DETAILED ACTION
Receipt of Arguments/Remarks filed on January 7 2026 is acknowledged. Claims 4 and 9 were/stand cancelled. Claim 1 was amended. Claims 1-3, 5-8 and 10-14 are pending. Claims 7-8 and 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 17 2025. Claims 1-3, 5-6, 10-11 and 14 are directed to the elected invention.
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 (i.e., changing from AIA to pre-AIA ) 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.
Priority
As set forth previously, the effective filing date of claims 1-6, 10-11 and 14 is January 7 2022.
Withdrawn Rejections
The cancellation of claim 4 in the response filed January 7 2026 has rendered the rejection under 35 USC 112(b) moot.
The amendments filed January 7 2026 have overcome the rejection of claims 1-4, 9-11 and 14 under 35 USC 102(a)(1) over Li et al. The instant claims now require both chitosan and tannic acid which is not taught by Li et al.
In light of the amendments filed January 7 2026, the rejections under 35 USC 103 over Li et al. are withdrawn as none of Li et al., Petit et al. or Munoz et al. teach both chitosan and tannic acid as now required by claim 1.
The amendments filed January 7 2026 have overcome the rejection of claims 1-2, 4, 9 and 10 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12048755; the rejection of claims 1-2, 4-5, 9-11 and 14 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12048755 in view of Petit et al. Patent ‘755 does not claim the combination of chitosan and tannic acid.
New Rejections Necessitated by the Amendments filed January 7 2026
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claim(s) 1-3, 10-11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sharkawy et al. (Industrial & Engineering Chemistry Research, 2017).
The instant application claims a bio-degradable core-shell microcapsules comprising (a) a shell comprising chitosan and tannic acid; and (b) a core comprising an active material.
Sharkawy et al. is directed to aroma-loaded microcapsules with antibacterial activity for eco-friendly textile application. Microcapsules were prepared from a four-step process. Dissolution of the biopolymers chitosan (1% w/v) and gum Arabic following mixing with a known amount of the core material (ether vanillin or limonene) plus emulsifier (Table 1). The last step involved hardening of the microcapsules by dropwise addition of tannic acid (10% w/v) (section 2.2). Tannic acid, a natural plant polyphenol, has the ability to bind to polymers through hydrogen bonding and hydrophobic interactions (page 5517, left column, first complete paragraph).
Therefore, Sharkawy et al. teaches a biodegradable microcapsule with a chitosan shell which comprises tannic acid (reading on claim 1), a fragrance (vanillin or limonene) core active (reading on claims 1 and 2).
Regarding claim 3, Sharkawy et al. is directed to natural and natural-derived polymers, especially those presenting biocompatibility and biodegradability characteristics (page 5517, eft column, first paragraph). Sharkawy et al. is silent to the percent biodegradability. Note MPEP 2112.01: "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 10-11 and 14, Sharkawy et al. exemplify the microencapsulated with fabrics/textiles (section 3.3). Qualitative inspection has shown that the fabrics remain pliable and flexible after treatment (page 5522, left column, last paragraph).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 5, 10-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sharkawy et al. as applied to claims 1-3, 10-11 and 14 above and in view of Petit et al. (EP1657299).
Applicant Claims
The instant application claims the active material is a fragrance oil and has a total loading that ranges from 10% to 40%.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Sharkawy et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Sharkawy et al. teaches encapsulation of fragrance such as vanillin and limonene, Sharkawy et al. does not expressly teach a total loading. However, this deficiency is cured by Petit et al.
Petit et al. (wherein a machine translation is utilized) is directed to microcapsules. The microcapsules contain fragrances as active agents and can be used for finishing fibers or textiles (claims). Microcapsule material includes chitosan (page 9-10). It is taught that fragrances are used in concentrations of 0.1 to 25 wt% based on the weight of the capsule (page 9). The microcapsules are useful as softeners for fibers or textile (pages (10-11).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sharkawy et al. and Petit et al. and manipulate the concentration of the fragrances utilized. Since both Sharkawy et al. and Petit et al. are directed to microcapsules which contain fragrances and Petit et al. recognize that the loading levels of fragrances can be from 0.1 to 25 wt%, one skilled in the art would recognize that the amount of fragrance that can be encapsulated can be manipulated. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Regarding the claimed consumer product, both Sharkawy et al. and Petit et al. recognize the microcapsules can be used with fabric (i.e. have industrial applicability as a fabric softener).
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sharkawy et al. as applied to claims 1-3, 10-11 and 14 above and in view of Munoz et al. (Reactive and Functional Polymers, 2015).
Applicant Claims
The instant application claims the chitosan is fungal-derived chitosan or a derivative thereof.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Sharkawy et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Sharkawy et al. teaches microcapsules with a chitosan shell/wall, Sharkawy et al. does not expressly teach that the chitosan is fungal-derived. However, this deficiency is cured by Munoz et al.
Munoz et al. is directed to the extraction of chitosan from Aspergillus niger
Mycelium and synthesis of hydrogels for controlled release of betahistine. Local industrial production of citric acid by aerobic fermentation of sugars with the fungus Aspergillus niger produces 13,500 tons/year of wet mycelium as byproduct which could be a profitable source of chitin and chitosan (page 1). Chitosan has often been obtained from the exoskeletons of crustaceans. However, this process is restricted due to the problems of season and limited supply in some countries. On the other hand extraction of chitosan from fungi is available year round and low cost (page 1). Exemplified is chitosan extraction from dry mycelium (page 2, 2.1-2.2). Fig. 9 shows the degradation of chitosan under simulated physiological conditions. After a month of study, samples had only lost 37% of their initial weight. The low rate of degradation is due to the presence of covalent crosslinking of the chitosan chains. It is taught that 2.8 months is required to achieve complete degradation. (page 8, section 3.5).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sharkawy et al. and Munoz et al. and utilize chitosan derived from fungal sources such as Aspergillus niger. One skilled in the art would have been motivated to utilize chitosan from a fungal source as it is available year round and at a low cost. Since the ultimate product is chitosan and both Sharkawy et al. and Munoz et al. teach chitosan, there is a reasonable expectation of success as this is simple selection of a known source for chitosan.
Regarding the claimed biodegradability, as taught by Munoz et al. the rate of degradation can be dependent on the degree of crosslinking. Munoz et al. teaches degradation percentages overlapping with the instant claims. Based on the teachings of Munoz et al. one skilled in the art would recognize that the rate of degradation can be manipulated by varying the degree of crosslinking.
Response to Arguments
Applicants’ arguments filed January 7 2026 have been fully considered but they are not persuasive.
Applicants argue that the shell of Petit is substantially different. Therefore, Petit’s teachings about the fragrance loading in the microcapsule is not applicable.
The examiner cannot agree. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Therefore, while the shell material of Petit is different it still relates to microcapsules which contain fragrances as active agents. Therefore, its teachings with regards to the loading level of fragrances would be applicable to other microcapsules with fragrances.
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, 10-11 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11540985 in view of Sharkawy et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims a bio-degradable core-shell microcapsules comprising (a) a shell comprising chitosan and tannic acid; and (b) a core comprising an active material.
Patent ‘985 claims a stable microcapsule composition comprising a microcapsule dispersed in an aqueous phase and a stabilizing agent, wherein the stabilizing agent is a combination of a negatively charged clay and a cationic polymer, the microcapsule is a core-shell microcapsule having a microcapsule wall and a microcapsule core encapsulated by the microcapsule wall, and the cationic polyquaternium polymer is a hydroxyethyl cellulose dimethyl diallylammonium chloride copolymer (PQ-4). The microcapsule is a core-shell microcapsule having a microcapsule wall and a microcapsule core encapsulated by the microcapsule wall: the microcapsule wall is formed of an encapsulating polymer selected from the group consisting of a polyacrylate, polyurea, polyurethane, polyacrylamide, polyester, polyether, polyamide, poly(acrylate-co-acrylamide), starch, silica, gelatin and gum Arabic, alginate, chitosan, polylactide, poly(melamine-formaldehyde), poly(urea-formaldehyde), and combination thereof; and the microcapsule core contains an active material selected from the group consisting of a fragrance, pro-fragrance, flavor, malodor counteractive agent, vitamin or derivative thereof, anti-inflammatory agent, fungicide, anesthetic, analgesic, antimicrobial active, anti-viral agent, anti-infectious agent, anti-acne agent, skin lightening agent, insect repellant, animal repellent, vermin repellent, emollient, skin moisturizing agent, wrinkle control agent, UV protection agent, fabric softener active, hard surface cleaning active, skin or hair conditioning agent, flame retardant, antistatic agent, nanometer to micron size inorganic solid, polymeric or elastomeric particle, taste modulator, cell, probiotic, and combination thereof. A consumer product comprising the microcapsule is claimed. The consumer product includes a fabric softener.
While Patent ‘985 claims the shell can be chitosan, Patent ‘985 does not expressly teach the inclusion of tannic acid. However, this deficiency is cured by Sharkawy et al.
Sharkawy et al. is directed to aroma-loaded microcapsules with antibacterial activity for eco-friendly textile application. Microcapsules were prepared from a four-step process. Dissolution of the biopolymers chitosan (1% w/v) and gum Arabic following mixing with a known amount of the core material (ether vanillin or limonene) plus emulsifier (Table 1). The last step involved hardening of the microcapsules by dropwise addition of tannic acid (10% w/v) (section 2.2). Tannic acid, a natural plant polyphenol, has the ability to bind to polymers through hydrogen bonding and hydrophobic interactions (page 5517, left column, first complete paragraph). To increase microcapsules’ integrity, a hardening agent is usually added in the last step of the coacervation process to consolidate the formed shells and stabilize their structure (page 5517, left column, first complete paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘985 and Sharkawy et al. and utilize tannic acid with the microcapsules of Patent ‘985. One skilled in the art would have been motivated to utilize tannic acid in order to consolidate the formed shells and stabilize the microcapsule structure as taught by Sharkawy et al.
Claims 3 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11540985 in view of Sharkawy et al as applied to claims 1-2, 10-11 and 14 above and in further view of Munoz et al. and Petit et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims the microcapsules shell has a bio-degradability of at least 20%, 30%, 40%, 50%, 60%, 65%, 70%, 75%, 80%,85%, 90%, 95% or 98%, within 60 days according to OECD301F or OECD310. The instant application claims the active material is a fragrance oil and has a total loading that ranges from 10% to 40%. The instant application claims the chitosan is fungal-derived chitosan or a derivative thereof.
The teachings of Patent ‘985 are set forth above. While Patent ‘985 claims microcapsules with chitosan and fragrance, Patent ‘985 does not expressly claim the degree of biodegradability, loading of the fragrance or the chitosan is fungal-derived chitosan or a derivative thereof. However, these deficiencies are cured by Petit et al. and Munoz et al.
Petit et al. (wherein a machine translation is utilized) is directed to microcapsules. The microcapsules contain fragrances as active agents and can be used for finishing fibers or textiles (claims). Microcapsule material includes chitosan (page 9-10). It is taught that fragrances are used in concentrations of 0.1 to 25 wt% based on the weight of the capsule (page 9). The microcapsules are useful as softeners for fibers or textile (pages (10-11).
Munoz et al. is directed to the extraction of chitosan from Aspergillus niger
Mycelium and synthesis of hydrogels for controlled release of betahistine. Local industrial production of citric acid by aerobic fermentation of sugars with the fungus Aspergillus niger produces 13,500 tons/year of wet mycelium as byproduct which could be a profitable source of chitin and chitosan (page 1). Chitosan has often been obtained from the exoskeletons of crustaceans. However, this process is restricted due to the problems of season and limited supply in some countries. On the other hand extraction of chitosan from fungi is available year round and low cost (page 1). Exemplified is chitosan extraction from dry mycelium (page 2, 2.1-2.2). Fig. 9 shows the degradation of chitosan under simulated physiological conditions. After a month of study, samples had only lost 37% of their initial weight. The low rate of degradation is due to the presence of covalent crosslinking of the chitosan chains. It is taught that 2.8 months is required to achieve complete degradation. (page 8, section 3.5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘985, Sharkawy et al., Petit et al. and Munoz et al. and utilize chitosan derived from fungal sources such as Aspergillus niger. One skilled in the art would have been motivated to utilize chitosan from a fungal source as it is available year round and at a low cost. Since the ultimate product is chitosan and both Patent ‘985 and Munoz et al. teach chitosan, there is a reasonable expectation of success as this is simple selection of a known source for chitosan.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘985, Sharkawy et al., Petit et al. and Munoz et al. and manipulate the concentration of the fragrances utilized. Since both Patent ‘985 and Petit et al. are directed to microcapsules which contain fragrances and Petit et al. recognize that the loading levels of fragrances can be from 0.1 to 25 wt%, one skilled in the art would recognize that the amount of fragrance that can be encapsulated can be manipulated. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Regarding the claimed biodegradability, as taught by Munoz et al. the rate of degradation can be dependent on the degree of crosslinking. Munoz et al. teaches degradation percentages overlapping with the instant claims. Based on the teachings of Munoz et al. one skilled in the art would recognize that the rate of degradation can be manipulated by varying the degree of crosslinking.
Claims 1 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 11, 13 and 20-23 of copending Application No. 17602102 (USPGPUB No. 20220226797). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant claims are set forth above.
Copending ‘102 claims a biodegradable core-shell microcapsule with controlled release of an active material,(i) the core of the biodegradable core-shell microcapsule comprising at least one active material, and(ii) the shell of the biodegradable core-shell microcapsule comprising at least one biopolymer cross-linked with two or more cross-linking agents, wherein one of the cross-linking agents is tannic acid and the other of the cross-linking agents is selected from an aldehyde, isocyanate, lysine, or a combination thereof, and the weight ratio between the biopolymer and the cross-linking agent is in a range of 60:1 to 3:10, and wherein the at least one biopolymer is a starch, dextran, dextrin, cellulose, hemicellulose, pectin, chitin, chitosan, gum, lignin, or a combination thereof. A consumer product is claimed.
Therefore, the scopes of the copending claims and the instant application overlap and thus they are obvious variants of one another as both claim microcapsules comprising the same wall material (tannic acid, chitosan) and an active core material.
Claims 2-3, 5-6, 11 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 11, 13 and 20-23 of copending Application No. 17602102 (USPGPUB No. 20220226797) as applied to claims 1 and 10 above and in view of Petit et al. and Munoz et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant claims are set forth above.
The teachings of copending ‘102 are set forth above.
While copending ‘102 claims a microcapsule and an active material, copending ‘102 does not claim the active is a fragrance, the degree of biodegradability, the chitosan is fungal derived or the consumer product is a laundry product. However, these deficiencies are cured by Petit et al. and Munoz et al.
The teachings of Petit et al. and Munoz et al. are set forth above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘102, Petit et al. and Munoz et al. and utilize chitosan derived from fungal sources such as Aspergillus niger. One skilled in the art would have been motivated to utilize chitosan from a fungal source as it is available year round and at a low cost. Since the ultimate product is chitosan and both copending ‘102 and Munoz et al. teach chitosan, there is a reasonable expectation of success as this is simple selection of a known source for chitosan.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘102, Petit et al. and Munoz et al. and utilize a fragrance as the active material in the capsule with a reasonable expectation of success. One skilled in the art would have been motivated to utilize a fragrance as it is a known active material for use in microcapsules as taught by Petit et al. One skilled in the art would have been motivated to include a fragrance to provide for a controlled release smell. One skilled in the art would have been motivated to utilize the microcapsules in a laundry care product as these are known industrial uses of microcapsules as taught by Petit et al. Regarding the claimed concentration of the fragrance, Petit et al. recognize that the loading levels of fragrances can be from 0.1 to 25 wt%, one skilled in the art would recognize that the amount of fragrance that can be encapsulated can be manipulated. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Regarding the claimed biodegradability, as taught by Munoz et al. the rate of degradation can be dependent on the degree of crosslinking. Munoz et al. teaches degradation percentages overlapping with the instant claims. Based on the teachings of Munoz et al. one skilled in the art would recognize that the rate of degradation can be manipulated by varying the degree of crosslinking.
Claims 1-3, 10-11 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18724124 (USPGPUB No. 20240336880) in view of Sharkawy et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant claims are set forth above.
Copending ‘124 claims a biodegradable core-shell microcapsule comprising:(a) a shell comprising the reaction product of an isocyanate-functionalized prepolymer with a crosslinker and optionally a polyelectrolyte under an aqueous condition; and(b) a core comprising an active material; wherein the isocyanate-functionalized prepolymer is the reaction product of a polyisocyanate with a biopolymer and/or an amphiphilic compound under an anhydrous condition, the biopolymer is selected from the group consisting of gelatin, collagen, chitosan, modified guar, modified glucan, gum Arabic (gum acacia), modified gum Arabic (modified gum acacia), proteins, hydrolyzed proteins, fermented proteins, hydrophobin, enzymes, alginate, carrageenan, pectin, modified starch, modified cellulose, and mixtures thereof, the amphiphilic compound is selected from the group consisting of partially neutralized acid esters, polyvinyl alcohol, glycolipids, fatty acids, saponins, quillaia extract, surfactant salts having carboxylate and/or linear alcohol groups, and mixtures thereof, the microcapsule shell has a biodegradation rate of at least 20%, 30%, 40%, 50%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95% or 98%, based on the weight of the microcapsule shell, within 60 days according to OECD301F, and the microcapsule shell is substantially free of or free of a self-condensed polyisocyanate. Tannic acid is also claimed. Fragrance active is claimed. A consumer product is claimed. Fabric conditioner is claimed.
While copending ‘124 claims a crosslinker, copending ‘124 does not expressly claim tannic acid. However, these deficiencies are cured by Sharkawy et al.
The teachings of Sharkawy et al. are set forth above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘124 and Sharkawy et al. and utilize tannic acid with the microcapsules of copending ‘124. One skilled in the art would have been motivated to utilize tannic acid in order to consolidate the formed shells and stabilize the microcapsule structure as taught by Sharkawy et al. Since Sharkawy et al. suggests the tannic acid can bind with (i.e. crosslink) the biopolymers, there is a reasonable expectation of success.
Claims 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18724124 (USPGPUB No. 20240336880) in view of Sharkawy et al. as applied to claims 1-3, 10-11 and 14 above and in further view of Petit et al. and Munoz et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant claims are set forth above.
The teachings of copending ‘124 are set forth above.
While copending ‘124 claims a fragrance active material, copending ‘124 does not claim the loading concentration. While copending ‘124 claims chitosan, copending ‘124 does not claim a fungal derived chitosan. However, these deficiencies are cured by Petit et al. and Munoz et al.
The teachings of Petit et al. and Munoz et al. are set forth above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘124, Sharkawy et al., Petit et al. and Munoz et al. and utilize chitosan derived from fungal sources such as Aspergillus niger. One skilled in the art would have been motivated to utilize chitosan from a fungal source as it is available year round and at a low cost. Since the ultimate product is chitosan and both copending ‘124 and Munoz et al. teach chitosan, there is a reasonable expectation of success as this is simple selection of a known source for chitosan.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘124, Sharkawy et al., Munoz et al. and Petit et al. and manipulate the concentration of the fragrances utilized. Since both copending ‘124 and Petit et al. are directed to microcapsules which contain fragrances and Petit et al. recognize that the loading levels of fragrances can be from 0.1 to 25 wt%, one skilled in the art would recognize that the amount of fragrance that can be encapsulated can be manipulated. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Claims 1-3, 6, 10-11 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18723811 (USPGPUB No. 20250075151). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant claims are set forth above.
Copending ‘811 claims a biodegradable core-shell microcapsule, wherein:(i) the shell comprises chitosan cross-linked with a polyfunctional isocyanate having at least two isocyanate functional groups and a tannic acid hydrolyzed at a pH of between 5.0 and 8.5; and (ii) the core comprises an active material; wherein the microcapsule shell has a biodegradation rate of at least 20%, 30%, 40%, 50%,60%, 65%, 70%, 75%, 80%, 85%, 90%, 95% or 98%, based on the weight of the microcapsule shell, within 60 days according to OECD301F. Fungal chitosan is claimed. Fragrance active is claimed. A consumer product is claimed. Fabric conditioner is claimed.
Therefore, the scopes of the copending claims and the instant application overlap and thus they are obvious variants of one another as both claim microcapsules comprising the same wall material (tannic acid, fungal chitosan) and an active core material (fragrance) and same biodegradation rate.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18723811 (USPGPUB No. 20250075151) as applied to claims 1-3, 6, 10-11 and 14 above and in view of Petit et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant claims are set forth above.
The claims of copending ‘811 are set forth above.
While copending ‘811 claims a core of a fragrance, copending ‘811 does not expressly claim the loading. However, this deficiency is cured by Petit et al.
The teachings of Petit et al. are set forth above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘811 and Petit et al. and manipulate the concentration of the fragrances utilized. Since both copending ‘811 and Petit et al. are directed to microcapsules which contain fragrances and Petit et al. recognize that the loading levels of fragrances can be from 0.1 to 25 wt%, one skilled in the art would recognize that the amount of fragrance that can be encapsulated can be manipulated. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Response to Arguments
Applicants’ arguments filed January 7 2026 have been fully considered but they are not persuasive.
Applicants argue that patent ‘985 does not chitosan and tannic acid. While Applicants are correct that patent ‘985 does not claim tannic acid, this limitations is rendered obvious by Sharkawy et al.
Applicants argue that the rejection on the grounds of nonstatutory double patenting over copending ‘102 be held in abeyance until an indication of allowable subject matter.
The rejections are maintained since applicant has not made any substantive arguments traversing the rejection. Applicant(s) is/are reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 714.02 and CFR 1.111(b)).
Applicants argue that copending ‘124 and ‘811 are later filed.
Applicants arguments are correct that copending ‘124 and ‘811 are later filed. Thus, if these rejections are the only rejections remaining (and are still provisional) the rejections can be withdrawn.
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 ABIGAIL VANHORN whose telephone number is (571)270-3502. The examiner can normally be reached M-Th 6 am-4 pm EST.
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, Neil Hammell can be reached at 571-270-5919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ABIGAIL VANHORN/ Primary Examiner, Art Unit 1636