DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 05/31/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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 12-14 and 16 are rejected under 35 U.S.C. 103 as being as being obvious over Popplewell et al. (US 2022/0226797 A1) in view of Gharsallaoui et al. (Food Bioprocess Technol, 2012, 5:2211–2221) and as evidenced by Roquette (Product Specification sheet).
Regarding claim 12, Popplewell discloses a biodegradable core-shell microcapsule wherein the shell of the microcapsule is composed of biopolymers cross-linked with a combination of two or more different types of cross-linking agents [Abstract] [0022]. The shell of the microcapsule can include at least two polysaccharide biopolymers with corn starch disclosed as a preferred starch polymer to be used [0022]-[0024]. Popplewell discloses polyisocyanate (which refers to a compound having two or more isocyanates, [0058]), and a second cross-linker as a combination of crosslinking-agents to be used for the shell [0077] [0255; Table 34]. The polyisocyanate is present in an amount of 0.1-40% by weight [0078]. A phenolic acid, such as gallic acid, is disclosed as a second cross-linking agent [0055] [0151]. The core of the microcapsule is composed of an active ingredient [0009], such as a hydrophobic fragrance [0080]-[0083] [0085].
It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, the claimed elements (e.g., a polysaccharide, corn starch, polyisocyanate, and gallic acid to be used in the shell and a hydrophobic core) were known in the prior art (e.g., Popplewell) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a biodegradable microcapsule) to one of ordinary skill in the art. See MPEP 2143.A.
Popplewell does not disclose the polysaccharide is selected from the group consisting of maltodextrins DE8-10, DE17-20, and DE18-20.
Gharsallaoui teaches microcapsules with a hydrophobic core encapsulated by the polysaccharide, maltodextrin (abstract). Gharsallaoui teaches that starch hydrolysates (e.g., maltodextrin) are considered good encapsulating agents because they exhibit low viscosities at high-solids contents and good water solubility (pg. 2212, left column, bottom paragraph). Gharsallaoui teaches that maltodextrin DE 19 (from Roquette-frères SA; pg. 2212. right column, wall and core materials) forms microcapsules that are circular and uniform showing minimum cracks and dents on the surface (abstract; Fig 6).
Since Popplewell generally teaches a microcapsule with a hydrophobic core encapsulated by a polysaccharide, it would have been prima facie obvious to one of ordinary skill in the art to include maltodextrin DE 19, within the teachings of Popplewell, because Gharsallaoui teaches microcapsules with a hydrophobic core encapsulated by the polysaccharide, maltodextrin DE 19. An ordinarily skilled artisan would be motivated to use maltodextrin because Gharsallaoui teaches that starch hydrolysates (e.g., maltodextrin) are considered good encapsulating agents because they exhibit low viscosities at high-solids contents and good water solubility (pg. 2212, left column, bottom paragraph). An ordinarily skilled artisan would be motivated to use, specifically, maltodextrin DE 19 because Gharsallaoui teaches that maltodextrin DE 19 forms microcapsules that are circular and uniform showing minimum cracks and dents on the surface (abstract; Fig 6).
As evidenced by Roquette, maltodextrin DE19 from Roquette-frères is maltodextrin DE 18-20 (pg. 1).
The instant claim 12 recites, the content of the polyisocyanate is 20 wt.% or less.
Popplewell taught polyisocyanate in an amount of 0.1-40% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Furthermore, 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. See MPEP 2144.05(II)(A). In this case, the general condition of the weight of polyisocyanate has been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum weight percentage of polyisocyanate in the shell via routine experimentation.
Claim 13 is rendered prima facie obvious because Popplewell discloses the microcapsule shell with the polysaccharides and crosslinking agents is crosslinked [abstract].
Claim 14 is rendered prima facie obvious because Popplewell discloses the biodegradable core-shell microcapsules are a slurry [0010] and can be formulated as a slurry [0174].
Claim 16 is rendered prima facie obvious because Popplewell discloses the microcapsules can be included in a fabric care product [0171] [0174].
Response to Arguments
Applicant's arguments with respect to claims 12-14 and 16 have been considered but are moot because the new ground of rejection (Popplewell in view of Gharsallaoui and evidenced by Roquette) does not rely on any reference applied in the prior rejection of record (Popplewell) for any teaching or matter specifically challenged in the argument.
Claims 12-14 and 16 are rejected under 35 U.S.C. 103 as being as being obvious over Popplewell et al. (US 2022/0226797 A1) in view of Campelo et al. (Industrial Crops and Products 2017, 102:105–114).
Regarding claim 12, Popplewell discloses a biodegradable core-shell microcapsule wherein the shell of the microcapsule is composed of biopolymers cross-linked with a combination of two or more different types of cross-linking agents [Abstract] [0022]. The shell of the microcapsule can include at least two polysaccharide biopolymers with corn starch disclosed as a preferred starch polymer to be used [0022]-[0024]. Popplewell discloses polyisocyanate (which refers to a compound having two or more isocyanates, [0058]), and a second cross-linker as a combination of crosslinking-agents to be used for the shell [0077] [0255; Table 34]. The polyisocyanate is present in an amount of 0.1-40% by weight [0078]. A phenolic acid, such as gallic acid, is disclosed as a second cross-linking agent [0055] [0151]. The core of the microcapsule is composed of an active ingredient [0009], such as a hydrophobic fragrance [0080]-[0083] [0085].
It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, the claimed elements (e.g., a polysaccharide, corn starch, polyisocyanate, and gallic acid to be used in the shell and a hydrophobic core) were known in the prior art (e.g., Popplewell) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a biodegradable microcapsule) to one of ordinary skill in the art. See MPEP 2143.A.
Popplewell does not disclose the polysaccharide is selected from the group consisting of maltodextrins DE8-10, DE17-20, and DE18-20.
Campelo discloses microparticles with essential oil cores encapsulated with the polysaccharide, maltodextrin (abstract). Campelo teaches that maltodextrins are widely used as a wall material since they have low emulsifying capacity. Campelo teaches these carbohydrates have characteristics such as low cost, high solubility and high soluble solids, providing additional protection for the encapsulated material. (pg. 106, left column, top). Campelo tested maltodextrin with dextrose equivalents of 5, 10 and 20 and found that maltodextrins with high DE values (10 and 20) had lower viscosities and consequently smaller droplet and particle sizes and that maltodextrin of DE 20 presented better significant oil retention values and encapsulation efficiency (abstract).
Since Popplewell generally teaches a microcapsule with a fragrance core encapsulated by a polysaccharide, it would have been prima facie obvious to one of ordinary skill in the art to include maltodextrin DE 20, within the teachings of Popplewell, because Campelo teaches microcapsules with a fragrance (essential oil) core encapsulated by the polysaccharide, maltodextrin DE 20. An ordinarily skilled artisan would be motivated to use maltodextrin because Campelo teaches that maltodextrins are widely used as a wall material since they have low emulsifying capacity and these carbohydrates have characteristics such as low cost, high solubility and high soluble solids, providing additional protection for the encapsulated material (pg. 106, left column, top). An ordinarily skilled artisan would be motivated to use, specifically, maltodextrin DE 20 because Campelo teaches that maltodextrin DE 20 presented better significant oil retention values and encapsulation efficiency (abstract).
The instant claim 12 recites maltodextrin DE18-20. Campelo teaches maltodextrin DE 20. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Additionally, it would have been prima facie obvious to achieve the claimed maltodextrin DE through routine experimentation. See MPEP 2144.05(II)(A). The general condition of the maltodextrin DE values has been taught by the prior art (Campelo, maltodextrin with DE values of 5, 10, and 20); and the DE of the maltodextrin is recognized to be results effective (effects viscosity, droplet and particle size, abstract) as such, it would not have been inventive for the skilled artisan to have discovered the optimum maltodextrin DE value through routine experimentation.
The instant claim 12 recites, the content of the polyisocyanate is 20 wt.% or less.
Popplewell taught polyisocyanate in an amount of 0.1-40% by weight. A prima facie case of obviousness exists because of overlap as previously discussed.
Furthermore, 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. See MPEP 2144.05(II)(A). In this case, the general condition of the weight of polyisocyanate has been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum weight percentage of polyisocyanate in the shell via routine experimentation.
Claim 13 is rendered prima facie obvious because Popplewell discloses the microcapsule shell with the polysaccharides and crosslinking agents is crosslinked [abstract].
Claim 14 is rendered prima facie obvious because Popplewell discloses the biodegradable core-shell microcapsules are a slurry [0010] and can be formulated as a slurry [0174].
Claim 16 is rendered prima facie obvious because Popplewell discloses the microcapsules can be included in a fabric care product [0171] [0174].
Response to Arguments
Applicant's arguments with respect to claims 12-14 and 16 have been considered but are moot because the new ground of rejection (Popplewell in view of Campelo) does not rely on any reference applied in the prior rejection of record (Popplewell) for any teaching or matter specifically challenged in the argument.
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 12-14 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-16 of copending application No. 18/019,793 in view of Popplewell et al. (US 2022/0226797 A1) and Campelo et al. (Industrial Crops and Products, 2017, 102:105–114).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the capsule expect for the first crosslinking agent being a polyisocyanate in an amount of 20 wt.% or less, the capsule comprising a second crosslinking agent, such as gallic acid, the protective colloid being corn starch, and the polysaccharide is selected from the group consisting of maltodextrins DE8-10, DE17-20, and DE18-20.
Popplewell discloses a biodegradable core-shell microcapsule wherein the shell of the microcapsule is composed of biopolymers cross-linked with a combination of two or more different types of cross-linking agents [Abstract] [0022]. The shell of the microcapsule can include at least two polysaccharide biopolymers with corn starch disclosed as a preferred starch polymer to be used [0022]-[0024]. Popplewell teaches that corn starch is naturally occurring, economical, and available [0023]. Popplewell discloses polyisocyanate is present in an amount of 0.1-40% by weight [0078]. A phenolic acid, such as gallic acid, is disclosed as a second cross-linking agent [0055] [0151].
Campelo discloses microparticles with essential oil cores encapsulated with the polysaccharide, maltodextrin (abstract). Campelo teaches that maltodextrins are widely used as a wall material since they have low emulsifying capacity. Campelo teaches these carbohydrates have characteristics such as low cost, high solubility and high soluble solids, providing additional protection for the encapsulated material (pg. 106, left column, top). Campelo tested maltodextrin with dextrose equivalents of 5, 10, and 20 and found that maltodextrin of DE 20 presented better oil retention values and encapsulation efficiency (abstract).
It would have been prima facie obvious to one of ordinary skill in the art to include polyisocyanate in an amount of 20 wt.% or less, gallic acid, corn starch, and maltodextrin DE 20 within the copending claims. The ordinarily skilled artisan would have been motivated to formulate the capsule to include polyisocyanate in an amount of 20 wt.% or less and gallic acid as taught by Popplewell at [0055] [0151] [0078] and to include corn starch because Popplewell teaches that corn starch is naturally occurring, economical, and available [0022]-[0024]. The ordinarily skilled artisan would have been motivated to formulate the capsule to include maltodextrin DE 20 because Campelo teaches that maltodextrins are widely used as a wall material since they have low emulsifying capacity, have characteristics such as low cost, high solubility and high soluble solids, and because maltodextrin DE 20 has better oil retention values and encapsulation efficiency (pg. 106, left column, top; abstract).
This is a provisional nonstatutory double patenting rejection.
Claims 12-14 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-15, 17-21, and 23 of copending application No. 18/835,342 in view of Popplewell et al. (US 2022/0226797 A1) and Campelo et al. (Industrial Crops and Products, 2017, 102:105–114).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the capsule expect for the capsule comprising a second crosslinking agent, such as gallic acid, the protective colloid being corn starch, and the polysaccharide being selected from the group consisting of maltodextrins DE8-10, DE17-20, and DE18-20.
Popplewell discloses a biodegradable core-shell microcapsule wherein the shell of the microcapsule is composed of biopolymers cross-linked with a combination of two or more different types of cross-linking agents [Abstract] [0022]. The shell of the microcapsule can include at least two polysaccharide biopolymers with corn starch disclosed as a preferred starch polymer to be used [0022]-[0024]. Popplewell teaches that corn starch is naturally occurring, economical, and available [0023]. A phenolic acid, such as gallic acid, is disclosed as a second cross-linking agent [0055] [0151].
Campelo discloses microparticles with essential oil cores encapsulated with the polysaccharide, maltodextrin (abstract). Campelo teaches that maltodextrins are widely used as a wall material since they have low emulsifying capacity. Campelo teaches these carbohydrates have characteristics such as low cost, high solubility and high soluble solids, providing additional protection for the encapsulated material (pg. 106, left column, top). Campelo tested maltodextrin with dextrose equivalents of 5, 10, and 20 and found that maltodextrin of DE 20 presented better oil retention values and encapsulation efficiency (abstract).
It would have been prima facie obvious to one of ordinary skill in the art to include gallic acid, corn starch, and maltodextrin DE 20 within the copending claims. The ordinarily skilled artisan would have been motivated to formulate the capsule to include gallic acid as taught by Popplewell at [0055] [0151] and to include corn starch because Popplewell teaches that corn starch is naturally occurring, economical, and available [0022]-[0024]. The ordinarily skilled artisan would have been motivated to formulate the capsule to include maltodextrin DE 20 because Campelo teaches that maltodextrins are widely used as a wall material since they have low emulsifying capacity, have characteristics such as low cost, high solubility and high soluble solids, and because maltodextrin DE 20 has better oil retention values and encapsulation efficiency (pg. 106, left column, top; abstract).
This is a provisional nonstatutory double patenting rejection.
Response to Double Patenting Arguments
Applicant's arguments filed 05/31/2026 have been fully considered but they are not persuasive.
Applicant argues that the double patenting rejections of copending application Nos. 18/019,793 and 18/835,342 has been overcome in view of the amendments to the claims.
The Examiner disagrees. It would have been prima facie obvious to one of ordinary skill in the art to include polyisocyanate in an amount of 20 wt.% or less, gallic acid, corn starch, and maltodextrin DE 20 within the copending claims for the reasons discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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