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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/25/2025 has been entered.
Status of the Claims
This action is in response to papers filed 11/25/2025 in which claims 1-10 and 13 were canceled; claim 20 was withdrawn; and claim 11 was amended. All the amendments have been thoroughly reviewed and entered.
Claims 11-12 and 14-19 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejections and/or objections not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-12 and 14-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 introduces new matter as the claims recite the limitation: “for laundry or fabric care applications.” There is no support in the specification for said limitation. Applicant asserted that the support for the amendments can be found in paragraphs [0024]-[0028], [0030]-[0031], [0038]-[0039], and Examples 1-2 of the specification as filed (see Remarks filed 11/25/2025, page 6, 2nd paragraph).
However, after a thorough review of said paragraphs [0024]-[0028], [0030]-[0031], [0038]-[0039], and Examples 1-2, as well as, throughout the specification, there appeared to be no disclosure or support for the limitation of laundry or fabric care applications as claimed. Nothing in paragraphs [0024]-[0028], [0030]-[0031], and [0038]-[0039] or in Example 1-2 relates to “laundry or fabric care applications.”
Claims 12 and 14-19 are also rejected, as they dependent directly or indirectly from claim 11, respectively, thereby also containing the conflicting new matter limitation.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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) 11-12, 14 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al (US 2022/0295862 A1) in view of Guo et al (International Journal of Biological Macromolecules, 2019, 130: 499-507) and Skuratowicz et al (US 2009/0142812 A1).
Regarding claim 11, Clark teaches a thermally stable aromatic bead containing enzymatically modified starch (Abstract; [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]). Clark teaches the bead is produced by uniformly mixing all ingredients including the enzymatically modified starch and botanical materials/flavorants including anise, clove and cinnamon to form a uniform mixture and then performing extrusion of the mixture using an extruder to form the bead ([0007], [0034], [0015], [0023], [0045], [0060], [0074], [0137], [0139], [0168]-[0169], [0176]-[0179]; Examples 1-4). Clark teaches the starch is a potato or tapioca starch ([0162]), thereby meeting the claimed “plant rhizome starch.”
Clark teaches the starch can be subjected transglycosylation to produce modified starch ([0162]), but does not particularly mentioned that the enzymatically modified starch is modified by maltose-transglucosylase. However, it would have been obvious to enzymatically modify the starch of Clark using maltose-transglucosylase in view of the guidance from Guo and Skuratowicz.
Guo and Skuratowicz teach the modification of starch via starch modifying enzyme such as transglucosylase (which meets the claimed “maltose-tranglucosylase”) so as to improve the molecular weight distribution and temperature stability of the starch during storage (Guo: Abstract; page 504; Table 2; Skuratowicz: [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]).
Thus, an ordinary artisan seeking to improve the stability of the starch bead during storage temperature, would have looked to modifying the starch of Clark using known starch modifying enzymes including maltose-transglucosylase (transglucosidase) so as to achieve a thermally stabled bead as desired by Clark, and achieve Applicant’s claimed invention with reasonable expectation of success.
While Clark does not expressly disclose the melting temperature of the bead or the molecular weight of the modified starch, it would have been obvious that said properties of melting temperature and molecular weight is implicit in the enzymatically modified starch (modified by starch modifying enzymes such as transglucosylase) that is used in forming the bead. As evidenced by Guo, the enzymatically modified starch (starch modified by transglucosylase) is thermally stable at a temperature of greater than >50°C (Guo: Abstract; page 504; Table 2). As evidenced by Skuratowicz, the starch modified by starch modifying enzyme such as transglucosylase provides a modified starch having a molecular weight of less than 10,000 (Skuratowicz: Abstract; [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]). Clark in view of Guo and Skuratowicz teach that the melting temperature or the temperature to which the modified starch is thermally stable and the average molecular weight of the resultant enzymatically modified starch are dependent on the source of starch used and the enzyme used for modifying the starch (Clark: [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]; Guo: Abstract; page 504; Table 2; Skuratowicz: [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]), thereby melting temperature and average molecular weight of the modified starch are optimizable parameter based on the source of starch and the enzyme used for modifying the starch. Thus, it is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. It is further noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With respect to the claimed “for laundry or fabric care application” as recited in the preamble of claim 11, it is noted that said recitation is a recitation of intended use of the prior arts’ fragrance bead. As discussed above, Clark in view of Guo and Skuratowicz teach each and every structural limitations of the fragrance bead of claim 11, and thus, it is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2111.02.
Regarding claim 12, as discussed above, Clark teaches a thermally stable aromatic bead containing enzymatically modified starch (Abstract; [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]). While Clark does not expressly disclose the melting temperature of the bead or the molecular weight of the modified starch, it would have been obvious that said properties of melting temperature and molecular weight is implicit in the enzymatically modified starch (modified by starch modifying enzymes such as transglucosylase) that is used in forming the bead. As evidenced by Guo, the enzymatically modified starch (starch modified by transglucosylase) is thermally stable at a temperature of greater than >50°C (Guo: Abstract; page 504; Table 2). As evidenced by Skuratowicz, the starch modified by starch modifying enzyme such as transglucosylase provides a modified starch having a molecular weight of less than 10,000 (Skuratowicz: Abstract; [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]). Clark in view of Guo and Skuratowicz teach that the melting temperature or the temperature to which the modified starch is thermally stable and the average molecular weight of the resultant enzymatically modified starch are dependent on the source of starch used and the enzyme used for modifying the starch (Clark: [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]; Guo: Abstract; page 504; Table 2; Skuratowicz: [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]), thereby melting temperature and average molecular weight of the modified starch are optimizable parameter based on the source of starch and the enzyme used for modifying the starch. Thus, it is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. It is further noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 14, Clark in view of Guo and Skuratowicz teach the starch is potato or tapioca starch (Clark: [0162]; Guo: Abstract; page 504; Table 2; Skuratowicz: [0041] and [0044]).
Regarding claim 17, Clark teaches the bead contains about 45% by weight of starch, about 1% to about 5% by weight of cinnamon (a spice), 10% to 30% by weight of water, about 10% to about 30% by weight of glycerol, and about 0.5% to about 1.5% by weight of a cellulose binder (a molding agent) ([0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]). It would have been obvious to one of ordinary skill in the art to routinely optimize the amount of starch, cinnamon, water, glycerol and binder in the bead of Clark to weight amounts as claimed in claim 17, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Clark teaches the bead contains about 45% by weight of starch, about 1% to about 5% by weight of cinnamon (a spice), 10% to 30% by weight of water, about 10% to about 30% by weight of glycerol, and about 0.5% to about 1.5% by weight of a cellulose binder (a molding agent), which are weight amounts that falls within or overlaps the claimed weight amount ranges of claim 17. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amounts of encapsulating material (modified starch), spice, water, releasing agent, and molding agent would have been obvious before the effective filing date of applicant's invention. “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, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
Regarding claim 18, as discussed above, Clark teaches the bead contains glycerol (glycerin).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al (US 2022/0295862 A1) in view of Guo et al (International Journal of Biological Macromolecules, 2019, 130: 499-507) and Skuratowicz et al (US 2009/0142812 A1), as applied to claim 11 above, and further in view of Brady (US 2020/0345600 A1).
The fragrance bead of claim 11 is discussed above, said discussion being incorporated herein in its entirety. Regarding claim 15, Brady teaches a fragrance bead containing starch that can be shaped into various formats including flowers, and such formats are well-known to prove visual appeal to a user ([0006]-[0008], [0052]-[0053], [0062], [0078], [0085], [0106], and [0111]).
It would have been obvious to one of ordinary skill in the art to shape the aromatic bead of Clark into a flower shape, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Brady provides the guidance for shaping the aromatic bead containing starch and fragrance of Brady to well-known shape such as a flower-shape so as the final product is visually appealing. Thus, an ordinary artisan would have looked to producing the bead of Clark into well-known shapes such as a flower-shape to make the bead more visually appealing, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al (US 2022/0295862 A1) in view of Guo et al (International Journal of Biological Macromolecules, 2019, 130: 499-507) and Skuratowicz et al (US 2009/0142812 A1), and Brady (US 2020/0345600 A1), as applied to claims 11 and 15 above, and further in view of Hutabarat et al (IOP Conf. Ser.: Earth Environ. Sci., 2023, 1169 012093, pp. 1-10).
The fragrance beads of claim 11 and 15 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 16, Hutabarat teaches enzymatically modified starch has increase solubility compared to native starch (Abstract; Introduction; pages 5-9).
It would have been reasonably obvious that the aromatic bead of Clark containing enzymatically modified starch, which meets the claimed structure of the claimed fragrance bead having modified starch as an encapsulating material, would implicitly have the dissolution property of “a dissolution duration of the fragrance bead at room temperature is 4 to 10 minutes” as claimed because as discussed above, Hutabarat established that starch that has been enzymatically modified would exhibit higher or increase solubility as compared to native starch. Thus, it is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. It is further noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al (US 2022/0295862 A1) in view of Guo et al (International Journal of Biological Macromolecules, 2019, 130: 499-507) and Skuratowicz et al (US 2009/0142812 A1), as applied to claims 11 and 17 above, and further in view of Glenn et al (US 2007/0021515 A1).
The fragrance bead of claim 11 is discussed above, said discussion being incorporated herein in its entirety. Regarding claim 19, Glenn teaches a starch-based bead comprising starch, water, glycerol, and hemicellulose (Abstract; [0009]-[0035]; Examples 1 and 2).
It would have been obvious to one of ordinary skill in the art to incorporate hemicellulose as the cellulose binder in the bead of Clark, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Glenn teaches that hemicellulose can be used in combination with starch so as to form a bead product that can be extruded into various shapes ([0029] and [0030]). Thus, an ordinary artisan provided the guidance from Glenn would have looked to incorporate hemicellulose as the cellulose binder in the bead of Clark so as to produce a bead product that can be extruded into various shapes, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
Applicant argues that none of the cited prior arts teaches or suggest a fragrance bead for laundry or fabric care applications as claimed. (Remarks, pages 6-8).
In response, the Examiner disagrees. As discussed above in the standing 103 rejection, it is noted that said recitation is a recitation of intended use of the prior arts’ fragrance bead. As discussed above, Clark in view of Guo and Skuratowicz teach each and every structural limitations of the fragrance bead of claim 11, and thus, it is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2111.02. Accordingly, the combined teachings of Clark, Guo, and Skuratowicz remain to render obvious Applicant’s claimed fragrance bead of independent claim 11.
Applicant argues: “[e]ven if certain prior-art starches appear superficially similar, their chemical composition, thermal performance, and functional behavior differ materially from the claimed starch. The specific combination of starch type, enzyme selection, molecular weight, and melting temperature of the present invention produces beads that retain structural integrity during high-temperature laundering and provide controlled fragrance release, as shown in Examples 1-6. Comparative examples outside the claimed ranges demonstrate significantly lower melting temperatures and bead coagulation, confirming the criticality of the recited parameters.” (Remarks, pages 7-8).
In response, the Examiner disagrees. Clark taught the thermally stable aromatic bead containing the enzymatically modified starch, particularly potato or tapioca starch enzymatically modified by transglycosylation (see 103 rejection, pages 3-4 of Final Rejection dated 08/11/2025). The potato or tapioca starch as taught by Clark meets the claimed "plant rhizome starch." Guo and Skuratowicz were used to teach and provide guidance for the modification of starch via starch modifying enzyme such as transglucosylase (see 103 rejection, page 4 of Final Rejection dated 08/11/2025), which meets the claimed "maltose-transglucosylase." Additionally, Guo was furthered use as evidence to established that the enzymatically modified starch (starch modified by transglucosylase) is thermally stable at a temperature >50 °C (see 103 rejection, bottom of page 4 to page 6 of Final Rejection dated 08/11/2025).
Contrary to Applicant's allegation, page 504 (right column) and Table 2 does establish that the enzymatically modified starch (starch modified by transglucosylase) is thermally stable at a temperature >50 °C, as Guo indicated that the the melting temperature ranges (Tc-To) of the enzymatically modified starch was 64.3 °C - 55.7°C. Thus, the starch modifying enzyme of transglucosidase (TG) of Guo is indeed thermotolerant. Applicant has not shown by objective evidence otherwise. It is further noted that Skuratowicz was further used as evidence to establish that the starch modified by starch modifying enzyme such as transglucosylase provides a modified starch having a molecular weight of less than 10,000 (see 103 rejection, page 5 of Final Rejection dated 08/11/2025).
Thus, as discussed in the 103 rejection, it is reiterated that Clark in view of Guo and Skuratowicz teach that the melting temperature or the temperature to which the modified starch is thermally stable and the average molecular weight of the resultant enzymatically modified starch are dependent on the source of starch used and the enzyme used for modifying the starch (Clark: [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]; Guo: Abstract; page 504; Table 2; Skuratowicz: [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]), thereby melting temperature and average molecular weight of the modified starch are optimizable parameter based on the source of starch and the enzyme used for modifying the starch.
As such, it is noted that the base material that makes up the structure of bead of Clark is the enzymatically modified starch and thus, the enzymatically modified starch of Clark in view of Guo and Skuratowicz would provide a resultant thermally stable bead, as it is the enzymatically modified starch that provides the thermal stability property of the bead. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
It is noted that the evidence as shown in Applicant's specification have also been established as expected from the teachings of Clark in view of Guo and Skuratowicz supra. Applicant has not shown by objective evidence otherwise. With respect to Applicant’s allegation drawn to “controlled fragrance release,” It is noted that none of the Examples 1-6 and comparative examples in the Specification are drawn to “controlled fragrance release” as alleged by Applicant. Nor are there any data in the specification drawn to controlled release of fragrance.
Accordingly, the combined teachings of Clark, Guo and Skuratowicz are proper to render obvious Applicant's claimed fragrance bead of independent claim 11.
Applicant argues: “the prior art provides no motivation to combine Clark with Guo and Skuratowicz to achieve the claimed high-temperature-resistant beads. Any reliance on inherency is misplaced, as the cited references do not establish that Clark's beads-alone or combined with Guo or Skuratowicz-would inherently possess the claimed structural or thermal properties. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), In re Best, 562 F.2d 1252, 1255 (CCPA 1977), and Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) confirm that structural similarity cannot supply obviousness where significant functional differences exist.” (Remarks, pages 7-8).
In response, the Examiner disagrees. As discussed above, it is maintained that a prima facie case of obviousness have been made by the Examiner based on the combined teachings of Clark, Guo and Skuratowicz, and thus, the burden is on the applicant to produce contrary evidence. As discussed above, Clark in view of Guo and Skuratowicz teach that the melting temperature or the temperature to which the modified starch is thermally stable and the average molecular weight of the resultant enzymatically modified starch are dependent on the source of starch used and the enzyme used for modifying the starch (Clark: [0006]-[0038], [0042]-[0102], [0117], [0136]-[0181] and [0193]; Guo: Abstract; page 504; Table 2; Skuratowicz: [0007]-[0018], [0021], [0025]-[0030], [0041]-[0056], [0058]-[0059], [0074]-[0075]), thereby melting temperature and average molecular weight of the modified starch are optimizable parameter based on the source of starch and the enzyme used for modifying the starch.
As such, it is reiterated that the base material that makes up the structure of bead of Clark is the enzymatically modified starch and thus, the enzymatically modified starch of Clark in view of Guo and Skuratowicz would provide a resultant thermally stable bead, as it is the enzymatically modified starch that provides the thermal stability property of the bead. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Applicant has not shown by objective evidence otherwise.
As a result, for at least the reasons discussed above and of record, claims 11-12 and 14-19 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the standing 103 rejections as set forth in this office action.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613