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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a 371 of PCT/IB2021/060653 filed on 11/17/2021.
This application also claims foreign priority to FRANCE FR2011795 filed on 11/17/2020 and FRANCE FR2011888 filed on 11/19/2020.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Accordingly, claims 1-18 of this instant application are afforded the effective filing date of 11/17/2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/17/2023 (4) have been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Election/Restrictions
Applicant’s election of Group I, claims 1-14 and 17-18, in the reply filed on 12/31/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
Status of the Claims
Claims 1-18 are pending in this instant application, of which claim 15 and 16 are withdrawn at this time being drawn to a nonelected group/invention.
Claims 1-14 and 17-18 are examined herein on the merits for patentability.
Drawings
The drawings are objected to because: the Figures in the Drawings filed on 05/16/2023, are not in chronological order. See pages 7-10 of the Drawings. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Fig(s) 18-23 are missing in the Drawings. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities:
please amend “abbreviated as PBAE” in line 3 of the claim to “(PBAE)”
the recitation of “formulated as a product selected from the group consisting of:” followed by many “and” and “and/or,” is an improper Markush language. See line 5 of claim 1, as well as, throughout claim 1 with respect to the Markush grouping of products. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate corrections are required.
“said at least one microencapsulated active substance being preferably selected from the group formed by thermochromic substances and agents for temperature” in 4th paragraph of the claim is an improper Markush language.
“said at least one active substance being preferably selected from the group formed by antiperspirants, perfumes, essential oils, fragrance, oils” is an improper Markush language
“said at least one active substance preferably being selected from the group formed by antioxidant products, anti- cellulite products, products capable of stimulating blood circulation, anti-mold products, antimicrobial products, bactericidal products, virucidal products, oils” in 5th paragraph of the claim is an improper Markush language
“said at least one active substance being preferably selected from bactericidal products, enzymes, flavorings, essential oils, sweeteners” in 7th paragraph of the claim is an improper Markush language
“said at least one active substance being preferably selected from flavorings, flavor enhancers, vitamins and vitamin preparations, preservatives, nutritional additives, oils” in 8th paragraph of the claim is an improper Markush language
“said at least one active substance being preferably selected from additives for the cultivation of plants and fertilizers” in 10th paragraph of the claim is an improper Markush language
“said at least one active substance being preferably selected from pharmaceutical active ingredients and in particular dewormers and antiparasitics, food additives, perfumes, fragrances” in 11th paragraph of the claim is an improper Markush language
“said at least one active substance preferably being selected from biocidal products, repellents, moth repellents, deodorizing products, self- cleaning products, stain-resistant products, antistatic products, self-healing products, self-repairing products, perfumes, fragrances, detergents, softeners” in 12th paragraph of the claim is an improper Markush language
“said at least one active substance being preference selected from among biocidal products, repellents, moth repellents, anti-mite products, anti-lice products, anti-mosquito products, deodorant products, self-cleaning products, antistatic products, self- healing products, self-repairing products, perfumes, fragrances, detergents, softeners” in 13th paragraph of the claim is an improper Markush language
“said at least one active substance preferably being selected from hydrophobic compounds, in particular fatty compounds or fluorinated compounds” in 14th paragraph of the claim is an improper Markush language
“said at least one active substance preferably being selected from oily, natural or synthetic products” in 15th paragraph of the claim is an improper Markush language
“said at least one active substance preferably being selected from phase, paints and varnishes, thermal insulation materials, sealing agents, expansion agents” in 18th paragraph of the claim is an improper Markush language
“said at least one active substance being preferably selected from the group formed by lubricant products, anti-friction products, anti- slip products, detergents, essential oils, fragrances, perfumes, aromas” in 19th paragraph of the claim is an improper Markush language
“said at least one active substance preferably being selected from the group formed by dyes, pigments, thermochromic products, photochromic products, perfumes, flavorings, fragrances” in the 20th paragraph of the claim is an improper Markush language
When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate corrections are required.
Claims 1, 7-8, and 10 are objected to because of the following informalities: it is suggested that all the dashes (-) be removed from claims 1, 7-8, and 10. It is noted that [w]here a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). See MPEP §608.01(m). Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “selected from the group formed by: diacrylates; triacrylates, in particular trimethylolpropane triacrylate, tetraacrylates, pentaacrylates, hexaacrylates, mixtures of these different acrylates of the O[CH2C(CH2OR)3]2 type where R is H or COCH=CH2” as recited under “(c)” of claim 2 is an improper Markush language. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “preferably selected from the group formed by: primary amines R-NH2; primary diamines of the NH2(CH2)nNH2 type, where n is an integer which can typically be between 1 and 20, and which is preferably 2 or 6; primary diamines having an aromatic core, and preferably meta-xylylene diamine; (multi)primary amines, and preferably tris(2- aminoethyl)amine; (multi)amines containing primary and secondary amine functions, and preferably tetraethylene pentamine; secondary diamines and preferably piperazine; polymers containing primary and or secondary amine functions, and preferably polyethylene imine” as recited in claim 3 is an improper Markush language. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “the” followed by “said” in “the said second monomer” in claim 3 (see top of page 7 of the claim set) is redundant recitation. Please remove either “the” or “said”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: “the” followed by “said” in “the said second monomers” in claim 4 is a redundant recitation. Please remove either “the” or “said”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “the” followed by “said” in “the said polymerization” and “the said second monomers” of claim 5 is redundant recitation. Please remove either “the” or “said”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: “said water-soluble monofunctional acrylates being preferably selected from the group formed by 2- carboxyethyl acrylate, 2-(dimethylamino)ethyl acrylate, 2- hydroxyethyl acrylate, poly(ethylene glycol) acrylates, the potassium salt of 3-sulfopropyl acrylate” at the bottom of claim 6 is an improper Markush language. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: “the” followed by “said” in “the said microcapsules” in line 3 of claim 7 is a redundant recitation. Please remove either “the” or “said”. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: claim 8 recites improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate corrections are required.
Claim 9 is objected to because of the following informalities: claim 9 recites improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate corrections are required.
Claim 10 is objected to because of the following informalities: throughout claim 10 there are many recitations of improper Markush languages. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate corrections are required.
Claim 14 is objected to because of the following informalities: claim 14 recites improper Markush language. Appropriate correction is required.
Claims 1-14 and 17-18 are objected to because of the following informalities: please fix any and all grammatical errors throughout claims 1-14 and 17-18. Appropriate corrections are 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 1-14 and 17-18 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.
Regarding claims 1-10: 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). In the present instance:
claim 1 recites the broad recitation “cosmetic products and care products,” and the claim also recites “in particular creams and lotions for the body, creams and lotions for the face, shower gels, bath gels, products with UV filters, self-adaptive make-up products correcting their shade by function of solar or electric ambient lighting,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “said at least one microencapsulated active ingredient,”, and the claim also recites “being in particular intended to be released in a controlled and targeted manner” and “in particular for vectorization in the skin, for stabilization of pigments and/or dyes, for covering of wrinkles,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “hair and scalp products,” and the claim also recites “shampoos, conditioners, hair dyes,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “microencapsulated active substance, and the claim also recites “preferably selected from the group formed by thermochromic substances and agents for temperature control,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably selected from the group formed by antiperspirants, perfumes, essential oils, fragrances, oils,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from the group formed by antioxidant products, anti- cellulite products, products capable of stimulating blood circulation, anti-mold products, antimicrobial products, bactericidal products, virucidal products, oils,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “pharmaceutical preparations,” and the claim also recites “in particular intended for use orally, nasally, intravenously, rectally or by topical application” and “for example cutaneous or ocular,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from the pharmaceutical active ingredients,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably selected from bactericidal products, enzymes, flavorings, essential oils, sweeteners,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably selected from flavorings, flavor enhancers, vitamins and vitamin preparations, preservatives, nutritional additives, oils,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “products,” and the claim also recites “such as phytosanitary products, paints, coatings, textiles, detergents, plastics,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably selected from additives for the cultivation of plants and fertilizers,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “Preparations intended for veterinary, intracorporeal or extracorporeal use,” and the claim also recites “in particular pharmaceutical preparations, dermatological preparations and coat care preparations,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably selected from pharmaceutical active ingredients and in particular dewormers and antiparasitics, food additives, perfumes, fragrances,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from biocidal products, repellents, moth repellents, deodorizing products, self- cleaning products, stain-resistant products, antistatic products, self-healing products, self-repairing products, perfumes, fragrances, detergents, softeners,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “Preparations for the treatment of bedding,” and the claim also recites “in particular mattresses, pillows, sheets, draw sheets, luggage, fabrics and household equipment such as curtains, cushions, furniture, leather objects,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “household equipment,” and the claim also recites “such as curtains, cushions, furniture, leather objects,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preference selected from among biocidal products, repellents, moth repellents, anti-mite products, anti-lice products, anti-mosquito products, deodorant products, self-cleaning products, antistatic products, self- healing products, self-repairing products, perfumes, fragrances, detergents, softeners, which are the narrower statements of the limitation.
claim 1 recites the broad recitation “Preparations for waterproof or water-repellent coatings,” and the claim also recites “intended to be applied in particular to textile surfaces or leather surfaces,” which is the narrower statement of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from hydrophobic compounds, in particular fatty compounds or fluorinated compounds,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “hydrophobic compounds,” and the claim also recites “in particular fatty compounds or fluorinated compounds,” which is the narrower statement of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from oily, natural or synthetic products,” which is the narrower statement of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from phase, paints and varnishes, thermal insulation materials, sealing agents, expansion agents,” which are the narrower statement of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably selected from the group formed by lubricant products, anti-friction products, anti- slip products, detergents, essential oils, fragrances, perfumes, aromas,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “Paints, varnishes, dyes and inks,” and the claim also recites “in particular inks for transfer printing, screen printing, ink jet printing or electrostatic printing, and preparations for coating or making paper,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “preferably being selected from the group formed by dyes, pigments, thermochromic products, photochromic products, perfumes, flavorings, fragrances,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “Self-repairing compositions,” and the claim also recites “in particular for use in surface coatings used in paint, varnish, inks, on cement, concrete, wood, and in compositions of polymer materials and composites,” which are the narrower statements of the limitation.
claim 1 recites the broad recitation “active substance,” and the claim also recites “in particular to be chosen from brominated alkanes of general formula CnH2n+2-xBrx,” which is the narrower statement of the limitation.
claim 2 recites the broad recitation ‘first monomer X,” and the claim also recites “preferably selected from (multi)acrylates” and “preferably (multi)acrylates of formula X'-(-O(C=O)-CH=CH2)n with n > 4 and where X' represents a molecule on which n acrylate units are grafted,” which are the narrower statements of the limitation.
Claim 2 recites the broad recitation “triacrylates,” and the claim also recites “in particular trimethylolpropane triacrylate, tetraacrylates, pentaacrylates, hexaacrylates, mixtures of these different acrylates of the O[CH2C(CH2OR)3]2 type where R is H or COCH=CH2,” which are the narrower statements of the limitation.
claim 2 recites the broad recitation “functional oligo PBAEs, and the claim also recites “prepare for example by reacting diacrylate compounds with a functional primary amine and/or a functional secondary diamine,” which is the narrower statement of the limitation.
claim 3 recites the broad recitation “amines,” and the claim also recites “preferably selected from the group formed by: primary amines R-NH2; primary diamines of the NH2(CH2)nNH2 type, where n is an integer which can typically be between 1 and 20, and which is preferably 2 or 6; primary diamines having an aromatic core, and preferably meta-xylylene diamine; (multi)primary amines, and preferably tris(2- aminoethyl)amine; (multi)amines containing primary and secondary amine functions, and preferably tetraethylene pentamine; secondary diamines and preferably piperazine; polymers containing primary and or secondary amine functions, and preferably polyethylene imine,” which are the narrower statements of the limitation.
claim 3 recites the broad recitation “n is a n integer which can typically be between 1 and 20, and the claim also recites “preferably 2 or 6,” which is the narrower statement of the range.
claim 3 recites the broad recitation “primary diamines having an aromatic core,” and the claim also recites “preferably meta-xylylene diamine,” which is the narrower statement of the limitation.
claim 3 recites the broad recitation “(multi)primary amines,” and the claim also recites “preferably tris(2- aminoethyl)amine,” which is the narrower statement of the limitation.
claim 3 recites the broad recitation “(multi)amines containing primary and secondary amine functions,” and the claim also recites “preferably tetraethylene pentamine,” which is the narrower statement of the limitation.
claim 3 recites the broad recitation “secondary diamines,” and the claim also recites “preferably piperazine; polymers containing primary and or secondary amine functions” and “preferably polyethylene imine,” which are the narrower statements of the limitation.
claim 4 recites the broad recitation “greater than 1,” and the claim also recites “preferably between 1 and 5” and “even more preferably between 1.2 and 3.8,” which are the narrower statements of the range.
claim 5 recites the broad recitation “temperature of between 20°C and 100°C,” and the claim also recites “preferably between 30°C and 90°C,” which is the narrower statement of the range.
claim 6 recites the broad recitation “Deposition of a coating on the surface of the microcapsule,” and the claim also recites “preferably from a polymer dispersed in an aqueous phase,” which is the narrower statement of the limitation.
claim 6 recites the broad recitation “polymer,” and the claim also recites “preferably being selected from polysaccharides, such as cellulose, starch, alginates, chitosan, and their derivatives,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “polysaccharides,” and the claim also recites “such as cellulose, starch, alginates, chitosan, and their derivatives,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “radical initiator,” and the claim also recites “preferably being selected: If added in the aqueous phase: from the group formed by water-soluble azo compounds, such as 2,2'-Azobis(2- methylpropionamidine) dihydrochloride, and red-ox systems, such as ammonium persulphate or potassium persulphate in combination with potassium metabisulphite; If added in the oily phase: from the group formed by azo compounds, such as azobis-isobutyronitrile and its derivatives, and peroxidic compounds, such as lauroyl peroxide,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “water-soluble azo compounds,” and the claim also recites “such as 2,2'-Azobis(2- methylpropionamidine) dihydrochloride, and red-ox systems,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “red-ox systems,” and the claim also recites “such as ammonium persulphate or potassium persulphate in combination with potassium metabisulphite,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “azo compounds,” and the claim also recites “such as azobis-isobutyronitrile and its derivatives,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “peroxidic compounds,” and the claim also recites “such as lauroyl peroxide,” which is the narrower statement of the limitation.
claim 6 recites the broad recitation “acrylate,” and the claim also recites “preferably being a water-soluble monofunctional acrylate capable of reacting with the residual amine functions at the surface of the shell of the microcapsules, said water-soluble monofunctional acrylates being preferably selected from the group formed by 2- carboxyethyl acrylate, 2-(dimethylamino)ethyl acrylate, 2- hydroxyethyl acrylate, poly(ethylene glycol) acrylates, the potassium salt of 3-sulfopropyl acrylate,” which are the narrower statements of the limitation.
claim 6 recites the broad recitation “water-soluble monofunctional acrylates,” and the claim also recites “preferably selected from the group formed by 2- carboxyethyl acrylate, 2-(dimethylamino)ethyl acrylate, 2- hydroxyethyl acrylate, poly(ethylene glycol) acrylates, the potassium salt of 3-sulfopropyl acrylate,” which are the narrower statements of the limitation.
claim 7 recites the broad recitation “greater than 5,000 µN,” and the claim also recites “preferably greater than 6,000 µN,” and “even more preferably greater than 7,000 µN,” which are the narrower statements of the range.
claim 7 recites the broad recitation “an indentation force at break of less than 300 µN” (at any Tg Value), and the claim also recites “preferably a Tg value of less than 33° C., and in this case preferably less than 32° C. and even more preferably less than 31° C.; preferably by an indentation force at break of less than 250 μN and preferably by a Tg value of less than 32° C., and in this case preferably less than 31° C. and even more preferably less than 30° C.; and even more preferably by an indentation force at break of less than 200 μN and preferably by a Tg value of less than 32° C., and in this case preferably less than 31° C. and even more preferably less than 30° C,” which are the narrower statements of the ranges/limitations.
claim 7 recites the broad recitation “an indentation force at break between 200 μN and 5,000 μN,” and the claim also recites “preferably between 300 μN and 5,000 μN, but with a breaking force between 200 μN and 300 μN their Tg value is preferably at least 33° C., and for the microcapsules with a breaking force greater than 300 μN it is preferable that their Tg value be between 30° C., preferably between 33° C., and 80° C,” which are the narrower statements of the ranges/limitations.
claim 8 recites the broad recitation “preparations for thermal insulation or for absorption and restitution of thermal energy,” and the claim also recites “preferably such preparations comprising microcapsules containing phase change materials,” which is the narrower statement of the limitation.
claim 8 is recites the broad recitation “preparations comprising microcapsules containing a thermochromic or photochromic substance,” (intended to be used in any products) and the claim also recites “intended in particular to be used in depilatory waxes, packaging of food products to be heated, labels for refrigerated products making it possible to indicate a possible break in the cold chain, coatings allowing the indication of excessive stress or impacts following an accident, wear or misuse” and “in particular on plastic or composite parts, on mountaineering ropes, technical fabrics or protective helmets,” which are the narrower statements of the limitation.
claim 9 recites the broad recitation “cosmetic preparations and care products,” and the claim also recites “preferably such preparations comprising microcapsules containing pigments or dyes,” which is the narrower statement of the limitation.
claim 9 recites the broad recitation “food preparations,” and the claim also recites “preferably such preparations comprising microcapsules containing active food products, such as flavorings, flavor enhancers, vitamins, nutritional additives, preservatives,” which are the narrower statements of the limitation.
claim 9 recites the broad recitation “active food products,” and the claim also recites “such as flavorings, flavor enhancers, vitamins, nutritional additives, preservatives,” which are the narrower statements of the limitation.
claim 9 recites the broad recitation “phytosanitary products, paints, coatings, textile products, detergents, plastic materials, products for the surface treatment of wood,” and the claim also recites “preferably such products comprising microcapsules containing insecticides, repellents, fungicides, anti-moss products, termite treatment products,” which is the narrower statement of the limitation.
claim 9 recites the broad recitation “preparations for agriculture,” and the claim also recites “preferably such preparations comprising microcapsules containing additives for the cultivation of plants, and/or fertilizers,” which is the narrower statement of the limitation.
claim 9 recites the broad recitation “pharmaceutical, food or care preparations intended for use in the veterinary field,” and the claim also recites “preferably such preparations comprising microcapsules containing pharmaceutical or dermatological active ingredients or active ingredients for the care of the coat, such as vermifuges, anti-parasites or agents for controlling or limiting odors,” which is the narrower statement of the limitation.
claim 9 recites the broad recitation “pharmaceutical or dermatological active ingredients or active ingredients for the care of the coat,” and the claim also recites “such as vermifuges, anti-parasites or agents for controlling or limiting odors,” which is the narrower statement of the limitation.
claim 9 recites the broad recitation “compositions for waterproof or water-repellent coatings,” and the claim also recites “in particular intended to be applied to textile surfaces or leather surfaces” and “preferably such preparations comprising microcapsules containing hydrophobic compounds, in particular fatty compounds or fluorinated compounds,” which are the narrower statements of the limitation.
claim 9 recites the broad recitation “hydrophobic compounds,” and the claim also recites “in particular fatty compounds or fluorinated compounds,” which is the narrower statement of the limitation.
claim 10 recites the broad recitation “cosmetic and/or dermatological preparations, care products,” and the claim also recites “in particular shower and bath gel products, deodorants and products for odor control” and “preferably such preparations comprising microcapsules containing dermatological or cosmetic active ingredients,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations for coating cosmetic textiles,” and the claim also recites “preferably such preparations comprising microcapsules containing antioxidant products, anti-cellulite products, products capable of stimulating blood circulation, as well as anti-mould, anti-microbial, bactericidal and virucidal products,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations for treating or coating textile products or textile fibers,” and the claim also recites “in particular technical products and fibers” and “preferably such preparations comprising microcapsules containing detergents, softeners, biocides, antistatic products, anti-stain products,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations for coating, treatment or maintenance of floors,” and the claim also recites “preferably such preparations comprising microcapsules containing lubricants and/or anti-friction products, or anti-slip products, or containing essential oils, fragrances, perfumes, and/or flavorings,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations having a fire retardant and extinguisher function,” and the claim also recites “preferably such preparations comprising microcapsules containing brominated alkanes of general formula CnH2n+2−xBrx;” which is the narrower statement of the limitation.
claim 10 recites the broad recitation “preparations for self-repair,” and the claim also recites “in particular for self-repair following an impact” and “preferably such preparations comprising microcapsules containing self-repair products,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations for coating paper or for incorporation into a preparation for making paper,” and the claim also recites “in particular scented inks of the scratch & sniff or rub & sniff type” and “preferably such preparations comprising microcapsules containing perfumes, aromas, fragrances, thermochromic substances or adhesives,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations intended for use in the veterinary field for care products, pharmaceutical compositions and food products,” and the claim also recites “preferably such preparations comprising microcapsules containing products selected from the group formed by vermifuges, anti-parasites, agents for controlling or limiting odors, pharmaceutically active substances, essential oils, fragrances, perfumes, and/or flavorings,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “preparations intended for the field of agriculture,” and the claim also recites “preferably such preparations comprising microcapsules containing additives for the cultivation of plants and/or fertilizers,” which is the narrower statement of the limitation.
claim 10 recites the broad recitation “preparations for the treatment of bedding, luggage, fabrics and household equipment,” and the claim also recites “in particular curtains, furniture with fabrics, furniture and other leather objects, cushions” and “preferably such preparations comprising microcapsules containing biocidal products and/or repellent products, and in particular anti-mite products, anti-lice products, anti-moth products, anti-mosquito products, and/or anti-stain products, perfumes, essential oils, fragrances and/or flavorings,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “biocidal products and/or repellent products,” and the claim also recites “in particular anti-mite products, anti-lice products, anti-moth products, anti-mosquito products, and/or anti-stain products, perfumes, essential oils, fragrances and/or flavorings,” which is the narrower statement of the limitation.
claim 10 recites the broad recitation “preparations ensuring watertightness,” and the claim also recites “to be applied to solid materials, for example in the building sector, or flexible” and “preferably such preparations comprising microcapsules containing sealing agents and/or expansion agents,” which are the narrower statements of the limitation.
claim 10 recites the broad recitation “solid materials” and the claim also recites “for example in the building sector, or flexible,” which is the narrower statement of the limitation.
The claim(s) 1-10 are 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.
Regarding claims 1, 2 and 10, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 1, 6 and 9, the phrase "such as" 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 1, the recitation of “formulated as a product selected from the group consisting of …” renders the claim indefinite because the metes and bounds are not clear as to what is formulated as a product, is it to the composition, the microcapsules, or the active substance?
Regarding claim 1, the recitation of “their shade” renders the claim indefinite because the metes and bounds of “their shade” is unclear. It is unclear what “their shade” is this recitation referencing to.
Regarding claim 1, the multiple recitations of “said at least one microencapsulated active substance” renders the claim indefinite because there is lack of antecedent basis for “at least one microencapsulated active substance” in claim 1. It is noted that in lines 3-4 of claim 1, “at least one active substance” was recited and not “at least one microencapsulated active substance.” Thus, it is not clear what “said at least one microencapsulated active substance” is referencing to.
Regarding claim 1, the multiple recitations of “said at least one active substance being preferably selected from the group formed by …” renders the claim indefinite because it is unclear what is meant by the active substance being selected from the group “formed by …” How can an active substance be selected from the group formed by “thermochromic substances and agents for temperature control,” or formed by “antiperspirants, perfumes, essential oils, fragrances, oils,” or formed by “lubricant products, anti-friction products, anti-slip products, detergents, essential oils, fragrances, perfumes, aromas,” or formed by “dyes, pigments, thermochromic products, photochromic products, perfumes, flavorings, fragrances”? Thus, the metes and bounds of “said at least one active substance being preferably selected from the group formed by …” is unclear.
Regarding claim 1, the recitation of “said at least one active substance being able in particular to be chosen from brominated alkanes of general formula CnH2n+2-xBrx” renders the claim indefinite because first, it is unclear how an active substance “being able to” and “in particular” be chosen, as “being able to” is an optional language and “in particular” is not optional but specifically required. Second, the metes and bounds of “chosen from brominated alkanes of general formula CnH2n+2-xBrx” is unclear as there is no alternative species of “brominated alkanes of general formula CnH2n+2-xBrx” for choosing or selection. Thus, what brominated alkanes of general formula CnH2n+2-xBrx is selected as the active substance because claim 1 does not define those brominated alkanes of general formula CnH2n+2-xBrx. One cannot “choose” when a Markush group of species are not listed.
Claim 2 is structured as a product-by-process but the process does not set forth any active steps involved in the method/process. A claim is indefinite where it merely recites a process of making without any active, positive steps delimiting how the microcapsules are actually made. The scope of claim 2 is unclear because there is no active steps on how to make the microcapsules. Active steps are for example, “preparing,” “adding,” etc. Therefore, claims 2 is indefinite because the claims do not set forth any steps involved in the method of making. Applicant is suggested to amend claim 8, especially to (a), (b), and (c) subject matters of claim 2 so as these are properly reciting active steps in the process of making the microcapsules.
Regarding claim 2, the recitation of “acrylate …selected from the group formed by …” renders the claim indefinite because it is unclear what is meant by acrylate being selected from the group “formed by …” How can an acrylate be selected from the group formed by … diacrylates? Thus, the metes and bounds of “said at least one active substance being preferably selected from the group formed by …” is unclear.
Regarding claim 2, the recitation of “mixtures of these different acrylates of the O[CH2C(CH2OR)3]2 type where R is H or COCH═CH2” renders the claim indefinite because it is not clear what are the “mixtures of these different acrylates. it is unclear the metes and bounds of “these different acrylates,” as claim 2 does not define what “these different acrylates” are and what they encompasses. Nor does claim 2 defines acrylates for mixtures. The formula of O[CH2C(CH2OR)3]2 type where R is H or COCH═CH2 appeared to only encompassed two acrylates. However said formula is followed by the termed “type” which makes the metes and bounds of “mixtures of these different acrylates of the O[CH2C(CH2OR)3]2 type where R is H or COCH═CH2” even more unclear. This is because “type” is similar to the term “like” and such terminologies are indefinite, as claim 2 include elements not actually disclosed (those encompassed by "type” or “like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). It unclear what “type” or how like or dislike, or similar or dissimilar does the formula of O[CH2C(CH2OR)3]2 need to be, so as to be considered a “type” of “formula of O[CH2C(CH2OR)3]2”.
Regarding claim 2, the recitation of “the mixture of different compounds described above” renders the claim indefinite because the metes and bounds of “different compounds described above” is unclear, as it is not clear what are those “different compounds” are. Nowhere in claim 2 does it describes compounds or recites compounds.
Regarding claim 3, the recitation of “the said second monomer Y” renders the claim indefinite because claim 3 is dependent from claim 1, and claim 1 does not contain “a second monomer Y”. Thus, it is unclear what “the said second monomer Y” is claim 3 referencing to, as there is lack of antecedent basis for second monomer Y in claim 1.
Regarding claim 3, the recitation of “the said second monomer Y is selected from amines” renders the claim indefinite because there is no alternative species of “amines” for selection. Thus, it is unclear what amines are selected as the second monomer Y because claim 3 does not define those amines. One cannot “select” when a Markush group of species are not listed.
Regarding claim 3, the recitation of “the said second monomer Y …selected from the group formed by …” renders the claim indefinite because it is unclear what is meant by second monomer Y selected from the group “formed by …” How can a second monomer Y be selected from the group formed by … primary amines R-NH2? Thus, the metes and bounds of “the said second monomer Y …selected from the group formed by …” is unclear.
Regarding claim 3, the recitation of “primary diamines of the NH2(CH2),NH2 type” renders the claim indefinite because the termed “type” makes the metes and bounds of “primary diamines of the NH2(CH2),NH2 type” unclear. This is because “type” is similar to the term “like” and such terminologies are indefinite, as claim 3 include elements not actually disclosed (those encompassed by "type” or “like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). It unclear what “type” or how like or dislike, or similar or dissimilar does the primary diamines of the NH2(CH2),NH2 need to be, so as to be considered a “type” of “primary diamines of the NH2(CH2),NH2”. Furthermore, “the recitation of “which can typically” in “where n is an integer which can typically be between 1 and 20” further renders claim 3 indefinite because “which can typically” is of an optional language and thus, how typical or often does the n can be between 1 and 20 or is it optional that the n is between 1 and 20. Thus, the metes and bounds of “the recitation of “which can typically” in “where n is an integer which can typically be between 1 and 20” is unclear.
Regarding claim 4, the recitation of “the reactive functions of the said monomers Y (—NH) and X (acrylate)” renders the claim indefinite because first, there is lack of antecedent for “the reactive functions” in claim 2 (to which claim 4 depends from). Thus, is unclear what “reactive functions” is claim 4 referencing to, as claim 2 does not recite anything relating to “reactive functions. Second, “said monomers Y (—NH) and X (acrylate)” is also unclear because the parenthetical recitations “(--NH)” and “(acrylate)” are indefinite, as it is unclear if the text within the parenthesis are alternative limitations of the claims or merely descriptors of other elements of the claims. It is noted that [p]arenthetical expressions are not permissible which do not contribute to clearness or exactness in stating Applicant’s invention (Ex parte Cahill, 1893 C. D., 78; 63 O. G., 2125). Furthermore, there is lack of antecedent basis for said monomer Y to be “—NH” and X to be “acrylate,” as claim 2 does not recites that –NH as monomer Y and acrylate as monomer X. Thus, metes and bounds of “the reactive functions of the said monomers Y (—NH) and X (acrylate)” is unclear.
Regarding claim 5, the recitation of “said monomers” renders claim 5 indefinite because it is unclear what “said monomers” as generically recited is referencing to, as claim 2 (to which claim 5 depends from) recites particularly polymerization of said monomers X and Y. Thus, it is unclear if “said monomers” is referencing to the “said monomers X and Y” in claim 2 or a different set of monomers.
Regarding claim 6, the recitation of “the external shell” renders claim 6 indefinite because claim 1 (to which claim 6 depends from) does not recite “external shell.” Thus, there is lack of antecedent basis for “the external shell” in claim 1, and thus, it is not clear what “the external shell” claim 6 is referencing to.
Regarding claim 6, the recitations of “said radical initiator preferably being selected … from the group formed by …water-soluble azo compounds [or] azo compounds” renders the claim indefinite because it is unclear what is meant by radical initiator being selected from the group “formed by …” How can a radical initiator be selected from the group “formed by” water-soluble azo compounds or azo compounds? Thus, the metes and bounds of “said radical initiator preferably being selected … from the group formed by …water-soluble azo compounds [or] azo compounds” is unclear.
Regarding claim 6, the recitation of “its” in “its derivatives” renders said claim 6 indefinite because it is unclear what “its” is referring to, as “its” does not define any structure nor does “its” provide any proper antecedent basis to any particular component(s) in claim 6.
Regarding claim 6, the recitation “said acrylate preferably being a water-soluble monofunctional acrylate capable of reacting with the residual amine functions at the surface of the shell of the microcapsules” renders the claim indefinite because claim 6 is dependent from claim 1, and claim 1 does not contains “residual amine functions at the surface of the shell of the microcapsules” nor anything relating to residual amine functions. Thus, is unclear how the water-soluble monofunctional acrylate can be capable of reacting with “the residual amine functions at the surface of the shell of the microcapsules” when claim 1 does not contain residual amine functions as a surface of the shell of the microcapsules.
Regarding claim 7, the recitations of “these microcapsules being referred to herein as “unbreakable”,” “these microcapsules being referred to herein as “fragile,” and “these microcapsules being referred to herein as “brittle” render the claim indefinite because it is first unclear what “these microcapsules” are referring to as there is no structural nexus provide for “these microcapsules.” Second, it is unclear the metes and bounds of “unbreakable,” “fragile,” and “brittle,” as the specification does not definite the meaning of “unbreakable,” “fragile,” and “brittle.” For example, what is considered “unbreakable”? Something that is rock-solid? Similar fact pattern can be made with respect to the unclearness of the metes and bounds of “fragile” and “brittle.”
Regarding claim 8, the recitation of “such preparations” renders the claim indefinite because it is unclear what “such preparations” is claim 8 referring to, as “such preparations” does not provide antecedent basis to any particular preparation in claim 8.
Regarding claim 9, the multiple recitations of “such preparations” renders the claim indefinite because it is unclear what “such preparations” is claim 9 referring to, as “such preparations” does not provide antecedent basis to any particular preparation in claim 9.
Regarding claim 10, the recitation of “its” in “its mechanical properties” renders said claim 10 indefinite because it is unclear what “its” is referring to, as “its” does not define any structure nor does “its” provide any proper antecedent basis to any particular component(s) in claim 10.
Regarding claim 10, the multiple recitations of “such preparations” renders the claim indefinite because it is unclear what “such preparations” is claim 10 referring to, as “such preparations” does not provide antecedent basis to any particular preparation in claim 10.
Regarding claim 10, the recitation of “products selected from the group formed by…” renders the claim indefinite because it is unclear what is meant by products selected from the group “formed by …” How can products be selected from the group “formed by” vermifuges? Thus, the metes and bounds of “products selected from the group formed by vermifuges, anti-parasites, agents for controlling or limiting odors, pharmaceutically active substances, essential oils, fragrances, perfumes, and/or flavorings” is unclear.
Regarding claim 11, the recitation of “the reaction mixture resulting from stage (c) is used directly…” renders the claim indefinite because claim 2 (to which claim 11 depends from) does not recite anything relating to “reaction mixture” nor does claim 2 recite “stage (c)” and thus, it unclear what reaction mixture resulting from stage (c) is claim 11 referencing to. Furthermore, it is also not clear the metes and bounds of what is meant by “used directly,” and what is used directly?
Regarding claim 12, the recitation of “the reaction mixture resulting from the said modification reaction is used directly” renders the claim indefinite because claim 6 (to which claim 12 depends from) does not recite anything relating to “reaction mixture” or “modification reaction,” as well as, claim 6 recite a plurality of modifications. Thus, it is unclear what reaction mixture resulting from which modification reaction is claim 12 referencing to. Furthermore, it is also not clear the metes and bounds of what is meant by “used directly,” and what is used directly?
Regarding claim 14, the recitation of “a product selected from the group formed by: …” renders the claim indefinite because it is unclear what is meant by a product selected from the group “formed by …” How can a product be selected from the group “formed by” pharmaceutical preparations intended for human or veterinary medicine? Thus, the metes and bounds of “a product selected from the group ‘formed by’: pharmaceutical preparations intended for human or veterinary medicine, food preparations, cosmetic products, products for dental and oral care, preparations of additives for plant cultivation, preparations for coating cosmetic textiles or medical textiles” is unclear.
Regarding claim 17, the recitation of “Product resulting from the use or from a method of use, of microcapsules with a biodegradable Poly(Beta-Amino Ester) shell containing at least one active substance, according to claim 1” renders the claim indefinite because it is unclear what is meant by “resulting from the use or from a method of use …,” as claim 1 is not drawn to “the use” or “method of use,” but rather, claim 1 is drawn to a composition. Thus, the metes and bounds of “Product resulting from the use or from a method of use …” is unclear.
Regarding claim 18, the recitation of “the reaction mixture resulting from stage (c) is used directly…” renders the claim indefinite because claim 7 (to which claim 18 depends from) does not recite anything relating to “reaction mixture” nor does claim 2 recite “stage (c)” and thus, it unclear what reaction mixture resulting from stage (c) is claim 18 referencing to. Furthermore, it is also not clear the metes and bounds of what is meant by “used directly,” and what is used directly?
As a result, claims 1-14 and 17-18 do not clearly set forth the metes and bounds of patent protection desired.
Claim Interpretation
Claims 2, 4-6, 11-14, and 18 are structured as a product-by-process. Thus, claims 2, 4-6, 11-14, and 18 will be interpreted and examined for art rejection purposes (102 rejections) as product-by-process type claims. MPEP 2113 [R-1] states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Thus, while the structure implied by the process steps should be consider when assessing patentability of product-by-process claims over the prior art; however, burden of proof is placed upon Applicant to show that the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Also see MPEP § 2113.
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) 1-14 and 17-18 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).
The product-by-process claim interpretation applies here.
Regarding claims 1, 2, 4-6, and 11-18, Ortais teaches a composition comprising microcapsules containing an active substance, wherein the shell wall of the microcapsules is formed from poly(beta-amino ester), and wherein the poly(beta-amino ester) microcapsules are formed by an addition reaction of amine functions on acrylate functions (reaction known as “Michael addition”), by interfacial polymerization (Abstract; [0015]-[0162]; claims 1-20). Ortais teaches the composition is formulated as cosmetic products or pharmaceutical products ([0012], [0088]; claim 8). Ortais teaches the microcapsules are coated with a polymeric coating ([0052]-[0053], [0093]; claim 9).
Regarding claim 3, Ortais teaches the amine is selected from the group consisting of: primary amines of the type R—NH2; primary diamines of the type NH2(CH2)nNH2, where n is between 1 and 20; primary diamines comprising an aromatic center; primary (multi)amines; secondary diamines; and polymers having primary and/or secondary amine functions ([0039]-[0048] and [0078]-[0085]; claim 5).
Regarding claim 7, as discussed above, Ortais teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) as recited in claim 1 and thus, characteristic(s) recited in claim 7 is inherent to the structurally same microcapsules with biodegradable shell made of poly(beta-amino ester) of Ortais. This is because "[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 8-10, as discussed above, Ortais teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) as recited in claim 1. Claims 8-10 drawn to “uses” of the microcapsules and thus, said uses in claims 8-10 are recitations of intended uses. Ortais teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) of claim 1, and thus, the microcapsules of Ortais would be capable of performing the intended uses as recited in claims 8-10 because 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.
As a result, the aforementioned teachings from Ortais are anticipatory to claims 1-14 and 17-18 of the instant invention.
Claim(s) 1-14 and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being by Park et al (WO 2020/009439 A1; citation and English translation via US 2021/0138423 A1).
The product-by-process claim interpretation applies here.
Regarding claims 1, 2, 4-6, and 11-18, Park teaches a composition comprising microcapsules having a biodegradable shell containing poly(β-amino ester), wherein the microcapsules contains an active ingredient, and wherein the poly(β-amino ester) is formed from polymerization reaction of an acrylate such as a diacrylate with an amine such as diamine or polyethyleneimine (Abstract; [0009]-[0364]; claims 1-17). Park teaches the composition is formulated as drug products ([0092]; claim 12). Park teaches the shell is modified with inorganic nanoparticles (Abstract; [0009]-[0364]; claims 1-17).
Regarding claim 3, as discussed above, Park teaches the poly(β-amino ester) is formed from polymerization reaction of an acrylate such as a diacrylate with an amine such as diamine or polyethyleneimine.
Regarding claim 7, as discussed above, Park teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) as recited in claim 1 and thus, characteristic(s) recited in claim 7 is inherent to the structurally same microcapsules with biodegradable shell mad of poly(beta-amino ester) of Park. This is because "[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 8-10, as discussed above, Park teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) as recited in claim 1. Claims 8-10 drawn to “uses” of the microcapsules and thus, said uses in claims 8-10 are recitations of intended uses. Park teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) of claim 1, and thus, the microcapsules of Park would be capable of performing the intended uses as recited in claims 8-10 because 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.
As a result, the aforementioned teachings from Park are anticipatory to claims 1-14 and 17-18 of the instant invention.
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) 1-14 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Little et al (US 2005/0244504 A1) in view of Park et al (WO 2020/009439 A1; citation and English translation via US 2021/0138423 A1).
The product-by-process claim interpretation applies here.
Regarding claims 1, 2, 4-6, and 11-18, Little teaches a drug delivery system comprising biodegradable microparticles encapsulating a drug, wherein the poly(beta-amino esters) forms the shell or matrix of the microparticles (Abstract; [0008]-[0014], [0086]-[0155], [0159]-[0181]). Little teaches the microparticles is modified with a polymeric coating ([0010]).
While Little teaches the use of poly(beta-amino esters) in forming a shell of the microcapsule as being an alternative method of forming the microparticles, it would have been obvious to produce microparticles of Little as core-shell microparticles in which the shell is formed of poly(beta-amino esters) in view of the guidance from Park.
Park teaches a composition comprising microcapsules having a biodegradable shell containing poly(β-amino ester), wherein the microcapsules contains an active ingredient, and wherein the poly(β-amino ester) is formed from polymerization reaction of an acrylate such as a diacrylate with an amine such as diamine or polyethyleneimine (Abstract; [0009]-[0364]; claims 1-17). Park teaches the composition is formulated as drug products ([0092]; claim 12). Park teaches the use of poly(β-amino ester) as part of the shell of the microcapsules provide a resultant microcapsule with an appropriate strength and improved fracturability so that the microcapsules can be incorporated into products and the active ingredient can be released over time ([0019], [0116], [0119]-[0220], [0126]-[0271] and [0324]).
It would have been obvious to one of ordinary skill in the art to modify the microparticles of Little such that the poly(beta-amino esters) is used in forming the shell so as to provide a core-shell microcapsule/microparticle, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Little suggested that the microparticles can be formed in which poly(beta-amino esters) is found in the shell of the microparticles, where Park provides the guidance and motivation for use of poly(β-amino ester) as part of the shell of the microcapsules provide a resultant microcapsule with an appropriate strength and improved fracturability so that the microcapsules can be incorporated into products and the active ingredient can be released over time. Thus, an ordinary artisan seeking to provide core-shell microcapsules/microparticles with an appropriate strength, improved fracturability, and controlled release characteristics would have looked to modifying the microparticles of Little such that the poly(beta-amino esters) is used in forming the shell so as to provide a core-shell microcapsule/microparticle, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 7, as discussed above, Little in view of Park teach structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) as recited in claim 1 and thus, characteristic(s) recited in claim 7 is implicit to the structurally same microcapsules with biodegradable shell mad of poly(beta-amino ester) of Park. This is because "[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. It is further noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Additionally, Park teaches that the strength of the microcapsule is optimizable to achieve the desired fracturability and controlled release characteristics (Park: [0019], [0048], [0116], [0119]-[0220], [0126]-[0271] and [0324]).
Regarding claims 8-10, as discussed above, Little in view of Park teach structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) as recited in claim 1. Claims 8-10 drawn to “uses” of the microcapsules and thus, said uses in claims 8-10 are recitations of intended uses. Little in view of Park teaches structurally the same microcapsules with biodegradable shell made of poly(beta-amino ester) of claim 1, and thus, the microcapsules of Little in view of Park would be capable of performing the intended uses as recited in claims 8-10 because 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.
From the teachings of the reference, 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 reference, especially in the absence of evidence to the contrary.
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 1-14 and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11654410.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘410 significantly overlap with the subject matter of instant claims, i.e., the claims in the Patent ‘410 being a method of making microcapsules, but the microcapsules obtained are the same microcapsules with a biodegradable shell made of poly(beta-amino ester) as the instant claims.
It is noted that permitting claims to a method of making a compound could essentially result in an unjustified timewise extension of the period of exclusivity for the compound itself and thus, the "[n]onstatutory Double Patenting Rejection Based on Equitable Principles" should be considered.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11654410.
Claims 1-14 and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18251744 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘744 significantly overlap with the subject matter of instant claims, i.e., the claims in the copending application ‘744 being a product-by-process or a method of making microcapsules, but the microcapsules obtained are the same microcapsules with a biodegradable shell made of poly(beta-amino ester) as the instant claims.
It is noted that permitting claims to a method of making a compound could essentially result in an unjustified timewise extension of the period of exclusivity for the compound itself and thus, the "[n]onstatutory Double Patenting Rejection Based on Equitable Principles" should be considered.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18251744.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613