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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 10, 2025 has been entered.
Claims 1, 4, 5, 7, 9-18 and 20 are pending.
Claims 2, 3, 6, 8 and 19 are cancelled.
Claims 1, 4, 12 and 16-18 are currently amended.
Claim 20 is new.
Claims 13-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1, 4, 5, 7, 9-12, 16-18 and 20 as filed on October 10, 2025 are under consideration.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn, all previous claim rejections under 35 USC 112(a) are withdrawn, and some previous claim rejections under 35 USC 112(b) are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. 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 Rejections - 35 USC § 112(b)
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 1, 4, 5, 7, 9-12, 16-18 and 20 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 pre-AIA the applicant regards as the invention.
Claim 1 recites a maximum particle diameter d2 is less than 30 microns while being within 3.0 times the average particle diameter of 0.5 to 20 microns. 3.0 times the average particle diameter of 0.5 to 20 microns is 1.5 to 60 microns. It is unclear how to reconcile the contradictory limitations of a maximum diameter less than 30 microns with a maximum diameter of less than 1.5 to 60 microns and the instant specification (e.g., [0018], [0076]) fails to remedy the ambiguity. At best, the specification suggests the maximum particle diameter is determined by the size of the sieve through which the particles are separated (e.g., [0072] discloses a 250 mesh which corresponds to a particle size between about 53 and 63 microns as evidenced by Sigma (of record)). Claims 4, 5, 7, 9-12, 16-18 and 20 are included in this rejection because they depend from claim 1 and because they do not remedy the noted ambiguity. Claim 18 is also included in this rejection because claim 18 recites the maximum particle diameter d2 is less than 19.9 microns while being within 3.0 times the average particle diameter of 1.5 to 9.3 microns and it is unclear how to reconcile these contradictory limitations.
Response to Arguments: Claim Rejections - 35 USC § 112(b)
Applicant’s arguments at pages 6 to 7 of the Remarks have been fully considered but they are not persuasive.
The citation to paragraph [0018] in support of the maximum diameter claim limitation is acknowledged but not found persuasive because the issue is not whether the limitation has antecedent basis within the specification.
Applicant’s argument that the claim limitation excludes disadvantageous particles is acknowledged but not found persuasive because the issue is not whether some population of particles could satisfy all of the criteria. Rather, the issue is that the criteria cannot be spanned across the genus and it is not known what is actually claimed.
The citation to comparative example 2 remains unpersuasive because the rejection is predication on the genus of particles claimed.
Therefore, the rejection is properly maintained.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 4, 7, 9, 12, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Glenn et al. (US 2008/0131538, published June 5, 2008, of record) in view of Silenius et al. (US 2007/0246179, published October 25, 2007, of record) and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008.
Glenn teaches starch foam microparticles having a porous structure (cavity, shell) and having a (maximum, average) diameter less than about 50 microns, less than about 20 microns; the starch may be rice starch (title; abstract; claims, in particular 1, 5, 9; paragraphs [0022]-[0027]), as required by instant claims 7, 18. The porous structure comprises cells / bubbles (cavities, shell) (paragraphs [0024]-[0025]). The starch may comprise more than 99% amylopectin (paragraphs [0020], [0055]).
The particles can be spherical (paragraph [0026]), as required by instant claim 4.
The particles can have a population wherein 100% of the particles are of the specified size (paragraph [0065]).
The particles can have a density between about 0.14 and 0.34 g/cm3 (claim 3; paragraph [0066]).
Glenn further teaches when an aqueous suspension of starch granules is heated, a transition is reached known as the gelatinization temperature above which the starch granules swell and become disorganized (paragraph [0053]). The gelatinization temperature varies based on the source of the starch (paragraph [0058]).
Glenn is silent as to the presence of globulin (0 wt%), as required by instant claim 9.
Glenn is silent as to the presence of a surfactant (0 ppm), as required by instant claim 16.
Glenn further teaches production of the starch foam microparticles from a starch melt wherein starch is combined with water, the mixture is heated and subsequently atomized through a nozzle to form spherical particles (paragraphs [0069]-[0075]). Regarding the product-by-process limitations as required by instant claim 17, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In the instant case, the process of Glenn results in the same spherical, starch particles as implied by the steps of claim 17.
Regarding the intended use for cosmetics newly added to claim 1, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Glenn does not specifically teach the onset gelatinization temperature of a 50 wt% starch particle dispersion is 80 ºC or higher, is 85 ºC or higher as required by claims 1, 20.
This deficiency is made up for in the teachings of Silenius and Baks.
Silenius teaches spherical composites of starch containing silicon (title; abstract; claims; Figures 1 and 2). The starch consists of granular particles having a mean size between 3 and 20 microns, is a vegetable starch such as rice, and the gelatinization temperature of the starch is at least 50 ºC (paragraph [0019]), as required by instant claim 20. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). "[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, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Baks teaches DSC measurements are used to determine gelatinization (paragraph bridging pages 296 and 297; pages 297-298, section 3.2). For a given starch, gelatinization onset conditions are close together for all starch water mixtures (page 303, 2nd full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the starch of the starch foam microparticles of Glenn would have a gelatinization temperature of at least 50 ºC as taught by Silenius because this gelatinization temperature is applicable to starch inclusive of rice starch. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the gelatinization onset temperature of the starch of the starch foam microparticles of Glenn is relatively independent of concentration, as measured by DSC, because Baks teaches such.
Regarding the physical property of particle size stability upon circumscribed intended use as required by claim 12, because Glenn in view of Silenius and Baks render obvious rice starch particles as instantly claimed, the rice starch particles of the prior art must also be characterized by said property because a chemical composition and its properties are inseparable. See MPEP 2112. In further support of this presumption, Glenn and Baks evidence the swelling of starch below the gelatinization temperature is limited, implying the diameter of the starch foam microparticles does not substantially change at temperatures below the gelatinization temperature.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Glenn et al. (US 2008/0131538, published June 5, 2008, of record) in view of Silenius et al. (US 2007/0246179, published October 25, 2007, of record) and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008 as applied to claims 1, 4, 7, 9, 12, 16-18 and 20 above, and further in view of Druel et al. “Starch aerogels: a member of the family of thermal supermaterials,” Biomacromolecules 18(12):4232-4239, 2017, of record.
The teachings of Glenn, Silenius and Baks have been described supra.
They do not specifically teach a specific surface area of 20 m2/g or more as required by claim 5.
This deficiency is made up for in the teachings of Druel.
Druel teaches starch aerogels (title; abstract). Bioaerogels have a low density (0.02 to 0.2 g/cm3) and high specific surface area (200 to 600 m2/g) (paragraph bridging pages 4232-4233), as required by instant claim 5. Druel exemplifies a waxy potato aerogel having an amylose content of 0%, a density of 0.2 g/cm3 and a specific surface area of 88 m2/g (Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the porous starch foam microparticles of Glenn have a high specific surface area such as 200 to 600 m2/g as taught by Druel because this specific surface area corresponds to porous starch structures having a density consistent with that of Glenn.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Glenn et al. (US 2008/0131538, published June 5, 2008, of record) in view of Silenius et al. (US 2007/0246179, published October 25, 2007, of record) and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008 as applied to claims 1, 4, 7, 9, 12, 16-18 and 20 above, and further in view of Shimada et al. (JP H08-143602 A, published June 4, 1996, as evidenced by the Google translation).
Glenn is applied herewith under a different interpretation of claim 7 in the interest of compact prosecution
Glenn further teaches the starch foam microparticles have utility in pharmaceutical and fragrance industries; the particles may be loaded with a fragrance or a pharmaceutical (abstract; paragraph [0047]).
The teachings of Glenn, Silenius and Baks have been described supra.
They do not expressly teach hollow particles as required by claim 7.
This deficiency is made up for in the teachings of Shimada.
Shimada teaches hollow (cavity, shell) porous starch particles having a large carrier capacity (title; abstract; claims), as required by instant claim 7. The particles may comprise a target substance such as a fragrance or a medicine (page 1, 1st paragraph under [0002]). The particles do not disintegrate or gelatinize in water at 100 ºC (page 2, 4th paragraph under [0008]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porous starch foam microparticles of Glenn to be hollow as taught by Shimada in order to contain a larger amount of target substances.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Glenn et al. (US 2008/0131538, published June 5, 2008, of record) in view of Silenius et al. (US 2007/0246179, published October 25, 2007, of record) and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008 as applied to claims 1, 4, 7, 9, 12, 16-18 and 20 above, and further in view of Kobayashi et al. (WO 2019/156116, published August 15, 2019, as evidenced by US 2020/0179261, of record).
The teachings of Glenn, Silenius and Baks have been described supra.
They do not specifically teach a sphericity of 0.85 or more as required by claim 10.
They do not specifically teach a coefficient of variance of 50% or less in the diameter as required by claim 11.
These deficiencies are made up for in the teachings of Kobayashi.
Kobayashi teaches fine particles having an average size of 80 nm to 100 microns, of 4 to 14 microns and a sphericity of 0.7 or more and 1.0 or less for cosmetic applications (title; abstract; claims, in particular 1, 13, 14, 17; Figures; paragraphs [0032]-[0036], [0086]-[0087]), as required by instant claim 10. When the size is too large, light scattering is lower and touch feeling is poor (paragraph [0032]). When the sphericity is less than 0.7, touch feeling is poor (paragraph [0036]). The particles have a size variation coefficient of 0 or more and 60% or less (claim 12; paragraphs [0034]-[0035]), as required by instant claim 11.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the spherical starch foam microparticles of Glenn have a sphericity of 0.7 or more as taught by Kobayashi because this is a quantitative equivalent of qualitative sphericity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the starch foam microparticles of Glenn having a population wherein 100% of the particles are of the specified size have a size variation of the particles to 60% or less as taught by Kobayashi because the is a quantitative equivalent of qualitative uniformity.
Claims 1, 4, 7, 9, 12, 17, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Vanderhoff et al. (WO 96/39464, published December 12, 1996, of record) in view of Buwalda et al. (US 6,899,913, published May 31, 2005, of record); Silenius et al. (US 2007/0246179, published October 25, 2007, of record); and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008.
Vanderhoff teaches a process for the preparation of aqueous dispersions of particles of water soluble polymers and the particles obtained (title; abstract; claims). The particles are prepared by combining an aqueous polymer solution comprising the water soluble polymer with an oil medium so as to form an emulsion of droplets of the water soluble polymer and producing particles from the droplets (abstract; claim 1; paragraph bridging pages 12-13). The oil medium may comprise an emulsifier (surfactant) (claims 2, 3; page 11, lines 11-30; page 12, lines 11-28). Regarding the product-by-process limitations as required by instant claim 17, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In the instant case, the process of Vanderhoff results in the same spherical, starch particles as implied by the steps of claim 17.
The particles have a diameter less than 212 microns, less than 50 microns, are substantially homogenous in size and are spherical (claims 7, 8, 11, 12; page 5, lines 25-31), as required by instant claims 4, 18. The particles may be microcapsules (have a shell, cavity), microspheres or beads (page 13, lines 12-25), as required by instant claim 7. Microspheres do not contain encapsulated materials (have a shell, the ratio of which to the diameter is > 0.45) (page 13, lines 20-22).
The water soluble polymer may be a polysaccharide inclusive of amylopectin (100%) and starch (abstract; claims 14, 15, 21, 22). Alternatively, the water soluble polymer may be human gamma globulin (claim 10). Regarding the exclusion of globulin as required by instant claim 9, Vanderhoff does not require globulin.
Regarding the intended use for cosmetics newly added to claim 1, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Vanderhoff does not specifically teach starch derived from rice as required by claims 1, 4 and does not specifically teach the onset gelatinization temperature of a 50 wt% starch particle dispersion is 80 ºC or higher, is 85 ºC or higher as required by claims 1, 20.
This deficiency is made up for in the teachings of Buwalda, Silenius and Baks.
Buwalda teaches discrete starch particles, wherein said starch has an amylopectin : amylose ratio of at least 90:10, 95:5 or 99:1 (title; abstract; columns 1-16; claims, in particular claim 8). As illustrated in Figure 19:
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the amylopectin PS (potato starch) derivative (A) has a narrow number average particle size distribution of about 5 to 10 microns and a maximum size of about 20 microns (column 3, lines 47-60; also column 6, lines 1-22). Buwalda further teaches starch may be sourced from maize, potato, wheat tapioca and rice (column 1, lines 36-47; column 6, lines 40-57), as required by instant claim 4. Buwalda further teaches the particles are obtained by heat treatment (claims). The starch particles provide smooth textures (abstract).
Silenius teaches spherical composites of starch containing silicon (title; abstract; claims; Figures 1 and 2). The starch consists of granular particles having a mean size between 3 and 20 microns, is a vegetable starch such as rice, and the gelatinization temperature of the starch is at least 50 ºC (paragraph [0019]), as required by instant claim 4.
Baks teaches DSC measurements are used to determine gelatinization (paragraph bridging pages 296 and 297; pages 297-298, section 3.2). For a given starch, gelatinization onset conditions are close together for all starch water mixtures (page 303, 2nd full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to source the amylopectin or the starch for the preparation of the particles of Vanderhoff from rice as independently taught by Buwalda and Silenius because rice is a known source of starch and because amylopectin is a known component of starch.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amylopectin or starch of the particles of Vanderhoff would have a gelatinization temperature of at least 50 ºC as taught by Silenius because this gelatinization temperature is applicable to starch inclusive of rice starch. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the gelatinization onset temperature of the amylopectin or starch of the particles of Vanderhoff is relatively independent of concentration, as measured by DSC, because Baks teaches such.
Regarding the physical property of particle size stability upon circumscribed intended use as required by claim 12, because Vanderhoff in view of Buwalda, Silenius and Baks render obvious rice starch particles as instantly claimed, the rice starch particles of the prior art must also be characterized by said property because a chemical composition and its properties are inseparable. See MPEP 2112. In further support of this presumption, Baks evidences the swelling of starch below the gelatinization temperature is limited, implying the diameter of the amylopectin or starch particles does not substantially change at temperatures below the gelatinization temperature.
Regarding the product-by-process limitations as required by claim 17, although Vanderhoff teaches a similar process, Vanderhoff does not specifically teach the heat treatment step. However, in view of Buwalda it would have been obvious to modify the process of Vanderhoff to comprise a step of heating the aqueous amylopectin or starch solution prior to emulsification because Buwalda teaches heat treatment to produce discrete starch particles having a narrow size distribution.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Vanderhoff et al. (WO 96/39464, published December 12, 1996, of record) in view of Buwalda et al. (US 6,899,913, published May 31, 2005, of record); Silenius et al. (US 2007/0246179, published October 25, 2007, of record); and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008 as applied to claims 1, 4, 7, 9, 12, 17, 18 and 20 above, and further in view Everett et al. (US 2015/0216813, published August 6, 2015, of record).
The teachings of Vanderhoff, Buwalda, Silenius and Baks have been described supra.
They do not specifically teach a specific surface area of 20 m2/g or more as required by claim 5.
This deficiency is made up for in the teachings of Everett.
Everett teaches pharmaceutical spray dried dispersions comprising particles comprising a polymer and having an average diameter of less than 50 microns (title; abstract; claims). The dispersion further comprises a glidant to improve flowability, the glidant having a specific surface area from 50 to 600 m2/g to improve flowability (paragraphs [0052], [0069]), as required by instant claim 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the particles of Vanderhoff to have a specific surface area from 50 to 600 m2/g as taught by Everett in order to improve flowability.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Vanderhoff et al. (WO 96/39464, published December 12, 1996, of record) in view of Buwalda et al. (US 6,899,913, published May 31, 2005, of record); Silenius et al. (US 2007/0246179, published October 25, 2007, of record); and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008 as applied to claims 1, 4, 7, 9, 12, 17, 18 and 20 above, and further in view of Kobayashi et al. (WO 2019/156116, published August 15, 2019, as evidenced by US 2020/0179261, of record).
The teachings of Vanderhoff, Buwalda, Silenius and Baks have been described supra.
They do not specifically teach a sphericity of 0.85 or more as required by claim 10.
They do not specifically teach a coefficient of variance of 50% or less in the diameter as required by claim 11.
These deficiencies are made up for in the teachings of Kobayashi.
Kobayashi teaches fine particles having an average size of 80 nm to 100 microns, of 4 to 14 microns and a sphericity of 0.7 or more and 1.0 or less for cosmetic applications (title; abstract; claims, in particular 1, 13, 14, 17; Figures; paragraphs [0032]-[0036], [0086]-[0087]), as required by instant claim 10. When the size is too large, light scattering is lower and touch feeling is poor (paragraph [0032]). When the sphericity is less than 0.7, touch feeling is poor (paragraph [0036]). The particles have a size variation coefficient of 0 or more and 60% or less (claim 12; paragraphs [0034]-[0035]), as required by instant claim 11.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the spherical particles of Vanderhoff have a sphericity of 0.7 or more as taught by Kobayashi because this is a quantitative equivalent of qualitative sphericity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the substantially homogenous particles of Vanderhoff have a size variation of the particles to 60% or less as taught by Kobayashi because the is a quantitative equivalent of qualitative homogeneity.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Vanderhoff et al. (WO 96/39464, published December 12, 1996, of record) in view of Buwalda et al. (US 6,899,913, published May 31, 2005, of record); Silenius et al. (US 2007/0246179, published October 25, 2007, of record); and Baks et al., “Effect of pressure and temperature on the gelatinization of starch at various starch concentrations” Biomacromolecules 9:296-304, 2008 as applied to claims 1, 4, 7, 9, 12, 17, 18 and 20 above, and further in view of Kapeliuchko et al. (US 2003/0088055, published May 8, 2003, of record).
The teachings of Vanderhoff, Buwalda, Silenius and Baks have been described supra.
Although the implication of Vanderhoff is that the particles consist of the water soluble polymer, Vanderhoff does not specifically teach the particles consist of starch and less than 500 ppm surfactant as required by claim 16.
This deficiency is made up for in the teachings of Kapeliuchko.
Kapeliuchko teaches a process for obtaining fine powders (title; abstract; claims). It is known that particles obtained by dispersion or emulsification may be contaminated by surfactant (paragraphs [0003], [0009]). It is desirable to produce particles that are substantially free from surfactants, meaning less than 10 ppm (claim 12; paragraphs [0023]-[0025]), as required by instant claim 16.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Vanderhoff such that the particles obtained thereby are not contaminated by the emulsifier meaning the particles comprise less than 10 ppm of the emulsifier as taught by Kapeliuchko in order to provide pure polymer particles.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments filed have been fully considered but they are not persuasive.
Applicant’s citation to Table 4 and to paragraphs [0002], [0023] and [0028] at pages 8-9 of the Remarks in support of the argument that the claimed combination of features imparts excellent texture characteristics is acknowledged but not found persuasive because 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). The genus of particles instantly claimed are not limited to those exemplified in Table 4. There is no evidence of record that the disclosed processes by which the particles exemplified in Table 4 are produced (e.g., paragraphs [0071]-[0072]) impart a structural difference. See MPEP 2113 for information regarding product-by-process limitations.
Paragraph [0002] is generally drawn to microplastics. However, all of the art applied is drawn to starch. Furthermore, it is generally known that starch is a substitute for other powder components inclusive of plastics (e.g., EP 1,639,990 A2, copy provided).
Paragraphs [0023] and [0028] are generally drawn to gelatinization. However, it is generally known that starch gelatinization depends upon various factors (e.g., Liu et al., “Gelatinization of cornstarch with different amylose/amylopectin content,” of record). There is no evidence of record that the disclosed processes have an effect on gelatinization.
Applicant’s citation to Silenius and conclusion that there is no motivation to combine Silenius in order to obtain the above-mentioned excellent effects is acknowledged but not found persuasive because Silenius is merely relied upon to evidence the gelatinization temperature of starch. There is no need for the applied prior art to render obvious unclaimed features.
Therefore, the rejections of record are properly maintained.
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 1-4, 5, 7, 9-12, 16-18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4 and 8-12 of copending Application No. 18/546,456 in view of Silenius et al. (US 2007/0246179, published October 25, 2007, of record); Everett et al. (US 2015/0216813, published August 6, 2015, of record); Vanderhoff et al. (WO 96/39464, published December 12, 1996, of record); Buwalda et al. (US 6,899,913, published May 31, 2005, of record); and Kapeliuchko et al. (US 2003/0088055, published May 8, 2003, of record).
The instant claims are drawn to particles comprising rice starch having 90 wt% or more amylopectin, wherein the average particle diameter is 0.5 to 20 microns and the maximum particle diameter is less than 30 microns, and wherein a dispersion of starch has an onset of gelatinization at 80 ºC or higher. The particles may be spherical. The specific surface area may be 20 m2/g or more. The particles may be hollow. The particles may comprise less than 0.10 wt% globulin. The particles may have a sphericity of 0.85 or more. The diameter of the particles may have a coefficient of variance of 50% or less. The diameter of the particles may be characterized by certain physical properties upon circumscribed intended use. The particles may consist of the starch and less than 500 ppm of a surfactant. The particles may be prepared by a circumscribed emulsification process.
The copending ‘456 claims are drawn to coated particles comprising starch derived from glutinous rice, wherein the average particle diameter is 0.5 to 10 microns, the maximum particle diameter is less than 30 microns, and the starch particles contain 90 wt% or more amylopectin. The particles may comprise less than 0.02 wt% globulin. The particles may have a sphericity of 0.85 or more or a coefficient of variation of 40% or less.
The conflicting claims differ from the instant claims with respect to the gelatinization onset temperature, the specific surface area, the hollow cavity, select physical properties and the process of production. However, these differences are obvious in view of the prior art as elaborated supra. In view of Silenius it would have been obvious that the gelatinization temperature of starch inclusive of rice starch is at least 50 ºC. In view of Everett it would have been obvious to modify the core starch particles of the copending claims to have a specific surface area from 50 to 600 m2/g in order to improve flowability for coating. In view of Vanderhoff it would have been obvious to produce the spherical core starch particles of the copending claims via an emulsification process because this is how spherical particles may be made and this is how hollow spherical particles may be made. In view of Buwalda it would have been obvious to modify the production process of the copending claims in view of Vanderhoff to comprise a step of heating the aqueous starch prior to emulsification in order to gel the starch. In view of Kapeliuchko it would have been obvious to minimize any residual emulsifier on the spherical starch particles produced by the production process of the copending claims in view of Vanderhoff to quantities less than 10 ppm in order to produce substantially pure starch particles. In view of the prior art, the particles of the copending claims must also be characterized by physical properties as instantly claimed because a chemical composition and its properties are inseparable.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 4, 5, 7, 9-12, 16-18 and 20 are directed to an invention not patentably distinct from claims 1, 3, 4 and 8-12 of commonly assigned Application No. 18/546,456. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18/546,456, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments: Double Patenting
Applicant’s argument at pages 9-10 of the Remarks regarding Silenius are acknowledged but not found persuasive because Applicant concedes Silenius teaches a gelatinization temperature in excess of 50 ºC. All that is required to establish obviousness of a range is an overlap. See MPEP 2144.05. That Silenius does not disclose the same information as within the instant specification is acknowledged but is not found persuasive because Silenius is merely relied upon to meet that which is claimed. Therefore, the rejection is properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Braunagel et al. (EP 1,639,990 A2, as evidenced by the Google translation) teaches rice starch in cosmetic products; the starch has a particle size of about 0.5 to 200 microns and has a gelatinization temperature of about 60 to 80 ºC (title; abstract; claims; page 2, middle; page 3, last full paragraph).
Tsaur (US 6,903,057) teaches starch granules have a gelatinization temperature between 30 and 85 ºC, the temperature varying with the plant source; starch granules are easy to process as a solid concentrate comprising 30 to 60% solids (column 7, line 65 through column 8, 23).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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