DETAILED ACTION
This Office action is in response to Applicant’s amendment filed July 21, 2026. Claims 12-16 remain withdrawn from consideration. Applicant has amended claims 1, 3, 4 and 6. Claim 2 has been cancelled. New claims 17-19 have been added. Currently, claims 1, 3-10 and 12-19 remain pending in the application.
The text of those sections of Title 35 U.S. Code not included in this action can be found in the prior Office action, Paper No. 20260414.
The rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitations “TRPV1” and “TRPV3” is withdrawn in view of applicant’s amendments and remarks.
The rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitations “substances that cause a sharp taste or a warmth or heat sensation on skin or mucous membranes or a tingling sensation in the mouth or throat” and “active ingredients with a pungent or acrid or astringent effect” is withdrawn in view of applicant’s amendments and remarks.
The rejection of claims 1 and 3-10 under 35 U.S.C. 103 as being unpatentable over Akeroyd et al, WO 2020/131879, is maintained for the reasons of record.
The rejection of claims 1-10 under 35 U.S.C. 103 as being unpatentable over Xu et al, WO 2020/131866, is withdrawn in view of applicant’s amendments and remarks.
The provisional rejection of claims 1-10 under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of copending Application No. 18/019,786 is withdrawn in view of applicant’s amendments and remarks.
The provisional rejection of claims 1 and 3-10 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 is maintained for the reasons of record.
NEW GROUNDS OF REJECTION
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.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Akeroyd et al, WO 2020/131879.
Akeroyd et al, WO 2020/131879, discloses a preparation method for microcapsules prepared from proteins (see abstract). It is further taught by Akeroyd et al that the protein microcapsules are prepared by the steps of (i) providing an oil-in-water emulsion having a plurality of oil droplets dispersed in an aqueous phase, in which the oil phase contains a polyisocyanate crosslinker and an active material, the aqueous phase contains a protein, (ii) providing a condition sufficient to induce interfacial polymerization in the oil-in-water emulsion to form a microcapsule slurry that contains microcapsules each having a microcapsule wall encapsulating a microcapsule core, thereby obtaining the microcapsule composition, (iii) curing the microcapsule at a temperature of 0-125 degrees Celsius for 10 minutes to 24 hours, and (iv) after the curing step, adding a 0.5-5% by weight of a chitosan aqueous solution to the microcapsule at a pH of 1-5 (i.e., a polysaccharide; see paragraph 9), followed by drying (see paragraph 13). Akeroyd et al further discloses that the polyisocyanate is present in an amount of 0.2-5% by weight, wherein suitable polyisocyanates include a trimethylol propane adduct of xylylene diisocyanate (i.e., contains two or more isocyanate groups; see paragraphs 10-11), that the microcapsule contains 10-90% by weight of a fragrance (i.e., a hydrophobic active ingredient; see paragraph 16), that the interfacial polymerization can be induced by heating the oil-in-water emulsion to an elevated temperature of 35-95 degrees Celsius (see paragraph 25), that the interfacial polymerization can also be induced by adding a catalyst, such as 1,4-diazabicyclol[2.2.2]octane (i.e., DABCO), to the emulsion (see paragraphs 25 and 67), that suitable proteins include wheat in an amount of 0.8-10% by weight (see paragraphs 36-48 and claim 4 on page 47), that suitable polyisocyanates include aromatic polyisocyanates (see paragraph 51), that suitable active materials include fragrances (see paragraph 71), and that the microcapsules are cooled by storing them at a temperature of 5-37 degrees Celsius for 8 weeks (see paragraph 148), per the requirements of the instant invention. Specifically, note Examples 1-27.
Although Akeroyd et al generally discloses a process for making a protein microcapsule, wherein the protein microcapsule is cured at a temperature of at least 60 degrees Celsius, the reference does not require such a process of making a protein microcapsule with this step with sufficient specificity to constitute anticipation.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have formulated a process for making a protein microcapsule, as taught by Akeroyd et al, that contained the step of curing the protein microcapsule at a temperature of at least 60 degrees Celsius, because such a process for making a protein microcapsule falls within the scope taught by Akeroyd et al. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a process for making a protein microcapsule including the step of curing the protein microcapsule at a temperature of at least 60 degrees Celsius is expressly suggested by the Akeroyd et al disclosure.
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, 3-10 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-16 of copending Application No. 18/019,786 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/019,786 claims a similar process for preparing a biodegradable protein and/or polysaccharide based microcapsule comprising the steps of providing an internal non-aqueous phase comprising at least one aliphatic polyisocyanate crosslinking agent and at least one hydrophobic active ingredient, such as a fragrance, providing an external aqueous phase comprising at least one protein, adjusting the pH below the isoelectric point of the protein, emulsifying the internal non-aqueous phase in the external aqueous phase to obtain an oil-in-water emulsion, adding an additional polysaccharide, carrying out a first crosslinking, such as by the addition of DABCO catalyst, to obtain a microcapsule slurry, curing the microcapsule slurry at a temperature of at least 60 degrees Celsius, and cooling (see claims 1-10 and 12-16 of copending Application No. 18/019,786), as required in the instant claims. Therefore, instant claims 1, 3-10 and 17-19 are an obvious formulation in view of claims 1-10 and 12-16 of copending Application No. 18/019,786.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 17-19 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 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/835,342 claims a similar process for preparing a plant-protein based microcapsule comprising the steps of providing an internal non-aqueous phase comprising at least one aliphatic polyisocyanate crosslinking agent and at least one hydrophobic active ingredient, such as a fragrance, providing an external aqueous phase comprising at least one plant protein, emulsifying the internal non-aqueous phase in the external aqueous phase to obtain an oil-in-water emulsion, carrying out a first crosslinking, such as by the addition of DABCO catalyst, to obtain a microcapsule slurry, curing the microcapsule slurry at a temperature of at least 60 degrees Celsius, and cooling (see claims 1-6, 8-15, 17-21 and 23 of copending Application No. 18/835,342), as required in the instant claims. Therefore, instant claims 17-19 are an obvious formulation in view of claims 1-6, 8-15, 17-21 and 23 of copending Application No. 18/835,342.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive.
Applicant argues that Akeroyd et al, WO 2020/131879, does not teach or suggest in general a step of adding at least one polysaccharide in an amount ranging from 0.5-7% by weight, as required by applicant in the newly amended claims. However, the examiner respectfully disagrees. Specifically, the examiner respectfully maintains that Akeroyd et al clearly discloses adding a 0.5-5% by weight chitosan aqueous solution to the microcapsule at a pH of 1-5 (i.e., a polysaccharide; see paragraph 9), as required by applicant in the newly amended claims.
The examiner notes that the provisional rejection of claims 1, 3-10 and 17-19 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 is maintained for the reasons of record. Accordingly, this rejection will be held in abeyance until an indication of allowable subject matter in the instant application is identified.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
September 8, 2026
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