DETAILED ACTION
Status of Application
Receipt of the Claim set and remarks filed 3/4/2026, is acknowledged.
Claims 1-20 are pending and currently under consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments have been fully in considered from the remarks filed 3/4/2026 and are persuasive in overcoming the previous art rejections which are withdrawn.
However, examiner relies on the teachings of Elabbadi et al. (WO2020127749A1) hereinafter Elabbadi. After further consideration, Examiner has made double patenting rejections. Since the new grounds of rejection are not necessitated by amendment, this action is made NON-FINAL.
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 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 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.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Elabbadi et al. (WO2020127749A1) hereinafter Elabbadi.
Regarding claims 1-20, Elabbadi is drawn to a new process for the preparation of polyamide microcapsules. Polyamide microcapsules obtainable by said process are also an object of the invention. Perfuming compositions and consumer products comprising said capsules, in particular perfumed consumer products in the form of home care or personal care products (abstract).
Elabbadi discloses a process for preparing a polyamide core-shell microcapsule slurry comprising the following steps: a) Dissolving at least one acyl chloride and at least one stabilizer in a hydrophobic material, preferably a perfume to form an oil phase; 15 b) Dispersing the oil phase obtained in step a) into a water phase comprising optionally an amino compound A or a base to form an oil-in-water emulsion; and c) Performing a curing step to form polyamide microcapsules in the form of a slurry, wherein at least an amino compound B is added in the water phase before the formation of the oil-in-water emulsion and/or in the oil-in water emulsion obtained after step b) (pg. 2, ln 13-19).
Elabbadi discloses the microcapsule can comprise L-Lysine (pg. 28, ln 11-12), guanidine carbonate, chitosan (pg. 29, 8-12), the stabilizer is a biopolymer chosen in the group consisting of consisting of protein such as whey protein (pg. 27, ln 20-21). Elabbadi discloses microcapsules as defined above, wherein the oil comprises a perfume; (pg. 32, ln 25). Elabbadi discloses suitable perfumed consumer product can be a perfume, such as a fine perfume, a cologne, an after-shave lotion, a body-splash; a fabric care product, such as a liquid or solid detergent, tablets and pods, a fabric softener (pg. 36, ln 1-3).
Elabbadi does not explicitly disclose the system as claimed in a single embodiment.
However, 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 teachings of Elabaddi, to arrive at the instant invention.
One of ordinary skill in the art would have been motivated to do so because Elabbadi discloses each of the steps and components of the microcapsule and is in the field of methods of making polyamide microcapsule. Further, one having ordinary still in the art would reasonably expect success in combining prior art elements according to known methods to yield predictable results, see MPEP 2141.
The Supreme Court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation... 103 likely bars its patentability...if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions......the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) (emphasis added).
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 at the time the invention was made, 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7 and 9-10 of copending Application No. 17312749 in view of Elabbadi et al (WO 2020/127749 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘749 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule, wherein the polyamide microcapsule comprises a polyamide shell comprising at least one acyl chloride, a first amino compound, a second amino compound and a stabilizer, wherein the processes comprises the steps of dissolving at least one acyl chloride and stabilizer in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase comprising a first amino compound to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a second amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed.
While the claims in the instant application is silent with a protein as the stabilizer, it would have been obvious to incorporate a protein as a stabilizer in the oil phase in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system over copending Application No. 17312749 in view of Elabbadi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-19 of copending Application No. 17416379 in view of Elabbadi et al (WO 2020/127749 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘379 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride and stabilizer in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase comprising a first amino compound to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a second amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed, and wherein the first amino compound include amino acid such as L-lysine.
While the instant claims is silent with respect to the weight ratio of first amino compound and second amino compound being between 1.3:1 and 25:1, it would have been obvious to routine optimize the weight ratio of first amino compound and second amino compound of the instant claims to a weight ratio of between 1.3:1 and 25:1 in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system over copending Application No. 17416379 in view of Elabbadi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17802518 in view of Elabbadi et al (WO 2020/127749 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘518 significantly overlap with the subject matter of the instant claims i.e., the claims in the instant application and the claims in the copending application ‘518 being substantially same polyamide core-shell microcapsule produced by the process of dissolving at least one acyl chloride and stabilizer in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase comprising a first amino compound to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a second amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed, and wherein the first amino compound include amino acid such as L-lysine.
It would have been obvious to include an acyl chloride chosen from the group consisting of benzene-1, 3, 5-tricarbonyl chloride, benzene- 1,2, 4-tricarbonyl trichloride, benzene- 1,2,4,5-tetracarbonyl tetrachloride, cyclohexane-1,3, 5-tricarbonyl trichloride, isophthalyol dichloride, diglycolyl dichloride, succinic dichloride, and mixtures thereof, as the acyl chloride in the instant claims and arrive at the claims of copending application ‘518 in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system over copending Application No. 17802518 in view of Elabbadi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18290365.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘365 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride and a carbohydrate in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein at least one amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system over copending Application No. 18290365
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18290476 in view of Elabbadi et al (WO 2020/127749 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘476 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein at least one amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed.
While the process of the instant claims do not contain a protein or a crosslinker, it would have been obvious to incorporate a protein in the oil phase, as well as, a crosslinker such as an amine compound in the water phase in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system over copending Application No. 18578404 in view of Elabbadi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19138430.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘430 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride in a hydrophobic material such as a perfume to form an oil phase; dispersing the oil phase into a water phase (a dispersing phase) to form an oil-in-water emulsion (a two-phases dispersion), and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein at least one amino compound such as lysine is added in the water phase (dispersion phase) before the formation of the oil-in-water emulsion (two-phases dispersion) and/or after the oil-in-water emulsion (two-phases dispersion) is formed.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system over copending Application No. 19138430.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615
Prosecution Insights