FINAL 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 .
Drawings
The Replacement Drawings filed on 05/26/2026 is accepted.
Election/Restrictions
As previously discussed, Applicant’s election without traverse of species “a poly-β-amino-ester or a poly-β-thio-ester,” in the reply filed on 09/09/2025 is also acknowledged. Applicant indicated that all claims 1-41 read on the elected species. However, the Examiner disagreed. Claims 2-10 are drawn to aliphatic polyester and thus, do not read on the elected species of “a poly-β-amino-ester or a poly-β-thio-ester.” In addition, claims 14, 18, 24, and 26 are drawn to copolymers of β-amino-ester and β-thio-ester and thus, do not read on the elected species of “a poly-β-amino-ester or a poly-β-thio-ester.” Thus, claims 2-10, 14, 18, 24, and 26 remained withdrawn as being drawn to a non-elected species.
In the recent claims set filed 05/26/2026, Applicant had amended dependent claims 11 and 12 from “the polymer or crosslinked polymer is a poly-β-amino-ester or a poly-β-thio-ester” to “the polymer of the poly-β-amino-ester and the poly-β-thio-ester…,” which encompassed a species outside the scope of the elected species of “a poly-β-amino-ester or a poly-β-thio-ester.” Thus, claims 11 and 12 as amended do not read on the elected species of “a poly-β-amino-ester or a poly-β-thio-ester.” Accordingly, claims 11 and 12 will also be withdrawn as being drawn to a non-elected species. In addition, claims 13, 15, 17, and 20-23 will also be withdrawn as being drawn to a non-elected species because said claims 13, 15, 17, and 20-23 depend directly or indirectly from withdrawn claims 11 and 12, respectively.
As such, for the reason above, claims 2-15, 17-18, 20-24, and 26 do not read on the elected species of “a poly-β-amino-ester or a poly-β-thio-ester,” and thereby, are withdrawn as being drawn to a non-elected species.
As a result, claims 2-15, 17-18, 20-24, 26, and 42-94 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species/group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/09/2025.
Status of the Claims
This action is in response to papers filed 05/26/2026 in which claims 16, 19, 25, and 36 were canceled; claims 2-10, 14, 18, 24, 26, and 42-94 were withdrawn; and claims 1, 11-12, 15, 17, 20-23, 27, 29, 32, 35, and 37-40 were amended. All the amendments have been thoroughly reviewed and entered.
As discussed above, amended claims 11-13, 15, 17, and 20-23 do not read on the elected species of “a poly-β-amino-ester or a poly-β-thio-ester,” and thereby, are also withdrawn as being drawn to a non-elected species. Thus, in this office action, claims 2-15, 17-18, 20-24, 26, and 42-94 are currently withdrawn as being drawn to a non-elected species/group.
Claims 1, 27-35 and 37-41 are pending and under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Modified Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 27-35, 37-39 and 41 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Ortais et al (US 2020/0360889 A1).
Elected species: “a poly-β-amino-ester or a poly-β-thio-ester.”
Regarding claim 1, Ortais teaches biodegradable microcapsules containing an oil core and a shell wall comprising poly(beta-amino ester) (Abstract; [0015]-[0104]; Examples 1-18; claims 1-21). Ortais teaches the biodegradable microcapsules are storage stable ([0020], [0022], [0064], [0109]).
Regarding claims 27 and 28, Ortais teaches the oil core contains an active substance selected from the group consisting of essential oils and fragrances; inks, paints, thermochromic and/or photochromic substances, dyes, and glues, biocidal effect products, fungicidal effect products, antiviral effect products, phytosanitary effect products, cosmetic effect products, pharmaceutical active ingredients; and natural and edible oils, vegetable and edible oils, liquid alkanes, esters and fatty acids ([0088]; claim 8).
Regarding claims 29 and 30, it is noted that the limitation of “the microcapsule is used in a consumer care compositions selected from the group comprising laundry care compositions, oral care compositions, hair care compositions, skin care compositions, cosmetic care compositions, home care and cleaning compositions” as recited in claim 29 and “the microcapsule is used in a fabric conditioner composition or a laundry detergent composition” as recited in claim 30 are recitations of intended use. It is noted that 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. It is further noted that Ortais teaches the microcapsule is useful in cosmetic formulations ([0012] and [0088]). As discussed above, Ortais teaches structural the same microcapsule of claim 1 and thus, the microcapsule of Ortais is capable of performing the intended uses as recited in claims 29 and 30.
Regarding claims 31 and 32, Ortais teaches the microcapsule is biodegradable ([0015]-[0022] and [0103]-[0104]; Examples 1-18; claims 18-21).
Regarding claim 33, Ortais teaches the microcapsule shows a biodegradation of at least 90%, measured by a manometric respirometry test, according to the method 301 F of the “OECD Guidelines for Testing of Chemicals: Ready Biodegradability” after an incubation of 28 days ([0015]-[0022] and [0103]-[0104]; Examples 1-18; claims 18-21).
Regarding claim 34, as discussed above, Ortais teaches the microcapsule shows a biodegradation of at least 90%, measured by a manometric respirometry test, according to the method 301 F of the “OECD Guidelines for Testing of Chemicals: Ready Biodegradability” after an incubation of 28 days.
Regarding claim 35, Ortais teaches the microcapsule is stable in a medium at neutral pH ([0020]). Ortais teaches the microcapsule is storage stable in cosmetic formulations ([0012], [0020], [0022], [0064], [0088], [0109]). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claims 37-38, Ortais teaches the microcapsule is storage stable in cosmetic formulations ([0012], [0020], [0022], [0064], [0088], [0109]). It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 39, Ortais teaches the microcapsule further contains a coating deposited onto the surface of the microcapsule ([0052]-[0053], [0093]; claim 17).
Regarding claim 41, Ortais teaches the microcapsule has an average diameter of about 100 nm to 100 µm, preferably between 1 μm and 50 μm, and even more preferably between 10 μm and 40 μm ([0101]; claim 16).
As a result, the aforementioned teachings from Ortais are anticipatory to claims 1, 27-35, 27-39 and 41 of the instant invention.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that Ortais fails to disclose the presence of poly β-thio ester in combination with poly β-amino ester of claim 1. (Remarks, page 19).
In response, the Examiner disagrees. It is noted that amended claim 1 recite “the polymeric microcapsule shell comprises a polymer or a crosslinked polymer of an aliphatic polyester, a poly-β-amino-ester, a poly-β-thio-ester, co-polymers thereof, terpolymers thereof, or mixtures thereof.” Thus, amended claim 1 in light of the standing species election of “a poly-β-amino-ester or a poly-β-thio-ester,” remained to be taught and anticipated by the teaching from Ortais because as discussed above in the standing 102 rejection, Ortais teaches the shell wall of the biodegradable microcapsule comprises poly(beta-amino ester) (see 102 rejection, pages 4-5 of this office action), and thereby reads on the claimed species of “a poly-β-amino-ester or a poly-β-thio-ester.”
As a result, for at least the reason discussed above, claims 1, 27-35, 27-39 and 41 remained rejected as being anticipated by the teachings from Ortais in the pending 102 rejection as set forth in this office action.
Claim(s) 1, 27-35, 37-38 and 41 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Abedin ("Effect of process mixing on the size distribution and mean diameter of the thioltriacrylate microcapsules" (2014). LSU Master's Theses. 3767), and as evidenced by Wang et al (Material Horizons, 2014, 1: 535-539).
Elected species: “a poly-β-amino-ester or a poly-β-thio-ester.”
Regarding claim 1, Abedin teaches microcapsules formed from Michael addition reaction between trithiol and triacrylate to form thiol-triacrylate (poly-β-thio-ester) microcapsules (Abstract; pages 21-31). Abedin teaches the microcapsules contain an oil core (pages 5-8 and 21-31). As evidenced by Wang, the microcapsules formed from Michael addition reaction between trithiol and triacrylate to form thiol-triacrylate (poly-β-thio-ester) are known to be stable and biodegradable (Wang: pages 535-530).
Regarding claims 27 and 28, Abedin teaches the oil core contains an active ingredient selected from vitamin, fats and oils, aroma compounds, pesticides, essential oils, and perfumes (pages 5-8 and 21-31).
Regarding claims 29 and 30, it is noted that the limitation of “the microcapsule is used in a consumer care compositions selected from the group comprising laundry care compositions, oral care compositions, hair care compositions, skin care compositions, cosmetic care compositions, home care and cleaning compositions” as recited in claim 29 and “the microcapsule is used in a fabric conditioner composition or a laundry detergent composition” as recited in claim 30 are recitations of intended use. It is noted that 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. It is further noted that Abedin teaches the microcapsule is useful in cosmetic formulations (Abstract; page 5). As discussed above, Abedin teaches structural the same microcapsule of claim 1 and thus, the microcapsule of Abedin is capable of performing the intended uses as recited in claims 29 and 30.
Regarding claims 31-34, as discussed above, as evidenced by Wang, the microcapsules formed from Michael addition reaction between trithiol and triacrylate to form thiol-triacrylate (poly-β-thio-ester) are known to be stable and biodegradable (Wang: pages 535-530). As discussed above, Abedin teaches structural the same microcapsule of claim 1 (see page 12 of this office action), and thus, the biodegradation properties as recited in claims 31-34 are inherent to the structurally same microcapsule of Abedin. It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claims 35 and 37-38, as discussed above, as evidenced by Wang, the microcapsules formed from Michael addition reaction between trithiol and triacrylate to form thiol-triacrylate (poly-β-thio-ester) are known to be stable and biodegradable (Wang: pages 535-530). As discussed above, Abedin teaches structural the same microcapsule of claim 1 (see page 12 of this office action), and thus, the stability properties as recited in claims 35 and 37-38 are inherent to the structurally same microcapsule of Abedin. It is noted that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 41, Abedin teaches the microcapsules have a particle size from 57 microns to 70 microns (page 31).
As a result, the aforementioned teachings from Abedin (and as evidenced by Wang) are anticipatory to claims 1, 27-35, 37-38 and 41 of the instant invention.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that Abedin/Wang “do not disclose amine-based Michael addition chemistry; they do not disclose poly p-amino esters; and they do not describe any polymer system containing both amine-derived and thiol-derived linkages.” (Remarks, page 20).
In response, the Examiner disagrees. It is noted that amended claim 1 recite “the polymeric microcapsule shell comprises a polymer or a crosslinked polymer of an aliphatic polyester, a poly-β-amino-ester, a poly-β-thio-ester, co-polymers thereof, terpolymers thereof, or mixtures thereof.” Thus, amended claim 1 in light of the standing species election of “a poly-β-amino-ester or a poly-β-thio-ester,” remained to be taught and anticipated by the teaching from Abedin because as discussed above in the standing 102 rejection, Abedin teaches microcapsules formed from Michael addition reaction between trithiol and triacrylate to form thiol-triacrylate (poly-β-thio-ester) microcapsules (see 102 rejection, pages 8-9 of this office action), and thereby reads on the claimed species of “a poly-β-amino-ester or a poly-β-thio-ester.”
As a result, for at least the reason discussed above, claims 1, 27-35, 37-38 and 41 remained rejected as being anticipated by the teachings from Abedin (and as evidenced by Wang) in the pending 102 rejection as set forth in this office action.
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 nonobviousness.
Claim(s) 1, 27-35, and 37-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ortais et al (US 2020/0360889 A1), and further in view of Mistry et al (US 2013/0302392 A1).
The microcapsule of claims 1, 27-35, 37-39 and 41 are discussed above from Ortais, said discussion being incorporated herein in its entirety.
Regarding claim 40, Mistry teaches a polymeric microcapsule coated with a cationic hydrogel to improve the deposition of the polymeric microcapsule onto different substrates such as skin, hair, and textiles (Abstract; [0027]-[0083], [0104]-[0112] and [0121]-[0123]).
It would have been obvious to one of ordinary skill in the art to include a hydrogel coating on the microcapsule of Ortais, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Mistry provided the guidance to do by teaching that a cationic hydrogel coating can be applied on polymeric microcapsules so to improve deposition of the polymeric microcapsule onto different substrates such as skin, hair, and textiles. One of ordinary skill in the art would have reasonable expectation of success because Ortais and Mistry are commonly drawn to using the polymeric microcapsules in cosmetic formulations (Ortais: ([0012] and [0088]; Mistry: Abstract; [0082] and [0104]), and Ortais indicated that a coating can be further applied on the microcapsules (Ortais: [0052]-[0053], [0093]; claim 17). Thus, an ordinary artisan would have looked to modifying the microcapsule of Ortais with a hydrogel coating so as to improve deposition of the microcapsules on substrate such as skin to which the cosmetic formulation are applied, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that neither Ortais nor Mistry disclose or suggest any thiol-based Michael addition chemistry; any poly β-thiol ester formation; or any polymeric shell comprising both β-amino ester and β-thiol ester linkages of claim 1. (Remarks, pages 21-22).
In response, the Examiner disagrees. As discussed above, amended claim 1 recite “the polymeric microcapsule shell comprises a polymer or a crosslinked polymer of an aliphatic polyester, a poly-β-amino-ester, a poly-β-thio-ester, co-polymers thereof, terpolymers thereof, or mixtures thereof.” Thus, amended claim 1 in light of the standing species election of “a poly-β-amino-ester or a poly-β-thio-ester,” remained to be taught and anticipated by the teaching from Ortais because as discussed above in the standing 102 rejection, Ortais teaches the shell wall of the biodegradable microcapsule comprises poly(beta-amino ester) (see 102 rejection, pages 4-5 of this office action), and thereby reads on the claimed species of “a poly-β-amino-ester or a poly-β-thio-ester.”
As a result, dependent claim 40 stands rejected as being obvious and unpatentable over the combined teachings of Ortais and Mistry in the standing 103 rejection as set forth in this office action.
Claim(s) 1, 27-35, and 37-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abedin ("Effect of process mixing on the size distribution and mean diameter of the thioltriacrylate microcapsules" (2014). LSU Master's Theses. 3767) and as evidenced by Wang et al (citation supra), and further in view of Mistry et al (US 2013/0302392 A1).
The microcapsule of claims 1, 27-35, 37-38 and 41 are discussed above from Abedin (and as evidenced by Wang), said discussion being incorporated herein in its entirety.
Regarding claims 39 and 40, Mistry teaches a polymeric microcapsule coated with a cationic hydrogel to improve the deposition of the polymeric microcapsule onto different substrates such as skin, hair, and textiles (Abstract; [0027]-[0083], [0104]-[0112] and [0121]-[0123]).
It would have been obvious to one of ordinary skill in the art to include a hydrogel coating on the microcapsule of Abedin, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Mistry provided the guidance to do by teaching that a cationic hydrogel coating can be applied on polymeric microcapsules so to improve deposition of the polymeric microcapsule onto different substrates such as skin, hair, and textiles. One of ordinary skill in the art would have reasonable expectation of success because Abedin and Mistry are commonly drawn to using the polymeric microcapsules in cosmetic formulations (Abedin: Abstract; page 5; Mistry: Abstract; [0082] and [0104] ). Thus, an ordinary artisan would have looked to modifying the microcapsule of Abedin with a hydrogel coating so as to improve deposition of the microcapsules on substrate such as skin to which the cosmetic formulation are applied, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that that the cited combination of Abedin, Wang and Mistry fails to teach or suggest a microcapsule shell comprising poly-β-amino-ester and poly-β-thiol-ester as recited in claim 1. (Remarks, page 24).
In response, the Examiner disagrees. As discussed above, amended claim 1 recite “the polymeric microcapsule shell comprises a polymer or a crosslinked polymer of an aliphatic polyester, a poly-β-amino-ester, a poly-β-thio-ester, co-polymers thereof, terpolymers thereof, or mixtures thereof.” Thus, amended claim 1 in light of the standing species election of “a poly-β-amino-ester or a poly-β-thio-ester,” remained to be taught and anticipated by the teaching from Abedin because as discussed above in the standing 102 rejection, Abedin teaches microcapsules formed from Michael addition reaction between trithiol and triacrylate to form thiol-triacrylate (poly-β-thio-ester) microcapsules (see 102 rejection, pages 8-9 of this office action), and thereby reads on the claimed species of “a poly-β-amino-ester or a poly-β-thio-ester.”
As a result, dependent claims 39 and 40 stand rejected as being obvious and unpatentable over the combined teachings of Abedin and Mistry in the standing 103 rejection as set forth in this office action
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, 27-35 and 37-41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-86 of copending Application No. 18729490 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘490 significantly overlap with the subject matter of the instant claims i.e., a microcapsule comprising a polymeric microcapsule shell; and a lipophilic core, wherein the polymeric microcapsule shell comprises a poly-β-amino-ester polymer, a co-polymer of poly- β-amino-ester, a terpolymer of poly- β -amino-ester, a crosslinked polymer of poly- β -amino-ester, or mixtures thereof, and wherein the microcapsule is storage stable and biodegradable.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18729490.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that it is premature to address the double patenting rejection, and that any terminal disclaimer, if necessary, should be evaluated only after the claims are otherwise in condition for allowance. Thus, Applicant requested the rejection be held in abeyance until such time. (Remarks, bottom of page 24 to page 25).
In response, the Examiner disagrees. The double patenting rejection is a provisional nonstatutory double patenting rejection over copending Application No. 18729490, and such provisional double patenting rejection should be made and maintained by the Examiner until Applicant overcomes the rejection by filing a terminal disclaimer per MPEP §804(I)(B)(1). In addition it is noted that Applicant's request to hold the double patenting rejection in abeyance is not a proper response because a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02).
Accordingly, the provisional nonstatutory double patenting rejection is maintained for the reason discussed above and pending the filing of a terminal disclaimer.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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