FINAL 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 .
Status of the Claims
This action is in response to papers filed 03/10/2026 in which claims 3 and 16 were canceled; claims 11-15 and 17-19 were withdrawn; and claims 1 and 21 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-2, 4-10, and 20-21 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn.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.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 21 is not further limiting from claim 1 because the Markush group of surfactants recited in claim 21 is already recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 4-10, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dexter et al (US 6,500,447 B1; previously cited) in view of Ouali et al (US 2013/0295149 A1), Vautrin et al (US 2013/0089591 A1), and Smets et al (US 2013/0039962 A1).
Regarding claim 1, Dexter teaches pH-sensitive microcapsules which comprise a water-immiscible active ingredient within a shell wall, wherein the shell is a polyamide/polyester copolymer formed from a polyacid halide, a polyamine, and a polyol (columns 2-6; Example 1; claims 1-7). Dexter teaches the polyamide/polyester microcapsules is formed by i) dispersing an oil phase (water-immiscible solution) containing the water-immiscible active ingredient and the polyacid halide in an aqueous phase (aqueous solution) containing a base and emulsifier (stabilizer) to form an emulsion; ii) adding a polyamine and a polyol to the emulsion; and iii) heating the emulsion to form the polyamide/polyester microcapsules (columns 2-6; Example 1; claims 1-7). Thus, the polyamide/polyester microcapsules of Dexter comprises a shell wall formed from a reaction product of a polyacid halide, a polyamine (amino compound B), a polyol, and a stabilizer. Dexter teaches the pH-sensitive microcapsules are formed using the principles of interfacial polymerization (column 2, lines 60 – end to column 3, lines 8). Dexter teaches the pH-sensitive microcapsules are storage stable (column 1, lines 48-52; column 3, lines 22-32).
However, Dexter does not teach the amino compound A; and the hydrophobic material comprises a perfume; and combining the core-shell poly(amide-ester) microcapsule slurry with a consumer product base comprising a surfactant of claim 1.
Regarding the an amino compound A of claim 1, Ouali teaches core-shell microcapsule in which a first amine compound (L-lysine) is added in the aqueous phase that is then dispersed with an oil phase to form an emulsion, and after the emulsion is formed, a second amine compound that is different from the first amine compound is added to the emulsion ([0004], [0008]-[0027], [0049]-[0056]; claims 1-15). Ouali teaches the use of L-lysine in the aqueous phase and adding a second amine compound after the emulsion is formed provide a resultant core-shell microcapsule that is negatively charged over a wide range of pH, ranging from acidic to basic pH and also have improve deposition on substrates ([0034]-[0035] and [0058]). Ouali teaches the microcapsule is formed by interfacial polymerization ([0037]).
It would have been obvious to one of ordinary skill in the art to include an amine compound such as L-lysine in the aqueous phase of the process of forming the microcapsules of Dexter such that the reaction product of forming the shell wall of Dexter would be from a polyacid halide, a polyamine, a polyol, L-lysine, and a stabilizer, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because the shell wall of the microcapsules of Dexter and Ouali are formed by the same well-known process of interfacial polymerization (Dexter: page 2, lines 60-end; Ouali: [0037]), and Ouali indicated that an amine compound such as L-lysine can be included in the aqueous phase that is dispersed with the oil phase to form an emulsion, and such inclusion of an amine compound such as L-lysine in the aqueous phase and a second amine compound (polyamine of Dexter) after the emulsion is formed provides a resultant core-shell microcapsule that is negatively charged over a wide range of pH, ranging from acidic to basic pH and also have improve deposition on substrates. Thus, an ordinary artisan seeking to produce microcapsules with a negatively charge over a wide range of pH and also has improved deposition, would have looked to modifying the process of producing polyamide/polyester microcapsules of Dexter by including L-lysine in the aqueous phase of the process of forming the microcapsules, and achieve Applicant’s claimed invention with reasonable expectation of success.
While Dexter and Ouali do not expressly suggest “the amino compound A reacts with the at least one acyl chloride to form a first amide bond during the interfacial polymerization reaction” and the amino compound B reacts with the at least one acyl chloride to form a second amide bond during the interfacial polymerization reaction” as recited in claim 1, it would have been obvious that the polyamine in the oil-in-water emulsion of Dexter in addition to the inclusion of the amine compound such as L-lysine to the aqueous phase of the process of forming the microcapsules of Dexter, per guidance from Ouali, would form amide bonds to the acyl chloride during the process of interfacial polymerization, in view of the guidance from Vautrin.
Vautrin teaches a polyamide microcapsule produced by interfacial polyaddition (an interfacial polymerization reaction) in which polyamide is formed by reacting acyl chloride with an amine, wherein the reaction of acyl chloride with amine during interfacial polyaddition forms amide bond (Abstract; [0005]-[0007], and [0032]-[0047]). Vautrin teaches the acyl chloride include di- and tri-functionalized acyl chloride ([0047]) Vautrin teaches that it is well-established in the prior art that polyamide can be formed in a similar manner as polyurea in which the isocyanate is replaced with an acyl chloride so as the acyl chloride will react with an amine to form polyamide during an interfacial polymerization reaction ([0039]).
Given that Dexter and Ouali are both drawn to forming microcapsule using the process of interfacial polymerization, it would have been obvious and with reasonably expectation that the polyamine in the oil-in-water emulsion of Dexter in addition to the inclusion of the amine compound such as L-lysine to the aqueous phase of the process of forming the microcapsules of Dexter, per guidance from Ouali, would form amide bonds to the acyl chloride during the process of interfacial polymerization, as it has been established by Vautrin, acyl chloride is multifunctional, and polyamide is formed by reacting acyl chloride with an amine, wherein the reaction of acyl chloride with amine during interfacial polyaddition (an interfacial polymerization reaction) forms amide bond.
Regarding the hydrophobic material comprises a perfume and combining the core-shell poly(amide-ester) microcapsule slurry with a consumer product base comprising a surfactant of claim 1, Smets teaches microcapsules having polyamide, polyester or polyamide/polyester shell wall, wherein the shell wall encapsulates a hydrophobic material selected from perfume, flavor, and insecticide/fungicide ([0021], [0030], [0062]-[0073], and [0077]). Smets teaches the microcapsules are added to a consumer product such as a laundry detergent containing a product base and surfactants ([0006]-[0007], [0084], [0132]-[0154]; Examples 49-62). Smets teaches the microcapsules are stable in consumer product ([0020] and [0088]). Smets teaches suitable surfactants include alkyl benzene sulfonate and fatty alcohol ethoxylates (Examples 49-62).
It would have been obvious to one of ordinary skill in the art incorporate perfume as the water-immiscible active ingredient in the core of the polyamide/polyester microcapsules of Dexter, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Smets provided the guidance to do so by teaching that aside from the insecticide/fungicide used as the water-immiscible active ingredient, perfume is also a suitable core material for encapsulation in a polyamide/polyester microcapsules. Thus, it would have been merely simple substitution one known core material for another to achieve predictable results of perfume microcapsules, and achieve Applicant’s claimed invention with reasonable expectation of success. It is noted that [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
It would also have been obvious to one of ordinary skill in the art to add the polyamide/polyester microcapsules of Dexter in view of Ouali, Vautrin, and Smets in a consumer product containing a product base and surfactant, and produce the claimed invention. One of ordinary skill in the art would have been motivated do so because Smets provided the guidance to do so by teaching that microcapsules having polyamide/polyester shell wall are typically added to and use in consumer products such as a laundry detergent, shampoo, and cleaning compositions, and such microcapsules having polyamide/polyester shell wall are known to be stable in said consumer products containing a product base and a surfactant (Smets: [0006]-[0007], [0030], [0065], [0084], [0132]-[0154]; Examples 49-62). Thus, an ordinary artisan would have looked to using the polyamide/polyester microcapsules of Dexter in view of Ouali, Vautrin, and Smets in commonly known consumer products in the art such as laundry detergent, shampoo, and cleaning compositions, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 2, Dexter teaches the polyacid halide is 1,3,5-benzene tricarbonyl chloride (trimesoyl chloride) or terephthaloyl chloride(column 3, lines 33-42; Example 1)
Regarding claims 4 and 6, as discussed above, Ouali teaches and provide guidance for a core-shell microcapsule in which a first amine compound (L-lysine) is added in the aqueous phase that is then dispersed with an oil phase to form an emulsion, and after the emulsion is formed, a second amine compound that is different from the first amine compound is added to the emulsion ([0004], [0008]-[0027], [0049]-[0056]; claims 1-15). Ouali teaches the use of L-lysine in the aqueous phase and adding a second amine compound after the emulsion is formed provide a resultant core-shell microcapsule that is negatively charged over a wide range of pH, ranging from acidic to basic pH and also have improve deposition on substrates ([0034]-[0035] and [0058]).
Regarding claim 5, Dexter teaches the polyamine is ethylenediamine or diethylenetriamine (column 3, lines 44-55).
Regarding claim 7, Dexter teaches the emulsifier is polyvinyl alcohol (column 5, lines 39-55).
Regarding claim 8, Dexter teaches the ratio of acid halide groups to amino groups in the shell wall forming materials is about 2:1 to 3:1 (column 2, lines 50-55; column 6, lines 53-60).
Regarding claim 9, Dexter teaches a microcapsule composition having 22.22% by weight of pendimethalin (a water-immiscible active ingredient) and 1.59% trimesoyl chloride (an acyl chloride) (column 8, Example 1, Table 1), thereby the weight ratio of the acyl chloride to the water-immiscible active ingredient is about 0.07.
Regarding claim 10, Dexter teaches the polyol is ethylene glycol (column 3, lines 57-64).
Regarding claim 20, Smets teaches the product base is a home care active base, a fabric case active base, fabric softener active base, detergent active base, personal care active base or conditioner active base ([0006]-[0007], [0084], [0132]-[0154]; Examples 49-62).
Regarding claim 21, Smets teaches suitable surfactants include alkyl benzene sulfonate and fatty alcohol ethoxylates (Examples 49-62).
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 Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 03/10/2026 have been fully considered but they are not persuasive.
Applicant argues:
“none of these paragraphs [paragraphs [0006]-[0007], [0030], [0065], [0084], [0132]-[0154]; and Examples 49-62 from Smets] teaches or suggests a broad and universal conclusion that microcapsules having a polyamide/polyester shell wall are known to be stable in consumer products containing a product base and a surfactant. Most of these paragraphs are even silent regarding surfactants. To this end, some of these paragraphs are even entirely unrelated to surfactants and shell walls; for example, Paragraph [0084] of Smets merely addresses amounts of encapsulated materials (e.g., insecticide) that may be included within microcapsules in a consumer product. Thus, Applicant respectfully submits that the assertions and conclusions of the Office lack proper evidentiary foundation in Smets.” (Remarks, page 10, 1st paragraph).
In response, the Examiner disagrees. Paragraph [0084] of Smets teaches consumer product containing the encapsulates (microcapsules). Paragraphs [0006]-[0007] of Smets define said consumer product. Paragraph [0030] of Smets describes a mixture of polyamide and polyester as the suitable shell material of the microcapsule, where paragraph [0065] of Smets further describes the mixture of polyamide and polyester can be used to form cross-linked polymers that is used as the encapsulate or in other words, the shell wall material of the microcapsule. Paragraphs [0132]-[0154] of Smets describe the adjunct ingredients including surfactants suitable for inclusion in consumer products, and Examples 49-62 from Smets showed consumer products and consumer product base in which the claimed surfactants (i.e., alkyl benzene sulfonate and fatty alcohol ethoxylates) are one of the essential ingredients. Thus, the disclosures from Smets as a whole including said paragraphs [0006]-[0007], [0030], [0065], [0084], [0132]-[0154]; and Examples 49-62 from Smets, suggest that microcapsules having polyamide/polyester shell wall are suitable to be added and use in consumer products such as laundry detergent, shampoo, and cleaning compositions, and such microcapsules are established by Smets to be stable in said consumer products (Smets: [0020] and [0088]).
As such, the teachings from Smets, as a whole, do teach, suggest, and provide guidance for including the polyamide/polyester microcapsules in a consumer product containing a product base and surfactants (i.e., alkyl benzene sulfonate and fatty alcohol ethoxylates).
Accordingly, Smets is properly combined with Dexter, Ouali, and Vautrin to render obvious Applicant’s claimed invention.
Applicant argues:
“Smets does not teach or suggest an (amide-ester) microcapsule, let alone an (amide-ester) microcapsule produced according to the present claims, at least for the reasons of record. Consequently, it is unclear how teachings of any surfactant and broad classes of polymers can be properly asserted as being "known stability".” (Remarks, page 10, 3rd paragraph).
In response, the Examiner disagrees. As discussed above, Paragraph [0084] of Smets teaches consumer product containing the encapsulates (microcapsules). Paragraphs [0006]-[0007] of Smets define said consumer product. Paragraph [0030] of Smets describes a mixture of polyamide and polyester as the suitable shell material of the microcapsule, where paragraph [0065] of Smets further describes the mixture of polyamide and polyester can be used to form cross-linked polymers that is used as the encapsulate or in other words, the shell wall material of the microcapsule. Paragraphs [0132]-[0154] of Smets describe the adjunct ingredients including surfactants suitable for inclusion in consumer products, and Examples 49-62 from Smets showed consumer products and consumer product base in which the claimed surfactants (i.e., alkyl benzene sulfonate and fatty alcohol ethoxylates) are one of the essential ingredients. The disclosures from Smets as a whole including said paragraphs [0006]-[0007], [0030], [0065], [0084], [0132]-[0154]; and Examples 49-62 from Smets, suggest that microcapsules having polyamide/polyester shell wall are suitable to be added and use in consumer products such as laundry detergent, shampoo, and cleaning compositions, and such microcapsules are established by Smets to be stable in said consumer products (Smets: [0020] and [0088]). Thus, Smets does teach said microcapsules having shell wall such as crosslinked polymers of polyamide and polyester are stable in consumer products that contains surfactants such as alkyl benzene sulfonate and fatty alcohol ethoxylates.
As such, the teachings from Smets, as a whole, do teach, suggest, and provide guidance for including the polyamide/polyester microcapsules in a consumer product containing a product base and surfactants (i.e., alkyl benzene sulfonate and fatty alcohol ethoxylates).
Accordingly, Smets is properly combined with Dexter, Ouali, and Vautrin to render obvious Applicant’s claimed invention.
Applicant argues:
“even if a person having ordinary skill in the art would have been motivated to
selectively combine and modify Dexter, Ouali, Vautrin, and Smets to arrive at the present claims, which Applicant does not concede, this person still would not have had a reasonable expectation of success due to the broad and deficient recitations in Smets.” (Remarks, page 11, 1st paragraph).
In response, the Examiner disagrees. The 103 rejection based on the combined teachings of Dexter, Ouali, Vautrin, and Smets, as set forth in this office action, provided a motivation to combine the references, as well as, a reasonable expectation of success in do so. See 103 rejection, pages 4-9 of this office action.
As discussed above, the teachings from Smets, as a whole, do teach, suggest, and provide guidance for including the polyamide/polyester microcapsules in a consumer product containing a product base and surfactants (i.e., alkyl benzene sulfonate and fatty alcohol ethoxylates). See pages 11-14 of this office action, said pages being incorporated herein in its entirety.
Accordingly, Smets is properly combined with Dexter, Ouali, and Vautrin to render obvious Applicant’s claimed invention.
Applicant argues:
“as described in the present application, the specific composition of the
poly(amide-ester) wall is key in obtaining microcapsules that show the desired stability in the product base (e.g. counteracts efficiently the extraction of the perfume by the surfactants of the consumer product). See Paragraph [0166] of the published application. Further, fragranced personal and household cleansers containing high levels of aggressive surfactant detergents are very challenging for the stability of microcapsules. See Paragraph [0002] of the published application. However, the present application demonstrates improved stability in consumer product bases. See at least Examples 3-6 of the published application. Indeed, it has surprisingly been found that the claimed process allows preparing microcapsules with the desired stability in challenging bases. See Paragraph [0006] of the published application. Thus, the present application is commensurate in scope with the surprising results of the present application and provides previously unseen benefits.” (Remarks, page 11, 2nd paragraphs).
In response, the Examiner disagrees. Applicant’s alleged evidenced of unexpected results of improve stability as shown in Examples 3-6 of the published application are considered, but not persuasive and insufficient to obviate the standing 103 rejection as set forth in this office, for the reason(s) set forth below.
The process of claim 1 remained broad and is not adequately commensurate in scope with the preparation of poly(amide-ester) microcapsules with polyphenols of Example 3 that include the preparations of Capsules G and H. In addition, claim 1 is also not commensurate in scope with the fabric softener composition of Example 4, the liquid detergent composition of Example 5, and the rinse-off conditioner of Example 6. Thus, [w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). See MPEP §716.02(d).
Furthermore, Applicant’s alleged unexpected results drawn to improved stability in consumer product bases are also not persuasive because as discussed above, Smets suggest microcapsules having polyamide/polyester shell wall are suitable to be added and use in consumer products such as laundry detergent, shampoo, and cleaning compositions, and such microcapsules are established by Smets to be stable in said consumer products. See pages 11-14 of this office action, said pages being incorporated herein in its entirety. Furthermore, as discussed in the standing 103 rejection, Dexter also established that the polyamide/polyester microcapsules are storable stable (Dexter: column 1, lines 48-52; column 3, lines 22-32; also see 103 rejection, pages 4-5 of this office action). Thus, Applicant’s alleged unexpected results drawn to microcapsules having poly(amide-ester) wall having improved stability in consumer product is reasonable expected from the teachings of Dexter and Smets. It is noted that "[e]xpected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
As a result, for at least the reasons discussed above, claims 1-2, 4-10, and 20-21 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the standing 103 rejection as set forth in this office action.
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 1-2, 4-10, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12508565 in view of Dexter et al (US 6,500,447 B1), Vautrin et al (US 2013/0089591 A1) and Smets et al (US 2013/0039962 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in Patent ‘565 significantly overlap with the subject matter of the instant claims i.e., processes for preparing a core-shell polyamide microcapsule slurry comprising a) dissolving at least one acyl chloride in a hydrophobic material to form an oil phase; b) dispersing the oil phase obtained in step a) into a water phase to form an oil-in-water emulsion; and c) performing a curing step to form poly(amide-ester) microcapsule in the form of a slurry, wherein a stabilizer is added to the oil phase and/or the water phase, and wherein at least one amino-compound is added to the water phase before the formation of the oil-in-water emulsion and/or in the oil-in-water emulsion obtained in step b). The claims in the Patent ‘565 are also drawn to consumer product containing the microcapsule slurry.
While instant application is a poly(amide-ester) microcapsule and Patent ‘565 is a polyamide microcapsule, it would have been obvious to modify the process of Patent ‘565 to produce a poly(amide-ester) microcapsule by adding polyol in step b) in view of the guidance from Dexter, which teaches that polyol is added during formation of the emulsion or after the formation of the emulsion to form poly(amide-ester) microcapsule upon heating, wherein the poly(amide-ester) microcapsule is formed by interfacial polymerization (Dexter: columns 2-6; Example 1; claims 1-7).
With respect to the amide bonds formed during the interfacial polymerization reaction as recited in the claims of the instant application, it would have been reasonably obvious that amide bonds would formed during the interfacial polymerization reaction of the microcapsule of Patent ‘565 because Vautrin teaches that it is well-established in the prior art that polyamide is formed by reacting an acyl chloride with an amine to form polyamide bond during an interfacial polymerization reaction (Vautrin: Abstract; [0005]-[0007], and [0032]-[0047]).
With respect to the surfactant as recited in the claims of the instant application, it would have been obvious to include the surfactant as recited from the instant application in the consumer product of Patent ‘565 in view of the guidance from Smets ([0006]-[0007], [0030], [0065], [0084], [0132]-[0154]; Examples 49-62).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 12508565 in view of Dexter, Vautrin, and Smets.
Claims 1-2, 4-10, and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-19 of copending Application No. 17416379 in view of Dexter et al (US 6,500,447 B1), Vautrin et al (US 2013/0089591 A1) and Smets et al (US 2013/0039962 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘379 significantly overlap with the subject matter of the instant claims i.e., processes for preparing a core-shell polyamide microcapsule slurry comprising a) dissolving at least one acyl chloride in a hydrophobic material to form an oil phase; b) dispersing the oil phase obtained in step a) into a water phase comprising optionally an amino compound A or a base to form an oil-in-water emulsion; and c) performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a stabilizer is added to the oil phase, and wherein an amino compound B is added in the oil-in-water emulsion obtained in step b). The claims in the copending application ‘379 are also drawn to consumer product containing the microcapsule slurry.
While instant application is a poly(amide-ester) microcapsule and the copending application ‘379 is a polyamide microcapsule, it would have been obvious to modify the process of copending application ‘379 to produce a poly(amide-ester) microcapsule by adding polyol in step b) in view of the guidance from Dexter, which teaches that polyol is added during formation of the emulsion or after the formation of the emulsion to form poly(amide-ester) microcapsule upon heating (Dexter: columns 2-6; Example 1; claims 1-7).
With respect to the amide bonds formed during the interfacial polymerization reaction as recited in the claims of the instant application, it would have been reasonably obvious that amide bonds would formed during the interfacial polymerization reaction of the microcapsule of copending application ‘379 because Vautrin teaches that it is well-established in the prior art that polyamide is formed by reacting an acyl chloride with an amine to form polyamide bond during an interfacial polymerization reaction (Vautrin: Abstract; [0005]-[0007], and [0032]-[0047]).
With respect to the surfactant as recited in the claims of the instant application, it would have been obvious to include the surfactant as recited from the instant application in the consumer product of copending application ‘379 in view of the guidance from Smets ([0006]-[0007], [0030], [0065], [0084], [0132]-[0154]; Examples 49-62).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 17416379 in view of Dexter, Vautrin, and Smets.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 03/10/2026 have been fully considered but they are not persuasive.
Applicant argues by requesting consideration of double patenting rejections in view of the present amendments and arguments. (Remarks, page 12).
In response, Applicant’s present amendments and arguments were not persuasive for all the reasons discussed above. See pages 3-17 of this office action. Accordingly, the double patenting rejections as set forth in this office action are maintained for the reason of record, pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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