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 of Group I, claims 1-8, 10-13 and 16-20 and the species glycidyl trimethylammonium chloride1, in the reply filed on 1/30/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9, 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/30/26.
Priority
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/15/23 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 10 and 12 are objected to because of the following informalities: they contain amendment markings but are indicated as “(Previously Presented)”.
In claim 1:
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In claim 10:
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In claim 12:
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See MPEP 714(c). This appears to be an inadvertent oversight by Applicant as the amendment was introduced on 9/15/23. In the interest of stakeholder interaction and compact prosecution, the Examiner is not sending a Notice of non-Compliant Claim Amendment. Rather, the Examiner is alerting Applicant to the issue. Appropriate correction is required.
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 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.
Claims 1-8, 10-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US20200046628; IDS filed 9/15/23) and Jerri et al. (US20180078468) and Holappa et al. (WO2007034032) as evidenced by Dhifi et al. (Medicines 2016;3(25):16 pages).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims, for example:
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Examiner comment: the limitation of “a functionalized chitosan derivative” is defined in the specification (Page 24, lines 19-29). The functionalizing component is the elected species of glycidyl trimethylammonium chloride.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a personal care composition research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from personal care compositions, perfume and fragrance art, materials related to perfume and fragrance art and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 6 and 10-11, Jones et al. teach personal care compositions (Abstract) comprising a particles comprising chitosan salt at the outer surface of the particle and a fragrance benefit agent within an inner shell and the outer shell comprising the chitosan-amino acid salt such as chitosan-arginine salt (Claims 1-6 and 10), thus having a coating of arginine functionalized chitosan derivative, which the Examiner interprets as defining a core-shell structure. The inner shell to which the chitosan is bonded can be polymeric (Claims 7-8 and 10). The particles have an average diameter of 0.5 to 20 microns (Claim 9), which makes the particles core-shell microcapsules. The arginine can be considered a cationic agent.
Regarding claim 1, Jones et al. teach citrus oils [0025] and essential oils for the fragrances [0026].
Regarding claims 1-3, 8 and 16-17, Jones et al. teach grafting the functionalized chitosan-arginine complex via chemical functionalization to a slurry of melamine formaldehyde particles (diameter of 20 µm polymeric shell) containing 40%, 45.3% perfume loading where the chitosan has 75-85% degree of deacetylation to make MF-graft-Chitosan-Arg concentrated slurry with the chitosan complex grafted into MF capsules (Example 1, [0079-0088]), thus providing a slurry of core-shell microcapsules. Grafting reads on forming a covalent bond with chitosan. (See claim 10 and [0020]). No crosslinking was done.
Regarding claims 3, 5 and 19, Jones et al. teach using chitosan of an average molecular weight of at least 10,000 Daltons, more preferably in the range of from 30,000 to 1,000,000 Daltons and the deacetylation degree of the chitosan component is at least 65%, more preferably from 70 to 95%, even more preferably from 72 to 90% and most preferably from 75 to 85%. [0018]. The range of at least 10,000 Daltons is open ended and encompasses the claimed range and the range from 30000 to 1000000 Daltons overlaps the claimed range of between 800 kDa and 5 MDa.
Regarding claim 10, claim 10 is a product-by-process claim. Please note that in product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” See MPEP 2113 Product-by-Process Claims [R-08.2017] I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS “[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).
Regarding claims 11-13 and 20, Jones et al. teach making a dispersion of the perfume containing particles in water base [0090], which reads on a perfumery carrier and/or perfumery base and/or personal care base to make a perfuming composition/consumer product. Optional component are not required.
Regarding claims 1, 2, 6-8, 10-13, 16 and 20 Jerri et al. teach in claim 1:
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Jerri et al. teach that the oil comprises a perfume in a perfuming composition with perfumery carrier and perfumery adjuvants (Claims 6 and 17) and consumer products in the form of a home or personal care product (Claims 18-19). The perfumery carrier serves as a base for the personal care or home care active. Jerri et al. teach that the cationic polymer is quaternized chitosan (Claim 4). Jerri et al. teach cationic polymers with hydroxypropyl trimethylammonium chloride functionalization for example [0071]. Jerri et al. teach both crosslinked and uncrosslinked embodiments [0180, 0190] and the chitosan does not appear to be crosslinked to the polymeric shell.
Regarding claims 1, 2, 6 and 7, Holappa et al. teach methods for adding quaternary ammonium groups onto chitosan for the enhanced aqueous solubility, usability and activity (Page 1, lines 5-10). Holappa et al. teach: “Quaternary chitosan derivatives can be prepared either by quaternizing the amino group already present in the polymer or by adding a quaternary ammonium moiety or moieties.” (Page 2, lines 18-20), which reads on chemical/biotechnological functionalization. Holappa et al. teach: “The quaternary ammonium moiety can be inserted into polymer structures via various spacers. iV-[(2-hydroxy-3-trimethylammonium)propyl]chitosan chloride can be obtained by reacting chitosan with glycidyltrimethylammonium chloride.” (Page 3, lines 15-18). Holappa et al. also teach: “N[(2-hydroxy-3-trimethylammonium)propyl]chitosan has been studied for different applications such as in cosmetics”. (Page 3, lines 22-23).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Jones et al. is that Jones et al. do not expressly teach an oil based core comprising a hydrophobic material or a home care and/or fabric care composition. However, 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 particles of Jones et al. with an oil-based core comprising a hydrophobic material, as suggested by Jerri et al., and to have a home care and/or fabric care composition and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because of the following reasons. First, Jones et al. teach and suggest that the particles contain a benefit agent that is a fragrance (Claim 6; [0022]) known to the person skilled in the art of perfuming [0023] and citrus oils [0025] and essential oils for the fragrances [0026]. The essential oils naturally contain numerous hydrophobic compounds (See Abstract and Figure 1 of Dhifi et al. “Essential oils, which are complex mixtures of volatile compounds particularly abundant in aromatic plants”) and read on an oil based core comprising a hydrophobic material. Additionally, Jones et al. teach that the encapsulated fragrance can be a lipid, which is by nature hydrophobic [0028-0029]. Secondly, the art of Jerri et al. teaches that such perfume containing particles have an oil-based core that comprises a perfume (Claims 1, 6 and 17). In view of the combined references, the ordinary artisan would have a reasonable expectation of success in modifying the art of Jones et al. to have a core-shell microcapsule slurry comprising an oil-based core comprising a hydrophobic material. How the artisan uses the perfumed product as a home care composition and/or a fabric care composition are intended uses of the composition and implicit in the composition of Jones et al. An intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
The difference between the instant application and Jones et al. is that Jones et al. do not expressly teach the functional component of glycidyl trimethylammonium chloride. However, Jerri et al. teach that in perfume core-shell microcapsule slurries, the artisan can employ quaternized chitosan and through the teachings of Holappa et al. it is known that quaternized chitosan includes adding a quaternary moiety or moieties to the chitosan backbone such as reaction with glycidyl trimethylammonium chloride (elected species).Therefore, the ordinary artisan, before the effective filing date, would be motivated to functionalize chitosan with at least glycidyl trimethylammonium chloride for at least the enhanced aqueous solubility, usability and activity, as suggested by Holappa et al., for use in the personal care composition of Jones et al. The ordinary artisan would have a reasonable expectation of success because Jerri et al. teach similar perfume compositions with quaternized chitosan, which would be a functional equivalent. Thus, in view of the combined references, a core-shell microcapsule slurry comprising an oil-based core comprising a hydrophobic material, a polymeric shell and a coating comprising a functionalized chitosan derivative with glycidyl trimethylammonium chloride is obvious to the ordinary artisan.
The difference between the instant application and Jones et al. is that Jones et al. do not expressly teach wherein the functionalized chitosan derivative is functionalized to a degree from 10% to 100% of residual amino groups or wherein the functionalized chitosan derivative is functionalized to a degree of at least 40% of residual amino groups. As noted above, the chitosan of Jones et al. is functionalized but Jones et al. is silent to what degree the functionalization might be. The Examiner has two positions. First, the claimed functionalization degree value is implicit in the disclosure of Jones et al. Where patentability rests upon a property of the claimed material not disclosed within the art, the USPTO has no reasonable method of determining whether there is, in fact, a patentable difference between the prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Therefore, where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the USPTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of his claimed product. Id. Secondly, through the teachings of Holappa et al., the degree of functionalization can be optimized by the ordinary artisan from 0.01 to 1 (Claims 1-4 of Holappa et al.), which means: “A degree of substitution of, for example, 0.01 for a substituent means that there is on an average 1 of said substituents per 100 monomer units in the polymer, and a degree of substitution of 1 means that there is on an average one substituent in each monomer unit in the polymer.” (Page 7, lines 24-27) where: “the optimal degree of substitution depends on the applications in which these quaternary polymer derivatives are used.” (Page 8, lines 2-3). Thus, this is a result effective variable routinely optimized by the ordinary artisan for the desired application. Consequently, absent unexpected results, the claimed functionalization degree is not considered inventive without more.
Claims 1-8, 10-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jerri et al. (US20180078468) and Jones et al. (US20200046628; IDS filed 9/15/23) and Holappa et al. (WO2007034032).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The references of Jerri et al., Jones et al. and Holappa et al. are discussed in detail above.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
Jerri et al. do not expressly teach functionalization with glycidyl trimethylammonium chloride. However, as stated above Jerri et al. do teach and suggest quaternized chitosan and functionalization with cationic polymers with hydroxypropyl trimethylammonium chloride functionalization for example [0071] and Holappa et al. guide the artisan to glycidyl trimethylammonium chloride to provide quaternary ammonium groups onto chitosan for the enhanced aqueous solubility, usability and activity. Consequently, it is obvious to employ the glycidyl trimethylammonium functionalized chitosan in the core-shell microcapsule slurry comprising an oil-based core comprising a perfume of Jerri et al. for those desirable benefits as a home care or personal care product with a reasonable expectation of success. It is the Examiner’s position that home care product would render obvious fabric care to the ordinary artisan.
Jerri et al., as modified by Holappa et al., do not expressly teach the degree of deacetylation or the molecular weight of the chitosan. However, Jones et al. teach using chitosan of an average molecular weight of at least 10,000 Daltons, more preferably in the range of from 30,000 to 1,000,000 Daltons and the deacetylation degree of the chitosan component is at least 65%, more preferably from 70 to 95%, even more preferably from 72 to 90% and most preferably from 75 to 85%. [0018]. The range of at least 10,000 Daltons is open ended and encompasses the claimed range and the range from 30000 to 1000000 Daltons overlaps the claimed range of between 800 kDa and 5 MDa. Thus, the ordinary artisan would have a reasonable expectation of success in using a chitosan with the claimed molecular weight range and the claimed degree of deacetylation in the absence of evidence to the contrary.
The difference between the instant application and Jerri et al. is that Jerri et al. do not expressly teach wherein the functionalized chitosan derivative is functionalized to a degree from 10% to 100% of residual amino groups or wherein the functionalized chitosan derivative is functionalized to a degree of at least 40% of residual amino groups. However, Jerri et al. as modified by Holappa et al. is aware that the degree of functionalization can be optimized by the ordinary artisan from 0.01 to 1 (Claims 1-4 of Holappa et al.), which means: “A degree of substitution of, for example, 0.01 for a substituent means that there is on an average 1 of said substituents per 100 monomer units in the polymer, and a degree of substitution of 1 means that there is on an average one substituent in each monomer unit in the polymer.” (Page 7, lines 24-27) where: “the optimal degree of substitution depends on the applications in which these quaternary polymer derivatives are used.” (Page 8, lines 2-3). Thus, this is a result effective variable routinely optimized by the ordinary artisan for the desired application. Consequently, absent unexpected results, the claimed functionalization degree is not considered inventive without more.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined 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 at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
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 1-8, 10-13 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10-14 and 16-20 of copending Application No. 18550549. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending has common inventors and assignee and is directed to a core-shell microslurry comprising an oil-based core comprising a hydrophobic material, a polymeric shell (Claim 1) with a functionalized chitosan derivative (Claim 5) of 3000 to 5000000 Da MW (Claims 6 and 17-19) that is not crosslinked (Claim 7) that is a perfumery composition with perfumery carrier and a perfumery base and optional adjuvant (Claim 12) or perfumed consumer product with personal care, home care and/or fabric care base (Claims 13-14) with a perfume (Claims 16 and 20). The copending does not expressly teach the components of claim 7. However, the scope of the functionalized chitosan includes the components of instant claim 7 (Specification page 27, lines 13-17). MPEP 804 states: “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim.” Similarly, the scope of the chitosan deacetylation is taught to be “the chitosan or chitosan of the chitosan derivative has a degree of deacetylation (DD%) of 50% or more. In a particular embodiment, the chitosan or chitosan of the chitosan derivative has a degree of deacetylation of 60% or more, preferably of 70% or more or more preferably of 80% or more (Specification page 25, lines 23-27). The scope of the functionalized chitosan derivative is functionalized to a degree from 10% to 100% of the amino groups (Specification page 26, lines 23-24).
Accordingly, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Y Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
1 The species election was provided by Erin Florek on March 03, 2026 over the phone.