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 .
Election/Restrictions
Claims 13-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/8/2024.
Response to Amendment
The amendment filed on 12/10/2025 has been entered. Claim(s) 9-10 and 12 have been cancelled. Claim 25 is new. Claim(s) 8, 11, and 13-25 is/are pending with claim(s) 13-19 and 24 withdrawn from consideration. Claim(s) 8, 11, 20-23 and 25 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 12/10/2025, with respect to 103 rejection on claim 8 has been fully considered but is not persuasive.
Applicant argued that although Brundel taught that the microcapsule polymers include polysaccharide, modified cellulose and gums, Brundel failed to teach or fairly suggest such polymers being crosslinked with the crosslinkers disclosed in Brundel paragraph [0035]. Brundel taught that "[i]n another embodiment, microcapsules with polymer(s) composed of primary and/or secondary amine reactive groups or mixtures thereof and crosslinkers can be used". (See Brundel, paragraph [0032]). Brundel then taught crosslinkers in Brundel paragraph [0035]. It is thus clear that Brundel merely taught the combinations of "polymer(s) composed of primary and/or secondary amine reactive groups" with the crosslinkers disclosed in Brundel paragraph [0035]. Brundel failed to teach or fairly suggest the combinations of "polysaccharide, modified cellulose and gums" with the crosslinkers disclosed in Brundel paragraph [0035].
In response, as the applicant admitted, Brundel teaches polymer(s) composed of primary and/or secondary amine reactive groups or mixtures thereof reacting with the crosslinkers. Brundel further teaches that the polymer(s) composed of primary and/or secondary amine reactive groups or mixtures thereof can be of natural origin and can include some polysaccharides [0032]. It would have been obvious to one of ordinary skill in the art at the time of filing to select amine-containing polysaccharides as the microcapsules polymer, as they are expressively disclosed as being suitable for this capacity. Chitin and chitosan are art recognized as among the most prominent amine-containing polysaccharides. It would have been obvious to one of ordinary skill in the art at the time of filing to select chitin and chitosan as the amine-containing polysaccharides. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Applicant argued that claim 21 recites a unique combination of tannic acid and isocyanate as the cross-linking agent. Although Brundel paragraph [0035] disclosed only 17 types of crosslinkers, the possible combinations of these 17 types of crosslinkers are 17x16 = 272. A prior art reference offering "a laundry list of potential active ingredients" could not, of itself, properly support a finding of obviousness.
In response, a genus encompassing 20 species is sufficient to anticipate a single claimed species. See In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962); MPEP 2131.02(III). If 1 out of 20 is sufficient to establish anticipation, it seems reasonable to conclude that 1 out of 17 of the cross-linking agent are sufficient to support a prima facie finding of obviousness. The examiner's position is further bolstered by MPEP 2144.07, which states that selection of a known material based on its suitability for its intended use is prima facie obvious. See also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives”).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 8, 20-21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brundel et al (US 20160177241 A1).
Regarding claims 8, 20, 21 and 23, Brundel teaches a fabric conditioning composition comprising encapsulated active material [title]. The composition comprises a first microcapsule and a second microcapsule containing a cured polymeric wall and core active materials [abstract, 0017]; wherein the first and second capsules differ in that their wall materials comprise the same type of polymer but are different in properties due to differing cure temperatures, curing times or a combination thereof [0016], and in that they have the same or different core characteristics [0041]. The active is control released [0042]. The microcapsule polymers are amine polymers, can be of natural origin and can include some polysaccharides [0032]. It would have been obvious to one of ordinary skill in the art at the time of filing to select amine-containing polysaccharides as the microcapsule polymer, as they are expressively disclosed as being suitable for this capacity. Chitin and chitosan are art recognized as among the most prominent amine-containing polysaccharides. It would have been obvious to one of ordinary skill in the art at the time of filing to select chitin and chitosan as the amine-containing polysaccharides. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
A mixture of crosslinkers can be used to crosslink the polymer, including tannic acid and isocyanates [0035].
The examiner submits that the first and second microcapsules read on the claimed core-shell microcapsule with controlled release of an active material.
Chitin and Chitosan read on the claimed biopolymer.
It would have been obvious to one of ordinary skill in the art at the time of filing to select a mixture (a combination) of tannic acid and isocyanate as the crosslinking agent in Brundel’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. The tannic acid reads on the recited one of the cross-linking agents; and the isocyanate reads on the recited “other” cross-linking agent in claim 8. The combination of tannic acid and isocyanate reads on the recited “two or more cross-linking agents, wherein the two or more cross-linking agents is a combination of tannic acid and isocyanate” in claim 21.
Therefore, the recited “biodegradable core-shell” is obvious.
Brundel is silent about the claimed ratio of the biopolymer to the cross-linking agent. However, Brundel teaches that the amount of crosslinker is recognized as affecting the degree of crosslinking and wall properties [0036]; and the degree of crosslinking can be optimized by adjusting the amount of crosslinker [0036]. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Varying the amount of crosslinker relative to the biopolymer is equivalent to varying the ratio of the biopolymer to the crosslinker. Thus, Brundel recognizes the claimed ratio as a result-effective variable affecting the degree of crosslinking with a target. It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the ratio of biopolymer to crosslinker by routine experimentation to arrive at the claimed ratio of 60:1 to 3:10 in claim 8 and 12:1 to 3:10 in claims 20 and 23, with a reasonable expectation of successfully obtaining the desired wall property with a target in the final product. See MPEP 2144.05. "[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272,276 (CCPA 1980). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Claim(s) 11 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brundel as applied to claim 8 above, further in view of Nakai et al (US 20170350069 A1).
Regarding claims 11 and 22, Brundel teaches the biodegradable core-shell microcapsule composition in claim 8. Brundel teaches that the crosslinker includes isocyanate as stated above, but does not specify the isocyanate.
Nakai teaches a polyurethane resin which is added to a fibric (such as cellulose) sheet [0027]. The polyurethane has at least one reactive group selected from the group consisting of a carboxyl group, hydroxyl group, primary amino group, and secondary amino group, and may further contain a crosslinking agent that is selected from the group consisting of an isocyanate compound and block isocyanate compound, and that is reactive to the reactive group contained in the polyurethane resin [0019]. The blocked isocyanate includes Takenate D-110N [0086]. Thus, Nakai suggests that the isocyanate such as Takenate D-110N can be used as a crosslinking agent to react with the amino group in a resin used in a fabric article.
It would have been obvious to one of ordinary skill in the art at the time of filing to select Takenate D-110N as the isocyanate crosslinking agent to react with the amino groups in the shell material in Brundel’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Takenate D-110N reads on the claimed trimethylol propane- adduct of xylylene diisocyanate, as evidenced by the applicant [0062 spec.].
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 25 is directed to a biodegradable core-shell microcapsule with controlled release of an active material,(i) the core of the biodegradable core-shell microcapsule comprising at least one active material, and(ii) the shell of the biodegradable core-shell microcapsule comprising at least one biopolymer cross-linked with two or more cross-linking agents, wherein one of the cross-linking agents is tannic acid and the other of the cross-linking agents is selected from an aldehyde, isocyanate, lysine, or a combination thereof, and the weight ratio between the biopolymer and the cross-linking agent is in a range of 60:1 to 3:10, and wherein the at least one biopolymer is pectin.
There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Brundel et al (US 20160177241 A1). Brundel teaches the claimed biodegradable core-shell microcapsule composition of claim 8, as stated in the 103 rejection. However, Brundel teaches amine-containing polysaccharides as the microcapsule polymer to react with the crosslinker. Pectin is not an amine-containing polysaccharide.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762