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This action is in response to papers filed 01/16/2026 in which claim 6 was canceled; claims 7-13 and 16-17 were withdrawn; and claims 1, 14 and 15 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-5, 14 and 15 are under examination.
Withdrawn Objection/Rejection
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 Any rejection and/or objection not specifically addressed below is hereby withdrawn.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.
Claim Interpretation
Claim 3 is structured as a product-by-process. Thus, claim 3 will be interpreted and examined for art rejections purposes (102 and 103 rejections) as product-by-process type claim. MPEP §2113 (I) 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.
Maintained-Modified Rejection
Modification Necessitated by Applicant’s Claim Amendments
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) 1-5 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lei et al (WO 2020/209907 A1; previously cited) in view of Pang et al (Reactive and Functional Polymers, 2018, 123: 115-121).
The Claim Interpretation applies here.
Regarding claims 1 and 3, Lei teaches a microcapsule comprising a polymeric shell containing lignin and a polymer material such as polyurea, and an oil core containing a hydrophobic material such as insect repellant, pharmaceutical, flavor, or fragrance (Abstract; [0006]-[0010], [0021], [0047], [0049], [0058]-[0068], [0079]-[0086], [00121]-[00130], [00134]-[00136], [00143]-[00144], [00148], [00152], [00227]; Example 3; claims 1-2 and 4-6).
While Lei does not teach the lignin used in the formation of the shell of the microcapsule are lignin particles, it would have been obvious to use lignin particles as the lignin material in the polymeric shell of Lei in view of Pang.
Pang teaches microcapsule comprising a shell containing lignin particles and polyurea, and an oil core containing a pharmaceutical (a hydrophobic material) (Abstract; Introduction; pages 116-117 and 120-121).
It would have been obvious to one of ordinary skill in the art to use or incorporate lignin particles as the lignin material in the shell of Lei, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Lei and Pang are drawn to microcapsules comprising a shell wall containing lignin and polyurea, Pang provided the guidance to do so by teaching that lignin particles are advantageously used as the lignin material in shell of the microcapsule so as to form a resultant microcapsule that has improved stability and biodegradability, as well as, improved sustained-release performance. One of ordinary skill in the art would have reasonably expectation of success of incorporating lignin particles as the lignin material in the shell of Lei because the objective of Lei is also drawn to providing microcapsules exhibit controlled release of the active material, as well as, microcapsules that are stable and biodegradable (Lei: [0006]-[0009], [0021], [00107], [00135]-[00136], [00142], [00144], [00153], and [00168]). Thus, an ordinary artisan provided the guidance from Pang, would have looked to using lignin particles as the lignin material in the shell of Lei so as to provide a resultant microcapsule that is stable, biodegradable and has controlled-release performance, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 2, Pang teaches the use of lignin particles (Abstract; pages 116-117 and 120-121) and thus, the lignin particles of Pang are not chemically modified.
Regarding claim 4, as discussed above, Lei and Pang teaches the shell of the microcapsule includes polyurea.
Regarding claim 5, Lei teaches the shell contains up to 25% by weight of a polymeric material, based on the total weight of the microcapsule ([0075]-[0077]). Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amount of polymeric material in the polymeric shell would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 14 and 15, Lei teaches consumer product containing the microcapsule, wherein the consumer product includes fabric softener, detergent, AP/deodorant , fine, personal care leave on, personal care rinse off, or home care product ([0006]-[0007], [0084] and [00168]-[00171]).
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 in art the 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 01/16/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Lei does not disclose or suggest the microcapsules comprising a polymeric shell
comprising lignin particles as claimed. Lignin particles as claimed and native lignin in Lei differ in terms of form, composition, purity, chemical properties, and applications. As understood by those of ordinary skill in the art, lignin particles are processed and purified versions of native lignin with more diverse industrial uses compared to native lignin. The difference between lignin particles as claimed and native lignin as in Lei can in particular seen in its properties such as the lignin particles as claimed are insoluble in water and can form an oil-in-water Pickering emulsion (O/W-Pickering emulsion) with the lignin particles stabilizing the oil-water interface whereas native lignin used in Lei are soluble in water and cannot form an O/W-Pickering emulsion.” (Remarks, page 7, 2nd paragraph).
In response, the Examiner disagrees. The 103 rejection is based on the combined teachings of Lei and Pang. As discussed in the standing 103 rejection, Pang teaches the lignin particles and provide the guidance for using lignin particles as the lignin material in the shell of Lei. See 103 rejection, pages 4-5 of this office action. It is noted that Pang also teaches that lignin particles are known to form oil-in-water Pickering emulsion, thereby lignin particles are advantageously used as the lignin material in shell of the microcapsule so as to form a resultant microcapsule that has improved stability and biodegradability, as well as, improved sustained-release performance. See 103 rejection, page 5 of this office action.
Applicant argues:
“Neither Lei nor Pang discloses or suggests the claimed core-shell microcapsule
comprising a lignin particle-based shell. As discussed above, Lei fails to disclose lignin particles or a Pickering emulsion-based shell structure, and Pang does not teach or suggest modifying Lei's soluble-lignin, polymeric shell system to employ lignin particles as interfacial stabilizers. Pang therefore does not remedy the deficiencies of Lei, nor does it provide a teaching or suggestion to arrive at the claimed core-shell microcapsule.
[A]bsent impermissible hindsight, a person of ordinary skill in the art would not have been motivated to combine Lei with Pang to arrive at the claimed microcapsule. Incorporating lignin particles into Lei's system would fundamentally alter the mechanism of microcapsule formation, shifting from a polymeric shell formed using soluble lignin to a particle- stabilized Pickering emulsion system. Such a modification would not represent a routine substitution and would not have provided a reasonable expectation of success in achieving the claimed microcapsule structure and performance.” (Remarks page 7, last paragraph to page 8).
In response, the Examiner disagrees. The standing 103 rejection over the combined teachings of Lei and Pang is not based on impermissible hindsight because "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
Both Lei and Pang are drawn to core-shell microcapsules (Lei: Abstract, [0006]; Pang: Abstract, pages 116-117), and as discussed above, Pang teaches the lignin particles and provide the direct guidance for using lignin particles as the lignin material in the shell of Lei. See 103 rejection, pages 4-5 of this office action. Furthermore, as discussed above, Pang also teaches that lignin particles are known to form oil-in-water Pickering emulsion, thereby lignin particles are advantageously used as the lignin material in shell of the microcapsule so as to form a resultant microcapsule that has improved stability and biodegradability, as well as, improved sustained-release performance. Thus, the prior art of Pang already recognized the advantage of using lignin particles in the formation of the shell of microcapsule. There is no mechanism change as alleged by Applicant, as both Lei and Pang are drawn to core-shell microcapsules. As such, the combined teachings of Lei and Pang are proper to render obvious Applicant’s claimed invention because the obviousness analysis used knowledge gleaned only from the teachings of the cited prior arts, and such reconstruction using the combined teachings of Lei and Pang is indeed proper.
As a result, for at least the reason discussed above, claims 1-5, 14 and 15 remain rejected as being obvious and unpatentable over the combined teachings of Lei and Pang in the standing 103 rejection as set forth in this office action.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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