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 .
Election/Restrictions
Applicant’s election without traverse of Group II, Claims 11-16, in the reply filed on 6 March 2025 is acknowledged.
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6 May 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
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.
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.
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.
Claims 11-16 and 20-26 are 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 11 has been amended to recite the limitation “sufficient to dissolve the amorphous polyester resin and the polymeric stabilizer into a single-phase solution.” The application as originally filed describes dissolving an amorphous polyester resin and polymeric stabilizer into a solvent (Fig. 1; original Claim 11; [0006, 0027, 0056,0058]). What is more, when describing dissolving the polyester resin and polymeric stabilizer, the specification reads, “dissolving the polyester resin and polymeric stabilizer into a water-miscible organic solvent together with the essential oils to form a first fluid mixture.” Paragraph [0058] reads specifically that a first fluid mixture includes all of an essential oil, polymeric stabilizer and water-miscible organic solvent, but describes only that “the polyester and polymeric stabilizer components are dissolved in to the organic solvent”; the paragraph does not state that the essential oil is dissolved, which leaves open the strong possibility that the essential oil is a different phase. The application as originally filed does not describe dissolving an amorphous polyester resin and polymeric stabilizer into a single-phase solution, even less so in a case where the solution also includes an essential oil.
Claims 11-16 and 20-26 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 11 recites the limitation “the water-miscible organic solvent” in line 6. There is insufficient antecedent basis for this limitation in the claim. Examiner considers the limitation to include the interpretation “a water-miscible organic solvent.”
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.
Claim(s) 11, 13-16, 20, and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwantes et al. (US 2006/0263518) in view of Morishita et al. (US 3,943,063), Zuo et al. (US 9,428,622), and Yan et al. (US 2016/0106635).
Regarding Claims 11 and 20, Schwantes et al. (US’518) teaches a process for producing a composition comprising spherical microparticles containing one or more essential oils using oil in water (O/W) emulsion (Abstract). The manufacture of microcapsules by O/W emulsification was well-known in the art at the time of invention, generally including steps of a) combining core materials with a solvent, a polymer, which becomes a wall or shell, and b) adding a “non-solvent” or continuous phase material from which microcapsules precipitate. US’518 describes a common microencapsulation process (coacervation), including emulsifying or dispersing a core material in a medium, including polymer (“polymer rich”), wall material, and a polymeric stabilizer (i.e. “emulsifying agents”) followed by adding a polar solvent (“water”), and solidifying the wall material [0007,0009,0090,0062]. US’518 suggests that polyester can be a wall material [0007]. Core materials can include essential oils, which are dispersible in monomers or oligomers dispersed in an “internal phase oil” [0011,0015,0017-0018]. US’518 In the inventive process of US’518, the oil phase can include an organic solvent in addition to core material, wall material polymer precursor, and polymeric stabilizer [0059,0062]. US’518 fails to clearly teach dissolving polyester resin in a water-miscible organic solvent together with core material (e.g. essential oil of US’518). Morishita et al. (US’063) is analogous prior art, which teaches a general, well-known, and old method for microencapsulation of core materials, including dispersing or dissolving a core substance in a polymer solution including an organic solvent to form a first fluid mixture (Abstract; col. 1, lines 17-20, 49-54, and 57-58) followed by adding a polar solvent (e.g. water) to the first fluid mixture at a predetermined rate, thereby forming a second fluid mixture comprising precipitated spherical (“globular”) microparticles, since water is a nonsolvent for a polymer in the internal phase (col. 1, lines 55-56 and 59-62; col. 9, lines 11-19; also, col. 1, lines 17-27, which reverse the role of water as nonsolvent and organic solvent in O/W for W/O, but which is an obvious alternative in light of US’518). The organic solvent can be water-miscible (e.g. acetone or tetrahydrofuran, col. 1, lines 53 and 57-58). The invention of US’063 includes steps of combining a core material, polymer, solvent (including organic solvents), and stabilizers (surface active agents and emulsion stabilizing agents) to form a first fluid mixture (col. 7, lines 23-25, 47-49, and line 58 to col. 8, line 26), then adding a nonsolvent to the first mixture at a predetermined rate, thereby forming a second fluid mixture comprising precipitated microparticles (col. 8, line 66 to col. 9, line 10), then collecting the precipitated microcapsules (col. 9, lines 11-15). US’063 further teaches constraints on choice of polymer, solvent, vehicle, and non-solvent, including that polymer solvents should be miscible with non-solvents (col. 5, lines 9-10). Thus, Table 1 shows that when a polar nonsolvent is used (e.g. isopropanol, water, acetone, butanol) to precipitate microcapsules, a water-miscible organic solvent is used (e.g. acetone, ethanol, methanol, acetic acid, isopropanol, formic acid, dimethylformamide, dimethylsulfoxide). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of encapsulating a core of essential oils in a wall of polyester using a general process of coacervation or O/W emulsification outlined in US’518 by encapsulating the essential oils with steps, including dissolving provided polyester resin (wall-forming polymer taught in US’518), a polymeric stabilizer and a water-miscible organic solvent together with an essential oil core material to form a first fluid mixture, adding a polar solvent to the first fluid mixture at a predetermined rate to form a second fluid mixture comprising precipitated microparticles, and then collecting precipitated microparticles, because US’063 suggests that these general steps of microencapsulation for encapsulating materials have been known since 1976 and are analogous to both the inventive and the prior art processes taught in US’518.
The combination of US’518 in view of US’063 fails to teach an amorphous polyester resin. Zuo et al. (US’622) is analogous art for microencapsulation by phase inversion, analogous to coacervation and O/W emulsification and phase separation in US’518 and US’063, and suggests that a polyester resin can be used to form a shell in a process including dissolving a polyester resin, including an amorphous polyester resin produced from reacting a diol with a diacid (optionally with a catalyst, col. 6, lines 6-22 and conventional), in an organic solvent to form an emulsion to which is added water (a polar solvent) to provide a latex (Abstract), which is used to form a shell (col. 18, lines 25-41). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’518 in view of US’063 by dissolving an amorphous polyester resin into the water-miscible organic solvent to form a wall/ shell, because US’622 suggests that an amorphous polyester resin, including one formed from a diol and diacid in presence of a catalyst (also conventional), can be used in processes analogous to those taught in US’518 and US’063 to form particles, including a shell around a core.
The combination of US’518 in view of US’063 and US’622 fails to teach a nucleating agent. Yan et al. (US’635) is analogous art in the field of processes for producing microcapsules, comprising a core and a wall (Abstract), including those whose cores comprise essential oils [0139]. US’635 teaches adding nucleating agent to core materials to narrow melting and solidifying temperatures of a phase change material closer together, especially useful in specific applications, such as domestic applications or for garments [0034-0035]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’518 in view of US’063 and US’622 by adding a nucleating agent to either the first or second fluid mixtures or both; because the limitation “before, after, or during” comprehends the entire process and it would have been obvious to add a nucleating agent to either the first or second fluid mixture, it is clear that the obvious addition of nucleating agent would take place “before, after, or during” a step of the process.
As to the recited limitation “heating . . . to a temperature sufficient to dissolve.” It is well-known and conventional to heat a solution to increase solubility and rate of dissolution. Therefore, it would have been obvious to modify the combination of references by heating the solution in order to increase the rate of dissolution and to increase solubility of solutes, because it was both well-known and conventional to heat a solution to increase solubility and increase the rate of dissolution.
Regarding Claim 13, US’518 teaches prior art techniques, including a) adding a core material to solvent (dissolved in an organic oil phase) to which is then added a nonsolvent [0007]; b) adding core material to a dispersion medium and polymer wall material and then changing “solvent characteristics of the medium” to cause phase separation [0009]; and c) combining a polymeric emulsifier (i.e. stabilizer) and aqueous solvent; and combining core material, polymer, monomer, and the emulsifier dispersed in the water phase (Table 1; [0029]). US’063 suggests first adding polymer to a solvent to adjust viscosity (col. 7, lines 23-46) and then adding core substances to the polymer solution containing polymer and solvent. US’063 also suggests adding stabilizer (i.e. surface active agents) to a vehicle before adding it to the dispersion containing core substance, solvent, and polymer to emulsifying the solution easily and stably (col., lines 58-68). US’622 suggests generally combining a polyester resin, surfactant (stabilizer), and organic solvent together before adding water to form an emulsion, including in a “pre-blend mixture” prior to dissolution (Claim 1; col. 11, lines 5-10; col. 12, lines 29-37). US’518 fails to teach the precise order of combining ingredients in Claim 13. However, the evidence in US’518, US’063, and US622, suggests that while an order might provide certain advantages under at least some conditions, as in US’063, the order is not necessary to achieve an adequate emulsion for microencapsulation, as suggested US’518 and US’622. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references by combining the polyester resin, the polymeric stabilizer, and the essential oils together before being placed in contact with the water-miscible organic solvent, because the combination of references, when taken as a whole, suggests that the order of adding ingredients is not particularly critical for forming microcapsules. Additionally, it is prima facie obvious to mix components in any order or simultaneously. MPEP 2144.04.IV.C.
Regarding Claim 14, US’063 teach film-forming polymers, which can also be considered to be a polymeric stabilizer, since they help form a stable film, including polyacrylonitriles, polyvinyl chlorides, polyvinyl acetates, polyvinyl alcohols, polyvinyl pyrrolidones, methyl acrylate-methacrylic acid copolymers, vinyl chloride-vinyl acetate copolymers, cellulose acetate, hydroxy propyl cellulose, cellulose acetate phthalate, and gelatin (col. 3, line 65 to col. 4, line 20). US’622 teach surfactant stabilizers, including polyacrylic acid, carboxymethyl cellulose, and polyoxyethylene (i.e. polyethylene oxide) (col. 11, lines 51-67). US’518 teaches water (though not an organic solvent as claimed) as a solvent (also, “aqueous”) [0015,0056,0059,0066]. US’063 teaches water, acetic acid, polyethylene glycol, and dimethylformamide (col. 4, lines 44-52; col. 5, line 14 to col. 6, line 5). US’622 suggests that poly(propoxylated bisphenol co-fumarate), poly(ethoxylated bisphenol co-fumarate), poly(butyloxylated bisphenol co-fumarate), poly(co-propoxylated bisphenol co-ethoxylated bisphenol co-fumarate), poly(1,2-propylene fumarate), poly(propoxylated bisphenol co-maleate), poly(ethoxylated bisphenol co-maleate), poly(butyloxylated bisphenol co-maleate), poly(co-propoxylated bisphenol co-ethoxylated bisphenol co-maleate), poly(1,2-propylene maleate), poly(propoxylated bisphenol co-itaconate), poly(ethoxylated bisphenol co-itaconate), poly(butyloxylated bisphenol co-itaconate), poly(co-propoxylated bisphenol co-ethoxylated bisphenol co-itaconate), poly(1,2-propylene itaconate) are adequate for forming microcapsules by emulsion (col. 8, lines 11-29; col. 16, lines 61-67; col. 17, lines 8-15). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references by using the claimed stabilizers, solvents, and polyester resins in combination, because the combination of references suggests their suitability as components for producing microcapsules by emulsion.
Regarding Claim 15, US’622 suggest that an amorphous polymer used for making analogous microparticles by emulsion should have a glass transition temperature (Tg) of between 30 and 80 C, including between 35 and 70 C (col. 9, lines 26-30; col. 19, lines 26-37). The claimed and taught ranges of glass transition temperature substantially overlap. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references by using a polyester resin within the recited range of glass transition temperature, because US’622 suggests that amorphous polyester resins are suitable for producing analogous microparticles through analogous and conventional methods (emulsion, encapsulation), and that amorphous resins should have a glass transition temperature within the substantially overlapping range.
Regarding Claim 16, US’518 teaches a heating step to polymerize a formed wall material in the range of 90 C [0021,0079] and also heating to 70 C to achieve a desired particle size [0083]. In addition, US’622, which teaches amorphous polyester resins teaches heating within a range of 30-80 C to form a shell (col. 18, line 65 through col. 19, line 3), to a temperature of 100 C to achieve a desired particle size through aggregation (col. 18, lines 18-24, and to a temperature between 45 C and 150 C or 55-99 C to achieve a desired final shape of the particle, including a shell (col. 19, lines 25-31). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references by heating the second fluid mixture to a temperature of between 70 to 100 C, because US’518 and US’622 suggest reasons for heating to within this range, including to form a wall/shell of a microcapsule, to achieve a desired particle size, and to achieve a desired shape.
Regarding Claim 25, US’622 teaches a polycondensation catalyst to make polyesters, whether crystalline or amorphous, including tetraalkyl titanates, dialkyltin oxides, aluminum alkoxide, alkyl zinc, dialkyl zinc, zinc oxide, and stannous oxide (col. 8, lines 1-7). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references by using any of tetraalkyl titanates, dialkyltin oxides, aluminum alkoxide, alkyl zinc, dialkyl zinc, zinc oxide, and stannous oxide as a catalyst for forming polyester, because US’622 suggests any of these as a catalyst for forming polyester.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwantes et al. (US 2006/0263518) in view of Morishita et al. (US 3,943,063), Zuo et al. (US 9,428,622), and Yan et al. (US 2016/0106635) as applied to Claim 11 above, and further in view of Kanda et al. (US 4,923,894).
Regarding Claim 12, US’518 teaches that microcapsules can be used with a wide variety core materials, including essential oils, and for a wide variety of applications, including in agricultural applications (e.g. fertilizer, herbicides) [0011]. The combination of US’518 in view of US’063, US’622, and US’635 fails to teach silica in combination with essential oil. Kanda et al. (US’894) is analogous art, teaching polymeric microcapsules, including a core of essential oil with pesticidal activity (col. 5, lines 47-64). US’894 also suggests including colloidal silica in microparticles with pesticidal activity (col. 10, lines 8-29). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of the combination of US’518 in view of US’063, US’622, and US’635 to include silica in microcapsules, containing essential oil, because US’894 suggests that essential oil and silica both function as pesticides which can be carried by microcapsules.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwantes et al. (US 2006/0263518) in view of Morishita et al. (US 3,943,063), Zuo et al. (US 9,428,622), and Yan et al. (US 2016/0106635) as applied to Claim 11 above, and further in view of DeNicola et al. (CA 2,235,096).
Regarding Claims 21-22, US’635 teaches nucleating agents to minimize difference in melting and solidification temperatures. US’622 suggests adding colloidal silica as a flow aid additive (col. 20, line 4). The combination of references used to reject Claim 11 fails to teach adding colloidal silica as a nucleating agent. CA’096 (1998) teaches that nucleating agents for polymers include talc and colloidal silica (p. 24, first paragraph), and the age of the publication (1998) suggests the nucleating agents are conventional. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references with nucleating agents, including talc and colloidal silica, because CA’096 suggests these compositions as nucleating agents.
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwantes et al. (US 2006/0263518) in view of Morishita et al. (US 3,943,063), Zuo et al. (US 9,428,622), and Yan et al. (US 2016/0106635) as applied to Claim 11 above, and further in view of Pastor et al. (WO 02/079182).
Regarding Claims 22-23, US’063 teaches the addition of powders, including talc and titanium dioxide (col. 8, lines 20-37). US’635 teaches nucleating agents to minimize difference in melting and solidification temperatures and also teaches optional materials, including talc, titanium oxide, and boron nitride [0301]. The combination of references used to reject Claim 11 fails to teach adding, for example, talc, titanium dioxide, or sodium benzoate as a nucleating agent. WO’182 (2002) teaches that nucleating agents for polymers (including polyesters, p. 13, item 18) include talc, titanium dioxide, aromatic carboxylic acid salts (e.g. 4-tert-butylbenzoic acid, diphenylacetic acid, sodium benzoate) (p. 25, sixth paragraph), and the age of the publication (2002) suggests the nucleating agents are conventional. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references with nucleating agents, including talc, titanium dioxide, aromatic carboxylic acid salts, and sodium benzoate, because CA’096 suggests these compositions as nucleating agents for polymers, including polyester.
Claim(s) 24 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwantes et al. (US 2006/0263518) in view of Morishita et al. (US 3,943,063), Zuo et al. (US 9,428,622), and Yan et al. (US 2016/0106635) as applied to Claim 11 above, and further in view of Hanssen (US 2009/0054598).
Regarding Claim 24, the combination of US’518 in view of US’063, US’622, and US’635 fails to teach phosphate ester salts or a “hypernucleating agent.” Hanssen (US’598) teaches both phosphate ester salts and a hypernucleating agent under the trademark HYPERFORM, which was known at the time of invention as “a very good nucleating agent” [0008]; phosphate ester salts are conventional nucleating agents, and nucleating agents sold under the trademark HYPERFORM are well-known, including for polyesters [0048]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references, because US’635 suggests adding nucleating agents, and US’598 teaches both phosphate ester salts and a hypernucleating agent as nucleating agents, including for polyesters.
Regarding Claim 26, the combination of references suggests the obviousness of producing microcapsules both by oil in water emulsions and water by in water in oil emulsions; therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to add the polyester resin, the polymeric stabilizer, and the essential oils in the organic solvent. The order of mixing components, whether mixing the components together before adding them to the solvent, adding them sequentially to the solvent, or adding them all at the same time to the organic solvent is a prima facie obvious change in order of adding components absent evidence of unexpected results. MPEP 2144.04.IV.C.
US’635 teaches a nucleating agent (see rejection of Claim 11 above). The combination of US’518 in view of US’063, US’622, and US’635 fails to teach phosphate ester salts or a “hypernucleating agent.” Hanssen (US’598) teaches both phosphate ester salts and a hypernucleating agent under the trademark HYPERFORM, which was known at the time of invention as “a very good nucleating agent” [0008]; phosphate ester salts are conventional nucleating agents, and nucleating agents sold under the trademark HYPERFORM are well-known, including for polyesters [0048]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of references, because US’635 suggests adding nucleating agents, and US’598 teaches both phosphate ester salts and a hypernucleating agent as nucleating agents, including for polyesters.
Response to Arguments
Applicant’s amendment to the claims, filed 28 November 2025, with respect to the rejections of Claim 14 under 35 USC 112(b) and (d) have been fully considered and overcomes the previous rejection under these paragraphs. The rejections of Claim 14 under 35 USC 112(b) and (d) have been withdrawn.
Applicant's arguments filed 28 November 2025, with respect to the rejections of Claims 11-16 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the combination of references fails to teach first forming a homogeneous, single phase solution in which an amorphous polyester resin , a polymeric stabilizer comprising a water-soluble polymer, and essential oil(s) are all dissolved together in a water-miscible organic solvent followed by controlled addition of a polar nonsolvent to induce precipitation of the microparticles (Remarks, p. 11), the combination of references suggests the obviousness of forming microcapsules by placing a oil phase in a water phase or a water phase in an oil phase (i.e. oil in water or water in oil) and then adding a nonsolvent, or “anti-solvent” to precipitate the microcapsules (e.g. US’518, [0007,00059]; US’063, Abstract). Therefore, it would have been obvious to mix the materials in water-miscible organic solvent before adding the non-solvent (polar solvent). Moreover, Claim 11 as amended recites new matter, since the specification does not support dissolving the amorphous polyester resin and the polymeric stabilizer into a single-phase solution where the claim also requires dissolving the polyester resin and polymeric stabilizer together with the essential oils into a water-miscible organic solvent, at least because there is no support for a combination of water-miscible organic solvent and essential oil comprising a single phase solution.
In response to Applicant’s argument the combination of references fails to teach or to suggest the inclusion of amorphous polyesters in a phase for the production of microcapsules (Remarks, pp. 12-14), Zuo et al. (US’622) suggests incorporating an amorphous polyester resin into the shell of a particle with a core and a shell, including as a component of an emulsion (col. 18, lines 27-64).
With regard to nucleating agents, added by amendment (Remarks, p. 14), Yan et al. (US 2016/0106635) and other references are cited to show the obviousness of such additives.
In response to Applicant’s argument concerning combining components in organic solvent before contact with a water-miscible organic solvent (Remarks, p. 16), the order of adding components is a prima facie obvious change in order of adding ingredients (MPEP 2144.04) absent evidence to the contrary.
In response to Applicant’s argument concerning temperatures (Remarks, p. 19), Applicant has not adequately explained why US’622, which suggests incorporating an amorphous resin used as shell material into an emulsion process, is considered to “fundamentally relate to different materials, mechanisms, and process objectives than those of the present invention,” which incorporates an amorphous resin into an emulsion process. Additionally, temperature is an optimizable variable for chemical reactions, and generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sacripante et al. (US 6,063,827) (Polyester resins are generally prepared by a polycondensation process involving the reaction of a diol monomer and a diacid)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712