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 I, Species IV, and Species B in the reply filed on 6/15/2026 is acknowledged. The elected claims are 1-6, 8-9, and 11. Examiner notes claim 10 is non-elected because it belongs to Species III, see Figure 4 and [0061] describing the membrane as a plate in the embodiment shown in Figure 4.
Claim Interpretation
Claims 1-6 recite limitations directed to either the intended use of the apparatus or the materials being worked with by the claimed apparatus. As per MPEP §2115, “A claim is only limited by positively recited elements. Thus, inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” Therefore, limitations regarding the curing agent, aqueous solution, stabilizer, polymer, organic liquid, dispersed/continuous phases, etc., which do not positively recite a structural limitation of the apparatus are not considered to be patentably distinct from a similar structure in the prior art. Similarly, the intended use of the structural limitations of the apparatus are not patentably distinct from the prior art having the same structure, see MPEP §2144(II).
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Winchester (US 2011/0204533) modified by Baba (US 2010/0143482, made of record on the IDS dated 5/9/2024.)
Regarding claim 1, Winchester meets the claimed, A system, comprising: a microchannel network comprising: that provide an aqueous solution comprising a stabilizer, (Winchester [0077]-[0079] describe an aqueous phase having lecithin which is a stabilizer) a non-aqueous solution comprising a polymer dissolved in an organic liquid, (Winchester [0060]-[0061] discloses a non-aqueous/organic phase having a polymer) and a curing agent (Winchester [0069] describes a curing agent) a plurality of channels that separately receive the aqueous solution and the non- aqueous solution; (Winchester [0082] describes a mixer having a screen mesh 3300, the holes in the mesh being the microchannel network, [0032] describes the pore sizes of the screen are micro sized, [0084] describes mixing the continuous and dispersed phases) and at least one channel junction where the aqueous solution and the non-aqueous solution mix to form an emulsion; (Winchester [0082] describes a mixing chamber 3150) and an evaporation unit that provides an elevated temperature so that the organic liquid in the emulsion evaporates and microcapsules form, (Winchester [0047] describes evaporators and elevated temperatures to perform the encapsulation, see also [0045]-[0046]) wherein each of the microcapsules comprises a shell comprising the polymer and a core comprising the curing agent (Winchester [0069] describes the curing agent is encapsulated.)
Winchester does not describe a syringe pump and does not meet the claimed, a plurality of syringe pumps that provide an aqueous solution, a non-aqueous solution
Analogous in the field of microcapsule formation, Baba meets the claimed, a plurality of syringe pumps that provide an aqueous solution and a non-aqueous solution (Baba [0055] describes a syringe pump 2 which feeds separate liquid materials into microchannels 12, 13, 14.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the mixing apparatus of Winchester with the syringe pump of Baba in order to provide materials independently and at a suitable flow rate, see Baba [0055].
Regarding claim 2, Winchester meets the claimed, The system of claim 1, wherein the curing agent is selected from the group consisting of an amine-based curing agent, an anhydride-based curing agent, a mercaptan-based curing agent and combinations thereof (Winchester as modified by Baba describes all the structural limitations of claim 1. Since claim 2 does not add any additional positively recited structural elements of the apparatus and only describes the material being worked upon by the apparatus, claim 2 is considered to be met by Winchester and Baba.)
Regarding claim 3, Winchester meets the claimed, The system of claim 1, wherein the curing agent is dissolved in the non-aqueous solution comprising the polymer (Winchester [0069] describe the curing agent is in the non-aqueous phase. Winchester as modified by Baba describes all the structural limitations of claim 1. Since claim 3 does not add any additional positively recited structural elements of the apparatus and only describes the material being worked upon by the apparatus, claim 3 is considered to be met by Winchester and Baba.)
Regarding claim 4, Winchester meets the claimed, The system of claim 1, wherein the curing agent is dissolved in the aqueous solution comprising the stabilizer (Winchester as modified by Baba describes all the structural limitations of claim 1. Since claim 4 does not add any additional positively recited structural elements of the apparatus and only describes the material being worked upon by the apparatus, claim 4 is considered to be met by Winchester and Baba.)
Regarding claim 5, Winchester meets the claimed, The system of claim 1, wherein the curing agent is provided to the microchannel network separately from the stabilizer and the polymer (Winchester as modified by Baba describes all the structural limitations of claim 1. Since claim 5 does not add any additional positively recited structural elements of the apparatus and only describes the material being worked upon by the apparatus or the method of using the apparatus, claim 5 is considered to be met by Winchester and Baba.)
Regarding claim 6, Winchester meets the claimed, The system of claim 1, wherein the emulsion formed in the microchannel network is an oil- in-water emulsion having a continuous phase comprising the stabilizer and water and a dispersed phase comprising the polymer, the curing agent, and the organic liquid (Winchester [0078] describes a continuous aqueous phase and an organic dispersed phase and forms an oil-in-water emulsion.) Winchester as modified by Baba describes all the structural limitations of claim 1. Since claim 5 does not add any additional positively recited structural elements of the apparatus and only describes the material being worked upon by the apparatus, claim 5 is considered to be met by Winchester and Baba.
Claims 8-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Winchester and Baba as applied to claim 1 above, and further in view Gray (US 2008/0171078.)
Regarding claim 8, Winchester does not describe a temperature controlled plate and does not meet the claimed, The system of claim 1, wherein the microchannel network and the evaporation unit are disposed on a plate that is temperature controlled.
Baba meets the claimed, The system of claim 1, wherein the microchannel network is disposed on a plate that is temperature controlled (Baba [0017] describes the microchannels are provided on a substrate and [0087] describe the process is carried out at room temperature meaning the temperature of the substrate is also temperature controlled to be within the range described in [0087].)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the mixer of Winchester with the temperature controlled plate of Baba in order to provide a larger surface area between the two fluids and produce microcapsules more efficiently, see Baba [0018].
For removing solvent, Winchester describes an evaporator at [0047] and solvent extraction via a membrane at [0050] but does not explicitly describe that the evaporator is on a temperature-controlled plate and does not meet the claimed, evaporation unit is disposed on a plate that is temperature controlled.
Analogous in the field of generating encapsulations, Gray describes generating liposomes which are a type of encapsulation. Gray meets the claimed, evaporation unit is disposed on a plate that is temperature controlled (Gray [0058] describes a pervaporation unit that can be used for emulsions and particle formation which includes heaters/coolers 88 in a plate shape, see Figure 8.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the evaporation unit of Winchester with the pervaporation unit of Gray which has heaters and coolers in order to maintain a constant temperature for temperature sensitive molecules, see Gray [0060].
Regarding claim 9, no single embodiment of Winchester describes an evaporator and a permeable membrane however, Winchester [0050] describe a method of solvent extraction includes replacing a portion of the pipe with a semipermeable membrane which is selective for the dispersed/organic solvent, since this membrane is permeable to the liquid solvent, the membrane is also therefore gas-permeable to the vapor of the organic solvent and meets the claimed, The system of claim 1, wherein the evaporation unit comprises a gas-permeable membrane configured to separate evaporated organic liquid.
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the evaporator for solvent removal as disclosed in Winchester [0047] with the membrane separation for solvent removal described in Winchester [0050] in order to control the rate of solvent extraction and control the extraction profile more precisely, see Winchester [0051].
Regarding claim 11, Winchester further meets the claimed, The system of claim 9, wherein the gas-permeable membrane is arranged as a pipe (Winchester [0050] discloses the membrane is used as the pipe.)
Winchester describes using vacuum to extract solvent, see [0049] but does not disclose that the membrane is used in conjunction with a vacuum and does not meet the claimed membrane is… disposed in a casing providing a vacuum environment.
Gray meets the claimed, membrane is… disposed in a casing providing a vacuum environment (Gray [0046] and [0061] describe the membrane is connected to a vacuum pump, see Figure 8 showing the membrane being encased within pervaporation unit 70 having the vacuum.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the evaporation unit of Winchester with the pervaporation unit having a membrane incased in a vacuum as described in Gray in order to selectively remove solvents from the mixture, see Gray [0061].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2004/0068019: see the description beginning at [0051] describing a microdroplet producing apparatus having microchannels 2/3/4 and a space in the middle where the continuous and dispersed phases mix to form microdroplet 7
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.B./Examiner, Art Unit 1744
/EMMANUEL S LUK/Primary Examiner, Art Unit 1744
Prosecution Insights