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 .
Status of Claims
Claim amendment filed on 04/06/2026 is acknowledged.
Claims 31-67 remain withdrawn as being drawn to nonelected groups.
Claim 3 is cancelled. Claims 1-2 and 4-30 are amended.
Claims 68-94 are new.
Claims 1-2, 4-30 and 68-94 are pending and being examined on the merits herein.
Priority
This instant application 18019512, filed on 02/03/2023, is a 371 of PCT/IB2021/057097, filed on 08/03/2021, which claims foreign priority to Netherlands 2026204, filed on 08/03/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/08/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 08/07/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 04/06/2026.
Claim Objections
The claim set is objected for the huge space between claims 13 and 14, and the absence/ appearance with inconsistent page numbers and header, e.g., word “PATENT” showing up as part of header on top right corner of page 4/18, first several pages missing page numbers at the bottom while page number 4 showing up on top of 3/18 page, later pages starting from number 6 up to 19 (while page count to only 18) at the bottom of the pages.
Claim 79 is objected to because of the following informalities: both “gelatin” and “Gelatin” are seen in the claim, one of which should be deleted; both uppercased and lowercased compound names are shown, of which should be consistent throughout the claim and lowercase is recommended whenever proper.
Appropriate correction is required.
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 1-2, 4-30 and 68-94 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “organic (vegetable or animal) oil”. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced within parentheses is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites “wherein said second liquid comprises an organic (vegetable or animal) oil, and wherein said second liquid comprises a fat or wax”. It is unclear what the second liquid exactly comprises based on these two parallel limitation phrases with different scopes. For the purpose of compact prosecution, the limitation is interpreted as “said second liquid comprises a vegetable oil, an animal oil, a fat, or wax”.
Claim 1 also recites “that said emulsion is formed containing said first liquid and said second liquid”. It is unclear what the word “that” refers to in the context.
Claim 5 recites “ said fat or wax is processed in a liquid condition to solidify below 40 C in the second liquid”. It is unclear how the fat or wax can solidify below 40 C in second liquid since the second liquid is a liquid form, because second liquid would not be liquid if it is meant that fat or wax solidify into solid form.
Claim 9 recites “said second liquid comprises an oil selected from the group consisting of essential oils, ethereal oils, macerated oils, triglyceride and mixtures or derivatives thereof”. It is unclear what exactly second liquid comprises because claim 9 is depending on claim 1, while claim 1 already defines “wherein said second liquid comprises an organic (vegetable or animal) oil, and wherein said second liquid comprises a fat or wax”. Whether this oil is part of the vegetable oil, animal oil, fat, or wax, or this “an oil” refers to an additional oil in addition to the oil species mentioned in claim 1, the language doesn’t express a definite scope.
Claims 18 and 21 each recites “particularly”. In claim 18, particularly laponite clay, which is a narrower statement of “clay”. In claim 21, particularly biodegradable, which is a narrower statement of “bio-compatible”. Each claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). For the purpose of compact prosecution, the narrower scope is considered as an optional example.
Claim 81 recites “an ionic calcium concentration”. Because the electrolyte comprises a calcium or magnesium salt solution, the ionic solution might be entirely magnesium ionic solution; in such a case, the ionic calcium concentration lacks antecedent basis.
Claim 82-83 each recites “ according to claim 80, wherein said concentration is …”. There is insufficient antecedent basis for this limitation in the claims, because “concentration” is not mentioned in claim 80, which claims 82-83 depend upon. For the purpose of compact prosecution, these two claims are interpreted as dependent upon claim 81 instead, and, the concentration is considered as ionic concentration for either magnesium or calcium salt.
Claim 90 recites “a maximum particle size below 150 micron”, and “more than 25 wt%”. Because a maximum particle size has to be defined as a value, it cannot be a range as “below 150 micron”, especially below such value can be down to 0 micron. The calculation basis of the percentage is missing, and it is unclear whether the percentage is based on total weight of the composition, or the weight of first liquid phase, or the component itself prior to be added. The claim is interpreted as maximum particle size at 150 micron, and more than 25 wt% of the total composition.
All other claims are rejected accordingly because they are directly or indirectly depending on claim 1, and they do not further clarify the issues in claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22-23, 89 and 93-94 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 22 and 93 each recites “said solid particles comprises a biodegradable compound or are hydrophobized by functionalizing or coating with a biodegradable compound …”, while claim 21 which claims 22 and 93 depend upon, indicating solid particles are biocompatible and particularly biodegradable. The claim 22 or claim 93 scope expanding the biodegradable compound into materials hydrophobized by functionalizing or coating with biodegradable compound, rather broadens the limitation scope of claim 21. Therefore, claims 22 and 93 fail to further limit claim 21.
Claims 23 and 94 are rejected accordingly because they are directly depending on claim 22, and they do not clarify the issue addressed above in claim 22.
Claim 89 recites “… according to claim 88, wherein said an acid, a base and/or a buffer agent comprises HEPES, metaphosphoric acid, citric acid, perchloric acid, acetic acid or orthophosphoric acid”, however, claim 88, which claim 89 depends upon, specifies that “wherein said an acid, a base and/or a buffer agent comprises one or more of ascorbic acid, hyaluronic acid and a zwitterionic sulfonic acid buffering agent. Because the ingredient species (HEPES, metaphosphoric acid, citric acid, perchloric acid, acetic acid or orthophosphoric acid) do not further limit the ingredient species in claim 88, the claim 89 fails to further narrowing the subject matter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(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.
Claims 1-2, 4-5, 9-13, 26-29, 68-69, 77-79, and 91 are rejected under 35 U.S.C. 102 as being anticipated by Yasue et al. (Lion Corp, JP H10174861, 06/30/1998, IDS of 02/03/2023, translation relied upon below, in record of 08/07/2025).
Yasue directs to method to stably and efficiently prepare a hydrophilic core material-containing polynuclear microcapsules for stably encapsulating a hydrophilic material used as an available component of a cosmetic or the like or a physiologically active material and capable of suitably releasing the hydrophilic material (e.g., Abstract).
Yasue teaches method for producing microcapsules by microencapsulating hydrophilic core substances that are chemically or physically unstable (corresponding to reactive active compound in instant claim 1) or have a bitter taste or an unpleasant odor, and to a method for producing microcapsules which can stably and efficiently prepare hydrophilic core substance-containing polynuclear microcapsules by utilizing a W/O/W type composite emulsion [0001]. Yasue describes the emulsion preparation method in detail, including the following steps: emulsifying an inner aqueous phase containing a hydrophilic core substance (corresponding to active compound in hydrophilic liquid, the first liquid, in instant claims 1-2 and 11; corresponding to first liquid as an aqueous solution of active compound in instant claim 77) in an oil phase containing an oil (corresponding to hydrophobic liquid, the second liquid, in instant claim 1) and an emulsifier to form a W/O type emulsion (corresponding to said liquid comprising an emulsion of a first liquid and a second oil liquid that is substantially immiscible with the first liquid in instant claim 1), and then dispersing and emulsifying the W/O type emulsion in an outer aqueous phase containing a hydrophilic membrane-forming substance of a water-soluble polymer compound that gels upon temperature change, to form a W/O/W emulsion having the W/O type emulsion particles as dispersoids, and then changing the temperature to solidify the hydrophilic film-forming substance in the outer aqueous phase of the W/O/W composite emulsion particles, thereby forming a microcapsule membrane of the hydrophilic film-forming substance that covers the W/O emulsion particles (corresponding to emulsion is encapsulated by a solid hydrophilic shell layer as recited in instant claim 1) ([0010]; Claim 1). Yasue specifies that the oil component used can be vegetable oils such as corn oil, soybean oil, peanut oil, cottonseed oil; animal oils such as beef tallow (a specific type of fat), lard (fat from pig), squid oil and whale oil; and synthetic oils such as medium-chain triglycerides. These can be used alone or in appropriate combination of two or more. (e.g., [0014]) (corresponding to second liquid species, e.g., vegetable oil, animal oil, fat in instant claim 1; and oil species in instant claims 4 and 9).
Yasue teaches Yasue teaches the microcapsule diameter is 50 to 3000 um for the emulsion, and the ratio of average particle diameter of the encapsulated emulsion to the microcapsule diameter would be greater than 0 and under 1/10 ([0010]; Claim 2) (corresponding to emulsion particle size inside the microcapsule as maximum as 300 um resulting from 1/10 * 3000 um, corresponding to second liquid comprising fat in a form of micro-particles in instant claim 4, and microparticles having size smaller than 1 mm in instant claim 68; corresponding to maximum volume for the microcapsule would be (3000 um)3 = 27 mm3 = 0.027 ml, which is less than 1 ml, corresponding to instant claim 26).
Yasue exemplifies the preparation of W/O emulsion in Example 2, wherein an oil phase (80.0% by weight of corn oil, 20.0% by weight of oleic acid monoglyceride corresponding to vegetable oil or fat) were mixed and stirred for 2 minutes at 35 C [0046] (corresponding to temperature in instant claims 5 and 69). Yasue exemplifies active compound ascorbic acid (vitamin C), dextranase (as protein), in Examples 1 and 4 respectively, is dissolved in purified water before being brought to oil phase for preparing the W/O/W microcapsule emulsion [0044; 0046] (corresponding to instant claims 10, 27-29, and 91).
Yasue specifies that hydrophilic film-forming material used is a water-soluble polymer compound that gels upon temperature changes from low to high or high to low temperatures, as film-forming substance to generate microcapsules for the composition can be one or more of gelatin, agar, carrageenan, gellan gum, polyvinyl alcohol, methylcellulose, etc. From the standpoint of the use and purpose of the microcapsules with the mentioned active ingredients or physiologically active substances as the core material, it is desirable that the material be edible, drinkable, or applied to the skin [0020] (corresponding to instant claims 12-13 and 78-79). MPEP 2112.01.II states "[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). Prior art teaches the same hydrophilic polymer network materials, e.g., gelatin, agar, carrageenan, gellan gum, cellulose, etc., the properties of these polymers in the shell layer comprising an interpenetrating network of two or more cross-linked polymers, or comprising one or more poly-electrolytes or polysaccharides, would necessarily present in prior art. A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-30, 68-85 and 88-94 are rejected under 35 U.S.C. 103 as being unpatentable over Yasue et al. (Lion Corp, JP H10174861, 06/30/1998, IDS of 02/03/2023, translation relied upon below, in record of 08/07/2025) as applied to claims instant claims 1-2, 4-5, 9-13, 26-29, 68-69, 77-79, and 91, in view of Postma et al (WO2018053356, 03/22/2018, in record of 08/07/2025).
As discussed above in detail and incorporated herein regarding instant claims 1-2, 4-5, 9-13, 21-23, 25-29, 68-69, 77-79, 91 and 94, in brief summary, Yasue teaches a method for preserving active ingredient, e.g., ascorbic acid, dextranase, to allow dissolve in a hydrophilic liquid such as water (as first liquid) and then bring it to an oil phase like vegetable oil or fat (as second liquid), to form an emulsion, while the hydrophilic polymer network in the aqueous phase forms a microcapsule shell around the emulsion, and thus stabilizes the active ingredient in the core.
Yasue further teaches when the microcapsules are prepared by dissolving the hydrophilic core substance in water to form an internal aqueous phase, other substances may be blended in normal amounts in addition to the above-mentioned hydrophilic core substance, so long as the objective of the present invention is not hindered, e.g., water-soluble polymers such as xanthan gum, gelatin, pectin, methylcellulose, etc. may be blended as stabilizers, either alone or in appropriate combinations of two or more kinds (e.g., [0012]). Yasue teaches that it is desirable that the material be edible, drinkable, or applied to the skin [0020]. Therefore, these stabilizers can be food grade biocompatible materials stabilizing emulsion interface, corresponding to instant claims 16, 21-24 and 94, although Yasue does not explicitly teach that these ingredients are solid particles.
Yasue also exemplifies 20% by weight of ascorbic acid is added into first liquid water with sorbitol and xanthan gum to form aqueous phase, mixed with oil phase to make into a W/O emulsion in Example 1 [0044]. As discussed above, Yasue teaches the microcapsule diameter is 50 to 3000 um for the emulsion, and the ratio of average particle diameter of the encapsulated emulsion to the microcapsule diameter would be greater than 0 and under 1/10 ([0010]; Claim 2), resulting all particles in the composition would be smaller than 300 um. It is anticipated that the ascorbic acid particle size would be microsized as being defined at maximum size at 300 um as the internal aqueous phase particles ([0010]; Claim 2) (corresponding to instant claims 25 and 90).
Yasue does not teach wax or fat in the second liquid is being added in the form of solid micro-particles and subjected to a heat treatment to at least partly melted as recited in instant claim 6; wax or fat melting point below 90 C as recited in instant claim 7; wax or fat species as recited in instant claim 8.
Yasue does not teach the polymer network comprises a cross-linked or inter-penetrating alginate network as recited in instant claim 14 or calcium cross-linked alginate network in instant claim 70. Yasue does not teach bivalent cations being added to first liquid as recited in instant claim 15, the bivalent cations are added to first liquid by means of an electrolyte supplying magnesium ions and/or calcium ions in claim 80, at least 0.001 M ionic concentration as recited in instant claim 81, between 0.1 M to 1.0 M as in claim 82, between 0.1 M and 0.5 M in instant claim 83.
Yasue does not teach the emulsion is stabilized by solid micro-particles and/or nano-particles in instant claim 16, being charged and an electrostatically charged agent with same polarity being added to first liquid as recited in instant claim 17, or being charged negatively as recited in instant claim 71, said electrostatically charged agent of claim 17 comprises a polyanionic polymer or a negatively charged glycosaminoglycan as in instant claim 72, or hyaluronic acid, carrageenan or acacia gum as recited in instant claim 73. Yasue does not teach Yasue does not teach solid particles in claim 16 solid particle species as recited in instant claim 18, solid particles being hydrophobized as recited in instant claim 19 comprising fumed silica nano-particles as recited in instant claim 20. Yasue does not teach claim 16 solid particles are biocompatible as recited in instant claim 21 comprising biodegradable compound or being hydrophobized by functionalizing or coating with a biodegradable compound in instant claim 22, or are food grade stabilizers in instant claim 23, or act as Pickering stabilizer as recited in instant claim 84, or are hydrophobized by functioning or coating with chlorosilane or silanol in instant claim 85. Yasue does not teach the solid particles in claim 21 are selected from group of ingredients as specified in instant claim 93, or solid particles of claim 22 contain alginate, starch, gelatin, fatty acids and/or derivatives thereof as recited in instant claim 94.
Yasue does not teach an acid, a base and/or a buffering agent being added to first liquid as recited in instant claim 24 comprising one or more of ascorbic acid, hyaluronic acid and a zwitterionic suffonic acid buffering agent as recited in instant claim 88, or HEPES, metaphosphoric acid, citric acid, perchloric acid, acetic acid or orthophosphoric acid as recited in instant claim 89.
Yasue does not teach the active compound of claim 28 comprises an anti-oxidant selected from group containing poly-phenols, thiol-based components, sulphite and derivatives thereof as recited in instant claim 92, active compound comprising at least one anti-oxidant as recited in instant claim 30, the first liquid of claim 2 comprises glycerine, glycerol or polyethylene glycol as recited in instant claim 74, the second liquid of claim 9 comprises sunflower oil as recited in instant claim 75, the active compound is in a supersaturated condition as recited in instant claim 76.
Postma directs to consumer products containing microcapsule compositions each comprising a microcapsule suspended in an aqueous phase and a viscosity control agent, wherein the viscosity control agent is an acrylate copolymer, a cationic acrylamide copolymer, or a polysaccharide (Abstract).
Postma teaches that the composition can be used to produce personal care products including cosmetic or pharmaceutical preparations, particularly preferred as O/W type or W/O/W emulsion (Pg. 55, top, g) section), with an example of wax-based deodorant containing paraffin wax (corresponding to instant claim 8), hydrocarbon wax, in addition to mineral oil (corresponding to second liquid in instant claim 1), and the formulation is prepared by mixing the wax-based ingredients, heating the resultant composition to 75 °C until melted (corresponding to instant claim 6), with stirring, adding 4% cryogenically ground polymer containing a fragrance while maintaining the temperature 75 °C (corresponding to melting point below 90 C in instant claim 7), and stirring the resulting mixture in order to ensure a uniform suspension while a composition of this invention is added to the formulation (Pg. 55, x. section).
Postma teaches that microcapsule in the composition is an core-shell microcapsule having a microcapsule wall and a microcapsule core encapsulated by the microcapsule wall; the microcapsule wall is formed of an encapsulating polymer selected from the group consisting of a polyacrylate, polyurea, polyurethane, polyacrylamide, polyester, polyether, polyamide, poly(acrylate-coacrylamide), starch, silica, gelatin and gum Arabic, alginate, chitosan, polylactide, poly(melamine-formaldehyde), poly(urea-formaldehyde), and combination thereof (Pg. 67, Claim 3). "Products 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, as indicated in MPEP 2112.01.II. When alginate polymer is used in microcapsule preparation, inter-penetrating network is inherent property of alginate as in instant claims 13-14. Postma also specifies that the encapsulating polymer can be a polyurea or polyurethane, while polyurethane can be generated using a cross-linking agent such as polyfunctional alcohol reacting with polyfunctional isocyanate (Pg. 67, Claim 4), corresponding to a cross-linked polymer network in instant claim 14.
Postma teaches that the said polymer or agent, e.g., alginate, can be the agent itself or its salt, precursor, hydrate, or solvate (e.g., Pg. 50, lines 30-31), a salt can be formed between a cation and a negatively charged group on the polymer or agent, including cations like magnesium ion, calcium ion, etc. (e.g., Pg. 51, lines 1-2) (corresponding to instant claim 70). Postma teaches that negatively charged clays, e.g., smectite clays Mg3(Si2O5)2(OH)2.nH2O (MW = 379.266 g/mol, anhydrous form), having magnesium ions can be used to balance overall charge (e.g., 9, lines 24-27) for viscosity control to desirable microcapsule stabilization for a prolonged period of time (e.g., Pg. 6, lines 16-19), with the clay amount present from 0.01 to 10 wt% (approx. 0.1 to 100 g/L, taking water density as 1 g/ml, resulting in approx. 0.00026 to 0.26 M) of ionic magnesium concentration in the total composition (e.g., Pg. 11, lines 10-11) (overlapping with at least 0.001 M, between 0.1 M and 1.0 M, between 0.1 M and 0.5 M in instant claims 81, 82, and 83 respectively).
Postma indicates that viscosity control agent is added to stabilize the microcapsule composition (Pg. 5, 10-14), and the viscosity control agent is not part of the microcapsule wall, it is dispersed homogenously in the aqueous (corresponding to first liquid in instant claims) phase and stays outside the microcapsule wall (Pg. 6, Lines 1-2). Postma teaches that suitable viscosity control agents include acrylate copolymer, cationic acrylamide copolymer, polysaccharide (Pg. 6, Lines 21-22), fine clay particles having net negative electrostatic charge and being balanced by presence of charge balancing ions, such as calcium or magnesium (bivalent cations)(Pg. 9, Lines 16-21)(corresponding to instant claims 15 and 80).
Postma teaches that nanoscale solid particulate materials including metal or metallic particles, metal alloys, polymer particles, wax particles, inorganic particulates, minerals and clay particles, can be incorporated into the core as adjunct materials (Pg. 36, Lines 1-3). Postma teaches that adjunct materials can be incorporated into the microcapsule composition including emollients, and core modifier materials in the core encapsulated by the capsule wall (e.g., Pg. 35, lines 11-12), and other adjunct materials can be solubility modifiers, density modifiers, stabilizers, viscosity modifiers, pH modifiers, or any combination thereof; and these modifiers can be present in the wall or core of the capsules, or outside the capsules in the microcapsule compositions (Pg. 35, Lines 10-14), suggesting that these materials can be adsorb onto interface between oil and water phases, known as Pickering stabilizers, corresponding to instant claims 16 and 84.
Postma teaches that preferred negatively charged clays are 2:1 phyllosilicates, e.g., smectite clays having general formula of Al2(Si2O5)2(OH)2.nH2O or Mg3(Si2O5)2(OH)2.nH2O (Pg. 9, Lines 22-25). Postma indicates gum Arabic, xanthan, agar, alginate salts, cellulose derivatives such as carboxymethyl cellulose, carrageenan, polyacrylic and methacrylic acid are suitable non-protein polymers that can be negatively charged (Pg. 25, Lines 26-29), and Postma teaches that the capsule and the polymer need to be compatible with the chemistry, e.g., same polarity of the desired interface (Pg. 40, Lines 15-16). Postma exemplifies anionic acrylate copolymer such as ACULYNTM 33 used as viscosity control agent together with anionic surfactant Morwet D-425 (sodium salt, a solid particle) as microcapsule formation aid (Pg. 26, Lines 14-19) in aqueous phase in Example 1 (Pg. 61, Lines 1-24) (corresponding to instant claims 17 and 71-73).
Postma indicates metal particles can be selected from a non-limiting list of main group elements, transition metal and post-transition metal elements including aluminum (Al), silica (Si), Titanium (Ti), chromium (Cr), manganese (Mn), iron (Fe), nickel (Ni), cobalt (Co), copper (Cu), gold (Au), silver (Ag), platinum (Pt) and palladium (Pd) (Pg. 36, Lines 5-9) (corresponding to instant claim 18). Postma points out that a free flow agent (anticaking agent) of silicas which can be hydrophobic (i.e. silanol surface treated with halogen silanes, alkoxysilanes, silasanes, siloxanes, etc.) such as Sipernat D17, Aerosil R972 (known as hydrophobic fumed silica) and R974 and others (Pg. 46, Lines 32-35) (Corresponding to instant claims 19-20 and 85).
Postma also teaches that microcapsule formation aids are used as dispersants (namely emulsifiers or surfactants) to facilitate the formation of stable emulsions containing nano- and micro-sized oil drops to be encapsulated (Pg. 26, Lines 1-3). Preferred microcapsule formation aids include alginate, hyaluronic acid, sodium salt of naphthalene sulfonate condensate (same as Morwet D425, Pg. 28, Lines9-10), and many others (Pg. 26, Lines 14-19), and natural dispersants include gelatin of fish, carrageenan, chitosan, starch, fatty acids, cellulose gum, gum Arabic, silk protein, and many others (Pg. 28, Lines 18-20), which are biodegradable (corresponding to instant claims 21-22 and 94). Postma teaches that food-grade dispersants, natural or non-natural products, can be used for the formulation (Pg. 28, Lines 11-14) (corresponding to instant claim 23), and natural dispersants include lecithin, gum Arabic, pectin, carrageenan, chitosan, cellulose gum, modified starch, whey protein, pea protein, egg white protein, silk protein, gelatin of fish, fatty acids and others (Pg. 28, Lines 18-21) (corresponding to instant claim 93).
Postma specifies that pH modifiers including carboxylic acids, amino acids, metal carbonates and bicarbonates and others can be added to the capsule composition (Pg. 39, Lines 25-32) (corresponding to instant claim 24). Preferred microcapsule formation aids can include hyaluronic acid (e.g., Pg. 26, line 16), zwitterionic or nonionic water soluble polymers (e.g., Pg. 27, Line 15), corresponding to instant claim 88. Postma also lists solubility modifiers including surfactants, acidic compounds (e.g., mineral acids such as sulfuric acid, hydrochloric acid, nitric acid, and phosphoric acid, and carboxylic acids such as acetic acid, citric acid, gluconic acid, and lactic acid), basic compounds (e.g., ammonia, alkali metal and alkaline earth metal hydroxides, primary, secondary, or tertiary amines, and primary, secondary, or tertiary alkanolamines), ethyl alcohol, glycerol, glucose, galactose, inositol, mannitol, adonitol, and amino acids, etc. (Pg. 37 bottom- Pg. 38 top) (corresponding to instant claim 89). Postma indicates many types of active agents can be encapsulated including vitamins, e.g., vitamin C (ascorbic acid) (Pg. 32, (iv) section, Lines 15-20) and antioxidants such as diphenyl compounds, phenolic compounds and others (Pg. 32, (vii) section, Lines 27-30) (corresponding to instant claim 30). Postma indicates that the amount of active material in the microcapsule composition is from 0.1 to 95% (e.g., 1 to 90%, 2% to 80%, 4 to 70%, and 5 to 50%) by weight of the composition (e.g., Pg. 34, Lines 4-5) (overlapping with more than 25 wt% in instant claim 90).
Postma specifies that humectants are included to hold water (which corresponding to first liquid) in the capsule composition for a long period of time including glycerin, propylene glycol, polyethylene glycols, and others (e.g., Pg. 39, Lines 16-19), corresponding to instant claim 74. Postma indicates that emollients including vegetable oils (corresponding to second liquid) such as sunflower, jojoba, soybean, canola, olive, and many others (e.g., Pg. 35, Lines 21-24), corresponding to instant claim 75. Postma points out solvents suitable and highly advantageous for facilitating dissolve active ingredients at high concentration for high loading in the final capsules (e.g., Pg. 23, Lines 23-24), suggesting that high loading of active ingredients is preferred and favorable. Postma exemplifies a tooth paste formulation with abrasive agent calcium phosphate at 40-55%, and surface active substance sodium lauryl sulfate 1.5-2.5%, combined with glycerol, carboxymethyl cellulose, saccharin, flavor oil, and water q.s. to 100% (Pg. 53, bottom – Pg. 54 top i.), showing supersaturated active compounds (corresponding to instant claim 76).
Postma teaches that active ingredients can include antioxidants such as beta-carotene, vitamin C (Ascorbic Acid) or an ester thereof, vitamin A or an ester thereof, vitamin E or an ester thereof, lutein or an ester thereof, lignan, lycopene, selenium, flavonoids, vitamin-like antioxidants such as coenzyme Ql0 (CoQl0) and glutathione, and antioxidant enzymes such as superoxide dismutase, catalase, and glutathione peroxidase (corresponding to thiol-based derivatives in instant claim 92)(e.g., Pg. 32, vii, lines 27-30).
It would have been prima facie obvious for one with ordinary skills in the art prior to filing date to incorporate Postma’s teaching of the disclosed stabilizing components into the method taught by Yasue to arrive at current invention to preserve active compound in microcapsulated emulsion. Because Yasue specifically teaches that the microcapsulated emulsion method allows unstable compounds to dissolve in water phase and then be emulsified with oil phase and encapsulated in hydrophilic shell, and therefore stably and efficiently encapsulating the hydrophilic active material in the core, while Postma teaches stabilizing agents for microcapsule compositions comprising hydrophilic core, it follows the logic flow for an artisan in the field to take opportunities to elect the stabilizing agents taught by Postma and incorporate into Yasue’s method for reasonable expectation of success. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, it is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, ion concentrations and temperatures overlap with the ranges taught in prior art. Even though ascorbic acid powder size and concentration do not overlap with prior art, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 1-2, 4-30, and 68-94 are rejected under 35 U.S.C. 103 as being unpatentable over Yasue et al. (Lion Corp, JP H10174861, 06/30/1998, IDS of 02/03/2023, translation relied upon below, in record of 08/07/2025) in view of Postma et al (WO2018053356, 03/22/2018, in record of 08/07/2025) as applied to Claims 1-2, 4-30, 68-85 and 88-94 above, and further in view of Richard et al. (CN1964690, 05/16/2007, translation replied upon below; attached, PTO-892).
Yasue and Postma combined teaching teaches a method of preservation and stabilization of reactive active compound in encapsulated emulsion, to dissolve active compound in a hydrophilic liquid such as water (as first liquid) and then bring it to an oil phase like vegetable oil or fat (as second liquid), to form an emulsion with additional solid particles, e.g., silanol surface treated with halogen silanes, alkoxysilanes, silasanes, siloxanes, Sipernat D17, Aerosil R972 (hydrophobic fumed silica), stabilizing the emulsion interface, while a hydrophilic polymer network forms a microcapsule shell around the emulsion, and thus stabilizes the active ingredient in the core, as discussed above in detail and incorporated herein.
Yasue and Postma combined does not teach solid particles of claim 16 are hydrophobized by functionalizing or coating with (alkyl)chlorosilane, trimethylsilanol, dimethydichlorosilane or (poly)dimethylsiloxane as recited in instant claim 86, fumed silica of claim 20 are post-treated with dimethyldichlorosilane as recited in instant claim 87.
Richard throughout the reference teaches surface treated nanoparticles with a siloxane star-graft copolymer coating on a particle surface to control the interfacial surface interactions between the particle and the oil phase of the cosmetic skin formulation (e.g., Abstract).
Richard teaches surface-treat particles using trifunctional and bifunctional monomers including hexyltrimethoxylsilane, dimethyldichlorosilane (corresponding to instant claims 86-87), dimethyl-diethoxysilane, and many others (e.g., [0020], [0024-0025]), suitable for formulations such as O/W and W/O emulsions (e.g., [0083]), which may contain active ingredients, auxiliaries and/or additives, such as auxiliary emulsifiers, lipids and waxes, stabilizers, thickeners, bioactive ingredients, film-forming agents, fragrances, dyes, pearlescent agents, preservatives, pigments, electrolytes (such as magnesium sulfate) and pH adjusters (e.g., [0060]), and beneficial antioxidants including vitamin C and its derivatives preferably 0.001-30% by weight of the formulation(e.g., [0063-0064]).
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate teaching from Richard to choose the specific coating material into treating solid particles in the composition taught by Yasue and Postma to arrive at current invention. Because all references aim for stabilizing emulsion formulations using stabilizers, especially Postma teaches that free flow agent (anticaking agent) of silicas and fumed silica can be hydrophobized and surface treated, while Richard teaches surface treatment methods using dimethyldichlorosilane, it would have motivated artisans in the field to select such component for reasonable expectation of success. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Response to Arguments
Applicant’s remarks/arguments filed on 01/07/2026 and 04/06/2026 have been fully considered. Examiner notes that arguments only presented in the document filed on 01/07/2026, accordingly, the response below is corresponding to the arguments filed on 01/07/2026.
35 U.S.C. 112 (b) Rejections
Applicant requests to withdraw the rejections because claims are amended.
Amendments have overcome some of the rejections, however, there are remaining and new 35 U.S.C. 112 rejections for the amended claims. Please find details in the office action presented above.
35 U.S.C. 102 and 103 Rejections
Applicant asserts that Yasue has no disclosure, nor any suggestion, of using both an oil and a solid fat or wax as the oily phase of the emulsion, particularly solid wax or fat being suspended in oil in the form of micro-particles as specified in present claim 4; Postma provides no disclosure of microcapsules containing the emulsion of present claim 1 containing the active compound, like a fragrance or other active material, in its hydrophilic phase, being emulsified with an oily phase containing both an oil and a fat or wax, particularly as micro-particles suspended in said oil; One of ordinary skill in the art would not be prompted by any of Yasue and Postma to include microparticles of a solid wax or fat in the oily phase of an emulsion.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., both an oil and a solid fat or wax as the oily phase of the emulsion; active compound like a fragrance or other active material in claim 1) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The oily phase containing both an oil and a fat or wax is not clearly defined in amended claim 1 scope. However, even if both fat and oil are required for the emulsion, Yasue teaches such preparation. The most relevant parts from office action is copied below for reference:
Yasue specifies that the oil component used can be vegetable oils such as corn oil, soybean oil, peanut oil, cottonseed oil; animal oils such as beef tallow (a specific type of fat), lard (fat from pig), squid oil and whale oil; and synthetic oils such as medium-chain triglycerides. These can be used alone or in appropriate combination of two or more (e.g., [0014]) (corresponding to second liquid species, e.g., vegetable oil, animal oil, fat in instant claim 1; and oil species in instant claims 4 and 9).
Yasue teaches Yasue teaches the microcapsule diameter is 50 to 3000 um for the emulsion, and the ratio of average particle diameter of the encapsulated emulsion to the microcapsule diameter would be greater than 0 and under 1/10 ([0010]; Claim 2) (corresponding to emulsion particle size inside the microcapsule as maximum as 300 um resulting from 1/10 * 3000 um, corresponding to second liquid comprising fat in a form of micro-particles in instant claim 4).
Please refer to the entire office action as a complete response to the remarks/arguments.
Conclusion
No claim is allowed.
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.
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/DX.Z./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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