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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 28, 2026 has been entered.
Claims 1-5, 8-23 and 26-40 are pending.
Claims 6, 7, 24 and 25 are cancelled.
Claims 1, 4, 19 and 29 are currently amended.
Claims 1-5, 8-23 and 26-40 as filed on April 28, 2026 are under consideration.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn.
Applicant’s arguments 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Objections
Claims 1 and 19 are objected to because of the following informalities:
Claim 1: “the average leakage from capsules” should presumably recite “the average leakage from the one or more capsules” consistent with the antecedent.
Claim 19: “the average leakage from capsules” should presumably recite “the average leakage from the population of capsules” consistent with the antecedent.
Claims 1 and 19: “the leakage” in the second wherein clause should presumably recite “the average leakage” because a leakage per se does not have a standard deviation.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 8-23 and 26-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention (New Matter Rejection).
Independent claims 1 and 19 as currently amended independently recite:
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Applicant’s Remarks cite to Tables 7 and 8 of the instant specification in support of the amendment. Tables 7 and 8 disclose in part:
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There is no basis for extrapolating the newly claimed range of an average leakage of less than 25% from the above data for the exemplary silica shell particles. There is no basis for extrapolating the newly claimed range of a standard deviation of less than 7% across at least 5 perfume raw materials in the core from the above data for the exemplary silica shell particles comprising one perfume raw material in the core. There is also no apparent basis appending data from compositions 1, 2 and 3, which are hair care compositions presumably falling within the scope of claim 1 (e.g., pages 71-72, Tables 2-4), to claim 19 which is drawn to a personal care composition (e.g., page 72, Table 5). This is new matter. There is also insufficient written description support to extrapolate the exemplified leakage data across the genus of capsules and compositions embraced by the independent claims, which are not limited to either the compositions of compositions 1, 2 or 3 or to the exemplary silica capsules disclosed at pages 73-76, because the specification does not describe what structural feature(s) of either the capsules or of the capsules in combination with the perfume raw materials and compositions result in the desired leakage. To the contrary, Tables 7 and 8 illustrate the leakage after 1 week at 35 ºC calculated according to the disclosed protocol (e.g., pages 68-70) for the exemplary silica shell capsules is function of the type of perfume raw material in the core as well as the external composition. Thus, the specification does not adequately describe the claimed genus. Claims 2-5, 8-18, 20-23 and 26-40 are included in this rejection because they depend from either claim 1 or claim 19.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-5, 8-23 and 26-40 are 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 pre-AIA the applicant regards as the invention.
Independent claims 1 and 19 as currently amended independently recite:
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There is insufficient antecedent basis for “the Leakage Method” in the first wherein clause.
It is unclear what is meant by a standard deviation of less than 7% across at least 5 perfume raw materials present in the core. The plain meaning of across at least 5 perfume raw materials in present in the core suggests a given core must comprise a mixture of at least 5 perfume raw materials, however, the only disclosed standard deviations are calculated across nine different cores each comprising 1 perfume raw material. Because the specification does not disclose that which is claimed, the specification compounds the ambiguity.
Claims 2-5, 8-18, 20-23 and 26-40 are included in this rejection because they depend from either claim 1 or claim 19.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5, 8-23 and 26-40 are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330949, published October 2020, IDS reference filed April 28, 2023) in view of Dihora et al. (US 2011/0268778, published November 3, 2011, of record).
Cardoso teaches a population of capsules for the transfer and triggered release of benefit agents comprising an oil-based or water-based core comprising a benefit agent inclusive of perfume raw materials; and a shell surrounding the core, the shell comprising:
a substantially inorganic (meaning up to 10 wt% organic content as defined in paragraph [0040]) first shell component comprising:
a condensed layer comprising a condensation product of a precursor, and
a nanoparticle layer comprising inorganic nanoparticles, wherein the condensed layer is disposed between the core and the nanoparticle layer, and
an inorganic second shell component surrounding the first shell component, wherein the second shell component surrounds the nanoparticle layer, and wherein the precursor comprises at least one compound of Formula (I), as required by instant claims 2, 20,
(MvOzYn)w (Formula I)
where M is one or more of silicon, titanium and aluminum,
v is the valence number of M and is 3 or 4,
z is from 0.5 to 1.6,
each Y is independently selected from inter alia -OH and -OR2, wherein R2 is inter alia a C1 to C20 alkyl such as ethyl,
n is from 0.7 to (v−1), and
w is from 2 to 2000 (title; abstract; claims, in particular claims 1-3, 17, 18, 37, 38, 41; paragraphs [0001]-[0343], in particular [0001]).
The precursor may comprise at least one compound of Formula (II), as required by instant claims 3, 21,
(MvOzYnR1p)w (Formula II)
where M is one or more of silicon, titanium and aluminum,
v is the valence number of M and is 3 or 4,
z is from 0.5 to 1.6,
each Y is independently selected from inter alia OH and -OR2, wherein R2 is inter alia a C1 to C20 alkyl,
n is from 0 to (v−1),
each R1 is independently selected from inter alia C1 to C30 alkyl,
p is present in an amount up to pmax, and
w is from 2 to 2000; wherein pmax = 60 / [9*Mw(R1) + 8], wherein Mw(R1) is the molecular weight of the R1 group (claims 23, 45).
The capsules may have a mean volume weighted diameter of about 0.1 to 200 microns (claim 10; also claims 11-13, 22, 24, 31-34, 36), as required by instant claims 4, 22.
The compound of Formula (I) or/and Formula (II) may have a Polystyrene equivalent Weight Average Molecular Weight of about 700 to 30,000 Da (claims 14, 25; also claims 15, 16, 26, 27, 42-44, 47-49), as required by instant claims 5, 23.
The second shell component may comprise inter alia SiO2 (claims 8, 9, 30, 38, 39, 46), as required by instant claims 8, 12-14, 26, 30-32.
The inorganic nanoparticles may comprise inter alia SiO2 (claims 5-7, 28, 29, 40), as required by instant claims 9-11, 27-29.
Cardoso further teaches the capsules can be formulated into a consumer product further comprising inter alia xanthan gum (structurant), cationic cellulose materials (cationic polymer), one or more carriers inclusive of water, or/and silicone oils (conditioning agent) (paragraph [0088]), as required by instant claims 18, 36. The capsules have low shell permeability (low leakage) in surfactant-based matrices such as cleansers (paragraphs [0009], [0040], [0225]-[0228], [0235]). The capsules may be deposited on substrates such as hair (paragraph [0059]). Regarding the recitations of a hair care composition or a personal care composition, such recitations of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP 2111.02.
Cardoso further teaches the capsule shell has a permeability (leakage) between about 0.01 and 40% as determined by the shell permeability test (claim 20; Figure 13; paragraphs [0056], [0063], [0069], [0222]-[0247]).
Cardoso further exemplifies embodiments of capsules comprising fragrance oils and precursors, water phases comprising Aerosil® 300, emulsification at 13400 rpm and second shells formed from sodium silicate (e.g., Table 3, also Tables 1 and 2 for precursors encapsulating fragrance oils).
Regarding the newly claimed average leakage of less than 25% as required by claims 1 and 19, Cardoso expressly teaches capsules having a permeability (leakage) between about 0.01 and 40% and Cardoso, as a whole, is drawn to capsules comprising perfume raw materials in the core and comprising surfactant-based matrices as instantly claimed. See MPEP 2144.05. Additionally, Cardoso renders obvious silica capsules falling within the scope of the generic capsules instantly claimed and as embraced by select dependent claims, comprising a first condensed layer comprising silica and silica nanoparticles and a second shell comprising silica as instantly claimed and as instantly exemplified (e.g., the synthesis of silica shells disclosed at page 73 of the instant specification is the same process as exemplified in Table 3 of Cardoso). Therefore, it necessarily follows that silica capsules according to Cardoso comprising perfume raw materials and formulated within products as instantly claimed are also characterized by an average leakage as instantly claimed and are also characterized by a standard deviation as instantly claimed because a chemical composition and its properties are inseparable. See MPEP 2112 and 2145(II).
Cardoso does not specifically teach about 5 to 99.5 wt% water as required by claims 15, 33.
Cardoso does not teach a viscosity of 1 to 1500 cp at 20 s-1 and 21 ºC as required by claims 16, 34.
Cardoso does not specifically teach about 0.1 to 10 wt% capsules as required by claims 17, 35.
Cardoso does not teach more than one phase as required by claim 37.
Cardoso does not teach a cleansing phase and a benefit phase as required by claim 38.
Cardoso does not teach the cleansing phase comprises inter alia surfactants as required by claim 39.
Cardoso does not teach the benefit phase comprises a benefit agent and at least one additional ingredient as required by claim 40.
These deficiencies are made up for in the teachings of Dihora.
Dihora teaches compositions comprising encapsulated benefit agents inclusive of perfume (title; abstract; claims, in particular 1, 4, 11, 18). The compositions may comprise inter alia structurants such as xanthan gum which impart to aqueous liquid compositions a high shear viscosity, at 20 s-1 and 21 ºC, of 50 to 3000 cp (claims 11, 14; paragraph [0107]), as required by instant claims 16, 34. The compositions may comprise less than about 80 wt% water (claims 15, 17; paragraph [0184]), as required by instant claims 15, 33. Dihora exemplifies a cleansing composition comprising a cleansing phase comprising inter alia sodium lauryl sulfate (surfactant) and a benefit phase comprising petrolatum (benefit agent), mineral oil and 10 wt% fragrance (benefit agent) microcapsules (paragraph [0326]), as required by instant claims 17, 35, 37-40. Dihora further teaches the compositions may comprise high melting point fatty compounds inclusive of fatty alcohols in amounts which provide conditioning benefits (paragraphs [0131]-[0314]).
Regarding claims 15, 33, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surfactant-based compositions of Cardoso comprising the capsules of Cardoso and inter alia cationic cellulose materials or/and silicone oils to comprise less than about 80 wt% water as taught by Dihora because such quantities of water are suitable for compositions comprising encapsulated benefit agents. There would be a reasonable expectation of success because Cardoso expressly contemplates carriers inclusive of water.
Regarding claims 16, 34, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surfactant-based compositions of Cardoso comprising the capsules of Cardoso and inter alia cationic cellulose materials or/and silicone oils to have a high shear viscosity, at 20 s-1 and 21 ºC, of 50 to 3000 cp as taught by Dihora because such viscosity is suitable for compositions comprising encapsulated benefit agents. There would be a reasonable expectation of success because Cardoso expressly contemplates ingredients inclusive of xanthan gum which Dihora teaches to impart this viscosity.
Regarding claims 17, 35, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surfactant-based compositions of Cardoso comprising the capsules of Cardoso and inter alia cationic cellulose materials or/and silicone oils to comprise about 10 wt% of the capsules as taught by Dihora because this amount is suitable for compositions comprising encapsulated benefit agents. There would be a reasonable expectation of success because Cardoso does not delimit the quantity of capsules within the compositions.
Regarding claims 37-40, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surfactant-based compositions of Cardoso comprising the capsules of Cardoso and inter alia cationic cellulose materials or/and silicone oils to comprise a cleansing phase comprising inter alia sodium lauryl sulfate (surfactant) and a benefit phase comprising petrolatum (benefit agent), mineral oil and the capsules as taught by Dihora because such is suitable for cleansing compositions comprising encapsulated benefit agents. There would be a reasonable expectation of success because Cardoso expressly contemplates formulation into consumer products.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s citation to case law at page 1 of the Remarks that express disclosure is required to establish obviousness is acknowledged but not found persuasive because implicit or inherent disclosures may also be relied upon. See MPEP 2112.
Therefore, the rejections of record are properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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