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 .
Claim Objections
Claims 2-4 and 7 are objected to because of the following informalities:
In instant claim 2, the limitation “Number of isocyanate groups (NCO groups)” should be amended to recite “Number of NCO groups (isocyanate groups)” for consistency purposes with the equation.
In instant claim 3, the limitation “about 1” should be amended to recite “about 1%” for consistency purposes.
In instant claim 4, the limitation “about 1” should be amended to recite “about 1%” for consistency purposes.
In instant claim 7, the limitation “about 30” should be amended to recite “about 30%” for consistency purposes.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2, 5, 7, 9 and 16 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 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “excluding any solvent or other substances that may be mixed with the isocyanate”. This limitation renders the claim vague and indefinite, since the molecular weight of the isocyanate compound is based only on the elements present in the isocyanate compound. Accordingly, the limitation “excluding any solvent or other substances that may be mixed with the isocyanate” should be deleted. Appropriate correction and/or clarification is required.
Claim 5 is 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 applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 5 recites the broad recitation “wherein the alpha-aromatic isocyanate is selected from the group consisting of” in lines 1-2, followed by the narrow recitations of “wherein the alpha-aromatic isocyanate is selected from the group consisting of”, and “wherein the alpha-aromatic isocyanate is selected from the group consisting of” in lines 9 and 15. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 7 is 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 applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 7 recites the broad recitation “wherein the isocyanate component comprises at least two di- and/or poly-isocyanates selected from” in lines 1-2, followed by the narrow recitations of “wherein the isocyanate component” in line 4, and “wherein the isocyanate component comprises by weight about 30 to 40%” in lines 6-7. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 7 is 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 applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 7 recites the broad recitation “wherein the isocyanate component comprises by weight about 30 to about 40%”, followed by the narrow recitation of “about 34%”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 7 is 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 applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 7 recites the broad recitation “and from about 60 to about 70%”, followed by the narrow recitation of “or about 66%”. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “1about0:90”. This limitation renders the claim vague and indefinite, since the ratio is unclear. Appropriate correction and/or clarification is required.
Claim 16 is 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 applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 16 recites the broad recitation “polyvinylalcohol copolymers are selected from” in line 4, followed by the narrow recitation of “especially….” In line 5. See MPEP 2173.05(c). Appropriate correction and/or clarification is required.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Fernandez-Prieto et al, US 2023/0062702.
Fernandez-Prieto et al, US 2023/0062702, discloses a fabric care composition comprising delivery particles that include a core/shell that is a polymeric material made by the reaction of a polyisocyanate and chitosan, wherein the core contains a fragrance (see abstract and paragraphs 10 and 55). It is further taught by Fernandez-Prieto et al that the polyisocyanate contains an aromatic moiety that contains at least two isocyanate groups, wherein suitable polyisocyanates include mixtures of toluene diisocyanate (i.e., an alpha-aromatic isocyanate) and a trimethylol propane-adduct of xylylene diisocyanate (i.e., a beta-aromatic isocyanate; see paragraphs 65-70), that the chitosan makes up 21-95% by weight of the shell (see paragraph 64), that the weight ratio of chitosan to isocyanate in the oil phase is 21:79 to 90:10 (see paragraph 64), that the fragrance is a perfume raw material having a log P of 2.5-4 (see paragraph 83), that the delivery particles have a median particle size of 1-100 microns (see paragraph 52), that the ratio of the core to the shell is up to 99:1 (see paragraph 53), that the fabric care composition further contains adjunct materials, such as additional perfumes (see paragraph 108), that the delivery particles are spray-dried (see paragraph 138), and that the fabric care composition is in a unit dose form (see paragraphs 15 and 113), per the requirements of the instant invention. Specifically, note Examples 1-4 and Tables 1-3.
Although Fernandez-Prieto et al generally discloses a fabric care composition containing a delivery particle shell comprising the reaction product of chitosan and a mixture of toluene diisocyanate (i.e., an alpha-aromatic isocyanate) and a trimethylol propane-adduct of xylylene diisocyanate (i.e., a beta-aromatic isocyanate), the reference does not require such fabric care compositions containing this delivery particle shell with sufficient specificity to constitute anticipation.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have formulated a fabric care composition, as taught by Fernandez-Prieto et al, which contained a delivery particle shell comprising the reaction product of chitosan and a mixture of toluene diisocyanate and a trimethylol propane-adduct of xylylene diisocyanate, because such fabric care compositions fall within the scope of those taught by Fernandez-Prieto et al. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a fabric care composition containing a delivery particle shell comprising the reaction product of chitosan and a mixture of toluene diisocyanate and a trimethylol propane-adduct of xylylene diisocyanate is expressly suggested by the Fernandez-Prieto et al disclosure and therefore is an obvious formulation.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Feng, US 2021/0339217.
Feng, US 2021/0339217, discloses a microcapsule containing a benefit agent, wherein the microcapsule is the reaction product of chitosan and polyisocyanate (see abstract and paragraphs 21-23). It is further taught by Feng that the shell contains 21-75% by weight of chitosan (see paragraph 25), that suitable polyisocyanates have at least two isocyanate groups comprising an aromatic moiety, wherein suitable aromatic polyisocyanates include a mixture of toluene diisocyanate (i.e., an alpha-aromatic isocyanate) and a trimethylol propane-adduct of xylylene diisocyanate (i.e., a beta-aromatic isocyanate; see paragraphs 47-50), that the core contains perfume raw materials (see paragraphs 52-56), that the core-shell microcapsules have a mean particle size of 1-100 microns (see paragraph 42), that the microcapsule is part of a solid product that further contains 20-95% by weight of a carrier, such as polyethylene oxide (see paragraphs 164-170), that the ratio of core to shell is up to 99:1 (see paragraph 40), that a cleaning composition contains 0.01-10% by weight of the microcapsules (see paragraph 132), and that the composition is in a unit dose form that contains a polyvinyl alcohol film (see paragraphs 109, 141 and 159), per the requirements of the instant invention. Specifically, note Capsule Examples 3-17 and the Composition Examples in Tables 1-18.
Although Feng generally discloses a microcapsule comprising the reaction product of chitosan and a mixture of toluene diisocyanate (i.e., an alpha-aromatic isocyanate) and a trimethylol propane-adduct of xylylene diisocyanate (i.e., a beta-aromatic isocyanate), the reference does not require such microcapsules with sufficient specificity to constitute anticipation.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have formulated a microcapsule, as taught by Feng, which contained a microcapsule comprising the reaction product of chitosan and a mixture of toluene diisocyanate and a trimethylol propane-adduct of xylylene diisocyanate, because such microcapsules fall within the scope of those taught by Feng. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a microcapsule comprising the reaction product of chitosan and a mixture of toluene diisocyanate and a trimethylol propane-adduct of xylylene diisocyanate is expressly suggested by the Feng disclosure and therefore is an obvious formulation.
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/978,493 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/978,493 claims a similar laundry treatment composition in the form of a water-soluble unit dose article comprising water, a delivery particle comprising a perfume core and a shell comprising the reaction product of chitosan and a mixture of at least one alpha-aromatic isocyanate, such as toluene diisocyanate, and at least one beta-aromatic isocyanate, such as a trimethylol propane-adduct of xylylene diisocyanate, and adjunct ingredients (see claims 1-20 of copending Application No. 18/978,493), as required in the instant claims. Therefore, instant claims 1-17 are an obvious formulation in view of claims 1-20 of copending Application No. 18/978,493.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
August 30, 2026
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