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 the Claims
Claims 15-26 are pending and under current examination.
Withdrawn Claim Objections and Rejections
All objections pertaining to claim 17 are withdrawn in view of the amendments to the claims filed 2/12/2026.
All rejections pertaining to claim 17 under 35 U.S.C. 112(b) are withdrawn in view of the amendments to the claims filed 2/12/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendments to the claims filed 2/12/2026 have necessitated the new grounds of rejection.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18 and 26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18, line 1 recites "...a content of the surface treatment compound...". This language renders the claim indefinite because it suggests that there could be greater than one content of the surface treatment compound, raising the question of whether the entire amount of surface treatment compound is included in the claim. Amending the claim to recite "the content of the surface treatment compound" would obviate the rejection.
Claim 18 recites the limitation “a content of the surface treatment compound is from 0.1wt.% to 20 wt.%”. This renders the claim indefinite because it is not clear what the weight percentage of surface treatment compound is relative to (i.e. weight of the cellulose particles, etc.).
Claim 26 recites the limitation “a content of the surface treatment compound in the composite particles is from 0.1wt.% to 20 wt.%”. This renders the claim indefinite because it is not clear what the weight percentage of surface treatment compound is relative to (i.e. weight of the cellulose particles, etc.).
Response to Arguments
Applicant's arguments filed 2/12/2026 with respect to the rejection of claim 18 under 35 U.S.C. 112(b) have been fully considered but they are not persuasive.
On page 12, Applicant argues that the proposed amendment to “the content of the surface treatment compound” would raise an antecedent basis issue. This is not found persuasive because if the compound is applied as a surface treatment, the amount of surface treatment compound is inherent to the composition. Therefore, the arguments are not persuasive and the rejection is maintained.
The amendments to the claims have not addressed the indefiniteness concern over what the weight percentage of surface treatment compound is relative to, therefore, the rejection is maintained.
Applicant’s amendments to the claims filed 2/12/2026 have necessitated the new grounds of rejection of claim 26 above.
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.
Claims 15 and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Henault-Mezaize (WO2016/116473, publication date: 7/28/2016, of record) in view Kobayashi (U.S. Patent Application Publication No. 2020/0179261, publication date: 6/11/2020, cited in the IDS filed 1/26/2024, of record), as evidenced by Cosmetic Ingredient Review (Safety Assessment of Polyquaternium-6 as Used in Cosmetics, available 12/16/2020, of record).
Applicant’s Invention
Applicant’s claim 15 is drawn to composite particles comprising: particles of a cellulose derivative; and a film covering a surface of the particles of the cellulose derivative, wherein the film is formed of a surface treatment compound that dissolves in water and/or an organic solvent, the particles of the cellulose derivative have an average particle size from 0.08 pm to 100 pm, a sphericity from 0.7 to 1.0, and a degree of surface smoothness from 80% to 100%, and the surface treatment compound is one or two or more selected from the group consisting of a cationic surfactant, a fatty acid soap, and a cationic polymer.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 15, Henault-Mezaize teaches a solid microparticle comprising a core comprised of a first material covered at the surface, continuously or discontinuously, with an envelope or shell comprised of a second material different from the first (pg. 5 lines 5-9). The core may be comprised of a polysaccharide (pg. 32 line 6) such as celluloses and cellulose derivatives (pg. 22 line 23) and the shell may comprise a cationic polymer (pg. 32 line 22). The largest dimension of the composite microparticles is, on average, between 0.15 and 100uM (pg. 3 line 31-32). The composite particles are preferably spherical (pg. 12 line 27) and spherical particles of the invention have a sphericity index between 0.8 and 1 (pg. 4 line 23). The particles may be smooth or rough (pg. 3 line 29). The cationic polymers of the envelope or shell include polyquaternium-6 (pg. 9 line 19). Cosmetic Ingredient Review teaches that polyquaternium-6 is completely water soluble (pg. 8, Table 1. Chemical Properties). The Examiner considers the term “envelope or shell” recited by Henault-Mezaize to read on the “film covering a surface of the particles of the cellulose derivative” limitation of the instant claim.
Regarding claim 18, Henault-Mezaize teaches that the weight ratio of the material comprising the core to the material constituting the envelope ranges from 70/30 to 99.9/0.1 (pg. 5 line 25).
Regarding claim 19, Henault-Mezaize teaches that the cellulose derivatives may be chosen from cellulose esters and cellulose ethers (pg. 22 lines 31-32). The cellulose esters are obtained by reaction of one or all of the free hydroxyl functions of the anhydroglucose rings of the cellulose with a linear or branched carboxylic acid or carboxylic acid derivative containing from 1 to 4 carbon atoms (pg. 23 lines 1-5).
Regarding claims 20 and 21, Henault-Mezaize teaches that the cellulose esters may be chosen from cellulose acetates (pg. 23 line 9).
Regarding claim 22, Henault-Mezaize teaches the relevant limitations of claim 15 as described above.
Regarding claim 23, Henault-Mezaize teaches a cosmetic composition comprising at least one oil/oil emulsion that contains the solid microparticles (pg. 2 lines 10-14).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 15, Henault-Mezaize does not teach a specific degree of surface smoothness of the cellulose particle. However, this deficiency is cured by Kobayashi.
Kobayashi teaches a particle comprising cellulose acetate that may be included in a cosmetic composition. The particles have a mean particles size of 80nm or more and 100µm or less, a sphericity of 0.7 or more to 1.0 or less, and a smoothness of 80% or more and 100% or less [0031]. If the surface smoothness of the cellulose acetate particles is less than 80%, the touch feeling is poor. The closer to 100%, the better the touch feeling [0038].
Regarding claim 22, Henault-Mezaize does not teach a total substitution degree of the cellulose derivative. However, this deficiency is cured by Kobayashi.
Kobayashi teaches a particle comprising cellulose acetate that may be included in a cosmetic composition. The cellulose acetate particles have a total degree of acetyl substitution of 0.7 or more and 2.9 or less [0040]. When the total degree of substitution is less than 0.7, the water solubility is high and may result decreased sphericity and poor touch feeling. When the total degree of substitution is more than 2.9, biodegradability of the cellulose acetate particles is poor [0041].
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 15, the degree of surface smoothness of the cellulose particles is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal degree of surface smoothness in order to best achieve the desired results as such would provide advantageous tactile effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Kobayashi teaches that if the surface smoothness of the cellulose acetate particles is less than 80%, the touch feeling is poor. The closer to 100%, the better the touch feeling [0038]. The Examiner considers it prima facie obvious to optimize the degree of surface smoothness, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the degree of surface smoothness of the cellulose particles would have a direct effect on the tactile quality of the composition and therefore be an optimizable variable.
Regarding claim 22, the total substitution degree of the cellulose derivative is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal degree of substitution in order to best achieve the desired results as such would provide advantageous tactile and biodegradability effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Kobayashi teaches that when the total degree of substitution is less than 0.7, the water solubility is high and may result decreased sphericity and poor touch feeling. When the total degree of substitution is more than 2.9, biodegradability of the cellulose acetate particles is poor [0041]. The Examiner considers it prima facie obvious to optimize the total degree of substitution of the cellulose derivative, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the total degree of substitution would have a direct effect on the touch feeling and biodegradability of the particles and therefore be an optimizable variable.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Henault-Mezaize (WO2016/116473, publication date: 7/28/2016, of record) in view Kobayashi (U.S. Patent Application Publication No. 2020/0179261, publication date: 6/11/2020, cited in the IDS filed 1/26/2024, of record), as evidenced by Cosmetic Ingredient Review (Safety Assessment of Polyquaternium-6 as Used in Cosmetics, available 12/16/2020, of record), as applied to claims 15 and 18-23 above, and further in view of Kobayashi (JP6694559-B1, publication date: 5/13/2020, cited in the IDS filed 1/26/2024; citations refer to machine translation, of record) and PubChem (Aluminum Stearate, available 8/8/2005, of record).
Applicant’s Invention
Henault-Mezaize, in view of Kobayashi, renders obvious the relevant limitations of claim 15 above. Applicant’s claim 16 further adds the limitation of the composite particles according to claim 15, wherein the organic solvent is an alcohol.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Henault-Mezaize teaches the relevant limitations of claim 15 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Henault-Mezaize does not teach a cationic surfactant, fatty acid soap, or cationic polymer for coating a cellulose derivative particle that is soluble in an organic solvent alcohol. However, this deficiency is cured by Kobayashi (JP6694559-B1) and PubChem.
Kobayashi (JP6694559-B1) teaches a particle comprising cellulose acetate that may be included in a cosmetic composition. The particles have a mean particles size of 0.08um or more and 100um or less, a sphericity of 0.7 or more to 1.0 or less, and a smoothness of 80% or more and 100% or less (pg. 3 claim 1 and pg. 4 claim 7). The particles may comprise a lipophilicity imparting agent attached so as to cover the entire surface of the cellulose acetate particles [0053]. The lipophilicity imparting agent may include a metal soap-based component [0055]. The metal soap-based component refers to a metal salt other than sodium and potassium of a long-chain fatty acid, such as aluminum stearate, [0072] and has no or almost no solubility in water, but has excellent solubility in oil [0073]. PubChem teaches that aluminum stearate is soluble in ethanol (pg. 10, 3.2.4 Solubility).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (cationic polymers and aluminum stearate for coating cellulose derivative particles in cosmetic compositions). See MPEP 2144.06-II.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Henault-Mezaize (WO2016/116473, publication date: 7/28/2016, of record) in view Kobayashi (U.S. Patent Application Publication No. 2020/0179261, publication date: 6/11/2020, cited in the IDS filed 1/26/2024, of record), as evidenced by Cosmetic Ingredient Review (Safety Assessment of Polyquaternium-6 as Used in Cosmetics, available 12/16/2020, of record), as applied to claims 15 and 18-23 above, and further in view of Zhang (WO 2020/131956, publication date: 6/25/2020, of record).
Applicant’s Invention
Henault-Mezaize, in view of Kobayashi, renders obvious the relevant limitations of claim 15 above. Applicant’s claim 17 further adds the limitation of the composite particles according to claim 15, wherein the surface treatment compound is one or two or more selected from the group consisting of distearyldimethylammonium chloride, behenyltrimethylammonium chloride, stearyltrimethylammonium chloride, potassium stearate, sodium stearate, polyoctanium-61, and polyoctanium-67.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Henault-Mezaize teaches that the microparticles may bear a coating or shell on the core comprising at least one cationic polymer (pg. 9 lines 9-10). The cationic polymer comprises units derived from (meth)acrylamide or from (meth)acrylic acid and cyclic units derived from dialkyldiallylammonium; the alkyl group, which is optionally hydroxylated, more particularly comprising from 1 to 6 carbon atoms. Even more particularly, the cationic polymer comprises units derived from (meth)acrylamide and cyclic units derived from dialkyldiallylammonium; the alkyl group, which is optionally hydroxylated, more particularly comprising from 1 to 6 carbon atoms. (pg. 9 lines 11-17).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Henault-Mezaize does not teach a surface treatment compound consisting of the cationic polymers of the instant claim 17. However, this deficiency is cured by Zhang.
Zhang teaches microcapsules with high fragrance performance for use in laundry, washing, cleaning, surface care and personal and skin care [0005] comprising a core and a wall. The wall may comprise hydroxyethyl cellulose [0007]. The microcapsules may be coated with polyquaternium-67 [0013].
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (polyquaternium-6, 7, 22, and 94 and polyquaternium-67 as cationic polymers to coat cellulose particles for inclusion in cosmetic compositions). See MPEP 2144.60 (II).
Claims 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Henault-Mezaize (WO2016/116473, publication date: 7/28/2016, of record) in view Kobayashi (U.S. Patent Application Publication No. 2020/0179261, publication date: 6/11/2020, cited in the IDS filed 1/26/2024, of record), as evidenced by Cosmetic Ingredient Review (Safety Assessment of Polyquaternium-6 as Used in Cosmetics, available 12/16/2020, of record), as applied to claims 15 and 18-23 above, and further in view of Kunihiro (JP 2016-53144A, publication date: 4/14/2016, cited in the IDS filed 1/26/2024, of record).
Applicant’s Invention
Henault-Mezaize, in view of Kobayashi, renders obvious to relevant limitations of claim 15 above. Applicant’s claim 24 further adds the limitation of a method for producing the composite particles described in claim 15, the method comprising: mixing particles of a cellulose derivative and a surface treatment compound, wherein the particles of the cellulose derivative and the surface treatment compound are stirred and mixed in a solvent that dissolves the surface treatment compound; and after the mixing, drying a solid content containing the particles of the cellulose derivative, wherein the solid content is washed and dried, the particles of the cellulose derivative have an average particle size from 0.08 µm to 100 µm, a sphericity from 0.7 to 1.0, and a degree of surface smoothness from 80% to 100%, and the surface treatment compound is one or two or more selected from the group consisting of a cationic surfactant, a fatty acid soap, and a cationic polymer.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 24-26, Henault-Mezaize teaches that the composite particles may be manufactured according to the standard techniques for manufacturing core/shell composite particles (pg. 30 line 20-22).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 24-26, Henault-Mezaize does not teach a specific method for producing the composite particles. However, this deficiency is cured by Kunihiro.
Kunihiro teaches water-absorbing resin particles comprising a core particle that may comprise derivatives of polysaccharides and a polymer having cationic functional groups, which is arranged on the surface of the core particle (pg. 3 Overview). Kunihiro teaches that the contact process between the cationic polymer and the core particle may be performed by dispersing the core particle in a solvent and adding the cationic polymer solution to the solvent [0060]. The solvent is preferably selected such that the resin does not dissolve in the solvent and the cationic polymer dissolves in the solvent. The solvent is not particularly limited and water or an organic solvent such as alcohols may be used [0063]. The concentration of cationic polymer solution is not particularly limited and can be selected according to the production conditions. The concentration of cationic polymer is preferably between 0.001%-70% by mass in order to deposit the polymer in a sufficient quantity and uniformly across the surface of the particle [0064]. After the contact step, the composite particle may be dried [0065]. Production examples include a step of washing to remove solvent prior to drying [0073]. Kunihiro also teaches that this method of producing particles can be carried out without heating at a high temperature and therefore the water-absorbing property of the particles can be improved without causing a decrease in water-absorbing property, discoloration, or the like due to heating [0058].
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 24-26, it would have been prima facie obvious to one of ordinary skill in the art of filing to produce the coated particles of Henault-Mezaize by the method taught by Kunihiro. One would have understood in view of Kunihiro that a particle comprised of polysaccharides may be coated with a cationic polymer by mixing both the particle and cationic polymer in a solvent in which only the cationic polymer is soluble. It would have been obvious to coat the cellulose derivative particle of Henault-Mezaize in such a method. One of ordinary skill in the art of filing would have been motivated to produce the particles of Henault-Mezaize by such a method in order to avoid high temperatures that may affect the water-absorbing properties or cause discoloration of the particles. The artisan of ordinary skill would have had reasonable expectation of success because Henault-Mezaize teaches that the composite particles may be manufactured according to the standard techniques for manufacturing core/shell composite particles (pg. 30 line 20-22).
Regarding the weight percentage of surface treatment compound relative to cellulose particles as specified in claim 26, MPEP 2144.05 states:
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).
Furthermore, Kunihiro teaches that the concentration of cationic polymer is preferably between 0.001%-70% by mass in order to deposit the polymer in a sufficient quantity and uniformly across the surface of the particle [0064]. The Applicants' specification provides no evidence that the selected weight percentage range relative to the cellulose particle in claim 26 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of the concentration of cationic polymer on the surface coating amount and uniformity, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of cationic polymer relative to the cellulose particles. One of ordinary skill in the art would have been motivated to change the weight percentage of cationic polymer relative to the cellulose particles as this could be expected to be advantageous for optimizing the amount and uniformity of the cationic polymer coating.
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
On page 14, Applicant argues that Henault-Mezaize does not disclose or suggest specific microspheres having a core of cellulose ether or cellulose ester and a shell of cationic polymers. This is not found persuasive. In response, simply because the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). "[P]icking and choosing may be entirely proper in the making of a 103, obviousness rejection." In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Furthermore, it is noted that Applicants do not identify secondary consideration demonstrating criticality or anything unexpected about the combination of a cellulose or cellulose derivative and cationic polymer shell. Please also refer to MPEP 2123 (II), which states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” The broader disclosure of Henault-Mezaize discloses particles comprising cellulose and cellulose derivatives and a shell of cationic polymers. Therefore, the Examiner considers the teachings of Henault-Mezaize to read on the limitations of the instant claim.
On page 14, Applicant argues that Henault-Mezaize does not disclose or suggest that forming a coating from a specific surface treatment compound improves particle dispersibility in various solvents and formulations. This is not found persuasive. In response, the examiner refers Applicant to MPEP 2145(X)(A) which states:
Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). See MPEP § 2141 and § 2143 for guidance regarding establishment of a prima facie case of obviousness. (Emphasis added.)
In response to applicant's argument that Henault-Mezaize does not disclose or suggest that forming a coating from a specific surface treatment compound improves particle dispersibility in various solvents and formulations, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The claimed invention falls entirely within the broader teachings of Henault-Mezaize, with the exception of the smoothness, and this was an art-recognized result-effective variable. One would carry out the instant invention as claimed in practicing the full scope of Henault-Mezaize.
On page 14, Applicant argues that there would be no motivation for a person skilled in the art to modify Henault-Mezaize based on Zhang, and/or to select polyquaterniums as coating materials to improve particle dispersion, in view of Zhang’s teachings. This is not found persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Henault-Mezaize teaches that the microparticles may bear a coating or shell on the core comprising at least one cationic polymer (pg. 9 lines 9-10) and Zhang teaches microcapsules with high fragrance performance for use in laundry, washing, cleaning, surface care and personal and skin care [0005] comprising a core and a wall. The wall may comprise hydroxyethyl cellulose [0007]. The microcapsules may be coated with polyquaternium-67 [0013]. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (polyquaternium-6, 7, 22, and 94 and polyquaternium-67 as cationic polymers to coat cellulose particles for inclusion in cosmetic compositions). See MPEP 2144.06 (II). With respect to the argument that there is no motivation to select polyquaterniums as coating materials to improve particle dispersion, the Examiner refers Applicant to MPEP 2145(X)(A) which states:
Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). See MPEP § 2141 and § 2143 for guidance regarding establishment of a prima facie case of obviousness. (Emphasis added.)
In response to applicant's argument that there would be no motivation to select polyquaterniums as coating materials to improve particles dispersion, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The claimed invention falls entirely within the broader teachings of Henault-Mezaize and Zhang, with the exception of the smoothness, and this was an art-recognized result-effective variable. One would carry out the instant invention as claimed in practicing the full scope of Henault-Mezaize.
On page 15, Applicant argues that there would be no motivation for a person skilled in the art to apply the wet mixing disclosed by Kunihiro to Henault-Mezaize, which specifies dry coating without the use of a liquid medium and that the Examiner’s proposed modification would render Henault-Mezaize unsatisfactory for its intended purpose. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (I), which states: “a reference may be relied upon for all that it would have reasonable suggested to one having ordinary skill in the art, including nonpreferred embodiments”. As described in the obviousness rejection above, Henault-Mezaize teaches that the composite particles may be manufactured according to the standard techniques for manufacturing core/shell composite particles (pg. 30 line 20-22). Therefore, a person of ordinary skill in the art would have recognized that the particles of Henault-Mezaize may be manufactured by the wet method taught by Kunihiro, as described in the obviousness rejection above.
Conclusion
No claims are 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 ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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