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 .
The amendment dated 12/02/2025 has been considered and entered. The response over the rejections in view of Jurisch et al. (US 2019/0358603) or, alternatively, in view of El-Habnouni et al. (WO 2019/121738) have been considered but were not found to be persuasive. The response over the provisional rejections based on obviousness double patenting over the copending application for having a later filing date than the instant claims was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
The amendment cancels claim 14 which overcomes the previous rejections over the claim and which are withdrawn.
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 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 19 of copending Application No. 18/262,114. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches consumer product comprising an encapsulation of a perfumer organic product covered with a shell, and thus provides up to 100% of the shell and core comprising the perform ingredients. The perfume ingredients can be up to 60 biological ingredients and are present in amounts overlapping the claimed ranges (for instance see 4-methyl-2-phenyl-3, 6-dihydro-2H-pyran at 15% or less; tridec-2-enenitrile at 15% or less). For claim 20, the use of natural oils in perfumes in cosmetic products such as soaps, lotions, deodorant, etc., such as those claimed or others would be obvious as they are conventional in the art and thus blends of 64 biological ingredients would be obvious. For instance, Jurisch et al. (US 2019/0358603) teaches various perfume oils and oil mixtures for cosmetics such as galbanum oil, lavandin oil, and mandarin oil as claimed, and other oils such as lemon oil, sage oil, chamomile oil, oil of cloves, juniper berry oil, blossom oil etc. that would have been useful in the composition of the copending application [see 0027]. Alternatively, El-Habnouni et al. (WO 2019/121738), teaches similar composition with perfume blends of more than 64 ingredients. El-Habnouni also teaches ingredients for making the shell includes polymeric stabilizer reacted with aminosilane, and shell ingredients including polysaccharide which makes the limitation of claims 8 and 9 obvious. Similarly, Jurisch teaches shells comprising protein, polysaccharides and which are crosslinked and which makes the limitations of claims 10, 11 obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 4 – 7, 9 – 13, 15 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jurisch et al. (US 2019/0358603)
In regards to claim 1, Jurisch teaches capsules having active ingredients or substances for use in cosmetic preparations, pharmaceuticals, household products, etc. (abstract). The capsules are microcapsules consisting of a core containing one or more active ingredients (a) and a shell containing one or more polymers (b) [0014 – 0018]. The active ingredients include perfume oils etc., such as benzyl acetate, p-tert-butylcyclohexyl acetate, phenylethyl acetate, galbanum oil, lavandin oil, mandarin oil etc., and mixtures [0023, 0027]. The perfume oils are biodegradable ingredients that can make up 100% of the perfume composition.
In regards to claim 4, Jurisch teaches the composition having the claimed ingredients which are useful individually or in combination. Since the list of perfume ingredients are many, if all are mixed then they would each be present in amounts overlapping the claimed ranges.
In regards to claim 5, Jurisch teaches the composition comprising the core and shell which make up 100% of the composition.
In regards to claim 6, Jurisch teaches the composition wherein the shell can comprise melamine derivatives, such as melamine with an aldehyde [0019, 0030]. The aldehyde can be formaldehyde, or at least formaldehyde would be obvious or quickly envisaged for use as aldehyde and which provides the claimed polymer [0039 – 0041].
In regards to claim 7, Jurisch teaches the composition wherein the polymeric shell contains urea derivative thus providing the polyurea of the claim [0019].
In regards to claims 9 – 11, Jurisch teaches the composition wherein the wall material comprises polysaccharides, proteins etc. [0053]. The walls are prepared with crosslinkers [0011]. Thus, a coacervate complex appears to be provided.
In regards to claim 12, Jurisch teaches the composition comprising ethylenically unsaturated monomers for making the shell, such as aromatic compounds (Ia) and (Ib) [0019].
In regards to claims 13, 15 – 20, Jurisch teaches consumer products such as cosmetic products etc., comprising the claimed composition having perfume oils which include more than 64 biodegradable ingredients [0027].
Claims 1, 4 – 9, 13, 15 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over El-Habnouni et al. (WO 2019/121738)
In regards to claims 1 – 4, El-Habnouni teaches core-shell microcapsule comprising a core containing functional ingredient and a shell surrounding the core; the shell comprising thermosetting resin formed by reacting polyamine and a material comprising olefinic double bonds (abstract). The microcapsules are useful for consumer products (page 1 lines 3 – 7). The encapsulating material (shell) comprises polyamides, polyureas, polyurethanes, melamine-derived resins, melamine-formaldehyde, etc., and mixtures (page 2 lines 9 – 11; page 3 lines 16 – 21). The core comprises perfume (page 2 lines 17 – 20). The microcapsule comprises from about 80 to about 95% of encapsulated oil and from about 5 to about 20% of shell (page 6 lines 15 – 20). The microcapsule is formed using a polymeric stabilizer (page 8 lines 1 – 3). Preferred polymeric stabilizers include amino-silanes (page 10 lines 5 – 13). The perfume ingredients include oils, aldehydes, ketones, nitriles etc., and mixtures having the claimed limitations (page 20 lines 17 – page 23 lines 24). While the amounts of each perfume ingredient are not particularly recited, since one or more can be used and mixtures can include all of ingredients recited, the amounts of the claims would be overlapped.
In regards to claim 5, El-Habnouni teaches the composition having the core and shell providing up to 100% of the composition as previously discussed.
In regards to claims 6 – 8, El-Habnouni teaches the composition having the claimed limitations as previously stated. The shell is formed by reacting polymeric surfactant in the presence of aminosilane (page 11 lines 1 – 16).
In regards to claim 9, El-Habnouni teaches the composition wherein the shell comprises polysaccharides (page 13 lines 18 – 23). The shell is formed as a cross-linked network (page 12 lines 15 – 21).
In regards to claim 12, El-Habnouni teaches the composition having the unsaturated monomers for preparing the shell, and thus provides at least one of monoethylenically unsaturated or polyethylenically unsaturated monomers as claimed.
In regards to claims 13 – 20, El-Habnouni teaches the consumer product having the claimed composition with perfume biodegradable ingredients of more than 64 (page 20 lines 17 – page 23 lines 24).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Jurish does not recite compositions intended for improving the olfactive perception of a perfume composition and their suitability for encapsulation while simultaneously providing a biodegradable composition. The argument is not persuasive.
The claims are not drawn to a method but to a perfume composition comprising biodegradable ingredients. Jurish teaches perfume composition having similar ingredients and thus provides the perfume composition with biodegradable ingredients as claimed.
Applicant argues that El-Habnouni lists perfume ingredients but does not indicate their biodegradability. The argument is not persuasive.
El-Habnouni teaches perfume composition comprising the claimed ingredients and thus similar compounds would be expected to have similar biodegradability properties. Also, the claims are drawn to a composition comprising a perfume and biodegradable ingredients and not to a process of improving olfactive perceptions of a perfume and their suitability for encapsulation as discussed in the response. El-Habnouni teaches the composition and the claimed ingredients.
Applicant argues that the rejections based on provisional double patenting are improper because the cited reference has a later filing date that the instant claims. The argument is not persuasive.
The rejection is a provisional rejection based on copending applications having similar limitations. There is no guarantee that an earlier filed application would be patented first.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771