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Claims 38-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being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. Applicant timely
traversed the restriction (election) requirement in the reply filed on May 14, 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
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) 26, 29-31 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et
al. (US 2016/0354749) in view of Hara (US 2003/0092572), Ehr et al. (US 2012/0035054) and Phipps et al. (US 2015/0190774).
Wu et al. (US 2016/0354749) disclose a method of preparing microcapsules [0007]-[0012],
[0019]-[0033], comprising:
preparing a Pickering emulsion by mixing a continuous (aqueous) phase 1 comprising inorganic
particles and a first encapsulating component (at least one amine, at least one hydroxyl) , and a
dispersed (oil) phase 1 including a first capsule reinforcing component (at least one polyisocyanate)
[0008]-[0010]; and
mixing and encapsulating a continuous phase 2 comprising a second capsule reinforcing
component (polyamine or a polyol (hydroxyl)) and the Pickering emulsion [0031], [0033];
wherein the first encapsulating component comprise an amine group or a hydroxyl group
[0008], [0026];
the first capsule reinforcing component is a compound comprising two or more functional
groups selected from the group consisting of an amine group, an isocyanate group, an acyl halide group,
a chloroformate group and an acrylate group; an oligomer using the compound as a monomer; or a
polymer using the compound as a monomer ([0009], [0027], at least one polyisocyanate).
However, Wu et al. (US 2016/0354749) does not disclose the dispersed (oil) phase 1 including a
second encapsulating component.
Hara (US 2003/0092572) discloses a method of preparing microcapsules [0104]-[0115] wherein
a polyamine reacts with polyisocyanate to form a wall of a microcapsule, wherein the polyamine is
added to an aqueous phase and an oil phase.
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to modify the dispersed (oil) phase 1 of Wu et al. (US 2016/0354749) to include a polyamine, as
disclosed by Hara (US 2003/0092572), because such a modification is known in the art and would
provide an alternative configuration for the method known to be operable in the art. As mentioned
above, Hara (US 2003/0092572) discloses polyamine is added to an aqueous phase and an oil phase. In
the combination, the amine in the aqueous phase is the first encapsulating component, and the amine
in the oil phase is a second encapsulating component. Wu et al. (US 2016/0354749) further discloses
that the amine can be at least one amine functionality (i.e., at least two functional groups of amines)
[0026].
Ehr et al. (US 2012/0035054) discloses a method [0048]-[0050], [0054] of preparing capsules:
including suitable polymers such as biodegradable polyester [0050] (note that the
instant specification discloses the biodegradable polymer may be a component having an amine group,
such as polyester (see [0030] in PGPub of this application), and
wherein examples of polyisocyanate include isophorone diisocyanate [0054].
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to further modify the first encapsulating component (at least one amine) to comprise a
biodegradable polymer (polyester), as disclosed by Ehr et al. (US 2012/0035054), because such a
modification is known in the art and would provide an alternative configuration for the method enabling
production of a biodegradable product; and to further modify the first capsule reinforcing component
(polyisocyanate) to be isophorone diisocyanate, as disclosed by Ehr et al. (US 2012/0035054), because
such a modification is known in the art and would provide an alternative configuration for the method
known to be operable.
Phipps et al. (US 2015/0190774) discloses a method of preparing microcapsules wherein
exemplary amines include melamine [0006], [0052]-[0053].
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to further modify the second capsule reinforcing component (as mentioned above, Wu et al. (US 2016/0354749) discloses the second capsule reinforcing component being polyamine) to be melamine, as disclosed by Phipps et al. (US 2015/0190774), because such a modification is known in the art and would provide an alternative configuration for the amine known to be operable in the art.
As to claim 29, Wu et al. (US 2016/0354749) further disclose that the dispersed (oil) phase 1 can
further include mixtures of polyisocyanates, such as a mixture of at least one aliphatic polyisocyanate
(which would define a further second encapsulating component; i.e., the second encapsulating
component would further comprise the at least one aliphatic polyisocyanate) AND at least one aromatic polyisocyanate (which would define the first reinforcing component)), wherein the aromatic
polyisocyanate comprises an aromatic (cyclic hydrocarbon) moiety (which corresponds to the R₁ in the
Chemical Formula 1 in instant claim 29), such as a phenyl (inherently has 6 carbon atoms), a toluyl, a
xylyl, a naphthyl or a diphenyl moiety, and at least two or three isocyanate functional groups (which
corresponds to the X₁ in the Chemical Formula 1 in instant claim 29) [0008]-[0010] [0044]-[0047].
As to claim 30, Wu et al. (US 2016/0354749) disclose the method wherein when the first
encapsulating component (amine) and the second capsule reinforcing component (amine) have amine
groups, and the first capsule reinforcing component (polyisocyanates) have acrylate groups or
isocyanate groups, as mentioned above. Wu et al. (US 2016/0354749) further disclose that the
dispersed (oil) phase 1 can further include mixtures of polyisocyanates, such as a mixture of at least one
aliphatic polyisocyanate (which would define a further second encapsulating component; i.e., the
second encapsulating component would further comprise the at least one aliphatic polyisocyanate) and
at least one aromatic polyisocyanate (which would define the first reinforcing component)) [0008]-
[0010] [0044]-[0047].
As to claim 31, Wu et al. (US 2016/0354749) disclose the method wherein when the first
encapsulating component (hydroxyl) and the second capsule reinforcing component (hydroxyl) have
hydroxyl groups, and the first capsule reinforcing component (polyisocyanate) have isocyanate groups,
acyl halide groups, chloroformate groups or acrylate groups, as mentioned above. Wu et al. (US
2016/0354749) further disclose that the dispersed (oil) phase 1 can further include mixtures of
polyisocyanates, such as a mixture of at least one aliphatic polyisocyanate (which would define a further
second encapsulating component; i.e., the second encapsulating component would further comprise the
at least one aliphatic polyisocyanate) and at least one aromatic polyisocyanate (which would define the
first reinforcing component)) [0008]-[0010] [0044]-[0047].
As to claim 37, Wu et al. (US 2016/0354749) further disclose the method wherein the Pickering
emulsion comprises an active substance selected from the group consisting of fragrance oils,
sunscreens, dyes, catalysts, antioxidants and drugs ([0009], perfume (fragrance) oil).
Claim(s) 27 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2016/0354749) in view of Hara (US 2003/0092572), Ehr et al. (US 2012/0035054) and Phipps et al. (US 2015/0190774) as applied to claims 26, 29-31 and 37 above, and further in view of Lei et al. (US 2016/0193122).
Wu et al. (US 2016/0354749), Hara (US 2003/0092572), Ehr et al. (US 2012/0035054) and Phipps et al. (US 2015/0190774) do not disclose the limitations of claims 27 and 36.
Lei et al. (US 2016/0193122) discloses a method of preparing microcapsules including adsorbing
natural degradation promoting particles to the capsule (microcapsule), wherein the natural degradation
promoting particles are selected from the group consisting of titanium oxide, zinc oxide, zirconium
oxide, tungsten oxide, platinum, platinum oxide, and gold chloride ([0012], [0124] platinum, [0126]
titanium dioxide, zinc oxide, and other transition metal oxides).
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to further modify the method by adsorbing natural degradation promoting particles to the
capsule (microcapsule), as disclosed by Lei et al. (US 2016/0193122), because such a modification is
known in the art and would provide an alternative configuration for the method capable of producing
microcapsules including natural degradation promoting particles.
Claim(s) 34 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2016/0354749) in view of Hara (US 2003/0092572), Ehr et al. (US 2012/0035054) and Phipps et al. (US 2015/0190774) as applied to claims 26, 29-31 and 37 above, and further in view of Harada (US 2002/0043728).
Wu et al. (US 2016/0354749), Hara (US 2003/0092572), Ehr et al. (US 2012/0035054) and Phipps et al. (US 2015/0190774) do not disclose the limitations of claims 34 and 35. As mentioned above, Wu et al. (US 2016/0354749) discloses the second capsule reinforcing component can be polyamine.
Harada (US 2002/0043728) disclose a method of preparing microcapsules including an O/W type
(Pickering) emulsion further comprises a silane coupling agent (capsule reinforcing inorganic precursor),
wherein the agent can be Y-mercaptopropyl trimethoxysilane or β-(3,4-epoxycyclohexyl)ethyl
trimethoxysilane ([0096]-[0098], [0117], [0120].
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to further modify the Pickering emulsion to include a silane coupling agent, as disclosed by
Harada (US 2002/0043728), because such a modification is known in the art and would provide an
alternative configuration for the method known to be operable in the art. Note that the instant
specification discloses that compounds for the capsule reinforcing inorganic precursor, which satisfy the
Chemical Formula 4 (as similarly recited in instant claim 35), include mercaptopropyltrimethoxysilane
and ethyltrimethoxysilane.
Response to Arguments
Applicant's arguments filed January 30, 2026 have been fully considered but they are not persuasive.
Applicant argues that the Wu reference does not appear to describe where the Pickering emulsion is encapsulated.
The Examiner respectfully disagrees. Wu discloses encapsulating the active agent (i.e., included in the Pickering emulsion with a shell (of the microcapsule), discloses reactions within the Pickering emulsion which form microcapsules (i.e., microcapsules which encapsulate the Pickering emulsion) [0031], and discloses adding a second encapsulating reinforcing component (polyamine or polyol) in the water phase (continuous phase 2) during the reaction to form a more compact shell (i.e., encapsulating the continuous phase 2 and the Pickering emulsion within the more compact shell) [0033].
Applicant argues that the Wu reference does not appear to describe a microcapsule that can naturally degrade.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As mentioned in the prior art rejections above, Ehr et al. (US 2012/0035054) discloses that using biodegradable polymers is well known in the art to obtain biodegradable product.
Applicant presents numerous arguments relative to the claimed invention. However, such arguments are not commensurate in scope with the instant claim limitations. Applicant do not provide correspondence of such claimed invention arguments relative to the limitations of the instant claims. Applicant argues surprising and unexpected results including citing the examples in the instant specification. However, again, Applicant does not provide correspondence of the examples relative to the limitations of the instant claims. Thus, it is not clear how such arguments are commensurate in scope the instant claim limitations. Further, such arguments do not include any discussion relative to the prior art used in the rejections. Thus, it is not clear how such claimed invention arguments overcome the prior art used in the rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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