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 .
Response to Amendment
Applicant amendment filed 01/16/2026 has been entered and is currently under consideration. Claims 1-3, 5-6, 8-12, and 14-24 remain pending in the application.
Election/Restrictions
Newly submitted claim 24 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 24 is included in Group III, and is withdrawn for the same reasons as in the previous office action dated 11/14/2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 24 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 5-6 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.
Claims 5-6 are rendered indefinite because they depend from canceled claim 4. Therefore it is not clear what limitations are required by the claims. For the purpose of compact prosecution, the claims have been interpreted to depend from claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-6 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 5-6 depend on canceled claim 4 and therefore fail to include all the limitations of the claim 4 upon which they depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1-3, 5-6, 8-11, 14-15, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saragnese et al. (US2021/0085607 of record) hereinafter Saragnese in view of Nakajima et al. (US2008/0061459 of record) hereinafter Nakajima and Shekunov et al. (US2006/0008531 of record) hereinafter Shekunov .
Regarding claim 1, Saragnese teaches:
A method for generating capsules (Fig 1a; [0080]) the method comprising the steps:
a. providing in first chamber a dispersed phase (Fig 1a, d: mixer 300; [0099]), the dispersed phase comprising a solution comprising a first solvent and a matrix-forming agent ([0099]), wherein the matrix-forming agent is a solid in its pure state and wherein the first solvent and the matrix-forming agent are configured such that the matrix-forming agent is soluble in the first solvent ([0080-0089, 0099, 0260-0288]; the polymer solidifies into microparticles once the solvent is removed);
b. providing in a chamber a continuous phase (Fig 1a, d: mixer 300; [0099]), the continuous phase comprising a second solvent ([0099, 0290-0291]);
wherein the first chamber and the second chamber are fluidically connected by a channel (Fig 1a, d: conduit 211; [0099]), and a dispersion outlet (Fig 1d: conduit 311; [0100]); and wherein the method further comprises:
c. guiding the dispersed phase to form an emulsion or a dispersion comprising a plurality of droplets of the dispersed phase, in the continuous phase (Fig 1a; [0080-0089, 0099-0100]);
d. removing the first solvent from the droplets of the dispersed phase and solidifying the matrix-forming agent to form a capsule (Fig 1a; [0080-0089]).
Saragnese does not explicitly recite extraction of the first solvent from the droplets of the dispersed phase into the continuous phase. However, Saragnese teaches solvent of the dispersed phase that is soluble in the continuous phase ([0290-0292]), and that microparticles are formed upon mixing of the dispersed and continuous phase ([0100]). Therefore one of ordinary skill in the art would reasonably expect extraction of the first solvent from the droplets of the dispersed phase into the continuous phase to occur in the prior art process as well.
Saragnese does not teach providing in a first chamber a dispersed phase and providing in a second chamber a continuous phase, wherein the first chamber and the second chamber are fluidically connected by two or more channels being comprised in a membrane; and wherein the second chamber comprises a dispersion outlet being arranged on a side of the second chamber which is oppositely arranged to the membrane, and guiding the dispersed phase from the first chamber through the two or more channels into the second chamber.
In the same field of endeavor regarding forming of microparticles, Nakajima teaches providing in a first chamber a dispersed phase (Fig 11: first channel 101; [0202]) and providing in a second chamber a continuous phase (Fig 11: second channel 102; [0202]), wherein the first chamber and the second chamber are fluidic connected by two or more channels being comprised in a membrane (Fig 11: through holes 7, metal substrate 10; [0202]); and wherein the second chamber comprises a dispersion outlet being arranged on a side of the second chamber which is oppositely arranged to the membrane (Fig 11, Annotated Nakajima Fig 11: pipe 13; [0202]), and guiding the dispersed phase from the first chamber through the one or more channels into the second chamber for the motivation of realizing high fine patterning accuracy, low production costs, and high durability (Fig 11; [001, 0202]).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the chamber for forming microcapsules as taught by Saragnese with the device for forming microspheres as taught by in order realize to high fine patterning accuracy, low production costs, and high durability.
Saragnese in view of Nakajima does not teach the dispersion outlet is in fluidic communication with a column. However, Saragnese teaches the dispersion outlet is in fluidic communication with a quench vessel for performing solvent extraction (Fig 1d: conduit 311, quench vessel 400; [0100]).
In the same field of endeavor regarding forming of microparticles, Shekunov teaches performing solvent extraction of an emulsion using an extraction column for the motivation of reducing processing time (Fig 1: extractor 110; [0007, 0021-0022, 0029]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the quench vessel as taught by Saragnese in view of Nakajima with the extraction column as taught by Shekunov in order to reduce processing time.
Regarding claim 2, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein the dispersed phase in step a. further comprises at least one first compound of interest ([0099]).
Regarding claim 3, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein step a. comprises dissolving the matrix-forming agent in the first solvent to provide the dispersed phase ([0099]).
Regarding claim 5, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese in view of Nakajima does not explicitly recite wherein the first solvent of the dispersed phase has a solubility of 0.1 wt.% to 40 wt.% at 25 °C and 1 atm., in the second solvent of the continuous phase. However, applicant specification discloses that a suitable solvent combination fulfilling the above limitations may be dichloromethane as the first solvent and water as the second solvent. Saragnese teaches the same first and second solvent combination ([0290-0292]). Therefore Saragnese teaches the limitations of the claim.
Regarding claim 6, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein a third solvent is added to the emulsion or dispersion formed in step c. (Fig 1a; [0085]).
Regarding claim 8, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein the dispersed phase in step a. is an emulsion of the first solvent and a fourth solvent ([0099, 0290]), further comprising at least one second surfactant ([0290, 0292]; Saragnese teaches alcohols are surfactants and that alcohols can be used in the dispersed phase).
Regarding claim 9, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein the matrix-forming agent is a polymer ([0099]).
Regarding claim 10, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein step d. is at least partially performed under continuous flow of the emulsion or dispersion formed in step c ([0015]).
Regarding claim 11, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein prior to step d. the emulsion or dispersion formed in step c. is removed from the second chamber ([0099-0101]).
Regarding claim 14, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese in view of Nakajima and Shekunov does not explicitly recite wherein step d. is performed for 0.01 min to 48 min.
However, Saragnese teaches a range of values for the residence time for extraction that overlaps with the claimed range ([0085]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the residence time as taught by Saragnese that overlaps with the claimed range.
Regarding claim 15, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese further teaches wherein after step d. the formed capsules are isolated, dried, cured and/or preserved (Fig 1a; [0089]).
Regarding claim 22, Saragnese teaches:
A method for generating capsules (Fig 1a; [0080]), the method comprising the steps:
a. providing in first chamber a dispersed phase (Fig 1a, d: mixer 300; [0099]), the dispersed phase comprising a solution comprising a first solvent and a matrix-forming agent ([0099]), wherein the matrix-forming agent is a solid in its pure state and wherein the first solvent and the matrix-forming agent are configured such that the matrix-forming agent is soluble in the first solvent ([0080-0089, 0099, 0260-0288]; the polymer solidifies into microparticles once the solvent is removed);
b. providing in a chamber a continuous phase (Fig 1a, d: mixer 300; [0099]), the continuous phase comprising a second solvent ([0099, 0290-0291]);
wherein the first chamber and the second chamber are fluidically connected by a channel (Fig 1a, d: conduit 211; [0099]), and a dispersion outlet (Fig 1d: conduit 311; [0100]); and wherein the method further comprises:
c. guiding the dispersed phase to form an emulsion or a dispersion comprising a plurality of droplets of the dispersed phase, in the continuous phase (Fig 1a; [0080-0089, 0099-0100]);
d. removing the first solvent from the droplets of the dispersed phase and solidifying the matrix-forming agent to form a capsule (Fig 1a; [0080-0089]).
Saragnese does not explicitly recite extraction of the first solvent from the droplets of the dispersed phase into the continuous phase. However, Saragnese teaches solvent of the dispersed phase that is soluble in the continuous phase ([0290-0292]), and that microparticles are formed upon mixing of the dispersed and continuous phase ([0100]). Therefore one of ordinary skill in the art would reasonably expect extraction of the first solvent from the droplets of the dispersed phase into the continuous phase to occur in the prior art process as well.
Saragnese does not teach providing in a first chamber a dispersed phase and providing in a second chamber a continuous phase, wherein the first chamber and the second chamber are fluidically connected by two or more channels being comprised in a membrane; and wherein the second chamber comprises a dispersion outlet being arranged on an axis being perpendicular to the membrane, and guiding the dispersed phase from the first chamber through the two or more channels into the second chamber.
In the same field of endeavor regarding forming of microparticles, Nakajima teaches providing in a first chamber a dispersed phase (Fig 11: first channel 101; [0202]) and providing in a second chamber a continuous phase (Fig 11: second channel 102; [0202]), wherein the first chamber and the second chamber are fluidic connected by two or more channels being comprised in a membrane (Fig 11: through holes 7, metal substrate 10; [0202]); and wherein the second chamber comprises a dispersion outlet being arranged on an axis being perpendicular to the membrane (Fig 11, Annotated Nakajima Fig 11: pipe 13; [0202]), and guiding the dispersed phase from the first chamber through the one or more channels into the second chamber for the motivation of realizing high fine patterning accuracy, low production costs, and high durability (Fig 11; [001, 0202]).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the chamber for forming microcapsules as taught by Saragnese with the device for forming microspheres as taught by in order realize to high fine patterning accuracy, low production costs, and high durability.
Saragnese in view of Nakajima does not teach the dispersion outlet is in fluidic communication with a column. However, Saragnese teaches the dispersion outlet is in fluidic communication with a quench vessel for performing solvent extraction (Fig 1d: conduit 311, quench vessel 400; [0100]).
In the same field of endeavor regarding forming of microparticles, Shekunov teaches performing solvent extraction of an emulsion using an extraction column for the motivation of reducing processing time (Fig 1: extractor 110; [0007, 0021-0022, 0029]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the quench vessel as taught by Saragnese in view of Nakajima with the extraction column as taught by Shekunov in order to reduce processing time.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saragnese in view of Nakajima and Shekunov as applied to claim 1 above, and further in view of Ma (US2022/0331769 of record).
Regarding claim 12, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Nakajima further teaches supplying a disperse phase to the first chamber at a predetermined pressure and supplying the continuous phase at a predetermined pressure ([0202]).
Saragnese in view of Nakajima and Shekunov does not explicitly recite wherein a pressure of 1.01 bar to 2.0 bar is applied to the first chamber and/or wherein a pressure of 1.02 bar to 1.2 bar is applied to the second chamber.
Saragnese in view of Nakajima and Shekunov is silent as to the pressures to pump the dispersed or continuous phases. Therefore one of ordinary skill in the art would be motivated to look to other methods of forming microparticles for the pressures at which supply the disperse and continuous phases.
In the same field of endeavor regarding forming of microparticles Ma teaches using precision pressure pumps to supply disperse and continuous phases at a pressure with a range of values that overlaps with the claimed range ([0153]; 0-4 bar).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have tried the precision pressure pumps as taught by Ma to supply the disperse and continuous phases as taught by Saragnese in view of Nakajima and Shekunov and there would be a reasonable expectation of success since Ma teaches using said pumps to supply disperse and continuous phases.
Furthermore, since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the pump pressure as taught by Ma that overlaps with the claimed range.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saragnese in view of Nakajima and Shekunov as applied to claim 1 above, and further in view of Scott et al. (US5712212) hereinafter Scott.
Regarding claim 23, Saragnese in view of Nakajima and Shekunov teaches the method of claim 1.
Saragnese in view of Nakajima and Shekunov does not teach wherein the second chamber tapers towards the dispersion outlet.
In the same field of endeavor regarding capsule production, Scott teaches an chamber having a taper providing a smooth entrance for an outlet aperture for the motivation of achieving longer aperture service-life (Fig 10: ejection chamber 90; col 9, ln 59-63; col 11, ln 61-col 12, ln 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the second chamber as taught by Saragnese in view of Nakajima and Shekunov with the taper as taught by Scott in order to achieve longer aperture service-life.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach dispersion outlet being arranged on a side of the second chamber which is oppositely arranged to the membrane and a dispersion outlet being arranged on an axis being perpendicular to the membrane. However, Fig 11 and Annotated Fig 11 of Nakajima illustrates a pipe 13 arranged on a side of second channel 102 which is oppositely arranged to metal substrate 10 and arranged on an axis being perpendicular to metal substrate 10.
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Applicant alleges differences in the prior art from the instant invention regarding the flows of the discharged droplets. However, the subject matter in discussion is not claimed in a manner which distinguishes over the prior art. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies 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 that one of ordinary skill in the art could not modify Saragnese to operate with more than one microchannel as taught by Nakajima. Applicant poses a limited interpretation of the prior art not relied upon by the office action and proceeds to argue deficiencies in said interpretation. However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As stated in the art rejection, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the chamber for forming microcapsules as taught by Saragnese with the device for forming microspheres as taught by in order realize to high fine patterning accuracy, low production costs, and high durability. This combination is distinct from modifying the apparatus of Saragnese to simply have two or more channels as in the interpretation argued against by applicant.
For at least the above reasons, the application is not in condition for allowance.
Conclusion
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 ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached at 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER A WANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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