a volatile substance absorption capacity of the wax.” The Examiner has not found the argument to be persuasive. The Examiner holds that the result would have been inherent as the composition of the combined composition is the same as claimed. Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.). It does not matter that the claims merely require “solid particles” and not EVA. The instant specification only discloses EVA for use as the solid particles, and no other composition has been taught. Therefore, the Applicant cannot factually state that the prior art does not disclose an “identical composition.”
Applicant argues that “the lengthened release in an unexpected result.” The Examiner has fully considered the argument but has not found it to be persuasive. It is noted that Popplewell also noted that EVA would result in an extended release of fragrance when soaked. See Figure 2. Therefore, the lengthened release is not unexpected, but rather it is expected. Further, the result would have been inherent as the composition of the combined composition is the same as claimed. Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Applicant argues that page 4 of the specification shows the criticality of the claimed weight percentages of the wax and solid material. The Examiner respectfully disagrees. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d)(II). Applicant has merely pointed to a statement in the specification which shows the result of one formulation within the claimed range, and not to “a sufficient number of tests both inside and outside the claimed range to show criticality of the claimed range” as required. Therefore, it is held that it would have been within the ambit of one of ordinary skill in the art to have determined the optimum or workable range of weight of the wax and solid material in the composition without creating any new or unexpected results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774