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is in response to papers filed 03/02/2026 in which claims 5-6, 12-13, and 22 were canceled; claims 16-17 and 19 were withdrawn; and claim 1 was amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-4, 7-11, 14-15, 18 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Withdrawn Objections/Rejections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 Any rejection and/or objection not specifically addressed below is hereby withdrawn.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 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 7-11, 14-15, 18 and 20-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces new matter as the claim recites the limitation: absorption (see 2nd to last line of claim 1). There is no support in the specification for absorption.
Applicant asserted that support for the limitation can be found on page 5, lines 20-22 from the application as filed (see Remarks filed 03/02/2026, bottom of page 10).
However, after a thorough review of page 5, lines 20-22 of the application as filed (instant specification), as well as, throughout the specification, there remained no support or disclosure for “absorption” as claimed in the “free chitosan due to absorption/desorption -equilibria of chitosan.” It is noted that page 5, lines 20-22 of the specification actually discloses “adsorption” and not the claimed “absorption.” Adsorption as disclosed is a completely different term than the claimed absorption. Thus, Applicant has possession for “adsorption,” but not the instantly claimed “absorption.”
Claims 2-4, 7-11, 14-15, 18 and 20-21 are also rejected as they depend directly or indirectly from claim 1, thereby also contains the new matter material.
Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of amended claim 1 at the time of filing of the instant application.
Claim Interpretation
Claim 18 is structured as a product-by-process type claims. MPEP §2113 (I) states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Thus, while the structure implied by the process steps should be consider when assessing patentability of product-by-process claims over the prior art; however, burden of proof is placed upon Applicant to show that the product (i.e., the encapsulated composition) can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Modified Rejection
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) 1-4, 7-11, 14-15, 18 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Das et al (US 2015/0374594 A1) in view of Lei et al (WO 2015/023961 A1), Ouali et al (US 2013/0295149 A1), and Jones et al (US 2018/0116918 A1).
The product-by-process claim interpretation for claim 18 applies here.
Regarding claims 1, 18, 20 and 21, Das teaches a consumer product containing a hair care composition comprising a core-shell microcapsule containing a core comprising a benefit agent such as a fragrance, and a shell surrounding the core, wherein the shell comprises a polyurea formed from a reaction product of polyisocyanate with at least 2 reacting groups and a polyamine, wherein the polyisocyanate include a trifunctional isocyanate such as 1,3-bis(isocyanatomethyl)benzene (Abstract; [0005]-[0022]; Example 2, Table 2 and Example 4; claims 1-5 and 8-9). Das teaches the weight of the trifunctional isocyanate 2.28 wt% and the weight of the fragrance core is 20.3 wt% (Example 2, Table 2), which is a weight ratio of 0.11, thereby reads on the claimed weight ratio of between 0.09 and 0.30. Das teaches the shell further contains a cationic polymer such as chitosan that is attached thereon ([0005]-[0022]; Example 2, Table 2; claims 1-5 and 8-9). Das teaches the chitosan is attached to the polyurea shell (Abstract; [0005], [0017]-[0019], [0021]-[0022]; claims 1-3 and 8), thereby meets the claimed “the chitosan is deposited on an outer surface of the shell surrounding the core and/or the chitosan is entrapped in the shell surrounding the core.”
Das further teaches weight amount of fragrance is in the range from 0.1 to 10 wt% and the weight amount of chitosan is in the range from 0.001 to 0.1 wt% ([0011], [0016] and [0020]), which overlaps the claimed weight ratio between chitosan the core is between 0.006 and 0.007. Thus, it is noted that 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 weight ratio of chitosan to core in the encapsulated composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
However, Das does not teach the trifunctional isocyanate is an adduct of an aliphatic triol with an araliphatic diisocyanate; the composition additionally comprises free chitosan; and the average molecular weight of the chitosan of claim 1.
Regarding the trifunctional isocyanate is an adduct of an aliphatic triol with an araliphatic diisocyanate of claim 1, Lei teaches a polyurea capsule composition comprising core-shell microcapsules comprising a core containing a fragrance and a shell surround the core, wherein the shell comprises polyurea formed from a reaction product of a polyisocyanate and a polyamine crosslinking agent such as polyethyelenimine, wherein the polyisocyanate is a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) (Abstract; [0011]-[0024], [0029], [0041]-[0083], [0085]-[0090], [00115]-[00116], [00127]-[00137]; Examples 1-3, 5-17 and 19-27; claims 5-11, 14-23 and 42-44). Lei teaches the polyurea capsule is be coated with a cationic polymer such as chitosan to improve deposition of the capsules to the surfaces such as hair ([0011], [0026] and [00115]-[001116]). Lei teaches a consumer product such as a hair-care product containing the polyurea capsules ([0029], [0042], [00115]-[00116], [00133], [00135]; claim 44).
It would have been obvious one of ordinary skill in the art to incorporate a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) as the polyisocyanate component that used to react with polyamine to form the polyurea of Das, and produce the claimed invention. One of ordinary skill in the art would have been motivated do so because Das and Lei are commonly drawn to consumer products such as hair-care product containing polyurea capsules, and Lei provided the guidance to do so by teaching that aside from the polyisocyanates disclosed in Das, an adduct of an aliphatic triol with an araliphatic diisocyanate such as a trimethylol propane-adduct of xylylene diisocyanate is also a suitable polyisocyanate that is used for reacting with polyamine to form polyurea, and such use of an adduct of an aliphatic triol with an araliphatic diisocyanate such as a trimethylol propane-adduct of xylylene diisocyanate as the polyisocyanate, provide a resultant polyurea capsule that has robust mechanical stability (Lei: [0047]-[0056], [0064], [00164], [00212], [00236], [00269], [00286]; Example 26).One of ordinary skill in the art would have reasonable expectation of success in incorporating a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) as the polyisocyanate that used to react with polyamine to form the polyurea of Das because Das indicated that any polyisocyanate that has isocyanates with at least 2 reacting groups are useful polyisocyanate to be used as a reactant with polyamine to form the polyurea of the polyurea shell (Das: [0009]), where Lei also disclosed that aside from the polyisocyanates disclosed in Das, an adduct of an aliphatic triol with an araliphatic diisocyanate such as a trimethylol propane-adduct of xylylene diisocyanate is also a suitable polyisocyanate that is used for reacting with polyamine to form polyurea (Lei: [0020], [0047]-[0056]; Examples 1-3, 5-17 and 19-27; claim 18). As such, an ordinary artisan provided the guidance from Das and Lei seeking to provide a polyurea capsule with robust mechanical stability, would have looked to using a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) as the polyisocyanate component of the polyurea of Das, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding the composition additionally comprises free chitosan of claim 1, Ouali teaches a composition in the form of a hair care product comprising a core-shell microcapsule, wherein the core-shell microcapsule comprises a core such as a fragrance and a shell surrounding the core, wherein the shell comprises polyurea formed from a reaction product of a polyisocyanate and a polyamine (Abstract; [0008]-[0063]). Ouali teaches the composition further contains cationic polymer such as chitosan to further improve the deposition of the capsules on the substrate to which they are applied ([0048]). It is noted that the chitosan that is included in the composition of Ouali meets the claimed structure of “free chitosan” and thus, the chitosan of Ouali being structurally the same as the chitosan to which claim 1 recites as free chitosan would be inherently/intended result from “adsorption/desorption-equilibria of chitosan” as claimed because structure dictates functions/results, regarding any functions/results alleged claimed.
It would have been obvious to one of ordinary skill in the art to include a chitosan in the composition containing the polyurea capsule of Das in view of Lei, and produce the claimed invention. One of ordinary skill in the art would have been motivated do so because Ouali provided the guidance to do so by teaching that a deposition aid such as chitosan can be additionally added to a hair care composition containing polyurea capsules such as those of Das, and such addition of chitosan to the composition further improve the deposition of the capsules on the substrate to which they are applied. Thus, an ordinary artisan seeking to further improved or maximize the deposition of the polyurea microcapsules of Das in view of Lei onto the substrate to which they are applied, would have looked to further including chitosan to the hair care composition of Das in view of Lei, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding the average molecular weight of the chitosan of claim 1, Jones teaches a consumer product containing a hair care composition comprising a core-shell microcapsule containing a core comprising a benefit agent such as a fragrance, and a shell surrounding the core, wherein the shell comprises a polyurea (Abstract; [0001], [0005]-[0034], [0036]-[0063] and [0065]). Jones teaches the shell further contains a cationic polymer such as chitosan that is attached thereon ([0007] and [0043]-[0044]). Jones teaches the chitosan has an average molecular weight from 30,000 to 1,000,000 g/mol and a deacetylation degree of at least 65% ([0032]).
It would have been obvious to one of ordinary skill in the art to incorporate a chitosan having an average molecular weight from 30,000 to 1,000,000 g/mol and a deacetylation degree of at least 65%, as the chitosan that is attached to the shell of the capsule of Das in view of Lei, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Jones provided the guidance to do so by teaching that chitosan having an average molecular weight from 30,000 to 1,000,000 g/mol and a deacetylation degree of at least 65% is suitable for use as the cationic polymer that is attached to the shell of a microcapsule, and such use of said chitosan provides a resultant microcapsule with good deposition onto tip hair (Jones: [0001] and [0019]). Thus, an ordinary artisan seeking to improve deposition of microcapsule onto hair, would have looked to incorporating a chitosan having an average molecular weight from 30,000 to 1,000,000 g/mol and a deacetylation degree of at least 65%, as the chitosan that is attached to the shell of the capsule of Das in view of Lei, as that is also the intended substrate (hair) to which the capsule composition of Das is applied on, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claims 2-4, as discussed above, Lei teaches and provides guidance for using a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) as the polyisocyanate. It is noted that a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) is an adduct of 2-ethylpropane-1,2,3-triol and 1,3-bis(isocyanatomethyl)benzene, as evidenced by Bay et al (US 2023/0399590 A1 --- see paragraph [0322]).
Regarding claim 7, Das teaches the polyurea is form by reacting the polyisocyanate with a polyamine and in the presence of chitosan such that the chitosan is covalently attached to the formed polyurea shell ([0005], [0017]-[0019], [0021]-[0022]; claims 1-3 and 8).
Regarding claims 8 and 9, Ouali teaches a composition in the form of a hair care product comprising a core-shell microcapsule, wherein the core-shell microcapsule comprises a core such as a fragrance and a shell surrounding the core, wherein the shell comprises polyurea formed from a reaction product of a polyisocyanate and a polyamine (Abstract; [0008]-[0063]). Ouali teaches the composition further contains cationic polymer such as chitosan to further improve the deposition of the capsules on the substrate to which they are applied ([0048]). Ouali teaches the suitable polyisocyanate include a mixture of an aliphatic polyisocyanate and an aromatic polyisocyanate such as a mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate (Ouali: [0028]-[0032]; Example 6). It is noted that the biuret of hexamethylene diisocyanate meets the claimed water-dispersible polyisocyanate based on hexamethylene diisocyanate. It would have been obvious one of ordinary skill in the art to incorporate a mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate as the polyisocyanate component that used to react with polyamine to form the polyurea of Das, and produce the claimed invention. One of ordinary skill in the art would have been motivated do so because Das, Lei, Jones, and Ouali are commonly drawn to consumer products such as hair-care product containing polyurea capsules, and Ouali provided the guidance to do so by teaching that aside from the polyisocyanates disclosed in Das and Lei, a mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate is also suitable as the polyisocyanate that is used for reacting with polyamine to form polyurea, and such use of the mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate as the polyisocyanate, provide a resultant polyurea capsule that has not only improved stability, but also a polyurea capsule that exhibit a prolonged slow release of fragrances (Ouali: [0028]-[0032] and [0058]). One of ordinary skill in the art would have reasonable expectation of success in incorporating a mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate as the polyisocyanate that used to react with polyamine to form the polyurea of Das because Das indicated that any polyisocyanate that has isocyanates with at least 2 reacting groups are useful polyisocyanate to be used as a reactant with polyamine to form the polyurea of the polyurea shell (Das: [0009]), where Ouali teaches that aside from the polyisocyanates disclosed in Das and Lei, a mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate is also suitable as the polyisocyanate that is used for reacting with polyamine to form polyurea (Ouali: [0028]-[0032]; Example 6). As such, an ordinary artisan provided the guidance from Das, Lei, Jones, and Ouali seeking to provide a polyurea capsule has improved stability and that also exhibits a prolonged slow release of fragrances, would have looked to using a mixture of a biuret of hexamethylene diisocyanate with a trimethylol propane-adduct of xylylene diisocyanate as the polyisocyanate component of the polyurea of Das, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 10, as discussed above, Lei teaches and provide guidance for using polyethyleneimine as the polyamine crosslinking agent that is reacted with the polyisocyanate to form polyurea capsule.
Regarding claim 11, Das teaches the shell further contains a cationic polymer ([0005], [0017]-[0019], [0021]-[0022]; claims 1-3).
Regarding claim 14, as discussed above, Jones teaches the chitosan has an average molecular weight from 30,000 to 1,000,000 g/mol and a deacetylation degree of at least 65%.
Regarding claim 15, as discussed above, Das teaches the core material is a fragrance.
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 Das does not teach or suggest claim 1 and that neither Lei Ouali, nor Jones cure the deficiencies of Das, as Lei, Ouali, and Jones do not teach or suggest all the limitations of claim 1. Applicant alleges that the instant invention solve the problem of providing encapsulated compositions that show improved deposition and adherence on hair after drying the same with a hair dryer and such technical problem was not address in Das, and that it was the instant invention that provided the solution to the technical problem. Thus, Applicant alleges that the Examiner’s obviousness analysis based on Das in view of Lei, Ouali, and Jones was based on improper hindsight. (Remarks, pages 6-16).
In response, the Examiner disagrees. Contrary to Applicant’s allegation, aside from the weight ratio of between trifunctional isocyanate and core, Das also teach the weight ratio between chitosan and core (see 103 rejection, pages 6-7 of this office action).
The pending 103 rejection is based on the combined teachings of Das, Lei, Ouali, and Jones.
As discussed in the 103 rejection, Das teaches the weight of the trifunctional isocyanate 2.28 wt% and the weight of the fragrance core is 20.3 wt% (Example 2, Table 2), which is a weight ratio of 0.11, thereby reads on the claimed weight ratio of between 0.09 and 0.30. Das also teaches the weight amount of fragrance is in the range from 0.1 to 10 wt% and the weight amount of chitosan is in the range from 0.001 to 0.1 wt% ([0011], [0016] and [0020]), which contrary to Applicant’s allegation, do overlaps the claimed weight ratio between chitosan the core is between 0.006 and 0.007. Thus, 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. To date, Applicant has not shown criticality of the claimed invention in achieving unexpected superior results with respect to improved deposition and adherence on hair, and also improved stability of the microcapsules when compared to the closest prior art. In this instant case, the closest prior art for comparison is Das. Applicant’s has not shown objective evidence providing comparative data to the microcapsules of Das. Applicant is noted "[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990). Furthermore, MPEP §716.02(e) states that [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).
Applicant is noted that Lei was used for providing guidance and motivation for using a trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) as the polyisocyanate component that used to react with polyamine to form the polyurea of Das (see 103 rejection, pages 7-9of this office action). The trimethylol propane-adduct of xylylene diisocyanate (Takenate D-110N) as taught in Lei meets the claimed trifunctional isocyanate. Accordingly, Lei is properly combined with Das, as they are both drawn to the same field of polyurea capsules.
Applicant is noted that Ouali was used for teaching and providing guidance for including a chitosan in the composition containing the polyurea capsule of Das in view of Lei. Ouali established that a deposition aid such as chitosan is additionally added to a hair care composition containing polyurea capsules to further improve the deposition of the capsules on the substrate to which they are applied. (see 103 rejection, pages 9-10 of this office action), which appears to be the same advantage of improved deposition achieved by Applicant’s claimed invention. Furthermore, as discussed above in the pending 103 rejection, the chitosan that is included in the composition of Ouali meets the claimed structure of “free chitosan” and thus, the chitosan of Ouali being structurally the same as the chitosan to which claim 1 recites as free chitosan would be inherently/intended result from “adsorption/desorption-equilibria of chitosan” as claimed because structure dictates functions/results, regarding any functions/results alleged claimed. Additionally, it is noted that Das and Lei are also drawn to the same objective for using chitosan, which is to improve capsules deposition (Das: [0005]-[0022]; Example 2, Table 2; claims 1-5 and 8-9; Lei: [0011] and [00115]-[00116]).
Applicant is noted that Jones was use for providing guidance and motivation for incorporating a chitosan having an average molecular weight from 30,000 to 1,000,000 g/mol as the chitosan that is attached to the shell of the capsule of Das in view of Lei, said chitosan provide a resultant microcapsule with good deposition onto tip of hair (see 103 rejection, pages 10-11of this office action), which appears to be the same advantage of improved deposition achieved by Applicant’s claimed invention. Thus, Jones is properly combined with Das and Lei to render obvious Applicant’s claimed invention because Jones is indeed relevant to polyurea capsules, as Jones teaches polyurea as a suitable component of the shell (Jones: [0036]), as well as, teaches particularly the use of chitosan on the outer surface of the capsule to improved deposition of the capsules onto hair (Jones: Abstract; [0001], [0005]-[0034], [0036]-[0063] and [0065]), which is the same objective for using chitosan in Das and Lei, to improve capsules deposition (Das: [0005]-[0022]; Example 2, Table 2; claims 1-5 and 8-9; Lei: [0011] and [00115]-[00116]).
As such, contrary to Applicant’s allegations, Examiner’s obviousness analysis based on Das in view of Lei, Ouali, and Jones was not based on improper hindsight because Lei, Ouali, and Jones are properly combined with Das to render obvious Applicant’s claimed invention, as Das, Lei, Ouali, and Jones are commonly drawn to the same field of polyurea capsules, as well as, the same objective for using chitosan, which was to improve capsules deposition.
Accordingly, for the reasons discussed above, Das, Lei, Ouali, and Jones are properly combined to render obvious Applicant’s encapsulated composition of independent claim 1.
Applicant argues unexpected results by alleging that the use of the claimed adduct of an aliphatic triol with an araliphatic diisocyanate with the claimed weight ratios provided improved deposition and adherence on hair, and also improved stability of the microcapsules. Applicant provided comparative data shown in Tables 1-4 on pages 22-28 of the Specification. Applicant alleges that said comparative data showed unexpected results over Das and when using Desmodur W as the isocyanate or when using weight ratios outside the claimed weight ratios. From the results of the comparative data, Applicant alleges that “there is no teaching in Das to employ an adduct of an aliphatic triol which is an adduct of an aliphatic triol with at least one araliphatic diisocyanate instead of IPDI as expressly required of Das, let alone in the expectation of solving the problem of providing encapsulated compositions that show improved deposition and adherence on hair after drying the same with a hair dryer.” Applicant further alleges “there is no teaching or suggestion in Lei that the use of Takenate D110 results in any improvement in the deposition and adherence on hair compared to any of the other isocyanates employed therein.” Applicant further alleges “there is no recognition of the claimed isocyanate and perhaps moreso there is no teaching or suggestion Lei, or Lei considered with Das, that employing chitosan such that the ratio chitosan/core falls within the required range of 0.006 to 0.007 would lead to improved deposition and adherence on hair after drying the same with a hair dryer.” (Remarks, pages 7-10).
In response, the Examiner disagrees. Applicant’s alleged evidence of unexpected results as shown in the Specification, were previously considered, but remained found insufficient to the obviate the pending 103 rejection over Das, Lei, Ouali, and Jones for the reasons discussed below.
First, Applicant’s alleged evidence of unexpected results shown in Table 1-4, particularly to Examples 1.1, 1.4, and 1.5 of the specification are drawn to using Takenate D110N (an adduct of 2-ethylpropane-1,2,3-triol and 1,3-bis(isocyanatomethyl)benzene) as the trifunctional isocyanate and a Shrimp chitosan having a molecular weight of 200,000 g/mol, Mushroom chitosan having a molecular weight of 85,000 g/mol, or Mushroom chitosan having a molecular weight of 15,000 g/mol as the chitosan. However, claim 1 is drawn to broadly “an adduct of an aliphatic triol with at least one araliphatic diisocyanate” as the trifunctional isocyanate. Thus, claim 1 remains not adequately commensurate in scope with the microcapsules from Examples 1.1, 1.4, and 1.5 used for showing the alleged unexpected results. It is noted 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." See MPEP §716.02(d).
Furthermore, as previously discussed, in the alleged evidence of unexpected results shown in the specification, Applicant has shown comparative data to Desmodur W as the isocyanate with isocyanate to perfume ratio of 0.13 and chitosan to perfume ratio of 0.0067 (comparative example 2.2) showing that comparative example 2.2 was not stable over storage, as well as, shown comparative data to Takenate D110N with isocyanate to perfume ratio of 0.08 (outside the claimed weight ratio) and chitosan to perfume ratio of 0.0067 (comparative example 2.4) as having a lower perfume impact score than Examples 1.1, 1.4, and 1.5. However, said comparative data are not sufficient to obviate the 103 rejection over Das, Lei, Ouali, and Jones. This is because as discussed above, Applicant has not shown criticality of the claimed invention in achieving unexpected superior results with respect to improved deposition and adherence on hair, and also improved stability of the microcapsules when compared to the closest prior art. In this instant case, the closest prior art for comparison is Das. Applicant’s has not shown objective evidence providing comparative data to the microcapsules of Das. Applicant is noted "[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990). Furthermore, MPEP §716.02(e) states that [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).
Lastly, Applicant’s alleged unexpected results drawn to improved deposition and stability are also not persuasive and insufficient to obviate the pending 103 rejection over Das, Lei, Ouali, and Jones because the closest prior art of Das also teaches the polyurea microcapsule as having improved deposition (Das: [0005]-[0022]; Example 2, Table 2 and Example 4). Furthermore, it is noted that the cited prior art in view of Jones, also established that it is well-known that the use of chitosan on the outer surface of the capsule to improved deposition of the capsules onto hair (Jones: Abstract; [0001], [0005]-[0034], [0036]-[0063] and [0065]). Thus, 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).
Applicant argues “the range for the ratio “cationic biopolymer/ hydrophobic personal care active” that can be calculated from the general disclosure of Das is from 0.001 to 1, which is extremely broad. However with regard to any actual ‘teaching’ of this ratio, the only examples in Das where chitosan is present (Das’ batch 2 and batch 3) disclose a chitosan/core ratio of 0.0016. This value is significantly lower than the value required by claim 1.” Thus, Applicant alleges that “Das does not disclose that “the weight ratio between the chitosan and/or moieties of the polyurea resin, which are derived from the chitosan, and the core is between 0.006 and 0.007””. (Remarks, pages 7-8).
In response, the Examiner disagrees. As discussed in the 103 rejection, Das teaches weight amount of fragrance is in the range from 0.1 to 10 wt% and the weight amount of chitosan is in the range from 0.001 to 0.1 wt% ([0011], [0016] and [0020]), which overlaps the claimed weight ratio between chitosan and the core is between 0.006 and 0.007. While range of the weight ratio between chitosan and the core of Das may be broad, it remains to overlap the claimed weight ratio range, and thus, the Courts have clear 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 weight ratio of chitosan to core in the encapsulated composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Applicant alleged that criticality of the claimed weight ratio of between 0.006 and 0.007 for chitosan and core is found in the specifications on pages 12,and 27-30, as well as, the Examples. However, page 12 of the specification is merely a general disclosure of the weight ratio, but provide no comparative evidence showing criticality of the claimed weight ratio of between 0.006 and 0.007 in achieving a result that is unexpected or unappreciated by the cited prior arts, particularly, to Das. With respect to the Examples from the specification, it is noted that the only example that is pertinent to the claimed weight ratio of 0.006 and 0.007 is Example 2 and Table 2. However, Table 2 showed that Example 2.2 having Desmodur W (trifunctional isocyanate) to perfume ratio of 0.13 with chitosan to perfume ratio of 0.0067 was not stable over storage with 100% perfume leakage in shampoo base. While Example 2.4 contains a chitosan to perfume ratio of 0.0067, which is within the scope of the claimed weight ratio of between 0.006 and 0.007, yet the Takenate D110N (trifunctional isocyanate) to perfume weight ratio was 0.08, which is outside the claimed range of between 0.09 and 0.30 for the claimed weight ratio of moieties of polyurea resin to core. Thus, Example 2 and Table 2 while relates to some extent to the claimed weight ratio of 0.006 and 0.007, this Example 2 and Table 2 did not show any criticality of the claimed weight ratio of between 0.006 and 0.007 in achieving a result that is unexpected or unappreciated when compared to the cited prior arts, particularly, to Das. Applicant has not shown by objective evidence comparative data showing that the microcapsule of Das was not stable over storage or any result that is unexpected or unappreciated with respect to the claimed weight ratio of between 0.006 and 0.007 when compared to Das.
Applicant argues by alleging that Lei while teaching an adduct of an aliphatic triol with an araliphatic diisocyanate (Takenate D110N), Lei does not teach the claimed weight ratio of chitosan/core. Applicant alleges that “there is no teaching or suggestion in Lei that the use of Takenate D110 results in any improvement in the deposition and adherence on hair after drying the same with a hair dryer compared to any of the other isocyanates employed therein. All the exemplified isocyanates are given the same preference, as can be seen from the examples therein.” Applicant further alleges that “there is also no teaching or suggestion in Lei that chitosan is preferred over other cationic polymers that can be used to coat the polyurea ((0116]).” Applicant further alleges that Lei does not “disclose in any manner “free” chitosan in the dispersing medium.” Thus, Applicant alleges “it is the logical conclusion that no skilled artisan would have any motivation, or could identify the specific parameters now recited in claim 1, and in the depending claims, with any expectation that such would result in providing microcapsules with improved deposition and adherence on hair, and also improved stability of these microcapsules as well.” (Remarks, pages 11-14).
In response, the Examiner disagrees. As discussed above, the claimed weight ratio of chitosan/core was taught and render obvious by Das. As discussed above, Das teaches the weight of the trifunctional isocyanate 2.28 wt% and the weight of the fragrance core is 20.3 wt% (Example 2, Table 2), which is a weight ratio of 0.11, thereby reads on the claimed weight ratio of between 0.09 and 0.30. Das also teaches the weight amount of fragrance is in the range from 0.1 to 10 wt% and the weight amount of chitosan is in the range from 0.001 to 0.1 wt% ([0011], [0016] and [0020]), which contrary to Applicant’s allegation, do overlaps the claimed weight ratio between chitosan the core is between 0.006 and 0.007. Thus, as discussed in the 103 rejection, 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.
As discussed above, in the alleged evidence of unexpected results shown in the specification, Applicant has shown comparative data to Desmodur W as the isocyanate with isocyanate to perfume ratio of 0.13 and chitosan to perfume ratio of 0.0067 (comparative example 2.2) showing that comparative example 2.2 was not stable over storage, as well as, shown comparative data to Takenate D110N with isocyanate to perfume ratio of 0.08 (outside the claimed weight ratio) and chitosan to perfume ratio of 0.0067 (comparative example 2.4) as having a lower perfume impact score than Examples 1.1, 1.4, and 1.5. However, said comparative data are not sufficient to obviate the 103 rejection over Das, Lei, and Ouali. This is because as discussed above, Applicant has not shown criticality of the claimed invention in achieving unexpected superior results with respect to improved deposition and adherence on hair, and also improved stability of the microcapsules when compared to the closest prior art. In this instant case, the closest prior art for comparison is Das. Applicant’s has not shown objective evidence providing comparative data to the microcapsules of Das. Applicant is noted "[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990). Furthermore, MPEP §716.02(e) states that [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).
Furthermore, Applicant alleges that “Lei does not “disclose in any manner “free” chitosan in the dispersing medium” However, Lei was not used for teaching the claimed free chitosan. As discussed in the 103 rejection, the free chitosan was taught and render obvious by the teachings from Ouali. See 103 rejection, pages 8-9 of this office action.
Applicant argues:
“Chitosan is disclosed in Ouali.. but only as one of many other cationic polymers suitable in Ouali's compositions. But according to Ouali, its cationic polymers are only brought into contact with its capsules, after the capsules have already been formed, at the stage of making Ouali's consumer product. (c.f., Ouali, para. [0061]). Such is in contradistinction with applicant's disclosure at applicant's specification, namely at pg. 5, lines 20 - 22, which states that the free chitosan present in the dispersing medium is due to the absorption/desorption equilibria of chitosan. Hence, from Ouali there is no motivation to combine it with anything in Das and/or Lei, with any reasonable expectation of success' that such a combination would produce polyurea shells, which have improved stability, and exhibit improved deposition and/or adherence upon hair after a drying treatment with a hair dryer.” (Remarks, page 15).
In response, the Examiner disagrees. Applicant alleges that per the specification, free chitosan present in the dispersing medium is due to the absorption/desorption equilibria of chitosan, which is contradistinction from the cationic polymer such as chitosan that is only brought into contact with the capsule after it has formed. However, it is noted the claim 1 is not drawn to free chitosan in the dispersing medium, but rather claim 1 recites composition additionally comprising free chitosan. Thus, it is noted that the features upon which applicant relies (i.e., free chitosan in the dispersion medium) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Nevertheless, it is noted that the teaching from Ouali drawn to the composition further containing cationic polymer such as chitosan to further improve the deposition of the capsules on the substrate to which they are applied (Ouali: [0048]), meets the claimed composition additionally comprising free chitosan, as well as, as meets the alleged “free chitosan in the dispersing medium.” This is because cationic polymer such as chitosan is a separate component from the capsules that is also part of the liquid composition of paragraph [0048] of Ouali. Thus, it appears that the cationic polymer such as chitosan is in a “dispersing medium” as the “liquid composition” would be a dispersing medium for the capsules of Ouali. As such, as discussed in the 103 rejection, the chitosan that is included in the composition of Ouali meets the claimed structure of “free chitosan” and thus, the chitosan of Ouali being structurally the same as the chitosan to which claim 1 recites as free chitosan would be inherently/intended result from “adsorption/desorption-equilibria of chitosan” as claimed because as discussed above, the cationic polymer such as chitosan of Ouali is in a “dispersing medium” as the “liquid composition” would be a dispersing medium for the capsules of Ouali, and thereby structure dictates functions/results, regarding any functions/results alleged claimed.
As discussed above, Ouali established that chitosan is a well-known deposition aid that is added to a hair care composition containing polyurea capsules to further improve the deposition of the capsules on the substrate to which they are applied (see 103 rejection, pages 9-10 of this office action), which appears to be the same advantage of improved deposition achieved by Applicant’s claimed invention.
Furthermore, it is noted that Das and Lei are also drawn to the same objective for using chitosan, which is to improve capsules deposition (Das: [0005]-[0022]; Example 2, Table 2; claims 1-5 and 8-9; Lei: [0011] and [00115]-[00116]). Thus, contrary to Applicant’s allegations, Ouali is properly combined with Das and Lei to render obvious Applicant’s claim 1, as Das, Lei, and Ouali are commonly drawn to the same field of polyurea capsules, as well as, the same objective for using chitosan, which was to improve capsules deposition onto surfaces such as hair.
Furthermore, as discussed above, Applicant’s alleged evidence of unexpected results as shown in the Specification, were previously considered, but remained found insufficient to the obviate the pending 103 rejection over Das, Lei, Ouali, and Jones for the reasons discussed below.
First, Applicant’s alleged evidence of unexpected results shown in Table 1-4, particularly to Examples 1.1, 1.4, and 1.5 of the specification are drawn to using Takenate D110N (an adduct of 2-ethylpropane-1,2,3-triol and 1,3-bis(isocyanatomethyl)benzene) as the trifunctional isocyanate and a Shrimp chitosan having a molecular weight of 200,000 g/mol, Mushroom chitosan having a molecular weight of 85,000 g/mol, or Mushroom chitosan having a molecular weight of 15,000 g/mol as the chitosan. However, claim 1 is drawn to broadly “an adduct of an aliphatic triol with at least one araliphatic diisocyanate” as the trifunctional isocyanate. Thus, claim 1 remains not adequately commensurate in scope with the microcapsules from Examples 1.1, 1.4, and 1.5 used for showing the alleged unexpected results. It is noted 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." See MPEP §716.02(d).
Additionally, as discussed above, in the alleged evidence of unexpected results shown in the specification, Applicant has shown comparative data to Desmodur W as the isocyanate with isocyanate to perfume ratio of 0.13 and chitosan to perfume ratio of 0.0067 (comparative example 2.2) showing that comparative example 2.2 was not stable over storage, as well as, shown comparative data to Takenate D110N with isocyanate to perfume ratio of 0.08 (outside the claimed weight ratio) and chitosan to perfume ratio of 0.0067 (comparative example 2.4) as having a lower perfume impact score than Examples 1.1, 1.4, and 1.5. However, said comparative data are not sufficient to obviate the 103 rejection over Das, Lei, Ouali, and Jones. This is because as discussed above, Applicant has not shown criticality of the claimed invention in achieving unexpected superior results with respect to improved deposition and adherence on hair, and also improved stability of the microcapsules when compared to the closest prior art. In this instant case, the closest prior art for comparison is Das. Applicant’s has not shown objective evidence providing comparative data to the microcapsules of Das. Applicant is noted "[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990). Furthermore, MPEP §716.02(e) states that [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).
Lastly, Applicant’s alleged unexpected results drawn to improved deposition and stability are also not persuasive and insufficient to obviate the pending 103 rejection over Das, Lei, Ouali, and Jones because the closest prior art of Das also teaches the polyurea microcapsule as having improved deposition (Das: [0005]-[0022]; Example 2, Table 2 and Example 4). Furthermore, it is noted that the cited prior art in view of Jones, also established that it is well-known that the use of chitosan on the outer surface of the capsule to improved deposition of the capsules onto hair (Jones: Abstract; [0001], [0005]-[0034], [0036]-[0063] and [0065]). Thus, 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 and the preponderance of evidence of record, claims 1-4, 7-11, 14-15, 18 and 20-21 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejection set forth in this office action.
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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