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 .
Status of the Claims
Claims 1-16 are pending and under current examination.
Claim Objections
Claims 2-9 and 16 are objected to because of the following informalities:
Claim 2 recites “…the nanocapsule according to claim 1, comprising at least one organic solvent and/or at least one long-chain triacylglycerol and/or at least one organic phase surfactant”. The organic solvent, long-chain triacylglycerol, and organic phase surfactant are not required by the independent claim so it is suggested to amend claim 2 to read “…the nanocapsule according to claim 1, further comprising at least one organic solvent and/or at least one long-chain triacylglycerol and/or at least one organic phase surfactant”.
Claim 5, line 3 recites “…carrageenan agar, …”. This is a clear typographical error and should be amended to read “…carrageenan, agar…”.
Claim 7 , line 4 recites “…exane...”. This is a clear typographical error and should be amended to read “…hexane…”.
Claims 2-9 recite “The Nanocapsule…”. The capitalization of “Nanocapsule” is unnecessary and should be amended to read “The nanocapsule…”.
Claim 16 recites “Nano spray dryer”. The capitalization of “Nano” is unnecessary and should be amended to read “nano spray dryer”.
Appropriate correction is required.
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 1-9, 11, 12, 15, and 16 are 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.
Claim 1 does not recite a transitional phrase, thus it is impossible to define the scope of the claim. See MPEP 2111.03.
Claim 3 recites “…a concentration of 1.0 g/mL to 5.0 g/mL”. This renders the claim indefinite because it is not clear to which volume the concentration is relative to.
Claim 3 currently recites the phrase “the group comprising”. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. and MPEP 2173.05(h). Please refer to MPEP 2173.05(h) for examples of proper Markush language: When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Amending the claims to recite “the group consisting of” would obviate the rejection.
Claim 4 recites “…a concentration of 0.5% to 2.5% by volume…”. This renders the claim indefinite because it is not clear to which volume the concentration is relative to.
Claim 5 recites “…wherein the emulsifier has a concentration of 0.1 g/mL and 10 g/mL…”. This renders the claim indefinite because it is not clear to which volume the concentration is relative.
Claim 5 recites “…a concentration of 0.1 g/mL and 10 g/mL…”. This renders the claim indefinite because it is not clear how the emulsifier may have a concentration of both 0.1g/mL and 10 g/mL. This rejection may be obviated by amending the claim to read “…a concentration of 0.1 g/mL to 10 g/mL…”.
Claim 6 recites “…wherein the distilled water has a concentration of 100mL to 300mL in the total volume of the nanocapsule”. This renders the claim indefinite because it is not clear how a nanocapsule could contain 100-300mL in volume.
Claim 7 recites “…wherein the organic solvent has a concentration of 0.1g/mL to 10g/mL…”. This renders the claim indefinite because it is not clear to which volume the concentration is relative.
Claim 8 recites “…wherein the long-chain triacylglycerol has a concentration of 0.1g/mL to 10g/mL…”. This renders the claim indefinite because it is not clear to which volume the concentration is relative.
Claim 8 contains the trademark/trade name “miritol”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a long-chain triacylglycerol and, accordingly, the identification/description is indefinite.
Claim 9 recites “…wherein the surfactant has a concentration of 0.1g/mL to 10g/mL…”. This renders the claim indefinite because it is not clear to which volume the concentration is relative.
Claim 9 recites the limitation “…wherein the surfactant has a concentration…”. There is insufficient antecedent basis for this limitation in the independent claim 1.
Claim 11 recites “…1 g/mL to 5 g/mL of natural or synthetic polymer, 0.5% to 2.5% by volume of crude rosewood essential oil, 0.1 g/mL to 10 g/mL of emulsifier…”. This renders the claim indefinite because it is not clear to which volume the concentrations are relative.
Claim 11 recites “…0.1 g/mL and 10 g/mL of emulsifier…”. This renders the claim indefinite because it is not clear how the emulsifier may have a concentration of both 0.1g/mL and 10 g/mL. This rejection may be obviated by amending the claim to read “…a concentration of 0.1 g/mL to 10 g/mL…”.
Claim 12, recites “the oily (aqueous) phase is heated…”. This renders the claim indefinite because it is not clear if the phrase “oily (aqueous) phase” refers to the oily or aqueous phases alone or as a mixture.
Claim 12 recites “…when homogenization occurs by means of a vortex…” and “…when homogenization occurs by means of phase inversion…”. These are conditional limitations and it is therefore unclear if homogenization is required by the claim.
Claim 12 recites the limitation "the components" in line 5. There is insufficient antecedent basis for this limitation in the claim because it is not clear to which components of the independent claim 10 the limitation refers.
Claim 15 recites “…40 to 47mm mesh paper filters”. This renders the claim indefinite because it is not clear if the “40 to 47mm” limitation refers to the size (i.e. diameter) or mesh of the paper filters.
Claim 16 recites “…a drying time of the nanocapsules equivalent to 1.30 hours per 100mL of solution and 2 hours per 200mL of solution”. This renders the claim indefinite because it is unclear how the drying time can be equivalent to both 1.3 hr./100mL of solution and 2 hr./ 200mL of solution.
Claim 16 recites “…with a temperature of 100oC and 200oC…”. This renders the claim indefinite because it is not clear which component of the process or nano spray dryer must be within the claimed temperature range.
Claim 16 contains the trademark/trade name “Nano spray dryer”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a nano spray dryer apparatus and, accordingly, the identification/description is indefinite. This rejection could be obviated by amending the claim to make it clear that the limitation refers to the type of instrument and not to a specific brand, as in “…a nano spray dryer apparatus…”.
Regarding claim 2, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Salvia-Trujillo (Food Hydrocolloids, pg. 547-556, publication year: 2015).
Regarding claim 1, Salvia-Trujillo discloses coarse emulsions containing rosewood essential oil stabilized with Tween 80 and sodium alginate prepared by high shear homogenization. Nanoemulsions are obtained by microfluidization of the coarse emulsions (pg. 547, Abstract). The samples are prepared using ultra-pure water obtained from a Mili-Q filtration system (pg. 548, 2.1 Primary emulsion formation). The Examiner considers the term “ultra-pure water” to read on the “distilled water” limitation of the instant claim 1.
Regarding claim 3, Salvia-Trujillo discloses that sodium alginate is dissolved in hot water at 1% w/v (pg. 548, 2.1 Primary emulsion formation).
Regarding claim 4, Salvia-Trujillo discloses that rosewood essential oil is added at a concentration of 1% v/v (pg. 548, 2.1 Primary emulsion formation).
Regarding claim 5, Salvia-Trujillo discloses that Tween 80 is added at a concentration of 1% v/v (pg. 548, 2.1 Primary emulsion formation).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Moaseri (U.S. Patent No. 10,945,953, issue date: 3/16/2021).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Moaseri teaches a particle that may be less than 50 nanometers in size (col. 41 line 37). The particle may have a stabilizing layer in the form of a polymeric shell (col. 6 line 1) and may encapsulate rosewood essential oil (col. 36 line 16). A particle obtained from an oil-in-water emulsion may contain an emulsifier (col. 9 line 1). It is preferred to use deionized or distilled water (col. 38 line 14).
Regarding claim 2, Moaseri teaches that the particle may contain ethanol (col. 38 line 33), methylene chloride (col. 29 line 12), acetone (col. 28 line 10), methyl alcohol (col. 29 line 11), ethyl alcohol (col. 28 line 54), oleic acid (col. 29 line 17), stearic acid (col. 29 line 67), and sorbitan monostearate (col. 29 line 64).
Regarding claim 3, Moaseri teaches that the particle may contain gum arabic (col. 27 line 35, col. 24 line 59), xanthan gum (col. 28 line 7), milk protein (col. 29 line 13), celluloses (col. 28 line 40), polycaprolactone (col. 27 line 55), alginate (col. 27 line 62), maltodextrin (col. 33 line 50), and polystyrene (col. 27 line 56).
Regarding claim 4, Moaseri teaches that the particle may encapsulate rosewood essential oil (col. 36 line 16). The encapsulants content may range between 5-50 wt. % (col. 11 line 49).
Regarding claim 5, Moaseri teaches that the particle may contain emulsifiers such as polysorbates Tween 20 and 80 (col. 27 line 34), carrageenan, and agar (col. 27 line 19). The amount of surfactants present in the system may range between 1 to 25% by volume (col. 45 line 60).
Regarding claim 6, Moaseri teaches that a particle may be obtained using an oil-in-water emulsion (col. 8 line 52) and that it is preferred to use deionized or distilled water (col. 38 line 14).
Regarding claim 7, Moaseri teaches that the particle may contain a thickening agent such as ethanol (col. 38 line 33), methylene chloride (col. 29 line 12), acetone (col. 28 line 10), methyl alcohol (col. 29 line 11), and ethyl alcohol (col. 28 line 54).
Regarding claim 8, Moaseri teaches that the oil phase of the emulsion may contain a carrier oil (col. 31 line 9). The carrier oil may be selected from long-chain triglycerides, such as olive oil (col. 11 line 47). The volume ratio of the oil phase to water phase may be between 1:2 and 1:15. The volume fraction of the dispersed phase (oil) may be reduced to achieve smaller droplet size and to protect an O/W emulsion against coalescence due to reduced rate of collision frequency (col. 10 lines 2-11).
Regarding claim 9, Moaseri teaches that that the particle may contain a thickening agent such as sorbitan monostearate (col. 29 line 64). Moaseri also teaches that the amount of surfactants present in the system may range between 1 to 25% by volume (col. 45 line 60).
Regarding claim 10, Moaseri teaches the relevant limitations as described above. Moaseri also teaches that the oil and aqueous phases of the composition are added to a working volume of a high-shear roto-stator device that is used to create O/W emulsions (col. 11 lines 60-61). The mixture is homogenous (col. 63 line 5). Spray drying devices may be used to dry the particles and transfer them from liquids state into solid state (col. 24 lines 49-51).
Regarding claim 11, Moaseri teaches the relevant limitations as described above. Moaseri also teaches that when the composition is homogenized with an ultrasonic probe, the ultrasound sonication time ranges from 1 to 75 minutes (col. 50 line 22).
Regarding claim 12, the limitations of the claim are conditional and not required by the language of the claim. However, in the interest of compact prosecution, the Examiner provides the following rejection:
Regarding claims 12 and 13, the claims Moaseri teaches when a mechanical mixer is used to homogenize the composition, the speed is set to between 6,000 to 12,000 RPM (col. 11 line 67). The size of the capsules formed is expected to be inversely proportional to the energy input during agitation (col. 55 line 45). O/W emulsions may be made by pre-processing the oil phase and water phase by heating to 70oC prior to emulsification (col. 9 lines 6-14).
Regarding claim 14, Moaseri teaches that the particles may be filtered after manufacturing (col. 41 line 45).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1, 2, 10, and 14, Moaseri doesn’t teach a single embodiment or example meeting all limitation of the invention of claims 1, 2, 10, and 14.
Regarding claims 3 and 11, Moaseri does not teach a specific concentration of polymer present in the shell of the particle.
Regarding claims 4 and 11, Moaseri does not teach a volume percentage of essential oil within the range embraced by the instant claim.
Regarding claims 6 and 11, Moaseri does not teach a specific volume of water present in the composition.
Regarding claim 7, Moaseri does not teach a specific concentration of solvent present in the composition.
Regarding claim 8, Moaseri does not teach a specific concentration of long-chain triacylglycerol present in the composition.
Regarding claims 12 and 13, Moaseri does not teach a vortex speed within the range embraced by the instant claims.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1, 2, 10, and 14, within the broader scope of Moaseri all of the limitations of the invention of claims 1, 2, 10, and 14 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Moaseri and arrive at this conclusion because such was contemplated by Moaseri.
Regarding claims 3 and 11, the concentration of polymer is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous encapsulation and release kinetics effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Moaseri teaches that the polymer shell may be coated on the particle to control the release kinetics of the encapsulated ingredients. The release kinetic may be controlled by tuning the thickness of the polymeric shell (col. 15 lines 13-17). The Examiner considers it prima facie obvious to optimize the concentration of polymer or membrane material present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the concentration of polymer present would have a direct effect on the thickness of the polymeric shell and therefore be an optimizable variable.
Regarding the volume percentage of essential oil as specified in claims 4 and 11, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Moaseri teaches that the encapsulants are active ingredients (col. 6 line 27). The Applicants' specification provides no evidence that the selected weight percentage in claims 4 and 11 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the activity of the essential oil as encapsulant, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the volume percentage. One of ordinary skill in the art would have been motivated to change the volume percentage as this could be expected to be advantageous for adjusting the desired concentration of active ingredient.
Regarding claims 6 and 11, the volume of water is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal volume in order to best achieve the desired results as such would provide advantageous adjustment of the concentration of the composition. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Moaseri teaches that the particle may be obtained using an oil-in-water emulsion (col. 8 line 52). The Examiner considers it prima facie obvious to optimize the volume of water present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the volume of water would have a direct effect on the concentration of every component of the composition because the composition is prepared in an aqueous solution and therefore is an optimizable variable.
Regarding claim 7, the concentration of solvent is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous thickening effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Moaseri teaches that the organic solvents may act as thickening agents (col. 28 line 6). The Examiner considers it prima facie obvious to optimize the concentration of solvents present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the concentration of solvent present would have a direct effect on the thickness of the composition and therefore be an optimizable variable.
Regarding claim 8, the concentration of long-chain triacylglycerol is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous effect on droplet size. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Moaseri teaches that the volume fraction of the dispersed phase (oil) may be reduced to achieve smaller droplet size and to protect an O/W emulsion against coalescence due to reduced rate of collision frequency (col. 10 lines 2-11). The Examiner considers it prima facie obvious to optimize the concentration of long-chain triacylglycerol present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the concentration of triacylglycerol present would have a direct effect on the droplet size of the emulsion and therefore be an optimizable variable.
Regarding the vortex speed as specified in claims 12 and 13, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Moaseri teaches the size of the capsules formed is expected to be inversely proportional to the energy input during agitation (col. 55 line 45). The Applicants' specification provides no evidence that the selected speed in claim 12 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the inverse relationship between particle size and mixing speed, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the speed. One of ordinary skill in the art would have been motivated to change the speed as this could be expected to be advantageous for achieving the desired particle size.
Regarding claim 13, the stirring time is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous particle size effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Moaseri teaches the size of the capsules formed is expected to be inversely proportional to the energy input during agitation (col. 55 line 45). The Examiner considers it prima facie obvious to optimize the stirring time, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the stirring time would have a direct effect on the size of the particles in the nanoemulsion and therefore be an optimizable variable.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Moaseri (U.S. Patent No. 10,945,953, issue date: 3/16/2021), as applied to claims 1-14 above, and further in view of CU Boulder (Filtration, available 12/29/2016).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Moaseri renders obvious the relevant limitations of claims 10 and 14 above. Moaseri also teaches that the filters may have a pore size of less than 1 millimeter, 500 micrometers, 100 micrometers, 1 micrometer, 500 nanometers, or 100 nanometers (col. 41 line 48). The Examiner has interpreted the phrase “40 to 47mm mesh” to refer to the mesh grade of the paper filter.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Moaseri does not teach the use of a glass funnel fitted with mesh paper filters for filtration or a mesh size within the range embraced by the instant claim. However, this deficiency is cured by
CU Boulder teaches that gravity filtration can be used to collect solid product. In a standard gravity filtration, a filter paper is folded and placed in glass funnel and then the mixture to be filtered is poured into the funnel (pg. 1-2).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a glass funnel fitted with a paper filter for the filtration of the nanoparticles taught by Moaseri. One would have understood in view of CU Boulder that gravity filtration utilizing a glass funnel and paper filter can be used to collect solid product or remove solid impurities (pg. 1-2). One would have been motivated to us a glass funnel and a paper filter for filtration for ease of use and low cost of filtration. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because CU Boulder teaches that gravity filtration may be used to collect solid product or remove solid impurities.
The mesh size is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal diameter and drying time in order to best achieve the desired results as such would provide the desired particle size retention. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Moaseri also teaches that the filters may have a pore size of less than 1 millimeter, 500 micrometers, 100 micrometers, 1 micrometer, 500 nanometers, or 100 nanometers (col. 41 line 48). The Examiner considers it prima facie obvious to optimize the mesh size, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that mesh size would have a direct effect on particle size nanoemulsion collected and therefore be an optimizable variable.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Moaseri (U.S. Patent No. 10,945,953, issue date: 3/16/2021), as applied to claims 1-14 above, and further in view of Chopde et. al. (Journal of Agriculture and Food Research, pg. 100085, publication year: 2020).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Moaseri renders obvious the relevant limitations of claim 10 above. Moaseri also teaches that spray drying devices may be used to dry the particles and transfer them from liquids state into solid state. Spray drying may include a high-pressure nozzle and a centrifugal force (e.g. an atomizer) (col. 24 lines 49-52).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Moaseri does not teach the use of a Nano spray dryer or specific settings and drying times for the technique. However, this deficiency is cured by Chopde.
Chopde teaches that conventional atomization techniques (rotary, pressure and pneumatic atomization), non-efficient powder recovery system and the turbulence in drying chamber limits the use of conventional spray dryers in nanoparticle generation. Thus, nano encapsulation using Nano spray drying can be a better approach to overcome the limitations imposed by traditional spray drying techniques (pg. 2, Introduction). Nano spray drying may be used in the nanoencapsulation of food bioactive ingredients, including eugenol oil and peppermint oil (pg. 5, Table 3). Chopde also teaches that the inlet drying gas temperature is generally 120oC (pg. 4, f) Heater). The spray mesh size has a direct effect on the particle size and the spray rate intensity has a direct effect on the drying time of the particles (pg. 5 Table 2). Chopde also teaches that the drying time is proportional to square of particle diameter (pg. 2, 1.2 Atomization of feed).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art of filing to utilize a nano spray dryer in the drying process. One would have understood in view of Chopde that nano encapsulation using nano spray drying can be a better approach to overcome the limitations imposed by traditional spray drying techniques (pg. 2, Introduction). One would have been motivated to use a nano spray dryer in order to overcome the limitations of traditional spray drying techniques in nanoparticle generation. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Chopde teaches that the nano spray drying technique may be applied to bioactive ingredients, including essential oils.
The injector nozzle diameter and drying time of the drying process is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal diameter and drying time in order to best achieve the desired results as such would provide the desired particle size. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Chopde teaches that the spray mesh size has a direct effect on the particle size and the spray rate intensity has a direct effect on the drying time of the particles (pg. 5 Table 2). Chopde also teaches that the drying time is proportional to square of particle diameter (pg. 2, 1.2 Atomization of feed). The Examiner considers it prima facie obvious to optimize the injector nozzle diameter and drying time, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the diameter of the injector nozzle and drying time would have a direct effect on particle size and therefore be an optimizable variable.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617