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 07/01/2026 in which claims 6, 14, 16, and 24 were canceled; claims 1-5, 7-13, 15, 17-23, 25-26, and 28 were amended; and claim 29 was newly added. All the amendments have been thoroughly reviewed and entered.
In subsequent amendments to the claims and for claim amendment compliance, Applicant is requested to remove “7. (canceled)” from the claim set so that there is no confusion with the pending claim 7.
Claims 1-5, 7-13, 15, 17-23 and 25-29 are under examination.
Withdrawn Objection/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Modified-New Objections
Claim Objections
Claim 17 is objected to because of the following informalities: for claim language clarity, please amend the Markush grouping language starting in line 3 of claim 17 (after “, and”) to “ the additional multifunctional (meth)acrylate is an oil soluble (meth)acrylate selected from group consisting of a bi-functional (meth)acrylate, a tri- functional (meth)acrylate, a tetra-functional (meth)acrylate, a penta-functional (meth)acrylate, a hexa-functional (meth)acrylate, a hepta-functional (meth)acrylate, an octa-functional (meth)acrylate and mixtures thereof.” Appropriate correction is required.
Claim 18 is objected to because of the following informalities: for claim language clarity, please amend the Markush grouping language to “the multifunctional (meth)acrylate is a water soluble or dispersible (meth)acrylate selected from the group consisting of tripropylene glycol diacrylate, ethoxylated bisphenol diacrylate, dipropylene glycol diacrylate, alkoxylated hexanediol diacrylate, alkoxylated cyclohexane dimethanol diacrylate, propoxylated neopentyl glycol diacrylate, trimethylolpropane triacrylate, pentaerythritol triacrylate, ethoxylated trimethylolpropane triacrylate, propoxylated trimethylolpropane triacrylate, propoxylated glyceryl triacrylate, ditrimethylolpropane tetraacrylate, dipentaerythritol pentaacrylate, ethoxylated pentaerythritol tetraacrylate, glycerol tri(meth)acrylate, ethylene glycol diacrylate, di-, tri, tetra-, or pentaethylene glycol diacrylate, dipropylene glycol diacrylate, polyethylene glycol diacrylate, and combinations.” Appropriate correction is required.
Claim 23 is objected to because of the following informalities: please amend “particles” in line 2 of claim 23 to “particle” so that there is proper antecedent to “particle” in singularity of claim 1. Appropriate correction is required.
Modified-New Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5, 8, and 19 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.
Regarding claim 5, the recitation of “the multifunctional (meth)acrylate is an unsaturated compound selected from the group consisting of a vinyl compound and acrylate” renders the claim indefinite because “vinyl compound” is a genus of which a “multi-functional (meth)acrylate” is a species or subgenus of “vinyl compound.” Likewise, “acrylate” is a genus of which “multi-functional (meth)acrylate” is a species or subgenus of “acrylate.” Thus, it is unclear how “vinyl compound” and “acrylate” as recited in the Markush grouping can be alternative species of multifunctional (meth)acrylate when said “vinyl compound” and “acrylate” are not species of multifunctional (meth)acrylate. As such, the Markush group as recited in claim 5 is improper. Claim 8 is also rejected as the claim is dependent from claim 5, where claim 8 does not resolve the indefinite issue of claim 5, thereby claim 8 is also indefinite the same reason as claim 5.
Regarding claim 19, the Markush group recitation of “the isocyanate compound being aliphatic or aromatic and selected from the group consisting of one or more of an isocyanate monomer, oligomer or prepolymer, dimer and trimer, wherein the isocyanate compound has at least two isocyanate groups” renders claim 19 indefinite because metes and bounds of the alternative species for selection is unclear. For example, it is not clear how the one or more of an isocyanate monomer, which encompasses one isocyanate monomer, can be selected as the isocyanate compound when the latter requires that “the isocyanate compound has at least two isocyanate groups.” One isocyanate monomer does not meet the limitation of “the isocyanate compound has at least two isocyanate groups,” because one isocyanate monomer has only one isocyanate group. To obviate this indefinite rejection, it is suggested that Applicant amend claim 19 to: wherein the shell further comprises an isocyanate compound, the isocyanate compound being aliphatic or aromatic and having at least two isocyanate groups.”
As a result, claims 5, 8, and 19 do not clearly set forth the metes and bounds of patent protection desired.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 introduces new matter as the claim recite the limitation: the multifunctional (meth)acrylate is an unsaturated compound selected form the group consisting of a vinyl compound and an acrylate. There is no support in the specification for this limitation.
While paragraph [0022] of the specification discloses “[t]he ene portion of the amine-thiol-ene conjugate is an unsaturated compound and can be selected from a vinyl compound or an acrylate,” the vinyl compound or the acrylate is indicated an alternative species of “ene portion of the amine-thiol-ene conjugate,” and not “multifunctional (meth)acrylate.” Thus, Applicant does not have possession of “the multifunctional (meth)acrylate is an unsaturated compound selected form the group consisting of a vinyl compound and an acrylate,” as claimed.
MPEP §2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 5 as amended at the time of filing of the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 is not further limiting from claim 1 because the limitation of “the thiol lactone is a thiolactone” is not only redundant due to thiol lactone is the same thing as thiolactone, but also that claim 1 already contains thiolactone.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Modified Rejection
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) 1-5, 7-13, 15, 17-23 and 25-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akrach et al (WO 2022/013821 A1) in view of Espeel et al (European Polymer Journal, 2015, 62: 247-272).
Regarding claims 1 and 12, Akrach teaches a biodegradable microcapsule comprising a core material, and a shell encapsulating the core material, wherein the core material is selected from the group comprising agrochemicals, aliphatic esters, anti-microbial agents, anti-fungal, anti-fouling agents, antioxidants, anti-viral agents, biocides, catalysts, cosmetic actives, dyes, colorants, detergents, edible oils, emollient oils, essential oils, fats, fatty acids, fatty acid esters, food additives, flavors, fragrances, hair care actives, halogenated compounds, hydrocarbons, insecticides, insect repellants, lipids, lipophilic scale inhibitors, mineral oil, oral care actives, organic solvents, organic esters, chlorinated solvents, pesticides, perfumes, preservatives, skin care actives, UV absorbers, vegetable oils and combinations thereof ([0001], [0017]-[0023], [0030]-[0039], [0060], [0073]-[0080], [00103], [00115]-[00131], [00155], [00294]-[00375]; claims 1-94). Akrach teaches the shell comprises a polymer containing an amine-thiol-ene conjugate formed from a reaction product of alkyl diamine or alkyl triamine with a thiol and a multifunctional (meth)acrylate ([0001], [0017]-[0023], [0030]-[0039], [0060], [0073]-[0080], [00103], [00115]-[00131], [00155], [00294]-[00375]; claims 1-94). Akrach teaches the shell contains a free-radically crosslinked reaction product of the amine-thiol-ene conjugate with multifunctional (meth)acrylate and/or an isocyanate or a crosslinked reaction product of the amine-thiol-ene conjugate with a Michael adduct containing a multifunctional (meth)acrylate ([0017]-[0023], [0030]-[0039], [0060], [0073]-[0080], [00103], [00115]-[00131], [00155], [00294]-[00375]; claims 1-94).
However, Akrach does not teach the thiol is a thiolactone of claims 1 and 12.
Regarding the thiolactone of claims 1 and 12, Espeel teaches the use of thiolactone as thiol in the production of amine-thiol-ene conjugate (Abstract; pages 248-267). Espeel teaches that thiols have known issues of unpleasant smell and have a poor shelf life due to oxidation reactions and thus, the use of thiolactones as latent thiols resolve the thio-related issues, as thiolactones are not smelly and are recognized to be stable compounds (pages 248-252). Espeel teaches most commonly used thiolactones are γ-thiolactone derivatives such as α-amino-γ-butyrothiolactone and homocysteine-γ-thiolactone (pages 248-252).
It would have been obvious to one of ordinary skill in the art to incorporate a thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of the amine-thiol-ene conjugate of Akrach, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Espeel provided the guidance to do so by providing the direct guidance for using of thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of amine-thiol-ene conjugate of Akrach, as latent thiols such as amino-γ-butyrothiolactone and homocysteine-γ-thiolactone are preferred over thiols due to their advantage of resolving the known thio-related issues of unpleasant smell and poor shelf life. Thus, an ordinary artisan would have looked to using a thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of the amine-thiol-ene conjugate of Akrach so as to avoid unpleasant smell and provide a resultant amine-thiol-ene conjugate that is stable, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claims 2 and 13, Akrach teaches the amine is an alkyl diamine or alkyl triamine ([0030]-[0039], [0119], [00294]-[00375]; claims 17 and 81).
Regarding claims 3 and 15, as discussed above, Espeel provided the guidance to do so by providing the direct guidance for using of thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of amine-thiol-ene conjugate of Akrach.
Regarding claim 4, as discussed above, Espeel teaches amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the suitable thiolactone.
Regarding claim 5, Akrach teaches the ene is vinyl compound or an acrylate ([00294]-[00375]; claims 21-23 and 87-88).
Regarding claims 7 and 9-11, Akrach teaches the shell contains a free-radically crosslinked reaction product of the amine-thiol-ene conjugate with multifunctional (meth)acrylate and/or an isocyanate or a crosslinked reaction product of the amine-thiol-ene conjugate with a Michael adduct containing a multifunctional (meth)acrylate ([0017]-[0023], [0030]-[0039], [0060], [0073]-[0080], [00103], [00115]-[00131], [00155], [00294]-[00375]; claims 1-94).
Regarding claim 8, Akrach teaches the vinyl compound is a triacrylate such as trimethylolpropane triacrylate ([0123] and [00294]-[00375]).
Regarding claim 17, Akrach teaches the multifunctional (meth)acrylate is used in molar excess when compared to the thiol and amine ([00294]-[00375]). Akrach teaches the multifunctional (meth)acrylate is a trifunctional acrylate, tetrafunctional acrylate, pentafunctional acrylate or hexafunctional acrylate ([00115] and [00123]; claim 23).
Regarding claim 18, Akrach teaches the multifunctional (meth)acrylate is selected from the group consisting of trimethylol propane triacrylate, pentaerythritol triacrylate, pentaerythritol tetra acrylate, dipentaerythritol penta acrylate, and dipentaerythritol hexa acrylate ([0123] and [00294]-[00375]; claims 22 and 88).
Regarding claim 19, Akrach teaches the shell contains an isocyanate such as a difunctional or multifunctional isocyanate ([0160]).
Regarding claims 20 and 29, Akrach teaches the core material is a raw perfume/ fragrance oil ([0030]-[0039], [0110], [0128], [00294]-[00375]; claims 27 and 28).
Regarding claim 21, Akrach teaches the core further contains isopropyl myristate or vegetable oil ([00128], [00167], [00279], [00292]).
Regarding claim 22, Akrach teaches that biodegradable microcapsule have biodegradability in accordance with OECD Test methods ([0067]-[0069], [00141]-[00150, [00159], [00353]-[00360]). Given that the delivery particle of claim 1 have been structurally taught by Akrach supra, the biodegradability property as recited in claim 22 would have been implicit in the structurally same delivery particle of Akrach, as it was discussed above, Akrach teaches that biodegradable microcapsule have biodegradability in accordance with OECD Test methods. Thus, it is noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 23, Akrach teaches the shell of the microcapsule is further coated with material such as sodium alginate ([00351]-[00352]).
Regarding claim 25, Akrach teaches the biodegradable microcapsule has an average particle size in the range from about 1 µm to 100 µm ([00157]), which overlaps the claimed particle size range of claim 25. It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the particle size of the delivery particle would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 26-28, Akrach teaches agricultural product containing the biodegradable microcapsule ([00128], [00131], [00155]; claim 27).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 07/01/2026 have been fully considered but they are not persuasive.
Applicant argues: “Akrach's generalized in situ Michael addition networks are not the same as Applicant's claimed ATEC-derived shell polymer.” Applicant alleges “Akrach's disclosure of donor reactants, including thiols, does not expressly disclose thiolactone- derived ATEC polymers. Nor does Akrach inherently disclose such polymers, because a free thiol donor and a thiolactone-derived thiol formed through aminolysis are not necessarily the same structure, are not necessarily used in the same process, and do not necessarily yield the same shell polymer.” Applicant further alleges “Thiolactone has only one reactive group, whereas Akrach et al. only teaches multifunctional thiols [00117], [00126] and Applicants respectfully believe that a thiol with a single reactive group would not work in the process taught by Akrach et al. The multifunctional thiols react to create the polymer chain, while a thiol such as a thiolactone that has undergone the required aminolysis to create a single reactive thiol would cap the molecule and a polymer would not be created.” Thus, Applicant alleges that “a thiol with a single reactive group would not work in the process taught by Akrach et al. and therefore one skilled in the art would not take a thiolactone of Espeel et al. and use it in the process and product of Akrach et al.” (Remarks, pages 9-10).
In response, the disagrees. As discussed in the pending 103 rejection, Akrach teaches a biodegradable microcapsule in which the shell contains an amine-thiol-ene conjugate formed from a reaction product of alkyl diamine or alkyl triamine with a thiol and a multifunctional (meth)acrylate (see 103 rejection, page 9 of this office action). While Akrach’s preferred embodiments used a multifunctional thiol, Akrach does not exclude the use of monofunctional thiol in forming the amine-thiol-ene conjugate that is part of the shell, as Akrach teaches any thiol can be used (Akrach: [00121] and [00230]-[00233]). Thus, as discussed in the pending 103 rejection, it is maintained that It would have been obvious to one of ordinary skill in the art to incorporate a thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of the amine-thiol-ene conjugate of Akrach, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Espeel provided the guidance to do so by providing the direct guidance for using of thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of amine-thiol-ene conjugate of Akrach, as latent thiols such as amino-γ-butyrothiolactone and homocysteine-γ-thiolactone are preferred over thiols due to their advantage of resolving the known thio-related issues of unpleasant smell and poor shelf life. Thus, an ordinary artisan would have looked to using a thiolactone such as amino-γ-butyrothiolactone or homocysteine-γ-thiolactone as the thiol in the production of the amine-thiol-ene conjugate of Akrach so as to avoid unpleasant smell and provide a resultant amine-thiol-ene conjugate that is stable, which is also the objective of Akrach to also provide a stable amine-thiol-ene conjugate in the formation of a stable shell wall (see Akrach: [0014]-[0016], [00329], and [00370]-[00387]). As such, the combined teachings of Akrach and Espeel are properly combined to render obvious Applicant’s claimed invention, as a motivation to combine and a reasonable expectation of success in doing so have been provided in the obviousness analysis of the pending 103 rejection.
As a result, for at least the reason discussed above, claims 1-5, 7-13, 15, 17-23 and 25-29 remain rejected as being obvious and unpatentable over the combined teachings of Akrach and Espeel in the pending 103 rejection as set forth in this office action.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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