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 .
Status of Claims
Receipt of Remarks/Amendments filed on 03/03/3026 is acknowledged. Claims 1, 5, 9, 23, and 41 are amended and claims 4, 6, 8, 12, 14-21, 25-30, 35-40, 42-46, 48, and 50 are canceled. Claim 51 is new. Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 41, 47, 49, and 51 are currently pending and are examined on the merits herein.
Priority
The instant application filed 09/22/2023, is a 371 filing of PCT/EP2022/057874, filed 03/25/2022, which claims foreign priority to EP21172852.2, filed 05/07/2021, and also claims priority to U.S. Provisional Application No. 63/167,186, filed 03/29/2021.
Withdrawn Rejections
Claims 5, 7, 23, and 40-41 were rejected under 35 U.S.C. 112(b), Applicants’ amendments to these claims and cancellation of claim 40 have overcome the rejection and the rejection is withdrawn.
Claims 1, 13, 31, 33-34, 47, and 49 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (US 20190255502 A1). Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1, 9, 13, 31, 33, 47, and 49 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (US 20160354749 A1). Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1, 31, and 34 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bouquerand et al.. Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 13, 31, 33-34, 47, and 49 were rejected under 35 U.S.C. 103 as being unpatentable over Wu, Y., et al. (US 20190255502 A1) in view of Berthier. Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 9-11, 13, 33-34, 40-41, 47, and 49 were rejected under 35 U.S.C. 103 as being unpatentable over Wu, Berthier and Sadeghpour. Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 9-11, 13, 31-34, 40-41, 47, and 49 were rejected under 35 U.S.C. 103 as being unpatentable over Wu, Berthier, Sadeghpour, and Yang. Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 13, 22-24, 31, 33-34, 47, and 49 were rejected under 35 U.S.C. 103 as being unpatentable over Wu, Berthier, and Humblebee. Applicants’ amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 40-41, 47, and 49 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/552,042. Applicants’ amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 40-41, 47, and 49 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/260,304 in view of Berthier. Applicants’ amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 40-41, 47, and 49 were rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 12,403,443 in view of Berthier. Applicants’ amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claim Objections
Claim 51 is objected to because of the following informality: The claim recites both “dipropylene glycol” and “DIPG”, which are synonymous. Please replace DIPG with the full name: “dipropylene glycol” for consistency. Appropriate correction is required.
The following grounds of rejection are new, as necessitated by amendment:
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.
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.
1. Claims 1-3, 5, 7, 9-11, 13, 31, 33-34, 41, 47, and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, Y., et al. (US 20190255502 A1, 08/22/2019, IDS dated IDS dated 09/22/2023), hereinafter Wu, in view of Paula A. et al. (2018). Multi-modal stabilisation of emulsions using a combination of hydrophilic particles and an amino acid, Colloids and Surfaces A: Physicochemical and Engineering Aspects, Volume 538, p. 765-773 (PTO-892), hereinafter Paula, and Berthier, D., et al. (US 20190233765 A1, 08/01/2019, on record), hereinafter Berthier.
Wu discloses a process for the preparation of formaldehyde-free organic-inorganic microcapsules, the microcapsule slurry obtained by such a process, and perfuming compositions and consumer products containing them ([0009-[0014]). The microcapsule slurry is formed by 1) suspending in water inorganic particles consisting of non-chemically surface modified inorganic particles to form a water phase; 2) admixing at least one polyisocyanate with a hydrophobic active ingredient-containing oil to form an oil phase; 3) adding the oil phase to the water phase and mixing them to form an oil-in-water Pickering emulsion ([0009])-[0012]). The hydrophobic active ingredient is a perfume ([0051]-[0052]), also known as a perfume oil ([0053]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. Solvents includes isopropyl myristate, benzyl benzoate, and other oily solvents. The solvent is preferably not an alcohol ([0055]). The non-chemically surface modified inorganic particles act to stabilize the Pickering emulsion ([0075]). As such, the microcapsule slurry of Wu reads on an emulsion that comprises a water phase that reads on (a) of claim 1; an oil phase comprising perfume oil and an oily solvent which reads on (b) of claim 1; and a stabilizer in the form of inorganic particles which reads on (c) of claim 1.
The non-chemically surface modified inorganic particles may be chosen from silica, silicates, titanium dioxide, zinc oxide, aluminosilicates, calcium carbonate, and more ([0071]). Specific examples teach the preparation of microcapsules with pyrogenic (i.e., fumed) silica particles (Ex. 3), kaolin clay particles (Ex. 4), and calcium carbonate particles (Ex. 5), all of which read on the stabilizer of claim 9. The total amount of such inorganic particles present in the aqueous phase is preferably between 0.2 and 10 wt % ([0079]).
There is no mention of including C1-C4 alcohols in the aqueous phase of Wu, nor do any of the examples comprise C1-C4 alcohols. As such, the water phase reads on being free of C1-C4 alcohols as recited in claim 13.
The microcapsule slurry is in the form of an oil-in-water Pickering emulsion, which reads on claim 31. The oil phase concentration is preferably comprised between 20% and 40% of the Pickering emulsion ([0045]), which falls within the range of claim 33. The hydrophobic active ingredient (i.e., the perfume oil) represents between 20 to 50% by weight relative to the total weight of the dispersion as obtained after step 3) (i.e., the Pickering emulsion) ([0056]), which falls withing the range of claim 34.
Wu teaches a perfuming composition comprising the perfume microcapsule slurry above (i.e., the Pickering emulsion), wherein the oil-based core comprises a perfume among other ingredients ([0100]-[0103]; claim 13). Wu also discloses a liquid consumer product comprising the microcapsule slurry as defined above along with other ingredients ([0109]-[0113]; claim 14). Non-limiting examples of suitable perfumery consumer product include a perfume, such as a fine perfume, a body-care product, or an air care product ([0129]), all of which read on the consumer product of claim 49.
Once the Pickering emulsion is formed, the pH value is preferably adjusted to a value above 8.5 and preferably not higher than 11 ([0033]).
The teachings of Wu differ from that of the instant invention in that Wu does not explicitly disclose a surface modifying agent, as recited in claims 1 and 41, and its amount as recited in claim 47, nor the amount of the particles as recited in claims 10-11. Lastly, Wu does not explicitly teach an embodiment with an oil-miscible solvent in combination with a co-solvent and their amounts, as defined in instant claims 2-3, 5, and 7.
Paula discloses the formation of emulsions using non-traditional particle stabilizers: hydrophilic silica particles which themselves are stabilized in suspension by L-lysine (abstract). Many types of inorganic and organic colloidal particles have been used to stabilize emulsion droplets. Colloidal silica (SiO2) particles are often used, as they can be easily prepared with variable size and surface functionalization. In addition, they are chemically inert, mechanically stable, and most importantly they are biocompatible (Intro, para. 1). The use of chemically-bonded surface modifiers on silica particles is perhaps the most common means to overcome the known barriers of hydrophilicity and surface charge. A different approach involves the use of surfactants in combination with hydrophilic silica particles. It is well known that surfactants decrease the oil/water (o/w) interfacial tension and consequently, the energy of adsorption of particles to the interface will decrease proportionally. It has also been proven that surfactants may modify the wettability of the particles and promote their adsorption at the oil/water interface. The synergy between particle and surfactant mixtures has been exploited to make particle-stabilized emulsions. Many commercial emulsion formulations contain mixtures of surfactant, amino acids or proteins and particles (Intro, para. 3). Such surfactants and amino acids read on the surface modifying agent of claim 1.
The focus of Paula is the use of l-lysine as the surfactant in combination with hydrophilic silica particles as emulsion stabilizers. L-lysine adsorbs on the surface of SiO2 particles at pH around 9.7 (Intro, para. 4). The stabilization of oil-in-water emulsions using 15 nm l-lysine stabilized silica particles (termed SiO2@Lysine NPs hereafter) is investigated, particularly focusing on the synergistic effect of having both l-lysine and silica present in the system. The adsorption of l-lysine onto the silica surface is pH dependent, leading up to the investigation of the stability of the emulsions at different pH values (Intro, final para.). Experiments were undertaken in which the concentration of l-lysine was fixed at 0.09 %wt. and the concentration of SiO2@Lysine NPs was varied from 2.0 %wt. to 0.5 %wt. The aqueous phase contained exact volumes of 2.1 %wt. SiO2@Lysine NPs (containing 0.09 %wt. of l-lysine) and additions of volumes of 0.09 %wt. l-lysine solution, bringing the final volume of the aqueous phase to 2 mL. The final pH of the system was then adjusted to pH ≈ 9.0 and pH ≈ 3.0 (Section 3.3, para. 12). All the experimental evidence suggests that it is possible to use SiO2@Lysine NPs as stabilizers for hexadecane-in-water Pickering emulsions at two extreme pH values. The presence of l-lysine in the system allows the stabilization of the emulsions at high pH, while at acidic pH it appears that the stabilization is due to the SiO2 NPs acting as stabilizers (Conclusion). The lysine of Paula reads on the surface modifying agent of claims 1 and 41, while the SiO2 nanoparticles read on they hydrophilic silica of claim 9.
Berthier discloses the preparation of melamine-formaldehyde free microcapsules along with the microcapsules obtained by said process, and perfuming compositions and consumer products comprising said capsules (abstract). A melamine-formaldehyde free poly(urea-urethane) core-shell microcapsules slurry is prepared by 1) admixing an oil, preferably comprising a perfume or flavour, with at least one polyisocyanate; 2) preparing a water phase under acidic conditions, 3) adding the oil phase to the water phase to form an oil-in-water dispersion; [0012] 4) performing a curing step to form a microcapsule slurry; [0013] 5) optionally adding at least one cationic copolymer to the capsule slurry ([0008]-[0013]). The oil phase is formed by admixing at least one hydrophobic active ingredient with at least one polyisocyanate ([0040]). According to a particular embodiment the hydrophobic active ingredient is a perfume also known as a perfume oil ([0044]-[0045]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. The solvent is preferably not an alcohol. Examples of such solvents are isopropyl myristate, benzyl benzoate, and more ([0047]). Specifically, Berthier discloses a composition of perfume oil which comprises perfume ingredients dissolved in the carrier solvents previously discussed. The composition comprises various perfume ingredients along with benzyl benzoate (1.63 g) and isopropyl myristate (11.66 g) (table 40), which read on the oil-miscible co-solvent and solvent of claims 1-3, 5, and 7, respectively.
First, 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 modify the Pickering emulsion of Wu by adding a small amount of surfactant or amino acid to the emulsion as taught by Paula, thereby yielding the emulsion of instant claim 1. The use of surfactants and amino acids in combination with hydrophilic silica particles to stabilize emulsions is known and routine in the art as taught by Paula. One of ordinary skill in the art could have combined a surfactant or amino acid, as taught by Paula, with the particle stabilized Pickering emulsion of Wu, according to known techniques to predictably yield an stable emulsion. It would have been further obvious to select the silica/lysine system of Paula since such as system is known and effective for stabilizing oil-in-water Pickering emulsions similar to those of Wu, thereby yielding the emulsion of instant claims 9 and 41. One of ordinary skill in the art would have been motivated to use the silica/lysine system of Paula since: 1) colloidal silica (SiO2) particles are known and effective particle stabilizers that are chemically inert, mechanically stable, and biocompatible; and 2) the presence of l-lysine with SiO2 particles improves the stabilization of emulsions at high pH, as taught by Paula.
Regarding the amount of silica particles and lysine to include in the emulsion of Wu, Wu teaches that the amount of inorganic particles present in the aqueous phase is preferably between 0.2 and 10 wt%, as discussed above. Paula also teaches amounts at which to incorporate lysine and silica in combination. While the amount of particles and the surfactant (i.e., lysine) do not explicitly read on the amounts recited in claims 10-11 and 47, the concentration of the particles and surfactant is directly related to the stability of the emulsion as discussed above. Thus, it would have been prima facie obvious to optimize the amount of particles and surfactant within the emulsion to arrive at the instantly claimed amount since the optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Wu teaches non-chemically surface modified inorganic particles, specifically fumed silica, as stabilizers in o/w Pickering emulsions having a pH value above 8.5. Paula teaches a non-chemical method of adsorbing lysine to hydrophilic silica particles at high pH for stabilizing o/w Pickering emulsions.
Secondly, it would have been prima facie obvious to one of ordinary skill in the art to incorporate the teachings of Berthier into the above emulsion by using isopropyl myristate and benzyl benzoate as carrier solvents for the perfume ingredients, thereby yielding the emulsion of claims 2 and 5. Both Wu and Berthier disclose microcapsule slurries comprising an oil and water phase with a perfume oil as the hydrophobic active ingredient. Both Wu and Berthier teach that the perfume oil may be dissolved in solvents such as isopropyl myristate and benzyl benzoate, with Berthier using both in a specific example. It would have been obvious to combine the teachings of Wu and Berthier to dissolve the perfume oil of Wu in isopropyl myristate (i.e., an oil-miscible solvent) and benzyl benzoate (i.e., an oil-miscible co-solvent), as specifically taught by Berthier, since both Wu and Berthier teach microcapsule slurries used to incorporate perfumes into consumer products. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art would have had a reasonable expectation of success since Wu and Berthier both teach dissolving perfume ingredients in solvents such as isopropyl myristate and benzyl benzoate.
Berthier teaches gram amounts of isopropyl myristate and benzyl benzoate, as discussed above. However, the instantly claimed weight % ranges of claims 3 and 7 would have been prima facie obvious to one of ordinary skill in that art since it is well within the abilities of an ordinary artisan to optimize the amount of perfuming solvents in the composition depending on the amount of perfuming ingredients being incorporated in the final product and the desired olfactory profile. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of the oil-miscible solvent and co-solvent through no more than routine experimentation using the amounts taught by Berthier as a starting point. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
2. Claims 1-3, 5, 7, 9-11, 13, 31-34, 41, 47, and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, Paula, and Berthier, as applied to claims 1-3, 5, 7, 9-11, 13, 31, 33-34, 41, 47, and 49 above, and further in view of Yang, Y., et al. (2017). An Overview of Pickering Emulsions: Solid-Particle Materials, Classification, Morphology, and Applications. Front Pharmacol. 8:287, (on record), hereinafter Yang.
The combined teachings of Wu, Paula, and Berthier are discussed above.
The combined teachings of Wu, Paula, and Berthier differ from that of the instant invention in that Wu, Paula, nor Berthier explicitly disclose wherein the water phase is droplets dispersed in the oil phase as recited in claim 32.
Yang teaches that the formation of an oil-in-water (O/W) Pickering emulsion or water-in-oil (W/O) Pickering emulsion is determined by the wettability of solid particles at the oil–water interface: if one of the liquids wets solid particles more than the other one, the better wetting liquid becomes the continuous phase and the other becomes the dispersed phase. O/W emulsions will come into being if the three-phase contact angle θ (angle at the three-phase boundary of solid particles, continuous phase and dispersed phase) is less than 90° (e.g., silica, clay), and W/O emulsions should form if θ > 90° (e.g., carbon black) (Intro, para. 2). Thus, the stability, type (O/W or W/O), morphology, and characters of Pickering emulsions are highly depended on the properties of solid particles. Therefore, it is significant to choose the right kind of nano/micro-particles, in order to obtain the specific type, character and application of Pickering emulsions. Silica is one of the most extensively studied solid particles as Pickering emulsifiers because they are easily obtained and modified, especially regarding to the study of phase inversion of emulsions. Massive experiments indicated that unmodified silica tends to stabilize O/W Pickering emulsions due to the hydrophilicity resulting from Si-OH groups on particle surface, whereas hydrophobically modified silica preferentially stabilizes W/O Pickering emulsions (Silica, para. 1). Factors that influence silica-stabilized Pickering emulsions, such as pH and salt concentration, have been investigated systematically. Given the fact that pure silica is too hydrophilic to stabilize Pickering emulsion at basic condition because of surface charge, and that particles are likely to aggregate at lower pH, proper molecules should be linked to bare silica so that stabilizing ability is improved while remaining modest surface charge. In one study, a fatty acid with certain biocompatibility, oleic acid, was chosen to solve the problem and led to relatively stable Pickering emulsions with different size range (Sadeghpour et al., 2013) (Silica, para. 2). Simple phase-inversion of Pickering emulsions from O/W type to W/O type can also be realized by adding acid or base to tune the hydrophilicity of solid particles locating at oil–water interface, and in turn bringing about inversion of Pickering emulsions (Catalysts’ Separation and Extraction, para. 2).
Thus, it would have been obvious to modify the combined teachings of Wu, Paula, and Berthier with those of Yang before the effective filing date of the claimed invention by inverting the oil-in-water emulsion of Wu, Paula, and Berthier to form a water-in-oil emulsion as taught by Yang to yield the instantly claimed emulsion of claim 32. It would have been obvious to form a water-in-oil emulsion as taught by Yang from the combined oil-in-water emulsion of Wu, Paula, and Berthier since water-in-oil emulsions, stabilized with silica particles, are known and effective emulsions in the art and combining prior art elements according to known methods to yield predictable results is considered prima facie obvious. Given the teachings of Yang, it is well within the abilities of an ordinary artisan to optimize the hydrophobicity of the silica particles in the emulsion, either by surface modification or pH adjustment, in the composition depending on the desired emulsion type (O/W or W/O) of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed emulsion type (i.e., water dispersed in oil) and oil phase amount through no more than routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since Yang teaches that phase inversion is made possible by varying the wettability of solid particles at the oil–water interface, and Paula discloses methods of varying particle wettability above. All of the references discuss particle-stabilized Pickering emulsions.
3. Claims 1-3, 5, 7, 9-11, 13, 22-24, 31, 33-34, 41, 47, and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, Paula, and Berthier as applied to claims 1-3, 5, 7, 9-11, 13, 31, 33-34, 41, 47, and 49 above, and further in view of Humblebee & Me (2021), Guar Gum, (on record), hereinafter Humblebee.
The combined teachings of Wu, Paula, and Berthier are discussed above.
Wu further teaches optionally adding to the slurry, a polymer selected from the group consisting of a non-ionic polysaccharide such as locust bean gum, xyloglucan, guar gum, hydroxypropyl guar, hydroxypropyl cellulose and hydroxypropyl methyl cellulose ([0081]). The amount of polymer may be between about 0% and 5% w/w, or even 0.1% and 2% w/w relative to the total weight of the slurry (p. 23, lines 25-28).
The combined teachings of Wu, Paula, and Berthier differ from that of the instantly claimed invention in that none explicitly teach the limitations of claims 22-24 in a specific embodiment of the invention.
Humblebee discloses guar gum, which is a thickening gum extracted from the guar bean. It is used at an amount of < 2% and is soluble in water. Guar gum is used to thicken water-based products. It can be used as the sole gelling/thickening agent in gels or body washes, or can be incorporated at lower amounts (typically 0.5% or less) to thicken and stabilize emulsions. Its strengths include being inexpensive, natural, and vegan (p. 1).
It would have been prima facie obvious to one of ordinary skill in the art to incorporate guar gum (i.e., a natural gum) as a thickening agent in the combined emulsion of Wu, Paula, and Berthier since guar gum is a known and effective thickening agent in the art as taught by Humblebee, to yield the instantly claimed invention of claims 22-23. One of ordinary skill in the art would have been motivated to use the guar gum of Wu or Humblebee as a thickening agent in the combined emulsion since it acts as a stabilizer and is known for being inexpensive, natural, and vegan as taught by Humblebee. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating guar gum into the combined emulsion since Wu teaches that the microcapsule slurry may comprise a non-ionic polysaccharide such as guar gum.
Regarding the amount of guar gum to incorporate in the emulsion, Wu teaches that polymers such as guar gum are present at 0.1% and 2% w/w relative to the total weight of the slurry. More specially, Humblebee teaches 0.5% or less for thickening and stabilizing emulsions. Thus, it would have been prima facie obvious to incorporate guar gum at 0.5% or less in the combined emulsion of Wu, Paula, and Berthier when using the guar gum as a thickener/stabilizer. While 0.5 or less does not fall exactly within the range of claim 24, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Wu welcomes the addition of non-ionic polysaccharides such as guar gum, which are known and routine in the art of emulsions as taught by Humblebee.
4. Claims 1-3, 5, 7, 9-11, 13, 31, 33-34, 41, 47, 49, and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, Paula, and Berthier as applied to claims 1-3, 5, 7, 9-11, 13, 31, 33-34, 41, 47, and 49 above, and further in view of EcoLink. (2018). Glycol DPM in Perfume by Industrial Degreasers.(PTO-892), hereinafter EcoLink.
The combined teachings of Wu, Paula, and Berthier are discussed above.
Wu further teaches that for compositions which comprise both a perfumery carrier and a perfumery co-ingredient, other suitable perfumery carriers than those previously specified, can be glycol ethers and glycol ether esters such as those known under the trademark Dowanol® (origin: Dow Chemical Company) ([0104]).
The combined teachings of Wu, Paula, and Berthier differ from that of the instant invention in that Wu, Paula, nor Berthier explicitly disclose wherein the co-solvent is a glycol ether selected form those recited in claim 51.
EcoLink teaches that Glycol DPM or Dipropylene Glycol Methyl Ether is often utilized as a solvent and an industrial cleaner. Glycol DPM has an unknown, but popular application as the key ingredient in perfumes and other fragrances. Dipropylene Glycol Methyl Ether is used in perfume as a solvent and binding agent that carries the essential oils in fragrances to help create the desired formula. The strength of a perfume’s formula can be determined by raising or lowering the amount of Glycol DPM. Glycol DPM is found in most fragrances, but is not used in a large enough amount to be harmful. Propylene Glycol is used in many self-care cosmetics products such as shampoo, hair conditioner, and other styling products (p. 2).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention, to use dipropylene glycol methyl ether (i.e., DIPG monomethyl ether) as a perfume co-solvent in the combined emulsion of Wu, Paula, and Berthier since dipropylene glycol methyl ether is a known and routine perfume solvent in the art as taught by EcoLink. One of ordinary skill in the art could have added dipropylene glycol methyl ether in addition to the already present solvents taught by Berthier (i.e., isopropyl myristate and benzyl benzoate), which would entail no more than the combination of prior art elements according to known methods to yield predictable results; or one of ordinary skill could have replaced the benzyl benzoate of Berthier with the dipropylene glycol methyl ether of EcoLink via simple substitution of one known element for another to obtain predictable results. One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since Wu teaches glycol ethers as suitable perfumery carriers of the perfume emulsion, and EcoLink teaches dipropylene glycol methyl ether as a suitable solvent in perfume containing cosmetics. Dipropylene glycol methyl ether reads on the DIPG monomethyl ether of claim 51.
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.
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Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 41, 47, 49, and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 11-14 of U.S. Patent No. 11,260,001 in view of Berthier and Paula. 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 Berthier and Paula.
‘001 claim 1 recites a process for preparing a powdered composition, said process comprising the steps of: a) adding a solution of a water-soluble polymer to a Pickering emulsion, wherein the Pickering emulsion comprises (i) a non-encapsulated oil phase comprising a hydrophobic active ingredient; (ii) solid particles that are insoluble in water; and (iii) water; b) adding a core-shell microcapsule slurry to the emulsion of step a); and c) drying the emulsion of step b) to obtain a powdered composition. The solid particles are silicon oxides, silicates, or metal oxides (‘001 claim 9). The hydrophobic active ingredient is a perfume or a flavour (‘001 claim 14). The final powdered composition is incorporated into a consumer product (claims 11-13). Thus, the ‘001 claims teach an emulsion comprising an aqueous phase, oil phase, and inorganic particles which read on a stabilizer. The oil phase further comprises perfume. The ‘001 claims differ from those of the instant invention in that they do not recite an oil-miscible solvent as being present in the oil phase nor a surface modifying agent.
Berthier discloses the preparation of melamine-formaldehyde free microcapsules along with the microcapsules obtained by said process and perfuming compositions and consumer products comprising said capsules (abstract). The oil phase is formed by admixing at least one hydrophobic active ingredient with at least one polyisocyanate ([0040]). According to a particular embodiment the hydrophobic active ingredient is a perfume also known as a perfume oil ([0044]-[0045]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. The solvent is preferably not an alcohol. Examples of such solvents are isopropyl myristate, benzyl benzoate, and more ([0047]). Specifically, Berthier discloses a composition of perfume oil which comprises perfume ingredients dissolved in the carrier solvents previously discussed. The composition comprises benzyl benzoate (1.63 g) and isopropyl myristate (11.66 g) (table 40).
Paula discloses the formation of emulsions using non-traditional particle stabilizers: hydrophilic silica particles which themselves are stabilized in suspension by L-lysine (abstract). Many types of inorganic and organic colloidal particles have been used to stabilize emulsion droplets. Colloidal silica (SiO2) particles are often used, as they can be easily prepared with variable size and surface functionalization. In addition, they are chemically inert, mechanically stable, and most importantly they are biocompatible (Intro, para. 1). The use of chemically-bonded surface modifiers on silica particles is perhaps the most common means to overcome the known barriers of hydrophilicity and surface charge. A different approach involves the use of surfactants in combination with hydrophilic silica particles. It is well known that surfactants decrease the oil/water (o/w) interfacial tension and consequently, the energy of adsorption of particles to the interface will decrease proportionally. It has also been proven that surfactants may modify the wettability of the particles and promote their adsorption at the oil/water interface. The synergy between particle and surfactant mixtures has been exploited to make particle-stabilized emulsions. Many commercial emulsion formulations contain mixtures of surfactant, amino acids or proteins and particles (Intro, para. 3). Such surfactants and amino acids read on the surface modifying agent of claim 1.
It would have been obvious to combine the teachings of the ‘001 claims with those of Berthier by using isopropyl myristate and benzyl benzoate as carrier solvents for the perfume of the ‘001 claims to yield the instantly claimed invention. It would have been obvious to combine the teachings of the ‘001 claims and Berthier to dissolve a perfume oil in isopropyl myristate (i.e., an oil-miscible solvent) and benzyl benzoate (i.e., an oil-miscible co-solvent), as specifically taught by Berthier, before incorporating it into the emulsion of ‘001 since both teach microcapsules used to incorporate perfumes into consumer products. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to combine the teachings of the ‘001 claims with those of Paula by adding a small amount of surfactant to the emulsion as taught by Paula. The use of surfactants in combination with hydrophilic silica (i.e., silicon oxide) particles to stabilize emulsions is known and routine in the art as taught by Paula. One of ordinary skill in the art could have combined a surfactant, as taught by Paula, with the particle stabilized Pickering emulsion of ‘001, according to known techniques, to predictably yield an emulsion with improved stability.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 41, 47, 49, and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 7 of U.S. Patent No. 11,396,001 in view of Berthier and Paula. 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 Berthier and Paula.
‘001 claim 1 teaches a process for the preparation of a formaldehyde-free organic-inorganic microcapsule slurry comprising the steps of: 1) suspending in water inorganic particles consisting of non-chemically surface modified inorganic particles to form a water phase; 2) admixing at least one polyisocyanate with a hydrophobic active ingredient-containing oil to form an oil phase; and 3) adding the oil phase to the water phase and mixing them to form an oil-in-water Pickering emulsion under conditions allowing the formation of an inorganic-organic microcapsule slurry by interfacial polymerization. The hydrophobic active ingredient is selected from the group consisting of: a perfume and a flavour (‘001 claim 7). The non-chemically surface modified inorganic particles comprise inorganic particles selected from the group consisting of: hydroxyapatite, tricalcium phosphate, kaolin, silica, laponite (‘001 claim 3). Thus, the ‘001 claims teach an emulsion comprising an aqueous phase, oil phase, and inorganic particles which read on a stabilizer. The ‘001 claims differ from those of the instant invention in that they do not recite an oil-miscible solvent as being present in the oil phase nor a surface modifying agent.
Berthier discloses the preparation of melamine-formaldehyde free microcapsules along with the microcapsules obtained by said process and perfuming compositions and consumer products comprising said capsules (abstract). The oil phase is formed by admixing at least one hydrophobic active ingredient with at least one polyisocyanate ([0040]). According to a particular embodiment the hydrophobic active ingredient is a perfume also known as a perfume oil ([0044]-[0045]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. The solvent is preferably not an alcohol. Examples of such solvents are isopropyl myristate, benzyl benzoate, and more ([0047]). Specifically, Berthier discloses a composition of perfume oil which comprises perfume ingredients dissolved in the carrier solvents previously discussed. The composition comprises benzyl benzoate (1.63 g) and isopropyl myristate (11.66 g) (table 40).
Paula discloses the formation of emulsions using non-traditional particle stabilizers: hydrophilic silica particles which themselves are stabilized in suspension by L-lysine (abstract). Many types of inorganic and organic colloidal particles have been used to stabilize emulsion droplets. Colloidal silica (SiO2) particles are often used, as they can be easily prepared with variable size and surface functionalization. In addition, they are chemically inert, mechanically stable, and most importantly they are biocompatible (Intro, para. 1). The use of chemically-bonded surface modifiers on silica particles is perhaps the most common means to overcome the known barriers of hydrophilicity and surface charge. A different approach involves the use of surfactants in combination with hydrophilic silica particles. It is well known that surfactants decrease the oil/water (o/w) interfacial tension and consequently, the energy of adsorption of particles to the interface will decrease proportionally. It has also been proven that surfactants may modify the wettability of the particles and promote their adsorption at the oil/water interface. The synergy between particle and surfactant mixtures has been exploited to make particle-stabilized emulsions. Many commercial emulsion formulations contain mixtures of surfactant, amino acids or proteins and particles (Intro, para. 3). Such surfactants and amino acids read on the surface modifying agent of claim 1.
It would have been obvious to combine the teachings of the ‘001 claims with those of Berthier by using isopropyl myristate and benzyl benzoate as carrier solvents for the perfume of the ‘001 claims to yield the instantly claimed invention. It would have been obvious to combine the teachings of the ‘001 claims and Berthier to dissolve a perfume oil in isopropyl myristate (i.e., an oil-miscible solvent) and benzyl benzoate (i.e., an oil-miscible co-solvent), as specifically taught by Berthier, before incorporating it into the emulsion of ‘001 since both teach microcapsules used to incorporate perfumes into consumer products. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to combine the teachings of the ‘001 claims with those of Paula by adding a small amount of surfactant to the emulsion as taught by Paula. The use of surfactants in combination with hydrophilic silica (i.e., silicon oxide) particles to stabilize emulsions is known and routine in the art as taught by Paula. One of ordinary skill in the art could have combined a surfactant, as taught by Paula, with the particle stabilized Pickering emulsion of ‘001, according to known techniques, to predictably yield an emulsion with improved stability.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 41, 47, 49, and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 14-15 of U.S. Patent No. 9,962,674 in view of Berthier and Paula. 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 Berthier and Paula.
‘674 claim 12 recites a process for the preparation of an organic-inorganic microcapsule comprising the steps of: 1) suspending in water first inorganic particles having at least one amine functionality and second inorganic particles having at least one hydroxyl functionality, to form an aqueous phase; 2) suspending at least one polyisocyanate in a perfume or flavor oil to form an oil phase; 3) adding the oil phase to the water phase and mixing them to form an oil-in-water Pickering emulsion under conditions allowing interfacial reaction between the at least one polyisocyanate and the functional groups on the first and second inorganic particles to form an inorganic-organic microcapsule. The inorganic nanoparticles consist of silica (‘674 claim 7). The microcapsules are incorporated into a perfumed consumer product (‘674 claims 14-15). Thus, the ‘674 claims teach an emulsion comprising an aqueous phase, oil phase, and inorganic particles which read on a stabilizer. The oil phase further comprises perfume oil. The ‘674 claims differ from those of the instant invention in that they do not recite an oil-miscible solvent as being present in the oil phase nor a surface modifying agent.
Berthier discloses the preparation of melamine-formaldehyde free microcapsules along with the microcapsules obtained by said process and perfuming compositions and consumer products comprising said capsules (abstract). The oil phase is formed by admixing at least one hydrophobic active ingredient with at least one polyisocyanate ([0040]). According to a particular embodiment the hydrophobic active ingredient is a perfume also known as a perfume oil ([0044]-[0045]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. The solvent is preferably not an alcohol. Examples of such solvents are isopropyl myristate, benzyl benzoate, and more ([0047]). Specifically, Berthier discloses a composition of perfume oil which comprises perfume ingredients dissolved in the carrier solvents previously discussed. The composition comprises benzyl benzoate (1.63 g) and isopropyl myristate (11.66 g) (table 40).
Paula discloses the formation of emulsions using non-traditional particle stabilizers: hydrophilic silica particles which themselves are stabilized in suspension by L-lysine (abstract). Many types of inorganic and organic colloidal particles have been used to stabilize emulsion droplets. Colloidal silica (SiO2) particles are often used, as they can be easily prepared with variable size and surface functionalization. In addition, they are chemically inert, mechanically stable, and most importantly they are biocompatible (Intro, para. 1). The use of chemically-bonded surface modifiers on silica particles is perhaps the most common means to overcome the known barriers of hydrophilicity and surface charge. A different approach involves the use of surfactants in combination with hydrophilic silica particles. It is well known that surfactants decrease the oil/water (o/w) interfacial tension and consequently, the energy of adsorption of particles to the interface will decrease proportionally. It has also been proven that surfactants may modify the wettability of the particles and promote their adsorption at the oil/water interface. The synergy between particle and surfactant mixtures has been exploited to make particle-stabilized emulsions. Many commercial emulsion formulations contain mixtures of surfactant, amino acids or proteins and particles (Intro, para. 3). Such surfactants and amino acids read on the surface modifying agent of claim 1.
It would have been obvious to combine the teachings of the ‘674 claims with those of Berthier by using isopropyl myristate and benzyl benzoate as carrier solvents for the perfume of the ‘674 claims to yield the instantly claimed invention. It would have been obvious to combine the teachings of the ‘674 claims and Berthier to dissolve a perfume oil in isopropyl myristate (i.e., an oil-miscible solvent) and benzyl benzoate (i.e., an oil-miscible co-solvent), as specifically taught by Berthier, before incorporating it into the emulsion of ‘674 since both teach microcapsules used to incorporate perfumes into consumer products. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to combine the teachings of the ‘674 claims with those of Paula by adding a small amount of surfactant to the emulsion as taught by Paula. The use of surfactants in combination with hydrophilic silica particles to stabilize emulsions is known and routine in the art as taught by Paula. One of ordinary skill in the art could have combined a surfactant, as taught by Paula, with the particle stabilized Pickering emulsion of ‘674, according to known techniques, to predictably yield an emulsion with improved stability.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 41, 47, 49, and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 13-14 of U.S. Patent No. 9,849,435 in view of Berthier and Paula. 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 Berthier and Paula.
‘435 claim 1 recites a particle-stabilized microcapsule obtainable by a process comprising the steps of: 1) suspending inorganic solid particles with at least one amine functionality in water, to form an aqueous phase; 2) suspending at least one maleic anhydride-containing polymer in a perfume or flavor oil to form an oil phase; 3) adding the oil phase to the water phase and mixing the resulting emulsion to form the microcapsule due to reaction between the inorganic solid particles and the maleic anhydride-containing polymer with the resulting cross-linked particles present at the oil/water interface of the emulsion surrounding the perfume or flavor oil. The inorganic particles comprise silica (‘435 claim 3). The microcapsules are incorporated into consumer products (‘435 claims 13-14). Thus, the ‘435 claims teach an emulsion comprising an aqueous phase, oil phase, and organic particles which read on a stabilizer. The oil phase further comprises perfume oil. The ‘435 claims differ from those of the instant invention in that they do not recite an oil-miscible solvent as being present in the oil phase nor a surface modifying agent.
Berthier discloses the preparation of melamine-formaldehyde free microcapsules along with the microcapsules obtained by said process and perfuming compositions and consumer products comprising said capsules (abstract). The oil phase is formed by admixing at least one hydrophobic active ingredient with at least one polyisocyanate ([0040]). According to a particular embodiment the hydrophobic active ingredient is a perfume also known as a perfume oil ([0044]-[0045]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. The solvent is preferably not an alcohol. Examples of such solvents are isopropyl myristate, benzyl benzoate, and more ([0047]). Specifically, Berthier discloses a composition of perfume oil which comprises perfume ingredients dissolved in the carrier solvents previously discussed. The composition comprises benzyl benzoate (1.63 g) and isopropyl myristate (11.66 g) (table 40).
Paula discloses the formation of emulsions using non-traditional particle stabilizers: hydrophilic silica particles which themselves are stabilized in suspension by L-lysine (abstract). Many types of inorganic and organic colloidal particles have been used to stabilize emulsion droplets. Colloidal silica (SiO2) particles are often used, as they can be easily prepared with variable size and surface functionalization. In addition, they are chemically inert, mechanically stable, and most importantly they are biocompatible (Intro, para. 1). The use of chemically-bonded surface modifiers on silica particles is perhaps the most common means to overcome the known barriers of hydrophilicity and surface charge. A different approach involves the use of surfactants in combination with hydrophilic silica particles. It is well known that surfactants decrease the oil/water (o/w) interfacial tension and consequently, the energy of adsorption of particles to the interface will decrease proportionally. It has also been proven that surfactants may modify the wettability of the particles and promote their adsorption at the oil/water interface. The synergy between particle and surfactant mixtures has been exploited to make particle-stabilized emulsions. Many commercial emulsion formulations contain mixtures of surfactant, amino acids or proteins and particles (Intro, para. 3). Such surfactants and amino acids read on the surface modifying agent of claim 1.
It would have been obvious to combine the teachings of the ‘435 claims with those of Berthier by using isopropyl myristate and benzyl benzoate as carrier solvents for the perfume of the ‘435 claims to yield the instantly claimed invention. It would have been obvious to combine the teachings of the ‘435 claims and Berthier to dissolve a perfume oil in isopropyl myristate (i.e., an oil-miscible solvent) and benzyl benzoate (i.e., an oil-miscible co-solvent), as specifically taught by Berthier, before incorporating it into the emulsion of ‘435 since both teach microcapsules used to incorporate perfumes into consumer products. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to combine the teachings of the ‘435 claims with those of Paula by adding a small amount of surfactant to the emulsion as taught by Paula. The use of surfactants in combination with hydrophilic silica particles to stabilize emulsions is known and routine in the art as taught by Paula. One of ordinary skill in the art could have combined a surfactant, as taught by Paula, with the particle stabilized Pickering emulsion of ‘435, according to known techniques, to predictably yield an emulsion with improved stability.
Claims 1-3, 5, 7, 9-11, 13, 22-24, 31-34, 41, 47, 49, and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 8 of U.S. Patent No. 8,778,867 in view of Berthier and Paula. 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 Berthier and Paula.
‘867 claim 1 recites a method for intensifying or prolonging the diffusion fragrance of a perfuming ingredient on a surface, which comprises preparing microcapsules containing the perfuming ingredient for treating the surface; wherein the microcapsules comprise: a) a core consisting of at least one aqueous phase and a continuous oily phase; ii. the continuous oily phase comprises the perfuming ingredient; and iii. the at least one aqueous phase is dispersed in the continuous oily phase, and b) a shell surrounding said core and formed of the reaction product of at least one polyisocyanate with i. at least one organic compound comprising a permanent quaternary ammonium group and a primary amine or hydroxyl group; and ii. a polyamine or a polyol; so that the microcapsules can be applied to the surface with a prolonged release and delayed diffusion of the perfuming ingredient from the surface. The method further entails the formation of an emulsion (‘867 claim 5) and the aqueous phase further comprises silica or other hydrophilic inorganic particles (‘867 claim 8). The microcapsules are combined with a consumer product base (‘867 claims 3-4). Thus, the ‘867 claims teach an emulsion comprising an aqueous phase, oil phase, and organic particles which read on a stabilizer. The oil phase further comprises a perfume. The ‘867 claims differ from those of the instant invention in that they do not recite an oil-miscible solvent as being present in the oil phase nor a surface modifying agent.
Berthier discloses the preparation of melamine-formaldehyde free microcapsules along with the microcapsules obtained by said process and perfuming compositions and consumer products comprising said capsules (abstract). The oil phase is formed by admixing at least one hydrophobic active ingredient with at least one polyisocyanate ([0040]). According to a particular embodiment the hydrophobic active ingredient is a perfume also known as a perfume oil ([0044]-[0045]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. The solvent is preferably not an alcohol. Examples of such solvents are isopropyl myristate, benzyl benzoate, and more ([0047]). Specifically, Berthier discloses a composition of perfume oil which comprises perfume ingredients dissolved in the carrier solvents previously discussed. The composition comprises benzyl benzoate (1.63 g) and isopropyl myristate (11.66 g) (table 40).
Paula discloses the formation of emulsions using non-traditional particle stabilizers: hydrophilic silica particles which themselves are stabilized in suspension by L-lysine (abstract). Many types of inorganic and organic colloidal particles have been used to stabilize emulsion droplets. Colloidal silica (SiO2) particles are often used, as they can be easily prepared with variable size and surface functionalization. In addition, they are chemically inert, mechanically stable, and most importantly they are biocompatible (Intro, para. 1). The use of chemically-bonded surface modifiers on silica particles is perhaps the most common means to overcome the known barriers of hydrophilicity and surface charge. A different approach involves the use of surfactants in combination with hydrophilic silica particles. It is well known that surfactants decrease the oil/water (o/w) interfacial tension and consequently, the energy of adsorption of particles to the interface will decrease proportionally. It has also been proven that surfactants may modify the wettability of the particles and promote their adsorption at the oil/water interface. The synergy between particle and surfactant mixtures has been exploited to make particle-stabilized emulsions. Many commercial emulsion formulations contain mixtures of surfactant, amino acids or proteins and particles (Intro, para. 3). Such surfactants and amino acids read on the surface modifying agent of claim 1.
It would have been obvious to combine the teachings of the ‘867 claims with those of Berthier by using isopropyl myristate and benzyl benzoate as carrier solvents for the perfume of the ‘867 claims to yield the instantly claimed invention. It would have been obvious to combine the teachings of the ‘867 claims and Berthier to dissolve a perfume oil in isopropyl myristate (i.e., an oil-miscible solvent) and benzyl benzoate (i.e., an oil-miscible co-solvent), as specifically taught by Berthier, before incorporating it into the emulsion of ‘867 since both teach microcapsules used to incorporate perfumes into consumer products. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to combine the teachings of the ‘867 claims with those of Paula by adding a small amount of surfactant to the emulsion as taught by Paula. The use of surfactants in combination with hydrophilic silica particles to stabilize emulsions is known and routine in the art as taught by Paula. One of ordinary skill in the art could have combined a surfactant, as taught by Paula, with the particle stabilized Pickering emulsion of ‘867, according to known techniques, to predictably yield an emulsion with improved stability.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive:
(1) Applicant argues that Wu and Berthier do not disclose or suggest every element of amended claim 1 and that Sadeghpour, Yang, nor Humblebee remedy the deficiencies of Wu and Berthier.
As seen above, Paula is now relied on for teaching the surface modifying agent which has been added to claim 1, therefore remedying the deficiencies of Wu and Berthier. Any arguments against Sadeghpour are rendered moot because the new ground of rejection no longer relies on the Sadeghpour reference. Paula is also applied to the relevant double patenting rejections.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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