DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
Priority
This application is a 371 of PCT/JP2020/049255 filed 12/28/2020.
This application also claims foreign benefit of JAPAN JP2019-239906 filed 12/27/2019.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Accordingly, claims 15-33 of this instant application are afforded the effective filing date of 12/28/2020.
Status of the Claims
This action is in response to papers filed 12/23/2025 in which claims 1-14 were canceled; and claims 15, 16, 22, and 29 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 15-33 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejections and/or objections not specifically addressed below is hereby withdrawn.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 § 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.
Claim(s) 15-16 and 19-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al (US 2016/0303531 A1) in view of Aboshyan-Sorgho et al (WO 2020/077451 A1; published date: 23 April 2020; filing date: 16 October 2019), and as evidenced by Findenegg et al (Studies in Surface Science and Catalysis, 2001, 132: 1-14).
Regarding claims 15, 16 and 19, Yamazaki teaches a method of producing silica microcapsule which has shell and a core containing an organic compound such as a fragrance material inside the shell, wherein the shell comprises silica, the method comprises emulsifying an aqueous phase containing a cationic surfactant and an oil phase containing the organic compound and tetraalkoxysiliane, to a sol-gel reaction under acidic condition, thereby obtaining a water dispersion containing the silica microcapsule (Abstract; [0007]-[0091], and [0107]-[0108]; Production Example 1). Yamazaki further teaches tetraalkoxysilane is additionally added to the water dispersion containing the silica microcapsules and performing a sol-gel reaction, to form silica microcapsule having a second shell that enclosed the first shell (Abstract; [0016]; 55-59).
While Yamazaki does not expressly teaches the organic compound is a primary alcohol that has 4 or more and 18 or less carbon atoms, it would have been obvious to one of ordinary skill in the art to incorporate a primary alcohol such as geraniol as the fragrance material that is encapsuled in the silica microcapsules of Yamazaki in view of the guidance from Aboshyan-Sorgho.
Aboshyan-Sorgho teaches silica microcapsules having leak proofness and protective effect on entrapped actives such as fragrances against premature leaching during storage period, wherein the fragrance suitable for encapsulation in the silica microcapsule is preferably geraniol ([0025]-[0035]; [0078], [0114], [0162], [0173]-[0175] and [0273]-[0309]).
It would have been obvious to one of ordinary skill in the art to use and incorporate geraniol as the fragrance material in the silica microcapsules of Yamazaki, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Yamazaki and Aboshyan-Sorgho are commonly drawn to silica microcapsules encapsulating a fragrance material, and Aboshyan-Sorgho provides the direct guidance for using incorporate geraniol as the fragrance material in the silica microcapsules, as geraniol is one of the preferred fragrance material suitable for encapsulation in silica microcapsules. One of ordinary skill in the art would have reasonable expectation of success in using use and incorporate geraniol as the fragrance material in the silica microcapsules of Yamazaki because Yamazaki indicated that the organic compound (fragrance material) suitable for encapsulation in the silica microcapsules are organic compounds having a ClogP value of not less than 2 (Yamazaki: [0028]), and geraniol as taught in Aboshyan-Sorgho is within the scope of the organic compound of Aboshyan-Sorgho, as per instant specification, geraniol of Aboshyan-Sorgho has clogP of 3.3 (Specification: [0083] and Table 5).
Regarding claims 20 and 27, Aboshyan-Sorgho teaches and provides guidance for optimizing the amount of geraniol used as the fragrance material to an amount from 5% to 50% by weight ([0078], [00137] and [00139]), which is a range that overlaps the claimed range of “a content of the primary alcohol in the organic compound is 5% to 100% by mass, based on the total mass of the organic compound.” 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 from the claimed parameters, the optimization of the content of primary alcohol in the organic compound 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 claims 21 and 28, as discussed above, Aboshyan-Sorgho teaches geraniol as the fragrance material. It is noted that geraniol meets the claimed organic compound of claim 15 and thus, it would have been reasonably obvious that the oil-water interfacial tension of claim 21 and 28 would be implicit in the geraniol of Aboshyan-Sorgho because as evidenced by Findenegg, the oil-water interfacial tension of geraniol is about 43 mN/m (Findenegg: page 9; Figure 4). Thus, it is noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 22-25 and 29-32, as discussed above, Aboshyan-Sorgho teaches geraniol as the fragrance material, which is a C10 primary alcohol that is fragrance, thereby meeting the claimed primary alcohol of claims 22, 24, 25, 29, 31, and 32. As evidenced by the instant specification, geraniol of Yamazaki has clogP of 3.3, thereby meeting the claimed “the primary alcohol has clogP of 1.0 to 7.0” of claims 23 and 30. It is noted that "Products 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 26 and 33, Yamazaki teaches the microcapsules have an average particle size of 0.5 to 50 µm ([0009], [0015], [0069]), which overlaps the particle size distribution of the silica microcapsules have a median diameter D50 of 1.0 µm to 100 µm. Thus, it would have been obvious to one of ordinary skill in the art to optimize the average particle size so as to arrive a desired D50 particle size distribution. 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 from the claimed parameters, the optimization of median diameter D50 of the silica microcapsules 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).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al (US 2016/0303531 A1) in view of Aboshyan-Sorgho et al (WO 2020/077451 A1; published date: 23 April 2020; filing date: 16 October 2019), as applied to claim 16 above, and further in view of Shimizu et al (US 2013/0156834 A1).
The method of claim16 is discussed above, said discussion being incorporated herein in its entirety.
However, Yamazaki and Aboshyan-Sorgho do not teach the diluting step of claim 17 and the dilution ratio of 18.
Regarding claims 17 and 18, Shimizu teaches a method of treating silica sol-gel microcapsules comprising diluting the silica sol-gel microcapsules with water and then adding SiO2, thereby forming silica microcapsules with improved stability and denser capsule walls and/or microcapsules exhibiting hybrid capsule walls (Abstract; [0001]-[0033]; Example 1). Shimizu teaches the silica sol-gel microcapsules was diluted in 2L of water (Example 1), which is a dilution that fall within the claimed “dilution ratio is 2 times or more and 20 times or less” of claim 18.
It would have been obvious to one of ordinary skill in the art to further treating the silica sol-gel microcapsules of Yamazaki in view of Aboshyan-Sorgho by diluting the silica sol-gel microcapsules with water and then adding SiO2, and produce the claimed invention . One of ordinary skill in the art would have been motivated to do so because Shimizu provided the guidance to do so by teaching that the silica sol-gel microcapsules of Shimizu can be further treated by diluting the microcapsules in 2L water, followed by addition of SiO2 so as to form silica microcapsules with improved stability and denser capsule walls and/or microcapsules exhibiting hybrid capsule walls. Thus, an ordinary artisan seeking to enhance stability of the silica microcapsules, as well as, provide denser capsule walls and/or microcapsules exhibiting hybrid capsule walls, would have looked to treating the silica sol-gel microcapsules of Yamazaki in view of Aboshyan-Sorgho by diluting the silica sol-gel microcapsules with water and then adding SiO2, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 in art the 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 in the Remarks filed 12/23/2025 with respect to claim(s) 15-33 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Declaration under 37 C.F.R. §1.132 from Risa Sawada filed 12/23/2025 is considered, but found insufficient to obviate the new 103 rejections as set forth in the office action because as discussed above in the pending 103 rejections, Aboshyan-Sorgho teaches and provides guidance for encapsulating geraniol in a silica microcapsule of Yamazaki. It is noted that geraniol as taught by Aboshyan-Sorgho meets the claimed structure of “the organic compound is a primary alcohol that has 4 or more and 18 or less carbon atoms” as recited in independent claims 15 and 16.
As a result, for at least the reason discussed above, claims 5-33 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
Modified Rejections
Necessitated by Applicant’s Claim Amendments
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 15-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10046291 in view of Aboshyan-Sorgho et al (WO 2020/077451 A1) and Shimizu et al (US 2013/0156834 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in Patent ‘291 significantly overlap with the subject matter of the instant claims i.e., methods of producing silica microcapsules with substantially the same method steps.
The differences between the methods of the instant claims to the methods of Patent’291 are the methods of the instant claims contains a primary alcohol as part of the organic compound component as recited in instant claim 1, and the diluting step and dilution ratio of instant claims 17 and 18.
It would have been obvious to use a primary alcohol such as geraniol as the organic compound in the claims of the Patent ‘291 in view of the guidance from Aboshyan-Sorgho geraniol ([0025]-[0035]; [0078], [0114], [0162], [0173]-[0175] and [0273]-[0309]).
It would also have been obvious to further dilute the silica sol-gel microcapsules of the claims in the Patent ‘291 with water and then adding SiO2 thereafter so as to form silica microcapsules with denser capsule walls in in view of the guidance from Shimizu (Abstract; [0001]-[0033]; Example 1).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 10046291 in view of Aboshyan-Sorgho and Shimizu.
Claims 15-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18259702 (reference application) in view of Aboshyan-Sorgho et al (WO 2020/077451 A1) and Shimizu et al (US 2013/0156834 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending Application ‘702 significantly overlap with the subject matter of the instant claims i.e., methods of producing silica microcapsules with substantially the same method steps.
The differences between the methods of the instant claims to the methods of copending Application ‘702 are the methods of the instant claims contains a primary alcohol as part of the organic compound component as recited in instant claim 1, forming the second shell as recited in instant claim 16, and the diluting step and dilution ratio of instant claims 17 and 18.
It would have been obvious to use a primary alcohol such as geraniol as the organic compound, as well as, forming a second shell on the silica microcapsule in the claims of copending Application ‘702 in view of the guidance from Aboshyan-Sorgho geraniol ([0025]-[0035]; [0078], [0114], [0162], [0173]-[0175] and [0273]-[0309]).
It would also have been obvious to further dilute the silica sol-gel microcapsules of the claims in the copending Application ‘702 with water and then adding SiO2 thereafter so as to form silica microcapsules with denser capsule walls in in view of the guidance from Shimizu (Abstract; [0001]-[0033]; Example 1).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18259702 in view of Aboshyan-Sorgho and Shimizu.
This is a provisional nonstatutory double patenting rejection.
Claims 15-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18259227 (reference application) in view of Aboshyan-Sorgho et al (WO 2020/077451 A1) and Shimizu et al (US 2013/0156834 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because while the instant claims are drawn to methods of producing silica microcapsule, and the claims in copending Application ‘702 are drawn to silica microcapsule and methods of producing the silica microcapsule, both set of claims significantly overlap with the subject matter of the instant claims i.e., methods of producing silica microcapsules with substantially the same method steps.
The differences between the methods of the instant claims to the methods of copending Application ‘227 are the methods of the instant claims contains a primary alcohol as part of the organic compound component as recited in instant claim 1, forming the second shell as recited in instant claim 16, and the diluting step and dilution ratio of instant claims 17 and 18.
It would have been obvious to use a primary alcohol such as geraniol as the organic compound, as well as, forming a second shell on the silica microcapsule in the claims of copending Application ‘227 in view of the guidance from Aboshyan-Sorgho geraniol ([0025]-[0035]; [0078], [0114], [0162], [0173]-[0175] and [0273]-[0309]).
It would also have been obvious to further dilute the silica sol-gel microcapsules of the claims in the copending Application ‘227 with water and then adding SiO2 thereafter so as to form silica microcapsules with denser capsule walls in in view of the guidance from Shimizu (Abstract; [0001]-[0033]; Example 1).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18259227 in view of Aboshyan-Sorgho and Shimizu.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 12/23/2025 with respect to the double patenting rejections (see page 11, last paragraph of the Remarks filed 12/23/2025) have been fully considered but they are not persuasive and moot in view of the modified double patenting rejections as set forth in this office action.
Accordingly, all the double patenting rejections in this office action are maintained for the reason of record, and pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613