FINAL 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/24/2026 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Status of the Claims
This action is in response to papers filed 01/08/2026 in which claims 2, 5, 11, and 18 were canceled; claims 12-15 and 20 were withdrawn; and claims 1, 3, 6-7, and 16 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1, 3-4, 6-10, 16-17, and 19 are under examination.
Withdrawn Objection/Rejection
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Objection
Claim Objections
Claim 1 is objected to because of the following informalities: please remove “and” at the end of line 2 of claim 1 because “and mixtures thereof” is already recited at the end of the claim. Appropriate correction is required.
Modified Rejections
Necessitated by Applicant’s Claim Amendments
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.
Claim(s) 1, 3-4, 6-10, 16-17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ouali et al (WO 2019/002380 A1) in view of Zia et al (ACS Appl. Mater. Interfaces, 4 August 2020, 12: 38845-38861) and Postma et al (US 2019/0270064 A1).
Regarding claims 1 and 3, Ouali teaches a process of preparing a polyester microcapsule slurry comprising adding an oil phase containing a hydrophobic active ingredient such as a perfume and a poly acyl chloride, into a dispersing phase containing an emulsifier (a stabilizer) and a polyol to form a two-phases dispersion; and applying condition sufficient to induce interfacial polymerization and form polyester microcapsules in form of a slurry (Abstract; pages 1-7, 9-11 and 13-19; Example 9; claims 1-7, 9 and 10).
While Ouali does not expressly teach adding a carboxylic acid derivative into the formed two-phases dispersion, it would have been obvious to one of ordinary skill in the art to add acyl chloride to the two-phase dispersion before inducing interfacial polymerization in view of the guidance from Zia.
Zia teaches a method of producing polyester capsule comprising (i) mixing a dispersed phase containing an oil into a continuous phase containing a diol to form a two-phase dispersion; (ii) adding to the two-phase dispersion, adipoyl dichloride (an acyl chloride); and (iii) inducing interfacial polymerization to form polyester microcapsule, wherein a stabilizer is added to the dispersed phase and/or the continuous phase (Abstract; Introduction; pages 38845-38860). Zia teaches the polyester capsule produced has improved stability (Abstract; Introduction; pages 38845-38860).
It would have been obvious to one of ordinary skill in the art to include acyl chloride to the formed two-phase dispersion of Ouali before inducing interfacial polymerization, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Zia provided the guidance to do so by teaching that acyl chloride can be added after the two-phase dispersion is formed, especially in dispersion that is free of water, and the resultant dispersion upon interfacial polymerization provide polyester capsule with improved stability (Zia: Abstract; Introduction; pages 38845-38860). Thus, an ordinary artisan seeking to maximize the stability of the polyester microcapsule of Ouali would have looked to including an acyl chloride to the formed two-phase dispersion per guidance from Zia, and produce Applicant’s claimed methods with reasonable expectation of success.
However, Ouali and Zia do not expressly teach the particular stabilizer recited in claim 1.
Regarding the stabilizer of claim 1, Postma teaches microcapsules formed from mixing an oil phase containing monomers and a hydrophobic material such as a perfume, into a continuous phase containing an stabilizer/dispersant to from a two-phases dispersion, and applying conditions sufficient to induce interfacial polymerization to form microcapsules, wherein suitable emulsifiers/dispersant include polyvinyl alcohols, cellulose derivatives, gum Arabic, soy protein, gelatin, modified starch, silk protein, sorbitan esters, polyethoxylated sorbitan esters, polyglyceryl ester, and fatty acid esters (Abstract; [0008], [0068]-[0070], [0114]-[0132]; claim 3).
It would have been obvious to one of ordinary skill in the art to incorporate silk protein as the stabilizer in the microcapsule of Ouali, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Postma provided the guidance to do so by teaching that aside from polyvinyl alcohols, cellulose derivatives, gum Arabic, soy protein, gelatin and modified starch as disclosed in Ouali, silk protein is also known as a suitable stabilizer/dispersant used in the formation of microcapsules including polyester microcapsules (Postma: [0114]-[0124]). Thus, an ordinary artisan provided the guidance Postma would have looked to other known stabilizers in the art including silk proteins and used said silk protein as the stabilizer in the formation of polyester microcapsule of Ouali, and achieve Applicant’s claimed invention with reasonable expectation of success. It is noted that [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
Regarding claim 4, as discussed above, Ouali teaches the hydrophobic active ingredient is a perfume.
Regarding claims 6-8, Ouali teaches the poly acyl chloride is terepthaloyl chloride or 1,3,5-Benzene tricarbonyl trichloride (page 7, lines 21-22).
Regarding claim 9, Ouali teaches the dispersing phase does not contain water (pages 9 and 13; claims 3).
Regarding claim 10, Ouali teaches the polyol is selected from the group consisting of glycerol, 1,4-butanediol, ethylene glycol, and mixtures thereof (page 9; claim 9).
Regarding claim 16, as discussed above, Ouali teaches the hydrophobic active ingredient is a perfume; the poly acyl chloride is terepthaloyl chloride or 1,3,5-Benzene tricarbonyl trichloride; and the polyol is selected from the group consisting of glycerol, 1,4-butanediol, ethylene glycol, and mixtures thereof
Regarding claims 17 and 19, as discussed above, Ouali teaches the dispersing phase does not contain water.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 01/08/2026 have been fully considered but they are not persuasive.
Below is the Examiner’s response to Applicant’s arguments as they pertain to the pending 103 rejection.
Applicant argues that neither Ouali nor Zia teach the carboxylic acid derivative is added into a two-phases dispersion after step i) as recited in amended claim1, as well as, neither Ouali nor Zia teach the specific stabilizers as recited in amended claim 1. (Remarks, pages 9-12).
In response, the Examiner disagrees. Zia teaches the dispersed phase was added into the continuous phase to form the two-phases dispersion and then, adipoyl dichloride was added to the formed dispersion to yield polyester particles (Zia: page 38854, bottom of right column to page 38855, left column). Thus, contrary to Applicant’s allegation, Zia does teach and provide guidance for the known concept of including a carboxylic acid derivative (adipoyl dichloride) into a two-phases dispersion. As such, it is maintained that an ordinary artisan seeking to maximize the stability of the polyester microcapsule of Ouali would have looked to including an acyl chloride to the formed two-phase dispersion per guidance from Zia, and produce Applicant’s claimed methods with reasonable expectation of success.
With respect to the stabilizer as recited in amended claim 1, as discussed above in the pending 103 rejection, Postma teaches and render obvious the use of the claimed stabilizer including silk protein as the stabilizer in the microcapsule of Ouali. See 103 rejection, pages 5-6 of this office action.
As a result, for at least the reasons discussed above, claims 1, 3-4, 6-10, 16-17, and 19 remain obvious and unpatentable over the combined teachings of Ouali, Zia, and Postma, in the pending 103 rejection as set forth in this office action.
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, 3-4, 6-10, 16-17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11291969 in view of Zia et al (ACS Appl. Mater. Interfaces, 4 August 2020, 12: 38845-38861) and Postma et al (US 2019/0270064 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in Patent ‘969 significantly overlap with the subject matter of the instant claims i.e., methods of preparing polyester microcapsule slurry comprising (i) adding an oil phase containing a hydrophobic material such as perfume and a poly acyl chloride, into a dispersing phase (a continuous phase) containing an emulsifier such as modified cellulose (a cellulose derivative – stabilizer) and a polyol, wherein the dispersing phase (continuous phase) does not comprise water.
While the claims in Patent ‘969 do not recite adding a carboxylic acid derivative into the formed two-phases dispersion, it would have been obvious to one of ordinary skill in the art to add acyl chloride to the two-phase dispersion before inducing interfacial polymerization in view of the guidance from Zia (Abstract; Introduction; pages 38845-38860).
While the claims in Patent ‘969 recite the stabilizer as in the instant claims, it would have been obvious to one of ordinary skill in the art to incorporate a stabilizer such as silk protein as the emulsifier in the claims of Patent ‘969 in view of the guidance from Postma (Abstract; [0008], [0068]-[0070], [0114]-[0132]; claim 3).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11291969 in view of Zia and Postma.
Claims 1, 3-4, 6-10, 16-17, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15 and 20 of copending Application No. 18258549 (reference application) in view of Chu et al (US 2009/0012187 A1) and Postma et al (US 2019/0270064 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because while the claims in the instant application is a process for preparing polyester microcapsule slurry and the claims in copending Application ‘549 being product by process claims, both set of claims containing the same ingredients for forming the polyester microcapsule slurry (i.e., polyester microcapsule slurry comprising a core comprising an oil phase, wherein the oil phase contains a hydrophobic material, and a shell comprising the reaction product between at least one carboxylic acid derivative and a polyol.
It is noted that MPEP §2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). While the structure implied by the process steps should be consider when assessing patentability of product-by-process claims over the prior art; however, burden of proof is placed upon Applicant to show that the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
While the claims in copending Application ‘549 do not recite the core as having a two-phases dispersion comprising a polyol and an oil phase, it would have been obvious to modify the process of the instant claims such that the core of the polyester microcapsule contains a two-phases dispersion comprising a polyol and an oil phase in view of the guidance from Chu (Abstract; [0002]-[0003], [0005]-[0006], [0014], [0030]-[0042], [0047]-[0048], [0050]-[0054], [0078]-[0079], and [0106]-[0118]).
While the claims in copending Application ‘549 do not recite the stabilizer as in the instant claims, it would have been obvious to include a stabilizer such as silk protein in the production of the polyester microcapsule of copending Application ‘549 in view of the guidance from Postma (Abstract; [0008], [0068]-[0070], [0114]-[0132]; claim 3).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18258549 in view of Chu and Postma.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 01/08/2026 have been fully considered but they are not persuasive.
Applicant argues “the claims of the '969 patent do not suggest adding at least one carboxylic acid derivative into a two-phases dispersion El after step i) as set forth in amended claim 1. Nor do the claims of the '969 patent suggest any of the specific stabilizers S1 set forth in claim 1.” (Remarks, bottom of page 12).
In response, the Examiner disagrees. As discussed in the pending double patenting rejection, the addition of carboxylic acid derivative into a two-phases dispersion was taught and render obvious by Zia and the stabilizer was taught and render obvious by Postma. See double patent rejection, pages 9-10 of this office action. Thus, it is maintained that the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11291969 in view of Zia and Postma.
Applicant argues “the process used to prepare the polyester microcapsule slurry involves adding at least one carboxylic acid derivative into a multiple dispersion. The claims of the '549 application do not disclose adding at least one carboxylic acid derivative into a two-phases dispersion, such as is called for in amended claim 1 of the present application. Nor do claims 13-15 and 20 of the '549 application disclose any of the specific stabilizers required by amended claim 1.” (Remarks, page 13).
In response, the Examiner disagrees. Claims 1 and 6-8 of the instant application recite that the carboxylic acid derivative A1 (which is the same as the carboxylic acid derivative A3 of the copending application ‘549) is added to the two-phase dispersion E1, thereby the carboxylic acid derivative A3 of the instant application is indeed added into a multiple dispersion and is not patentably distinct from the instant claims. With respect to the stabilizer as recited in the instant claims, as discussed above in the pending double patenting rejection, it would have been obvious to include a stabilizer such as silk protein in the production of the polyester microcapsule of copending Application ‘549 in view of the guidance from Postma. See Double Patenting rejection, pages 11-12 of this office action. Thus, it is maintained that the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18258549 in view of Chu and Postma.
Conclusion
No claim is allowed.
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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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