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 .
Claims 1-14 are pending an dunder examination.
Priority
Acknowledge is made that this application is national stage of internation patent application PCT/JP2022/026083, filed on 06/29/2022; which claims priority from JP2021-109562, filed on 06/30/2021.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/13/2024 and 08/26/2025 is being considered by the examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US20190255502).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Wu et al. teaches a process for the preparation of formaldehyde-free organic-inorganic microcapsules, comprising a hydrophobic active ingredient-based core, preferably a perfume or a flavour, and a shell comprising inorganic particles consisting of non-chemically surface modified inorganic particles. Microcapsules obtained by said process are also an object of the invention. Consumer products comprising said capsules, in particular perfumed consumer products in the form of home care or personal care products, are also part of the invention (abstract). A first object of the present invention consists of 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; 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,
said process being characterized in that the water phase is essentially free from formaldehyde ([0020]). Preferably, the at least one polyisocyanate is present in an amount comprised between 0.1 wt % and 40 wt % of the oil phase, preferably from 0.5 to 15 wt %, even more preferably from 1 to 12 wt % of the oil phase ([0044]). The perfuming ingredients may be dissolved in a solvent of current use in the perfume industry. Most preferably, the perfume is essentially free of solvent ([0055]). According to an embodiment, the hydrophobic active ingredient represents between 20 to 50% by weight relative to the total weight of the dispersion as obtained after step 3) ([0056]). By “non-chemically surface modified inorganic particles”, it is meant that the surface of the particles has not been chemically modified so as to have reactive functional groups ([0065]). The inorganic particles according to the invention can be synthetized or natural ([0069]). According to an embodiment, the non-chemically surface modified inorganic particles are chosen in the group consisting of calcium phosphate, silica, silicates, titanium dioxide, aluminium oxide, zinc oxide, iron oxide, mica, kaolin, montmorillonite, laponite, bentonite, perlite, dolomite, diatomite, vermiculite, hectorite, gibbsite, illite, kaolinite, aluminosilicates, gypsum, bauxite, magnesite, talc, magnesium carbonate, calcium carbonate, diatomaceous earth and mixtures thereof ([0071]). According to an embodiment, the non-chemically surface modified inorganic particles have a particle size comprised between 10 nm and 20 μm ([0076]). Preferably, the total amount of inorganic particles present in the aqueous phase is comprised between 0.1 and 20 wt %, preferably between 0.2 and 10 wt % ([0079]). According to particular embodiment, the surface of the microcapsules obtained by the process of the invention can be modified with an additional step. Monomers or polymers suitable for surface modification are selected from compounds which can form chemical bond between the monomer or polymer and the microcapsules and which can improve the compatibility between the microcapsules and a target substrate. Thus, according to a particular embodiment of the invention, during or at the end of step 3) of the process, one may also add to the invention's slurry a polymer selected from the group consisting of a non-ionic polysaccharide, a cationic polymer and mixtures thereof to form an outer coating to the microcapsule ([0080-0081]). Cationic polymers are also well known to a person skilled in the art. Preferred cationic polymers have cationic charge densities of at least 0.5 meq/g, more preferably at least about 1.5 meq/g, but also preferably less than about 7 meq/g, more preferably less than about 6.2 meq/g ([0083]). According to a particular embodiment, one will use cationic polymers based on acrylamide, methacrylamide, N-vinylpyrrolidone, quaternized N,N-dimethylaminomethacryl ate, diallyldimethylammonium chloride, quaternized vinylimidazole (3-methyl-1-vinyl-1H-imidazol-3-ium chloride), vinylpyrrolidone, acrylamidopropyltrimonium chloride, cassia hydroxypropyltrimonium chloride, guar hydroxypropyltrimonium chloride or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether, starch hydroxypropyltrimonium chloride and cellulose hydroxypropyltrimonium chloride. Preferably copolymers shall be selected from the group consisting of polyquaternium-5, polyquaternium-6, polyquaternium-7, polyquaternium10, polyquaternium-11, polyquaternium-16, polyquaternium-22, polyquaternium-28, polyquaternium-43, polyquaternium-44, polyquaternium-46, cassia hydroxypropyltrimonium chloride, guar hydroxypropyltrimonium chloride or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether, starch hydroxypropyltrimonium chloride and cellulose hydroxypropyltrimonium chloride ([0084]). According to any one of the above embodiments of the invention, there is added an amount of polymer described above comprised between about 0% and 5% w/w, or even between about 0.1% and 2% w/w, percentage being expressed on a w/w basis relative to the total weight of the slurry as obtained after step 3). It is clearly understood by a person skilled in the art that only part of said added polymers will be incorporated into/deposited on the microcapsule shell ([0086]). Preferably, the perfuming composition according to the invention comprises between 0.05 to 30%, preferably between 0.1 and 30% by weight of microcapsules as defined above ([0107]). The obtained microcapsules comprising perfume oil are in the form of a slurry (suspension in water) ([0140, 0146]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Wu et al. is that Wu et al. is not specific enough for anticipation.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1, 3-4, 7, 9 and 13-14, Wu et al. teaches an aqueous suspension (dispersion) comprising microcapsule comprising silica or silicate as shell and perfume oil as core inside the shell; a cationic polymer such as guar hydroxypropyltrimonium chloride (cationic guar gum) or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether (cationic galactomannan), starch hydroxypropyltrimonium chloride (cationic starch).
Regarding the content (B) to component (A) and claims 5-6 and 11, Wu et al. teaches cationic polymer at about 0% and 5% w/w ( about 0.1% and 2% w/w) in aqueous suspension, microcapsule component hydrophobic active ingredient perfume oil at 20 to 50% in aqueous suspension, silica or silicate particle 0.1 and 20 wt % in aqueous suspension, and the at least one polyisocyanate amount comprised between 0.1 wt % and 40 wt % of the oil phase, which is about 0.1%x20% to 40%x20% =0.02% to 8% when perfume oil is 20% in the aqueous phase. Thus, when the cationic polymer (component (B)) is 0.1% of aqueous suspension, component (A) is perfume oil 20% + silica or silicate particle 10%+ polyisocyanate 3.33%=33.33% of aqueous suspension, per 100 parts of component (A), component (B) is 0.1%x (100/33.33) = 0.3 parts.
Regarding claim 2, Wu et al. teaches Preferred cationic polymers have cationic charge densities of at least 0.5 meq/g and less than about 6.2 meq/g.
Regarding claim 10, to make an aqueous suspension comprising component (A) and (B), always including a step of mixing (A) and (B).
Regarding claim 12, Wu et al. is silent about silica formed through sol-gel reaction using an alkoxysilane as a shell precursor, which is regarded as product by process.
With respect to the USC 103 rejection above, please note that in product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Please note that the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicants’ hydrated (vitrified matrix) collagen gel differs and, if so, to what extent, from that of the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US20190255502), as applied in the above 103 rejection for claims 1-7 and 9-14, in view of Galeone et al. (US20110104221).
In arguendo that Wu et al.’s silica is different from the silica formed from the process in claim 12, claim 12 is still obvious according to the following discussion.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Wu et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Galeone et al. teaches the fragrance composition is encapsulated within a shell comprising a silicon-containing material and the shell has a mean diameter size which is lower than 30 micrometer (abstract, claim 1). The term “silicate shell” refers to a shell material obtained from a silicon-containing material, preferably a silicon-containing material obtained from the hydrolysis and condensation of alkoxysilanes ([0016]). Preferably, the microcapsules have a mean diameter size lower than 30 micrometer, preferably lower than 20 micrometer, for example in the range of 0.5 to 20 micrometer, more preferably in the range between 1 and 10 micrometer, for example in the range of 1.5 to 7 micrometer ([0028]). Preferably, the particle size distribution is small ([0037]). The particle size of the microcapsules produced generally corresponds to the particle size of the starting emulsion and can for example be in the range 0.1 to 30 micrometer ([0058]). A Sol-Gel Process of preparing microcapsule comprising silica particle from tetraethoxysilane (TEOS) ([0135]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Wu et al. is that Wu et al. do not expressly teach particle size of microcapsule and sol-gel process. This deficiency in Wu et al. is cured by the teachings of Galeone et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Wu et al., as suggested by Galeone et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to have particle size of microcapsule from 0.1um to 30um because this is optimization under prior art condition or through routing experimentation. MPEP 2144.05. Under guidance from Galeone et al. teaching microcapsule comprising silicate particle and fragrance having particle size of 0.1 um to 30um, it is obvious for one of ordinary skill in the art to have particle size of microcapsule from 0.1um to 30um and produce instant claimed invention with reasonable expectation of success.
One of ordinary skill in the art would have been motivated to prepare silica particle for microcapsule encapsulating fragrance formed through sol-gel process using an alkoxysilane as a shell precursor because this is known process for preparing silica particle for microcapsule encapsulating fragrance formed through sol-gel process using tetraethoxysilane (an alkoxysilane) as a shell precursor as suggested by Galeone et al. Thus, it is obvious for one of ordinary skill in the art to prepare silica particle for microcapsule encapsulating fragrance formed through sol-gel process using an alkoxysilane as a shell precursor and produce instant claimed invention with reasonable expectation of success.
Regarding claim 8, since prior art teaches particle size of microcapsule from 0.1 um to 30um, the median particle size is inside the range of 0.1 um to 30 um.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12491487 in view of Wu et al. (US20190255502). The reference patent teaches microcapsule comprising silica as shell and fragrance as core, but silent about a cationic polysaccharide, in view of Wu et al. teaching an aqueous dispersion of microcapsule and cationic polymer such as guar hydroxypropyltrimonium chloride (cationic guar gum) or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether (cationic galactomannan), starch hydroxypropyltrimonium chloride (cationic starch), it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12448571 in view of Wu et al. (US20190255502). The reference patent teaches microcapsule comprising silica as shell and fragrance as core, but silent about a cationic polysaccharide, in view of Wu et al. teaching an aqueous dispersion of microcapsule and cationic polymer such as guar hydroxypropyltrimonium chloride (cationic guar gum) or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether (cationic galactomannan), starch hydroxypropyltrimonium chloride (cationic starch), it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10046291 in view of Wu et al. (US20190255502). The reference patent teaches microcapsule comprising silica as shell and fragrance as core, but silent about a cationic polysaccharide, in view of Wu et al. teaching an aqueous dispersion of microcapsule and cationic polymer such as guar hydroxypropyltrimonium chloride (cationic guar gum) or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether (cationic galactomannan), starch hydroxypropyltrimonium chloride (cationic starch), it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18573451 in view of Wu et al. (US20190255502) and Galeone et al. (US20110104221). The copending application teaches an aqueous dispersion comprising microcapsule comprising silica as shell and fragrance as core, but silent about a cationic polysaccharide, in view of Wu et al. teaching cationic polymer such as guar hydroxypropyltrimonium chloride (cationic guar gum) or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether (cationic galactomannan), starch hydroxypropyltrimonium chloride (cationic starch) and Galeone et al. teaching particle size of microcapsule, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-33 of copending Application No. 1778904 in view of Wu et al. (US20190255502). The copending application teaches an aqueous dispersion comprising microcapsule comprising silica as shell and fragrance as core, but silent about a cationic polysaccharide, in view of Wu et al. teaching cationic polymer such as guar hydroxypropyltrimonium chloride (cationic guar gum) or polygalactomannan 2-hydroxypropyltrimethylammonium chloride ether (cationic galactomannan), starch hydroxypropyltrimonium chloride (cationic starch), it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613