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 Application
Applicants' arguments/remarks filed 07/29/2025 are acknowledged. Claim 1 is currently amended. Claims 1-3 are examined on the merits within and are currently pending.
Specification Objection
The amendment filed 07/29/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Regarding amended page 6:
Dispersion 1, comprising of (pg.2)
Dispersion 2, comprising of (pg.2)
Regarding amended pages 6 and 7:
the total mixture of formaldehyde, melamine and polyacrylic acid being called the polymeric shell material (pg. 3)
Preparation of polymeric shell material - NE-Az mixture (pg. 3)
and sprayed in an atomization chamber with the concordant (pg. 3)
Regarding amended page 9:
to function as a binder (pg. 6)
The specification contains subject matter which was not described in the previous 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.
Applicant is advised to cancel the new matter in the reply to this Office Action and an updated specification should be provided including corrections as one whole specification, not to be two different parts of specifications, which take time to be completely clear where to combine, in order to assure the correct process of the examining action of the next office action.
Withdrawn Rejections
With applicants' amendment filed 07/29/2025 and with respect to the arguments/remarks:
The rejection of Claim 1 under 35 U.S.C. § 112b as being indefinite has been withdrawn due to the amendment of claim 1.
Modified Rejections
Claim Rejections - 35 USC § 112
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 1 is 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.
Claims 1 is rejected with new matter which are underlined below:
a first dispersion comprising:
Neem extract having neem oil removed therefrom - 25% w/v;
Azadirachtin - 5.0% w/v; and
a second dispersion comprising:
wherein the composition is a final emulsion is prepared by mixing the first
dispersion and the second dispersion at a ratio of 2:1 (v/v) and spray dried to obtain
a powder of particle of size 5 mm to 20 mm.
Also, since claim 1 is the composition claim, all methods are not considered in the claims, so first dispersion, second dispersion, mixing, spray drying are not considered in the claim. For examining purpose, the amendments of claim 1 are not included new matters in the claim. Claim 1 is considered as is below:
An antimicrobial microencapsulated fabric finish composition,
comprising:
the first group comprising:
Neem extract - 25% w/v;
Azadirachtin - 5.0% w/v; and
the second group comprising:
Formaldehyde:melamine resin-1:l (w/w) and
Binder - 2 -40% w/v,
wherein the final composition is a combination of the first group and the second group at a ratio of 2:1 (v/v) and spray dried powder of particle of size 5 mm to 20 mm.
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 non-obviousness.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Chetboun (US009220275 B2) in view of Thilagavathi et al. (Thilagavathi et al., Microencapsulation of herbal extracts for microbial resistance in healthcare textiles. Indian Journal of Fibre & Textile Research Vol. 32, September 2007, pp. 351-354) and further in view of Rosemary et al. (Rosemary et al., Efficacy of Azadirachta indica Leaf Powder and Ethanol Extract on Adult Periplanata americana under Laboratory Condition. Open Access Library Journal, 2018. Vol. 5: e4458. https://doi.org/10.4236/oalib.1104458 ) and Hwang et al. (Hwang et al., Factors affecting the characteristics of melamine resin microcapsules containing fragrant oil. Biotechnology and Bioprocess Engineering 2006, 11, 391-395).
Also, since claim 1 is the composition claim, all methods are not considered in the claims, so first dispersion, second dispersion, mixing, pray drying are not considered in the claim. For examining purpose, the amendments of claim 1 are not included new matters in the claim. Claim 1 is considered as is below:
An antimicrobial microencapsulated fabric finish composition,
comprising:
the first group comprising:
Neem extract - 25% w/v;
Azadirachtin - 5.0% w/v; and
the second group comprising:
Formaldehyde:melamine resin-1:l (w/w) and
Binder - 2 -40% w/v,
wherein the final composition is a combination of the first group and the second group at a ratio of 2:1 (v/v) and spray dried powder of particle of size 5 mm to 20 mm.
Mixing the first group and the second group at a ratio of 2:1 (v/v), then the final concentrations of each is:
Neem extract – 16.7% w/v;
Azadirachtin – 3.3% w/v; and
Formaldehyde:melamine resin-1:l (w/w) or 133:133 w/v
Binder – 0.7 -13.3% w/v.
Chetboun teaches microbicidal treatment of textile materials, a Neem oil micro
capsule composition specifically for said treatment and a bioactive textile material obtained. (Abs). At the end of the encapsulation process, a dispersion of microcapsules comprising 30%. Neem oil. (Col. 5, lines 44-46), wherein said Neem oil contains, by weight 0.15-20% azadirachtin A. (Claim 2, col. 8), at least 1.5% polyurethane binder. Polyurethane binder can be higher than 1.5%. Chetboun teaches 1-5µm particle size. (Col. 8, line 24).
Chetboun does not teach neem extract, even though neem extract contains some ingredients neem extract has.
Thilagavathi et al. teach antimicrobial finish has been imparted to the cotton fabric using extracts of neem, (Abs). The leaves and oil of neem (Azadirechta indica) were used for the antimicrobial finish. (pg. 352, left col., 1st par.). Antimicrobial active substances were
extracted from the plant by methanolic extraction method. The powdered plant material was extracted with methanol by adding 20g of herbal powder in 100ml of methanol. Microencapsulation was done using neem extract with 160 mL water total, 10g of wall material. (pg. 352, left col., last par.). Overall, 20g of neem leaves extract in 160mL of volume, which is 12.5% w/v neem leave extract.
Rosemary et al. teach leaf powder in 50mL ethanol, 00, 10, 20, 30, 40 or 50g in 50 mL ethanol at 0, 20%, 40%, 60%, 80% and 100% w/v was applied to test Mean mortality of adult Periplanata. Americana exposed to azadirachta indica leaf powder. (Table 1, pg. 9).
Chetboun, Thilagavathi et al. and Rosemary et al. do not teach Melamine Resin.
Hwang et al. teach microcapsules containing fragrant oils as a core material using melamine-formaldehyde prepolymer as the wall material. (Abs). A mixture of 0.2 M of Melamine (MW 126.12 g/mol), was added into 50 mL of water used to prepare microcapsules. (pg. 392, left col., 2nd par.). 126.12 g/mol x 0.2 mol/L = 25g /L. And 37% concentration of formaldehyde (0.6M) (pg. 392, left col., 2nd par.), (formaldehyde MW 30.031 g/mol), which is 0.6 mol/L x 30.031 g/mol = 18.0 g/L. Hwang et al. do not specify how much volume of formaldehyde is mixed with Melamine. Depending on the volume of formaldehyde to be added with Melamine, they can have the ratio 1:1 w/w ratio. The prepared microcapsules
were then dried under a vacuum at room temperature for 24 h. (pg. 392, left col., 2nd par.).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the invention to prepare antimicrobial microencapsulated fabric finish composition, comprising of 0.15-20% azadirachtin A, at least 1.5% polyurethane binder, in microcapsule composition taught by Chetboun, 20%, 40%, 60%, 80% and 100% w/v neem leaf powder, taught by Rosemary et al., with Formaldehyde - melamine resin- l:l (w/w) before the final composition and to be dried into powder, taught by Hwang et al., since they have proven neem leaves and neem oil extract contain antibiotic ingredients, which can be applied on textile for health care purpose.
Response to Arguments
Rejection under 35 U.S.C. § 103,
Applicant argues that Chetboun, Applicant makes the following observations. The present invention uses a neem extract having neem oil removed therefrom, whereas Chetboun uses a neem oil. The neem oil of Chetboun results in a highly hydrophobic core which cannot be encapsulated by the method of the present invention. To the contrary, the neem extract forming the core of the spray dried product is achievable with the instantly claimed neem extract.
Further, the core material of the present invention includes 50g Neem powder (25
% w/v); 10 g of ADP (5% w/v) in 200ml water; Resin/Wall material: 400 g HCHO + 400g
Melamine in 100ml water+ binder polyacrylic 40 g. To the contrary, the core material of
the primary reference includes 0.5% of Neem Oil (1-30% Nimbin, 1-30% salanim; 0.15-
20% azadirachtin) with a resin of urea-formol. Accordingly, the core materials are
different; where the present invention is made after removal of Neem oil, whereas the
primary reference is focusing on entrapping Neem oil, which is hydrophobic, highly
volatile, easily oxidized and produces bad odor. Since the core material itself is different,
the wall material required to stabilize the core is also widely different, creating difference
between the present invention and the primary reference.
Applicant's arguments have been fully considered but they are not persuasive, since the amendment of claim 1 contains new matter, “Neem extract having neem oil removed therefrom”, which is rejected in claim 1, so the claim as described above, does not have the statement “having neem oil removed therefrom”. Neem extract contains neem oil. Chetboun teaches azadirachtin A % from neem oil. Claims 1-3 of this application are the composition claims, in which method of preparation is not counted. Applicant can submit a new application of method claims including rejected new matters in claim 1 and including all new matters which are objected in the specification, to overcome all objections and rejections of new matters.
Applicant argues that the primary reference describes particle sizes of 1 mm to 5 mm, with the
majority being about 2 mm. This is necessary due to the odor of neem oil. To the contrary,
the present invention uses spray dried particles of 5 mm to 20 mm. While the ranges
overlap at 5 mm, Applicant submits that one skilled in the art would not be motivated to
make all the particles of Chetboun to be from 5 mm to 20 mm, as such would result in an
unacceptable odor. Accordingly, Chetboun teaches away from large particle sizes,
describing the majority of the particles being about 2 mm.
Applicant's arguments have been fully considered but they are not persuasive, since the claim 1 Chetboun teaches 1-5µm particle size. Applicant should clarify their particle sizes in the SPEC and in the claim, 5 mm to 20 mm, which are huge, and can be observed by naked eyes and also impossible to incorporate these particles in fabric, without causing friction in textile, let alone to be able to maintain them on fabric. More reasonably, applicant’s particle sizes are in the range 5 µm to 20 µm, overlapping with 5 µm particle size applicant claims.
Applicant argues that the examiner relies on three secondary references for teaching elements neither taught nor fairly suggested by the primary reference. Initially, due to the unpredictable
nature of the art and the differences in the physical and chemical properties of the elements,
as discussed herein, one skilled in the art would not have any reasonable expectation of
success in making the multiple proposed modifications as proposed by the Examiner. For
this reason alone, the rejection should be withdrawn.
Applicant's arguments have been fully considered but they are not persuasive, since the basis for 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. One with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things.
Applicant argues that The Examiner appears to rely on Thilagavathi for a teaching of using neem extract and Rosemary for a teaching of specific neem extract concentrations. However, Applicant
notes that neither reference describes the neem extract having neem oil removed therefrom.
Thilagavathi uses an extract from the entire plant, without describing any oil removal
process. Accordingly, as discussed above, the chemical and physical characteristics of the
neem extract of Thilagavathi would be different from that used in the instant claims.
Further, as discussed above, there would be no motivation to combine the extract of
Thilagavathi with the neem oil of Chetboun, as such would result in products of different
chemical and physical properties.
Applicant's arguments have been fully considered but they are not persuasive, since the amendment of claim 1 contains new matter, “Neem extract having neem oil removed therefrom”, which is not accepted in the claim, so the claim as described above, does not have the statement “having neem oil removed therefrom”. As a result, prior art teaching neem extract may contain neem oil.
Applicant argues that Rosemary is non-analogous art. The Rosemary reference is directed to compositions for killing cockroaches. This is clearly a different field of endeavor and is further not pertinent to the problem to be solved by the inventor. Thus, one skilled in the art looking for references related to fabric finishes would not look toward a cockroach-killing reference for any particular teachings.
Applicant's arguments have been fully considered but they are not persuasive, since the basis for 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. Rosemary teaches Azadirachta indica Leaf Powder and Ethanol Extract on Adult Periplanata americana under Laboratory Condition. One with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things.
Applicant argues that different substances would require different encapsulation methods and there is no reasonable expectation of success that the resin of Hwang, which is used for fragrant oils, would behave in any acceptable manner when used with the composition instantly claimed.
Applicant's arguments have been fully considered but they are not persuasive, since claim 1 is the composition claim and Hwang teach the percentages of formaldehyde and melamine resin that applicant claim. Hwang teaches that several parameters such as stirring times, stirring rates, emulsifier types, emulsifier concentrations and the viscosity would affect the microparticles /microcapsules in using formaldehyde and melamine resin, which belong to method claims, which are not in the part of this office action.
Conclusion
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 extension fee 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 date of this final action.
Correspondence
No claim is allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGOC-ANH THI NGUYEN whose telephone number is (571)270-0867. The examiner can normally be reached Monday - Friday 8:00 am.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NGOC-ANH THI NGUYEN/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615