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 .
DETAILED ACTION
Claims 1-20 are pending. Note that, Applicant’s amendment and arguments filed July 1, 2026, have been entered.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 4/1/26 have been withdrawn:
The rejection of claims 1-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Feng (US 2021/0339217).
With respect to independent, instant claim 1, Feng microcapsules are chitosan urea and encapsulate a benefit agent. The process comprises combining an adjunct material formed of microcapsules formed by a water phase comprising hydrolyzing chitosan in an acidic medium at a pH of 6.5 or less for an extended period and combining with a polyisocyanate. The chitosan in the hydrolyzing step is depolymerized to an average size of 95kDa or less. See para. 36. The reaction product of the hydrolyzed chitosan and polyisocyanate yields a microcapsule having improved release characteristics, with enhanced degradation characteristics in OECD test method 301B. See Abstract. The polyisocyanate can be selected from the group consisting of a polyisocyanurate of toluene diisocyanate, a trimethylol propane adduct of toluene diisocyanate and a trimethylol propane adduct of xylylene diisocyanate, methylene diphenyl isocyanate, toluene diisocyanate, tetramethylxylidene diisocyanate, naphthalene-1,5-diisocyanate, and phenylene diisocyanate. See para. 38. The benefit agent is selected from the group consisting of perfume, fragrance, etc. See para. 41. The core-shell microcapsules can have a mean particle size of from 1 to 100 microns and the microcapsule can be selected to be cationic. See para. 42. The microcapsules may encapsulate a partitioning modifier in addition to the benefit agent. Non-limiting examples of partitioning modifiers include isopropyl myristate, mono-, di-, and tri-esters of C.sub.4-C.sub.24 fatty acids, castor oil, mineral oil, soybean oil, hexadecanoic acid, methyl ester isododecane, isoparaffin oil, polydimethylsiloxane, brominated vegetable oil, and combinations thereof. See para. 61.
When combined with an adjunct material, the combination with the microcapsules can comprise a wide range of novel articles of manufacture. The adjunct material can be one or more of a carrier, a binder, an adhesive, a structurant, a surfactant or deposition aid.
Preferably, the adjunct material is selected from the group consisting of builders, chelating agents, dye transfer inhibiting agents, dispersants, enzymes, and enzyme stabilizers, catalytic materials, bleach activators, hydrogen peroxide, sources of hydrogen peroxide, preformed peracids, polymeric dispersing agents, clay soil removal/anti-redeposition agents, brighteners, suds suppressors, dyes, hueing dyes, perfumes, perfume delivery systems, structure elasticizing agents, carriers, structurants, hydrotropes, processing, aids, solvents in addition to said solubilizing agent, a fabric softener active selected from the group consisting of a silicone polymer, a polysaccharide, a clay, a fatty ester, a dispersible polyolefin, a polymer latex and mixtures thereof, pigments, and mixtures thereof, preferably said composition comprises an organic acid, preferably citric acid and/or lactic acid, hydrogenated castor oil, ethoxylated polyethleneimines, preferably PEI 600 EO 20 and/or PEI 600, an enzyme, preferably a cold water amylase, cold water protease and/or xylogluconase. See para. 105-106. The microcapsules of the invention can be incorporated dry, as an aqueous slurry, as a coating or as a gel into or onto a variety of commercial products to yield novel and improved articles of manufacture. Articles of manufacture can be selected from the group consisting of a soap, a surface cleaner, a laundry detergent, a fabric softener, a shampoo, a textile, a paper towel, an adhesive, etc. See para. 107. “Cleaning and/or treatment compositions” means products comprising dry or fluid laundry detergents, fabric enhancers, laundry and/or rinse additives, dishwashing detergents, hard surface cleaning and/or treatment compositions, toilet bowl cleaners that may or may not be contained in a unit dose delivery product all for consumer, agricultural, industrial or institutional use. See para. 109. The cleaning composition comprises, based on total cleaning and/or treatment composition weight with from 0.001% about to about 25%, preferably from about 0.01% to about 10%, more preferably from about 0.05% to about 5%, most preferably from about 0.1% to about 0.5% of the microcapsules. The cleaning and/or treatment composition comprises: (a) a surfactant selected from the group consisting of nonionic surfactants, anionic surfactants, cationic surfactants, ampholytic surfactants, zwitterionic surfactants, semi-polar nonionic surfactants and mixtures thereof, etc. See para. 132-134.
Exemplary liquid rinse-off personal care compositions can include an aqueous carrier, which can be present at a level of from about 5% to about 95%, or from about 60% to about 85%. The aqueous carrier may comprise water, or a miscible mixture of water and organic solvent. Non-aqueous carrier materials can also be employed. See para. 255. Specifically, ‘217 teaches liquid laundry detergent compositions 0-30 Alkyl (ethoxy) sulfate, 0-30 Linear alkyl benzene sulfonic acid, 0-30 HSAS, 0-15 Nonionic Surfactant, 0-8 Amine Oxide, 0-10 Citric Acid, 0-10 Lactic Acid, 0-5 C12-C10 Fatty Acid, 0-3 Protease (55.3 mg/g), 0-2 Amylase (25.4 mg/g), 0-5 Borax, 0-0.5 Calcium Formate, 0-5 Microcapsules, Water and Solvent To 100 and pH 3.5-8.5. See para. 281.
A water phase is prepared by dispersing 12.40 g ChitoClear (chitosan) into 350.00 g water while mixing in a jacketed reactor. The pH of the water phase is then adjusted to 4.7 using concentrated HCl under agitation. The water phase temperature is then increased to 85° C. over 60 minutes and then held at 85° C. fora period of time to hydrolyze the ChitoClear. The water phase temperature is then reduced to 25° C. after the hydrolyzing step over a period of 90 minutes. An oil phase is prepared by mixing 87.50 g perfume oil and 22.50 g isopropyl myristate together along with 15.00 g Takenate D-110 (aliphatic polyisocyanate) at room temperature. The oil phase is added to the water phase under high shear milling to obtain an emulsion. The emulsion is heated to 40° C. over 30 minutes and held for 60 minutes. The emulsion is then heated to 85° C. and maintained at this temperature for 6 hours while mixing. The capsules formed at this pH condition had a free oil of 0.090% and a one week leakage of 3.604%. See paras. 84-100. Note that, the Examiner asserts that the delivery particles (i.e., microcapsules) as specifically taught by Feng would inherently have the same Volume-Weighted Ductile Energy, specific number of delivery particles as characterized as Completely Ductile particles, and/or the specific number of delivery particles as characterized as Single Rupture particles as recited by the instant claims because Feng teaches microcapsules containing the same core and shell as recited by the instant claims. Feng discloses the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Feng anticipate the material limitations of independent, instant claim 1 and the respective dependent claims.
Alternatively, even if the broad teachings of Feng are not sufficient to anticipate the material limitations of the instant claims, it would have been nonetheless obvious to one of ordinary skill in the art to arrive at the claimed Volume-Weighted Ductile Energy, specific number of delivery particles as characterized as Completely Ductile particles, and/or the specific number of delivery particles as characterized as Single Rupture particles properties of the delivery particles (i.e., microcapsules) in order to provide the optimum cleaning and fragrance properties to the delivery particles because Feng teaches that the amounts and types of required components, cores, and shells added and used in the delivery particles (i.e., microcapsules) and the composition may be varied.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-20 of copending Application No. 18/522451 (reference application); claims 1-15 of 18/522424; claims 1-17 of 18/522443; claims 1-20 of 18/522477; or claims 1-15 of 18/522458. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 and 7-20 of copending Application No. 18/522451 (reference application); claims 1-15 of 18/522424; claims 1-17 of 18/522443; or claims 1-20 of 18/522477; encompass the material limitations of the instant claims.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a treatment adjunct, a population of delivery particles, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because claims 1-4 and 7-20 of copending Application No. 18/522451 (reference application); claims 1-15 of 18/522424; claims 1-20 of 18/522443; or claims 1-20 of 18/522477 suggest a composition containing a treatment adjunct, a population of delivery particles, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,624,316. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of US Pat. No. 12,624,316 encompass the material limitations of the instant claims.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a treatment adjunct, a population of delivery particles, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because claims 1-14 of US Pat. No. 12,624,316 suggest a composition containing a treatment adjunct, a population of delivery particles, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 102 using Feng, Applicant states that it is not clear that the microcapsules of the prior art will necessarily result in the claimed characteristics; for specifics, please see the Examples of Applicant's filing where different process formation techniques result in different microcapsule characteristics (outside Applicant's claimed ranges) of the same composition microcapsules. Also, Applicant states it is clear that once an Applicant can show that the characteristic does not necessarily flow from the composition of the prior art, it is no longer the Applicant's burden to prove the characteristics of the prior art differ from the characteristics as claimed, and rather, it is the Office's (or the party interested in showing inherencv) burden to prove that the characteristics necessarily flows.
In response, note that, the Examiner asserts that the delivery particles (i.e., microcapsules) as specifically taught by Feng would inherently have at least two of the same Volume-Weighted Ductile Energy, specific number of delivery particles as characterized as Completely Ductile particles, and/or the specific number of delivery particles as characterized as Single Rupture particles as recited by the instant claims because Feng teaches microcapsules containing the same core and shell as recited by the instant claims. Note that, a rejection under 35 USC 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic; once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112(V). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2112.01(I). Note that, a rejection under 35 USC 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the Examiner may make a rejection under both 35 USC 102 and 103, expressed as a 102/103 rejection. See MPEP 2112(III). Note that, once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference. See MPEP 2112(V).
In the instant case, the Examiner has provided technical/scientific reasoning tending to show inherency and Applicant has provided no data or evidence showing the compositions (i.e., microcapsules) as specifically taught by Feng do not inherently have the same properties as recited by the instant claims; therefore, in the absence of such data or evidence, the Examiner asserts that the delivery particles (i.e., microcapsules) as specifically taught by Feng would inherently have the same properties as recited by the instant claims. Thus, the Examiner asserts that the teachings of Feng are sufficient to anticipate claimed invention under 35 USC 102.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/August 28, 2026
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