FINAL 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
This action is in response to papers filed 08/11/2026 in which claims 1, 3, 4, and 26 were canceled; claims 17-25 were withdrawn; and claims 2 and 5-8 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 2, 5-16 and 27-29 are under examination.
Withdrawn Rejection
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn.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 Rejections
Necessitated by Applicant’s Claim Amendments
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 27-29 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.
Regarding claim 27, the recitation of “the microcapsules according to claim 1” renders the claimed indefinite because the metes and bounds of the microcapsules are unclear, as claim 1 is a canceled claim. Clarification by amendment in claim 27 is required. Claim 28-29 are also rejected as they depend from indefinite claim 27. For this office action and rejections purpose, claim 27 will be interpreted as “the microcapsules according to claim 2.”
As a result, claims 27-29 do not clearly set forth the metes and bounds of patent protection desired.
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 2, 5-16 and 27-29 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 2 introduces new matter as the claim recite the limitations:
“50% to 90% of either a preformed PBAE prepolymer, or a reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine”;
“0.1% to 49% of a multifunctional (meth)acrylate monomer”; and
“0.1% to 49% of a second water soluble or dispersible multifunctional acrylate.”
There is no support in the specification for the aforementioned ranges as they pertain to minimum point concentration of 50% for a preformed PBAE prepolymer, or a reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine; maximum point concentration of 49% for multifunctional (meth)acrylate monomer; and maximum point concentration of 49% for second water soluble or dispersible multifunctional acrylate.
Applicant asserted that the support for the amendments of claim 2 can be found at least in the examples, particularly each of the samples 1, 2, 5, 6, and 8 of Example 1, Applicant further asserted that calculations of each sample from the examples are shown in Table 4 (see Remarks filed 08/11/2026, pages 10-12).
However, after a thorough review of the examples and particularly Example 1, as well as, throughout the specification, there appeared to be no support for the minimum point concentration of 50% for a preformed PBAE prepolymer, or a reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine; maximum point concentration of 49% for multifunctional (meth)acrylate monomer; and maximum point concentration of 49% for second water soluble or dispersible multifunctional acrylate.
It is noted that nowhere in the Examples from the specification including Example 1 do they disclosed or provide support for the minimum point concentration of 50% for a preformed PBAE prepolymer, or a reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine; maximum point concentration of 49% for multifunctional (meth)acrylate monomer; and maximum point concentration of 49% for second water soluble or dispersible multifunctional acrylate.
Applicant’s calculations as shown in Table 4 from page 12 of the Remarks filed 08/11/2026 do not provide support for the aforementioned minimum point concentration of 50% and maximum point concentrations of 49%, respectively. For example, Table 4 showed that the wt.% of the “preformed PBAE prepolymer, or reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine” for Sample 1 was calculated to be 57.25 wt%. This 57.25 wt% is much higher than the claimed 50%, which encompassed for example, concentrations including 50%, 51%, 52%, 53%, etc., which are clearly not supported anywhere in the specification including the samples from Example 1. Thus, Applicant does not have possession of the minimum point concentration of 50% for the claimed range of “50% to 90% of either a preformed PBAE prepolymer, or a reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine.”
Likewise, there is no support anywhere in the specification or Applicant’s calculations as shown in Table 4 from page 12 of the Remarks filed 08/11/2026 for the maximum point concentration of 49% for multifunctional (meth)acrylate monomer, and maximum point concentration of 49% for second water soluble or dispersible multifunctional acrylate. Thus, Applicant does not have possession of the maximum point concentrations of 49% for the claimed ranges of “0.1% to 49% of a multifunctional (meth)acrylate monomer” and “0.1% to 49% of a second water soluble or dispersible multifunctional.”
In sum, Applicant does not have possession of the subgenus ranges of “50% to 90% of either a preformed PBAE prepolymer, or a reaction product of a first water soluble or dispersible multifunctional acrylate and a multifunctional amine”; “0.1% to 49% of a multifunctional (meth)acrylate monomer”; and
“0.1% to 49% of a second water soluble or dispersible multifunctional,” as claimed. It is noted that the Courts have ruled that subgenus range was not supported by generic disclosure and specific example within the subgenus range. See In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971).
Claims 5-16 and 27-29 are also rejected as they depend from claim 2, thereby also containing the conflicting new matter limitations.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of amended claim 2 at the time of filing of the instant application.
Maintained-Modified Rejection
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) 2, 5-16 and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al (US 2017/0216162 A1) in view of Anderson et al (US 2004/0071654 A1; hereafter as “Anderson ‘654”) and González et al (Polymer Chemistry, 2015, 6: 6987-6997).
Regarding claim 2, Feng teaches a microcapsule comprising a core material and a shell wall comprising a prepolymer containing a first multifunctional acrylate and a multifunctional amine, and additional second multifunctional acrylate (Abstract; [0007]-[0131], [0139]-[0159], [0174]-[0184], [0205]-[0210], [0234]-[0279] and [0505]; claims 1-23). Feng teaches the shell wall is formed from an oil phase forming composition containing a (meth)acrylate polymer and from a water phase forming composition containing a (meth)acrylate polymer formed from the first multifunctional acrylate and the multifunctional amine (the prepolymer) ([0007]-[0131], [0139]-[0159], [0234]-[0279]; claims 1-23). Feng teaches the shell wall can have region containing a mixture of the polymer from the oil phase and the polymer form the water phase ([0007], [0064]; claims 13-14). Feng teaches the microcapsule has improved strength and integrity, thereby resists premature fracture and minimizing leakage of the core material ([0006] and [0183]). Feng teaches the core material contains a benefit agent such as a perfume ([0145], [0183]). Feng teaches the core material can further contains a solvent such as vegetable oil ([0148]).Feng teaches the microcapsules have two layers with an inner layer containing a mix of the oil soluble monomers (polyacrylate) and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: Abstract; [0007]-[0131], [0139]-[0159], [0174]-[0184], [0234]-[0279] and [0505]; claims 1-23). Feng teaches the microcapsules have two layers and an intermediate region between the two layers, wherein the inner layer contains oil soluble monomers (polyacrylate), intermediate region contains a mixture of the oil soluble monomers and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: [0007], [0064]; claims 13-14). Feng further teaches the shell wall is as a result of the concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases (claims 1 and 11-13). Feng teaches the prepolymer is formed by free radical polymerization ([0062], [0130], [0164], [0168]-[0172], [0176], [0178], [0181]).
It would have been obvious that the prepolymer containing a first multifunctional acrylate and a multifunctional amine of Feng is a poly(beta-amino ester) or can be formed into a poly(beta-amino ester) because per Anderson ‘654, poly(beta-amino ester) is formed by condensing bis(secondary) amines or primary amines with bis(acrylate ester) (Anderson ‘654: Abstract; [0008]-[0144], [0103]-[0112], 0183], [0189], [0190], [0270]-[0271]), which are the reactants used in forming the prepolymer of Feng, as Feng teaches the multifunctional amine is a primary amine and the multifunctional acrylate includes 1,3 butanediol diacrylate, 1,4-butanediol diacrylate, and 1,6 hexanediol diacrylate (Feng:[0132], [0135], [0138], and [0152]), which are multifunctional acrylate having an α-β-unsaturated carbonyl. Anderson ‘654 further teaches that condensing of bis(secondary) amines or primary amines with bis(acrylate ester) is via polymerization process such as Michael addition, wherein Anderson ‘654 showed that the multifunctional amine is added to a β-carbon of the α-β-unsaturated carbonyl via Michael addition reaction (Anderson ‘654: [0103]-[0112], [0270]-[0271]). The disclosures from Anderson ‘654 is supported by González, in which González established that polymerization via aza-Michael addition is formed from a reaction of amino and acrylate groups (González: Abstract; Introduction; pages 6988-6989 and 6991-6994). Thus, it would have been reasonably obvious that the prepolymer containing a first multifunctional acrylate and a multifunctional amine of Feng is a poly(beta-amino ester) or can be formed into a poly(beta-amino ester) via known polymerization methods in the art including Michael addition per guidance from Anderson ‘654 and González. There is reasonable expectation of success that the shell of Feng contains poly(beta-amino ester) (PBAE) because Feng teaches in Table 5 under paragraph [0208] that the water phase 2 (WP2), particularly WP2F contains CN551, which per Table 1 under paragraph [0189] is a tetrafunctional amine modified polyether acrylate oligomer --- a PBAE prepolymer.
It would also have been obvious that the shell of the microcapsule of Feng would be a shell that contains polyacrylate (PAC), hybrid polyacrylate/poly(beta-amino ester) (PAC/PBAE), and poly(beta-amino ester) (PBAE) in which the shell includes an inner surface comprising the PAC and hybrid PAC/PBAE and an outer surface containing the PBAE. It would have been reasonably obvious because Feng teaches the shell wall can be a region containing a mixture of the polymer from the oil phase and the polymer from the water phase ([0007], [0064]; claims 13-14). Feng further indicated that it is well-established in the prior art, wall materials for forming the shell/wall of the microcapsules include polyacrylate based materials (Feng: [0505]). Additionally, as discussed above, Feng teaches the microcapsules have two layers and an intermediate region between the two layers, wherein the inner layer contains oil soluble monomers (polyacrylate), intermediate region contains a mixture of the oil soluble monomers and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: [0007], [0064]; claims 13-14). Feng further teaches the shell wall is as a result of the concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases (claims 1 and 11-13). Additionally, Feng at Tables 3-6 teaches that the microcapsules are formed from a two-part water phase and a single core phase in which oil phase 1 contains tertiarybutylaminoethyl methacrylate, 2-carboxyethylmethacrylate, and hexafunctional aromatic urethane acrylate oligomer; oil phase 2 contains oil soluble radical initiator (V67) and water soluble radical initiator (V501); water phase 1 contains water soluble radical initiator (V501); and water phase 2 contains a tetrafunctional amine modified polyether acrylate oligomer (a PBAE prepolymer) ([0205]-[0210]).
There is reasonable predictability and expectation that the shell of the microcapsule of Feng would be a shell containing hybrid polyacrylate/poly(beta-amino ester) upon concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases because as discussed above, Feng at Tables 3-6 teaches that the microcapsules are formed from a two-part water phase and a single core phase in which oil phase 1 contains tertiarybutylaminoethyl methacrylate, 2-carboxyethylmethacrylate, and hexafunctional aromatic urethane acrylate oligomer; oil phase 2 contains oil soluble radical initiator (V67) and water soluble radical initiator (V501); water phase 1 contains water soluble radical initiator (V501); and water phase 2 contains a tetrafunctional amine modified polyether acrylate oligomer (a PBAE prepolymer) ([0205]-[0210]). Furthermore, Feng teaches one can employ different temperatures for different polymerization steps to regulate the rate of polymerization to better control the formation of the capsule wall and its constituents (Feng: [0168]), and per González, poly(amino ester)-poly(acrylate) is obtained by two-stage sequential aza-Michael addition and free-radical polymerization of amine-acrylate mixtures, in which the first stage reaction is a self-limiting click aza-Michael addition between multifunctional amine and acrylate monomers with an excess of acrylate groups, and the second stage reaction is a photocured radical polymerization of the unreacted acrylate groups (González: Abstract; Introduction; pages 6988-6989 and 6991-6994). González further establishes that during the first stage amino and acrylate groups react through an aza-Michael mechanism to form a partially reacted material and this reactive process proceeds at room temperature, and in the second stage, the photoinitiated free radical polymerization of the excess of acrylic groups, embedded within the material formed in the first stage, results in a crosslinked network that forms poly(amino ester)-poly(acrylate) (González: page 6988).
Given that the shell of Feng is formed by sequential polymerization of the wall forming compositions containing amine-acrylate mixtures at the interface of the oil and aqueous phases, it would have been obvious with reasonable expectation the shell of the microcapsule of Feng would be a shell containing hybrid polyacrylate/poly(beta-amino ester) upon concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases via known methods of two-stage sequential aza-Michael addition and free-radical polymerization of amine-acrylate mixtures, as guided in González, thereby achieving Applicant’s claimed shell having containing polyacrylate, hybrid polyacrylate/poly(beta-amino ester), and poly(beta-amino ester) with reasonable expectation of success.
With respect to amounts by weight of the components in the shell of claim 2, Feng teaches the shell contains the first multifunctional acrylate in an amount of 70% to 99.8% by weight, an acid methacrylate and/or simple acid in an amount of 0.1% to 15% by weight, the multifunctional amine in an amount of 0.1 to 15% by weight, the second multifunctional acrylate (i.e., amine modified polyether (meth)acrylate oligomers) in an amount of 5% to 70% by weight, and free radical initiator ([0139] and [0152]). The weight amounts as taught by Feng supra overlaps the claimed weight amount ranges as recited in claim 2. 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 showing criticality from the claimed parameters, the optimization of the weight amounts of polyamine, first multifunctional acrylate, acid methacrylate and/or simple acid, free radical initiator, and second multifunctional acrylate in the shell of the microcapsule would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 5, Feng teaches the mole ratio of the multifunctional acrylate to the multifunctional amine is from 5:1 to 1:5, preferably 3:1 to 1:3 ([0139]-[0143]), which is a mole ratio overlaps the claimed mole ratio. Thus, 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 showing criticality from the claimed parameters, the optimization of the mole ratio of the multifunctional acrylate to the multifunctional amine would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 6-8, Feng teaches the shell wall can region containing a mixture of the polymer from the oil phase and the polymer form the water phase ([0007], [0064]; claims 13-14). Feng teaches the microcapsules have two layers with an inner layer containing a mix of the oil soluble monomers (polyacrylate) and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: Abstract; [0007]-[0131], [0139]-[0159], [0174]-[0184], [0234]-[0279] and [0505]; claims 1-23). Feng teaches the microcapsules have two layers and an intermediate region between the two layers, wherein the inner layer contains oil soluble monomers, intermediate region contains a mixture of the oil soluble monomers and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: [0007], [0064]; claims 13-14). Feng further teaches the shell wall is as a result of the concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases (claims 1 and 11-13). As discussed above, it would have been obvious that the shell of the microcapsule of Feng would be a shell that contains polyacrylate (PAC), hybrid polyacrylate/poly(beta-amino ester) (PAC/PBAE), and poly(beta-amino ester) (PBAE) in which the shell includes an inner surface comprising the PAC and hybrid PAC/PBAE and an outer surface containing the PBAE. It would have been reasonably obvious because Feng teaches the shell wall can be a region containing a mixture of the polymer from the oil phase and the polymer from the water phase ([0007], [0064]; claims 13-14). Feng further indicated that it is well-established in the prior art, wall materials for forming the shell/wall of the microcapsules include polyacrylate based materials (Feng: [0505]). Additionally, as discussed above, Feng teaches the microcapsules have two layers and an intermediate region between the two layers, wherein the inner layer contains oil soluble monomers (polyacrylate), intermediate region contains a mixture of the oil soluble monomers and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: [0007], [0064]; claims 13-14). Feng further teaches the shell wall is as a result of the concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases (claims 1 and 11-13). Furthermore, Feng at Tables 3-6 teaches that the microcapsules are formed from a two-part water phase and a single core phase in which oil phase 1 contains tertiarybutylaminoethyl methacrylate, 2-carboxyethylmethacrylate, and hexafunctional aromatic urethane acrylate oligomer; oil phase 2 contains oil soluble radical initiator (V67) and water soluble radical initiator (V501); water phase 1 contains water soluble radical initiator (V501); and water phase 2 contains a tetrafunctional amine modified polyether acrylate oligomer (a PBAE prepolymer) ([0205]-[0210]). There is reasonable predictability and expectation that the shell of the microcapsule of Feng would be a shell containing hybrid polyacrylate/poly(beta-amino ester) upon concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases because as discussed above, Feng at Tables 3-6 teaches that the microcapsules are formed from a two-part water phase and a single core phase in which oil phase 1 contains tertiarybutylaminoethyl methacrylate, 2-carboxyethylmethacrylate, and hexafunctional aromatic urethane acrylate oligomer; oil phase 2 contains oil soluble radical initiator (V67) and water soluble radical initiator (V501); water phase 1 contains water soluble radical initiator (V501); and water phase 2 contains a tetrafunctional amine modified polyether acrylate oligomer (a PBAE prepolymer) ([0205]-[0210]). Furthermore, Feng teaches one can employ different temperatures for different polymerization steps to regulate the rate of polymerization to better control the formation of the capsule wall and its constituents (Feng: [0168]), and per González, poly(amino ester)-poly(acrylate) is obtained by two-stage sequential aza-Michael addition and free-radical polymerization of amine-acrylate mixtures, in which the first stage reaction is a self-limiting click aza-Michael addition between multifunctional amine and acrylate monomers with an excess of acrylate groups, and the second stage reaction is a photocured radical polymerization of the unreacted acrylate groups (González: Abstract; Introduction; pages 6988-6989 and 6991-6994). González further establishes that during the first stage amino and acrylate groups react through an aza-Michael mechanism to form a partially reacted material and this reactive process proceeds at room temperature, and in the second stage, the photoinitiated free radical polymerization of the excess of acrylic groups, embedded within the material formed in the first stage, results in a crosslinked network that forms poly(amino ester)-poly(acrylate) (González: page 6988). Given that the shell of Feng is formed by sequential polymerization of the wall forming compositions containing amine-acrylate mixtures at the interface of the oil and aqueous phases, it would have been obvious with reasonable expectation the shell of the microcapsule of Feng would be a shell containing hybrid polyacrylate/poly(beta-amino ester) upon concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases via known methods of two-stage sequential aza-Michael addition and free-radical polymerization of amine-acrylate mixtures, as guided in González, thereby achieving Applicant’s claimed shell containing polyacrylate, hybrid polyacrylate/poly(beta-amino ester), and poly(beta-amino ester) with reasonable expectation of success.
Regarding claim 9, Feng teaches the first multifunctional (meth)acrylate is a tri(meth)acrylate, tetra(meth)acrylate, or penta(meth)acrylate ([0138]).
Regarding claim 10, Feng teaches the first multifunctional (meth)acrylate comprises a multifunctional aromatic urethane acrylate ([0138]).
Regarding claim 11, Feng teaches the second multifunctional (meth)acrylate is diethylene glycol diacrylate, triethylene glycol diacrylate or trimethylolpropane triacrylate ([0138]).
Regarding claim 12, Feng teaches the multifunctional amine is ethylaminoethyl acrylate, ethylaminoethyl methacrylate, aminoethyl acrylate, aminoethyl methacrylate, tertiarybutyl ethylamino acrylate, tertiarybutyl ethylamino methacrylate, tertiarybutyl aminoethyl acrylate, tertiarybutyl aminoethyl methacrylate diethylamino acrylate, diethylamino methacrylate, diethylaminoethyl acrylate, diethylaminoethyl methacrylate, dimethylaminoethyl acrylate or dimethylaminoethyl methacrylate ([0133]).
Regarding claim 13, Feng teaches the free radical initiator is an azo-based initiator ([0162]-[0164]).
Regarding claim 14, Anderson ‘654 teaches and provide guidance for the amine monomer being an ethylenediamine or a piperazine ([0120]).
Regarding claim 15, Feng teaches the azo-based initiator is 2,2′-azobismethylbutyronitrile, 2,2′-azobis (isobutylnitrile), 2,2′-azobis(2,4-dimethylpentane-nitrile), 2,2′-azobis (2,4-dimethylvaleronitrile), 2,2′-azobis(2-methylpropanenitrile), 2,2′-azobis (methylbutyronitrile), 1,1′-azobis (cyclohexanecarbonitrile), or 1,1′-azobis(cyano-cyclohexane) ([0164]).
Regarding claim 16, Feng teaches the microcapsule has a reduced leakage, wherein the leakage is below 30% ([0206] and Table 6).
Regarding claims 27-29, Feng teaches agriculture product containing the microcapsule, wherein the agriculture active is an insect repelling agent ([0215], [0279], and [0328]).
From the teachings of the reference, 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 art before the effective filing date of Applicant’s invention, as evidenced by the reference, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 08/11/2026 have been fully considered but they are not persuasive.
Applicant argues that “[a] POSA would not be motivated to incorporate any appreciable amount of PBAE in the polyacrylate microcapsules of Feng.” Applicant alleges that “[t]o modify Feng with Anderson or Gonzelez by including preformed PBAE prepolymer or PBAE-forming materials and adding a reaction stage encouraging Aza-Michael condensation would displace and cannibalize the radical-initiated carbon-carbon, (meth)acrylate-to-(meth)acrylate reaction that is the hallmark of the Feng microcapsules.” Thus, Applicant alleges that “no teaching, suggestion, or other rationale for altering the disclosure of Feng to arrive at the invention as claimed in the amended claims is provided outside of the Present Application itself. No articulation as to why a POSA would incorporate the teachings of either the Anderson reference or the Gonzalez reference into those of the Feng reference is provided.” As such, Applicant alleges that “[t]t is a hindsight exercise that improperly relies on teachings of the present application as a roadmap for the POSA rather than the prior art as motivation to combine the references.” (Remarks pages 10-18).
In response, the Examiner disagrees. The obviousness analysis is not based on “including preformed PBAE prepolymer or PBAE-forming materials and adding a reaction stage encouraging Aza-Michael condensation,” as alleged by Applicant. In fact, and contrary to Applicant’s allegation, the Feng’s microcapsule does contain a PBAE prepolymer in the shell. As discussed above in the standing 103 rejection, Feng teaches the shell wall can be a region containing a mixture of the polymer from the oil phase and the polymer from the water phase ([0007], [0064]; claims 13-14). Feng further indicated that it is well-established in the prior art, wall materials for forming the shell/wall of the microcapsules include polyacrylate based materials (Feng: [0505]). Additionally, as discussed above, Feng teaches the microcapsules have two layers and an intermediate region between the two layers, wherein the inner layer contains oil soluble monomers (polyacrylate), intermediate region contains a mixture of the oil soluble monomers and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: [0007], [0064]; claims 13-14). Feng further teaches the shell wall is as a result of the concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases (claims 1 and 11-13). Additionally, Feng at Tables 3-6 teaches that the microcapsules are formed from a two-part water phase and a single core phase in which oil phase 1 contains tertiarybutylaminoethyl methacrylate, 2-carboxyethylmethacrylate, and hexafunctional aromatic urethane acrylate oligomer; oil phase 2 contains oil soluble radical initiator (V67) and water soluble radical initiator (V501); water phase 1 contains water soluble radical initiator (V501); and water phase 2 contains a tetrafunctional amine modified polyether acrylate oligomer (a PBAE prepolymer) ([0205]-[0210]).
To this end, Applicant is noted that the Feng reference is Applicant’s prior patent application publication and this Feng reference teaches all the components in forming the shell of Applicant’s claimed delivery particle (microcapsule), which were discussed supra. The secondary references of Anderson and Gonzalez were only used to establish the known mechanisms of forming PBAE by nitrogen/carbon bonds via Aza-Micheal Addition, and hybrid PAC/PBAE by two-stage sequential aza-Michael addition and free-radical polymer of amine-acrylate mixtures.
Accordingly, the obviousness analysis in the standing 103 rejection is not based on improper hindsight, as the conclusion of obviousness was gleaned on knowledge from the teachings of Feng, Anderson and Gonzalez, and such construction of obviousness based on knowledge gleaned only from the teachings of the cited prior arts is indeed proper to render obvious Applicant’s claimed invention.
Applicant argues that “[n]o permissible reading of the Feng reference results in formation of PBAE at an outer surface of the Feng Microcapsules.” Applicant alleges that “[w]hile Feng incorporates amines in the oil phase, it does not disclose any appreciable amines in the water phase or any PBAE pre-polymer in either phase. Feng further discloses no embodiment in which a free radical initiator is not present alongside any amine-containing water phase (meth)acrylate.” Applicant alleges that “Without a source of PBAE from the water phase, no PBAE will deposit and/or covalently link on an outer surface of the Feng capsule. Consequently, at Feng's outer capsule surface, there can only ever be PAC or hybrid PAC/PBAE, though at the concentrations described in Feng, even the amount of hybrid PAC/PBAE will be exceedingly low.” Thus, Applicant alleges that “adding an amine or adding amine-modified (meth)acrylate and altering the reaction conditions of Feng so that an Aza-Michael reaction proceeds between the amine and (meth)acrylates in the water phase is a massive departure from the principle of operation of Feng and further would weaken the Feng capsules with PBAE replacing PAC content, rendering the Feng capsules inoperable for their intended purpose (providing strong, integrous, durable microcapsules with desirable release characteristics).” As such, Applicant alleges that “Feng cannot be permissibly altered with disclosure from Anderson or Gonzelez or via the common sense of a POSA to provide delivery particles as described in claim 2, wherein "the shell includes ... an outer surface comprising PBAE." (Remarks, pages 18-19).
In response, the Examiner disagrees. As discussed above, the obviousness analysis is not based on “including preformed PBAE prepolymer or PBAE-forming materials and adding a reaction stage encouraging Aza-Michael condensation,” as alleged by Applicant. In fact, and contrary to Applicant’s allegation, the Feng’s microcapsule does contain a PBAE prepolymer in the shell. As discussed above in the standing 103 rejection, Feng teaches the shell wall can be a region containing a mixture of the polymer from the oil phase and the polymer from the water phase ([0007], [0064]; claims 13-14). Feng further indicated that it is well-established in the prior art, wall materials for forming the shell/wall of the microcapsules include polyacrylate based materials (Feng: [0505]). Additionally, as discussed above, Feng teaches the microcapsules have two layers and an intermediate region between the two layers, wherein the inner layer contains oil soluble monomers (polyacrylate), intermediate region contains a mixture of the oil soluble monomers and poly(beta-amino ester), and an outer layer containing poly(beta-amino ester) (Feng: [0007], [0064]; claims 13-14). Feng further teaches the shell wall is as a result of the concurrent or sequential polymerization of the wall forming compositions at the interface of the oil and aqueous phases (claims 1 and 11-13). Additionally, Feng at Tables 3-6 teaches that the microcapsules are formed from a two-part water phase and a single core phase in which oil phase 1 contains tertiarybutylaminoethyl methacrylate, 2-carboxyethylmethacrylate, and hexafunctional aromatic urethane acrylate oligomer; oil phase 2 contains oil soluble radical initiator (V67) and water soluble radical initiator (V501); water phase 1 contains water soluble radical initiator (V501); and water phase 2 contains a tetrafunctional amine modified polyether acrylate oligomer (a PBAE prepolymer) ([0205]-[0210]).
Thus, as discussed above, it is reiterated that that the Feng reference is Applicant’s prior patent application publication and this Feng reference teaches all the components in forming the shell of Applicant’s claimed delivery particle (microcapsule), which were discussed supra. The secondary references of Anderson and Gonzalez were only used to establish the known mechanisms of forming PBAE by nitrogen/carbon bonds via Aza-Micheal Addition, and hybrid PAC/PBAE by two-stage sequential aza-Michael addition and free-radical polymer of amine-acrylate mixtures.
With respect to the claimed weight amounts as recited in claim 2, as discussed above in the standing 103 rejection, Feng teaches the shell contains the first multifunctional acrylate in an amount of 70% to 99.8% by weight, an acid methacrylate and/or simple acid in an amount of 0.1% to 15% by weight, the multifunctional amine in an amount of 0.1 to 15% by weight, the second multifunctional acrylate (i.e., amine modified polyether (meth)acrylate oligomers) in an amount of 5% to 70% by weight, and free radical initiator ([0139] and [0152]). The weight amounts as taught by Feng supra overlaps the claimed weight amount ranges as recited in claim 2. 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 showing criticality from the claimed parameters, the optimization of the weight amounts of polyamine, first multifunctional acrylate, acid methacrylate and/or simple acid, free radical initiator, and second multifunctional acrylate in the shell of the microcapsule would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
As discussed above, the shell of Feng does contain PBAE. Given that the optimization of the weight amounts of polyamine, first multifunctional acrylate, acid methacrylate and/or simple acid, free radical initiator, and second multifunctional acrylate in the shell of the microcapsule have been rendered obvious by routine optimization based on the teachings from Feng supra, and in the absence of unexpected results showing criticality from the claimed parameters, the claimed invention remained obvious based on Feng in view of Anderson and Gonzalez. To date, Applicant has not shown criticality of the claimed parameters in achieving a result that was unexpected or not appreciated by the cited prior art (i.e., Feng). In fact, it is noted that that the specification discloses that the delivery particles having the claimed shell provided low leakage (Specification: paragraphs [0131]and [0132] --- also see instant claim 16). It is noted that the microcapsule of Feng also exhibited low leakage (Feng: [0206] and Table 6). This is preponderance of evidence to support the Examiner’s obviousness rejection.
As a result, for at least the reason discussed above, claims 2, 5-16 and 27-29 remain rejected as being obvious and unpatentable over the combined teachings of Feng, Anderson and Gonzelez in the standing 103 rejection as set forth in this office action.
Conclusion
No claim is allowed.
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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
