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 .
Response to Arguments
Applicant's arguments filed 05/27/2026 have been fully considered but they are not persuasive.
Applicant argues Claims 16-17 are drawn to a core-shell microcapsule, and thus, should not read on Group II claims which are drawn to a process, but rather, should read on Group I claims which are drawn to core-shell microcapsules. However, Claims 16-17 are dependent on Claims 11-12. Claims 11-12 are drawn to a process, so by the transitive property Claims 16-17 are also drawn to a process.
Thus, the restriction of Claims 16-17 with the invention of Group II is maintained.
Applicant’s election with traverse of Group 1, Claims 1-10 and 18-20 is acknowledged, and Claims 11-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Claim Analysis
Summary of Claim 1:
A core-shell microcapsule, wherein the shell comprises a polymeric material being a reaction product of at least one polyisocyanate having at least two isocyanate groups and at least one saccharide and/or at least one aminosaccharide having less than 20 monomeric units and wherein the core comprises at least one active ingredient.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-7, and 18-19 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Xia et al. (CN 109679055A; cited in the IDS submitted on 01/08/2024; English translation incorporated herein; hereafter as “Xia”).
Regarding Claim 1, Xia teaches a polyurea microcapsule that encapsulates a core material [¶ 0005; Claim 1], wherein the core material corresponds to the core of Claim 1, and the microcapsule corresponds to the shell microcapsule of Claim 1. Xia teaches the microcapsule comprises:
Polymerization of chitosan oligosaccharide monomers with diphenylmethane diisocyanate as a crosslinking agent [Claims 1, 5-6; ¶ 0005, 0029, 0074], corresponding to the polymeric shell material of Claim 1;
wherein the chitosan oligosaccharide corresponds to the saccharide of Claim 1;
wherein the diphenylmethane diisocyanate corresponds with the polyisocyanate having at least two isocyanate groups of Claim 1;
A Core, comprising abamectin [Claim 5; ¶ 0005], corresponding to the core of Claim 1; wherein abamectin, a pesticide, corresponds with the active ingredient of Claim 1.
Regarding Claims 2, 4-6, and 19, Xia further teaches:
chitosan oligosaccharides with a degree of polymerization below 20
[Claim 1; ¶ 0007], corresponding to wherein the saccharide is bio-derived of Claim 2, wherein the at least one saccharide has 15 or less monomeric units of Claim 4, thereby reading on the linear oligosaccharides of Claim 5, and corresponding to wherein the at least one saccharide has 10 or less monomeric units of Claim 19;
Wherein the primary amines, and primary and secondary hydroxyl groups of the chitosan oligosaccharides read on the primary amine groups, and primary and secondary hydroxyl groups, respectively, of Claim 6.
Regarding Claims 7 and 18, Xia further teaches microencapsules comprising as a core material,
pesticides [¶ 0005], thereby reading on the agrochemicals of Claim 7;
drugs [¶ 0041], thereby reading on the pharmaceuticals of Claim 18.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim 9 are rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xia et al. (CN 109679055A; cited in the IDS submitted on 01/08/2024; English translation incorporated herein; hereafter as “Xia”).
Xia teaches the core-shell microcapsule, polymeric material, polyisocyanate, saccharide, and active ingredient of Claim 1 as set forth above and incorporated herein by reference.
Regarding Claim 9, Xia further teaches the microcapsule is biodegradable [¶ 0002, 0084-0086].
However, Xia does not explicitly teach the microcapsule shell is inherently biodegradable according to the OECD 301F biodegradability standard of Claim 9.
Nevertheless, Xia teaches the same core-shell microcapsule size and core-shell microcapsule biodegradability as required by the instant claims. Therefore, the core-shell microcapsule of Xia would inherently result in the same biodegradability as the instant claims if the microcapsule of Xia was subjected to the same OECD 301F biodegradability testing. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Xia et al. (CN 109679055A; cited in the IDS submitted on 01/08/2024; English translation incorporated herein; hereafter as “Xia”) in view of Popplewell et al. (WO 2020/209907 A1; cited in the IDS submitted on 01/08/2024; hereafter as “Popplewell”).
Xia teaches the core-shell microcapsule, polymeric material, polyisocyanate, saccharide, and active ingredient of Claim 1 as set forth above and incorporated herein by reference.
Xia teaches diphenylmethane diisocyanate [Claim 6; ¶ 0005, 0074], which corresponds with the polyisocyanate having at least two isocyanate groups of Claim 3.
However, Xia does not explicitly teach wherein at least one of the one or more polyisocyanates having at least two isocyanate groups comprises an aliphatic structure of Claim 3.
Nevertheless, Popplewell teaches a biodegradable core-shell microcapsule composition, wherein the shell is a biopolymer and the core comprises fragrance [Abstract; ¶ 0006, 0079]. Popplewell further teaches the shell can be a polyisocyanate comprising aliphatic isocyanate [¶ 0066].
Popplewell offers the motivation that the shell of the biodegradable core-shell microcapsule composition is capable of controlled release of an active material in the core [¶ 0006].
Xia and Popplewell are considered to be analogous art as the claimed invention, as all are in the same field of methods of producing biodegradable core-shell microcapsules comprising polyisocyanate.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aliphatic isocyanate of Popplewell with the microcapsule of Xia, with the motivation to have controlled release of the core active material, thereby arriving at the claimed invention.
Claims 8, 10, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Xia et al. (CN 109679055A; cited in the IDS submitted on 01/08/2024; English translation incorporated herein; hereafter as “Xia”).
Xia teaches the core-shell microcapsule, polymeric material, polyisocyanate, saccharide, and active ingredient of Claim 1 as set forth above and incorporated herein by reference.
Regarding Claim 10, Xia further teaches a method of making the microcapsules and then dispersing the microcapsules in water [¶ 0074], corresponding to a microcapsule slurry comprising a plurality of core-shell microcapsules dispersed in an aqueous phase of Claim 10.
However, Xia does not explicitly teach wherein the microcapsule concentration within the aqueous phase is greater than 5% and less than 70% by weight of Claim 10.
Nevertheless, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.) Where the principle difference between the claimed process and that taught by the reference is a concentration difference, it is incumbent upon applicant to establish criticality of that difference.
Regarding Claims 8 and 20, Xia further teaches a particle size of 1-5 µm [¶ 0081], which overlaps the median particle size by volume (Dv(50)) of 1-100 µm of Claim 8, and the median particle size by volume (Dv(50)) of 5-50 µm of Claim 20.
However, Xia does not explicitly teach a median particle size by volume (Dv(50)) of 1-100 µm of Claim 8, and a median particle size by volume (Dv(50)) of 5-50 µm of Claim 20.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Xia for the particle size (1-5 µm) overlaps the instantly claimed range (1-100 µm of Claim 8, and 5-50 µm of Claim 20) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schwantes (US 8455098 B2) teaches microcapsules with a core-shell structure [Claim 1] comprising polysaccharide [Claim 12], and aliphatic diisocyanates that form polymeric polyurethane shells [Column 1, Lines 65-67].
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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