DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/07/2026 has been considered by the examiner.
Status of the Claims
The claims filed 04/23/2024 is acknowledged.
Claims 1-24 are pending.
Applicant’s election without traverse of Group II, claims 12-20 in the reply filed on 04/02/2026 is acknowledged.
Applicant’s election without traverse of species formula I (AAI adduct) in the reply filed on 04/02/2026 is acknowledged. Applicant indicates claims 12-20 read on the elected species.
After conducting a search, the species election has been withdrawn.
The restriction between groups is maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-11 and 21-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/02/2026.
Claims 12-20 are treated on the merits in this action.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. Rejections not reiterated herein have been withdrawn.
Claim Interpretation
Claim 12 recites: A controlled release particle comprising: a core that comprises at least one hydrophobic active ingredient, optionally a sugar alcohol, and optionally a plasticizer; and a shell that comprises a reaction product of (a) at least one isocyanate resin and optionally an epoxy resin with (b) optionally a hydrolyzed organofunctional silane, at least one inorganic solid particle capable of coupling with a carboxylic acid group, and at least one of the AAI adduct and the AAE adduct of claim 1.
Claim 12 is interpreted to require a core that comprises at least one hydrophobic active ingredient; and a shell that comprises a reaction product of (a) at least one isocyanate resin with (b) at least one inorganic solid particle capable of coupling with a carboxylic acid group, and at least one of the AAI adduct and the AAE adduct of claim 1.
The term “optionally” is interpreted to modify only the materials immediately following the term, i.e., “optionally a hydrolyzed organofunctional silane, at least one inorganic solid particle capable of coupling with a carboxylic acid group, and at least one of the AAI adduct and the AAE adduct of claim 1” means only a hydrolyzed organofunctional silane is optional.
Claim Objections
Claims 12-20 are objected to because of the following informalities: Claim 12 refers to the AAI adduct and AAE adduct of claim 1. The formula and variables definitions of the adducts from claim 1 should be recited in claim 12. Claim 12 is an invention independent from claim 1. For example, claim 1 requires a composition comprising at least one of the adducts having Formula I and Formula II. Claim 12 requires a particle shell comprising a reaction product of at least one of the AAI adduct and the AAE adduct with the additional materials listed in (a) and (b). That is, claim 12 does not require the adducts of claim 1, but instead requires a shell that comprises a reaction product of (a) at least one isocyanate resin and optionally an epoxy resin with (b) optionally a hydrolyzed organofunctional silane, at least one inorganic solid particle capable of coupling with a carboxylic acid group, and at least one of the AAI adduct and the AAE adduct as defined by claim 1. Therefore, the definition of the adducts should be recited in claim 12 to properly invoke the product by process limitation. Appropriate correction is required.
Prior Art
Claims 12-20 are free of the prior art.
The closest prior art of record is Bachawala, US 20220133603. Bachawala teaches environmentally biodegradable microcapsules (Bachawala, e.g., title). The particles comprise a core and a shell (barrier, e.g., claim 1), with a core comprising a hydrophobic active agent, and a shell comprising an isocyanate, an epoxy, an organofunctional silane and a polysaccharide (Bachawala, e.g., 0076 and claim 1), and wherein the shell comprises an amine moiety to react with the isocyanate or epoxy (Bachawala, e.g., claim 1(d)).
Similarly, Bachawala, US 20210237020 teaches controlled release particles including: (a) a core including at least one hydrophobic active ingredient; and (b) a wall at least partially surrounding the core and including the reaction products of: (i) an organofunctional silane; (ii) an epoxy; (iii) an amine; (iv) an isocyanate; (v) an epoxide curing agent (‘020, Abstract).
However, neither Bachawala reference teaches or suggests the shell further comprising a reaction product of an adduct according to formula (I) or (II) as required by claim 12 in combination with the other materials required by claim 12. The prior art of record provides no compelling reason for the skilled artisan to have modified Bachawala’s particles with an adduct according to formula (I) or (II) as required by claim 12 before the filing date of the presently claimed invention.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-18 of US 18643585 in view of Bachawala, US 20210237018.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The reference claims teach controlled release particle comprising: a core that comprises at least one hydrophobic active ingredient, optionally a sugar alcohol, and optionally a plasticizer; and a shell that comprises a reaction product of (a) at least one isocyanate resin and at least one epoxy resin with (b) at least one treated protein isolate, at least one mono epoxy alkoxy silane, at least one hydrolyzed organofunctional silane, at least one gelatinized polysaccharide, at least one amino polysaccharide and at least one adduct, wherein the at least one adduct is at least one of: (i) at least one amine-acid functional urea linked amino acid isocyanate (AAI) adduct having a structure represented by Formula I: Formula I, and salts thereof, and (ii) at least one amine-hydroxy-acid functional amino acid epoxide (AAE) adduct having a structure represented by Formula II: Formula II and salts thereof, where R1 is a moiety of a monomer or a prepolymer comprising two -NCO functional groups wherein the NCO functional groups have reacted to form urea linkages; R2 is a moiety of a monomer or a prepolymer comprising two glycidyl ether epoxide functional groups wherein the epoxide groups have reacted to form amino alcohol groups; R6, R7, R20 and R21 are each independently (CH2)n, wherein n is 1-6; R8, R9, R10 and R11 are each independently hydrogen or CH2X; R12 and R13 are each independently hydrogen, an alkali metal cation, or X; R14 and R15 are each independently hydrogen, an alkali metal cation, or X; R16 and R17 are each independently hydrogen or X; R18 and R19 are each independently hydrogen, SiO3 or X; and each occurrence of X is independently selected from the group consisting of hydrogen and a substituent.
The adducts (AAI and AAE) of the reference claims are the same as those presently claimed as each of the defined variables are the same or overlapping ranges.
The claims of the reference patent are more detailed, but contain a reaction product of (a) at least one isocyanate resin and at least one epoxy resin with (b) at least one treated protein isolate, at least one mono epoxy alkoxy silane, at least one hydrolyzed organofunctional silane, at least one gelatinized polysaccharide, at least one amino polysaccharide and at least one adduct, wherein the at least one adduct is at least one of: (i) at least one amine-acid functional urea linked amino acid isocyanate (AAI) adduct having a structure represented by Formula I: Formula I, and salts thereof, and (ii) at least one amine-hydroxy-acid functional amino acid epoxide (AAE) adduct having a structure represented by Formula II: Formula II and salts thereof.
The reference claims differ from the presently claimed invention in that the reference claims do not expressly teach the shell comprising a reaction product including at least one inorganic solid particle capable of coupling with a carboxylic acid group.
The specification of this case teaches inorganic solid particles comprise materials selected from sodium silicate, sodium metasilicate, organically modified clay, water insoluble clay, minerals, talc, calcium carbonate, bentonite, calcium chloride, magnesium sulfate, hydroxyapatite, calcium phosphate, kaolin, montmorillonite and amine-modified kaolin (Specification, e.g., 0037).
Bachawala teaches similar environmentally biodegradable microcapsules (Bachawala, e.g., title), wherein the shell further comprises inorganic solid particles (Bachawala, e.g., 0088 and claims), and wherein the inorganic solid particles may be clays, minerals, or salts, e.g., talc, calcium carbonate, bentonite (Bachawala, e.g., 0069 and 0216 and example 3). The inorganic solid particles improve the barrier properties of the shell (Bachawala, e.g., 0217).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to modify environmentally biodegradable particles claimed in the reference application by incorporating inorganic solid particles as known from Bachawala which are capable of coupling with a carboxylic acid group with a reasonable expectation of success. The skilled artisan would have been motivated to make this modification to improve the particles barrier properties in the same way reported by Bachawala. The skilled artisan would have had a reasonable expectation of success due to the similarity in the shell material between Bachawala’s particles and that of the reference claims, e.g., based on reaction product of an isocyanate resin and/or epoxy resin with an amine.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A CRAIGO whose telephone number is (571)270-1347. The examiner can normally be reached on Monday - Friday, 9am - 6pm, PDT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A WAX can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CRAIGO/Examiner, Art Unit 1615
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