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 October 6, 2025. In that response, claims 1 and 7-10 were amended and claims 12 and 13 were added. Claims 1, 3, and 5-13 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 12 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 9. Claim 13 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 10. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
Claim 1 recites “an outer shell that houses the volatile substances and… combustion-assisting products”. Here “houses” could mean (i) enclosing the volatile substances and the combustion-assisting products inside, in the inner or core space defined by, the outer shell, or (ii) incorporate in the structure of the outer shell itself, i.e., forming the outer shell along with the material of the outer shell. Neither the specification nor the claims appears to distinguish this. Therefore this phrase is given the broadest reasonable interpretation as either inside the cavity defined by the outer shell or incorporated into and forming the outer shell.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites “wherein the outer shell is made of a polymer material”. Claim 3 depends from claim 1, which recites “wherein the material of said outer shell is chosen from the group of arabic gum, xanthan gum, fatty acids, fatty alcohols, natural waxes and polyethylene”. Therefore claim 1 recites the gums and polyethylene which are polymers, whereas claim 3 recites “a polymer material” which is broader in scope and includes polymers other than the gums and the polyethylene. Therefore claim 3 fails to incorporate all the limitations of claim 1. Similarly claim 5 recites “wherein said outer shell is made of a material that melts, expands or collapses above a preset temperature” which is broader in scope than the outer shell material in claim 1. Therefore claim 5 fails to incorporate all the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
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, 3, and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Craven (WO 2004/006669 A1) in view of Brahms (WO 2017/161364 A1) as evidenced by Mothe, C.G. & Rao, M.A., Thermal behavior of gum arabic in comparison with cashew gum, Thermochimica Acta Vol. 357–358, 14 August 2000, 9-13).
Craven teaches an insecticidal coil comprising microencapsulated insecticides such as those in present claim 10, e.g., pyrethroids (title; abstract; p.6 lines 6-23). The pesticide emanates from the product upon combustion (abstract; p.6 lines 18-23). Craven teaches sawdust particles (p.6 line 1; claim 38), and combustion aids such as those in claims 7 and 9 (p.6 lines 27-29; claim 17).
Craven does not specifically teach the shell material and including other components of the mosquito coil in the shell as recited in claims 1, 3, 5, 6, and 8.
Brahms teaches microcapsules that are “suitable for use in food” (p.1 lines 29-30). The microcapsules comprise a core having an active agent and a wall formed of polymers, including those in claim 1 such as gum arabic, for controlled release of an aroma (title; abstract; p.1 lines 4-5). Brahms’s microcapsules find application in room deodorizers, perfumes, candles, and insect repellents (p.17 lines 16-26; claim 3). Thus the skilled person would have appreciated that Brahms’s microcapsules can be used in Craven’s mosquito coils which similarly contain products that are burned to release the active agent into the air for insect control. Gum Arabic melts starting at about 90 °C depending on the water content (see abstract, Table 1, Mothe). Preferred microcapsule diameter is 1-1000 microns (p.2 lines 19-20), which includes the range of the sawdust particles in claim 8.
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date to combine the teachings of Craven and Brahms and use Brahms’s microparticles in Craven’s coils as recited in the instant claims. The skilled person would have been motivated to do so because both are drawn to products comprising microcapsules containing insect repellants as active agents, which products could be burned (e.g., candles) to release the active agent into the air, and Brahms teaches that its microcapsules are safe for humans, can “efficiently deliver” the active agent in a controlled release, and “can be manufactured in a cost effective manner” (p.1 lines 24-25). Moreover encapsulating the additional material such as those in claims 7 and 9 along with the active agent would have been prima facie obvious. Making integral several parts disclosed in a prior art to form a single unit has been held to be a matter of obvious engineering choice where such modification is not contrary to the understandings and expectations of the art. MPEP §2144.04 (V)(B) (citations omitted). Here because Craven teaches including sawdust particles and combustion aids in its mosquito coil, along with microencapsulated active agents, choosing to incorporate the sawdust particles of similar size as the microcapsules and combustion aids in the microcapsules, i.e., a single unit, would have been a matter of obvious engineering choice.
Response to Arguments
Applicant's arguments filed October 6, 2025 have been fully considered but they are not persuasive. Applicant argues that the person of ordinary skill could not have reasonably expected that the claimed microcapsules could be used in a diffuser of volatile substances by combustion, nor “reasonably expect that such microcapsules could successfully prevent evaporation of the volatile substances during manufacturing yet still release them upon combustion of other products also housed within the microcapsules”. (Remarks, 6-7, October 6, 2025.)
However Craven specifically teaches an insecticidal coil comprising microencapsulated insecticides which emanate from the coil upon combustion (abstract; p.6 lines 18-23). As for the “successfully prevent[ing] evaporation of the volatile substances during manufacturing”, such features are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore to the extent that Applicant argues that microencapsulation of the pesticide active prevents evaporation of the volatile substance during manufacturing, it is noted that Craven teaches the same, i.e., microencapsulated insecticides.
Applicant next contends that Brahms is drawn to microcapsules that are safe for food consumption such as to deliver a flavor or aroma, as indicated by adjunct materials including solubility modifiers, pH modifiers, and so on. (Remarks, 7, October 6, 2025.) Moreover Brahms’s teaching of candles is among a laundry list of applications including detergent to sweeteners and therefore “does not provide any motivation for a POSA to include combustion-assisting materials inside the outer shell of a microcapsule together with volatile substances, let alone have any reasonable expectation that a diffuser comprised of such microcapsules could successfully protect the volatile substances during the manufacturing drying process and stress of extrusion”. (Remarks, 8, October 6, 2025.)
However a “reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments”, and “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. MPEP §2123 (citations omitted). Brahms teaches microcapsules that are “suitable for use in food” for controlled release of an aroma (title; abstract; p.1 lines 4-5), which can be further used in candles as well as insect repellents (p.17 lines 16-26; claim 3). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here skilled person would have been motivated to use Brahms’s microparticles in Craven’s coils because Brahms teaches that its microcapsules are safe for humans, can “efficiently deliver” the active agent in a controlled release such as candles or insect repellants, and “can be manufactured in a cost effective manner” (p.1 lines 24-25). Also making integral several parts disclosed in a prior art to form a single unit has been held to be a matter of obvious engineering choice where such modification is not contrary to the understandings and expectations of the art. MPEP §2144.04 (V)(B) (citations omitted). Here because Craven teaches including sawdust particles and combustion aids in its mosquito coil, along with microencapsulated active agents, choosing to incorporate the sawdust particles and combustion aids in the microcapsules, i.e., a single unit, would have been a matter of obvious engineering choice.
Applicant next disputes that there is no teaching of shells that melt, expand, or collapse at a preset temperature or between 80-150 °C as in claims 5 and 6. (Remarks, 9, October 6, 2025.)
In response it is noted that any material would melt, expand, or collapse at a preset temperature according to its physical makeup, e.g., ice melts above 0 °C at standard atmospheric pressure. Also as noted above Brahms teaches microcapsules comprising a wall formed of polymers, including those in claim 1 such as gum arabic (title; abstract; p.1 lines 4-5). Gum Arabic melts starting at about 90 °C depending on the water content (see Mothe, abstract, Table 1).
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