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 02/16/2026 in which claim 7 was canceled; and claim 1 was amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-6 and 8-16 are under examination.
Claim Interpretation
The term “optionally” in claims 1 and 10 is interpreted as not required in the process.
For this office action and rejection purposes, the component(s)/step(s) following the term “optionally” in claims 1 and 10 will be interpreted as component(s)/step(s) that are made optional or not required, and thereby not part of the claimed process for preparing a core-shell microcapsule slurry.
Thus, “a crosslinker” as recited in claim 1 is made optional and interpreted as not part of the step (i) of claim 1. Likewise, “adsorption of at least one mineral precursor on the microcapsule shell” is a step made optional and interpreted as not part of the process of claim 10.
As such, claim 1 is interpreted as “A process for preparing a core-shell microcapsule slurry, wherein the process comprises the steps of: (i) Admixing a salt into an aqueous solution comprising at least a protein to form an aqueous phase …” Additionally, claim 10 is interpreted as “The process according to claim 1, wherein the process comprises after step (iv) further a further step consisting of applying conditions suitable to induce growth of a mineral layer on the microcapsule shell.”
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 6, 8, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dardelle et al (US 2009/0253165 A1; hereafter as “Dardelle ‘165”) in view of Ye et al (Food Hydrocolloids, 2011, 15: 195-197).
Regarding claims 1 and 2, Dardelle ‘165 teaches core-shell microcapsules suspension comprising a fragrance or flavor core surrounded by an outer shell containing protein, wherein the protein is present in an amount of from 0.5-3.5 wt% (Abstract; [0014]-[0021], [0029]-[0032], [0036]-[0050], [0057], [0064]; Examples 1-5; claims 13-15 and 22). Dardelle ‘165 teaches the core-shell microcapsules suspension having a protein shell comprising (i) preparing an aqueous solution comprising a protein to form an aqueous phase; (ii) emulsifying or suspending a hydrophobic material (perfume or flavor oil) to form an oil-in-water emulsion; (iii) adding a crosslinking agent to the oil-in-water emulsion; and (iv) inducing crosslinking of the protein to form core-shell microcapsules ([0014]-[0069]; claims 13-22). Dardelle ‘165 teaches the microcapsules have a particle size (an average diameter) of 20-1000 µm ([0064]), which meets the claimed “the core-shell microcapsules comprise a mean size greater than 10 microns” as recited in claim 1.
While Dardelle ‘165 does not expressly teach a salt is added in the aqueous solution in step (i) of claims 1 and 2, it would have bene obvious to include salt in the aqueous solution containing protein of Dardelle ‘165 in view of the guidance from Ye.
Ye teaches the addition of salt such as calcium chloride in an oil-in-water emulsion containing sodium caseinate (a protein) stabilizes the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of caseins due the binding of the salt (calcium chloride) to the caseinate (Abstract; Introduction; pages 196-206).
It would have been obvious to one of ordinary skill in the art to include a salt such as calcium chloride in the aqueous solution containing protein of Dardelle ‘165 and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Ye provided the guidance for including a salt such as calcium chloride in the aqueous solution containing a protein, as the addition of salt such as calcium chloride enhances the protein’s ability to emulsify fat/oil in water or in other words stabilizes the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of protein due the binding of the salt (calcium chloride) to the protein. Provided that Dardelle ‘165 discloses that the microcapsules containing an outer shell made from protein and an oil-based core, and the production of said microcapsules require emulsification of aqueous solution containing a protein with an oil phase containing a hydrophobic material to form an oil-in water emulsion, it would have been reasonably obvious and beneficial to add a salt such as calcium chloride in the aqueous solution containing protein of Dardelle ‘165 so as the salt enhances the protein’s ability to emulsify oil in water, thereby stabilizing the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of protein, and achieve Applicant’s claimed invention with reasonable expectation of success.
With respect the claimed weight ratio between the salt and protein is between 0.01:1 to 1:1 as recited in claim 1, Bleiel teaches admixing of an aqueous solution of protein and a salt such as calcium chloride with an active agent provide microdroplets in which the crosslinking and aggregation reaction between the protein and the salt stabilizes the microdroplets containing the active agent (Abstract; pages 4-7, 9-11 and 13-14). Bleiel teaches the salt such as calcium chloride is used at concentration of 1%-20% w/v and the protein is used at concentration of 4%-15% w/v (pages 4-6).
It would have been obvious to one of ordinary skill in the art optimize the weight ratio of between the added salt and the protein in the aqueous solution of Dardelle ‘165 in view of Ye to a weight ratio between 0.01:1 to 1:1, and produce the claimed invention. One of ordinary skill in the art would have been motivated do so because as discussed above, Bleiel teaches that the aqueous solution of protein and salt such as calcium chloride can be optimized to contain the salt at a concentration of 1%-20% w/v, and the protein at a concentration of 4%-15% w/v, which are parameters that overlaps the claimed weight ratio between 0.01:1 to 1:1. 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) (see MPEP 2144.05.01). Absent some demonstration of unexpected results showing criticality from the claimed parameter, the optimization of the weight ratio of salt to protein would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 3, as discussed above, Dardelle ‘165 teaches the protein is present in an amount of from 0.5-3.5 wt% by weight of the core-shell microcapsule suspension, which is a range that overlaps the claimed range of between 0.5 and 10% based on a total weight of the microcapsule slurry. 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) (see MPEP 2144.05.01). Absent some demonstration of unexpected results showing criticality from the claimed parameter, the optimization of the amount of protein in the core-shell microcapsule slurry would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 4, Dardelle ‘165 teaches the protein is a gelatin ([0014]-[0069]; claims 13-22).
Regarding claim 6, as discussed above, Ye teaches and provide guidance for using calcium chloride as the salt.
Regarding claim 8, Dardelle ‘165 teaches the crosslinking agent is an enzyme such as transglutaminase ([0021], [0066]-[0068]).
Regarding claims 13 and 14, as discussed above, Dardelle ‘165 teaches the core contains a fragrance or a flavor
Regarding claim 15, as discussed above, Dardelle ‘165 teaches the crosslinking agent is an enzyme such as transglutaminase.
From the teachings of the reference, 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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dardelle et al (US 2009/0253165 A1; hereafter as “Dardelle ‘165”) in view of Ye et al (Food Hydrocolloids, 2011, 15: 195-197), as applied to claims 1 and 4 above, and further in view of Yan (US 2011/0117180 A1).
The processes of claims 1 and 4 are discussed above, said discussion being incorporated herein in its entirety.
However, Dardelle ‘165 and Ye do not teach the protein is a mixture of sodium caseinate and whey protein of claim 5.
Regarding claim 5, Yan teaches vegetarian microcapsules comprising an oil-based core such as flavor oil and an outer shell comprising protein such as a mixture of sodium caseinate and whey protein, wherein the shell is crosslinked (Abstract; [0005]-[0006], [0025], [0030], [0033], [0047], [0068], [0090], [0098], [0116], [0118]-[0120], [0125]-[0126]; Example 13; claims 1, 8, 19-20, 35, 66, 77, 88, 90 and 105). Yan teaches the vegetarian microcapsule containing an outer shell comprising a mixture of sodium caseinate and whey protein is advantageous over microcapsule shell made from animal product such as gelatin when one desires a microcapsule that is free of such animal by-products, such as for religious or dietary reasons, as well as, microcapsules have a high payload, are structurally strong, and are made from shell materials that are not by-products of animals ([0005]).
It would have been obvious to one of ordinary skill in the art to incorporate a mixture of sodium caseinate and whey protein as the protein in the process of Dardelle ‘165 and produce the outer shell of microcapsules of Dardelle ‘165 from protein such as a mixture of sodium caseinate and whey protein, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Yan provided the guidance to do so by teaching that the protein used for forming the outer shell of microcapsule of Dardelle ‘165 can be mixture sodium caseinate and whey protein (rather than gelatin protein used in Dardelle ‘165) so as to form a vegetarian microcapsule, and such vegetarian microcapsule containing an outer shell comprising a mixture of sodium caseinate and whey protein is advantageous over microcapsule shell made protein from animal product (i.e., gelatin) when one desires a microcapsule that is free of such animal by-products, such as for religious or dietary reasons, as well as, microcapsules have a high payload, are structurally strong, and are made from shell materials that are not by-products of animal. Thus, an ordinary artisan interested in producing microcapsules that free from animal by-products would have looked to incorporating a mixture of sodium caseinate and whey protein as the protein in the process of Dardelle ‘165 and producing the outer shell of microcapsules of Dardelle ‘165 from protein such as a mixture of sodium caseinate and whey protein so as to form a vegetarian microcapsule that is structurally strong and have high payload, as well as, meets the desired consumer’s religious or dietary restrictions, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, 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) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dardelle et al (US 2009/0253165 A1; hereafter as “Dardelle ‘165”) in view of Ye et al (Food Hydrocolloids, 2011, 15: 195-197), as applied to claim 1 above, and further in view of Dardelle et al (US 2015/0250689 A1; hereafter as “Dardelle ‘689”).
The process of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
However, Dardelle ‘165 and Ye do not teach the oil phase further comprises a polyfunctional monomer of claims 9 and 16.
Regarding claims 9 and 16, Dardelle ‘689 teaches a multilayer core/shell microcapsules suspension comprising microcapsules made of an oil-based core such as a perfume oil or a flavor oil, and an outer shell comprising a protein, wherein the protein is crosslinked (Abstract; [0011]-[0013], [0021]-[0034], [0040]-[0042]; Examples 1-5; claims 1-12 and 14-15). Dardelle ‘689 teaches the core/shell microcapsules further comprises an inner shell made of polymerized polyisocyanate having at least two isocyanate functional groups ([0027] and [0040]). Dardelle ‘689 teaches the polyisocyanate is added to the oil phase ([0021]-[0042]).
It would have been obvious to one of ordinary skill in the art to modify the core-shell microcapsule slurry of Dardelle ‘165 to include an inner shell made of a polymerized polyisocyanate having at least two polyisocyanate functional groups by adding a polymerized polyisocyanate having at least two polyisocyanate functional groups in the oil phase containing the hydrophobic material, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Dardelle ‘689 provided the guidance to do so by teaching that a polymerized polyisocyanate can be added to the oil phase containing the hydrophobic material so as to obtain core-shell microcapsules suspension comprising microcapsules containing an oil core, an outer shell comprising a protein, and an inner shell made of polymerized polyisocyanate having at least two isocyanate functional groups, and such inner shell (polyurea) provides additional and superior barrier properties to obtain microcapsules that exhibit excellent resistance against evaporation of active agent when the capsules are in the dry state as well as excellent resistance against destabilization of the capsules in harsh environment (Dardelle ‘689: [0011]-[0013], [0021]-[0034], [0040]-[0042] and [0131]). Thus, an ordinary artisan seeking to maximize the barrier properties of the microcapsules of Dardelle ‘165 so as the obtained microcapsules exhibit excellent resistance against evaporation of active agent when the capsules are in the dry state as well as excellent resistance against destabilization of the capsules in harsh environment, would have looked to modify the core-shell microcapsule slurry of Dardelle ‘165 to include an inner shell made of a polymerized polyisocyanate having at least two polyisocyanate functional groups by adding a polymerized polyisocyanate having at least two polyisocyanate functional groups in the oil phase, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, 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) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dardelle et al (US 2009/0253165 A1; hereafter as “Dardelle ‘165”) in view of Ye et al (Food Hydrocolloids, 2011, 15: 195-197), as applied to claim 1 above, and further in view of Jerri et al (WO 2018/115330 A1).
The process of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
However, Dardelle ‘165 and Ye do not teach the limitations of claims 10-12.
Regarding claims 10-12, Jerri teaches a mineralized core-shell microcapsule slurry comprising at least one microcapsule having: a) an oil-based core comprising a hydrophobic active ingredient; a protein shell (i.e., gelatin or sodium caseinate), and a mineral layer adsorb on the shell (Abstract; pages 3 and 8-22; claims 1-15). Jerri teaches a process for preparing a mineralized core-shell microcapsule slurry as defined above comprising the steps of (i) preparing a microcapsule core-shell slurry; (ii) adsorption of at least one mineral precursor on the shell of the microcapsule ; and (iii) applying condition suitable to induce crystal growth of the mineral on the charged surface to form a mineral layer on the microcapsule shell (pages 3, 9-10, 13-18 and 20-22).
It would have been obvious to one of ordinary skill in the art to modify process of preparing the core-shell microcapsule slurry of Dardelle ‘165 by including after the microcapsule is formed, the steps of adsorption of at least one mineral precursor on the shell of the microcapsule and applying condition suitable to induce crystal growth of the mineral on the charged surface to form a mineral layer on the microcapsule shell so as to form a mineralized core-shell microcapsule slurry, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Jerri provided the guidance to do so by teaching that the core-shell microcapsule slurry of Dardelle ‘165 can be modified to a mineralized core-shell microcapsule slurry by adding the steps of adsorption of at least one mineral precursor on the shell of the microcapsule and applying condition suitable to induce crystal growth of the mineral on the charged surface to form a mineral layer on the microcapsule shell, and such mineralized core-shell microcapsule slurry that is obtained, has enhance deposition properties on a substrate (Jerri: pages 3 and 9-10). Thus, an ordinary artisan seeking to enhance the deposition of the microcapsule on a substrate, would have looked to modify process of preparing the core-shell microcapsule slurry of Dardelle ‘165 by including after the microcapsule is formed, the steps of adsorption of at least one mineral precursor on the shell of the microcapsule and applying condition suitable to induce crystal growth of the mineral on the charged surface to form a mineral layer on the microcapsule shell so as to form a mineralized core-shell microcapsule slurry, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, 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 02/16/2026 have been fully considered but they are not persuasive.
Applicant argues that Bleiel does not teach the salt concentration to be 1-20% w/v and alleged that said concentration range was directed to the active agent and not the salt. Applicant goes on to allege that Methods 3, 5, 6 of Bleiel teach the amount of CaCl2 was 1.8% w/v, and given that Bleiel teaches the concentration of protein was 5-15% w/v, there is no motivation in Bleiel to optimize the concentrations of protein and salt to the claimed weight ratio, as does not teach or suggest the claimed weight ratio as a result-effective variable. Applicant cited MPEP 2144.05(II)(B) to support Applicant’s position. (Remarks, pages 6-7).
In response, the Examiner disagrees. Bleiel does teach and suggest the salt concentration to be 1-20% w/v. See at least page 6, lines 22-28 of Bleiel, which teaches the concentration of volatile divalent metal salt (i.e., calcium chloride) is 0.1 M – 2.0 M (1% -20%). It is noted that the 103 rejection is to the broader disclosure and guidance from Bleiel. Thus, MPEP 2144.05(II)(B) does not support Applicant’s position, as Bleiel does in fact teaches an optimizable weight ratio range that overlaps the claimed range of “weight ratio between the salt and protein is between 0.01:1 to 1:1.” As such, as discussed in the pending 103 rejection, it is maintained that it would have been obvious to one of ordinary skill in the art optimize the weight ratio of between the added salt and the protein in the aqueous solution of Dardelle ‘165 in view of Ye to a weight ratio between 0.01:1 to 1:1, and produce the claimed invention. One of ordinary skill in the art would have been motivated do so because as discussed above, Bleiel teaches that the aqueous solution of protein and salt such as calcium chloride can be optimized to contain the salt at a concentration of 1%-20% w/v, and the protein at a concentration of 4%-15% w/v (Bleiel: pages 4-6), which are parameters that overlaps the claimed weight ratio between 0.01:1 to 1:1. 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) (see MPEP 2144.05.01). Absent some demonstration of unexpected results showing criticality from the claimed parameter, the optimization of the weight ratio of salt to protein would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
It is noted that Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). To date, Applicant has not shown by objective evidence that the particular claimed weight ratio range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. Absence said objective evidence showing criticality of the claimed range, optimization of the weight ratio between salt and protein as guided by Bleiel to arrive at the claimed weight ratio would have been obvious.
As a result, for at least the reason discussed above, claims 1-6 and 8-16 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
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 1-6 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11135561 in view of Ye et al (Food Hydrocolloids, 2011, 15: 195-197).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘561 significantly overlap with the subject matter of instant claims, i.e., a mineralized core-shell microcapsule slurry having a protein shell prepared from the process comprising preparing a core-shell microcapsule slurry; adsorption of at least one mineral precursor on the microcapsule shell; and apply conditions suitable to induce growth of a mineral layer on the microcapsule shell.
While the claims in the Patent ‘561 does not recite a salt being included in the aqueous solution containing a protein in the process of preparing core-shell microcapsule slurry, it would have been obvious to include salt in the aqueous solution containing a protein in the process of preparing core-shell microcapsule slurry and optimize the weight ratio between salt and protein to weight ratio of the instant application in view of the guidance from Ye, which teaches the addition of salt such as calcium chloride in an oil-in-water emulsion containing sodium caseinate (a protein) stabilizes the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of caseins due the binding of the salt (calcium chloride) to the caseinate (Ye: Abstract; Introduction; pages 196-206). Provided that Patent ‘561 recites the microcapsules containing an outer shell made from protein and an oil-based core, and the production of said microcapsules require emulsification of aqueous solution containing protein with an oil phase containing a hydrophobic material to form an oil-in water emulsion, it would have been reasonably obvious and beneficial to add a salt such as calcium chloride in the aqueous solution containing protein of Patent ‘561 so as the salt enhances the protein’s ability to emulsify oil in water, thereby stabilizing the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of protein
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11135561 in view of Ye
Claims 1-6 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12138610 in view of Ye et al (Food Hydrocolloids, 2011, 15: 195-197).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘610 significantly overlap with the subject matter of instant claims, i.e., a mineralized core-shell microcapsule slurry having a shell prepared from the process comprising preparing a core-shell microcapsule slurry; adsorption of at least one mineral precursor on the microcapsule shell; and apply conditions suitable to induce growth of a mineral layer on the microcapsule shell, wherein the preparation of the core-shell microcapsule slurry comprises adding an oil phase containing hydrophobic material and polyisocyanate to an aqueous phase containing a protein to form an oil-in-water emulsion.
While the claims in the Patent ‘610 does not recite a salt being included in the aqueous solution (aqueous phase) containing a protein in the process of preparing core-shell microcapsule slurry, it would have been obvious to include salt in the aqueous solution containing a protein in the process of preparing core-shell microcapsule slurry and optimize the weight ratio between salt and protein to weight ratio of the instant application in view of the guidance from Ye, which teaches the addition of salt such as calcium chloride in an oil-in-water emulsion containing sodium caseinate (a protein) stabilizes the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of caseins due the binding of the salt (calcium chloride) to the caseinate (Ye: Abstract; Introduction; pages 196-206). Provided that Patent ‘610 recites the microcapsules containing an outer shell made from protein and an oil-based core, and the production of said microcapsules require emulsification of aqueous solution containing protein with an oil phase containing a hydrophobic material to form an oil-in water emulsion, it would have been reasonably obvious and beneficial to add a salt such as calcium chloride in the aqueous solution containing protein of Patent ‘561 so as the salt enhances the protein’s ability to emulsify oil in water, thereby stabilizing the oil droplet in the emulsion by covering the surface of the oil droplet via aggregation of particles of protein.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 12138610 in view of Ye.
Response to Arguments
Applicant's arguments filed 02/16/2026 have been fully considered but they are not persuasive.
Applicant argues by requesting reconsideration of the double patent rejections in view of the presence response. (Remarks, pages 8-9).
In response, Applicant’s present response in the Remarks filed 02/16/2026 was not persuasive for the reasons discussed above on pages 14-16 of this office action, said discussion being incorporated herein in its entirety.
As a result, for at least the reason discussed above and of record, the double patent rejections as set forth in this office action are maintained, pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613