DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/23/2026 has been entered.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 7/02/2021 are accepted.
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 and 3-16 (all pending claims) 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. There is no support in the original disclosure for the newly claimed limitation “wherein the core-shell microcapsules…wherein the urea linkages are formed solely by reaction of amino groups of the polyaminoester with isocyanate groups of the at least one polyisocyanate.” There is no explicitly support for said limitation in the specification and applicant does not argue or cite evidence supporting the argument said limitation is inherently or implicitly supported by the specification.
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.
Claim(s) 1, 3-12, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2015/023961 (herein referred to as Lei) in view of Woodhouse (US 6,221,997) and Arumugam et al (US 20150231589).
Regarding claims 1; Lei teaches a process for preparing a core-shell microcapsule comprising:
Dissolving at least a polyisocyanate having at least two isocyanate functional groups in a hydrophobic material to form an oil phase (0023),
preparing a phase comprising a stabilizer and a solvent, wherein the phase is no miscible with the oil phase, and wherein the solvent consists of water (0023; example 1),
add the oil phase into the dispersing phase to from a two-phase dispersion (0023),
adding a crosslinking agent (herein relied upon to read on the claimed “reactant”) to the dispersion obtained in step c with the reactant. Said reactant may be polyol (0057).
performing a curing step to from core-shell microcapsules I the form of a slurry (0023; example 1).
prepared by preparing an aqueous solution containing an emulsifier (herein understood to read on the claimed “stabilizer”) wherein the solvent consists of water (col 5, lines 55+). Said phase is not miscible with the oil phase , dispersing, with agitation, in the aqueous solution, a water- immiscible solution (i.e. oil) comprising a water immiscible amino resin prepolymer, polyacid halide, and a water miscible active ingredient (hydrophobic material) to form an emulsion, and heating (curing step) the emulsion to form microcapsules [col6, line14-28; Ex1].
Lei teaches the slurry should further comprise a polymer such as a polyol (claim 9) to make a polyurethane shell, but does not teach adding the claimed polyaminoester. However, Woodhouse teaches the reaction product of an amino acid and a diol may be added to such polymeric compositions as a chain extender (col 6, lines 60+). The chain extender enhances the biodegradability and hydrophilicity of the composition (col 7, lines 5+; col 8, lines 57+). Said chain extender may be added to polyol and isocyanate reactants prior to their reaction to form a backbone containing the amino acid chain extender (col 2, lines 22-42); addition at said step would correlate to claimed step (c). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add the chain extenders disclosed in Woodhouse (comprising the reaction product of an amino acid and a diol or triol (col 9, lines 14+) to the two-phase dispersion disclosed in Lei (prior to the curing step to form the core-shell microcapsule) in order to improve the microcapsule’s biodegradability. The examiner notes when the react is polyol, then the combination of Lei and Woodhouse results in a “core-shell microcapsules each comprise a poly(ester urea) shell having ester linkages and urea linkages, wherein the urea linkages are formed solely by reaction of amino groups of the polyaminoester with isocyanate groups of the at least one polyisocyanate.”
Lei in view of Woodhouse is relied upon as above, but does not teach adding the chain extender to claimed step a). However, Arumugam teaches a method of making microcapsules (abstract). Arumugam teaches that chain extenders may be added to the polar or non-polar phase of the process (0049) based upon the relative polarity of the ingredient. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add the chain extender to step a) (oil phase) of Lei because Arumugam teaches chain extenders may be added to either phase of a microcapsule process.
With regards to claim 3, Woodhouse teaches the polyol may be an aliphatic diol (claim 12, herein understood to anticipate the claimed, 1,4-butanediol specie of claim 3. Specifically, the number of species covered by the genus “aliphatic diol” is sufficiently small that the skilled artisan would have at once envisaged the use of 1,4 butanediol as the diol of Woodhouse.
With regards to claim 4, Woodhouse teaches the amino acid may comprise glycine, phenylalanine, alanine, valine, leucine, isoleucine and mixtures thereof, and mixtures thereof (Table 1).
With regards to claim 5, Woodhouse teaches the chain extender may be a reaction of an amino such as phenylaniline (col 6, lines 29+) and 1, 6, hexane diol ( col 6, lines 58+)-herein understood to anticipate specie 1 of claim 5.
With regards to claim 6, Lei teaches the reactant is used an amount of between 0.1 and 5%, by total weight of the slurry composition (0068).
With regards to claim 7, Lei teaches the at least one polyisocyanate may be selected from the group consisting of a polyisocyanurate of toluene diisocyanate, a trimethylol propane-adduct of toluene diisocyanate and a trimethylol propane-adduct of xylylene diisocyanate (0020).
With regards to claim 8, Lei teaches the emulsifier may be chosen from the group consisting of gum Arabic, modified starch, polyvinyl alcohol, polyvinylpyrrolidone (PVP), carboxymethylcellulose (CMC), anionic polysaccharides, acrylamide copolymer, inorganic particles, protein such as including soy protein, rice protein, whey protein, white egg albumin, sodium caseinate, gelatin, bovine serum albumin, hydrolyzed soy protein, hydrolyzed sericin, pseudo-collagen, silk protein, sericin powder, and mixtures thereof (0072).
With regards to claim 9, Lei teaches the polyisocyanate may be present in an amount of between 0.5 and 20%, these percentages being defined by weight relative to the total weight of the oil phase (0055).
With regards to claim 10, Lei teaches that the solvent (herein understood to read on the claimed hydrophobic material) , such as oil (0088), should be present in amounts of 80% or less (0089). Sid teaching is understood to anticipate the claimed weight percentages of 20-50%. Alternatively, Lei teaches that the hydrophobic material increase the compatibility of the active material, increase the overall hydrophobicity of the mixture, influence vapor pressure, and serve to structure the mixture (0088). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amount of solvent in order to control the compatibility of the active material, the overall hydrophobicity of the mixture, influence vapor pressure, and to structure the mixture.
With regards to claim 11, Lei teaches the hydrophobic material may comprise a perfume (0085).
With regards to claim 12, Lei teaches the composition is useful for making a core-shell microcapsule comprising an oil-based core comprising a hydrophobic material, preferably comprising a perfume (0085), and -a shell comprising at least a polymerized polyisocyanate having at least two isocyanate functional groups (see above). Woodhouse renders obvious the use of the claimed polyaminoester compound for the reasons noted above with regards to claim 1.
With regards to claim 16, Woodhouse teaches a formula wherein X is a C2-C20alkane diol wherein X is derived from a diol of formula (HO)2-X.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2015/023961 (herein referred to as Lei) in view of Woodhouse (US 6,221,997) and Arumugam et al (US 20150231589), as applied to claims above, and further in view of Ouali et al. (US Patent No. 9034384).
With regards to claims 13-15, Lei in view of Woodhouse and Arumugam is relied upon as above. Specifically, Lei teaches the microcapsules may be used as perfuming microcapsules, but does not teach said microcapsules should be used in a perfuming composition comprising (i) the perfume microcapsule, (ii) at least one ingredient selected from the group consisting of a perfumery carrier, a perfumery co-ingredient and mixtures thereof, and (iii) optionally at least one perfumery adjuvant. However, Ouali teaches that perfume containing microcapsules may be utilized in a liquid perfumed consumer product comprising: a) from 2 to 65% by weight, relative to the total weight of the consumer product, of at least one surfactant; water or a water-miscible hydrophilic organic solvent; and the microcapsule comprising perfume (table 12). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize the perfume containing microcapsules of Lei in view of Woodhouse in a composition comprising a) from 2 to 65% by weight, relative to the total weight, of at least one surfactant; water or a water-miscible hydrophilic organic solvent; and the microcapsule comprising perfume as Ouali teaches compositions with such components are known to be useful for consumer products.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but are moot in view of the new grounds of rejection. In order to expedite prosecution, the examiner address arguments which may be germane to the new grounds of rejection.
Claim Rejections Under 35 U.S.C. § 103
With regards to the rejection of claims 1, 3-12, and 16 under 35 U.S.C. 103 as allegedly being unpatentable over Lei (WO 2015/023961) in view of Woodhouse (US 6,221,997) and Arumugam (US
2015/0231589), Applicant respectfully disagrees with said rejections based upon the amendments to the independent claim. Specifically, applicant argues the claims now require "wherein the core-shell
microcapsules each comprise a poly(ester urea) shell having ester linkages and urea linkages,
wherein the urea linkages are formed solely by reaction of amino groups of the polyaminoester
with isocyanate groups of the at least one polyisocyanate." Applicant respectfully submits that the proposed modified process does not meet all limitations of the amended claims because the polyamine of Lei makes polyurea (i.e., forms urea linkages). Said argument is noted but is not persuasive in view of the new grounds of rejection. Specifically, Lei teaches embodiments which use polyols (to make polyurethane) rather than amines; thus, the closest embodiments of Lei do not comprise amine or have urea linkages which form from alternative reaction pathways.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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