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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a 371 of PCT/EP22/66896 filed 06/21/2022.
This application also claims foreign benefit of EPO EP21182007.1 filed 06/28/2021.
Accordingly, claims 1-20 of this application are afforded the effective filing date of 06/28/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2023 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Election/Restrictions
Applicant’s election of Group I, claims 1-10 and 14-20, drawn to a process for preparing a polyamide-based core-shell microcapsule, in the reply filed on 10/24/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant also elected ethylene diamine as the species of amino-compound A, 1,3,5-benzene tricarbonyl chloride as the species of acyl chloride A, hydroxyethyl cellulose as the species of carbohydrate, L-lysine as the species of amino-compound B, and adipoyl chloride as the species of acyl chloride B.
However, upon further consideration, the Examiner hereby withdraws the elected of species requirement and extends search to all species of amino-compound A, acyl chloride A, carbohydrate, amino-compound B, and acyl chloride B.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/24/2025.
Status of the Claims
Claims 1-20 are pending in this instant application, of which claims 11-13 are withdrawn at this time as being drawn to non-elected group/invention.
Claims 1-10 and 14-20 are examined herein on the merits for patentability.
Claim Interpretation
It is noted that the following recitations of:
“wherein at least one amino-compound A is added in the water phase before the formation of the oil- in-water emulsion and/or in the oil-in water emulsion obtained after step b)” of claim 1;
“wherein a polyfunctional monomer is added in the oil phase” of claim 4;
“wherein the acyl chloride A and/or an acyl chloride B that is a polyfunctional monomer added in the oil phase is a compound of formula (I) …” of claim 5;
“wherein a stabilizer is added in the oil phase and/or in the water phase” of claim 7;
“wherein at least one amino- compound B and/or a base is added in the water phase before the formation of the oil-in- water emulsion” of claim 8;
“wherein a polyfunctional monomer is added in the oil phase, wherein the polyfunctional monomer is selected from the group consisting of at least one polyisocyanate, poly maleic anhydride, acyl chloride,polyepoxide, acrylate monomers, polyalkoxysilane and mixtures thereof” of claim 17;
“wherein a polyfunctional monomer is added in the oil phase, wherein the polyfunctional monomer is an acyl chloride B” of claim 18; and
“wherein a stabilizer is added in the water phase” of claim 19,
are not active steps.
It is noted that the claimed invention is drawn to a process of preparing a polyamide-based 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 and where the amino-compound A, the polyfunctional monomer, the acyl chloride A and/or an acyl chloride B that is a polyfunctional monomer, the stabilizer, and the at least one amino- compound B and/or a base of claims 1, 4-5, 7-8, and 17-19, respectively, 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, 4-5, 7-8, and 17-19 (and all claims dependent therefrom, respectively) will be interpreted for art rejection purposes under 102 and 103(a), as having the amino-compound A, the polyfunctional monomer, the acyl chloride A and/or an acyl chloride B that is a polyfunctional monomer, the stabilizer, and the at least one amino- compound B and/or a base (respectively of claims 1, 4-5, 7-8, and 17-19) present in the resultant microcapsule slurry, irrespective of when and where the amino-compound A, the polyfunctional monomer, the acyl chloride A and/or an acyl chloride B that is a polyfunctional monomer, the stabilizer, and the at least one amino- compound B and/or a base of claims 1, 4-5, 7-8, and 17-19, respectively, are added, or in other words, the prior art just has to have the amino-compound A, the polyfunctional monomer, the acyl chloride A and/or an acyl chloride B that is a polyfunctional monomer, the stabilizer, and the at least one amino- compound B and/or a base 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 step (b), insert active step of “c) adding at least one amino-compound A in the water phase before the formation of the oil-in-water emulsion and/or adding at least one amino-compound A in the oil-in-water emulsion obtained after step b).” If Applicant intends to amend claim 1 as suggested above, please also amend currently reciting step “c) performing …” to “step d) performing…”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-10, 14-15, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Elabbadi et al (WO 2020/127749 A1; previously cited).
The Claim Interpretation applies here.
Regarding claim 1, Elabbadi teaches a process for preparing a polyamide core-shell microcapsule slurry comprising a) dissolving at least one acyl chloride and at least one stabilizer in a hydrophobic material to form an oil phase; b) dispersing the oil phase obtained in step a) into a water phase containing an amino compound A to form an oil-in-water emulsion; and c) performing a curing step to form polyamide microcapsules in the form of a slurry (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16). Elabbadi teaches the stabilizer is selected from gum Arabic (a polysaccharide), modified starch (a polysaccharide), carboxymethylcellulose (a modified cellulose), anionic polysaccharide, or mixtures thereof (pages 27-28; claim 9). It is noted that gum Arabic (a polysaccharide), modified starch (a polysaccharide), carboxymethylcellulose (a modified cellulose), and anionic polysaccharide as taught in Elabbadi meets the claimed “carbohydrate.”
Furthermore, Elabbadi teaches the an oil phase is formed by admixing at least one hydrophobic material with at least one acyl chloride and a stabilizer, wherein the stabilizer and acyl chloride can be premixed and heated at a temperature between 10°C and 80°C before mixing with the hydrophobic material (pages 4-5 and 27). Thus, the heated premix of the stabilizer and acyl chloride meets the claimed “the functionalized carbohydrate is a reaction product between an acyl chloride A with a carbohydrate.”
Regarding claim 2, as discussed above, Elabbadi teaches Elabbadi teaches the stabilizer is selected from gum Arabic (a polysaccharide), modified starch (a polysaccharide), carboxymethylcellulose (a modified cellulose), anionic polysaccharide, or mixtures thereof.
Regarding claim 3, as discussed above, Elabbadi teaches carboxymethylcellulose (a modified cellulose) as a suitable stabilizer.
Regarding claim 4, Elabbadi teaches polyisocyanate (a polyfunctional monomer) is added in the oil phase (pages 5-6).
Regarding claim 5, as discussed above, Elabbadi teaches an acyl chloride was added in the oil phase. Elabbadi teaches the acyl chloride is chosen in the group consisting of benzene-1, 3, 5-tricarbonyl chloride, benzene- 1,2, 4-tricarbonyl trichloride, benzene- 1,2,4,5-tetracarbonyl tetrachloride, cyclohexane- 1, 3, 5-tricarbonyl trichloride, isophthalyol dichloride, diglycolyl dichloride, succinic dichloride, and mixtures thereof (pages 4-5; claim 3).
Regarding claim 6, Elabbadi teaches the amino compound A is selected from the group consisting of L-Lysine, L- Lysine ethyl ester, 3-aminopropyltriethoxy silane and mixtures thereof (pages 28-29; claims 5-8).
Regarding claim 7, as discussed above, a stabilizer was added in the production of the polyamide core-shell microcapsule slurry.
Regarding claim 8, Elabbadi teaches an amino compound B and/or a base is added to water phase before the formation of the oil-in-water emulsion (pages 4 and 29-30; claims 1-9).
Regarding claim 9, Elabbadi teaches the base is selected from the group consisting sodium carbonate, sodium bicarbonate, sodium hydroxide, and mixtures thereof (page 29; claim 4).
Regarding claim 10, Elabbadi teaches the amino compound B include L-lysine (an amino acid) (pages 28-29; claim 7).
Regarding claim 14, Elabbadi teaches the hydrophobic material is a perfume (page 4 and 6-7; claims 1-2).
Regarding claim 15, as discussed above, Elabbadi teaches the an oil phase is formed by admixing at least one hydrophobic material with at least one acyl chloride and a stabilizer, wherein the stabilizer and acyl chloride can be premixed and heated at a temperature between 10°C and 80°C before mixing with the hydrophobic material (pages 4-5 and 27). Elabbadi teaches the stabilizer is selected from gum Arabic (a polysaccharide), modified starch (a polysaccharide), carboxymethylcellulose (a modified cellulose), anionic polysaccharide, or mixtures thereof (pages 27-28; claim 9). Thus, the heated premix of the stabilizer and acyl chloride meets the claimed “the functionalized carbohydrate is a reaction product between an acyl chloride A with a polysaccharide.”
Regarding claim 17, as discussed above, Elabbadi teaches polyisocyanate is added in the oil phase.
Regarding claim 18, Elabaddi teaches the at least one acyl chloride is a mixture of acyl chlorides (pages 4-5; claim 3).
Regarding claim 19, as discussed above, a stabilizer was added in the production of the polyamide core-shell microcapsule slurry.
Regarding claim 20, as discussed above, Elabbadi teaches the amino compound B include L-lysine.
As a result, the aforementioned teachings from Elabbadi are anticipatory to claims 1-10, 14-15, and 17-20 of the instant invention.
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) 1-10 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elabbadi et al (WO 2020/127749 A1; previously cited), and further in view of Goldstein et al (US 2016/0008237 A1).
The Claim Interpretation applies here.
The processes of claims 1-10, 14-15, and 17-20 are discussed above, said discussion being incorporated herein in its entirety.
However, Elabbadi does not teach the polysaccharide is a modified cellulose selected from the group consisting of hydroxyethyl cellulose and hydroxypropyl cellulose of claim 16.
Regarding claim 16, Goldstein teaches a process of producing microcapsule comprising mixing a solution containing a hydrophobic material (sunscreen agent), a wall forming polymeric material including hydroxypropyl cellulose, and an organic solvent to form a homogenous solution (oil phase); mixing the homogenous solution with an aqueous solution (water phase) to form an emulsion; and heating the emulsion to form the microcapsule (Abstract; [0012]-[0025], [0051]-[0077], [0093] and [0144]-[0152]).
It would have been obvious to one of ordinary skill in the art to include hydroxypropyl cellulose as one of the wall forming polymeric material in the oil phase of Elabbadi, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Goldstein provides the guidance to do so by teaching that hydroxypropyl cellulose is a suitable wall forming polymeric material to form microcapsule, as the use of hydroxypropyl cellulose forms a stabilized shell layer that has a non-breakable feature (Goldstein: [0074]). Thus, an ordinary artisan seeking to provide a stable microcapsule with non-breakable feature would have looked to including hydroxypropyl cellulose as one of the wall forming polymeric material in the oil phase of Elabbadi, 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.
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).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7 and 9-10 of copending Application No. 17312749 (reference application) in view of Elabbadi et al (WO 2020/127749 A1; previously cited).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘749 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule, wherein the polyamide microcapsule comprises a polyamide shell comprising at least one acyl chloride, a first amino compound, a second amino compound and a stabilizer, wherein the processes comprises the steps of dissolving at least one acyl chloride and stabilizer in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase comprising a first amino compound to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a second amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed.
While the claims in the instant application is silent with a protein as the stabilizer, it would have been obvious to incorporate a protein as a stabilizer in the oil phase in view of the guidance from Elabaddi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 17312749 in view of Elabaddi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-19 of copending Application No. 17416379 (reference application) in view of Elabbadi et al (WO 2020/127749 A1; previously cited).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘379 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride and stabilizer in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase comprising a first amino compound to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a second amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed, and wherein the first amino compound include amino acid such as L-lysine.
While the instant claims is silent with respect to the weight ratio of first amino compound and second amino compound being between 1.3:1 and 25:1, it would have been obvious to routine optimize the weight ratio of first amino compound and second amino compound of the instant claims to a weight ratio of between 1.3:1 and 25:1 in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 17416379 in view of Elabbadi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17802518 (reference application) in view of Elabbadi et al (WO 2020/127749 A1; previously cited).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘518 significantly overlap with the subject matter of the instant claims i.e., the claims in the instant application and the claims in the copending application ‘518 being substantially same polyamide core-shell microcapsule produced by the process of dissolving at least one acyl chloride and stabilizer in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase comprising a first amino compound to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein a second amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed, and wherein the first amino compound include amino acid such as L-lysine.
It would have been obvious to include an acyl chloride chosen from the group consisting of benzene-1, 3, 5-tricarbonyl chloride, benzene- 1,2, 4-tricarbonyl trichloride, benzene- 1,2,4,5-tetracarbonyl tetrachloride, cyclohexane-1,3, 5-tricarbonyl trichloride, isophthalyol dichloride, diglycolyl dichloride, succinic dichloride, and mixtures thereof, as the acyl chloride in the instant claims and arrive at the claims of copending application ‘518 in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 17802518 in view of Elabaddi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18290365 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘365 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride and a carbohydrate in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein at least one amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18290365
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18578404 (reference application) in view of Elabbadi et al (WO 2020/127749 A1; previously cited).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘404 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride in a hydrophobic material to form an oil phase; dispersing the oil phase into a water phase to form an oil-in-water emulsion, and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein at least one amino compound is added in the water phase before the formation of the oil-in-water emulsion and/or after the oil-in-water emulsion is formed.
While the process of the instant claims do not contain a protein or a crosslinker, it would have been obvious to incorporate a protein in the oil phase, as well as, a crosslinker such as an amine compound in the water phase in view of the guidance from Elabbadi (Abstract; pages 2-7, 27-32, and 43-48; claims 1-16).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18578404 in view of Elabbadi.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19138430 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘430 significantly overlap with the subject matter of the instant claims i.e., processes of preparing a polyamide core-shell microcapsule slurry comprising dissolving at least one acyl chloride in a hydrophobic material such as a perfume to form an oil phase; dispersing the oil phase into a water phase (a dispersing phase) to form an oil-in-water emulsion (a two-phases dispersion), and performing a curing step to form polyamide microcapsule in the form of a slurry, wherein at least one amino compound such as lysine is added in the water phase (dispersion phase) before the formation of the oil-in-water emulsion (two-phases dispersion) and/or after the oil-in-water emulsion (two-phases dispersion) is formed.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 19138430.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
Pertinent prior art: US 6,500,447 (Dexter et al), disclosing polyamide microcapsule and process of producing polyamide microcapsule using polyacid halide and a polyamine (Abstract; columns 2-7; claims 1-9).
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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