DETAILED ACTION
Background
The amendment dated May 17, 2024 amending claims 1-5, 7-14, 16-17, 19 and 22-25 and canceling claims 6, 15, 18, 20-21 and 26-31 has been entered. Claims 1-5, 7-14, 16-17, 19 and 22 as filed with the amendment have been examined. Claims 23-25 have been withdrawn from consideration.
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 the invention of Group I, claims 1-5, 7-14, 16-17, 19 and 22 drawn to a liquid encapsulated within a membrane in the reply filed on May 15, 2026 is acknowledged.
Claims 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim and are withdrawn without traverse.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because each of the reference characters A, B and C have been used to designate multiple different depictions of a liquid encapsulated within a membrane in Figures 1-6; and, each of the reference characters A, B, C , D, E and F have been used to designate multiple different depictions of the claims liquid encapsulated within a membrane in Figures 1-4. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
A, B, C, D, E and F in Figure 1; A, B, C, D, E and F in Figure 2; A, B, C, D, E and F in Figure 3; A, B, C, D, E and F in Figure 4; A, B and C in Figure 5; and, A, B, and C in Figure 6.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
In the instant specification, the drawing numbers do not match the drawings. The Only drawings filed are numbered as Figures 1, 2, 3, 4, 5 and 6, whereas the instant specification at pages 2-3 discloses Figures 1A to 1F, Figures 2A to 2F, Figures 3A to 3F, Figures 4A to 4F, Figures 5A to 5C and Figures 6A to 6C. Further, the instant specification does not describe each of the reference characters in the drawings. 37 CFR 1.74.
Appropriate correction is required.
Claim Objections
Claims 1, 4-5, 10 and 22 are objected to because of the following informalities:
In claim 1, at line 4 after “an additive,” insert -- and--;
In claim 4, at line 4 before “, Kappaphycus alvarezii”, delete [[(Spinosum]]) and after “Kappaphycus alvarezii” delete [[(Cottonii)]];
In claim 5, at line 4, after “microcrystalline cellulose,” make --hcc
In claim 10, at line 3 after “care cream” delete the comma [[,]]; and,
In claim 22, at line 2 after “the membrane is-- insert -- a--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-5, 7-14, 16-17, 19 and 22 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.
Regarding instant claims 1, 4, 5 and 19, in claim 1 at line 3; in claim 4, at line 2; in claim 5, at line 2; and, in claim 19 at line 2, the term “derivable from” is indefinite because it renders the scope of the claim unclear. If the recited extract can come from somewhere other than from seaweed, is that extract also claimed?
The Office interprets the claimed extract as one being derived from seaweed.
Regarding instant claim 1, at line 2 the recited wt% of water is indefinite for lacking any basis or denominator for the recited percentage. Is the recited amount of water based on the total weight of the liquid, the total weight of the product, the total amount of an ingredient for the liquid that contains water, the weight of total solids in the product, the total weight of solids in the liquid, or some other basis for the recited percent of water?
The Office interprets the claimed wt% of water as being a wt%, based on the total weight of the liquid, regardless of what else it contains.
Regarding instant claim 3, at line 2 the recited wt% of water is indefinite for lacking any basis or denominator for the recited percentage. Is the recited amount of water based on the total weight of the liquid, the total weight of the product, the total amount of an ingredient for the liquid that contains water, the weight of total solids in the product, the total weight of solids in the liquid or some other basis for the recited percent of water?
The Office interprets the claimed wt% of water as being a wt%, based on the total weight of the liquid, regardless of what else it contains.
Regarding instant claims 3, 5, 8, 12, 14, 17 and 19, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance: claim 3 recites the broad recitation of “less than 15 wt%” water content, and the claim also recites “, preferably less than 13 wt%, more preferably less than 10 wt%”which is the narrower statement of the range;
claim 5 recites the broad recitation of “cellulose polymer”, and the claim also recites “such as hemicellulose, microfibrilated cellulose, microcrystalline cellulose, hydroxypropylmethyl cellulose or carboxymethyl cellulose” which is the narrower statement of the limitation;
claim 8 recites the broad recitation “a plasticizer”, and the claim also recites “such as glycerin or sorbitol” which is the narrower statement of the limitation;
claim 8 recites the broad recitation “a starch”, and the claim also recites “such as cornstarch or tapioca” which is the narrower statement of the limitation;
claim 12, at lines 3-4 recites the broad recitation “from 0.1 to 30 mL of the liquid”; and the claim also recites “preferably from 0.1 to 20 mL, more preferably from 0.1 to 15 mL” which is the narrower statement of the range;
claim 12, at line 5-6 recites the broad recitation “from 2 to 30 mL of the liquid”, and the claim also recites “preferably from 2 to 20 mL, more preferably from 2 to 10 mL” which is the narrower statement of the range;
claim 14 recites the broad recitation “at least 1 week”, and the claim also recites “preferably at least 2 weeks, more preferably at least 3 weeks, yet more preferably at least 4 weeks” which is the narrower statement of the range;
claim 17 recites the broad recitation “from 1 wt% to 100 wt% of glycerine”, and the claim also recites “preferably from 5 wt% to 95 wt% of glycerine, more preferably 10 wt% to 90 wt% of glycerine, such as 20 wt% to 80 wt% of glycerine”; and,
claim 19 recites the broad recitation “volume of the liquid encapsulated in the membrane is from 7 to 20 mL, 7 to 15 mL” and the claim also recites “, or preferably 7 to 12 mL” which is the narrower statement of the range.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In claim 5, at line 2 the recited extract “from seaweed” and the scope of the claim is indefinite because it is not clear if the claim includes the recited “cellulose polymer, hemicellulose, microfibrilated cellulose, microcrystalline cellulose, hydroxypropylmethyl cellulose or carboxymethyl cellulose”. Further, none of the recited cellulose polymers come from seaweed.
Regarding instant claim 17, at lines 2-3 the recited wt% of glycerine is indefinite for lacking any basis or denominator for the recited percentage. Is the recited amount of glycerine based on the total weight of the liquid, the total weight of the product, the total amount of an ingredient for the liquid that contains water, the weight of total solids in the product, the total weight of solids in the liquid, or some other basis for the recited percent of glycerine?
The Office interprets the claimed wt% of glycerine as being a wt%, based on the total weight of the liquid, regardless of what else it contains.
Claims 2, 7, 9-11, 13, 16 and 22 are rejected as depending from a rejected base claim.
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 1-3, 5, 7-9, 11-14, 16, 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US8916192 B2 to Andersen et al. (Andersen).
The Office interprets the claimed extract as one being derived from seaweed. Further, the Office interprets the claimed liquid as having a water content based on the total weight of the claimed liquid.
Regarding instant claims 1-2, 5 and 7, Andersen at col. 12, lines 28-42 discloses capsules comprising membranes from carrageenan, including kappa carrageenan, and alginates (claim 5) which are extracts derived from (at col. 13, lines 3-25) seaweed. Further, at col. 14, lines 14-23, Andersen discloses that the capsules comprise a liquid emulsion encapsulated within the membrane comprising at least 50 wt% of an oil phase as well as water and emulsifier (claim 7) and an added component, wherein at col. 14, lines 42-47 Andersen discloses both water in oil and oil in water emulsions (“water-based liquid” in claim 2). Still further at col. 15, lines 45-49 Andersen discloses that the additive comprises a food or cosmetic ingredient (“food product” or “cosmetic product”).
Further and regarding instant claim 3, at claim 7 Andersen discloses a dried capsule having a water content of less than 10 wt%, based on the total weight of the capsule, which the claimed 1 to 20 wt% based on the total weight of the liquid overlaps, and which the claimed less than 15 wt% water, based on the total weight of the liquid overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Andersen would have found it obvious to include water in the amount of from 1 to 20 wt% of its liquid because Andersen discloses that desirable liquids encapsulated within a membrane comprise the claimed amount of water. The Office interprets the recited amount of water as including the amount in the liquid contained in the membrane of Andersen at any time, including before, during and after drying and as including the amount of water in the liquid for any amount of time, including a transitory period of time.
Regarding instant claim 8, at col. 15, line 64 to col. 16, line 7 Andersen discloses its liquid and added component as including plasticizers such as glycerol, and other polyols.
Regarding instant claim 9, the Office considers the claimed liquid that is edible and/or suitable for applying onto a body part as including the liquid encapsulated within a membrane of Andersen at col. 15, line 45-49 comprising food products and cosmetic products.
Regarding instant claim 11, while the Office considers optional limitations including the recited food or drink product sauce, condiment, energy gel or coffee the claims themselves do not require them.
Regarding instant claim 12, Andersen at claim 4 discloses a capsule fill weight of 500 to 2500 mg, which the Office considers to be about 0.5 to 2.5 mL.
Regarding instant claim 13, Andersen at col. 19, last line discloses its capsules as dosage forms. The Office considers the claimed single dose to include any product liquid encapsulated within a membrane as at col. 14, lines 14-23 of Andersen as being a single dose or for a single use.
Regarding instant claim 14, the Office considers the liquid encapsulated within a membrane of Andersen to be substantially the same thing as the claimed liquid encapsulated within a membrane. Accordingly, absent a clear showing as to how the storage stability of the liquid encapsulated within a membrane of Andersen differs from that as claimed, the Office considers the liquid encapsulated within a membrane disclosed at col. 12, lines 28-42 and col. 14, lines 14-23 of Andersen to contain a liquid that remains stably stored within the membrane for at least 1 week and therein the liquid has less than 1 wt% mass loss after 24 hours. See MPEP 2112.01.I.
The Office interprets claim 14 broadly to include any temperature or storage conditions, such as refrigeration because no such conditions are specified.
Regarding instant claim 16, the Office considers the claimed soft gel, capsule or film to include the carrageenan or alginate capsule of Andersen at col. 12, lines 28-42.
Regarding instant claim 19, Andersen discloses at col. 20, lines 48-60 discloses that its capsules have diameters and/or lengths up to 35 mm in any dimension. A spherical capsule of 35mm diameter has a volume of 4/3πr3 or 4.189r3 or, where r=1.75 cm, 4.189 x 5.36 or up to 22.45 cm3 or 22.45 mL which gives a volume range of less than 1 mL to 22.45 mL, within which range the claimed 7 to 20 mL lies. See MPEP 2144.05.I. The ordinary skilled artisan in Andersen would have found it obvious in Andersen to make its capsule to have any claimed volume of from 7 to 20 mL because Andersen disclose making desirable capsules in all of the claimed volume range.
Regarding instant claim 22, Andersen at col. 18, lines 21-30 discloses capsules in any shape including spherical and oval (“ovoid”).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US8916192 B2 to Andersen et al. (Andersen) as applied to claim 1 above, and further in view of US2018/0001291 A1 to Nussinovitch et al. (Nussinovitch).
As applied to claim 1, Andersen at col. 12, lines 28-42, col. 14, lines 14-23, col. 14, lines 42-47 and claim 7 discloses liquid encapsulated within a membrane comprising an extract derived from a seaweed and containing from 1 to 20 wt% of water, based on the total weight of the liquid, wherein the liquid comprises i) a personal hygiene or cosmetic product; or ii) a food or drink product.
The Office interprets the claimed extract as one being derived from seaweed.
Andersen does not discloses its membrane extract derived from seaweed is sourced from one of Gelidium, Gracilaria, Chondrus crispis, Eucheuma Denticulatum, Kappaphycus Alvarezii, Gigartina skottsbergii, Euchema Cottonii, Gigartina Stellata, Ulva or Chondrus. However, at col. 12, lines 56-64 Andersen discloses its membrane as comprising kappa carrageenan.
Nussinovitch discloses at [0086] kappa carrageenan’s for use (at [0064]) in making membranes are derived from Kappaphycus alvarezii.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Nussinovitch for Andersen to derive its kappa carrageenan from Kappaphycus alvarezii or to derive any of its alginate and carrageenan from known claimed seaweed sources. Both references disclose alginates and carrageenans as membrane forming polymers from seaweed. The ordinary skilled artisan in Andersen would have desired to use the kappa carrageenans from Kappaphycus alvarezii as in Nussinovitch to make its capsule from a reliable gelatine free source.
Claim(s) 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US8916192 B2 to Andersen et al. (Andersen) as applied to claim 1 above, and further in view of DE102019201364 A1 to Burr et al. (Burr).
All references to Burr refer to its Clarivate machine translation, a copy of which is provided with this Office action.
As applied to claim 1, Andersen at col. 12, lines 28-42, col. 14, lines 14-23, col. 14, lines 42-47 and claim 7 discloses liquid encapsulated within a membrane comprising an extract derived from a seaweed and containing from 1 to 20 wt% of water, based on the total weight of the liquid, wherein the liquid comprises i) a personal hygiene or cosmetic product; or ii) a food or drink product.
Andersen does not disclose a liquid encapsulated within a membrane that is a personal hygiene or cosmetic product of a shower gel, shampoo, conditioner, sun cream, skin care cream, or toothpaste as in claim 10. Further, Andersen does not disclose an example of the glycerol content in its encapsulated liquid at col. 15, lines 46-67 or a liquid having a 1 wt% to 100 wt% glycerin content, based on the total weight of the liquid as in claim 17. However, Andersen at col. 15, lines 46-67 discloses an encapsulated emulsion liquid containing glycerine and that the liquid comprises emulsifiers.
The Office considers a disclosure emulsifiers as being a disclosure of cleaning agents, soaps and detergents.
Burr in the Abstract at page 2 discloses a cosmetic product comprising a capsule containing a liquid comprising an oil as a liquid encapsulated within a membrane from Chondrus chrispus extract. In page 2, at “Description” Burr discloses cosmetics for the care and cleaning of the skin. The Office considers the claimed shower gel, skin care cream and sun cream to include the oil containing cosmetics of Burr. Further, at page 5, 2nd full paragraph Burr discloses its liquid as an aqueous cosmetic comprising grom 5 to 15 wt% of glycerol (“glycerine”).
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Burr for Andersen to formulate its emulsion contained in its liquid encapsulated within a membrane and containing a cosmetic product as a skin care cream, sun cream or shower gel. Both references disclose cosmetic oil and glycerine containing aqueous liquids encapsulated within a membrane obtained from a seaweed extract. The ordinary skilled artisan in Andersen would have desired to formulate its emulsion liquid to comprise the claimed amount of glycerine as in Burr to plasticize the liquid in the capsule and would have desired to make its cosmetic as a skin care oil containing formulation as a cream, sun screen or shower gel for care of the skin as in Burr.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791
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