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to papers filed 03/02/2026 in which claims 11, 15, 18, 22, and 30-31 were canceled; claims 21, 23, and 25-26 were withdrawn; claims 1, 14, and 19-21 were amended; and claims 32-34 were newly added. All the amendments have been thoroughly reviewed and entered.
Claims 1-10, 12-14, 16-17, 19-20, 24, 27-29 and 32-34 are under examination.
New Objection
Claim Objections
Claim 1 is objected to because of the following informalities: please remove the “s” in “ratios”. Appropriate correction is required.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 28 and 29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 28 and 29, the recitation of “the interaction between the carboxylic acid groups of the polysaccharide and the at least one aminosilane” renders said claims indefinite because claim 28 and 29 are dependent from claim 1, and said claim 1 does not recite an interaction between the carboxylic acid groups of the polysaccharide and the at least one aminosilane. Thus, there is lack of antecedent basis for the interaction in claim 1. As such, it is not clear what “the interaction” claims 28 and 29 are referencing to, as claim 1 does not recite an interaction between the carboxylic acid groups of the polysaccharide and the at least one aminosilane.
As a result, claims 28 and 29 do not clearly set forth the metes and bounds of patent protection desired.
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) 1-10, 12-14, 16-17, 19-20, 24, 27-29 and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jerri et al (US 2018/0078468 A1) in view of El-habnouni et al (WO 2019/121736 A1), Becker et al (WO 2005/028604 A1), and Sakai et al (Journal of Membrane Science, 2002, 205: 183-189).
Regarding claim 1, Jerri teaches a composition comprising core-shell microcapsule comprising encapsulating an active ingredient such as perfume and having a shell comprising a polyisocyanate, a silane and a biopolymer such as gum Arabic, sugar beet pectin, or alginate (a polymeric surfactant) (Abstract; [0011]-[0057], [0094]-[0095], [0119]-[0130]; Example 9; claims 1-19). Jerri teaches the microcapsule is polyurea/polyurethane based, which interfacial polymerization is induced by addition of mixture of polyamine reactant, polyol reactant, and polyisocyanate ([0031]-[0037]). Jerri teaches that the reaction of a polyamine with polyisocyanate forms urea linkage ([0045]) or in other words polyurea bonds. Jerri teaches the reaction of a polyol with polyisocynate forms urethane linkage ([0046]) in other words, polyurethane bonds. Jerri teaches the silicified inorganic/organic hybrid biopolymer capsules containing a shell wall having formed by a combination of sol-gel polymerization and interfacial polymerization of polyisocyanate, tetraethoxysilane (a silane), gum Arabic, and guanidine carbonate ([0129]; Example 9). Jerri teaches the shell of the microcapsule further contains a polysaccharide such as a cellulose derivative, wherein the polysaccharide is deposited on the outer surface of the capsule shell ([0011]-[0057], [0071], [0094]-[0095], [0119]-[0130]; Example 9 and claim 4).
However, Jerri does not teach the aminosilane of claim 1.
Regarding the aminosilane of claim 1, El-habnouni teaches a composition comprising a core-shell microcapsule encapsulating an active ingredient such as perfume and having a shell comprising a polyisocyanate, and a polymeric stabilizer that is a reaction product of a polymeric surfactant and a silane such as aminosilane (i.e., 3-aminopropyltriethoxysilane) (Abstract; pages 4, 6-15, 18, 23, and 37-38; Example 4). El-habnouni teaches the aminosilane has an amine functional group (pages 9-10). El-habnouni teaches the aminosilane is admixed with the oil phase (pages 14-15; Example 1). El-habnouni teaches that groups of polyfunctional amines that are reactive towards NCO groups (polyisocyanate) are chosen from hydroxy groups and primary or secondary amino groups, and reaction of NCO groups with animo groups leads to the formation of urea groups (urea linkage) and reaction of NCO groups with OH groups leads to formation of urethane groups (urethane linkage) (pages 21-24). El-habnouni teaches the shell of the microcapsule further contains a polysaccharide, wherein the polysaccharide is deposited on the outer surface of the capsule shell (page 13 and 37-38; Example 4).
Becker teaches sol-gel microparticles formed by a reaction product containing a bis(trialkoxyalkylsilane)amine such as bis[3-trimethoxysilyl)-propyl]amine (an aminosilane that has an amine functional group) and a polysaccharide such as pectin or sodium alginate (Abstract; pages 4 and 8-10; claims 1-27). Becker teaches the such microparticles containing bis[3-trimethoxysilyl)-propyl]amine and a polysaccharide such as pectin or sodium alginate provides improve stability to an active ingredient encapsulated therein and such microparticles are suitable for including in consumer products such as liquid detergent, liquid soap and shampoo (pages 4, and 10-14).
It would have been obvious to one of ordinary skill in the art to include a bipodal aminosilane such as bis[3-trimethoxysilyl)-propyl]amine as the silane in the microcapsule of Jerri, per guidance from El-habnouni and Becker, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Jerri indicated that the silane component that is added to oil phase during the production of the microcapsule including a silane or a combination of silanes to form a hybridized inorganic/organic membrane at the interface based on a sol-gel polymerization and interfacial polymerization (Jerri: [0129]; Example 9), and the aminosilane as taught by El-habnouni is within the scope of said silane of Jerri, as aminosilane of El-habnouni was taught as the preferred silane that is added to the oil phase due to the benefit of aminosilane being capable of forming covalent bond with the shell material (i.e., polyisocyanate), and functioning as an emulsifier along with the polymeric surfactant to prepare a stable emulsion and ultimately resulting in better quality core-shell microcapsules (El-habnouni: pages 8-10, 14-15). Becker provided the guidance for selecting and using bipodal aminosilane such as bis[3-trimethoxysilyl)-propyl]amine as the silane in the microcapsule of Jerri in view of El-habnouni, by teaching that aside from 3-aminopropylrimethoxysilane disclosed in El-habnouni, bis[3-trimethoxysilyl)-propyl]amine is also a suitable silane for use in reacting with a polysaccharide such as pectin to form stabilized microparticles that suitable for use in consumer products such as liquid detergent, liquid soap and shampoo (Becker: Abstract; pages 4 and 8-10; claims 1-27). Given that Jerri and El-habnouni are common to Becker drawn to consumer products containing stabilized microencapsulated composition, and El-habnouni indicated that due to the available alkoxy functional groups on the aminosilane, the polymeric stabilizer act as a covalent linker to help bind the shells to the dispersed oil droplets, resulting in better quality core-shell microcapsules, and the functionalization of the polymeric stabilizer, such that it can covalently link to the shell through poly-condensation of the alkoxysilane moieties (El-habnouni: page 8 and page 10, lines 5-23), an ordinary artisan provided the guidance from Becker, would have looked to selecting and using bis[3-trimethoxysilyl)-propyl]amine from a list of known aminosilane suitable for use in in forming microparticles/microcapsules with a polysaccharide, with a reasonable expectation that the incorporation of bis[3-trimethoxysilyl)-propyl]amine as the silane component in the microcapsule of Jerri and El-habnouni would provide a resultant microcapsule/microparticle that has good quality, stability and high microcapsule loading. Thus, an ordinary artisan seeking to provide a core-shell microcapsule that have good stability and high microcapsule loading, would have looked to including aminosilane such as bis[3-trimethoxysilyl)-propyl]amine as the silane in the microcapsule of Jerri and El-habnouni, 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.).
With respect to the weight ratio of aminosilaine to polymeric surfactant of claim 1, Jerri teaches the composition contains 1.0% to 4.0% by weight of a silane and 0.1% to 5.0% by weight of the biopolymer such as Arabic gum or sugar beet pectin (a polymeric surfactant) ([0129]-[0130]; Example 9 and Table 10). Furthermore, El-Habnouni also teaches that the weight ratio between aminosilane to polymeric surfactant is within the interval of from about 1/0.05 to about 1/1, more particularly from about 1/0.1 to about 1/0.7, still more particularly from about 1/0.3 to about 1/0.4, for example 1/0.33 (El-Habnouni: page 10, lines 11-16). It is noted that the amounts of silane and biopolymer as taught by Jerri and the weight ratios between aminosilane and polymeric surfactant as suggested by El-Habnouni overlaps or fall within the claimed the aminosilane to polymeric surfactant weight ratio is from 0.3 to 0.7. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight ratio of aminosilane to polymeric surfactant would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 2-9, as discussed above, Jerri teaches gum Arabic, sugar beet pectin or alginate, thereby meets the claimed polysaccharide as described in claims 2-9, as per claim 9, gum Arabic and pectin were recited as the polymeric surfactant.
Regarding claim 10, as discussed above, Jerri teaches gum Arabic, sugar beet pectin or alginate, thereby meets the claimed structure of “the polymer surfactant comprises a polysaccharide comprising a carboxylic acid groups” of claim 1. As such, the claimed property of “the polymeric surfactant causes a surface tension of less than 45 mN/m, in a 1 wt.% aqueous solution containing 0.01 wt.-% of sodium chloride, when measure after 1 h of equilibration at pH 4.5 at a temperature of 25°C” as recited in claim 10 is an inherent property of the structurally same gum Arabic, sugar beet pectin or alginate, as the gum Arabic, sugar beet pectin or alginate structurally meets the claimed “the polymer surfactant comprises a polysaccharide comprising a carboxylic acid groups” recited in claim 1, and evidenced by instant claim 9, which recites gum Arabic and pectin as the polymeric surfactant. It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
Regarding claims 12-13, as discussed above, Becker provided the guidance for using bis[3-trimethoxysilyl)-propyl]amine as the silane in the microcapsule of Jerri and El-habnouni.
Regarding claim 14, as discussed above, Jerri teaches the composition contains 1.0% to 4.0% by weight of a silane and 0.1% to 5.0% by weight of the biopolymer such as Arabic gum or sugar beet pectin ([0129]-[0130]; Example 9 and Table 10). As discussed above, El-Habnouni also teaches that the weight ratio between aminosilane to polymeric surfactant is within the interval of from about 1/0.05 to about 1/1, more particularly from about 1/0.1 to about 1/0.7, still more particularly from about 1/0.3 to about 1/0.4, for example 1/0.33 (El-Habnouni: page 10, lines 11-16). It is noted that the amounts of silane and biopolymer as taught by Jerri, as well as, the weight ratio between aminosilane and polymeric surfactant as suggested by El-Habnouni encompassed the claimed aminosilane to polymeric surfactant weight ratio is 0.5. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight ratio of aminosilane to polymeric surfactant to 0.5 would have been obvious before the effective filing date of Applicant’s invention. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
Regarding claim 16, Jerri and El-habnouni teach the polyisocyanate is a trimethylol propane-adduct of xylylene diisocyanate (Takenate® D-110N) (Jerri: [0124], Example 9 and Table 10; El-habnouni: page 23), which meets the claimed the polyfunctional isocyanate is 2-ethylpropane-1,2,3-triyl tris((3-(isocyanatomethyl)phenyl)carbamate), as evidenced by the instant specification which defined Takenate® D-110N as 2-ethylpropane-1,2,3-triyl tris((3-(isocyanatomethyl)phenyl)carbamate) (Specification: bottom of page 8 to page 9 ).
Regarding claims 17 and 27, as discussed above, Jerri teaches a composition comprising core-shell microcapsule comprising encapsulating an active ingredient such as perfume and having a shell comprising a polyisocyanate, a silane and a biopolymer such as gum Arabic or sugar beet pectin. Becker teaches sol-gel microparticles formed by a reaction product containing a bis(trialkoxyalkylsilane)amine such as bis[3-trimethoxysilyl)-propyl]amine and a polysaccharide such as pectin or sodium alginate (Becker: page 9). Becker teaches the such microparticles containing bis[3-trimethoxysilyl)-propyl]amine and a polysaccharide such as pectin provides improve stability to an active ingredient encapsulated therein and such microparticles are suitable for including in consumer products such as liquid detergent, liquid soap and shampoo. It would have been obvious to one of ordinary skill in the art select and use pectin as the biopolymer and bis(trialkoxyalkylsilane)amine as the silane in the microcapsule of Jerri and El-habnouni, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Becker teaches that pectin is a suitable polysaccharide to be combined with bis(trialkoxyalkylsilane)amine as the silane component to form stabilized microparticles and thus, it would have been obvious to select pectin from a list of known polysaccharide and select bis(trialkoxyalkylsilane)amine from a list of known aminosilane, with a reasonable expectation that said combination is suitable for forming stabilized microparticles that are suitable for including in consumer products such as liquid detergent, liquid soap and shampoo, 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.).
Regarding claim 19, Jerri and El-habnouni teaches the polysaccharide is deposited on the outer surface of the capsule shell (Jerri: [0071 and claim 4; El-habnouni: page 13 and 37-38; Example 4).
Regarding claim 20, Jerri and El-habnouni teaches the composition further contains citric acid (Jerri: Table 14; El-habnouni: Example 4), thereby meeting the claimed “the shell is further stabilized with a stabilizing agent.”
Regarding claim 24, Jerri and El-habnouni teach a consumer product containing the core-shell microcapsules (El-habnouni). Jerri and El-habnouni teaches the consumer product is liquid shampoo, hair conditioner, shower gel, antiperspirant, deodorant, detergent, all-purpose cleaner or fabric softener, in the form of soap or in the form of powder or tablet detergent (Jerri: [0151] and claims 18-10; El-habnouni: page 33-34).
Regarding claim 28, as discussed above, the silane component and the polysaccharide component of Jerri and Becker were mixed in the process of producing the microcapsules/microparticles (Jerri: [0017]-[0021], [0118], [0129], and [0136]; Becker: pages 8-10), and thus, the mixing of the silane component and the polysaccharide component would provide some degree of interaction, especially when an aminosilane as taught by El-habnouni and Becker included as the silane component in Jerri. This is evident by Sakai, which teaches that the mixing of 3-aminopropyltrimethoxysilane (an aminosilane) with an alginate (a polysaccharide) resulted in electrostatic bonds between the carboxyl groups of the alginate and the amino groups of the aminopropyl-silicate (Sakai: Abstract; Introduction; pages 184-185).
As such, electrostatic bonds between the carboxyl groups of the alginate and the amino groups of the aminopropyl-silicate, as taught by Sakai, meets the claimed “dispersion forces, electrostatic forces, hydrogen bonds, or a chemical reaction.”
Regarding claim 29, as discussed above, Jerri indicated that the silane component that is added to oil phase during the production of the microcapsule including a silane or a combination of silanes to form a hybridized inorganic/organic membrane at the interface based on a sol-gel polymerization and interfacial polymerization (Jerri: [0129]), and the aminosilane as taught by El-habnouni is within the scope of said silane of Jerri, as aminosilane of El-habnouni was taught as the preferred silane that is added to the oil phase due to the benefit of aminosilane being capable of forming covalent bond with the shell material, and functioning as an emulsifier along with the polymeric surfactant to prepare a stable emulsion and ultimately resulting in better quality core-shell microcapsules (El-habnouni: pages 8-10, 14-15). Thus, it would have been reasonably obvious the aminosilane of El-habnouni and Becker when added as the silane component of Jerri would interacts with the carboxylic groups of the polysaccharide via a chemical reaction to form covalent bonds because in Jerri, the oil phase contains the silane and the water phase contains the polysaccharide upon mixing and interfacial polymerization reaction would form covalent bonds.
Regarding claims 32-34, as discussed above, Jerri teaches the shell of the microcapsule further contains a polysaccharide such as a cellulose derivative, wherein the polysaccharide is deposited on the outer surface of the capsule shell, and wherein the polysaccharide is a cellulose derivative ([0011]-[0057], [0071], [0094]-[0095], [0119]-[0130]; Example 9 and claim 4).
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 03/02/2026 have been fully considered but they are not persuasive.
Applicant argues that paragraph [0136] of Jerri depicts a two-layer (i.e., hybrid) membrane formation, yet “these layers are not interconnected, because there is no possibility of interaction between isocyanate groups and the alkoxide groups of the silane” and there is “no teaching or suggestion in Jerry of connecting two layers.” (Remarks, page 9-11).
In response, the Examiner disagrees. Paragraph [0129] of Jerri discloses: the oil phase further comprises a silane or a combination of silanes to form a hybridized inorganic/organic membrane at the interface based on sol-gel polymerization and interfacial polymerization. Thus, paragraph [0129] of Jerri does suggest a hybridized microcapsule based on sol-gel polymerization and interfacial polymerization. In line with paragraph [0129], Example 9 of Jerri provides the preparation of Silicified Inorganic/Organic Hybrid Biopolymer Capsules in which shell wall is formed by a combination of sol-gel polymerization and interfacial polymerization of polyisocyanate, tetraethoxysilane (a silane), gum Arabic, and guanidine carbonate. Example 9 particularly discloses that the preparation formed a hybrid silicified polyurea-polyurethane.
To this end, Applicant is again reminded that the 103 rejection over independent claim 1 was based on the combined teachings of Jerri, El-habnouni and Becker. As discussed in the 103 rejection, Jerri teaches the silicified inorganic/organic hybrid biopolymer capsules containing a shell wall having formed by a combination of sol-gel polymerization and interfacial polymerization of polyisocyanate tetraethoxysilane (a silane), gum Arabic, and guanidine carbonate (Jerri: [0129]; Example 9). Thus, from the aspect of the interfacial polymerization reaction, the polyisocyanate, silane, and gum Arabic that are mixed in the preparation of Jerri would react or link with one another during interfacial polymerization. Thus, it is maintained that it would have been obvious that the inclusion a bipodal aminosilane such as bis[3-trimethoxysilyl)-propyl]amine of Becker as the silane in the microcapsule of Jerri would result in a microcapsule in which the polyisocyanate crosslinks both the aminosilane and the polysaccharide (i.e,. gum Arabic, sugar beet pectin, or alginate) through a sol-gel polymerization and interfacial polymerization reactions to form polyurea and polyurethane bonds, and produce the claimed invention. It would have been reasonably obvious because Jerri indicated that polyurea/polyurethane based microcapsule are formed via interfacial polymerization of a mixture of polyamine reactant, polyol reactant, and polyisocyanate, in which the reaction of a polyamine with polyisocyanate forms urea linkage and the reaction of a polyol with polyisocynate forms urethane linkage (Jerri: [0031]-[0037], [0045], [0046]). In the same context, El-habnouni established that groups of polyfunctional amines that are reactive towards NCO groups (polyisocyanate) are chosen from hydroxyl groups and primary or secondary amino groups, and reaction of NCO groups with amino groups leads to the formation of urea groups (urea linkage) and reaction of NCO groups with OH groups leads to formation of urethane groups (urethane linkage) (El-habnouni: pages 21-24). Given that the aminosilane as taught in El-habnouni and Becker is an amine within the scope of the polyamine having primary or secondary amino groups, and polysaccharide such as gum Arabic, sugar beet pectin, or alginate in Jerri is within the scope of polyol having hydroxyl groups, there is reasonable expectation that the presence of bis[3-trimethoxysilyl)-propyl]amine of Becker as the silane in the formation of the microcapsule of Jerri per guidance from El-habnouni and Becker would result the polyisocynate crosslinking with both the aminosilane and polysaccharide such as gum Arabic, sugar beet pectin, or alginate during interfacial polymerization to form polyurea and polyurethane bonds because as discussed above, Jerri established that polyurea/polyurethane based microcapsule are formed via interfacial polymerization of a mixture of polyamine reactant, polyol reactant, and polyisocyanate, in which the reaction of a polyamine with polyisocyanate forms urea linkage and the reaction of a polyol with polyisocynate forms urethane linkage.
As such, contrary to Applicant’s allegation, crosslinking is possible between the aminosilane molecules taught by El-habnouni and Becker that is included as the silane component in the formation of the microcapsule of Jerri. This expectation is reasonably obvious because as discussed above, the aminosilane as taught in El-habnouni and Becker is an amine within the scope of the polyamine having primary or secondary amino groups, and polysaccharide such as gum Arabic, sugar beet pectin, or alginate in Jerri is within the scope of polyol having hydroxyl groups, and thus, the presence of bis[3-trimethoxysilyl)-propyl]amine of Becker as the silane in the formation of the microcapsule of Jerri per guidance from El-habnouni and Becker would result the polyisocynate crosslinking with both the aminosilane and polysaccharide such as gum Arabic, sugar beet pectin, or alginate during interfacial polymerization to form polyurea and polyurethane bonds. This expectation is supported by Jerri establishing that polyurea/polyurethane based microcapsule are formed via interfacial polymerization of a mixture of polyamine reactant, polyol reactant, and polyisocyanate, in which the reaction of a polyamine with polyisocyanate forms urea linkage and the reaction of a polyol with polyisocynate forms urethane linkage.
Nevertheless, it is noted that claim 1 does not required any interaction between the isocyanate group and the groups of the silanes. Thus, Applicant’s argument focusing on the interaction between the isocyanate group and the groups of the silanes is not pertinent to the claimed invention.
Accordingly, the combined teachings of Jerri, El-habnouni, and Becker are proper to render obvious the claimed shell formed by combination of a polymeric surfactant with at least one bipodal aminosilane as recited in claim 1.
Applicant argues that Example 9 of Jerri used capsules (capsules I, J, and K) in which the weight ratio of silane/gum Arabic is 1 or greater than 1 and the performance of the said capsules were unexceptional for the relative olfactive scores. Thus, Applicant’s alleged that Jerri teaches away from the claimed weight ratios from 0.3 to 0.7 for aminosilane to polymeric surfactant. Applicant goes on the alleged that in contrast to Jerri, Example 4.3 and Table 2 of the specification showed capsules having a weight ratio of pectin to aminosilane was 0.52 and said capsules outperformed the capsules from Example 9 of Jerri. As such, Applicant alleged that “[n]either Jerri nor any of the other cited prior art documents teach or suggest that replacing the silanes of Jerri with an aminosilane, in the weight ratio as presently required by claim 1, would lead to an improvement in the capsule performance.” (Remarks, pages 11-14).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, Jerri teaches the composition contains 1.0% to 4.0% by weight of a silane and 0.1% to 5.0% by weight of the biopolymer such as Arabic gum or sugar beet pectin (a polymeric surfactant) ([0129]-[0130]). Furthermore, El-Habnouni also teaches that the weight ratio between aminosilane to polymeric surfactant is within the interval of from about 1/0.05 to about 1/1, more particularly from about 1/0.1 to about 1/0.7, still more particularly from about 1/0.3 to about 1/0.4, for example 1/0.33 (El-Habnouni: page 10, lines 11-16). It is noted that the amounts of silane and biopolymer as taught by Jerri and the weight ratios between aminosilane and polymeric surfactant as suggested by El-Habnouni overlaps or fall within the claimed the aminosilane to polymeric surfactant weight ratio is from 0.3 to 0.7. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight ratio of aminosilane to polymeric surfactant would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II). Thus, contrary to Applicant’s allegation, the broader disclosure from Jerri, as well as, the disclosure from El-Habnouni teach towards the optimization of the weight ratio of aminosilane to polymeric surfactant to be a weight ratio encompassed by the claimed weight ratio of 0.3 to 0.7.
While Applicant has provided comparative data with respect to Example 9 of Jerri to that of Example 4.3 and Table 2 of the specification, said comparative evidence is insufficient to obviate the pending 103 rejection as set forth in this office action for the reasons discussed below.
First, it is noted that while the capsules from Table 2 of the specification showed improvement capsule performance with respect to relative olfactive scores, the Table shown on page 14 of Applicant’s arguments (Remarks) filed 03/02/2026 is deficient. Below is a snapshot of the Table shown on page 14 of Applicant’s arguments (Remarks):
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292
374
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.
The above table is deficient because the Table showed that the weight ratio of pectin/aminosilane is 0.52. However, based on the amounts provided for aminosilane and pectin as shown in the Table, said amounts does not equate to a weight ratio of 0.5. As shown in the Table, the weight amount of pectin is 1.1 and the weight amount of aminosilane is 0.8. This equates to a weight ratio of pectin/aminosilane of 1.375 (1.1/0.8). Thus, the weight ratio of pectin/aminosilane of 1.375 (1.1/0.8) does not match the weight ratio of 0.52 as indicated in the Table, as well as, the weight ratio of 1.375 is outside the scope of the claimed weight ratio of 0.3 to 0.7 (even in light of the reverse, aminosilane/pectin = 0.8/1.1 = 0.72). Thus, the results shown for relative olfactive scores in the above Table is inconclusive as the data from the above Table is inaccurate.
If Applicant were to present evidence of unexpected results shown in Table 2 of the specification and especially to the Example 4.3, said evidence of unexpected results with respect to olfactive performance would not be sufficient to obviate the pending 103 rejection as set forth in this office action because claim 1 is much broader than the microcapsules of Example 4.3 used for showing the alleged unexpected results. The components of the microcapsules of Example 4.3 are described in Example 4 on pages 24-25 of the specification. Thus, the encapsulated composition of claim 1 is not adequately commensurate in scope with the microcapsules described in Example 4 on pages 24-25 of the specification. MPEP §716.02(d) states that [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."
Furthermore, with any allegation or evidence of unexpected results, said unexpected results would need to be compared to the closest prior art. In the instant case, the closest prior art would be El-Habnouni. MPEP §716.02(e) states [a]n affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). As discussed above, El-Habnouni suggested that the weight ratio between aminosilane to polymeric surfactant is within the interval of from about 1/0.05 to about 1/1, more particularly from about 1/0.1 to about 1/0.7, still more particularly from about 1/0.3 to about 1/0.4, for example 1/0.33 (El-Habnouni: page 10, lines 11-16). The intervals as suggested by El-Habnouni substantially overlaps the claimed weight ratio of 0.3 to 0.7. Additionally, El-Habnouni also showed enhanced olfactive performance scores when the ratio of aminosilane to polymeric surfactant is within the above interval. See olfactive performance results are on page 40 of El-Habnouni. Thus, in light of El-Habnouni, Applicant’s alleged unexpected results with respect to improved olfactive performance appeared not unexpected, but rather expected. As such, it is noted that "Expected 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).
Applicant argues:
“Becker is from the outset, distinguishable as being from a completely different technical field than that of the more properly consider circumscribed field of core-shell microencapsulation of perfume or cosmetic agents. Becker is relevant to the field of enzyme entrapment. Becker is concerned with "silica sol-gels having proteins such as enzymes entrapped, wherein the proteins are released when the sol-gels are placed in a solution having a high water percentage by weight." (c.f. Becker's abstract). There is no disclosure in Becker of any fragrance or perfume which is encapsulated in core-shell microcapsules. Hence, the consideration of Becker is misplaced.” (Remarks, page 15, last paragraph).
In response, the Examiner disagrees. As discussed in the 103 rejection, Jerri, El-habnouni and Becker are commonly drawn to consumer products containing stabilized microencapsulated composition. Thus, Jerri, El-habnouni and Becker are in the same field of endeavors. See 103 rejection, pages 4-9 of this office action. As such Jerri, El-habnouni and Becker are properly combined to render obvious Applicant’s claimed encapsulated composition.
Applicant argues:
“Sakai comes from a very disparate technical field and would not be considered by a skilled artisan facing the technical problems relevant to the currently presented, claims. Sakai's technical problems and concerns relate to the successful microencapsulation of biomolecules and living cells in calcium (Ca)-alginate gel beads coated with a semipermeable aminopropyl-silicate membrane. Sakai's field is thus, a completely different technical field from core-shell microencapsulation of perfume or cosmetic agents. Sakai is neither "reasonably pertinent," nor would must "logically commend itself' to an inventor's attention in considering his problem. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)(citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also MPEP § 2141.01(a).” (Remarks, page 16).
In response, the Examiner disagrees. Contrary to Applicant’s allegation, Sakai is in the same field of endeavor as Jerri, El-Habnouni, and Becker, which is microcapsules. As discussed in the 103 rejection, Sakai was used as an evidentiary reference to establish that the mixing of 3-aminopropyltrimethoxysilane (an aminosilane) with an alginate (a polysaccharide) resulted in electrostatic bonds between the carboxyl groups of the alginate and the amino groups of the aminopropyl-silicate. Thus, as discussed above in the 103 rejection, it is maintained that the mixing of the silane component and the polysaccharide component would provide some degree of interaction, especially when an aminosilane as taught by El-habnouni and Becker included as the silane component in Jerri, per evidenced by Sakai supra.
Applicant argues: “Jerri does not teach or suggest, but rather teaches away from the currently claimed invention. El-habnouni does not address nor overcome the fatal shortcomings in Jerri. Becker and Sakai are similarly deficient in failing to overcoming the fatal flaws in Jerri, but should not even have come into consideration as being from very different and distinguishable technical fields... and are concerned with different technical problems and are not analogous to the technical problem faced by the present inventor.” (Remarks, bottom of page 15 to page 16).
In response the Examiner disagrees. As discussed above, the broader disclosure from Jerri, as well as, the disclosure from El-Habnouni do not teach away from Applicant’s claimed invention but rather teach towards Applicant’s claimed invention. See pages 18-22 of this office action, said pages being incorporated herein in its entirety.
Furthermore, as discussed above, Jerri, El-habnouni and Becker are commonly drawn to consumer products containing stabilized microencapsulated composition. Thus, Jerri, El-habnouni and Becker are in the same field of endeavors. See pages 4-9 of this office action.
Additionally, as discussed above, contrary to Applicant’s allegation, Sakai is in the same field of endeavor as Jerri, El-Habnouni, and Becker, which is microcapsules. As discussed in the 103 rejection, Sakai was used as an evidentiary reference to establish that the mixing of 3-aminopropyltrimethoxysilane (an aminosilane) with an alginate (a polysaccharide) resulted in electrostatic bonds between the carboxyl groups of the alginate and the amino groups of the aminopropyl-silicate. See page 13 of this office action.
As a result, for at least the reasons discussed above, claims 1-10, 12-14, 16-17, 19-20, 24, 27-29 and 32-34 remain rejected as being obvious and unpatentable over the combined teachings of Jerri, El-Habnouni, and Becker (and as evidenced by Sakai) in the pending 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 1-10, 12-14, 16-17, 19-20, 24, 27-29 and 32-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-13, 17, and 20-24 of copending Application No. 17440449 (reference application) in view of El-habnouni et al (WO 2019/121736 A1) and Becker et al (WO 2005/028604 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘449 significantly overlap with the subject matter of instant claims, i.e., an encapsulated composition comprising a core-shell microcapsule comprising a core containing a perfume and/or cosmetic ingredient, and a shell surrounding the core, wherein the shell comprises a polymeric stabilizer formed by combining a polymeric surfactant with at least one bipodal aminosilane; and consumer products containing the core-shell microcapsule, and wherein the weight ratio between the aminosilane to polymeric surfactant substantially overlaps.
While the polymeric surfactant in the instant application is a polysaccharide and the polymeric surfactant in the copending application ‘449 is co-polymer of maleic anhydride and ethylene and/or vinyl methyl ether, it would have been obvious to substitute polysaccharide as the polymeric surfactant in the microcapsule of the copending application and vice versa, substitute the co-polymer of maleic anhydride and ethylene and/or vinyl methyl ether as the polymeric surfactant in the microcapsule of the instant application in view of the guidance from El-habnouni and Becker, which respectively, teaches co-polymer of maleic anhydride is known to be suitable for use in combination with an aminosilane to form microencapsulated composition (from El-habnouni: Abstract; pages 4, 6-15, 18, 23, and 37-38; Example 4), and polysaccharide such as pectin is known to be suitable for use in combination with an aminosilane to form microencapsulated composition (Becker: Abstract; pages 4 and 8-10; claims 1-27). Thus, it would have merely simply substitution of one known polymeric surfactant for another to obtain predictable results of microencapsulated composition with improved stability per El-habnouni and Becker (El-habnouni: page 8; Becker: pages 4, and 10-14).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 17440449 in view of El-habnouni and Becker.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
Applicant argues: “the timeliness and propriety of the present double-patenting rejection of the indicated claims, in view of applicant's co-pending application US Serial No. 17/440449, in further view of the El-habnouni and Becker references.” Applicant alleges “[t]he presentation of this rejection appears to be inappropriate, as being untimely and premature,” as “no claims have been indicated as being allowed in applicant's co-pending application or for that matter has any substantive prosecution begun, evidenced by the lack of the issuance of any Office Action in that file.” Thus, Applicant alleges “no assessment of allowed claims is indicated in either US Serial No. 17/440449 or in the instant application.” (Remarks, page 16).
In response, the Examiner disagrees. The double patenting rejection is a provisional nonstatutory double patenting rejection over copending Application No. 17440449, and such provisional double patenting rejection should be made and maintained by the Examiner until Applicant overcomes the rejection by filing a terminal disclaimer per MPEP §804(I)(B)(1).
Accordingly, the provisional nonstatutory double patenting rejection is maintained for the reason of record, pending the filing of a terminal disclaimer.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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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