FINAL ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
This action is in response to papers filed 01/27/2026 in which claims 13-15 were withdrawn; and claims 3, 8, 9, and 20 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-12 and 16-20 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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.
Claim 3 is 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 introduces new matter as the claim recites the limitation: “a polymeric polycationic” There is no support in the specification for this limitation as it pertain to polycationic being “polymeric.”
While the specification discloses “polycationic (for example chitosan oligosaccharide)” (Specification, pages 3 and 6) and “the polycation is chosen in the group consisting of chitosan, chitosan oligomer, chitosan oligosaccharide …” (Specification, page 7), there is no disclosure anywhere in the specification for “polymeric polycationic.” Nor does the specification identifies the polycationic as “polymeric.” Thus, Applicant does not have possession of the claimed subject matter of “a polymeric polycation.”
MPEP §2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments.
Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendments at the time of filing of the instant application.
Claim Interpretation
It is noted that the recitations of “wherein at least one silicon precursor is added in step(i) and/or in step (ii) and/or in step (iii)” of claim 1, “wherein the at least one silicon precursor is added in the dispersion obtained in step ii)” of claim 8, “wherein at least a first silicone precursor is added in the dispersion obtained in step ii) and wherein at least a second silicon precursor is added during or after step (iii)” of claim 9, “wherein long and/or medium chain silane or mixture of silanes are added to the oil phase” of claim 11 are not active steps. It is noted that the claimed invention is drawn to a process of preparing a core-shell microcapsule slurry and the “wherein” clause denotes optional language or conditional limitation. It is noted that claim scope is not limited by claim language (i.e., “wherein”) that suggests or makes optional but does not require steps to be performed. See MPEP §2111.04. Thus, when the silicon precursor (s) is/are added is not critical and not required to be performed.
As such, given that the aforementioned recitations were interpreted as optional languages (said recitations are not required active steps), the processes of claims 1, 8-9, and 11 (and all claims pertaining to silicon precursor(s), e.g., claims 7, 10, and 20) will be interpreted for art rejection purpose under 103(a), as having the silicon precursor(s) present in the resultant microcapsule slurry, irrespective of when said silicon precursor(s) is/are added, or in other words, the prior art just has to have the silicon precursor(s) in the resultant microcapsule slurry.
Accordingly, if Applicant does not want the aforementioned recitations to be interpreted as optional, it is suggested that said recitations be amended to active steps. For example, claim 1 can be amended as follows: after the step (iii) , insert active step of “(iv) adding in step (i) and/or in step (ii) and/or in step (iii), at least one silicon precursor.”
Maintained Rejections
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) 1-3, 5, 7-9, 12, 16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brahms et al (WO 2017/161364 A1; previously cited) in view Weinbreck et al (WO 2003/106014 A1).
The claim interpretation applies here.
Regarding claim 1, Brahms teaches a process of preparing a sol-gel microcapsule by adding an oil phase containing an oil material and a silicon precursor (polysiloxane) to an aqueous solution containing biopolymers such as gelatin (a protein) and chitosan (a cationic polysaccharide) to form a dispersion, and curing the dispersion to form a microcapsule slurry (Abstract; pages 1-9, 11-13 and 20-21; Example 1; Claims 1-15). Brahm teaches the protein and polysaccharide via coacervation to form coacervate of protein-polysaccharide that can further interlock with silica (silicon precursor) to form the sol-gel microcapsule (pages 2-3).
It would have been obvious to one of ordinary skill in the art to select or incorporate a protein and a cationic polymer such as chitosan as the biopolymer in the preparation method of forming the microcapsule of Brahms, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do because Weinbreck teaches a microcapsule having a shell being formed from complex coacervation of a protein and a polysaccharide such as whey protein and chitosan, wherein the shell encapsulates an oil substance (Weinbreck: Abstract; pages 3-5). Thus, an ordinary artisan would have looked to selecting protein such as whey protein and a polysaccharide such as chitosan, per guidance from Weinbreck, and incorporate said whey protein-chitosan as the biopolymers used for forming the coacervate in microcapsule formation of Brahm, and achieve Applicant’s claimed invention with reasonable expectation of success because [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
Regarding claim 2, as discussed above, Weinbreck teaches the protein includes whey protein (Abstract; pages 3-5).
Regarding claim 3, as discussed above, Brahms and Weinbreck teach the polysaccharide includes chitosan.
Regarding claims 5 and 18, Weinbreck teaches the weight ratio of protein to polysaccharide is 2:1 (page 5, lines 1-16).
Regarding claims 7-9, Brahms teaches the silicon precursor includes tetramethyl orthosilicate, tetraethyl orthosilicate, a silica oligomer, or a combination thereof (pages 2-3, 5-6, 11, 20-21; Example 1; claims 10-11).
Regarding claim 12, there is no polyfunctional monomer added to any stages of the process of preparing the microcapsule of Brahms (Abstract; pages 1-9, 11-13 and 20-21; Example 1; Claims 1-15).
Regarding claim 16, Brahms teaches the oil material is a fragrance oil (pages 2, lines 14-18; page 4, lines 27-31; page 13, lines 10-18; claim 3).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 4, 6, 17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brahms et al (WO 2017/161361 A1) in view of Weinbreck et al (WO 2003/106014 A1), as applied to claims 1 and 3 above, and further in view of Neuman et al (WO 2020/146691 A1; filing date: 10 January 2020).
The claim interpretation applies here.
The processes of claims 1 and 3 are discussed above, said discussion being incorporated herein in its entirety.
However, Brahms and Weinbreck do not teach the chitosan is chitosan oligosaccharide of claims 4, 6, and 17.
Regarding the chitosan oligosaccharide of claims 4, 6, and 17, Neuman teaches a microcapsule formed from complex coacervation of chitosan and a (meth)acrylate material, wherein the chitosan suitable for use in coacervation us a chitosan oligosaccharide having a molecular weight from 50 to 2000 kDa (Abstract; [0016]-[0027], [0048]-[0067], [0076], and [0088]-[0089]).
It would have been obvious to one of ordinary skill in the art to incorporate the chitosan oligosaccharide as the chitosan in the preparation of microcapsule of Brahms in view of Weinbreck, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Neuman provided the guidance to do so by teaching that chitosan oligosaccharide having a molecular weight from 50 to 2000 kDa is a known chitosan suitable for use the polysaccharide in the complex coacervation process of forming microcapsule. Thus, an ordinary artisan would have looked to known chitosan material in the prior art including chitosan oligosaccharide having a molecular weight from 50 to 2000 kDa to be used as the chitosan (polysaccharide) component in the complex coacervation process performed in the preparation of microcapsule of Brahms in view of Weinbreck, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 19, Weinbreck teaches the whey protein is a whey protein isolate (pages 4-9).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brahms et al (WO 2017/161361 A1) in view of Weinbreck et al (WO 2003/106014 A1), as applied to claims 1 and 9 above, and further in view of Seok et al (US 2004/0256748 A1).
The claim interpretation applies here.
The processes of claims 1 and 9 are discussed above, said discussion being incorporated herein in its entirety.
However, Brahms and Weinbreck do not teach (3-aminopropyl)triethoxysilane as one of the silicone precursors of claim 10.
Regarding claim 10, Seok teach a silica sol-gel microcapsule formed from a mixture of silicon precursors including tetraethyl orthosilicate (TEOS) and aminopropyltrialkoxysilane such as aminopropyltriethoxysilane (Abstract; [0011]-[0037]; claims 1-3).
It would have been obvious to one of ordinary skill in the art to incorporate or use tetraethyl orthosilicate (TEOS) and aminopropyltriethoxysilane as the silicon precursors used in forming the silica sol-gel component of the shell of the microcapsule of Brahms, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Seok provided the guidance to do so by teaching that silicon precursors including tetraethyl orthosilicate (TEOS) and aminopropyltrialkoxysilane such as aminopropyltriethoxysilane are silicon precursors known to be use together in the sol-gel process of forming silica shell component of microcapsule. Thus, an ordinary artisan would have looked to known silica precursors in the prior art including tetraethyl orthosilicate (TEOS) and aminopropyltriethoxysilane to be used together as the silica precursors in the sol-gel process performed in the preparation of microcapsule of Brahms, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 11 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brahms et al (WO 2017/161361 A1) in view of Weinbreck et al (WO 2003/106014 A1), as applied to claim 1 above, and further in view of Aboshyan-Sorgho et al (WO 2020/077451 A1; filing date: 16 October 2019).
The claim interpretation applies here.
The process of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
However, Brahms and Weinbreck do not teach the long and/or medium chain silane or mixture of silanes of claims 11 and 20.
Regarding claim 11 and 20, Aboshyan-Sorgho teaches silica sol-gel microcapsule formed from mixtures of silica precursors including tetraethoxysilane (tetraethyl orthosilicate) and octadecyltriethoxysilane (Abstract; [0003]-[0026], [0041]-[0055], [0078], [0099-[00100], and [00103]-[00121]).
It would have been obvious to one of ordinary skill in the art to include octadecyltriethoxysilane as one of the silica precursors used in forming the silica sol-gel component of the shell of the microcapsule of Brahms, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Brahms teaches that mixture of silica precursor that includes tetraethyl orthosilicate can be used in forming the silica sol-gel (Brahms: pages 2-3, 5-6, 11, 20-21; Example 1; claims 10-11), and Aboshyan-Sorgho provides the guidance for using a mixture of tetraethyl orthosilicate and octadecyltriethoxysilane as the silica precursors, as tetraethyl orthosilicate and octadecyltriethoxysilane are silicon precursors known to be use together in the sol-gel process of forming silica shell component of microcapsule. Thus, an ordinary artisan would have looked to known silica precursors in the prior art including tetraethyl orthosilicate (TEOS) and octadecyltriethoxysilane to be used together as the silica precursors in the sol-gel process performed in the preparation of microcapsule of Brahms, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“[a]s recited in claim 1, the claimed process requires first forming protein-polycation complexes in a dispersing phase, using those complexes to form an oil-in-water dispersion, and subsequently forming a composite shell by incorporating one or more silicon precursors during steps (i), (ii), and/or (iii). In the claimed subject matter, the protein-polycation complex functions as the primary shell scaffold, with the silicon-based material reinforcing that scaffold. Brahms, by contrast, teaches sol-gel microcapsules in which silica is the principal wall-forming material, and does not disclose or suggest silicifying a pre-formed protein-polycation membrane (see Brahms, page 1, 11. 31-34 and pages 2, 1. 30 to page 3, 1. 2).” (Remarks, top of page 7).
In response, the Examiner disagrees. It is first noted that the process of claim 1 does not require the formation of protein-polycation complex, much less does step (i) from claim 1 require to first form a “protein-polycation complex.” It is noted that step(i) from claim 1 only require generically mixing in a dispersing phase a protein and a polycation. Thus, it is noted that the features upon which applicant relies (i.e., forming protein-polycation complex in a dispersing phase) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As discussed above in the standing 103 rejection, it is noted that Brahms teaches the protein and polysaccharide via coacervation to form coacervate of protein-polysaccharide that can further interlock with silica (silicon precursor) to form the sol-gel microcapsule (pages 2-3). Thus, Brahms does teach using a complex coacervate of protein-polysaccharide in the formation of the microcapsule.
Furthermore and contrary to Applicant’s allegation, at least the disclosure from Example 1 from Brahms teaches that an aqueous solution mixture of protein and polysaccharide is first formed before addition of the oil. As to the silica precursor, as discussed above in the Claim Interpretation, the limitation of “wherein at least one silicon precursor is added in step (i) and/or step (ii) and/or step (iii)” as recited in claim 1 was interpreted as an optional language (said recitation is not required active step), the process of claim 1 (and all claims pertaining to silicon precursor(s), e.g., claims 7, 10, and 20) will be interpreted for art rejection purpose under 103(a), as having the silicon precursor(s) present in the resultant microcapsule slurry, irrespective of when said silicon precursor(s) is/are added, or in other words, the prior art just has to have the silicon precursor(s) in the resultant microcapsule slurry. To this end, as discussed above in the standing 103 rejection, a silicon precursor (polysiloxane) was added to aqueous solution mixture of protein and polysaccharide (103 rejection, page 6 of this office action), thereby the resultant microcapsule slurry of Brahms contains silicon precursor (polysiloxane) as required by the claimed method.
Applicant alleges that “[i]n the claimed subject matter, the protein-polycation complex functions as the primary shell scaffold, with the silicon-based material reinforcing that scaffold.” However, the process of claim 1 does not require the presence of protein-polycation complex in a primary shell scaffold with the silicon-based material reinforcing that scaffold. Thus, the features upon which applicant relies (i.e., a primary shell scaffold with the silicon-based material reinforcing that scaffold) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues:
“While Weinbreck teaches complex coacervation between proteins and polysaccharides such as whey protein and chitosan, it does not disclose the use of silicon precursors, sol-gel chemistry, or the formation of a composite biopolymer/silicon shell. Weinbreck's coacervate systems are complete encapsulation systems in their own right and are not described as scaffolds intended to attract or condense silicon precursors. Nothing in Weinbreck would have motivated a person of ordinary skill in the art to modify Brahms' silica-dominant sol-gel process to first form protein-polycation complexes and then silicify those complexes as required by the claims.
[T]he Office's proposed combination relies on hindsight reconstruction using Applicant's disclosure as a blueprint. Absent Applicant's teachings, there is no disclosure or suggestion in the cited reference to combine Brahms, Weinbreck, and the additional references in the specific manner required to arrive at the claimed process.” (Remarks, page 7, paragraphs 2-4).
In response, the Examiner disagrees. The complex coacervation between protein and polysaccharide and the use of silicone precursor in the formation of microcapsule was taught by Brahms (see pages 6, 13 and 14 of this office action, said pages being incorporated in its entirety). Weinbreck was only used for teaching and providing guidance on selecting or incorporating a protein and a cationic polymer such as chitosan as the biopolymer in the preparation method of forming the microcapsule of Brahms (see 103 rejection, pages 6-7 of this office action). Thus, the combined teachings of Brahms and Weinbreck as discussed in the standing 103 rejection remain to render obvious Applicant’s claimed invention, as a motivation to combine/modify and a reasonable expectation of success in doing so was provided by the combined teachings of the cited prior arts of Brahms and Weinbreck.
As a result, for at least the reasons discussed above, claims 1-12 and 16-20 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the standing 103 rejections as set forth in this office action.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST Monday-Friday.
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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. 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://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.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.
/DOAN T PHAN/ Primary Examiner, Art Unit 1613
Prosecution Insights