DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 11 December 2025, in response to the Office Correspondence dated 12 August 2025, are acknowledged.
The listing of Claims filed 11 December 2025, have been examined. Claims 14-20 and 22-29 are pending. Claims 14 and 16 are amended and the applicant’s assertion that no new matter has been introduced is acknowledged. Claim 21 is canceled and no new claims have been added. Claims 1-13 remain canceled.
Response to Amendment
Amendment to the claims has been entered. The applicant’s amendments and remarks filed in response to the prior Office Action have been fully considered and are not persuasive. The grounds of rejection under 35 U.S.C. § 103 and nonstatutory double patenting are maintained.
The combination of Walters and Dijk remains applicable. The specific inclusion of an ethoxylate urethane polymer is a predictable optimization of the prior art's teaching, and Dijk's teaching on rheology is directly applicable. In addition, the pending claims are not patentably distinct from the claims of the commonly owned patents and co-pending application. The addition of a numerical range for a known property and the selection of a specific species from a known class do not confer patentable distinctness.
New rejections under 35 U.S.C. § 112(a) and (b) are entered as a consequence of the amendments to independent claims 14.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 12 August 2025, since the art which was previously cited continues to read on the amended/newly cited limitations.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. § 102 and 103 (or as subject to pre-AlA 35 U.S.C. § 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The 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 14-20 and 22-29 are rejected under 35 U.S.C. § 103 as being obvious over Walters (US20200094214A1; published 26 March 2020) in view of Dijk (US20080071077A1; published 20 March 2008).
Regarding instant claim 14 and 16, Walters teaches E3 emulsions comprising droplets (¶[0156]) dispersed in a continuous phase (E3 dispersed in C3; ¶[0022]), being highly viscous (C3 viscosity > 2000 mPa·s at 25°C; ¶[0013]). The average size (Dn50) of the capsules [droplets] is 26 μm, with the width at half height of the size distribution as a monodispersity metric at 31 μm, indicating the droplets are size-controlled in an embodiment as Example 1 (¶[0189]) and an average size was 5.0-5.8 μm with the width at half height of the size distribution of 5.5-6.8 μm in an embodiment as Example 2 (¶[0193]).
The viscoelastic continuous phase (C3) comprises at least one polymer in solution (¶[0127]), including chitosan, carboxymethyl cellulose, methyl cellulose, guar gum, konjac gum, and polyacrylic acid that may be used alone or together (¶[0128]). Wherein, Walters teaches solutions [solvents] for the polymer (C3) at a concentration of 15% by weight of the continuous phase composition (¶[0179]) and 5% (¶[0195]), encompassed within the instant claim 14 range. While the example embodiments citing solvent concentrations use alginate as the polymer, the polymer is not required to be alginate, and other non-alginate polymers are taught as suitable for use in the invention as an alternative (¶[0128]). Further, the present application fails to provide evidence of an unexpected technical effect linked to the use of the disclosed polymers instead of alginate.
Walters describes viscosity and shear behavior with equations relating to shear stress, viscosity and shear rate (¶[0161]). While explicit viscous modulus (G″) to elastic modulus (G′) ratio values are not given, the composition is neither a purely viscous liquid (G’ = 0) nor a perfect solid that is purely elastic (G”=0) and thus, for a viscoelastic polymer fluid (viscous dominated C3) with a non-Newtonian shear-thinning profile that forms continuous phase emulsions (claim 1) the G’ and G” would be expected by one skilled in the art to be significant nonzero values, consistent with a moderate range G”/G’ in the linear viscoelastic range of 1-5 prior to UV polymerization, encompassing the instant claim range. The claimed range is a predictable result.
Dijk teaches a similar composition using carboxymethyl cellulose, wherein at 1 Hz approximated from the graph G’ is 10 Pa and G” is 20 Pa (Drawing, Figure 1), resulting in a G”/G’ ratio of 2, falling within the instant claims ranges. Further, alginate is excluded in the Dijk disclosure and embodiments of the invention do not require the use of traditional surfactants in compositions wherein emulsions can be stabilized by viscosity alone (i.e., Example 3 ¶[0039]).
Regarding instant claim 15, Walters explicitly teaches, “The method of the invention has the advantage of not requiring a surfactant, in any of the steps described.” (¶[0177).
Regarding instant claim 23, Walters teaches where a C1 composition, comprising at least one active ingredient, is dispersed in composition C2 wherein compositions C1 and C2 are not miscible with each other (Claim 1), indicating the active agent is not miscible in the dispersed phase. Further, Walters teaches, “According to another embodiment of the invention, the composition C1 is a biphasic composition, which means that the active ingredient is dispersed, either in liquid form or in solid form, in the composition C1 and is not totally solubilized in the composition C1.” (¶[0040]), indicating wherein the composition may include a non-fully miscible active agent as per the limitation of instant claim 23.
Regarding instant claims 24-26, Walters teaches a viscoelastic continuous phase dispersed droplet b) elongation-fragmentation step c) with applied shear rate being less than 1000 s−1 (claim 1) and wherein the shear rate applied in step c) is between 10 s−1 and 1000 s−1 (claim 8), thus encompassed within the instant claim 25 and 26 ranges.
Regarding instant claims 27, A Newtonian fluid maybe added into the viscoelastic continuous phase in a composition C3, in addition to a non-Newtonian polymer, Newtonian fluids that may be used include dilute solutions (e.g., <5%) of low molecular weight PEG/PPG (<1000 Da), dimethicone (<1000 cSt viscosity) PVA/PVP (<10,000 Da) or unmodified, non-hydrogenated castor oil (¶[0128]), wherein, “Any mixture of the compounds mentioned above may be used.” (¶[0151]).
Further, Dijk teaches a similar composition using carboxymethyl cellulose without the use of traditional surfactants in Example 3, wherein the isopropyl myristate and mineral oil component of the mineral oil/lanolin alcohol ingredient would be Newtonian fluids (Table 3, ¶[0040]), thus it was known in the art at the time of the invention to incorporate Newtonian fluids in formulations.
Regarding instant claims 22, 28 and 29, Walters teaches wherein the dispersed C2 phase comprises at least one crosslinking agent, and at least one photoinitiator (claim 3), wherein the emulsion is produced and the formed droplet are crosslinked by photopolymerization (claim 1).
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to use the claimed polymers listed as suitable as an alternative embodiment of the invention rather than alginate in the invention of Walters, wherein use of these polymers had been taught in similar inventions, as evidence by Dijk. The claimed invention is a predictable variation of prior art emulsions, combining know element (i.e., alternative polymers and inclusion of Newtonian fluids) via routine methods to achieve expected properties (i.e., G”/G’ ratio and droplet size). The G”/G’ ratio within the range of 1-5 is typical for polymer solutions at the claimed concentration, as evidence by Dijk. One would be motivated to make these changes with a reasonable expectation of success to reduce ingredient costs or improve sensory feel, and adjusting polymer choice to meet target rheology is a predictable and routine optimization. No nonobvious synergistic effects are demonstrated or criticality of excluding alginate.
Claim Rejections – Nonstatutory 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).
Claims 14-20 and 22-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over the following commonly owned U.S. Patents US 12,186,723 B2; US 11,540,979 B2; US 11,845,053 B2; US 11,033,872 B2; US 11,071,962 B2; US 11,234,911 B2; US 11,338,265 B2; and US 10,807,060 B2 and are provisionally rejected over co-pending Application No. 19/184,362 (reference application; filed 21 April 2025). The rejections based on the co-pending application are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The claims of the instant application are not patentably distinct from the claims of the above-listed patents and co-pending application because they recite emulsions or processes for forming emulsions and microcapsules that include: size-controlled droplets dispersed in a viscoelastic continuous phase; polymers such as cellulose derivatives, polyacrylates, polyacrylamides, polyethylene oxide, polysaccharides, and protein derivatives; processes involving shear-induced elongation-fragmentation, droplet formation, and crosslinking or photopolymerization.
These features are either explicitly claimed or inherently disclosed in the above patents and applications, where similar microcapsule systems are formed by processes involving the same classes of polymers, viscosities, shear rates, and encapsulation techniques. Specific limitations in the present claims such as G″/G′ modulus range or exclusion of alginates do not render the claims patentably distinct, as such differences would have been obvious design choices to one of ordinary skill in the art.
Particularly, US 12,186,723 B2, US 11,845,053 B2, and US 11,540,979 B2 teach emulsions and capsules involving controlled droplet size, viscoelastic media, and crosslinking to form capsules. US 11,033,872 B2, US 11,071,962 B2, US 11,234,911 B2, and US 11,338,265 B2 disclose emulsions with monodisperse droplet control, aqueous gels, and polymer crosslinking chemistries consistent with the instant application. US 10,807,060 B2 further supports the use of aqueous phase polymers and microcapsule formation techniques matching the current claims and pending Application No. 19/184,362 includes claims to microcapsules where the core is an emulsion stabilized in a viscous polymer phase, optionally containing cellulose derivatives, PEG, or polyacrylates, and subjected to shear and crosslinking to yield solid capsules, aligning with claims 14–29 of the instant application.
More specifically, instant claim 14 is not patentably distinct from the microcapsule core emulsion compositions of US 11,845,053 B2 (claim 1) and pending Application No. 19/184,362 (claims 1, 4, and 5). These disclosures include emulsions comprising polymers (cellulose derivatives, polyacrylates, PEG) in aqueous gels with droplets < 100 µm and control over droplet size.
Instant claim 15 is not patentably distinct from the disclosures in US 11,540,979 B2 and US 11,338,265 B2, where emulsions are stabilized without traditional surfactants, using polymer structuring agents or phase incompatibility.
Instant claim 16 polymer selections (e.g., chitosan, CMC, methyl cellulose, etc.) are disclosed in US 12,186,723 B2 and US 11,071,962 B2, where similar aqueous phase polymers are used in forming emulsions and capsules.
Instant claims 17 and 18 monodispersity and control over G″/G′ ratios are addressed implicitly in US 11,033,872 B2 and US 11,845,053 B2, where shear-controlled emulsification produces uniform droplets with tunable rheological properties.
Instant claims 19 and 20 droplet size ranges of 1–70 µm and 5–20 µm are taught in US 10,807,060 B2, US 11,338,265 B2, and pending Application No. 19/184,362 (claim 1).
Instant claim 21 Newtonian fluid inclusion in viscoelastic continuous phases is disclosed in US 11,234,911 B2, which discusses tuning emulsion viscosity and phase behavior with diluents.
Instant claims 22 and 23 presence of cross-linkable materials and optional active agents in the dispersed phase is claimed in US 11,845,053 B2, US 11,071,962 B2, and pending Application No. 19/184,362 (claims 1 and 3).
Instant claims 24–26 elongation-fragmentation mechanisms and specific shear rates for droplet formation are disclosed in US 11,540,979 B2, US 11,033,872 B2, and pending Application No. 19/184,362 (claim 9c).
Instant claim 27 addition of Newtonian fluids into a viscoelastic medium during emulsion preparation is disclosed in US 11,234,911 B2 and US 11,338,265 B2.
Instant claim 28 fabrication of microcapsules via droplet formation followed by crosslinking is a core aspect of US 12,186,723 B2, US 11,845,053 B2, and pending Application No. 19/184,362 (claim 9d).
Instant claim 29 photopolymerization of formed droplets is specifically disclosed in US 11,845,053 B2, US 11,033,872 B2, and pending Application No. 19/184,362 (claim 8).
Accordingly, in the absence of a terminal disclaimer, claims 14–29 are rejected as unpatentable under the doctrine of obviousness-type double patenting. The subject matter of the instant claims is an obvious variation of that previously or concurrently claimed in the above-referenced applications.
To overcome these rejections, Applicant may file a terminal disclaimer in accordance with 37 CFR § 1.321 to obviate the double patenting rejection, amend the claims to make them patentably distinct from the claims of the cited patents and application, or present arguments as to why the pending claims are not obvious variations of the cited claims.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 12 August 2025, as the Applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-20 and 22-29 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
Claim 14 is rejected for insufficient description of the ethoxylate urethane polymers genus and the lack of a description of the "Newtonian fluid" limitation in combination with the specific polymers in the specification.
Claim 14 requires, "at least one Newtonian fluid of ethoxylate urethane polymers". However, the specification mentions "ethoxylate urethane polymers" in only two places, ¶[0136] lists "ethoxylate urethane polymers" in a broader list of potential Newtonian fluids, alongside "hydroxyethyl cellulose" and others and Example 2 (¶[0185]) mentions, "hydrophobically modified ethoxylate-urethane copolymer (Optiflo T1000 and Optiflo L1400, Byk)" as an example of a Newtonian fluid.
While these disclosures provide some support, the specification does not describe what structural features characterize an "ethoxylate urethane polymer" as a genus. There is no description of the range of molecular weights, degree of ethoxylation, polymer architecture (linear, branched, comb), or other structural parameters that would define the boundaries of this genus. The specification also does not describe how to make or use any ethoxylate urethane polymers beyond the commercial Optiflo products. The applicant has claimed a broad genus based on disclosure of two commercial products, which may not provide adequate written description support for the full scope of the genus (see Ariad Pharm., Inc. v. Eli Lilly & Co. 598 F.3d 1336 (Fed. Cir. 2010), wherein a written description requires showing of possession of the claimed invention, including sufficient structure, formula, or other defining characteristics for a genus and Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997), wherein a generic claim requires sufficient disclosure of representative species or common structural features).
In addition, claim 14 requires both a specific listed polymer and "at least one Newtonian fluid of ethoxylate urethane polymers". The specification's examples demonstrating the effect of adding a Newtonian fluid to control G"/G' ratio and droplet size are limited to one specific system using chitosan solutions with Optiflo L1400 (ethoxylate urethane polymer) in Example 4 (¶[0194]-[0197] and Table 4). The specification does not provide any examples or data showing the effect of adding ethoxylate urethane polymers to continuous phases comprising the other listed polymers (i.e., methyl cellulose, polyacrylates, polyacrylamides, polyethylene oxide, guar gum, konjac gum, protein derivatives, silicone derivatives). Further, the specification does not provide any guidance on how to achieve the claimed G"/G' ratio when combining ethoxylate urethane polymers with polyacrylamides, protein derivatives, or silicone derivatives. These polymer classes have significantly different rheological behaviors, interactions with associative thickeners, and solubility characteristics and polymer-polymer interactions can have an unpredictable nature, particularly between diverse polymer types and associative thickeners like ethoxylate urethanes.
A person of ordinary skill would not know from the specification that the applicant was in possession of inventions combining ethoxylate urethane polymers with all of these diverse polymer systems with the claimed G"/G' ratio across the full scope of the claim, particularly given that different polymer chemistries may interact differently with associative thickeners like ethoxylate urethanes (see Boston Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353 (Fed. Cir. 2011), wherein a written description requires disclosure of sufficient species to show possession of a genus, especially where the art is unpredictable).
Dependent claims 15-20 and 22-29 are included in this rejection because they do not cure the defect noted above.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 14-20 and 22-29 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, regards as the invention.
Claim 14 is rejected because "size-controlled", G"/G' measurement conditions, and "Newtonian fluid of ethoxylate urethane polymers" are indefinite.
Claim 14 recites "wherein said droplets are size-controlled". This term is defined in the specification at ¶[0060] as referring to "a population of particles or droplets whose average size can be predicted from the physical parameters of the emulsion using equation (1) below." Equation (1) is: D ~ (G'/G")^1.5. The definition incorporates by reference a predictive relationship that requires determining whether the droplet size follows a specific mathematical relationship with the G'/G" ratio. However, the claim does not require that the droplets actually satisfy this relationship, nor does it provide any boundary or limitation on what constitutes "size-controlled" versus "not size-controlled."
The specification at ¶[0123] states that this relationship applies "in the domain 0.2<G"/G'<10," which is already recited in the claim. However, the term "size-controlled" as defined requires a determination of whether the droplets can be predicted by equation (1), which depends on external validation rather than a structural property of the composition itself. A person of ordinary skill would not know from the claim language alone whether a given emulsion meets this requirement without performing predictive modeling or regression analysis to determine if the droplet size correlates with equation (1) (see Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008), wherein claims are indefinite if they require a person to perform a test or experiment to determine whether a product falls within the scope of the claims, where the test is not sufficiently defined, and MPEP § 2173.05(g)).
In addition, Claim 14 requires that, "said viscoelastic continuous phase presents a ratio between the viscous modulus (G") and the elastic modulus (G') ranging from 0.2 to 10". While the specification at ¶[0049] and ¶[0061] provides detailed measurement conditions (20°C, rheometer with parallel plate geometry, 1 mm gap, frequency scanning at strain below 2%, value taken for ω=100 rad/s), these conditions are not recited in the claim. The claims fail to recite oscillation frequency, strain amplitude, temperature, or measurement protocol. Without being tied to these specific measurement parameters, the G"/G' ratio is ambiguous because viscoelastic properties are frequency-dependent and temperature-dependent. A continuous phase could have a G"/G' ratio of 2 at one frequency/temperature and 15 at another. The claim lacks the necessary limitations to define which measurement conditions apply (see Akzo Nobel Coatings Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016), wherein claims reciting properties without specifying measurement conditions can be indefinite where the property varies significantly based on measurement methodology, and MPEP § 2173.05(a)).
Further, claim 14 requires, "at least one Newtonian fluid of ethoxylate urethane polymers". The phrase "Newtonian fluid of ethoxylate urethane polymers" is ambiguous as to whether it means an ethoxylate urethane polymer that itself behaves as a Newtonian fluid, or a fluid comprising ethoxylate urethane polymers that is Newtonian in behavior. The distinction matters because many polymer solutions exhibit non-Newtonian behavior depending on concentration and molecular weight.
Additionally, the specification at ¶[0055] defines a Newtonian fluid based on the constancy of viscosity across shear rates, specifically noting that a fluid is considered Newtonian "when its viscosity is constant at all shear rates applied during the mixing step of the emulsion" or "when the relative variation of its viscosity is inferior to 10% for shear rates ranging from 0.1 s^-1 to 200 s^-1". This definition is incorporated by reference but is not recited in the claim.
The scope is unclear as to whether the Newtonian behavior must be exhibited under the specific shear conditions of the process (which are not claimed), within the linear viscoelastic regime only, or at a specified shear rate or temperature. or under some standard conditions (see Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008), wherein claims are indefinite when they depend on a property that is not defined with reasonable certainty).
Dependent claims 15-20 and 22-29 are included in this rejection because they do not cure the defect noted above.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 11 December 2025, have been fully considered.
The applicant argues that the amendments to claim 14, specifically (i) exclusion of alginate, (ii) recitation of specific polymers, and (iii) inclusion of “at least one Newtonian fluid of ethoxylate urethane polymers” overcome the prior art combination and the and that Dijk would not be considered by a skilled artisan because the carboxymethyl cellulose is in a separate phase in Dijk’s Example 3. These arguments are not persuasive.
Regarding the polymer selection and exclusion of alginate, Walters explicitly teaches that the continuous phase polymer may be selected from carboxymethyl cellulose, methyl cellulose, guar gum, konjac gum, polyacrylates, and mixtures thereof (¶[0128]-[0147]), and that polymers may be substituted as a matter of routine formulation choice. The fact that certain examples employ alginate does not limit the disclosure to alginate, nor does the applicant demonstrate any criticality associated with excluding alginate. As previously stated, no unexpected result is credibly linked to the exclusion of alginate, as required under MPEP § 2145 (see also In re Aller (220 F.2d 454, 1955)).
The applicant asserts that neither Walters nor Dijk teaches “a Newtonian fluid of ethoxylate urethane polymers.” However, Walters expressly teaches the addition of Newtonian fluids to the viscoelastic continuous phase, including PEG, PPG, PVA/PVP, dimethicone, and mixtures thereof (¶[0128] and ¶[0151]). Ethoxylated urethane polymers constitute a known subclass of PEG-based rheology modifiers, and their use as Newtonian diluents or rheology-adjusting agents would have been an obvious substitution within Walters’ broadly taught class of Newtonian additives.
While Walters may not explicitly list every possible polymer species, it teaches the use of a broad genus of compounds to modify the continuous phase. Walters explicitly teaches that Newtonian fluids may be added to the viscoelastic continuous phase (C3), providing a non-exhaustive list including "dilute solutions (e.g., <5%) of low molecular weight PEG/PPG (<1000 Da), dimethicone (<1000 cSt viscosity) PVA/PVP (<10,000 Da) or unmodified, non-hydrogenated castor oil" (¶[0128]). Walters further states that "[a]ny mixture of the compounds mentioned above may be used" (¶[0151]).
The addition of a specific species, such as an ethoxylate urethane polymer, to a mixture of polymers and Newtonian fluids to fine-tune rheological properties is a predictable optimization of a known composition. The applicant has not demonstrated that ethoxylated urethane polymers impart a non-obvious or unexpected functional property, as opposed to a predictable adjustment of viscosity and modulus ratios.
The applicant reiterates that Walters does not explicitly disclose a G″/G′ ratio. However, as explained in the prior Office Action, Walters teaches a viscoelastic, shear-thinning polymeric continuous phase that is neither purely elastic nor purely viscous. One of ordinary skill in the art would reasonably expect such compositions to exhibit finite, non-zero G′ and G″ values within a moderate ratio range, particularly prior to crosslinking.
Dijk teaches adjusting the ratio of viscous to elastic moduli (G"/G') is a routine matter, specifically with a carboxymethyl cellulose (a polymer explicitly within the scope of amended claim 14) system with measured G′ and G″ values yielding a G″/G′ ratio of approximately 2, squarely within the claimed range (Figure 1). A skilled artisan would understand that this rheological behavior is a function of the polymer in solution, regardless of whether it is later combined with another phase. The rejection relies on Dijk for its relevant teaching concerning the rheological behavior of polymer-thickened aqueous systems, not for its specific formulation as a multi-phase emulsion.
The artisan would therefore have a reasonable expectation that incorporating such a polymer into the continuous phase of Walters’ emulsion, which already teaches the use of carboxymethyl cellulose (¶[0129]), would yield a composition having a G"/G' ratio within the claimed range. The combination of Walters’ structural teachings of the emulsion platform with Dijk’s functional teaching of the G"/G' ratio achievable with those polymers would be obvious.
One of ordinary skill in the art, seeking to adjust the G"/G' ratio of Walters' emulsion to a specific target (e.g., to optimize droplet size), would be motivated to select from the known classes of rheology modifiers, including Newtonian fluids like ethoxylate urethane polymers, which are well-known in the art as associative thickeners capable of modulating viscoelastic properties. The result, an increase in G"/G' and a decrease in droplet size, is the intended and predictable outcome of such a rheological modification, as confirmed by the applicant’s own specification (Example 2; Figure 1). A mere optimization of a known parameter to achieve a predictable result does not render the claimed invention nonobvious. The examples and figures cited by the applicant merely show degree-of-optimization effects, which are insufficient to rebut a prima facie case of obviousness.
The motivation to combine Walters and Dijk remains unchanged, both references address polymer-stabilized emulsions with controlled droplet size and rheology, and Dijk provides explicit rheological measurements absent from Walters. Adjusting polymer identity and Newtonian fluid content to achieve target G″/G′ ratios constitute routine optimization.
The prima facie case of obviousness also stands, as the invention as a whole would have been obvious to a person of ordinary skill in the art. The prior art provides a clear roadmap starting with the emulsion system of Walters, which already discloses the basic structure, polymer types, and the concept of adding Newtonian fluids. To achieve a targeted, moderate G"/G' ratio (a routine rheological parameter), one would look to the teachings of Dijk, which demonstrates that such ratios are obtainable with the very polymers Walters recommends. Selecting a Newtonian fluid from the known class taught by Walters, such as an ethoxylate urethane polymer, to further fine-tune these rheological properties would be a matter of routine experimentation and predictable optimization. No evidence of unexpected results has been provided to rebut this prima facie case. Accordingly, the rejection of claims 14-20 and 22-29 under 35 U.S.C. § 103 is maintained.
Regarding the applicant’s arguments against the obviousness-type double patenting rejections, the cited patents and co-pending application collectively disclose emulsions and microcapsule systems having viscoelastic continuous phases, polymer-thickened aqueous media (including cellulose derivatives and PEG-based systems), shear-induced droplet formation, and crosslinking/photopolymerization.
The applicant argues that none of the cited patents or the co-pending application specifically claim the same features of the instantly claimed viscoelastic phase, including the G"/G' ratio and the at least one Newtonian fluid of ethoxylate urethane polymers, which represent obvious design parameters and do not render the claims patentably distinct.
The applicant’s arguments are unpersuasive because they focus on the absence of identical claim language, which is not the legal standard for obviousness-type double patenting. The proper inquiry is whether the claims are patentably distinct. A claim is patentably distinct from another if it is not anticipated by, and would not have been obvious over, the other claim.
In the previous Office Action, a detailed, limitation-by-limitation analysis was provided demonstrating that each feature of the present claims, including the G"/G' ratio and the use of ethoxylate urethane polymers as a Newtonian fluid, is either explicitly disclosed in or would have been an obvious variation of the subject matter claimed in the reference patents and application.
As established in the § 103 rejection above, achieving a G"/G' ratio within the claimed range (0.2 to 10) is an inherent and predictable property of the viscoelastic polymer systems disclosed in the reference patents (e.g., US 11,033,872 B2 and US 11,845,053 B2). The difference in claiming an explicit numerical range for a known property does not render a claim patentably distinct (see In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996), wherein a claim directed to a known compound defined by a newly-discovered property was not patentably distinct from a claim to the compound itself).
Regarding the ethoxylate urethane polymer, the reference patents teach the use of various polymers and rheology modifiers in the continuous phase. US 11,234,911 B2, for instance, specifically discusses tuning emulsion viscosity with diluents and additives (e.g., gelling agents). The selection of an ethoxylate urethane polymer, a well-known class of associative thickeners, as one such additive would have been an obvious design choice for one of ordinary skill in the art seeking to modify the rheology of the emulsions disclosed in the reference patents. The inclusion of a specific, known species from a broader taught class does not render the claims patentably distinct.
Because the claimed subject matter is not patentably distinct from that of the commonly owned patents and application, the nonstatutory double patenting rejection is maintained in the absence of a terminal disclaimer.
Conclusion
No claims are 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 (87 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at: http:/Awww.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’ s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent- center for more information about Patent Center and https:/Awww.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615