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 03/05/2026 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This action is in response to papers filed 12/08/2025 in which claims 1-12 and 16-19 were withdrawn; and claims 13-15 and 20 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 13-15 and 20 are under examination.
Withdrawn Rejection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 Any rejection and/or objection not specifically addressed below is hereby withdrawn.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.
Modified Objection
Necessitated by Applicant’s Claim Amendments
Claims 20 remains objected to because of the following informalities: not all dash(es) (-) were removed from claim 20. It is noted that [w]here a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). See MPEP §608.01(m).. Appropriate correction is required.
Claim Interpretation
For art rejection purpose (as applied to 103 rejections set forth in this office action): the recitation of “wherein the polyester microcapsule slurry is obtained by a process comprising the steps of …” in claim 13 will be interpreted and examined as a product-by-process limitation.
Thus, 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).
Maintained-Modified Rejection
Modification Necessitated by Applicant’s Claim Amendments
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 13-15 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18258548 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘548 significant overlap with the subject matter of the instant claims i.e. the claims of the instant application being product-by process claims but containing the same ingredients for forming the polyester microcapsule slurry containing a perfume oil core containing a two-phases dispersion, in which the polyester microcapsule is formed from a reaction product of a carboxylic acid derivative such as trimesoyl trichloride and a polyol such as glycerol; and consumer products containing the polyester microcapsule slurry.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending Application No. 18258548.
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 12/08/2025 have been fully considered but they are not persuasive.
Applicant argues that “the claims of the '548 application do not suggest adding at least one carboxylic acid derivative A3 into a multiple dispersion, and, as such, are silent with respect to a microcapsule slurry wherein the core comprises a two-phases dispersion. As such, Applicant submits that claims 13-15 and 20 are not obvious in view of the claims of the '548 application.” (Remarks, page 10, paragraph to page 11).
In response, the Examiner disagrees. Claims 1 and 6-8 of copending application ‘548 recites that the carboxylic acid derivative A1 (which is the same as the carboxylic acid derivative A3 of the instant claims) is added to the two-phase dispersion E1, thereby the carboxylic acid derivative A3 of copending application ‘548 is indeed added into a multiple dispersion and is not patentably distinct from the instant claims.
Accordingly, the provisional double patenting rejection is proper and is maintained for the reason of record, pending filing of terminal disclaimer.
New 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) 13-15 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ouali et al (WO 2019/002380 A1; previously cited) in view of Chu et al (US 2009/0012187 A1).
The product-by-process claim interpretation applies here.
Regarding claims 13-15 and 20, Ouali teaches a polyester microcapsule slurry comprising an oil core containing a hydrophobic material such as a perfume oil, and a shell surround the oil core formed from a reaction product of poly acyl chloride with a polyol (Abstract; pages 2, 5-7, 9-11, 13-19, 28; Example 9; claims 1-15). Ouali teaches the poly acyl chloride is 1,3,5-benzene tricarbonyl chloride (trimesoyl trichloride) and the polyol is glycerol (pages 7, 10-11, 28; Example 9; claims 1-7). Ouali teaches a consumer product containing the polyester microcapsule slurry, wherein the consumer product is personal care product, home care product, or a fabric acre product (pages 15-19; claims 12-15). However, Ouali does not teach the core contains a two-phases dispersion comprising a polyol and an oil phase of claim 13. Regarding the core contains a two-phases dispersion comprising a polyol and an oil phase of claim 13, Chu teaches the production of microcapsules using emulsion techniques including multiple emulsions technique in which the core of the microcapsule contains an emulsion containing glycerol (a polyol) and an oil (Abstract; [0002]-[0003], [0005]-[0006], [0014], [0030]-[0042], [0047]-[0048], [0050]-[0054], [0078], and [0106]-[0118]). Chu teaches microcapsules produced from multiple emulsions are suitable for encapsulating hydrophobic materials such as fragrances, and such microcapsules formed using multiple emulsions technique provide consistent microdroplet (microcapsule) sizes, microdroplet counts and coating (shell) thickness while also improving the stability of the microdroplets (microcapsules) ([0005], [0031], [0036] [0048], and [0106]-[0111]). Furthermore, Chu teaches the microcapsules produced by multiple emulsions can encapsulate both oil-soluble and water-soluble functional substances ([0115]), and such microcapsules produced by multiple emulsions can tailor to dissolve and rupture under certain physiological conditions (e.g.,. pH, temperature, osmotic strength) ([0079]).
It would have been obvious to one of ordinary skill in the art to produce the polyester microcapsule of Ouali via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Chu provided the guidance to do by teaching that microcapsules are known to produce by emulsion techniques including single emulsion technique and multiple emulsion technique, where multiple emulsion technique provide microcapsules with improved stability in physiological conditions including pH, temperature, and osmotic strength. Thus, an ordinary artisan seeking to provide a polyester microcapsule that have improved stability in physiological conditions including pH, temperature, and osmotic strength would have looked to producing the polyester microcapsule of Ouali via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 12/08/2025 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 “the microcapsule slurry according to claim 13 and obtainable by the indicated process, comprises the process-related feature that the core comprises a two-phases dispersion comprising the polyol and the hydrophobic material H1.” Applicant alleges “Ouali is silent with respect to a microcapsule slurry wherein the core comprises a two-phases dispersion.” Applicant alleges “Ouali is further silent on producing said microcapsules by a process wherein at least one carboxylic acid derivative is added into a multiple dispersion,” and thus, “ Ouali does not disclose a microcapsule slurry, wherein the core comprises a two-phases dispersion.” (Remarks, page 9).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, Chu provided the guidance for produce the polyester microcapsule of Ouali via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil so as to provide microcapsules with improved stability in physiological conditions including pH, temperature, and osmotic strength. Thus, as discussed in the pending 103 rejection, an ordinary artisan seeking to provide a polyester microcapsule that have improved stability in physiological conditions including pH, temperature, and osmotic strength would have looked to producing the polyester microcapsule of Ouali via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil, and achieve Applicant’s claimed invention with reasonable expectation of success.
Accordingly, the combined teachings of Ouali and Chu adequately teach and render obvious Applicant’s claimed polyester microcapsule slurry.
As a result, for at least the reason discussed above, claims 13-25 and 20 remain rejected as being obvious and unpatentable over the combined teachings of Ouali and Chu in the pending 103 rejection as set forth in this office action.
Claim(s) 13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dexter et al (US 6,500,447 B1) in view of Chu et al (US 2009/0012187 A1).
The product-by-process claim interpretation applies here.
Regarding claim 13, Dexter teaches polyester microcapsule slurry comprising an oil core containing a hydrophobic material, and a shell surround the oil core formed from a reaction product of polyacid halides such as trimesoyl chloride with a polyol (columns 2-6; claims 1-2).
However, Dexter does not teach the core contains a two-phases dispersion comprising a polyol and an oil phase of claim 13. Regarding the core contains a two-phases dispersion comprising a polyol and an oil phase of claim 13, Chu teaches the production of microcapsules using emulsion techniques including multiple emulsions technique in which the core of the microcapsule contains an emulsion containing glycerol (a polyol) and an oil (Abstract; [0002]-[0003], [0005]-[0006], [0014], [0030]-[0042], [0047]-[0048], [0050]-[0054], [0078], and [0106]-[0118]). Chu teaches microcapsules produced from multiple emulsions are suitable for encapsulating hydrophobic materials such as fragrances, and such microcapsules formed using multiple emulsions technique provide consistent microdroplet (microcapsule) sizes, microdroplet counts and coating (shell) thickness while also improving the stability of the microdroplets (microcapsules) ([0005], [0031], [0036] [0048], and [0106]-[0111]). Furthermore, Chu teaches the microcapsules produced by multiple emulsions can encapsulate both oil-soluble and water-soluble functional substances ([0115]), and such microcapsules produced by multiple emulsions can tailor to dissolve and rupture under certain physiological conditions (e.g.,. pH, temperature, osmotic strength) ([0079]).
It would have been obvious to one of ordinary skill in the art to produce the polyester microcapsule of Dexter via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Chu provided the guidance to do by teaching that microcapsules are known to produce by emulsion techniques including single emulsion technique and multiple emulsion technique, where multiple emulsion technique provide microcapsules with improved stability in physiological conditions including pH, temperature, and osmotic strength. Thus, an ordinary artisan seeking to provide a polyester microcapsule that have improved stability in physiological conditions including pH, temperature, and osmotic strength would have looked to producing the polyester microcapsule of Dexter via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 20, Dexter teaches polyester microcapsule slurry comprising an oil core containing a hydrophobic material, and a shell surround the oil core formed from a reaction product of polyacid halides such as trimesoyl chloride with a polyol (columns 2-6; claims 1-2). Chu provides the guidance for incorporating a fragrance as the hydrophobic materiel encapsulated in the microcapsule of Dexter, as Chu indicated that aside from pesticides disclosed in Dexter, fragrances are also suitable material for encapsulation in microcapsules. Thus, an ordinary artisan would looked to selecting other known materials suitable microencapsulation including fragrances, and include said fragrances as the hydrophobic material in the microcapsule of Dexter per guidance from Chu, 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.).
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 12/08/2025 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 “Dexter is silent with respect to a microcapsule slurry wherein the core comprises a two-phases dispersion.” Applicant alleges “Dexter is further silent on producing said microcapsules by a process wherein at least one carboxylic acid derivative is added into a multiple dispersion, and thus, “Dexter does not disclose a microcapsule slurry, wherein the core comprises a two-phases dispersion.” (Remarks, page 10).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, Chu provided the guidance for produce the polyester microcapsule of Dexter via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil so as to provide microcapsules with improved stability in physiological conditions including pH, temperature, and osmotic strength. Thus, as discussed in the pending 103 rejection, an ordinary artisan seeking to provide a polyester microcapsule that have improved stability in physiological conditions including pH, temperature, and osmotic strength would have looked to producing the polyester microcapsule of Dexter via a multiple emulsion technique (rather than a single emulsion technique) in which the core contains an emulsion of the glycerol (a polyol) and the oil, and achieve Applicant’s claimed invention with reasonable expectation of success.
Accordingly, the combined teachings of Dexter and Chu adequately teach and render obvious Applicant’s claimed polyester microcapsule slurry.
As a result, for at least the reason discussed above, claims 13 and 20 remain rejected as being obvious and unpatentable over the combined teachings of Dexter and Chu in the pending 103 rejection as set forth in this office action.
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