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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP 20181096, filed on 19 June, 2021.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because Figs 4, 6, 8, and 10 are not legible. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Interpretation
With regard to Claims 1-5, 19, and 22, the Examiner is noting the phrase “characterised in that” is PCT language (see MPEP § 1824). Furthermore, the Examiner is interpretating the phrase “characterised in that” as being synonymous with “comprising”. “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps”. See MPEP § 2111.03(I).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-24 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the coacervation" in Line 5. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this limitation will be read as “a coacervation”.
Claims 2-24 are rejected by virtue of their dependance on Claim 1.
Regarding Claim 3, the phrase “in particular” (Line 4) renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 3, the phrase “e.g.” (Line 5) renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 3, the phrase “preferably” (Line 6) renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 3, the phrase “more preferred” (Line 8) renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 4, the phrase “preferably” (Line 3) renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 4, the phrase “preferably” (Line 6) renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 5, 7-14 are rejected by virtue of their dependance on Claim 4.
Claim 6 recites the limitation "The method according to claim 1, characterised in that the crosslinking step d)" in Line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes this claim will be read as “The method according to Claim 2 characterised in that the crosslinking step d)".
Regarding Claim 6, the phrase "such as" (Line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 6, the phrase "such as" (Line 5) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 6, the phrase "e.g." (Line 7) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 8, the phrase "preferably" (Line 3) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 9, the phrase "such as" (Line 7) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10 recites the limitation "The method according to claim 7, characterised in that the aromatic alcohol of a)" in Lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes Claim 10 will be read as “The method according to Claim 9, characterised in that the aromatic alcohol of i)
Claim 11 recites the limitation "The method according to claim 7, characterised in that the aldehydic component b) " in Lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes Claim 10 will be read as “The method according to Claim 9, characterised in that the aldehyde component ii)”.
Claim 12 recites the limitation "aromatic alcohol of a)" in Lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes Claim 12 will be read as “aromatic alcohol of i)”.
Claim 12 recites the limitation "aldehydic component b))" in Lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes Claim 12 will be read as “aldehyde component ii)”.
Regarding Claim 12, the phrase "preferably" (Line 4) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 12, the phrase "particularly preferably" (Line 4) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 13 recites a “use” claim and attempts to claim a method for using a surfactant without setting forth any steps involved in the method/process, which leads to indefinites because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP § 2173.05(q).
Regarding Claim 14, the phrase "like" (Line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 14, the phrase "preferably" (Line 6) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 15 recites the limitation "the slurry" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "step d)" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 17, the phrase "preferably" (Line 3) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 17, the phrase "more preferred" (Line 3) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 18, the phrase "preferably " (Line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 18, the phrase "particularly preferably " (Line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 21, the phrase " preferably " (Line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 21 recites the limitation "the embodiments 7 to 12" in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "the embodiments 4 or 5" in Lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites parenthetical information. As an example, Claim 21 recites "microcapsule/s (template microcapsule/s)”. Such parenthetical information renders the claim indefinite because it is not clear whether it is Applicants' intent that the claim be limited only to that subject matter recite in parentheses. In the above example, are all microcapsules encompassed by the claim or is the claim limited to the template microcapsule.
Claim 22 is indefinite in that the metes and bounds of the microcapsules described by the limitations "the embodiments 7 to 12" and “embodiments 4 or 5” are unclear.
For the purpose of expedited prosecution, the Claim will being read as “the claims 7 to 12” and “claims 4 or 5”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, and 15, 16, and 19-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bone (US 2017/0065497 A1, hereafter “Bone”).
With regard to Claims 1-6, 15, and 16, Bone discloses a method of preparing capsules by mixing a gum solution comprising carboxymethyl cellulose sodium salt with a gelatin solution, adding miglyol or fragrance and adjusting the pH to about 5.5, then pH is adjusted to about 10 and crosslinked with poly(methyl vinyl ether co maleic anhydride), then sodium benzoate and pH adjusted to less than 4, and the fragrance is encapsulated the microcapsules are dried ([0068]-[0075]).
With regard to Claim 19, Bone is silent to wherein microcapsules have a content of synthetic polymer(s) (CSP) less than or equal to (< ) 0.15, wherein the CSP is the quotient of the amount of synthetic polymer(s) encapsulating an amount of core material. However, since the limitation states the CSP is less than 0.15, meaning the CSP is 0, the invention of Bone would inherently be the same as the disclosed invention.
With regard to Claims 23 and 24, Bone discloses wherein the microcapsules were mixed with shampoo formulation ([0095]).
Claims 16, 19and 24 are product-by-process claims. Please note that the patentability of a product does not depend upon the method of production. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art was made by a different process” (see, e.g. MPEP § 2113).
Claims 1-6, and 15-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berthier (US 2020/0406218 A1, hereafter “Berthier”).
With regard to Claims 1-6, 15, and 16, Berthier discloses a process of mixing gum Arabic, chitosan, and water, adjusting the pH with HCl, adding perfume oil and crosslinked with glutaraldehyde that results in coacervate chitosan/gum Arabic ([0169]).
With regard to Claim 17, Berthier is silent to wherein the microcapsules have a hydrodynamic diameter d(90%), measured in deionized water at room temperature by DLS, between 15 and 150 pm, preferred between 30 and 120 pm, more preferred between 40 and 100 pm.
The instant application discloses microcapsules that comprise of chitosan and gum Arabic crosslinked with glutaraldehyde (Table 1a), which result in the disclosed hydrodynamic diameter d(90%).
Berthier discloses microcapsules that comprise of chitosan and gum Arabic crosslinked with glutaraldehyde ([0169]). Therefore, the microcapsules of Berthier would inherently have the same hydrodynamic diameter d(90%) as disclosed in the instant application.
With regard to Claim 18, Berthier is silent to wherein the microcapsules are stable in storage after drying for at least 14 days, preferably for at least 28 days, particularly preferably for at least 36 days at storage temperatures from 20 to 45 °C and at a relative air humidity of 30 to 70 %.
The instant application discloses microcapsules that comprise of chitosan and gum Arabic crosslinked with glutaraldehyde (Table 1a), which result in the claimed stability property.
Berthier discloses microcapsules that comprise of chitosan and gum Arabic crosslinked with glutaraldehyde ([0169]). Therefore, the microcapsules of Berthier would inherently have the same the claimed stability property as disclosed in the instant application.
With regard to Claim 19, Berthier is silent to wherein microcapsules have a content of synthetic polymer(s) (CSP) less than or equal to (< ) 0.15, wherein the CSP is the quotient of the amount of synthetic polymer(s) encapsulating an amount of core material. However, since the limitation states the CSP is less than 0.15, meaning the CSP is 0, the invention of Berthier would inherently be the same as the disclosed invention.
With regard to Claim 20-22, Berthier discloses microcapsules that are made by the process of mixing gum Arabic, chitosan, and water, adjusting the pH with HCl, adding perfume oil and crosslinked with glutaraldehyde ([0169]).
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.
Claims 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Bone (US 2017/0065497 A1, hereafter “Bone”) in view of Last (US 2013/0137626 A1, hereafter “Last”).
With regard to Claims 7-10, The teachings of Bone are discussed above. Bone is silent to wherein the inner shell material comprises a resin.
Last discloses microcapsules, the capsule walls of which comprise a resin that can be obtained by reacting a) at least one compound selected from the group consisting of a1) amines and a2) aromatic or heteroaromatic compounds (Abstract).
Last teaches microcapsules whose capsules comprise a resin which is obtained by reaction amines, aromatic or heteroaromatic compounds (such as phenol) with at least one aldehydic component which has a least two C atoms per molecule, in the presence of one copolymer which comprises units of 2-acrylamido-2-methylpropanesulfonic acid or its salts ([0016-0022]). Last further teaches this resin is beneficial because the microcapsules have low formaldehyde content which for environmental and workplace safety reasons it is desirable to minimize the formaldehyde content ([0004], [0015]).
The person of ordinary skill in the art would have been motivated to include the resin above as disclosed in Last in order to produce a microcapsule that has low formaldehyde content minimize the formaldehyde content. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to include the resin as disclosed above in order to produce a microcapsule that has low formaldehyde content minimize the formaldehyde content.
Claims 8 and 9 are product-by-process claims. Please note that the patentability of a product does not depend upon the method of production. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art was made by a different process” (see, e.g. MPEP § 2113).
With regard to Claim 11, modified Bone in view of Last discloses wherein the preferred aldehyde include valeraldehyde, caproalde hyde, caprylaldehyde, decanal, succinaldehyde, cyclohexan ecarbaldehyde, cyclopentanecarbaldehyde, 2-methyl-1-propanal, 2-methylpropionaldehyde, acetaldehyde, acrolein, aldosterone, antimycin A, 8'-apo-B-caroten-8'-al, benzaldehyde, butanal, chloral, citral, citronellal, crotonaldehyde, dimethylaminobenzaldehyde, folic acid, fosmidomycin, furfural, glutaraldehyde, glyceraldehyde, glycolaldehyde, glyoxal, glyoxylic acid, heptanal, 2-hydroxybenzaldehyde, 3-hydroxybutanal, hydroxymethylfurfural, 4-hydroxynonenal, isobutanal, isobutyraldehyde, methacrolein, 2-methylundecanal, mucochloric acid, N-methylformamide, 2-nitrobenzaldehyde, nonanal, octanal, oleocanthal, orlistat, pentanal, phenylethanal, phycocyanin, piperonal, propanal, propenal, protocatechualdehyde, retinal, salicylaldehyde, secologanin, streptomycin, strophanthidin, tylosin, vanillin, and cinnamaldehyde ([0074]).
With regard to Claim 12, modified Bone in view of Last discloses where the molar ratio of a) of the at least one amine and/or aromatic or heteroaromatic compound (e.g., aromatic alcohol or ether thereof or derivative thereof such as ester) to b) the at least one aldehydic component may be generally between 1:1 and 1:5. more preferably between 1:1 and 1:3. The ratio in the case of resorcinol as component a) is preferably about 1:1.5 to 1:3, in the case of phloroglucinol about 1:1 to 1:2, in the case of melamine about 1:1.5 to 1:2, and in the case of urea about 1:1.2 to 1:1.5 and the weight ratio of components a)+b) to c) (protective colloid), i.e., the ratio of the sum total weight of a)+b) to the weight of component c), is in general between 1:1 and 1:0.01, more preferably between 1:0.2 and 1:0.05 ([0076]).
Claims 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Berthier (US 2020/0406218 A1, hereafter “Berthier”) in view of Last (US 2013/0137626 A1, hereafter “Last”).
With regard to Claims 7-10, Berthier is silent to wherein the inner shell material comprises a resin.
Last discloses microcapsules, the capsule walls of which comprise a resin that can be obtained by reacting a) at least one compound selected from the group consisting of a1) amines and a2) aromatic or heteroaromatic compounds (Abstract).
Last teaches microcapsules whose capsules comprise a resin which is obtained by reaction amines, aromatic or heteroaromatic compounds (such as phenol) with at least one aldehydic component which has a least two C atoms per molecule, in the presence of one copolymer which comprises units of 2-acrylamido-2-methylpropanesulfonic acid or its salts ([0016-0022]). Last further teaches this resin is beneficial because the microcapsules have low formaldehyde content which for environmental and workplace safety reasons it is desirable to minimize the formaldehyde content ([0004], [0015]).
The person of ordinary skill in the art would have been motivated to include the resin above as disclosed in Last in order to produce a microcapsule that has low formaldehyde content minimize the formaldehyde content. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to include the resin as disclosed above in order to produce a microcapsule that has low formaldehyde content minimize the formaldehyde content.
Claims 8 and 9 are product-by-process claims. Please note that the patentability of a product does not depend upon the method of production. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art was made by a different process” (see, e.g. MPEP § 2113).
With regard to Claim 11, modified Berthier in view of Last discloses wherein the preferred aldehyde include valeraldehyde, caproalde hyde, caprylaldehyde, decanal, succinaldehyde, cyclohexan ecarbaldehyde, cyclopentanecarbaldehyde, 2-methyl-1-propanal, 2-methylpropionaldehyde, acetaldehyde, acrolein, aldosterone, antimycin A, 8'-apo-B-caroten-8'-al, benzaldehyde, butanal, chloral, citral, citronellal, crotonaldehyde, dimethylaminobenzaldehyde, folic acid, fosmidomycin, furfural, glutaraldehyde, glyceraldehyde, glycolaldehyde, glyoxal, glyoxylic acid, heptanal, 2-hydroxybenzaldehyde, 3-hydroxybutanal, hydroxymethylfurfural, 4-hydroxynonenal, isobutanal, isobutyraldehyde, methacrolein, 2-methylundecanal, mucochloric acid, N-methylformamide, 2-nitrobenzaldehyde, nonanal, octanal, oleocanthal, orlistat, pentanal, phenylethanal, phycocyanin, piperonal, propanal, propenal, protocatechualdehyde, retinal, salicylaldehyde, secologanin, streptomycin, strophanthidin, tylosin, vanillin, and cinnamaldehyde ([0074]).
With regard to Claim 12, modified Berthier in view of Last discloses where the molar ratio of a) of the at least one amine and/or aromatic or heteroaromatic compound (e.g., aromatic alcohol or ether thereof or derivative thereof such as ester) to b) the at least one aldehydic component may be generally between 1:1 and 1:5. more preferably between 1:1 and 1:3. The ratio in the case of resorcinol as component a) is preferably about 1:1.5 to 1:3, in the case of phloroglucinol about 1:1 to 1:2, in the case of melamine about 1:1.5 to 1:2, and in the case of urea about 1:1.2 to 1:1.5 and the weight ratio of components a)+b) to c) (protective colloid), i.e., the ratio of the sum total weight of a)+b) to the weight of component c), is in general between 1:1 and 1:0.01, more preferably between 1:0.2 and 1:0.05 ([0076]).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bone (US 2017/0065497 A1, hereafter “Bone”) in view of Last (US 2013/0137626 A1, hereafter “Last”) and Lebo (US 5,552,149, hereafter “Lebo”).
With regard to Claims 13 and 14, modified Bone is silent to wherein the method includes surfactant and the selected surfactants.
Lebo discloses a method for microencapsulating agriculturally active substances such as pesticides to provide improved resistance to environmental degradation, especially ultra-violet light (Abstract).
Lebo teaches the method employs lignosulfonates in combination with gelatin to form a capsule all and that his wall is durable and has ultra-violet light protection (Abstract).
The person of ordinary skill in the art would have been motivated to include a surfactant such as lignosulfonates in combination with gelatin to form a capsule all and that his wall is durable and has ultra-violet light protection. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to include the lignosulfonates in combination with gelatin to form a capsule all and that his wall is durable and has ultra-violet light protection.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Berthier (US 2020/0406218 A1, hereafter “Berthier”) in view of Last (US 2013/0137626 A1, hereafter “Last”) and Lebo (US 5,552,149, hereafter “Lebo”).
With regard to Claims 13 and 14, modified Berthier is silent to wherein the method includes surfactant and the selected surfactants.
Lebo discloses a method for microencapsulating agriculturally active substances such as pesticides to provide improved resistance to environmental degradation, especially ultra-violet light (Abstract).
Lebo teaches the method employs lignosulfonates in combination with gelatin to form a capsule all and that his wall is durable and has ultra-violet light protection (Abstract).
The person of ordinary skill in the art would have been motivated to include a surfactant such as lignosulfonates in combination with gelatin to form a capsule all and that his wall is durable and has ultra-violet light protection. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to include the lignosulfonates in combination with gelatin to form a capsule all and that his wall is durable and has ultra-violet light protection.
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 1-24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of copending Application No. 18/012,106 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim a method of producing microcapsules with core material and shell material by dispersing two charged polymers in water, adding the same hydrophobic ingredients, wherein the microcapsules have an inner shell with an inside resin, wherein the resin is the condensation of thermosetting resins and a subsequent formation of microcapsules using aldehydes, preferably formaldehyde and optionally, wherein the shell material of the microcapsule has been treated with an oxidizing agent preferred with H2O2 prior to curing of the shell material further optionally supplemented by silica or a silica derivative, the resin is obtained by at least one aromatic alcohol or ethers or esters thereof and at least one aldehyde component that comprises at least two carbon atoms per molecule, and in the presence of at least one homopolymer or copolymer of 2-acrylamido-2- methyl-propane sulfonic acid or salts thereof and/or biopolymers such as gum Arabic.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAFA H AHMED whose telephone number is (571)270-0270. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on (571)272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.H.A./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Prosecution Insights