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
Acknowledgement is made of the response filed on June 26, 2026. In that response, claims 1 and 11 were amended. Claims 1-20 are treated on the merits in this action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 4 is objected to because of the following informalities: in limitation (5) “biodegradable” need not be capitalized. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 9-11, and 20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Brenner (US 3971852).
Brenner teaches a process of encapsulating an oil such as a fragrance oil “in particulate form, comprising a cellular matrix having oil in the cells thereof in which the matrix comprises polysaccharide and polyhydroxy compounds” (abstract; see entire document including title; col. 8 lines 59-col. 9 line 19). Brenner teaches the matrix materials in instant claims 4 and 9-11, including mannitol as the polyhydroxy compound (col. 10 lines 5-6; Examples 2, 5, 6, 9, 10, 13; claims 4, 7), water soluble polysaccharide or modified starch and gums (abstract; col. 4 lines 40-col. 6 line 40; col. 9 line 61-col. 10 line 25). “The process of making … comprises forming an aqueous phase of the polysaccharide and polyhydroxy compound in proper proportions, …, emulsifying the oil (either of the volatile or non-volatile type) in the aqueous phase and removing moisture while the mass is plastic or flowable, e.g., by spray drying droplets of the emulsion,…” (abstract; see col. 10 line 27-col. 11 line 36), which reads on step (a) in claim 1.
In Example 6, 40 parts of mannitol and 80 parts of polysaccharide X are mixed into an emulsion and then spray dried. “A paper is coated with the fraction of the product that passed through a 325 mesh screen by suspending 6.7 parts thereof and 3.3 parts colloidal silica in 100 cc of benzene containing 1 gram of ethyl cellulose and spraying it with an air atomizer onto the paper” (col. 14 lines 53-), which reads on steps (b) and (c) of claim 1 as benzene is an organic liquid non-solvent for mannitol and polysaccharides.
The particulate forms comprising a fragrance may be used in baby diapers (col. 17 line 34).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 4, 5, 9-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Brenner (US 3971852) in view of Thomas (US 2009/0126644).
Brenner does not specifically teach the organic liquid non-solvents or the polymers in claims 2 and 12-17.
Thomas teaches “solid, free-flowing composition adapted to deliver fragrance or malodor counteractant in a consumer product”, comprising a core material “that is dispersed in or coated with a fragranced material, or coated with a fragrance-encapsulating material” (para.0017), a fragrance material, and a “fragrance-encapsulating material” including those in instant claims 4-6 and 9-19 and identical to those in Brenner (paras.0029-35). An optional protective coating preferably includes polyethylene glycol in claim 2 (title; abstract; paras. 0006-12, 0025, 0036; see entire document).
Thoms teaches a process wherein the “fragranced material emulsion may be formed by mixing under high shear the fragrance with an aqueous phase comprising water and the encapsulating materials” (para.0048), and the “emulsion may be applied to the core particles in a spray coating process,” “where the particulate core material is put in motion in such a way that the surface of the particles is homogeneously exposed to the spray providing the atomized fragranced material emulsion” (para.0049). Hence Thomas teaches spray drying the emulsion with the core particles in the stream, which claim 1 here does not exclude.
Thomas further teaches forming a protective coating which preferably includes polyethylene glycol (para.0036). “By ‘protective coating’ is meant a thin layer of a material having the function of preventing low levels of moisture present in the product causing breakdown or clumping of the particles, yet which, in the presence of larger amounts of water in use, will break down and allow release of the fragrance.” (Para.0036). The “resultant encapsulated material can be coated with a coating material” (para.0046).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Brenner and Thomas and provide a protective coating of Thomas over Brenner’s particles or use the encapsulating materials of Thomas as recited in the instant claim(s). The skilled person would have been motivated to do so because both are drawn to fragrance particles encapsulated in water soluble or dispersible polymers, and Thomas teaches that a protective coating has “the function of preventing low levels of moisture present in the product causing breakdown or clumping of the particles, yet which, in the presence of larger amounts of water in use, will break down and allow release of the fragrance.” (Para.0036). Regarding the matrix polymers, substituting equivalents known for the same purpose, where the equivalency has been recognized in the prior art, presents strong evidence of obviousness; an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. MPEP §2144.06 (II) (citations omitted). Here both Brenner and Thomas teaches overlapping matrix polymer such as mannitol and modified starch, and Thomas teaches further suitable polymers.
Claim(s) 1-6 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brenner (US 3971852) in view of Thomas (US 2009/0126644) and McGee (US 2003/0072733).
Brenner and Thomas do not specifically teach the polyethylene glycol of molecular weight from about 200 to about 700 as in claims 3, 6, and 19.
McGee is drawn to “absorbing moisture and/or malodor and providing a fragrance to the surrounding ambience that includes providing a delivery vehicle containing an enrobement material, a fragrance, and a fixative” wherein the fixative is polyethylene glycol having molecular weight of about 400 to about 20,000 Daltons, e.g., 400 Daltons (abstract; claims 3, 4; see title; paras.0014-33). The delivery vehicle is a free-flowing powder and comprises a fragrance material and an absorbent material such as starches (paras.0012-14).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Brenner, Thomas, and McGee and disperse the fragrance-containing particles in polyethylene glycol of molecular weight from about 400 to about 20,000 Daltons, e.g., 400 Daltons, which claims 3, 6, and 19 read on. The skilled person would have been motivated to do so because all references are drawn to free-flowing, fragrance-containing particles, Thomas teaches advantages of providing a protective coating, including of polyethylene glycol, and McGee teaches a suitable molecular weight range therefor. The range of about 400 to about 20,000 Daltons overlaps that in claims 3, 6, and 19. For result-effective variables, in the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05 (citations omitted). Furthermore, optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
CONCLUSION
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 H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614
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