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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10, in the reply filed on March 3, 2026 is acknowledged. The traversal is on the ground(s) that there would not be a burden on the examiner to search both groups of inventions. This is not found persuasive because the examiner respectfully maintains that there is a lack of unity a posteriori, since the biodegradable microcapsules of Group II is not a technical feature that defines a contribution over the prior art. Accordingly, the examiner maintains that the distinct inventions would require separate and distinct searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 3, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitations “TRPV1” and “TRPV3” in instant claim 4. These limitations render the claim vague and indefinite, since it is unclear what the abbreviations mean. For clarification purposes, the examiner asserts that these abbreviations should be amended to recite “Transient Receptor Potential channels of the vanilloid 1” and “Transient Receptor Potential channels of the vanilloid 3”, as defined by applicant in paragraph 150 of the instant specification. Appropriate correction and/or clarification is required.
Claim 4 is rejected 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”. These limitations render the claim vague and indefinite, since one of ordinary skill in the art would not be able to ascertain the metes and bounds of 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”. Specifically, hydrophobic active ingredients that cause a sharp taste, cause a warm or heat sensation on the skin or mucous membrane, cause a tingling sensation in the mouth or throat, and have a pungent or acrid or astringent effect to one person would not necessarily have the same effect on another person. Appropriate correction and/or clarification is required.
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 1-10 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 chitosan aqueous solution to the microcapsule (see paragraph 9). Akeroyd et al further discloses 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 (see paragraphs 36-48), 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al, WO 2020/131866.
Xu et al, WO 2020/131866, discloses a preparation method for microcapsules prepared from polysaccharides (see abstract). It is further taught by Xu et al that the polysaccharide 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 polysaccharide and an optional dispersant, and (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 (see paragraphs 15 and 20). Xu et al further discloses that the interfacial polymerization can be induced by heating the oil-in-water emulsion to an elevated temperature of 55-135 degrees Celsius (see paragraph 18), that the preparation process further comprises the steps of (iii) adding lysine to the microcapsule slurry and (iv) curing the microcapsule slurry at a temperature of 55-135 degrees Celsius for 10 minutes to 48 hours (see paragraph 19), that a catalyst, such as 1,4-diazabicyclol[2.2.2]octane (i.e., DABCO), is added to the emulsion (see paragraphs 20 and 78), that suitable polysaccharides include cellulose (see paragraphs 34-38), that suitable polyisocyanates include aromatic polyisocyanates (see paragraph 41), that suitable active materials include fragrances (see paragraph 95), and that the microcapsules are cooled by storing them at a temperature of 25-37 degrees Celsius for 8 weeks (see Examples 27A-27C in paragraphs 198-199), per the requirements of the instant invention. Specifically, note Examples 1-27C.
Although Xu et al generally discloses a process for making a polysaccharide microcapsule, wherein the polysaccharide microcapsule is cured at a temperature of at least 60 degrees Celsius, the reference does not require such a process of making a polysaccharide 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 polysaccharide microcapsule, as taught by Xu et al, that contained the step of curing the polysaccharide microcapsule at a temperature of at least 60 degrees Celsius, because such a process for making a polysaccharide microcapsule falls within the scope taught by Xu 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 polysaccharide microcapsule including the step of curing the polysaccharide microcapsule at a temperature of at least 60 degrees Celsius is expressly suggested by the Xu et al disclosure.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-10 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of copending Application No. 18/019,786 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-15 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 and 8-15 of copending Application No. 18/835,342), as required in the instant claims. Therefore, instant claims 1-10 are an obvious formulation in view of claims 1-6 and 8-15 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.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
April 14, 2026
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