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/Restriction
Inventor’s election, with traverse, of the claims of Group I as the group elected to begin prosecution is acknowledged. Inventor’s traversal arguments have been carefully considered and are persuasive. The election/restriction requirement is hereby withdrawn. All claimed subject matter will be examined.
Information Disclosure Statement
The lined-through reference which has been provided is not, in fact, a GB search report as listed on the IDS. It is, rather, apparently a cover letter for the report.
Claim Rejections - 35 USC § 112(b)
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.
Claim 5 is 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.
There is insufficient antecedent basis for the limitation “…the aldehyde is formaldehyde…” in the claim.
Claim 15 is 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.
The terms improving and enhancing in the limitation “…improving the perception of, or enhancing the performance of…” are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In fact, this limitation would seem to be wholly predicated upon a subjective evaluation of what might constitute an improvement or an enhancement. That being the case, the public simply has no way to precisely determine the metes and bounds of the claimed subject matter.
Furthermore, the terms perception and performance in this limitation are unclear because they are undefined. Perceived by whom? And how, exactly? What criteria, determinations or characteristics constitute objective measures of performance? Again, the public simply has no way to precisely determine the metes and bounds of the claimed subject matter.
Clarification is very much in order.
Claim 17 is also 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.
The claim depends from an indefinite claim yet does not relieve the indefiniteness. Dependent claim 17 is also, therefore, indefinite.
Claim Rejections - 35 USC § 112(d)
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.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the present instance, the claim fails to further limit the subject matter of the claim upon which it depends.
Dependent claim 11 simply lists the only possibilities there are with respect to the shell: single layer, bilayer or multilayer. Claim 1, the claim from which claim 11 immediately depends, being silent with respect to the number of layers, intrinsically encompasses all possible numbers of layers (i.e. single, bilayer, multilayer).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4-6, 8, 11, 14 and 18 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 5,204,185, cited in the IDS.
The reference teaches a melamine-formaldehyde microcapsule which encapsulates a dyestuff precursor (i.e. a core-shell microcapsule comprising a benefit agent and a shell surrounding the core), and its method of production (abstract; column 4, line 58; column 9, C. Encapsulation). The examiner notes that the term “benefit agent” of instant independent claim 1 explicitly encompasses dyes and pigments (instant specification page 3, line 12ff.)
The prior art microcapsule is produced by the condensation of a polyamine-aldehyde pre-condensate with casein and subsequent cross-linking (abstract; column 4, line 45; column 5, DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT; column 7, line 24). The microcapsules are utilized in pressure-sensitive recording papers (i.e. carbonless copy papers) (column 1, line 15ff).
The reference teaches that the composition which forms the shell is a cross-linked resin comprising a polyamine joined to casein by a methylene bridge (column 6, line 15ff). That is, the reference teaches a terpolymer with moieties derived from a polyamine, a milk protein and having one methylene unit. In addition, a non-reactive polymer protective colloid may be added to the preparation e.g. polyvinylpyrrolidone (column 4, line 47; column 7, line, 47; column 8, Example 1B).
Allowable Subject Matter
Claims 2, 3, 7, 9, 10, 12, 13, 15, 16 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art appears to be US 5,204,185 cited above and US 10,722,857 B2 (which is the US equivalent of WO 2016/207180 A1 and which is utilized as a benchmark in the experimental section of the instant specification for comparisons with the instant microcapsules and their preparation (abstract; column 3, DETAILED DESCRIPTION OF THE INVENTION; page 28, Example 4; page 29, Example 6). The above cited are does not teach, show, suggest or make obvious the instant microcapsules and their preparation as taught in claims 2, 3, 7, 9, 10, 12, 13, 15, 16 and 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 8/5/2026
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