Claims 1-20 are pending in this application.
DETAILED ACTION
Notice of Pre-AIA or AIA Status
1 The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2 The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 14 and 18 are rejected 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.
Claim 7 recites the limitation “wherein at least one of the following is true”. This limitation renders the claim indefinite?. Correction is required to make the claim in a proper form.
Claim 14 recites the limitation “wherein the second redox initiator”. There is insufficient antecedent basis for this limitation in the claim. Correction is required.
Claim 18 indefinites because the Markush language of the claim is improper. The phrase “selected from the group consisting of ….” Should be followed by “A, B, C and D” or followed by “A, B, C or D” not followed “A, B or C and D”. See MPEP 2173.05(h)(I).
Double Patenting
3 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 1-12 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-11 of copending Application No. 18/874,150 in view of Fernandez Preto et al. (US 20220152572 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application No. 18,874,150 teaches a composition comprising a population of delivery particles wherein the delivery particles comprises a core shell surrounding the core, wherein the core comprises a benefit agent and wherein the shell comprises a polymeric material that is the reaction product of a modified chitosan and a cross-linking agent and wherein the modified chitosan is formed by treating chitosan a redox initiator and wherein the redox initiator is selected from the group consisting of a persulfate, a peroxide and a combination thereof as claimed in claims 1-11 (see claims 1-3 and 5-11 of the copending application No. 18,874,150).
The instant claims differ from the teachings of claims 1-3 and 5-11 of the copending application No. 18/874,150) by reciting a composition comprising a treatment adjunct and a population of delivery particles.
Fernandez Preto et al. (US’ 572 A1) in analogous art of treatment formulation, teaches a composition comprising a treatment adjunct and a population of delivery particles (see abstract) and wherein the treatment composition comprises adjuncts include anionic surfactants, conditioning actives and deposition aids as claimed in claim 18 (see page 8, paragraph, 0104 and claim 25).
Therefore, in view of the teaching of Fernandez Preto et al. (US’ 572 A1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be motivated to modify the composition taught by claims of the copending application No. 18,874,150, by incorporating the adjunct as taught by Fernandez Preto et al. (US’ 572 A1) to arrive at the claimed invention. This is an obvious formulation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
4 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.
5 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.
Claims 1-2, 5-7 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fernandez Preto et al. (US 20220152572 A1).
Fernandez Preto et al. (US’ 572 A1) teaches a composition comprising a treatment adjunct and a population of delivery particles, wherein the delivery particle comprises a core and a wall encapsulated said core, wherein the core comprises a benefit agent and a partitioning modifier’ the wall is formed by a radical polymerization reaction between: a) a water-soluble polysaccharide (chitosan) (see page 3, paragraph, 0039) and a radical initiator (redox initiator) of persulfate as claimed in claims 1 and 12 (see claim 1), wherein the radical initiator (redox initiator) is ammonium persulfate and sodium persulfate as claimed in claim 2 (see pages 4-5, paragraph. 0062), wherein the chitosan solution is prepared by mixing chitosan in hydrochloric acid (strong acid) solution at 25 OC as claimed in claim 5 (see page 23, paragraph, 0261) and wherein the chitosan also prepared by mixing with acetic acid (weak acid) as claimed in claim 6 (see page 23, paragraph, 0270), wherein the chitosan has a weight average molecular weight from about 80 kDa to about 200 kDa which within the claimed range as claimed in claim 7 (see page 3, paragraph, 0039), wherein the benefit agent is a fragrance (perfume) material having a logP of from about 2.5 to about 4.0 as claimed in claim 11 (see 5, paragraph, 0072), wherein the particles size characterized by a volume-weighted medium particle size from about 30 microns to about 50 microns as claimed in claim 13 (see page 7, paragraph, 0090), wherein the water-soluble polysaccharide (chitosan) as a shell has a biodegradability in 60 days above 60% as tested with DECD 301 B test as claimed in claim 17 (see page 3, paragraph, 0045), wherein the polysaccharide polymers (chitosan) such as cationic cellulose polymers reacted with trimethyl ammonium substituted epoxide as claimed in claims 15-16 (see page 12, paragraph, 0146), wherein the adjunct include anionic surfactants, conditioning actives and deposition aids as claimed in claim 18 and 19 (see page 8, paragraph, 0104 and claim 25) and wherein the treatment composition is a hair care composition as claimed in claim 20 (see page 8, paragraph, 0100).
The instant claims differ from the teaching of Fernandez Preto et al. (US’ 572 A1) by reciting a shell comprises a polymeric material that is the reaction of product of a modified chitosan and a cross-linking agent.
However, Fernandez Preto et al. (US’ 572 A1) teaches a composition comprising novel delivery particles produced from cross-linking biodegradable polymers in order to enhance the bioavailability of the wall and the biodegradability of the overall delivery particle (see page 1, paragraph, 0011).
Therefore, in view of the teaching of Fernandez Preto et al. (US’ 572 A1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be motivated to modify the composition of Fernandez Preto et al. (US’ 572 A1) by incorporating the cross linking polymers in the formation of shell to arrive at the claimed invention. Such a modification would have been obvious based on the teaching of Fernandez Preto et al. (US’ 572 A1) that suggests the use of cross-linking biodegradable polymer in the formation of the delivery particles in order to enhance the bioavailability of the wall and the biodegradability of the overall delivery particles, and, thus, the person of the ordinary skill in the art would expect such a composition to have similar results to those claimed, absent unexpected results.
Regarding the limitations of claim 14, Fernandez Preto et al. (US’ 572 A1) teaches a composition comprising a treatment adjunct and a population of delivery particles, wherein the delivery particle comprises a core and a wall encapsulated said core, wherein the core comprises a benefit agent and a partitioning modifier’ the wall is formed by a radical polymerization reaction between: a) a water-soluble polysaccharide (chitosan) (see page 3, paragraph, 0039), at least one multifunctional (meth)acrylate monomer (cross-linking agent) and a radical initiator (redox initiator) of persulfate (see claim 1) Therefore, Fernandez Preto et al. (US’ 572 A1), clearly teaches a treatment composition comprising the claimed delivery particles and, thus, even though product-by-process claims are limited by and defined by the process, 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 art product was made by a different process. In re Thorpe, 777 F.2d 695 698, 227 USPQ 964, 966 (Fed. Cir. 1985). (see MPEP 2113).
6 Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Fernandez Preto et al. (US 20220152572 A1) in view of WU et al. (WO 2021116306 A1).
The disclosure of Fernandez Preto et al. (US’ 572 A1) as described above, does not teach the weight ratio between the redox initiator and the chitosan as claimed.
WU et al. (WO’ 306 A1) in analogous art of hybrid microcapsules formulation, teaches formulation of microcapsules preparation comprises chitosan in the amount of 0.7 wt.% and Benzoyl peroxide in the amount of 0.15 wt.% (see page 37, Table 10). WU et al. (WO’ 306 A1) also teaches polymeric shell comprising chitosan particles (see abstract) and wherein the polymeric shell comprises polysulfonamide (comprising sulfur atoms) as claimed in claim 4 (see page 14, line 5).
Therefore, in view of the teaching of WU et al. (WO’ 306 A1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to optimize the weight ratio between the chitosan and peroxide (redox initiator) in order to get the maximum effective amounts of these ingredients that form the particles and would expect such a composition to have similar property to those claimed, absent unexpected results.
7 Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fernandez Preto et al. (US 20220152572 A1) in view of Feng L (US 20210252469 A1).
The disclosure of Fernandez Preto et al. (US’ 572 A1) as described above, does not teach a composition comprising cross-linking agent comprises polyisocyanate as claimed in claim 8.
However, Fernandez Preto et al. (US’ 572 A1) suggests the use of delivery particles produced from cross-linking biodegradable polymers (see page 1, paragraph, 0011).
Feng L (US’ 469 A1) in analogous art of forming microcapsules population of core and shell, teaches a reaction product of a polyisocyanate (cross-linking agent) and a chitosan that yields a microcapsule having improved release characteristics with enhanced degradation characteristics in test method OECD 301 B as claimed in claim 8 (see abstract) and wherein the weight ratio of chitosan in the reaction to the polyisocyanate is 1:2 to 10:1 or 1:1 to 7:1 as claimed in claim 9 (see claim 13) and wherein the shell comprises 1-15 wt.% shell as claimed in claim 10 (see claim 14).
Therefore, in view of the teaching of Feng L (US’ 469 A1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to be motivated to modify the microcapsules by incorporating the polyioscyanate as a cross-linking agent in the delivery particles of Fernandez Preto et al. (US’ 572 A1) to arrive at the claimed invention. Such a modification would have been obvious based on the teaching of Feng L (US’ 469 A1) that suggests that the reaction product of a polyisocyanate (cross-linking agent) and a chitosan yields a microcapsule having improved release characteristics with enhanced degradation characteristics in test method OECD 301 B (see abstract), and, thus, the person of the ordinary skill in the art would expect that the use of polyisocyanate as a cross-linking agent as taught by Feng L (US’ 469 A1), would be similarly useful and applicable to the analogous delivery particles taught by Fernandez Preto et al. (US’ 572 A1), absent unexpected results.
Conclusion
8 Any inquiry concerning this communication or earlier communications from the examiner should be directed to EISA B ELHILO whose telephone number is (571)272-1315. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM.
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/EISA B ELHILO/Primary Examiner, Art Unit 1761