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 .
Status of the Claims
This action is in response to papers filed 01/21/2026 in which claim 3 was canceled; claims 6-11 and 14-17 were withdrawn; and claims 1, 12 and 13 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1, 2, 4, 5, 12, and 13 are under examination.
Withdrawn Objections/Rejections
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 Any rejection and/or objection not specifically addressed below is hereby withdrawn.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 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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kielbania et al (US 5,225,278) in view of Wu et al (US 5,811,121).
Regarding claims 1 and 2, Kielbania teaches a microcapsule comprising a core containing a hydrophobic material, and a polymeric shell containing an acetoacetyl polymer and polyhydroxyethylacrylate (a polyacrylate) (Abstract; columns 4, 7, and 10; Examples 1-4; claims 1-24).
However, Kielbania does not expressly teach the acetoacetyl polymer is selected from the group consisting of cellulose acetoacetate, starch acetoacetate, and mixtures thereof of claim 1.
Regarding the acetoacetyl polymer of claim 1, Wu teaches a pH-sensitive coating comprising cellulose acetoacetate esters, in which the coating is used for microcapsulation of active agents such as medicaments, pesticides, herbicides, catalysts, cosmetics, laundry products, and colorants (Abstract; columns 1-6 and 8; claims 1-7). Wu teaches the pH-sensitive coating is used for controlled release of the active agents, as well as, as the coating provide a microcapsulated product that is stable against decomposition in the presence of incidental moisture (Abstract; columns 1-2, 4-5, and 8).
It would have been obvious to one of ordinary skill in the art to incorporate the cellulose acetoacetate ester as the acetoacetyl polymer in the shell of Kielbania, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Wu provided the guidance to do so by teaching that cellulose acetoacetate esters are suitable for microencapsulation of active agents such as medicaments, pesticides, herbicides, catalysts, cosmetics, laundry products, and colorants so as to provide a microencapsulated product that provides controlled release of the active agents, which is also the objective desired by the microcapsule of Kielbania, to provide controlled release microcapsulation product (Kielbania: Abstract; column 3, lines 1-25). Thus, an ordinary artisan would have looked to using other acetoacetyl polymer known for their suitable in microcapsulation product including the cellulose acetoacetate of Wu so as to provide a resultant microcapsule that provide a desired controlled release of the active agent, 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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kielbania et al (US 5,225,278) in view of Wu et al (US 5,811,121), as applied to claim 1 above, and further in view of Postma et al (US 2019/0270064 A1).
The core-shell microcapsule of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 4 and 5, Postma teaches a microcapsule comprising a core containing a hydrophobic material such as a perfume or fragrance oil, and a shell containing an encapsulating polymer including polyacrylate, wherein the encapsulating polymer is present in an amount less than 25% by mass ([0007], [0015]-[0018], [0068]-[0069], [0094], [0104]-[0108], [0125]).
It would have been obvious to one of ordinary skill in the art to incorporate a perfume or fragrance oil as the hydrophobic material encapsulated in the microcapsule of Kielbania, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Postma provided the guidance to do so by teaching that a vast variety of hydrophobic material including a perfume or fragrance oil can be microencapsulated (Postma: [0008]), and Kielbania teaches that scents are suitable core material for encapsulation (Kielbania: column 4, lines 49-55 and column 10, lines 26-44). Thus, 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.).
It would also have been obvious to one of ordinary skill in the art to optimize the amount of encapsulating polymer such as polyacrylate in the polymeric shell of Kielbania to an amount less than 20% by weight, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, the encapsulating polymer including polyacrylate can be used form the shell in an amount less than 25% by mass, which is a range that overlap the claimed range of less than 20% by weight as recited in claim 4. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of the polymeric material in the polymeric shell would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over of Postma et al (US 2019/0270064 A1) in view of Kielbania et al (US 5,225,278) in view of Wu et al (US 5,811,121).
Regarding claims 12 and 13, Postma teaches a consumer product comprising an active material, and microcapsule comprising a core containing a hydrophobic material such as a perfume or fragrance oil, and a shell containing an encapsulating polymer including polyacrylate, wherein the consumer product is a shampoo, a hair conditioner, a hair rinse, a hair refresher, a hair fixative or styling aid, a hair bleach, a hair dye or colorant, a soap, a body wash, a cosmetic preparation, an all-purpose cleaner, a bathroom cleaner, a floor cleaner, a window cleaner, a bath tissue, a paper towel, a disposable wipe, a diaper rash cream or balm, a baby powder, a diaper, a bib, a baby wipe, an oral care product, a tooth paste, an oral rinse, an tooth whitener, a denture adhesive, a chewing gum, a breath freshener, an orally dissolvable strips, a chewable candy, a hard candy, a hand sanitizer, an anti-inflammatory balm, an anti-inflammatory ointment, an anti-inflammatory spray, a health care device, a dental floss, a toothbrush, a tampon, a feminine napkin, a personal care product, a sunscreen lotion, a sunscreen spray, a wax-based deodorant, a glycol type deodorant, a soap type deodorant, a facial lotion, a body lotion, a hand lotion, a body powder, a shave cream, a bath soak, an exfoliating scrub, a foot cream, a facial tissue, a cleansing wipe, a fabric care product, a fabric softener, a fabric refresher, an ironing water, a liquid laundry detergent, a liquid dish detergent, an automatic dish detergent, a unit dose tablet or capsule, a scent booster, a drier sheet, a fine fragrance, a solid perfume, a powder foundation, a liquid foundation, an eye shadow, a lipstick or lip balm, an Eau De Toilette product, a deodorant, a rug deodorizer, a candle, a room deodorizer, a disinfectant, an aerosol antiperspirant, a stick antiperspirant, a roll-on antiperspirant, an emulsion spray antiperspirant, a clear emulsion stick antiperspirant, a soft solid antiperspirant, an emulsion roll-on antiperspirant, a clear emulsion stick antiperspirant, an opaque emulsion stick antiperspirant, a clear gel antiperspirant, a clear stick deodorant, or a spray deodorant ([0007], [0015]-[0018], [0022], [0036], [0068]-[0069], [0094], [0104]-[0108], [0125], [0244]-[0355]; claims 19-20).
Kielbania teaches a microcapsule comprising a core containing a hydrophobic material, and a polymeric shell containing an acetoacetyl polymer and polyhydroxyethylacrylate (a polyacrylate) (Abstract; columns 4, 7, and 10; Examples 1-4; claims 1-24).
Wu teaches a pH-sensitive coating comprising cellulose acetoacetate esters, in which the coating is used for microcapsulation of active agents such as medicaments, pesticides, herbicides, catalysts, cosmetics, laundry products, and colorants (Abstract; columns 1-6 and 8; claims 1-7). Wu teaches the pH-sensitive coating is used for controlled release of the active agents, as well as, as the coating provide a microcapsulated product that is stable against decomposition in the presence of incidental moisture (Abstract; columns 1-2, 4-5, and 8).
It would have been obvious to one of ordinary skill in the art to incorporate the cellulose acetoacetate ester as the acetoacetyl polymer in the shell of Kielbania, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Wu provided the guidance to do so by teaching that cellulose acetoacetate esters are suitable for microencapsulation of active agents such as medicaments, pesticides, herbicides, catalysts, cosmetics, laundry products, and colorants so as to provide a microencapsulated product that provides controlled release of the active agents, which is also the objective desired by the microcapsule of Kielbania, to provide controlled release microcapsulation product (Kielbania: Abstract; column 3, lines 1-25). Thus, an ordinary artisan would have looked to using other acetoacetyl polymer known for their suitable in microcapsulation product including the cellulose acetoacetate of Wu so as to provide a resultant microcapsule that provide a desired controlled release of the active agent, and achieve Applicant’s claimed invention with reasonable expectation of success.
It would have been obvious to one of ordinary skill in the art to incorporate the polymeric shell containing an acetoacetyl polymer such as cellulose acetoacetate and polyhydroxyethylacrylate (a polyacrylate) as the polymeric shell of the microcapsule of Postma, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Kielbania microcapsule formed from polymeric shell containing an acetoacetyl polymer and polyhydroxyethylacrylate (a polyacrylate) has a desired mechanical properties such as rigidity for easy rupturability, and is especially suitable for microcapsules that are used for scent delivery (Kielbania: column 10, lines 26-44), and Wu provided the guidance for using cellulose acetoacetate as a material for microcapsulation of active agents of Kielbania and Postma to provide a microencapsulation product that provide controlled release of the active agent, which is the type of microcapsule desired by Postma ([0002]). Thus, an ordinary artisan would have looked to incorporating the polymeric shell containing an acetoacetyl polymer such as cellulose acetoacetate and polyhydroxyethylacrylate (a polyacrylate) as the polymeric shell of the microcapsule of Postma, per guidance from Kielbania and Wu, with a reasonable expectation of success of producing microcapsule with desired mechanical properties and controlled release of active material, and achieve Applicant’s claimed microcapsule.
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 in art the 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 01/21/2026 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 rejections.
Applicant argues that neither Kielbania nor Postma disclose a core-shell microcapsule comprising a) an oil-based core comprising a hydrophobic material; and b) a polymeric shell comprising an acetoacetyl polymer, wherein the acetoacetyl polymer is selected from the group consisting of cellulose acetoacetate, starch acetoacetate, and mixtures thereof, as amended in claim 1. (Remarks, pages 5-7).
In response, the Examiner disagrees. The pending 103 rejection over claim 1 is based on the combined teachings of Kielbania and Wu. As discussed above in the pending 103 rejection, Kielbania teaches a microcapsule comprising a core containing a hydrophobic material, and a polymeric shell containing an acetoacetyl polymer and polyhydroxyethylacrylate (a polyacrylate), and Wu provided the guidance for incorporating the cellulose acetoacetate ester as the acetoacetyl polymer in the shell of Kielbania so as to provide a microcapsulation product that provide controlled release of the active material. See 103 rejection, pages 3-4 of this office action. Accordingly, the combined teachings of Kielbania and Wu do teach and render obvious the core-shell microcapsule of the claimed invention.
As a result, for at least the reason discussed above, claims 1, 2, 4, 5, 12, and 13 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections 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