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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/13/2026 has been entered.
Status of Claims
Amendments filed on 01/13/2026 is acknowledged.
Claims 1 and 21 are amended.
Claims 11 and 19 remain cancelled. Claim 15 is now cancelled. Claim 22 is new.
Claims 1-10, 12-14, 16-18, and 20-22 are pending and being examined on the merits herein.
Priority
This instant application 17/898304, filed on 08/29/2022, is a CON of PCT/US2021/020214, filed on 03/01/2021, which claims benefit of 62/982,471, filed on 02/27/2020; and claims domestic benefit of 62/706,606 and 62/706,607 both filed on 08/28/2020.
Claim Objections
Claim 1 recites “betaine; and saccharide isomerate; and “. It is recommended to remove the word “and” leading “saccharide isomerate” and relocate “saccharide isomerate” after potato starch, in order to make the claim language more readable.
Claim Interpretation
Claim 1 phrase “disposed about at least a portion of said core particle” is interpreted as “intended use” or “process of making” of the coating, because it does not structurally contribute to the composition.
The term “about” in instant claims is interpreted as having its ordinary and customary meaning to a POSITA as "approximately" (see MPEP 2111.01 IV A), i.e. in general, within a range of plus or minus 10%, which interpretation is consistent with the instant specification usage of the term.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-10, 12-14, 17-18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Graefe (DE10128799, 01/16/2003, in PTO record of 3/20/2025) in view of Traynor et al. (US20170216165, 08/03/2017).
Graefe teaches a cosmetic composition for cleansing use in forms such as shampoos, conditioners, and liquid soaps (e.g., Abstract).
For claims 1, 10, 13 and 21, Graefe presents the formulation (e.g., Abstract; 0006) comprising (in wt.%):
(a) at least one anionic surfactant (2-60) (overlapping to anionic surfactant ranges 5-30 wt.% in instant claims 10, from about 10-15 wt. % in instant claim 21);
(b) at least one nonionic surfactant (0.5-30) (e.g., chitosan derivatives, 0012, 0031, Claim 16));
(c) at least one amphoteric surfactant (0.25-20) (such as cocamidopropyl betaine (0011)) (overlapping to about 5-30 wt.% in instant claim 13, from about 8.5-12 wt.% in instant claim 21);
(d) at least one hair-conditioning polymer (0.025-10);
(e) copolymers (0.01-15);
(f) modified starch polysaccharide derivatives (0.01-10) with ester and/or ether units and formed by oxidative, acidic or enzymatic (alpha-amylose) degradation (optionally together with hydroxypropylation) from cereal or tuber starches such as those from potatoes, maize, rice or tapioca/manioc;
(g) at least one thickener (0.05-5); and
(h) additives.
The composition above from Graefe (e.g., Abstract; [0006]) is free of talc, Graefe also indicates that other additives such as thickener (g) including guar gum, celluloses (known as polysaccharide species), chitosan can be included in the formulation (e.g., [0031], Claim 16). Thus, Graefe teaches cleansing composition comprising tapioca starch, potato starch, at least one anionic surfactant, at least one amphoteric surfactant such as cocamidopropyl betaine, other polysaccharide species such as chitosan, guar gum, etc., corresponding to instant claims 1 and 21 ingredients.
For Claims 2-3 and 21, Graefe indicates the effect of modified starch products such as potatoes and tapioca can be increased in combination with other polymers in order to improve specific properties in different formulations and applications (0029), and modified polysaccharide derivatives such as potatoes and tapioca, meet requirements for the cosmetic cleansing product including, good foaming behavior, high foam volume, mild reaction on the hair and skin, and toxicological and environmental toxicological safety (0005-0006). The relative proportion of starch out of three components of (a) anionic surfactant, (c) amphoteric surfactant, and (f) starch, corresponding to core particles in instant claims, is higher than the shown wt. % out of the entire composition in Graefe. The maximum relative amount of starch out of these three components result from the option when the other two components (a) and (c) are at minimum amounts in the composition, 2 % and 0.25%, respectively. Adding their amounts with (f) starch original wt. % (0.01-10%) results in the total weight of these three between (2+0.25+0.01)=2.26% to (2+0.25+10)=12.25%. That leads to starch relative proportion among the three ingredients at a range (0.01/2.26 to 10/12.25)= (0.4-81.6) wt.% (overlapping with from about 15-50 wt.% in instant claims 2 and 3, about 30 wt.% in instant claim 21).
For Claims 4 and 6-8, Graefe specifies that anionic surfactants in the composition can include sodium cocoyl sarcosinate, sodium lauroyl sarcosinate, sodium cocoyl isethionate (Claim 10; 0009).
For Claim 12, Graefe teaches that suitable amphoteric surfactants in the composition are, for example, betaines: cocamidopropyl betaines or lauryl betaines, glycinates such as occoamphoglycinates, sodium cocoamphoacetates and diacetates and propionates such as, for example, cocoamphopro-pionates. disodium cocoamphodiacetate, coco betaines (0011).
For Claim 14, Graefe indicates that the water content of the hair and body cleansing agent in the composition is preferably between 10 and 90 percent by weight (0034) (overlapping with from about 5-18 wt.% in instant claim 14).
For Claim 17, Graefe teaches that cationic polymers including guar hydroxypropyltrimonium chloride (representing a specific polysaccharide polymer guar) have proven particularly effective for film formation (0003). Graefe presents (g) thickener in the composition can be guar gum (0031, Claim 16), and (h) additive in the composition can include non-ionic hair conditioning polymer chitosan (0012, 0031, Claim 16). If considering both guar and chitosan polysaccharide amounts, as representatives of thickener (g) and additive (h) respectively in Graefe’s composition, the total amount of polysaccharides will be at least same as thickener’s amount 0.05-5% (overlapping with from about 3-15 wt.% in instant claim 17), since (h) additive amount in Graefe is not disclosed and not added into the total herein.
For Claim 18, Graefe further lists preferred hair conditioning polymers for the composition are the proven quaternary compounds including polyquatemium-2, -10, -11, -28, -47, and others (0014).
For Claim 20, Graefe states that the composition contains a rinse-off product, such as shampoo, conditioner, shower gel, bath product, liquid soap or detergent or a leave-on product such as conditioner, cream, or lotion (Claim 24). Graefe points out the object is to provide hair and body cleaning agents which, in addition to the required cleaning effect, leave behind as pronounced a care effect as a result of moisture retention and reduction of the skin and hair roughness after use, have a low skin irritant effect and at the same time do not show any or as little losses as possible in their other desired properties (cleaning capacity, foaming power, viscosity behavior, toxicological acceptability, etc.) (0025). It is obvious that Graefe teaches the process for cleaning hair or skin comprising the step of applying the composition to hair or skin.
Even though Graefe teaches that a polysaccharide polymer guar can be used in the composition and is proven particularly effective for film formation (0003) as discussed above, Graefe does not explicitly teach an encapsulated composition with a coating comprising polysaccharide as recited in instant claims 1 and 21. Graefe does not teach saccharide isomerate and anionic surfactant sodium cocoyl glutamate in the encapsulated cleansing composition as recited in instant claims 1 and 21. Graefe also fails to teach glutamic acid derivative species as recited in instant claim 5, taurate species as recited in instant claim 9.
Traynor directs to encapsulate compositions (flexible encapsulates) suitable for cleansing including forms not limited to body wash, shampoo, a soap, comprising encapsulated agents (e.g., Abstract; Claim 12).
Traynor teaches that the encapsulates comprises one or more moisturizing agents (e.g., [0322]; Claim 1) and the one or more moisturizing agents include saccharide isomerate ([0322]; Claim 11) (corresponding to saccharide isomerate in instant claims 1 and 21), wherein the moisturizing agent can be in an amount of about 1-5%, or about 6-10%, and many other amount variations (e.g., Claim 8; [0163]; [0167-0180]) (overlapping with saccharide isomerate amount about 1-10% in instant claim 21).
Traynor teaches that the composition typically requires the use one or more surfactants that can be anionic, amphoteric, non-ionic, zwitterionic surfactants [0143]. Anionic surfactants suitable for the composition can include acyl isethionates, sodium cocoyl isethionate [0153](corresponding to instant claims 4 and 6-7), sodium lauroyl sarcosinate, sodium cocoyl sarcosinate, and others [0244] (corresponding to instant claim 8), acyl glutamates such as sodium cocoyl glutamate (corresponding to instant claims 1 and 21) and sodium lauroyl glutamate [0153] (corresponding to instant claim 5), acyl taurate surfactants including sodium methyl cocoyl taurate, sodium methyl oleoyl taurate (e.g., [0152], [0251]) (corresponding to instant claim 9), non-ionic surfactants including alkyl glucosides and alkyl polyglucosides such as starches or starch polymers (e.g., [0155])(corresponding to starch in instant claims 1 and 21). Traynor indicates amphoteric surfactant in the composition present in an amount range from about 0.1-10% (e.g., [0245-0247]) (overlapping to about 8.5-12% in instant claim 21), anionic surfactant in the composition present in an amount of about 0.5-16% (e.g., [0239-0240]) (overlapping with about 10-15% in instant claim 21).
Traynor teaches compositions comprising one or more agents enclosed in a capsule (also referred to as “an encapsulate”) [0009], and the advantages of encapsulates [0010]. Traynor states that capsules with flexible shell (corresponding to coating) enable tight packing of the capsules on the surface of the skin to form an encapsulate layers, preventing breakage or rupture of the capsules upon friction or other external force and/or enables capsule to have high load rates (e.g., [0010]). Traynor further discloses reflective coatings for additional protection of capsules from protons of energy (e.g., [0081]). Traynor teaches the composition can contain cellulose (as polysaccharide species) derived capsules (e.g., [0017]; [0043]), and the capsule can comprise one layer or multiple layers (e.g., [0021-0022]), and active agents can be encapsulated in a sol-gel capsule (e.g., [0041]).
In addition, Traynor teaches that the capsule is designed as to experience minimal or no leakage of agents, or decomposition when applied to the skin, and eventually removed from the skin through repeated washing and/or normal sloughing of the external skin cell layers. Especially for agents used for one-time or very few exposures, such as can occur for personnel engaged in combating or containing terrorist attacks or in warfare, the invention provides a means to deliver a last line of defense on the skin of personnel where the active used in the microcapsules may be one that is not appropriate for long-term use, but that is appropriate for a limited number of applications in order to protect the wearer from a greater risk ( e.g., cellulose derived capsule and/or sol-gel capsules, including, without limitation, microcapsules, encapsulating lead to protect against a radiation attack) [0011].
Traynor lists non-limiting examples of film forming (corresponding to coating) agents including guar derivatives, acacia gum, cellulose (as natural polysaccharide) derivatives, acrylate/acrylamide copolymer, etc. (e.g., [0054]). Traynor also indicates that the gum or polysaccharide formed capsule can be in the amount of at least 0.1% to at least 35% of the total weight of the composition (e.g., [0116]-[0123]) (overlapping with range from about 3-15 % in instant claim 17). Therefore, in summary, Traynor teaches the encapsulated cleansing composition with flexible shells formed from polymeric filming agents such as cellulose (natural polysaccharide) to enclose the agents inside the capsule as a core particle, corresponding to encapsulated composition in instant claims 1 and 21.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to incorporate the encapsulated composition structure taught by Traynor into the Graefe’s composition with selection of specific agents to arrive at the instant invention. Since both compositions compose key components including anionic and amphoteric surfactants, starch, and filming agent polysaccharide, it is convenient for an artisan in the field to select agents to make a formulation. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Graefe teaches agents suitable to meet the strict requirements for the cleansing composition including starches like potato and tapioca, which would have motivated artisans in the field to implement these ingredients because they are not only abundant but also economical and safe. In addition, Traynor teaches many advantageous properties of encapsulated composition as discussed above in detail (e.g., [0010-0011]), it would have motivated a person with ordinary skills in the art to experiment the encapsulated composition as a way to improve the composition. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way”. See MPEP §2143.01(I)(C). The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding a coating “disposed about at least a portion of said core particle”, in light of claim interpretation, it is interpreted as “intended use” or “process of making”. Since Graefe and Traynor combined teaching teaches the encapsulated cleaning composition, the intended use would be capable of being achieved by prior art. MPEP indicates that the process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences’ distinguishing the claimed produce from the prior art”. See MPEP 2113. "In determining validity of a product-by-process claim, the focus is on the product and not the process of making it." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009). The process of making is only relevant "if the process by which a product is made imparts 'structural and functional differences' distinguishing the claimed product from the prior art" Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). For this instance, combined teaching of Graefe and Traynor teaches the encapsulated composition as instantly claimed product, thus not only this process of making is taught by prior art, but also it does not provide patentability since the focus is on the product, not the process.
Moreover, MPEP 2112.01.II states "[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, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, if the coating material, e.g., guar, chitosan, is the same as in prior art, the coating capability of encapsulating the composition at least partially would be capable of being achieved, or necessarily present in prior art.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, all ingredient amounts overlap with those taught in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Graefe (DE10128799, 01/16/2003, in PTO record of 3/20/2025) in view of Traynor et al. (US20170216165, 08/03/2017) as applied to Claims 1-10, 12-14, 17-18, and 20-21 above, and further in view of Shibuya et al. (US20130195941, 08/01/2013).
Combined teaching of Graefe and Traynor teaches an encapsulated cosmetic cleansing composition comprising starch, e.g., tapioca and potato starches, anionic surfactant including sodium cocoyl glutamate, amphoteric surfactant comprising cocamidopropyl betaine, and saccharide isomerate, and a filming agent such as guar, cellulose for generating a flexible shell for encapsulating agents in the core, as discussed in greater detail above as applied to instant claim 1 and incorporated herein.
Combined teaching of Graefe and Traynor does not teach pullulan gum as the polysaccharide coating material in the composition as recited in instant claim 16, or coating thickness in instant claim 22.
Shibuya throughout the reference teaches particulate composition containing pullulan which can be formed into a film, exhibiting a higher rupture strength compared to conventional ones (e.g., Abstract).
Shibuya teaches pullulan having properties such as satisfactory water-solubility, relatively high adhesiveness, improved film-formability, has been extensively used in the fields of cosmetics and pharmaceuticals, in such a manner of using such as capsules encapsulated with granules containing functional ingredients (e.g., [0002]; [0011]; Claims 21-22). Shibuya teaches that the particulate composition containing pullulan can compose other fillers/excipients/adjuvants such as polysaccharides or derivatives thereof such as carrageenan, xanthan gum, cellulose, gum arabic, guar gum, pectin, agarose, dextrin, starch, gelatin and casein, etc. (e.g., [0065]; [0091]).
Shibuya specifies that the film of the pullulan-containing particulate composition can be formed in a thickness of 100 um (e.g., Claim 16; [0021]; [0147]), 50 um (e.g., [0143], Example 3), 200 um (e.g., [0145], Example 4), 500 um (e.g., Claim 15;[0116]). The term “about” in instant claim 22, in light of claim interpretation, resulting a coating thickness range of 22.5 micrometers (um) to 49.5 um (calculated as (as -10% of 25 um and +10% of 45 um), the upper end 49.5 um as instantly claimed is 49.5 um/50 um = 99% as close to the coating thickness as in instant claim 22 as in Example 3 [0143] in Shibuya.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to incorporate the teaching from Shibuya of pullulan as coating film material for the encapsulated composition taught by Graefe and Traynor to arrive at the instant invention, because Shibuya indicates that shaped bodies such as films formed with the particulate composition containing pullulan has a satisfactory, constantly stable strength, dissolvability, and disintegration independently of their production lots, being advantageous in the fields of food products, as well as pharmaceuticals, quasi-drugs, and cosmetics, as a relatively low-price, high-quality particulate composition containing pullulan (e.g., [0168]). Especially, Shibuya also teaches that polysaccharides, xanthan gum, pectin, guar, etc. are suitable materials in addition to pullulan in composition, coinciding with teaching of Graefe and Traynor. It would have motivated artisans in the field to choose pullulan for the benefits specified in Shibuya for reasonable expectation of success for the particulate composition. This renders
This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the coating thickness is 99% close to that taught by prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Moreover, coating thickness is interpreted as intended use of the composition, which combined Graefe, Traynor and Shibuya prior art already teaches, therefore, the intended use of such coating thickness would be capable of being achieved.
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, 16-18, and 20-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 7-8, 11, 17-18, and 20 of copending Application No. 17898407 (hereafter App’407) in view of Graefe (DE10128799, 01/16/2003, in PTO record of 3/20/2025), Traynor et al. (US20170216165, 08/03/2017) and Shibuya et al. (US20130195941, 08/01/2013).
App’407 recites an encapsulated composition free of talc comprising a core powder particle comprising about 60 to about 70 percent tapioca starch, 0 to about 10 percent potato starch, 0 to about 10 percent of a corn starch, at least one anionic surfactant, optionally at least one amphoteric surfactant, and a coating disposed about at least a portion of said core particle and comprising a compound chosen from cellulose polymers, polysaccharides, and others, wherein the encapsulated composition comprising from 0 to 25 percent of liquid, pH from about 3.5 to about 5 mixed with water about 10 percent, and when contacted with water producing a foam of less than 10 ml (Claim 1; Claim 11; Claim 20) (corresponding to instant claims 1-3, 14, and 21). Composition includes anionic surfactant chosen from glutamic acid derivative, isethionate derivative, acyl glutamate, acyl isethionate, sarcosinate, taurate, salts and combinations, amphoteric surfactant as betaine having quaternized nitrogen (Claims 7 and 17) (corresponding to instant claim 4), glutamic acid derivative chosen from sodium cocoyl glutamate, sodium lauroyl glutamate, potassium cocoyl glutamate, and combinations thereof (corresponding to glutamic acid derivative species in instant claims 1 and 5), and isethionate derivative chosen from alkanoic acids, isethionic acids, salts thereof, taurate from sodium methyl lauroyl taurate, sodium methyl cocoyl taurate, potassium cocoyl taurate, and combinations thereof (Claims 8 and 17-18) (corresponding to instant claim 6-7 and 9).
App’407 does not recite the encapsulated composition is a cleansing composition, and it does not recite saccharide isomerate as recited in instant claims 1 and 21. App’407 does not recite sarcosinate species as recited in instant claim 8, betaine species in instant claim 12, polysaccharide species as recited in instant claims 14 and 16, polysaccharide amount as recited in instant claim 17, moisturization agent species as recited in instant claim 18, and saccharide isomerate amount in instant claim 21, or coating thickness in instant claim 22.
Combined teachings of Graefe, Traynor and Shibuya teach the encapsulated composition suitable for cleansing comprising saccharide isomerate, sarcosinate species including sodium cocoyl sarcosinate, sodium lauroyl sarcosinate, amphoteric surfactant betaines including coco betaine, lauryl betaine, polysaccharides including celluloses, guar gum, and pullulan gum, with specified amount, moisturization agent including polyquaternium compounds, as well as disclosed saccharide isomerate amount, to make coating thickness as specified, as discussed in detail above and incorporated herein.
It would have been convenient for a person with ordinary skills in the art to incorporate the teachings of Graefe, Traynor and Shibuya into the composition recited in App’407 to arrive at current invention. Because all compositions share common major ingredients, and prior art teaches good reasons to combine the particular agents and make into encapsulated composition, one would have motivation to combine the prior art teaching to optimize the composition for reasonable expectation of success. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s remarks/arguments filed on 01/13/2026 have been fully considered.
Applicant made remarks of the issue current invention aiming to solve, such as foaming cleansing powders on the market being loose powders messy and difficult for consumers to dose, or crumble during shipping thereby forming a coarse and gritty texture being not desirable (paragraph [0005]), while instant encapsulated composition improves hardness and durability with reduced friability during transport and use (paragraph [0081]).
To the extent that references fail to show certain features of the invention, it is noted that the features, e.g., improved hardness and durability, reduced friability during transport and use, upon which applicant relies (i.e. paragraph [0081] of instant specification), are not recited in the rejected claims. 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).
Further, the office action presents the prior art teaching the encapsulated composition comprising same ingredients as instantly claimed. Since prior art teaches the instant composition, therefore the advantage of the encapsulation of composition and the benefit using coating and filming material, e.g., pullulan, is taught by prior art. The properties of the instant composition would necessarily present in prior art, and all intended uses would be capable of being achieved in the teaching of prior art.
Applicant argues that Graefe does not disclose enclosed core particles and solve the issues with loose powders as described in paragraph [0005] and [0081] using the coating materials as specified in instant claim, but relying on Traynor while Traynor does not disclose coating using the claimed polysaccharides.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). Prior art Graefe, Traynor, and Shibuya are combined as obviousness rejection, each prior art does not have to teach every element from instant claims because it is not anticipated rejection. As presented above in office action, Graefe does not directly teach encapsulated composition, but suggests the specific materials in composition can form films, and Traynor explicitly teaches specific coating or filming materials including guar, gum, cellulose, etc., as copied below the most relevant paragraph for reference:
Traynor lists non-limiting examples of film forming (corresponding to coating) agents including guar derivatives, acacia gum, cellulose (as natural polysaccharide) derivatives, acrylate/acrylamide copolymer, etc. (e.g., [0054]). Traynor also indicates that the gum or polysaccharide formed capsule can be in the amount of at least 0.1% to at least 35% of the total weight of the composition (e.g., [0116]-[0123]) (overlapping with range from about 3-15 % in instant claim 17). Therefore, in summary, Traynor teaches the encapsulated cleansing composition with flexible shells formed from polymeric filming agents such as cellulose (natural polysaccharide) to enclose the agents inside the capsule as a core particle, corresponding to encapsulated composition in instant claims 1 and 21.
Applicant asserts that Traynor discloses the film foaming agents such as guar derivatives “create a hydrophobic layer on a skin surface and/or hair” (Traynor paragraph [0050]), directing film formed on skin and not a film/coating formed on the encapsulated cleaning composition, and one skilled in the art would not be compelled to use the listed polysaccharides as a coating to the encapsulated material.
Even though Traynor specifies that the film foaming agents such as guar derivatives can create a hydrophobic layer on a skin surface and/or hair to generate a protective barrier for the skin, as applicant noted in paragraph [0050], it DOES NOT LIMIT Traynor’s composition being only encapsulated upon the contact to skin. The filming layer that is capable of forming upon skin contact only further demonstrates how effective and well the encapsulation composition functions. As shown in office action, an artisan in the field would be motivated to select the components taught by prior art to arrive at current invention.
As presented in detail in the office action above, Traynor specifies that active agents can be encapsulated and the composition is encapsulated composition; and Traynor discloses the encapsulated composition using specific coating materials, e.g., cellulose (as polysaccharide species), guar, as instantly claimed. The most relevant paragraph from office action is copied below for reference:
Traynor teaches compositions comprising one or more agents enclosed in a capsule (also referred to as “an encapsulate”) [0009], and the advantages of encapsulates [0010]. Traynor states that capsules with flexible shell (corresponding to coating) enable tight packing of the capsules on the surface of the skin to form an encapsulate layers, preventing breakage or rupture of the capsules upon friction or other external force and/or enables capsule to have high load rates (e.g., [0010]). Traynor further discloses reflective coatings for additional protection of capsules from protons of energy (e.g., [0081]). Traynor teaches the composition can contain cellulose (as polysaccharide species) derived capsules (e.g., [0017]; [0043]), and the capsule can comprise one layer or multiple layers (e.g., [0021-0022]), and active agents can be encapsulated in a sol-gel capsule (e.g., [0041]).
Moreover, MPEP 2112.01.II states "[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, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, if the coating material, e.g., guar, chitosan, is the same as in prior art, the coating capability of encapsulating at least partially of composition would be capable of being achieved, or necessarily present in prior art.
Applicant asserts that Botto discloses pullulan gum being mixed into the compositions, not using the component as coating on the encapsulated cleansing compositions.
Prior art reference Shibuya has been chosen to address pullulan as coating material instead of Botto. Therefore, this argument is moot.
In conclusion, the arguments are not persuasive.
Applicant requests the double patenting rejection to be held in abeyance until allowable subject matter has been identified in the subject application.
A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejection(s) of record has/have been maintained and updated as no action regarding these rejections has been taken by Applicants at this time.
Please refer to the entire office action as a complete response to the arguments.
Conclusion
No claim is allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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