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This action is in response to papers filed 03/04/2026 in which claims 6 and 7 were canceled; claims 12-15 were withdrawn; and claims 1, 4-5, 10-11 and 18-20 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-5, 8-11 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Withdrawn Objections/Rejections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 Any rejection and/or objection not specifically addressed below is hereby withdrawn.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 Objection
Claim Objections
Claim 4 is objected to because of the following informalities: please remove “(PETIA)” in line 15 of claim 4, as this is not the acronym of pentaerythritol triacrylate. Appropriate correction is required.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112
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.
Claim 17 is 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.
Claim 17 is not further limiting from claim 1 because the recitation of “the multifunctional nucleophile monomer is a silane comprising at least one nucleophilic group selected from the group consisting of thiol, amine, and acetoacetate” as recited in claim 17 has broadened from the scope of “the multifunctional nucleophile monomer is a silane comprising at least one nucleophilic group selected from the group consisting of thiols and acetoacetates” as recited in claim 1.
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.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 8-10, and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ribaut et al (US 2016/0168507 A1).
Regarding claims 1-4, Ribaut teaches a method of producing a microcapsule dispersion (slurry) comprising (i) preparing an oil phase by mixing a fragrance and monomers including a polyethylenically unsaturated monomer such as 1,4-butylene glycol dimethacrylate, and a silane compound such as methacryloxypropyltrimethoxysilane or mercaptopropyltrimethoxysilane, to form a homogenous oil phase; (ii) preparing an aqueous solution (aqueous phase) containing a stabilizer such as polyvinyl alcohol; and apply condition sufficient to form a crosslinked polymeric shell via polymerization of the monomers (Abstract; [0005]-[0058], [0112]-[0153], [0172], [0186]-[0226]; claims 1-16). Ribaut teaches the polymerization reaction of the monomers is via free-radical polymerization that include the presence of free-radical initiators ([0050], [0058], [0066], [0074], [0186]-[0226]; claim 14). It is noted that a silane compound such as methacryloxypropyltrimethoxysilane or mercaptopropyltrimethoxysilane as taught in Ribaut meets the claimed multifunctional nucleophile monomer as recited in claim 1. It is noted that a polyethylenically unsaturated monomer such as 1,4-butylene glycol dimethacrylate as taught in Ribaut meets the claimed multifunctional (meth)acrylate monomer of claims 2 and 4, as well as, the claimed “multifunctional vinyl monomer” of claim 3.
Regarding claims 8 and 17, as discussed above, Ribaut teaches the oil phase contains a silane compound such as mercaptopropyltrimethoxysilane, thereby meeting the claimed multifunctional nucleophilic monomer of claims 8 and 17.
Regarding claim 9, as discussed above, Ribault teaches the aqueous phase contains a stabilizer such as polyvinyl alcohol.
Regarding claim 10, Ribaut teaches the polymerization reaction of the monomers is via free-radical polymerization that include the presence of free-radical initiators ([0050], [0058], [0066], [0074], [0186]-[0226]; claim 14).
Regarding claim 16, as discussed above, Ribaut teaches the oil phase contains a fragrance.
Regarding claim 18, as discussed above, Ribault teaches the aqueous phase contains a stabilizer such as polyvinyl alcohol.
As a result, the aforementioned teachings from Ribaut are anticipatory to claims 1-4, 8-10, and 16-18 of the instant invention.
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Ribaut expressly discloses that its polymeric shell is formed from a blend of i) 20-75 wt% of a first component (e.g., a monoethylenically unsaturated monomer), ii) 20-70 wt% of a second component (e.g., a monoethylenically unsaturated monomer from a particular group of esters and amides), and iii) 0.01-10 wt% of a silane compound (see, e.g., claim 1). Ribaut also further expressly discloses that its silane compound is a chain transfer agent (see Paragraphs [0125]-[0127]). This chain transfer agent is not a crosslinker, but rather, controls the polymerization reaction. In contrast, component (ii) of Ribaut is expressly disclosed as a crosslinker (see Paragraph [0111]). Thus, the process of Ribault results in a singly cross-linked polymeric shell. In contrast, the present claims recite applying conditions to form a dual cross- linked polymeric shell via the polymerization of the multifunctional ethylenically unsaturated monomer, and the reaction between the multifunctional ethylenically unsaturated monomer and a multifunctional nucleophile monomer.” (Remarks, page 8).
In response, the Examiner disagrees. To the extent the silane compound in Ribault is identified as a chain transfer agent, the silane compound such as methacryloxypropyltrimethoxysilane or mercaptopropyltrimethoxysilane, structurally meets the claimed multifunctional nucleophilic monomer as recited in claim 1. Likewise, the polyethylenically unsaturated monomer such as 1,4-butylene glycol dimethacrylate as taught in Ribaut structurally meets the claimed multifunctional (meth)acrylate monomer as recited in claim 1. As discussed above in the standing 102 rejection, all the required steps of the claimed process have been taught by Ribault, particularly the claimed polymerization step (e) have also been taught in Ribaut, as Ribault teaches polymerization reaction of the monomers is via free-radical polymerization that include the presence of free-radical initiators. Since the claimed step (e) has been met by Ribaut, the resultant polymeric shell formed in Ribaut would be a dual cross-linked polymeric shell.
As a result, for at least the reason discussed above, claims 1-4, 8-10, and 16-18 remained anticipated by the teachings from Ribault in the standing 102 rejection as set forth in this office action.
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, 8, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ribaut et al (US 2016/0168507 A1).
The method of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Assuming arguendo that the aforementioned teaching from Ribaut does not anticipate instant claims 8 and 17, said claims 8 and 17 alternatively would be considered obvious under the meaning of 35 USC 103(a) because Ribaut teaches mercaptopropyltrimethoxysilane (a silane compound having a thiol group) from a short list of silane compounds ([0126]-[0136]). Thus, it would have been obvious to one of ordinary skill in the art to select mercaptopropyltrimethoxysilane as the silane compound and arrive at Applicant’s claimed multifunctional nucleophile monomer, as recited in claims 6, 8 and 17, respectively. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because as discussed above, Ribaut taught mercaptopropyltrimethoxysilane from a short list of known silane compounds used for polymerization reaction with a multifunctional ethylenically unsaturated monomer in the oil phase to form polymeric shell of a microcapsule, and thus, [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.).
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) 1-4, 8-11, and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ribaut et al (US 2016/0168507 A1).
The methods of claims 1-4, 8-10, and 16-18 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 11, 19, and 20, Ribaut teaches the polymeric shell include a polymerized form of a blend comprising between 20% to 70% by weight of the polyethylenically unsaturated monomer based on the combined weight of the blend and between 0.01% and 10% by weight of a silane compound such as mercaptopropyltrimethoxysilane (a silane compound having a thiol group) based on the combined weight of the blend ([0013]-[0019], [0023]-[0049] and [0112]-[0153]; claim 1).
It would have been obvious to one ordinary skill in the art to optimize the functional equivalence ratio of (meth)acrylate groups or vinyl groups to thiol groups to a ratio range as recited in claims 11, 19 and 20, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Ribaut teaches the polymeric shell include a polymerized form of a blend comprising between 20% to 70% by weight of the polyethylenically unsaturated monomer based on the combined weight of the blend and between 0.01% and 10% by weight of a silane compound such as mercaptopropyltrimethoxysilane (a silane compound having a thiol group) based on the combined weight of the blend, which are ranges that overlaps the claimed ranges of higher than 1:1, higher than 2:1, and higher than 4:1, respectively of claims 11, 19 and 20. 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 functional equivalence ratio of (meth)acrylate groups or vinyl groups to thiol groups to achieve a desired excess of (meth)acrylate groups or vinyl groups would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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) 1-5, 8-10, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ribaut et al (US 2016/0168507 A1), and further in view of Steinbrenner et al (US 2016/0057995 A1).
The methods of claims 1-4, 8-10, and 16-18 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 5, Steinbrenner teaches microcapsules comprising a core containing a hydrophobic material, and a polymeric shell, wherein the polymeric shell is formed from polyfunctional monomers including polyethylenically unsaturated monomers selected from the group consisting of butanediol diacrylate, trimethylolpropane triacrylate, trimethylolpropane trimethacrylate, pentaerythritol triallyl ether, pentaerythritol triacrylate and pentaerythritol tetraacrylate, and wherein the polymeric shell is formed via free-radical polymerization (Abstract; [0008], [0011], [0056]-[0081]).
It would have been obvious to one of ordinary skill in the art to select and incorporate pentaerythritol triallyl ether as the polyethylenically unsaturated monomer in the formation of the polymeric shell of the microcapsule from Ribaut, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Steinbrenner provided the guidance to do so by teaching that aside from butanediol diacrylate, trimethylolpropane triacrylate, trimethylolpropane trimethacrylate, pentaerythritol triacrylate and pentaerythritol tetraacrylate, an allyl ether such as pentaerythritol triallyl ether is also suitable as the polyethylenically unsaturated monomer for forming the polymeric shell via free-radical polymerization. One of ordinary skill in the art would have reasonable expectation of success in doing so because Ribaut and Steinbrenner are commonly drawn to microcapsules with reduced leakage of encapsulated materials, wherein the polymeric shell of the microcapsule is formed via free-radical polymerization of polyfunctional monomers including polyethylenically unsaturated monomers (Ribaut: Abstract; [0005]-[0058], [0112]-[0153], [0172], [0186]-[0226]; claims 1-16; Steinbrenner: Abstract; [0008], [0011], [0056]-[0081]), and thus, [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.). As such, an ordinary artisan would have looked to selecting pentaerythritol triallyl ether form a list of known polyethylenically unsaturated monomers used for forming the polymeric shell via free-radical polymerization and incorporate said pentaerythritol triallyl ether as the polyethylenically unsaturated monomer in the formation of the polymeric shell of the microcapsule from Ribaut with reasonable expectation of arriving at microcapsules with reduced leakage of encapsulated materials, 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 03/04/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Ribaut is distinct from the present claims at least because it recites a different final polymeric shell and corresponding process. A skilled person without hindsight would not have fundamentally altered both the process and final product of Ribaut. There is no teaching, suggestion, motivation, or other reason in Ribaut to make such modifications. Impermissible hindsight would have been required.” (Remarks, plage 9, 1st paragraph).
In response, the Examiner disagrees. As discussed above, the teachings from Ribault remained to anticipate independent claim 1. See pages 4-6 of this office action, said pages being incorporated herein in its entirety. Thus, as discussed above and contrary to Applicant’s allegation, the polymeric shell of Ribaut is indeed a dual cross-linked polymeric shell.
Applicant argues:
“Steinbrenner does not the cure the deficiencies of Ribaut at least because Steinbrenner does not teach or suggest all the elements of the present claims and has not been cited for such.” (Remarks, bottom of page 9).
In response, the Examiner disagrees. As discussed above, the teachings from Ribault remained to anticipate independent claim 1. See pages 4-6 of this office action, said pages being incorporated herein in its entirety. Thus, as discussed above and contrary to Applicant’s allegation, the polymeric shell of Ribaut is indeed a dual cross-linked polymeric shell.
Steinbrenner was used for teaching and rendering obvious the multifunctional vinyl monomer of dependent claim 5, and thereby is maintained for the reason of record.
As a result, for at least the reasons discussed above, claims 1-5, 8-11 and 16-20 stand rejected as being anticipated and/or obvious over the teachings of the cited prior art(s) in the standing 102 and 103 rejections, respectively, 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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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