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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/809,589, filed on March 5, 2020.
Specification
The first line of the specification should be updated to recite that “This application is a continuation of Serial Number 18/345,269, filed on June 30, 2023, now U.S. Patent Number 12,209,232, which is a continuation of Serial Number 16/809,589, filed March 5, 2020, now U.S. Patent Number 11,732,222, which claims benefit of Provisional Serial Number 62/814,331, filed on March 6, 2019.”.
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 3-6 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 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “aldehyde compounds, ester compounds, or mixtures thereof”. This limitation renders the claim indefinite, since claim 1 requires the perfume to be one or more ester compounds. Appropriate correction and/or clarification is required.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “wherein the perfume comprises a material selected from the group consisting of aliphatic aldehydes and/or their acetals; cycloaliphatic aldehydes; aromatic and/or araliphatic aldehydes; aliphatic, aromatic or araliphatic esters; lactones; or mixtures thereof”. This limitation renders the claim indefinite, since claim 1 requires the perfume to be one or more ester compounds. 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, for containing the limitation “wherein the perfume comprises one or more aldehydic perfume raw materials….”. This limitation renders the claim indefinite, since claim 1 requires the perfume to be one or more ester compounds, and thus, should be amended to recite “wherein the perfume further comprises”. Appropriate correction and/or clarification is required.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “wherein the perfume comprises one or more aldehydic perfume raw materials….”. This limitation renders the claim indefinite, since claim 1 requires the perfume to be one or more ester compounds, and thus, should be amended to recite “wherein the perfume further comprises”. Appropriate correction and/or clarification 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.
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.
Claims 1-20 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Warr et al, US 2015/0017214.
Warr et al, US 2015/0017214, discloses a microcapsule for use as a household cleaner having an average particle size of from 7.5-50 microns, wherein the microcapsule contains a core and a polymeric shell enclosing the core, and wherein the core contains an emulsifiable fragrance (see abstract and paragraph 1). It is further taught by Warr et al that the polymeric shell contains, in polymerized form, 30-80% by weight of a monoethylenically unsaturated monomer, such as a methacrylate (see paragraphs 27-33 and 40), and 20-70% by weight of a polyethylenically unsaturated monomer, such as pentaerythritol trimethacrylate (see paragraphs 32 and 41), that suitable fragrances include lilal (i.e. an aldehydic perfume; see paragraph 250), and methyl laitone (i.e. an ester perfume; see paragraph 254), that the perfume core contains a solvent, such as isopropyl myristate (i.e. a partitioning modifier; see paragraph 305), that the microcapsule is in a detergent composition that further contains fabric softeners and surfactants (see paragraphs 399-408), and that the composition is in the form of a liquid or unit dose sachets (see paragraph 407). Specifically note Fragrance Example 1, which contains 25% by weight of isobornyl acetate (i.e. an ester moiety perfume), 15% by weight of lilial (i.e. an aldehyde moiety perfume), 6% by weight of ethyl-2-methylpentanoate (i.e. an ester moiety perfume), 5% by weight of allyl heptoate (i.e. an ester moiety perfume), 5% by weight of styrallyl acetate (i.e. an ester moiety perfume), 5% by weight of 2-methylundecanal (i.e. an aldehyde moiety perfume), 5% by weight of vertenex (i.e. an aldehyde moiety perfume), and 3% by weight of coumarin (i.e. a lactone moiety perfume), which results in a fragrance material containing 69% by weight of perfume raw materials that comprise aldehyde moieties, acetal moieties, ester moieties, and lactone moieties. Further note that Fragrance Example 2 contains 72% by weight of perfume raw materials that comprise aldehyde moieties, acetal moieties, ester moieties, and lactone moieties, and that Fragrance Example 3 contains 50.5% by weight of perfume raw materials that comprise aldehyde moieties, acetal moieties, ester moieties, and lactone moieties. Also, note Product Examples 1-23 and Tables 1-15. Although Warr et al is silent with respect to the acid value of their Fragrance Examples 1-3, the examiner asserts that these 3 Fragrance Examples would inherently meet the acid value requirements of the instant invention, since these 3 Fragrance Examples contain 69% by weight, 72% by weight, and 50.5% by weight of perfume raw materials that comprise aldehyde moieties, acetal moieties, ester moieties, and lactone moieties, to achieve an acid value of greater than 5.0 mg KOH/g, absent a showing otherwise. Furthermore, the examiner asserts that products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-20 are anticipated by Warr et al, US 2015/0017214.
In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Claims 1-7 and 9-17 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hentze et al, US 2010/0286018.
Hentze et al, US 2010/0286018, discloses a detergent composition comprising a microcapsule, wherein the microcapsule contains a core having one or more fragrances (see abstract and paragraph 1). It is further taught by Hentze et al that the shell of the microcapsule is obtainable by the polymerization of one or more C1-24 alkyl esters of (meth)acrylic acid at least two different bi-functional or polyfunctional monomers, such as pentaerythritol triacrylate, and a hydrophobic material, such as vegetable oil (i.e. a partitioning agent; see paragraphs 9-41 and 52-54), that suitable fragrances include ethyl vanillin (i.e. an aldehydic perfume), vanillin (i.e. an aldehydic perfume), and cedryl acetate (i.e. an ester perfume; see paragraphs 45-47), that the microcapsules have a diameter of 1-100 microns (see paragraph 65), that the microcapsule is in a detergent composition that further contains silicones (see paragraph 68), anionic surfactants (see paragraphs 69-89), and quaternary ammonium compounds (see paragraph 91), and that the detergent is used in a process to treat textiles (see paragraphs 139-142), per the requirements of the instant invention. Specifically, note Examples 3-10. Although Hentze et al is silent with respect to the acid value of the fragrances ethyl vanillin, vanillin, and cedryl acetate, the examiner asserts that these three fragrances would inherently meet the acid value requirements of the instant invention, since these three fragrances are preferred fragrances used in the instant claims (see claims 6-7 of the instant invention), absent a showing otherwise. Furthermore, the examiner asserts that products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-7 and 9-17 are anticipated by Hentze et al, US 2010/0286018.
In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,209,232. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,209,232 claims a similar consumer product comprising an encapsulate containing an ester perfume raw material having an acid value of greater than 5.0 mg KOH/g, such as methyl laitone, an aldehydic perfume raw material, such as vanillin, a surfactant, a silicone, partitioning modifiers, and adjunct ingredients, wherein the shell is a hexafunctional acrylate, and the consumer product is used in a process to treat fabrics (see claims 1-17 of U.S. Patent No. 12,209,232), as required in the instant claims. Therefore, instant claims 1-17 are an obvious formulation in view of claims 1-17 of U.S. Patent No. 12,209,232.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,732,222. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11,732,222 claims a similar consumer product comprising an encapsulate containing 30-75% by weight of an aldehyde perfume raw material having an acid value of greater than 5.0 mg KOH/g, such as vanillin, an ester perfume raw material, such as methyl laitone, a surfactant, a silicone, partitioning modifiers, and adjunct ingredients, wherein the shell is a hexafunctional acrylate, and the consumer product is used in a process to treat fabrics (see claims 1-18 of U.S. Patent No. 11,732,222), as required in the instant claims. Therefore, instant claims 1-17 are an obvious formulation in view of claims 1-18 of U.S. Patent No. 11,732,222.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,970,676. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11,970,676 claims a similar consumer product comprising an encapsulate containing 30-75% by weight of an aldehyde perfume raw material having an acid value of greater than 5.0 mg KOH/g, an ester perfume raw material, a surfactant, a silicone, partitioning modifiers, and adjunct ingredients, wherein the shell is a hexafunctional acrylate, and the consumer product is used in a process to treat fabrics (see claims 1-12 of U.S. Patent No. 11,970,676), as required in the instant claims. Therefore, instant claims 1-17 are an obvious formulation in view of claims 1-12 of U.S. Patent No. 11,970,676.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
October 6, 2026
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