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 .
Claim Status
Claims 1-23 were previously pending.
A Preliminary Amendment was filed 05 July 2024 whereby claims 1-23 were cancelled and claims 24-42 were added.
Therefore, claims 24-42 are now pending and currently under examination.
Priority
Applicant’s claim for the following priority is acknowledged:
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Information Disclosure Statement (IDS)
The IDS (1) filed on 05 July 2024 has been considered by the examiner. A signed copy is enclosed.
Applicant is reminded of their duty to disclose to the Office all information known to the
person to be material to patentability as defined in 37 CFR 1.56. As stated therein, “[e]ach
individual associated with the filing and prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a duty to disclose to the Office all
information known to that individual to be material to patentability as defined in this section.”
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.
Claims 24-42 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.
Claims 24-33 are rejected under 35 U.S.C. 112(b) for the following reasons:
Claim 24 is indefinite because the phrase “use of a microcapsule composition” fails to clearly set forth the statutory class and metes and bounds of the claimed subject matter. It is unclear whether the claims are directed to a method comprising applying the composition, a composition intended for use, or merely an intended use of the composition.
Claim 24 recites use of the composition “after harvesting to destroy microorganisms found in fruits and vegetables and carried from the agricultural field.” In particular, the phrase “carried from the agricultural field” is ambiguous and lacks an objective meaning in the context of the claim. Is this intended to limit the microorganism source to the agricultural field? Due to the unclear and imprecise wording of the claim, a POSITA would not be able to determine which post-harvest microorganisms fall within the scope of claim 24.
Claims 25-33 are included in this rejection because of their dependency on, and requiring every limitation of, independent claim 24 and failing to cure the defect.
Claim 25 is further rejected under 35 U.S.C. 112(b) for the following reasons:
Claim 25 recites the limitation “in the fight against pests” in claim 24. Claim 24 does not recite a method step involving “pests” specifically and therefore, there is insufficient antecedent basis for this limitation in the claim. It is unclear if this is an additional ‘use’ of the composition or attempting to limit that which is recited in claim 24(i)-(iii).
The phrase ‘fight against pests’ renders this claim unclear and the specification fails to further define this term. What, specifically, would constitute a fight against pests? Mere application of the microcapsule? Prevention of pests? Repelling of pests? Complete obliteration of pests? Since neither the claim nor the specification defines the parameters of ‘fight against pests,’ a POSITA could not determine the metes and bounds of this claim.
Claim 26 is further rejected under 35 U.S.C. 112(b) for the following reasons:
Claim 26 recites the limitation “in the fight against pests” in claim 24. Claim 24 does not recite a method step involving “pests” specifically and therefore, there is insufficient antecedent basis for this limitation in the claim. It is unclear if this is an additional ‘use’ of the composition or attempting to limit that which is recited in claim 24(i)-(iii).
The phrase ‘fight against pests’ renders this claim unclear and the specification fails to further define this term. What, specifically, would constitute a fight against pests? Mere application of the microcapsule? Prevention of pests? Repelling of pests? Complete obliteration of pests? Since neither the claim nor the specification defines the parameters of ‘fight against pests,’ a POSITA could not determine the metes and bounds of this claim.
Claim 26, without an appropriate transitional phrase, reads as a non-limiting list of microorganism examples. The term ‘including’ followed by a list not concluded with the coordinating conjunction ‘and’ or ‘or’ renders the scope of the claim unclear. It is unclear whether the listed microorganisms are required limitations of the claimed use, such that the composition must be used against one or more of the listed microorganisms, or whether the listed microorganisms are merely exemplary. If the listed microorganisms are intended to limit the claim, as the claim will be interpreted for examination purposes, the claim does not clearly state whether the use must be against all listed microorganisms, any one listed microorganism, or at least one listed microorganism selected from the recited group. Accordingly, claim 26 is ambiguous and a POSITA would not be able to determine, with reasonable certainty, the metes and bounds of the claim. Applicant is encouraged to review the following for proper claim construction: https://www.uspto.gov/sites/default/files/documents/Claim%20drafting.pdf
Claims 34-42 are rejected under 35 U.S.C. 112(b) for the following reason:
The limitation in claim 34, “wherein the chitosan content forming the microcapsule wall is in the range of 40-85 vol% of the total volume of the microcapsule,” is ambiguous. It is unclear how the volume percentage of the chitosan in the wall is determined and the claims do not specify whether the recited volume percentage is based on the final hydrated microcapsule, a dried microcapsule, the total core + wall volume, the wall volume alone, or the initial formulation volume. The claims also do not provide a measurement method for determining the volume of chitosan in an ionically crosslinked chitosan/TPP wall structure that may contain TPP, water, solvent, surfactant, carrier oil, and/or essential oil. Accordingly, one of ordinary skill in the art (‘POSITA’) could not determine, with reasonable certainty, whether a microcapsule composition falls within or outside the claimed 40-85 vol% chitosan range. Claims 35-42 are included in this rejection because of their dependency on, and requiring every limitation of, independent claim 34 and failing to cure the defect.
Claim 39 is further rejected under 35 U.S.C. 112(b) for the following reason:
The phrase ‘adding sodium tripolyphosphate (TPP) as a crosslinker solution’ is ambiguous because TPP is typically provided as a solid compound. It is unclear how TPP becomes a crosslinker solution with an ability to be added dropwise.
Claim 40 is further rejected under 35 U.S.C. 112(b) for the following reason:
Claim 40 recites “the crosslinker solution is used at a concentration of 0.08 to 0.5 vol%.” It is unclear whether this limitation refers to the concentration of TPP within the crosslinker solution, the volume of crosslinker solution relative to the reaction mixture, or some other basis. Because TPP is typically provided as a solid dissolved in solvent, the use of vol% for the concentration of the TPP crosslinker solution is unclear absent further definition or measurement basis.
Claim 41 is further rejected under 35 U.S.C. 112(b) for the following reason:
Claim 41 recites the limitation “polymer-based phase” in claim 39. Claim 39 does not recite a polymer-based phase and therefore, there is insufficient antecedent basis for this limitation in the claim.
Claim 42 is further rejected under 35 U.S.C. 112(b) for the following reasons:
Claim 42 recites the limitation “polymer-based phase solution” in claim 39. Claim 39 does not recite a polymer-based phase solution and therefore, there is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 24-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because a “use” is not one of the statutory classes of invention.
Claim Rejections - 35 USC § 102
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 24-25 and 29 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Linder (WO 2016/170531, published: 27 October 2016).
Linder discloses a microcapsule including a core comprised of at least one essential oil and a shell comprised of an interpolymeric complex of at least one polyacid and at least one other polymer; wherein the interpolymeric complex is cross-linked with at least one multivalent cationic moiety (abstract)
Regarding claims 24 and 29, Linder discloses:
A method for inhibiting post-harvest infections in crops by applying the disclosed microcapsules on or in the vicinity of the crop (p. 33, lines 16-18);
The disclosed microcapsules used as acaracides, antimicrobial agents, or antifungal agents (p. 33, lines 25-30);
The disclosed microcapsules used as a food preservative (p. 33, lines 28-30).
Linder further discloses working examples, wherein the composition of said microcapsules includes:
Thyme/oregano oil (essential oil); 2% chitosan solution; and TPP (p. 49, Table 16).
Regarding claim 25, Linder discloses the formulations were tested as a repellent against silver leaf whiteflies on tomato seedlings, and the efficacy of the formulation as a repellent was measured (p. 57, lines 25-31). Silver leaf whiteflies are known greenhouse pest.
Therefore, Linder anticipates that which is claimed in instant claims 24, 25, and 29.
Claim Rejections - 35 USC § 103
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 26-28, 32-37, and 39-42 are rejected under 35 U.S.C. 103 as being unpatentable over Linder (previously cited above).
As set forth above, Linder anticipates independent claim 24 and dependent claims 25 and 29. The following rejection addresses the additional limitations recited in claims 26-28, 32-37, and 39-42.
Regarding claim 26, Linder teaches the microcapsule composition is used to repel crop pathogens such as fungi (p. 33, lines 20-22). Furthermore, Linder contemplates embodiments of the microcapsule composition to treat orange and lemon crops infected with Penicillium digitatum (p. 49, lines 8-14). Furthermore, Linder contemplates embodiments of the microcapsule composition to treat fruits and vegetables for the prevention of Aspergillus (p. 52, lines 17-18).
Regarding claims 27, 28, 32 and 33, Linder teaches the essential oil active ingredient of the microcapsule can be a derivative of an essential oil (p. 6, line 28). Furthermore, Linder teaches the essential oil derivative can be thymol, carvacrol, geraniol, cinnamaldehyde, eugenol, limonene, citral, or any combination thereof (p. 6, lines 28-32; p. 7, lines 1-3).
Regarding claim 34, Linder teaches a formulation comprising: thyme/oregano oil; chitosan; and TPP, wherein TPP crosslinks the chitosan (p. 49, Table 16). However, to the extent claim 34 requires a measurable final microcapsule wall comprising 40-85 vol% chitosan, Linder’s formulation does not expressly disclose that value. However, until further clarification is provided, that specific limitation cannot be meaningfully examined. The instant claim language is very ambiguous and the examples provided in the specification appear to describe the chitosan solution feed volume rather than final chitosan content in the microcapsule wall. The specification examples appear to support, at most, that the chitosan solution phase/feed volume may constitute 40 to 85 vol% of the formulation mixture. The specification does not clearly describe measuring the actual chitosan polymer content in the final microcapsule wall as 40 to 85 vol% of the total microcapsule volume as claimed.
Linder’s Formulation 26 discloses 80 g of a 2% chitosan solution in approximately 1000 g formulation. This corresponds to about 8 wt% chitosan solution in the overall formulation and approximately 1.6 g actual chitosan polymer, or about 0.16 wt% actual chitosan polymer based on the total formulation weight. The formulations disclosed by applicant appear to contain chitosan polymer in an amount of approximately 0.6 to 0.8 wt%, which is close to the value disclosed by Linder.
To the extent the limitation of 40 to 85 vol% chitosan content forming the microcapsule wall is understood as referring to the volume of the chitosan-containing solution or polymer phase used during preparation, such limitation would have been obvious as a result-effective formulation variable. The relative amounts of polymer phase, oil phase, and crosslinker phase are ordinary formulation parameters that affect capsule formation, wall thickness, encapsulation efficiency, release rate, and stability. It is fully within the capabilities of a POSITA to adjust the chitosan-containing phase variable relative to the oil and crosslinker phase to obtain stable essential oil microcapsules having the desired encapsulation and release properties.
Regarding claim 35, Linder teaches thymol as an active essential oil ingredient (p. 6, lines 28-32; p. 7, lines 1-3).
Regarding claim 36, Linder teaches the essential oil active ingredient of the microcapsule can be a derivative of an essential oil (p. 6, line 28). Furthermore, Linder teaches the essential oil derivative can be thymol, carvacrol, geraniol, cinnamaldehyde, eugenol, limonene, citral, or any combination thereof (p. 6, lines 28-32; p. 7, lines 1-3).
Regarding claim 37, Linder teaches the essential oil of the microcapsule can include oregano oil, clove oil, basil oil, lavender oil, lemon oil, orange oil, grapefruit oil, cumin oil, rose oil, cinnamon oil, or mint oil (p. 15, lines 12-21).
Regarding claims 39-42, Linder teaches a method of preparing a suspension of microcapsules comprising:
Mixing a polymer into an essential oil/essential oil derivative active ingredient to obtain a separate mixture (I) (p. 30, lines 5-9);
Mixing a polyacid, such as alginate (see Applicant’s specification where alginate is a polymer-based carrier; p. 10, lines 4-6), with an aqueous solution to obtain a separate mixture (II) (p. 30, lines 10-14);
Mixing I and II together, thereby obtaining a suspension of microcapsules, each microcapsule comprising a core comprising an essential oil or essential oil derivatives and a shell encapsulating the core, the shell comprising an interpolymeric complex of at least one polyacid and at least one (second) polymer (p. 30, lines 15-19); and
Adding TPP, thereby crosslinking the cationic/amine polymer in the interpolymeric complex with at least one multivalent cationic moiety (p. 30, lines 20-24).
Linder teaches adding at least one surfactant to obtain a uniform, clear, and transparent suspension of microcapsules (p. 31, lines 5-7). Linder further teaches adding a co-surfactant that may further reduce interfacial tension and increase the fluidity of the interface to facilitate the formation of particles (p. 26, lines 23-27).
While Linder does not expressly teach adding TPP in a dropwise manner, this is a routine processing step known to a POSITA. Adding the TPP solution gradually/dropwise to avoid localized over-crosslinking or agglomeration and to promote a more uniform formation of the chitosan crosslinked microcapsule wall would have been obvious to a POSITA.
Regarding claim 40, Linder teaches examples whereby the approximate TPP concentration is 0.14 vol% assuming total formulation density is 1 g/mL and TPP density is 2.5 g/mL (p. 49, Table 16). However, as previously noted in the 112(b) rejection above, vol% of TPP is not a conventional or precise way to express a dissolved solid concentration and TPP is normally expressed as wt%, w/v%, mg/ml, or molarity.
Linder teaches the aqueous solution in working examples is water (p. 45, Table 12), thereby meeting the limitations of instant claim 41.
Linder further teaches adding oils such as neem oil, castor oil, and sesame oil (p. 29, lines 29-30) which may be non-encapsulated (p. 30, lines 1-2). These oils, as evidenced by Linder’s examples, are added to the mixture containing the essential oil (Mixture I) (p. 45, Table 12).
Regarding claim 42, Linder teaches the polymer-based carrier solution at a concentration of 1 vol% as evidenced by Formulation 26 (p. 49, Table 16).
The difference between the applied reference and the claimed invention is that the
applied references may not teach the instantly claimed method with particularity so as to amount
to anticipation. See MPEP “[t]he identical invention must be shown in as complete detail as is
contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is
not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d
831, 15 USPQ2d 1566 (Fed. Cir. 1990).
However, the applied reference discloses the elements of the claimed method and composition with sufficient guidance, particularity, and with a reasonable expectation of success for the skilled artisan, that the invention would be prima facie obvious to one of ordinary skill in the art. Linder discloses a microcapsule composition and a method of making such composition. Linder further discloses methods of using the composition in the fields of agriculture, food preservation, and pest/pathogen prevention. Linder teaches embodiments of the microcapsule composition with enough particularity that the skilled artisan would only be required to pick and choose between a small number of species taught by Linder to arrive at the instantly claimed invention. The skilled artisan would anticipate success in doing so because both Linder and the instantly claimed invention are directed to microcapsules containing a similar cross-linked wall (chitosan and TPP) and essential oil(s) which are used for agricultural, food preservation, and pest/pathogen repellant purposes.
Claims 30 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Linder (previously cited) as applied to claims 26-28, 32-37, and 39-42 above, and further in view of Baranauskaite (“Effect of the Amount of Polysorbate 80 and Oregano Essential Oil on the Emulsion Stability and Characterization Properties of Sodium Alginate Microcapsules,” published: 19 October 2021).
As discussed above, Linder discloses essential oil microcapsules that anticipate or make obvious the currently claimed invention in claims 24-29, 32-37, and 39-42. As it pertains to claims 30 and 38, Linder teaches the essential oil of the microcapsule can be oregano or a component of oregano oil such as carvacrol (p. 6, lines 25-27). Linder further teaches embodiments of microcapsules using oregano oil purchased from Rakesh Sandal Industries, India (p. 34, line 24). While Linder does not expressly name the content of thymol and/or carvacrol in the oregano oil as required by claims 30 and 38, these limitations are made obvious in further view of Baranauskaite.
Baranauskaite teaches encapsulation of oregano oil in which carvacrol is the major component at 94.65% and thymol is present at 0.19% (p. 3). The amount disclosed by Baranauskaite falls within the claimed range of 80-95 vol% (see MPEP 2144.05). Baranauskaite further discloses one or both of thymol and/or carvacrol are present in high amounts in oregano species and carvacrol has been identified as the main active compound responsible for antibacterial and antifungal properties of oregano oil (p. 1).
It would have been obvious to a POSITA, before the effective filing date of the claimed invention, to use an oregano oil having 80-95 vol% thymol and/or carvacrol because Linder identifies oregano oil as a suitable essential oil for microencapsulation and Baranauskaite teaches that oregano oil having 95% combined carvacrol/thymol content was a known oregano composition for microencapsulation. A POSITA would have motivated to select such a carvacrol-rich oregano oil because carvacrol was a known antibacterial and antifungal constituent of oregano oil, as demonstrated by Baranauskaite. A POSITA would have had a reasonable expectation of success because Linder already teaches encapsulating oregano oil in essential oil microcapsules for antibacterial/antifungal use.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Linder (previously cited) as applied to claims 26-28, 32-37, and 39-42 above, and further in view of Walter (US Pat. No. 5,679,351; date of patent: 21 October 1997).
As discussed above, Linder discloses essential oil microcapsules that anticipate or make obvious the currently claimed invention in claims 24-29, 32-37, and 39-42. As it pertains to claim 31, Linder teaches the essential oil derivative of the microcapsule can be an essential oil such as clove oil or an essential oil derivative such as eugenol (p. 61, claims 8 and 9). While Linder does not expressly name the content of eugenol in the clove oil as required by instant claim 31, this limitation is made obvious in further view of Walter.
Walter discloses a clove oil formulation which inhibits soil-born fungal diseases (abstract). Walter discloses clove oil, which consists primarily of the phenolic compound eugenol, is an effective insecticide against the cowpea weevil, a known pest of stored legumes (col. 1, lines 48-51). Walter discloses clove oils are known to inhibit soil-borne and foliar fungal diseases in addition to their anti-microbial effects on fruit and vegetables (col. 1, lines 33-35; col. 2, lines 3-6). Walter further discloses compositions of clove oil containing 84-88% v/v eugenol (col. 2, lines 57-60). The amount disclosed by Walter overlaps with the claimed range of 70-85 vol% (see MPEP 2144.05).
It would have been obvious to a POSITA, before the effective filing date of the claimed invention, to use a clove oil having 70-85 vol% eugenol because Linder identifies clove oil as a suitable essential oil due to its anti-fungal properties and Walter teaches that clove oil having 84-88% v/v eugenol exhibits these properties. A POSITA would have motivated to select such a eugenol-rich clove oil because eugenol was a known anti-microbial, antifungal, and insecticide constituent of clove oil, as demonstrated by Walter. A POSITA would have had a reasonable expectation of success because Linder already teaches encapsulating clove oil in essential oil microcapsules for antimicrobial/antifungal use.
Conclusion
Claims 24-42 are rejected. No claim is allowable.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A. Rossi whose telephone number is (571)272-0138. The examiner can normally be reached M-Th 7:30-5:30 (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571)272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA A. ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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