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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a 371 of PCT/EP22/58044 filed 03/28/2022.
This application also claims foreign benefit of EPO EP21166229.1 filed 03/31/2021.
Accordingly, claims 1-20 of this application are afforded the effective filing date of 03/31/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/14/2023 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Election/Restrictions
Applicant’s election of Group I, claims 1-14 and 16-20, drawn to a core-shell microcapsule slurry, a perfuming composition containing the core-shell microcapsule slurry, and a perfumed consumer product containing at least one core-shell microcapsule, in the reply filed on 10/16/2025 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Claims 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/16/2025.
Status of the Claims
Claims 1-20 are pending in this instant application, of which claim 15 is withdrawn at this time as being drawn to non-elected group/invention.
Claims 1-14 and 16-20 are examined herein on the merits for patentability.
Claim Objections
Claim 5 is objected to because of the following informalities: please amend “teh” in line 2 of the claim to “the”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: it is suggested that “a.” “b.” “c.” … etc, in the claim be amended to “(a), (b), (c)” … etc., or separate each element of the claim by a line indentation. It is noted that each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). See MPEP §608.01(m). Appropriate correction is required.
Claim 12 is objected to because of the following informalities: please amend “a core-shell microcapsule slurry…” to “the core-shell microcapsule slurry…” so that there is proper antecedent basis to core-shell microcapsule slurry of claim 1. Appropriate correction is required.
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.
Claim(s) 1, 12-14, 16, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berthier et al (US 2018/0178183 A1; previously cited).
Regarding claim 1, Berthier teaches microcapsule slurry comprising microcapsules containing a polyurea-based polymeric shell and a core comprising a perfume, wherein the microcapsules are coated with a composition containing a first cationic polymer and a second cationic polymer, and wherein the coated microcapsules have a high rate of deposition when applied on a substrate (Abstract; [0011]-[0041], [0045]-[0100]; claims 1-19). Berthier teaches the first cationic polymer and the second cationic polymer are different cationic polymers ([0024]-[0032]; claims 1-6), thereby meeting the claimed “wherein the first and second deposition aids are different deposition aids” as recited in claim 1.
Regarding claim 12, Berthier teaches a perfuming composition comprising a microcapsule slurry, a perfuming co-ingredient (an active ingredient), perfumery carrier, and a perfumery adjuvant (claims 15-18; [0078]-[0100]). Berthier teaches the microcapsule slurry comprises microcapsules containing a polyurea-based polymeric shell and a core comprising a perfume, wherein the microcapsules are coated with a composition containing a first cationic polymer and a second cationic polymer, and wherein the first cationic polymer and the second cationic polymer are different cationic polymers (Abstract; [0011]-[0041], [0045]-[0100]; claims 1-19).
Regarding claims 13 and 14, Berthier teaches a perfumed consumer product in the form of a home- or personal-care product comprising a personal care or home care active base, and the microcapsules containing a polyurea-based polymeric shell and a core comprising a perfume, wherein the microcapsules are coated with a composition containing a first cationic polymer and a second cationic polymer, and wherein the first cationic polymer and the second cationic polymer are different cationic polymers (Abstract; [0011]-[0041], [0045]-[0100]; claims 1-19).
Regarding claims 16 and 20, as discussed above, Berthier teaches the core of the microcapsule contains a perfume.
As a result, the aforementioned teachings from Berthier are anticipatory to claims 1, 12-14, 16, and 20 of the instant invention.
Claim(s) 1-5, 7-14, 16 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jerri et al (WO 2018/115330 A1), and as evidenced by the instant specification.
Regarding claim 1, Jerri teaches a core-shell microcapsule slurry comprising at least one microcapsule having an oil-based core containing a hydrophobic active ingredient (preferably a perfume), a polymeric shell, and a polyelectrolyte scaffolding coating containing a cationic polyelectrolyte such as chitosan and an anionic polyelectrolyte such as gum acacia (gum Arabic) (Abstract; pages 3, 6, 8-16 and 26-32; claims 1, 5-11 and 14-15). It is noted that the teaching of “a polyelectrolyte scaffolding coating containing a cationic polyelectrolyte such as chitosan and an anionic polyelectrolyte such as gum acacia (gum Arabic)” from Jerri meets the generically claimed “a coating comprising a first deposition aid and a second deposition aid, wherein the first and second deposition aids are different deposition aid,” as evidenced by the instant specification and instant claims 5 and 11 (respectively), which defined chitosan as a first deposition aid having a positive net charge and gum Arabic as a second deposition having a negative net charge (Specification: page 25, lines 18-19; and page 29, lines 10-11).
Regarding claims 2-5, as discussed above, Jerri teaches the polyelectrolyte scaffolding coating contains a cationic polyelectrolyte such as chitosan (a biopolymer) and an anionic polyelectrolyte such as gum acacia (gum Arabic – a biopolymer). As evidenced by the instant specification and instant claims 5 and 11 (respectively), chitosan was defined as a first deposition aid having a positive net charge and gum Arabic was defined as a second deposition having a negative net charge (Specification: pages 24-25 and 29). Thus, the claimed features or properties of “the first and second deposition aids have opposite net charges at a pH when solubilized” as recited in claim 2 and “the first deposition aid has a positive charge at a neutral or acidic pH” as recited in claim 3 are inherent to the structurally same chitosan and gum acacia (gum Arabic), respectively, of Jerri, as structure dictates properties regarding any properties allegedly claimed. It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 7, Jerri teaches the polyelectrolyte scaffolding contains a cationic polyelectrolyte such as chitosan (a biopolymer) and an anionic polyelectrolyte such as gum acacia was coated on the polymer shell (pages 14-16 and 26-27), thereby meeting the claimed “the first deposition aid is not crosslinked with the polymeric shell.”
Regarding claims 8-11, as discussed above, Jerri teaches the polyelectrolyte scaffolding coating contains a cationic polyelectrolyte such as chitosan (a biopolymer) and an anionic polyelectrolyte such as gum acacia (gum Arabic – a biopolymer and a polysaccharide). As evidenced by the instant specification and instant claim 11 (respectively), gum Arabic was defined as a second deposition having a negative net charge (Specification: page 29, lines 10-11). Thus, the claimed feature or property of “the second deposition aid has a negative charge at neutral or basic pH” as recited in claim 8 is inherent to the structurally same gum acacia (gum Arabic) of Jerri, as structure dictates properties regarding any properties allegedly claimed. It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 12, Jerri teaches a perfuming composition comprising the core shell microcapsule slurry of claim 1, a perfuming co-ingredient (an active ingredient), a perfuming base/carrier, and a perfumery adjuvant (pages 28-32; claims 14 and 15).
Regarding claims 13 and 14, Jerri teaches a perfumed consumer product in the form of a home- or personal-care product comprising a personal care or home care active base, and the core-shell microcapsule of claim 1 (pages 28-32; claims 14 and 15).
Regarding claims 16 and 20, as discussed above, Jerri teaches the core of the microcapsule contains a perfume.
As a result, the aforementioned teachings from Jerri are anticipatory to claims 1-5, 7-14, 16 and 20 of the instant 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.
Claim(s) 1, 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jerri et al (WO 2018/115330 A1).
The core-shell microcapsule slurry of claim 1 is discussed above from Jerri, said discussion being incorporated herein in its entirety.
Assuming arguendo that the aforementioned teaching from Jerri do not anticipate instant claims 5 and 11, said claims 5 and 11 alternatively would be considered obvious under the meaning of 35 USC 103(a) because Jerri teaches chitosan from a short list of cationic polyelectrolyte and gum acacia (gum Arabic) from a short list of anionic polyelectrolyte (page 12, lines 22-27 and page 16, lines 8-12). Thus, it would have been obvious to one of ordinary skill in the art to select chitosan as the cationic polyelectrolyte and gum acacia (gum Arabic) as the anionic polyelectrolyte and arrive at Applicant’s claimed first deposition aid and second deposition aid, as recited in claims 5 and 11, respectively. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because as discussed above, Jerri taught chitosan as a cationic polyelectrolyte from a short list of known cationic polyelectrolytes suitable for coating on microcapsule and gum acacia (gum Arabic) as an anionic polyelectrolyte from a short list of known anionic polyelectrolytes suitable for coating on microcapsule and thus, [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
From the teachings of the reference, 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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-14, and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jerri et al (WO 2018/115330 A1), and further in view of Bulgarelli et al (WO 2020/058044 A1).
The core-shell microcapsule slurry, perfuming composition, and perfumed consumer product of claims 1-5, 7-14, 16 and 20, respectively, are discussed above from Jerri, said discussion being incorporated herein in its entirety.
Regarding claims 6 and 17-19, Bulgarelli teaches microcapsules comprising a core and a shell around the core, wherein the shell of the microcapsule is coated with chitosan, a known deposition aid, for enhancing the deposition of the microcapsule (Abstract; pages 1, 4-5, and 19-24; claims 1 and 6). Bulgarelli teaches the chitosan that is coated on the shell of the microcapsule is a chitosan having a molecular weight from 3,000 g/mol (Dalton) to about 1,000,000 g/mol (Dalton), particularly, 30,000 g/mol, 200,000 g/mol, and 1,700,000 g/mol, as these chitosan having molecular weights of 30,000 g/mol, 200,000 g/mol, and 1,700,000 g/mol provide improve deposition property to the microcapsules when coated on the microcapsules (Abstract; pages 1, 4-5, and 19-24; claims 1 and 6).
It would have been obvious to one of ordinary skill in the art to select and use a chitosan having a molecular weight from 3,000 g/mol (Dalton) to about 1,000,000 g/mol (Dalton), particularly, 30,000 g/mol, 200,000 g/mol, and 1,700,000 g/mol, as the chitosan material coated on the microcapsules of Jerri, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Bulgarelli provided the guidance for selecting and using a chitosan having a molecular weight from 3,000 g/mol (Dalton) to about 1,000,000 g/mol (Dalton), particularly, 30,000 g/mol, 200,000 g/mol, and 1,700,000 g/mol, as these chitosan having molecular weights of 30,000 g/mol, 200,000 g/mol, and 1,700,000 g/mol provide improve deposition property to the microcapsules when coated on the microcapsules. Thus, given that the objective of Jerri is also to produce coated microcapsules with improved deposition (Jerri: page 3), it would have been obvious to select and use chitosan material known to be deposition aid, particularly, chitosan material having molecular weights of 30,000 g/mol, 200,000 g/mol, and 1,700,000 g/mol, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the 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 1-14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18282412 (reference application) in view of Jerri et al (WO 2018/115330 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘412 significantly overlap with the subject matter of the instant claims i.e., a core-shell microcapsule slurry comprising at least one core-shell microcapsule, wherein the at least one core-shell microcapsule comprises an oil-based core comprising a hydrophobic material (perfume), a polymeric shell, and a coating comprising a functionalized chitosan derivative; a perfuming composition containing the core-shell microcapsule slurry; and a perfumed consumer product containing the at least one core-shell microcapsule.
While the core-shell microcapsule in the claims of the copending application ‘412 does not contain a second deposition aid in the coating, it would have been obvious to include a second deposition aid such as gum acacia (gum Arabic) in the coating of the core-shell microcapsule of the copending application ‘412 in view of the guidance from Jerri, which teaches a core-shell microcapsule slurry comprising at least one microcapsule having an oil-based core containing a hydrophobic active ingredient (preferably a perfume), a polymeric shell, and a polyelectrolyte scaffolding coating containing a cationic polyelectrolyte such as chitosan and an anionic polyelectrolyte such as gum acacia (gum Arabic) (Jerri: Abstract; pages 3, 6, 8-16 and 26-32; claims 1, 5-11 and 14-15).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18282412 in view of Jerri.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
Pertinent prior art: Smets et al (US 2015/0099680 A1), teaching chitosan, carboxymethyl cellulose, gum Arabic, pectin, and sodium alginate are known deposition aids suitable for coating core-shell microcapsules.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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