1DETAILED ACTION
Claims 1-11 are pending and under consideration on the merits.
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 Rejection
The claim objection is withdrawn in view of the amendment.
The 103 rejection is revised in view of the amendment.
The double patenting rejection is maintained.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as unpatentable over Popplewell et al. (US Pat. Pub. 2005/0153135; of record in IDS) in view of Warr et al. (US Pat. Pub. 2010/0168251).
As to claims 1-10, Popplewell discloses a microcapsule comprising a shell which encapsulates a core comprising a fragrance (the elected species of active material of claim 7) and a hydrophobic solvent such as isopropyl myristate or triglycerides (claim 2)(paragraphs 9, 11, 71) and a sacrificial solvent having a Clog P value of most preferably from about 1.5 to about 2 (paragraph 76). The shell comprises a polymer that is permeable to the sacrificial solvent (paragraph 87) such as polyurea (the elected species of encapsulating polymer of claims 1 and 6)(paragraph 88). The capsules may be mixed with water (an “external hydrophilic solvent” of claim 1) to suspend them in a continuous phase of the external solvent (paragraph 184). Popplewell teaches that since the microcapsule wall is permeable, in one embodiment the core comprises only the hydrophobic solvent and then absorbs the fragrance from a liquid system comprising the fragrance (paragraphs 14-15). Therefore, the microcapsule in this embodiment will initially be free of the fragrance active material as recited by claim 1.
Regarding claim 4, Popplewell teaches an embodiment wherein the core is free of the fragrance active material (paragraph 85).
Regarding claim 5, the microcapsules may have a diameter of 10 nanometers to 1000 microns, which encompasses the recited range (paragraph 166). The hydrophobic solvent is present in the amount of greater than 30 wt% (paragraph 48) and the sacrificial solvent is present in the amount of greater than 10 wt% (paragraph 76), which can result in weight ratios of the hydrophobic solvent to hydrophilic solvent within the 1:9 to 9:1 range recited by claim 5. For example, the use of 40 wt% hydrophobic solvent and 20 wt% sacrificial solvent would be within the ranges of Popplewell and results in a weight ratio of 2:1. Popplewell further teaches that the weight ratio of the encapsulating polymer to fragrance is from about 1:25 to about 1:1 (paragraph 162) and that the amount of the fragrance in the core is from about 0.1-10 wt% of the total composition (see claim 43 of Popplewell). The foregoing amounts can produce weight ratios of microcapsule core to microcapsule wall within the 50:1 to 1:1 range recited by claim 5. For example, the use of 2 wt% fragrance, 20 wt% sacrificial solvent, 40 wt% hydrophobic solvent, and 10 wt% encapsulating polymer results in a microcapsule core to microcapsule wall weight ratio of 62:10 or 6.2:1. Additionally, differences in concentration generally will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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).
Regarding claim 7, the weight percent ranges for the fragrance, hydrophilic solvent, and hydrophobic solvent in the core disclosed by Popplewell can produce weight ratios of the microcapsule core and the active fragrance material within the 1:99 to 99:1 ratio recited by the claim. For example, the use of 40 wt% hydrophobic solvent and 20 wt% sacrificial solvent and 10 wt% fragrance would be within the ranges of Popplewell and results in a weight ratio of 40% plus 20% plus 10% equals 70 total weight percent for the core, resulting in a 70:10, i.e., 7:1, weight ratio of microcapsule core to the active fragrance material. Popplewell teaches that the microcapsule wall is permeable to the fragrance which can therefore pass between the core and the external phase (paragraph 15).
As to claims 1-10, Popplewell does not further expressly disclose that the sacrificial solvent in the microcapsule core is a hydrophilic solvent that is the elected species (i.e., triethyl citrate as recited by claim 3). Nor does Popplewell expressly disclose that the external hydrophilic solvent is the elected species. (i.e., ethanol). Nor does Popplewell expressly disclose the values of the functional parameters recited by claims 4 and 8-10 including the Hansen solubility, polarizability, hydrogen bonding, weighted solubility, polarizability, and h-bonding parameters of the hydrophilic solvent and/or fragrance as recited by claims 4 and 8, as well as the Euclidean differences between the fragrance and hydrophilic solvent and between the fragrance and hydrophobic solvent recited by claim 9, or the Euclidean difference between the fragrance and hydrophobic solvent as recited by claim 10. Additionally, while Popplewell teaches triglycerides as the hydrophobic solvent, it does not specify that the triglycerides are C5-C50 triglcyerides, which are the elected species of hydrophobic solvent of claims 1-2.
Warr discloses core-shell microcapsules comprising a fragrance in the core (Abstract and paragraphs 25-26). The core further comprises a solvent as a liquid solubilizing agent for the fragrance or as a diluent or to control the vapor pressure and evaporation characteristics of the fragrance, wherein the solvent may be triethyl citrate (paragraph 71), which has a Clog P value of about 1.55. Warr also teaches forming a dispersion of the microcapsules in methanol (paragraphs 117 and 119).
As to claims 1-10, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the Popplewell microcapsule fragrance composition by selecting triethyl citrate as the sacrificial solvent in the core of the microcapsule instead of, or in addition to, the sacrificial solvents taught by Warr, because Warr teaches that triethyl citrate is useful as a core solvent in a microcapsule encapsulating a fragrance because it aids in solubilization of the fragrance and as a diluent or to control the vapor pressure and evaporation characteristics of the fragrance, such that the skilled artisan reasonably would have expected that triethyl citrate could be used to impart these same advantages to the Popplewell microcapsules, and further because Popplewell teaches that the sacrificial solvent in the core most preferably has a Clog P value of from about 1.5 to about 2 and triethyl citrate has a Clog P value within this range such that the skilled artisan reasonably would have expected that it could be used successfully as the sacrificial solvent in the Popplewell microcapsules.
It further would have been prima facie obvious to select ethanol as the solvent in which the microcapsules are suspended instead of, or in addition to, the water solvent taught by Popplewell, because Warr teaches that methanol is a suitable solvent for use in forming a dispersion of perfume microcapsules comprising a polymeric shell, such that the skilled artisan reasonably would have expected that ethanol, which differs from methanol only by the addition of a single methylene group, also could be used as an external solvent for forming a dispersion of the perfume microcapsules. Similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made.”). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). Therefore, the use of ethanol as an external solvent in the Popplewell composition is merely the simple substitution of one known element for another according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
It further would have been prima facie obvious to select C5-C50 triglcyerides as the type of triglycerides, because the species “C5-C50 triglcyerides” differs from the genus of “triglycerides” only by specifying the number of carbon atoms in the fatty acid chains, and the skilled artisan reasonably would have expected that the carbon atom number would not significantly alter the properties of the triglyceride. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).
As to the recitations of claims 4 and 8-10 regarding the water solubility, Hansen solubility, polarizability, hydrogen bonding, weighted solubility, polarizability, and h-bonding parameters of the hydrophilic solvent and/or fragrance active material as recited by claims 4 and 8 claims 4 and 8, as well as the Euclidean differences between the fragrance and hydrophilic solvent and between the fragrance and hydrophobic solvent recited by claim 9, or the Euclidean difference between the fragrance and hydrophobic solvent as recited by claim 10, the composition of Popplewell and Warr as combined supra comprises the same hydrophilic and hydrophobic solvents and active material recited by the claims and so will possess the parameter values within the ranges recited by claims 4 and 8-10 based upon the evidence of record because a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Additionally, the skilled artisan would recognize that the Hanson solubility parameter, as well as a weighted Hansen solubility parameter determined by combining the Hanson values for polarizability and hydrogen bonding, was known in the art at the time of the invention for the purpose of predicting polymer stability, as evidenced by paragraph 20 of the present specification which cites to a reference published in 1967 for a detailed description of these parameters. Therefore, it would have been within the purview of the skilled artisan to use the Hansen solubility parameters to select a fragrance possessing Hansen parameter values within the scope of the claims such that it will solubilize in the core solvents while not solubilizing the encapsulating polymer. “[W]here 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).
Claim 11 is rejected under 35 U.S.C. 103 as unpatentable over Popplewell et al. (US Pat. Pub. 2005/0153135) in view of Warr et al. (US Pat. Pub. 2010/0168251) as applied to claims 1-10 above, and further in view of Pluyter et al. (US Pat. Pub. 2006/0248665).
The teachings of Popplewell are relied upon as discussed above, but while Popplewell further teaches that the microcapsules may comprise a cationic deposition aid such as polyquaternium-6, 7, 22, or 39 (paragraphs 132, 154, 158), it does not further expressly disclose that the cationic deposition aid polymer is the elected species, i.e., polyquaternium-4.
Plutyer discloses microcapsules encapsulating a fragrance for delivery (paragraphs 1-2 and 18-19), wherein the microcapsules further comprise a cationic polymer deposition aid such as polyquaternium-4 (paragraphs 133 and 134).
It would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the microcapsule fragrance composition of Popplewell and Warr as combined supra by selecting polyquaternium-4 as the cationic polymer deposition aid, because Plutyer expressly teaches that polyquaternium-4 is suitable for use as a cationic polymer deposition aid for microcapsules encapsulating a fragrance, such that the skilled artisan reasonably would have expected that it could be used as the cationic polymer deposition aid in the microcapsule fragrance composition of Popplewell and Warr as combined supra. Such a modification is merely the simple substitution of one known element for another according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
Response to Applicant’s Arguments
Applicant argues that Warr teaches methanol as part of the methylated melamine-formaldehyde resin but does not teach methanol as a solvent for the dispersion of microcapsules.
In response, Warr teaches encapsulating a fragrance by mixing an emulsion comprising the fragrance with a melamine:formaldehyde methanol mixture and an emulsifier in methanol solvent to form core shell microcapsules containing the fragrance. Once the microcapsules are formed they will be in the methanol solution. Therefore, methanol is serving as a solvent for a dispersion of the microcapsules.
Applicant argues that Warr teaches that the microcapsule core contains the fragrance, while claim 1 has been amended to recite that the core is free of an active material.
In response, and as discussed in the revised rejection supra, Popplewell teaches that since the microcapsule wall is permeable, in one embodiment the core comprises only the hydrophobic solvent and then absorbs the fragrance from a liquid system comprising the fragrance (paragraphs 14-15). Therefore, the microcapsule in this embodiment will initially be free of the fragrance active material as recited by claim 1.
Applicant also argues that Warr teaches that the fragrance solvents are used as solubilizing agents or diluents or to control the vapor pressure and evaporation of the fragrance and are intended to stay with the fragrance, while in Popplewell, the sacrificial solvent permeates from the capsule creating a void within the capsule allowing fragrance materials to partition into the capsule. Applicant concludes that Popplewell’s sacrificial solvent has a substantially different function than Warr’s fragrance solvents, such that the skilled person would not modify Popplewell’s sacrificial solvent with Warr’s fragrance solvent.
In response, this is not persuasive because Warr makes it clear that it was known to use triethyl citrate as a solvent for a fragrance in core-shell microcapsules and Popplewell teaches that suitable sacrificial solvents are those having a Clog P value of most preferably from about 1.5 to about 2 and triethyl citrate has a Clog P value within this range, such that the skilled artisan reasonably would have expected that it could be used successfully as the sacrificial solvent in the Popplewell microcapsules. Such a modification is merely the simple substitution of one element for another according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143. The fact that in Popplewell the solvent permeates from the capsule does not negate the fact that Warr teaches that triethyl citrate can be used as a solvent for a fragrance in microcapsules, or the fact that triethyl citrate possesses the property which Popplewell teaches makes it a suitable sacrificial solvent for its composition, i.e., a CloP value between 1.5 and 2.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-10 of US Pat. No. 11,491,089.
Although the reference claims are not identical to the present claims, they are not patentably distinct because the reference claims recite a microcapsule having a diameter of o.1 to 1000 microns, comprising a core and a wall encapsulating the core, the core containing a hydrophobic solvent such as C5-C50 triglycerides and a hydrophilic solvent such as triethyl citrate and an active material such as a fragrance, the wall formed of an encapsulating polymer such as a polyurea, wherein the wall is permeable to the hydrophilic solvent, and further comprising a deposition aid such as polyquaternium-4 and an external hydrophilic solvent such as ethanol, wherein the ratio between the microcapsule core and the active material and of the hydrophobic solvent and hydrophilic solvent of the core that is the same as the ratios recited by the present claims, and wherein the microcapsule is free of an active material. The reference claims further recite that the composition possesses the functional parameters recited by claims 4-5 and 8-10.
Response to Applicant’s Arguments
Applicant argues that a terminal disclaimer has been filed.
In response, the terminal disclaimer was disapproved. Therefore, the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached on M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/ Primary Examiner, Art Unit 1600
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