DETAILED 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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/08/2026 has been entered.
Status of Claims
Receipt of Remarks/Amendments filed on 07/08/2026 is acknowledged. Claims 3-6, 17, and 19 are canceled while claim 21 is new. Claims 1-2, 7-16, 18, and 20-21 are currently pending and are examined on the merits herein.
Priority
The instant application filed 09/29/2023, is a 371 filing of PCT/EP2022/060335, filed 04/20/2022, which claims priority to Provisional Application No. 63/177,938, filed 04/21/2021.
Claim Interpretation
Regarding the recitation of “for treating a keratinous surface” as recited in claim 1, this is simply a statement of intended use. Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). If the composition of the prior art is found to meet all of the structural limitations of claim 1, it will also be considered capable of performing the recited intended use. Since “the cosmetically acceptable excipient” is not defined in the claim or differentiated from the perfume, the water soluble matrix, or the alcohol, any of these defined ingredients may doubly read on the cosmetically acceptable excipient. An anhydrous composition is being interpreted as a composition comprising less than 5% by weight of water relative to the total weight of the composition, as defined in the instant specification and claim 9. A deodorant spray as recited in claim 14 may be broadly interpreted as any spray that removes or conceals unpleasant smells, especially bodily odors, as evidenced by the definition of a deodorant in the Oxford Language Dictionary (on record). As such, any spray that provides a masking perfume or fragrance will be interpreted as reading on a deodorant spray.
Withdrawn Rejections
Claims 1-2, 7-16, 18, and 20 were rejected under 35 U.S.C. 103 as being unpatentable over Hammer in view of Rinaudo. Upon further consideration this rejection is withdrawn.
Claims 1-2, 7-16, 18, and 20 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable copending Application No. 17/422,346 in view of Hammer. Upon further consideration this rejection is withdrawn.
Claims 1-2, 7-16, 18, and 20 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/250,443 in view of Hammer. Upon further consideration this rejection is withdrawn.
Claims 1-2, 7-16, 18, and 20 were rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. Upon further consideration this rejection is withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2, 7-14, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto, Y., et al. (JP H08208429 A, 08/13/1996, IDS dated 09/29/2023, ip.com translation used, on record), hereinafter Kimoto, in view of Rinaudo, E., et al. (WO 2020049192 A2, 03/12/2020, IDS dated 09/29/2023), hereinafter Rinaudo, as evidenced by Special Chem, Alcohol, Updated 07/02/2025. Retrieved 2025. (on record), hereinafter Special Chem.
Kimoto teaches a powder-containing aerosol composition containing a microencapsulated fragrance and a specific powder dispersant, having a persistent scent after use, and having extremely good powder dispersibility and usability (p. 2, para. 3).
Regarding claim 1: The microcapsules of Kimoto contain a water-soluble saccharide and an arbitrary fragrance in the form of liquid fine particles (p. 2, para. 7). Specifically, the perfume (citrus) is microencapsulated with 25 g of starch, 10 g of mannitol, and 1g of lactose (p. 8, para. 5), thereby reading on the instantly claimed perfume ingredient that is entrapped in a water-soluble matrix. In fact, Applicant’s specification explicitly states that "at least one perfume ingredient is entrapped in a water-soluble matrix" is synonymous with the at least one perfume ingredient being encapsulated in the water-soluble matrix material (p. 2, lines 11-13). Example 6 teaches a powder cologne spray comprising the microencapsulated fragrance (citrus) and 20% ethanol (p. 9, Ex. 6), which reads on the instantly claimed alcohol and its amount (i.e., 1-30 %). The composition comprises no water thereby reading on an anhydrous composition as claimed. Ethanol further reads on the cosmetically acceptable excipient, as does every other ingredient in Example 6 (i.e., talc, silica anhydride, butylene glycol, etc.) since the cologne spray is an example of a cosmetic product.
Regarding claim 2: The alcohol of Example 6 is ethanol (p. 9, Ex. 6).
Regarding claim 7: The liquid fine particles of Kimoto (p. 2, para. 7) read on a particulate form.
Regarding claims 9 and 21: As discussed above, the composition of Example 6 comprises no water (p. 9, Ex. 6), thereby reading on comprising less than 5% or 1% of water as claimed.
Regarding claim 10: Ethanol is an example of a preservative, as evidenced by Special Chem.
Regarding claim 11: The components of Example 6 are put in an aluminum aerosol can and then a valve is attached and liquified petroleum gas is pressure-filled (p. 9, Ex. 6). The liquified petroleum gas reads on a propellant.
Regarding claims 12-14: The powder cologne spray of Example 6 reads on a consumer product in the form of a spray, such as a deodorant spray.
The teachings of Kimoto differ from that of the instantly claimed invention in that Kimoto does not explicitly teach the water-soluble matrix as specifically defined in claims 1 and 18, nor the properties of claim 8.
Rinaudo discloses an encapsulated composition comprising at least one perfume and/or cosmetic ingredient that is entrapped in a matrix. The matrix comprises a starch and a hemicellulose (abstract; claim 1). It is known to employ encapsulated perfume compositions in leave-on personal care products, both to fragrance the human or animal body and to counteract malodor. Leave-on products are adapted for topical application to hair or skin of a subject and left on the body for a prolonged period of time (p. 1, lines 5-8). In order to control perfume release, encapsulated perfume compositions are used in such products (p. 1, lines 18-19). It has been found that addition of a hemicellulose to a starch matrix leads to a modification of the matrix, improving its perfume release properties under moisture and mechanical (e.g. friction) activation. The resulting perfume encapsulates are facile and cost-effective in manufacture (p. 2, lines 25-30). The examples show that addition of 1 wt.-% of tamarind kernel powder (i.e., hemicellulose) shows significantly increased friction activation (intensity) with respect to the benchmark (p. 11, lines 28-30) and that even after aging the samples for 1 month, superior olfactive performance of the encapsulated composition of the invention is observed as compared to conventional starch encapsulates pre and post activation (p. 13, lines 25-30; Table 2). The starch is a water-soluble modified starch selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch phosphate, dydroxypropyl distarch glycerol, acetylated distarch phosphate, starch acetate esterified with acetic anhydride, starch acetate esterified with vinyl acetate, acetylated distarch adipate, acetylated distarch glycerol, starch sodium octenyl succinate and mixtures thereof (p. 3, lines 3-7; claims 2-3). Such water-soluble modified starches read on the starches of instant claim 1. The hemicellulose is a xyloglucan obtainable from tamarind seeds (p. 3, lines 16-21; claim 4), which reads on b) of claim 1 and 18. The encapsulated composition additionally comprises a compound selected from the group consisting of maltodextrin, mannitol and mixtures thereof (claim 5), which reads on a) of claim 1. The encapsulated composition is in particulate form (claim 10), which reads on instant claim 7.
The process of preparing the encapsulated composition comprises the steps of: a) Preparing an emulsion comprising at least one perfume and/or cosmetic ingredient, a starch and a hemicellulose in water; b) Subjecting the emulsion to drying, in particular spray-drying or adsorption onto silicon dioxide, to obtain an encapsulated composition (p. 8-9, lines 29-2; claim 11). The drying method of Rinaudo would therefore yield the encapsulates anhydrous. Examples 2-4 teach encapsulated composition comprising perfume oil, starch sodium octenyl succinate, maltodextrin or mannitol, and tamarid kernel powder (i.e., hemicellulose), which reads on a perfume encapsulated by the water-soluble matrix of instant claim 1. Rinaudo further discloses a consumer product, preferably a personal care product, comprising the encapsulated composition (p. 10, lines 21-23; claim 14).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to replace the conventional starch encapsulate of Kimoto with the encapsulated composition of Rinaudo since such an encapsulate is known and routine in the art of fragranced personal care products. One of ordinary skill in the art could have performed simple substitution of one encapsulated perfume for another to predictably yield the instant invention. One of ordinary skill in the art would have been motivated to replace the encapsulated perfume of Kimoto with that of Rinaudo since the encapsulated composition of Rinaudo has superior olfactive performance as compared to conventional starch encapsulates following moisture and friction activation even after 1 month of aging. As such, one of ordinary skill in the art would have expected such a substitution to improve the perfume release properties of the composition as measured by intensity following moisture and mechanical (e.g. friction) activation. One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since both Kimoto and Rinaudo teach spray consumer products comprising starch encapsulated perfumes. The perfume encapsulates of Rinaudo read on the instantly claimed water-soluble matrix comprising an entrapped perfume ingredient as defined in claims 1, 7, and 18.
Regarding claim 8, because the water-soluble matrix comprising an entrapped perfume of Rinaudo is identical to the water-soluble matrix comprising an entrapped perfume as claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claims 1-2, 7-16, 18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto and Rinaudo, as applied to claims 1-2, 7-14, 18, and 21 above, and further in view of Hammer, J., (US 20120282190 A1, 11/08/2012, on record), hereinafter Hammer.
The combined teachings of Kimoto and Rinaudo are discussed above.
Kimoto further teaches that powder cosmetic fragrances are applied to the body or hair to give off a fragrance (p. 5, para. 2).
Rinaudo further teaches that it is known to employ encapsulated perfume compositions in leave-on personal care products, both to fragrance the human or animal body and to counteract malodor. Leave-on products are adapted for topical application to hair or skin (p. 1, liens 5-7).
The combined teaching of Kimoto and Rinaudo differ from that of the instantly claimed invention in that neither explicitly teach the method of claims 15-16 and 20.
Hammer relates to compositions, methods, and kits comprising a dry shampoo composition, and more particularly to a dry shampoo composition provided as an aerosol ([0001]). The aerosol dry shampoo composition comprises: a carrier material; a starch material; a clay material; and a propellant ([0004]; claim 1). Specifically, the starch material is aluminum starch octenylsuccinate; the carrier material comprises ethanol in a weight percentage between about 1% and about 20%; and the composition further comprises silica ([0005]-[0006]; claim 19). The composition may also comprise an additive such as a perfume (abstract; claims 12 and 15). Hammer teaches that an effective amount of the dry shampoo composition may be applied to hair, preferably dry hair. In some cases, the application of the shampoo may encompass massaging or working the shampoo in the hair such that all or most of the hair proximate the scalp is contacted ([0029]). Hammer does not teach a rinsing step and it is typical in the art that fragranced sprays are not rinsed. As such, the method of Hammer reads on the method steps of claims 15-16 and 20.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to use the combined spray of Kimoto and Rinaudo above, in the method of Hammer, since this a known and routine use of fragranced sprays in the art as taught by Kimoto, Rinaudo, and Hammer. Kimoto and Rinaudo both teach that it is known to apply cosmetic compositions comprising fragrance to hair. Hammer teaches a specific method of applying a spray cosmetic to scalp hair. The composition of Hammer and the combined composition of Kimoto and Rinaudo are both cosmetic sprays comprising modified starch, ethanol, silica, a propellant, and a fragrance. One of ordinary skill in the art could have therefore used the combined composition of Kimoto and Rinaudo according to the known method of Hammer to predictably yield the method of the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in using the combined composition in such a method since Kimoto and Rinaudo specifically teach that fragranced compositions are typically applied to hair.
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.
1. Claims 1-2, 7-16, 18, and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 14 of copending Application No. 17/422,346 in view of Kimoto and Hammer. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Kimoto and Hammer.
Copending claim 1 recites an encapsulated composition comprising at least one perfume and/or cosmetic ingredient that is entrapped in a matrix, wherein the matrix comprises a starch and a hemicellulose. The water- soluble modified starch is selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch phosphate, etc. Copending claim 5 recites wherein the encapsulated composition additionally comprises a compound selected from the group consisting of maltodextrin, mannitol and mixtures thereof. Copending claim 14 recites a consumer product comprising an encapsulated composition of claim 1. The copending claims differ from the instant invention in that they do not recite an anhydrous composition comprising an alcohol in an amount of 1-30 wt. % nor a method for treating a keratinous surface.
Kimoto teaches a powder-containing aerosol composition containing a microencapsulated fragrance and a specific powder dispersant (p. 2, para. 3). Powder cosmetic fragrances are applied to the body or hair to give off a fragrance (p. 5, para. 2). Example 6 teaches a powder cologne spray comprising the microencapsulated fragrance (citrus) and 20% ethanol (p. 9, Ex. 6), which reads on the instantly claimed alcohol and its amount (i.e., 1-30 %). The composition comprises no water thereby reading on an anhydrous composition as claimed.
Hammer relates to compositions, methods, and kits comprising a dry shampoo composition, and more particularly to a dry shampoo composition provided as an aerosol ([0001]). The aerosol dry shampoo composition comprises: a carrier material; a starch material; a clay material; and a propellant ([0004]; claim 1). The composition further comprises an additive, specifically a perfume (claims 12 and 15). An effective amount of the dry shampoo composition may be applied to hair, preferably dry hair. In some cases, the application of the shampoo may encompass massaging or working the shampoo in the hair such that all or most of the hair proximate the scalp is contacted ([0029]).
First, it would have been prima facie obvious to incorporating the encapsulated composition of the copending claims into the powder spray composition of Kimoto since it is known and routine for encapsulated perfumes to be used in fragranced spray products in the art. One of ordinary skill in the art could have added the encapsulated perfume of the copending claims to the composition of Kimoto via known techniques to predictably yield the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the encapsulated perfume composition of the copending claims into the aerosol dry shampoo composition of Kimoto since the copending claims recite a perfume encapsulated with starch and Kimoto encourages the addition of starch encapsulated perfumes.
It would have been further prima facie obvious to use the combined spray in the method of Hammer, since this a known and routine use of fragranced sprays in the art. Kimoto teaches that it is known to apply cosmetic compositions comprising fragrance to hair. Hammer teaches a specific method of applying a spray cosmetic to scalp hair. The composition of Hammer and the combined composition of the copending claims and Kimoto are both cosmetic sprays comprising modified starch, ethanol, silica, a propellant, and a fragrance. One of ordinary skill in the art could have therefore used the combined composition according to the known method of Hammer to predictably yield the method of the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in using the combined composition in such a method since Kimoto specifically teach that fragranced compositions are typically applied to hair.
This is a provisional nonstatutory double patenting rejection.
2. Claims 1-2, 7-16, 18, and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-9, and 22 of copending Application No. 18/250,443 in view of Kimoto and Hammer. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Kimoto and Hammer.
Copending claim 1 recites an encapsulated composition comprising a perfume composition that is entrapped in a water-soluble matrix. The water-soluble matrix comprises at least one material selected from the group consisting of starch, in particular water- soluble modified starch, maltodextrin, mannitol, chitosan, gum Arabic, alginate, cellulose, pectins, gelatin, polyvinyl alcohol and mixtures thereof (copending claim 5). The water-soluble matrix comprises a water-soluble modified starch selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch, etc. (copending claim 6). The water-soluble matrix additionally comprises a material selected from the group consisting of maltodextrin, mannitol and mixtures thereof and additionally comprises hemicellulose, particularly xyloglucan (copending claims 7-9). Copending claim 22 recites a consumer product comprising an encapsulated composition of the invention. The copending claims differ from the instant invention in that they do not recite an anhydrous composition comprising an alcohol in an amount of 1-30 wt. % nor a method for treating a keratinous surface.
First, it would have been prima facie obvious to incorporating the encapsulated composition of the copending claims into the powder spray composition of Kimoto since it is known and routine for encapsulated perfumes to be used in fragranced spray products in the art. One of ordinary skill in the art could have added the encapsulated perfume of the copending claims to the composition of Kimoto via known techniques to predictably yield the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the encapsulated perfume composition of the copending claims into the aerosol dry shampoo composition of Kimoto since the copending claims recite a perfume encapsulated with starch and Kimoto encourages the addition of starch encapsulated perfumes.
It would have been further prima facie obvious to use the combined spray in the method of Hammer, since this a known and routine use of fragranced sprays in the art. Kimoto teaches that it is known to apply cosmetic compositions comprising fragrance to hair. Hammer teaches a specific method of applying a spray cosmetic to scalp hair. The composition of Hammer and the combined composition of the copending claims and Kimoto are both cosmetic sprays comprising modified starch, ethanol, silica, a propellant, and a fragrance. One of ordinary skill in the art could have therefore used the combined composition according to the known method of Hammer to predictably yield the method of the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success in using the combined composition in such a method since Kimoto specifically teach that fragranced compositions are typically applied to hair.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 07/08/2026 have been fully considered but they are not persuasive.
(1) Applicant argues that Kimoto fails to disclose the water-soluble encapsulating matrix and features a) and b) of claim 1. The technical effect of these differences is that the water-soluble matrix according to the present claims is stable in the composition despite the presence of alcohol and there is no teaching in Rinaudo of employing such a composition in combination with alcohol in an amount of 10-30% (p. 5 or Remarks).
In response to this argument, Kimoto teaches alcohol from 1-30% and Rinaudo teaches the water soluble encapsulating matrix as claimed. The motivation to combine these limitations is discussed in the prior art rejection above. The technical effect that results from this combination (i.e., stability in the presence of alcohol) is not required to be taught by the prior art. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). In order to overcome the prima facie case with such an argument Applicant would have to show that the conventional encapsulates of Kimoto are unstable in the presence of alcohol and that the claimed encapsulates results in an unexpected improvement in stability when used with alcohol at the claimed amounts.
(2) Applicant argues that the entrapped perfume compositions of inventive Examples 1 and 3 perform very well in terms of both pre- and post-activation intensity after 8 hours and 24 hours. In contrast, Kimoto discloses that its fragrance was found to be persistent from immediately after use to only up to two hours later ([0041]). As such, Applicant asserts that Kimoto does not provide any effect after 8 or 24 hours and the composition of the present invention is superior to the composition of the prior art (p. 5-6 of Remarks). In response to this argument, it is noted that the explicit recitation of Kimoto is that “persistent fragrance was observed from immediately after use to 2 hours later” (p. 9, first paragraph). This recitation does not necessarily imply that fragrance was “only” present for 2 hours, rather that it was observed at 2 hours and that potentially, had observation continued the fragrance would have persisted. Furthermore, Applicants inventive Examples 1 and 3 are compared to perfume which is in its “free oil” state whereas Kimoto teaches encapsulated perfume. Thus, the cited examples are not considered a comparison to the closest prior art. Nevertheless, even if the encapsulated fragrance of Kimoto was not as persistent as the encapsulated fragrance as claimed, an increase in persistence would have been expected following the modification made obvious by Rinaudo for the reasons discussed in the rejection above and the response to argument (3) below.
(3) Applicant argues that the experimental data of the specification supports a finding of unexpected results, stating that prima facie obviousness can be overcome by showing “that the claimed invention exhibits some superior property that a person of ordinary skill in the art would have found surprising or unexpected”. Applicant further states that Applicant need only compare the claimed invention to the closest prior art reference, not to a combination of the prior art (p. 6-7 of Remarks).
Examiner agrees that a showing of superiority must only compare the closest prior art, in this case Kimoto, to the claimed composition. However, as stated above, the comparative examples in Tables 4 and 5 of the specification comprise free oil rather than the encapsulated perfume of Kimoto. Secondly, in order to show that superior results are “surprising and unexpected” the prima facie case as a whole must be considered. Since the prima facie case is based on the collective teachings of the prior art, then all of the prior art teachings relied on must be considered when deciding if the case is overcome. As discussed above, Rinaudo teaches its encapsulated composition to have superior olfactive performance as compared to conventional starch encapsulates following moisture and friction activation even after 1 month of aging. As such, one of ordinary skill in the art would have expected the substitution of conventional starch encapsulates with those of Rinaudo to improve the perfume release properties as measured by intensity following moisture and mechanical (e.g. friction) activation after up to 1 month of aging. As such, the increase in activation intensity in inventive Examples 1 and 3 after 8h and 24h of aging, is not an unexpected property. Furthermore, the impact of ethanol on stability is not clear since the specification examples compare two variables simultaneously (ethanol content and perfume format). As stated above, a comparative example would need to show that the encapsulated perfume of Kimoto is made unstable with the addition of alcohol whereas the inventive examples are not. For these reasons the prima facie case remains.
(4) Applicant’s arguments against Hammer have been considered but are moot because the new ground of rejection does not rely on this reference for any teaching or matter specifically challenged in the argument.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 9-5 (Flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
Prosecution Insights