FINAL 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/03/2026 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Status of the Claims
This action is in response to papers filed 02/10/2026 in which claims 2 and 9 were canceled; claim 15 was withdrawn; and claims 1, 5, 12, and 15 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1, 3-8, 10-14, and 16-20 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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, 3-5, 7-8, 10-14, 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 (a biopolymer) and an anionic polyelectrolyte such as gum acacia (gum Arabic – a biopolymer)” from Jerri meets the claimed “a coating comprising a first deposition aid and a second deposition aid, wherein the first and second deposition aids are different deposition aids,” “wherein the first and second deposition aids have opposite net charges at a pH when solubilized” and “wherein the second deposition aid comprises a biopolymer” as recited in claim 1. 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 1 is 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 claims 3-5, 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 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 and 10-11, 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, 3-5, 7-8, 10-14, 16 and 20 of the instant invention.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Applicant argues that Jerry does not disclose the use of a biopolymer for surface coating. (Remarks, page 7).
In response, the Examiner disagrees. As discussed above in the standing 102 rejection, the teaching of “a polyelectrolyte scaffolding coating containing a cationic polyelectrolyte such as chitosan (a biopolymer) and an anionic polyelectrolyte such as gum acacia (gum Arabic – a biopolymer)” from Jerri (Abstract; pages 3, 6, 8-16 and 26-32; claims 1, 5-11 and 14-15) meets the claimed “a coating comprising a first deposition aid and a second deposition aid, wherein the first and second deposition aids are different deposition aids,” “wherein the first and second deposition aids have opposite net charges at a pH when solubilized” and “wherein the second deposition aid comprises a biopolymer” as recited in claim 1. 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). See 102 rejection, pages 3-4 of this office action. See also page 16, lines 8-12 and page 27, lines 10-15 of Jerri, which particularly disclosed chitosan as one of the suitable cationic polyelectrolytes and gum acacia (gum Arabic) as one of the suitable anionic polyelectrolytes
As a result, for at least the reason discussed above, claims 1, 3-5, 7-8, 10-14, 16 and 20 remained rejected as being anticipated by the teachings from Jerri in standing 102 rejection as set forth in this office action.
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.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Applicant argues: “[a] skilled person without hindsight would also not have been provided with any motivation to substitute anionic low molecular surfactants with an oppositely charged biopolymer from Jerri in order to increase the deposition of a microcapsule with a cationic deposition aid..” (Remarks, page 8).
In response, the Examiner disagrees. It is noted that obviousness rejection over Jerri was for dependent claims 5 and 11. Claim 1 was anticipated by Jerri. As discussed above, in the 102 rejection, the teaching of “a polyelectrolyte scaffolding coating containing a cationic polyelectrolyte such as chitosan (a biopolymer) and an anionic polyelectrolyte such as gum acacia (gum Arabic – a biopolymer)” from Jerri (Abstract; pages 3, 6, 8-16 and 26-32; claims 1, 5-11 and 14-15) meets the claimed “a coating comprising a first deposition aid and a second deposition aid, wherein the first and second deposition aids are different deposition aids,” “wherein the first and second deposition aids have opposite net charges at a pH when solubilized” and “wherein the second deposition aid comprises a biopolymer” as recited in claim 1. 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). See 102 rejection, pages 3-4 of this office action. See also page 16, lines 8-12 and page 27, lines 10-15 of Jerri, which particularly disclosed chitosan as one of the suitable cationic polyelectrolytes and gum acacia (gum Arabic) as one of the suitable anionic polyelectrolytes.
Accordingly, dependent claims 5 and 11 remained alternatively rejected as obvious and unpatentable over the teachings Jerri for the reason of record, as discussed in the standing 103 rejection as set forth in this office action. See 103 rejection, pages 8-9 of this office action.
Claim(s) 1, 3-8, 10-14, 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, 3-5, 7-8, 10-14, 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.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Applicant argues that Bulgarelli does not cure the deficiencies of Jerri, as “Bulgarelli does not exemplify a first and second deposition aid having opposite net charges at a pH when solubilized for improving the deposition of the microcapsules.” (Remarks, bottom of page 8).
In response, the Examiner disagrees. As discussed above, the claimed a first and second deposition aid having opposite net charges at a pH when solubilized as recited in independent claim 1 was anticipated by the teachings from Jerri. See pages 3-4 and 6-7 of this office action, said pages being incorporated herein its entirety. Bulgarelli was used for teaching and rendering obvious dependent claims 6 and 17-19. See 103 rejection, pages 11-12 of this office action.
As a result, for at least the reason discussed above, dependent claims 6 and 17-19 remained rejected as being obvious and patentable over the combined teachings of Jerri and Bulgarelli, in the standing 103 rejection as set forth in this office action.
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, 3-8, 10-14, 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.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Applicant argues by requesting reconsideration of the double patenting rejection in view of the present response. (Remarks, page 9).
In response, the present response was not persuasive for all the reasons discussed above. See pages 3-13 of this office action. Accordingly, the double patent rejection as set forth in this office is maintained for the reason of record, pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
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.
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/DOAN T PHAN/Primary Examiner, Art Unit 1613
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