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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 in the reply filed on 16 April 2026 is acknowledged. The traversal is on the ground(s) that according to 37 C.F.R. 1.475(b), a product and a process specially adapted for the manufacture of said product have unity of invention. This is not found persuasive because the process of Group I cannot be considered to be “specially adapted” for the manufacture of the product of Group II. This is because, as best understood by the examiner, the tetraalkyl orthosilicate of claim 1 in Group I is a reactive intermediate that becomes consumed in the manufacture of a composition. In support of the position that tetraalkyl orthosilicates are reactive intermediates, the examiner cites Issa et al. (Polymers, Vol. 11(537), 2019, pages 1-41). Issa et al. (hereafter referred to as Issa) is drawn to the chemistry of alkoxysilanes, as of Issa, page 1, title and abstract. Issa teaches that alkoxysilanes are consumed in the following manner, as of page 3, relevant text reproduced below.
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The above-reproduced text indicates that tetraalkyl orthosilicates hydrolyze upon contact with water, which would result in tetraalkyl orthosilicates being reactive intermediates and results in them having been consumed in the making of the product of Group II.
As such, the product of Group II could have been made by a process that does not involve the use of tetraalkyl orthosilicate as the tetraalkyl orthosilicate becomes consumed prior to formation of the particle due to hydrolysis. Therefore, the process of Group I would not appear to be “specially adapted” to form the product of Group II because other processes could have been used to form the product of Group II.
37 C.F.R. 1.475(a) states that where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. It does not appear to be the case that there is a corresponding special technical feature between Groups I and II at least because of (a) the rationale provided in the restriction requirement mailed on 16 January 2026 and (b) the fact that a tetraalkyl orthosilicate is a required element of Group I but is not required by Group II because it would have been consumed before the product of Group II would have formed.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-16 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 April 2026.
Claim Rejections - 35 USC § 112(b) – Indefiniteness
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 1-9 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.
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP 2173.05(q), first paragraph. In the instant claims, the claims recite “comprising the combination of an aqueous phase and an oil phase.” This does not appear to be a process step. As such, the claims do not appear to recite a process step as necessitated by MPEP 2173.05(q).
For the purposes of examination under prior art, the examiner will examine claim 1 as if it recites “comprising combining an aqueous phase and an oil phase.” The examiner suggests that claim 1 be amended in the above-indicated manner to overcome this rejection.
Claims 2-3 and 8-9 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.
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. See MPEP 2173.05(d). Additionally, claim language including the term “preferably” has been held to be indefinite; see MPEP 2173.05(c)(I).
Claim 2 recites the language “an active ingredient, preferably an agrochemical.” It is unclear whether the claim is drawn to an active ingredient generically or an agrochemical specifically. Similar issues apply to claims 3 and 8-9, which also recite the term “preferably.”
For the purposes of examination under prior art, the examiner will proceed with the understanding that the broader limitation further limits the claim. In the case of claim 2, the examiner understands that the claim recites an active ingredient rather than an agrochemical.
Claim Interpretation
Claim 1 recites tetraalkyl orthosilicate. As best understood by the examiner, tetraalkoxy silane is understood to have the same meaning as tetralkyl orthosilicate. Both terms are understood to refer to a silicon atom covalently bound to four alkoxy groups. For example, tetraethoxysilane and tetraethyl orthosilicate are both understood to refer to a silicon atom bound to four ethoxy groups.
Claim 7 recites an electrolyte. The examiner understands salts dissolved in an aqueous phase to be electrolytes because said salts increase the conductivity of said aqueous phase.
Claim Rejections - 35 USC § 103 – Obviousness
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) 1-3 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330950 A1).
Cardoso et al. (hereafter referred to as Cardoso) is drawn to a method of making capsules, as of Cardoso, title, abstract, and figure in abstract, reproduced below.
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As to claim 1, the claim requires forming a Pickering emulsion. Cardoso teaches this as of at least paragraphs 0079 and 0082.
As to claim 1, the claim requires an aqueous phase and an oil phase. These are taught as of the above-reproduced figure.
As to claim 1, the claim requires that the oil phases comprises tetraalkyl orthosilicate. Cardoso teaches tetraethoxysilane and tetrabutoxysilane, as of paragraph 0110. These read on tetraethyl orthosilicate and tetrabutyl orthosilicate; see the section above entitled “Claim Interpretation.” Cardoso also teaches alkyltrialkoxysilanes such as triethoxymethylsilane, which appear to serve similar functions, as of Cardoso, paragraph 0110 and the examples of Cardoso, page 35, Table 3. As such, while the prior art teaches all of the claimed components, the prior art is not anticipatory insofar as these components must be selected from various lists/locations in the prior art reference. It would have been prima facie obvious; however, to have selected the recited components from various lists/locations in the prior art reference and to have combined them together. This is because such a modification would have represented nothing more than the predictable use of prior art components according to their established functions. Combining separate prior art components (from a single prior art reference) according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 1, the claim requires that the aqueous phase comprises clay particles. The examples of Cardoso appear to teach silica particles (i.e. those known by the trade name “Aerosil”) rather than clay particles in the water phase, as of the examples from Table 3 of Cardoso on page 35 of Cardoso. As such, Cardoso is not understood to be anticipatory. Nevertheless, Cardoso teaches clay as a substitute for silica to form the first shell, as of Cardoso, paragraph 0054. As such, the skilled artisan would have been motivated to have substituted clay in place of the Aerosil of Cardoso in order to have predictably formed capsules, as desired by Cardoso, with a reasonable expectation of success. The skilled artisan would have been motivated to have included the clay particles in the aqueous phase rather than in the organic phase because Cardoso indicates that clay is a substitute for silica, and the silica of Cardoso was included in the aqueous phase; as such, the skilled artisan would have also been motivated to have placed the clay of Cardoso in the aqueous phase.
As to claim 2, Cardoso teaches a benefit agent, as of the above-reproduced figure from the front page of Cardoso. This reads on the required active ingredient. Cardoso also teaches fertilizers and herbicides in paragraph 0134; these are agrochemicals.
As to claim 3, Cardoso teaches fatty acids in the oil phase in paragraph 0134; this is understood to read on the required alkanoic acid.
As to claim 7, Cardoso teaches sodium chloride in the aqueous phase, as of Cardoso, paragraph 0088. This reads on the required electrolyte.
As to claim 8, Cardoso teaches tetraethoxysilane and tetrabutoxysilane, as of paragraph 0110. These are understood to read on the required tetralkyl orthosilicates.
As to claim 9, Cardoso teaches a pH of about 2 to about 7 in paragraph 0157. This overlaps with the required pH range. While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
Note Regarding Reference Date: The instant application appears to have an earliest effective filing date of 15 October 2021 based upon the foreign priority claim to a patent application to the United Kingdom. Cardoso was published on 22 October 2020. This is less than a year prior to the earliest effective filing date of the instant application. As such, Cardoso is prior art under AIA 35 U.S.C. 102(a)(1) because it was published earlier than the effective filing date of the instant application. Cardoso was also effectively filed earlier than the earliest effective filing date of the instant application; therefore, Cardoso is prior art under AIA 35 U.S.C. 102(a)(2).
As best understood by the examiner, the exceptions under AIA 35 U.S.C. 102(b)(1)(A), 102(b)(2)(A), and/or 102(b)(2)(C) would not appear to be applicable. This is because (a) there are no common inventors between the Cardoso reference and the instant application, and (b) Cardoso is assigned to the Procter and Gamble company, whereas the instant application is assigned to Syngenta. As best understood by the examiner, Procter and Gamble and Syngenta are two separate companies and are not commonly owned; as such, the exception under AIA 35 U.S.C. 102(b)(2)(C) would not appear to be applicable.
Claim(s) 1-3 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330950 A1) in view of Lecomte-Nana et al. (Advances in Bioceramics and Porous Ceramics VIII, 2016, pages 107-124).
Cardoso is drawn to a method of making capsules. See the rejection above over Cardoso by itself.
For the purposes of this rejection, the examiner understands that Cardoso fails to teach a clay.
Lecomte-Nana et al. (hereafter referred to as Nana) is drawn to Pickering emulsions stabilized by clay particles, as of Nano, page 107, title and abstract. Nana teaches the following method, as of Nana, page 109, relevant text reproduced below.
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Elsewhere in the document, Nana teaches addition of tetraethyl orthosilicate, as of Nana, page 110, first paragraph.
Nana differs from the claimed method because in the method of Nana, the TEOS is added 3 days after the formation of the particles, not concurrently with the formation of the particles.
It would have been prima facie obvious for one of ordinary skill in the art to have substituted the clay of Nana in place of the silica of Cardoso to be used in the method of Cardoso. Nana teaches that clay materials are useful for stabilizing emulsions, and are biocompatible and environmentally friendly, as of Nana, page 108. Cardoso teaches the delivery of agricultural materials such as fertilizers and herbicides, as of Cardoso, paragraph 0134. As such, the skilled artisan would have been motivated to have substituted the clay of Nana in place of the silica of Cardoso to have predictably formed an environmentally friendly Pickering emulsion for the predictable delivery of active agents such as fertilizers and herbicides to the soil with a reasonable expectation of success. The simple substitution of one known element (e.g. clay, as of Nana) in place of another (e.g. silica, as of Cardoso) in order to achieve predictable results (e.g. formation of a Pickering emulsion) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
The examiner notes here that Nana teaches, as of the last sentence of the abstract on page 107, that TEOS (i.e. tetraethyl orthosilicate) is “less efficient” as an encapsulating agent, apparently compared with the use of chitosan. Nevertheless, the is not understood to be teaching away. A known or obvious composition (e.g. that which includes TEOS) does not become patentable simply because it has been described as somewhat inferior to some other product (that which includes chitosan) for the same use. See MPEP 2123(II). Additionally, the inferior results obtained by adding TEOS multiple days after the formation of the particles might provide the skilled artisan with a motivation to have tried adding TEOS at a different step in the process, especially in view of the teachings of Cardoso. See MPEP 2143, Exemplary Rationale E, regarding the “obvious to try” rationale, along with MPEP 2144.04(IV)(C).
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330950 A1), in view of Mulqueen et al. (US 2011/0200658 A1).
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330950 A1), in view of Lecomte-Nana et al. (Advances in Bioceramics and Porous Ceramics VIII, 2016, pages 107-124), the combination further in view of Mulqueen et al. (US 2011/0200658 A1).
Cardoso is drawn to a method of making a Pickering emulsion made with TEOS. Nana is drawn to a method of making a Pickering emulsion from clay. See the rejections above over Cardoso by itself and Cardoso in view of Nana.
Neither Cardoso nor Nana teach surface modifying the particles, including clay particles, with aminosilanes.
Mulqueen et al. (hereafter referred to as Mulqueen) teaches a process for forming microcapsules, as of Mulqueen, title and abstract. This process entails the formation of a Pickering emulsion, as of Mulqueen, at least paragraph 0032. Mulqueen teaches modifying clay with aminosilanes, as of Mulqueen, paragraph 0056. The purpose of this modification appears to be the formation of a strong, cross-linked capsule wall and improve the durability and extended release properties of the particles, as of Mulqueen, abstract and paragraph 0067.
Mulqueen does not teach a tetraalkyl orthosilicate; the trialkoxysilane as of Mulqueen, paragraph 0053 would not appear to read on this claimed requirement.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the particles of Cardoso with amino groups via an amino-silane, as taught by Mulqueen. Cardoso is drawn to formation of a microcapsule having a wall, as of Cardoso, paragraph 0078. Mulqueen teaches that the reaction of clay particles with aminosilanes results in strengthening of the wall of a microcapsule. As such, the skilled artisan would have been motivated to have modified the particles of Cardoso or of Cardoso in view of Nana to have been modified with aminosilanes for predictable strengthening of the wall of the microcapsule thus formed with a reasonable expectation of success.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330950 A1), in view of Wei et al. (Journal of Molecular Liquids, Vol. 291, 111341, 2019, pages 1-10).
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardoso et al. (US 2020/0330950 A1), in view of Lecomte-Nana et al. (Advances in Bioceramics and Porous Ceramics VIII, 2016, pages 107-124), the combination further in view of Wei et al. (Journal of Molecular Liquids, Vol. 291, 111341, 2019, pages 1-10).
Cardoso is drawn to a method of making a Pickering emulsion made with TEOS. Nana is drawn to a method of making a Pickering emulsion from clay. See the rejections above over Cardoso by itself and Cardoso in view of Nana.
Neither Cardoso nor Nana appear to teach surface modifying the particles, including clay particles, with a cationic surfactant.
Wei et al. (hereafter referred to as Wei) is drawn to cationic surfactant modified silica particles for Pickering emulsions, as of Wei, page 1, title and abstract. Wei teaches modification of particles with a variety of cationic surfactants, as of at least Wei, page 2, figure 2. Wei teaches that the inclusion of cationic surfactants provides increased stability, as of Wei, page 1, 6th and 7th lines of abstract and page 4, right column, section 3.1.
Wei differs from the claimed invention because (a) Wei teaches silica particles rather than clay particles, and (b) Wei does not teach a tetraalkoxysilane.
It would have been prima facie obvious for one of ordinary skill in the art to have included the cationic surfactants of Wei in the methods of Cardoso and Nana. Cardoso and Nana are both drawn to Pickering emulsions, as of Cardoso, figure on front page and Nana, title. Wei teaches that cationic surfactants stabilize Pickering emulsions. As such, the skilled artisan would have been motivated to have included the cationic surfactants of Wei with the Pickering emulsions of Cardoso and Nana in order to have predictably increased the stability of said Pickering emulsions with a reasonable expectation of success.
Additional Cited Prior Art
As additional relevant prior art, the examiner cites Cardoso et al. (US 2020/0330949 A1) and Cardoso et al. (US 2020/0330948 A1). The teachings of these references appear to be very similar to those of Cardoso et al. (US 2020/0330950 A1), over which the claims have been rejected above.
In selecting the references to be used in rejecting the claims, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid an unnecessary number of rejections over similar references. The examiner is not called upon to cite all references that may be available, but only the "best." (See 37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. See MPEP 904.03. Cardoso et al. (US 2020/0330949 A1) and Cardoso et al. (US 2020/0330948 A1) appear to be just as good as, but no better than Cardoso et al. (US 2020/0330950 A1). As such, in view of the guidance provided in MPEP 904.03, no additional rejections have been written over Cardoso et al. (US 2020/0330949 A1) and/or Cardoso et al. (US 2020/0330948 A1).
Also as relevant, the examiner cites Baillot et al. (Langmuir, Vol. 32, 2016, pages 3880-3889 and supplemental pages 1-4), which was previously cited in the restriction requirement mailed on 16 January 2026. Baillot et al. (hereafter referred to as Baillot) is drawn to a method of making Pickering emulsions, as of Baillot, page 3880, title and abstract. This method makes use of tetraethyl orthosilicate (abbreviated as TEOS), as of page 3881, left column, bottom paragraph and page 3884, right column, bottom half of page. However, Baillot does not appear to teach clay, as the particles which form the Pickering emulsion of Baillot are silica particles rather than clay. As such, for this reason, the examiner does not consider Baillot to be the closest prior art and no rejection over Baillot has been written by the examiner. With that being said, the teachings of Baillot would still appear to be relevant regarding the determination of what the skilled artisan would have expected upon combining TEOS with a Pickering emulsion.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISAAC SHOMER whose telephone number is (571)270-7671. The examiner can normally be reached 7:30 AM to 5:00 PM Monday Through Friday.
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ISAAC . SHOMER
Primary Examiner
Art Unit 1612
/ISAAC SHOMER/ Primary Examiner, Art Unit 1612
Prosecution Insights