18/535,563Notice 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 .
Priority
Provisional application filed 01/17/2022 is acknowledged. Further, it is acknowledged that the present application is a 371 of international PCTUS2023010942 filed 01/17/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the references included have been considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-39) in the reply filed 07/14/2026 is acknowledged. Further, election of species in claims 6-11, 14-17, and 37-38 is acknowledged.
Claims 40-86 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/14/2026.
Claims 40-86 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claims 1-39 are pending and under current examination.
Claim Objections
Claim 29 objected to because of the following informalities: the word "at" is missing before "least 8 weeks". 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.
Claim(s) 25, 28-30, 38, and 39 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention.
Claims 25 is indefinite as it recites a broad and narrow range in regards to the number of days for biodegradation to occur, and it is unclear which range is considered limiting. Claims 28-30 are indefinite as they recite a broad and narrow range in regards to the number of weeks the microcapsule has retained triggered release of cargo. Claim 39 is indefinite as it recites a broad and narrow range in regards to the average diameter of the microcapsule. Regarding claims 25, 28-30, and 39, it is unclear which ranges are considered limiting. See MPEP §2173.05(c).
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 25 recites the broad recitation of biodegradation occurring within 120 days, and the claim also recites biodegradation within 60, 40, or 28 days which are the narrower statements of the range/limitation. Claim 28 recites the broad recitation of retained triggered release after storing in a medium for at least 4 weeks, and the claim also recites stability for at least 6, 8, or 12 weeks, which are narrower than at least 4 weeks. The same reasoning applies to claim 29, which recites the broad recitation of retained triggered release after storing in a medium for at least 2 weeks, and the claim also recites narrower ranges for stability lasting at least 3, 4, 6, 8, 10, and 12 weeks. Claim 30 recites the broad recitation of retained triggered release after storing in a medium for at least 4 weeks, and also recites stability for at least 6, 8, or 12 weeks, ranges that are narrower than at least 4 weeks. Claim 39 recites the broad recitation of an average microcapsule diameter of 100 nm to 150 µm, and also recites a narrow range of 1 µm - 100 µm. The claim(s) 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.
Regarding claim 38, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections – 35 U.S.C. 102/103
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.
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.
Claim(s) 1, 2, 15-16, 18-36, and 39 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over Ortais (US 20200360889 A1).
Regarding claim 1, Ortais discloses a biodegradable microcapsule with a polymeric shell, made up of poly-ß-amino ester (see claim 1). The microcapsules of Ortais contain an active substance (see claim 1). Further, Ortais describes that the microcapsules can contain oils (i.e. lipophilic core) and cosmetic effect products (see claim 8), and are biodegradable (see claim 18).
While, the claims of Ortais are silent regarding storage stability of the microcapsules, Ortais describes the stability of the microcapsules throughout the specification (para. [0020], [0022], [0064], and [0109]). This provides a sound basis for the examiner’s positions that Ortais anticipates or renders obvious the stability of the microcapsules recited in claim 1 of instant application. The microcapsules described in Ortais are structurally identical to that of instant invention claim 1. Formulations are not separable from the physical properties, and the burden of production is shifted to Applicant. MPEP § 2112(V) (“once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant”).
In sum, claim 1 is anticipated by or (in the alternative) rendered prima facie obvious by Ortais. MPEP § 2112(III) (“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection.”).
Regarding claim 2, Ortais describes that the polymeric shell can comprise meta-xylylene diamine, tris(2-aminoethyl)amine, tetraethylene pentamine, and polyethyleneimine, which have pH responsive functional groups (see claim 13).
Regarding claims 15 and 16, Ortais teaches that the polymeric shell comprises polymers with secondary amine functions (see claim 5), teaching the secondary amine functional group selected in election of species filed on 07/14/2026.
Regarding claims 18 and 19, Ortais discloses that the active agent encapsulated in the microcapsule is selected from group consisting of fragrances, essential oils, dyes, biocidal products, fungicidal products, cosmetic effect products, natural and edible oils, vegetable oils, esters, and fatty acids (see claim 8).
Regarding claims 20-21 and 35, it is noted that the limitation of “the microcapsule is used in a consumer care composition selected from the group consisting of laundry care composition, oral care composition, hair care composition, skin care composition, cosmetic care composition, home care composition and cleaning composition” of instant claim 20 is a recitation of intended use. Further the limitation of “the microcapsule is used in a fabric conditioner composition or a laundry detergent composition” of instant claim 21, and that “the formulation is selected from the group consisting of laundry detergent, fabric softener, fabric conditioner, shampoo, hair conditioner, liquid soap, solid soap, skin deodorant, skin moisturizer, skin conditioner, hair or skin protectant, cleanser, sanitizer, cleaning fluid, dishwashing fluid, dishwashing tablet, washing powder, washing tablet, washing liquid, and cosmetic formulation” of instant claim 35 both describe intended use. It is noted that a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of meeting the intended use, then it meets the claim. As above, Ortais discloses each component of the microcapsule of instant claim 1, and that the formulation can be used in cosmetic care products (see claim 8). As such, the microcapsule of Ortais is capable of performing the intended uses as recited in instant claims 20, 21, and 35.
Regarding claims 22-25, Ortais discloses that the microcapsules demonstrate biodegradation of at least 80% according to the method 301 of “OECD Guidelines for Testing of Chemicals”, after incubation of ten days (see claim 18). The biodegradation of the microcapsules of Ortais are measured by a manometric respirometry test (i.e. tested in aqueous medium, see claim 18). The biodegradation rates recited in instant claims 24 and 25 overlap with that disclosed in Ortais, and as such are anticipated. MPEP § 2131.03.
Regarding claims 26 and 27, Ortais describes each component of the microcapsule and the stability as above. It is noted that “[p]roducts of identical chemical compositions cannot have mutually exclusive properties.” In re Sprada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The microcapsule of Ortais and instant invention have the same chemical composition, and as such their properties are inseparable. Since Ortais describes the identical chemical structure as instant invention, the properties applicant discloses and/or claims are necessarily present. The properties that would be shared between instant invention and invention of Ortais include storage stability, as in instant claims 26 and 27.
Regarding claims 28-34, as described above, Ortais discloses each component of the microcapsule and that it demonstrates stability. It is noted that “[p]roducts of identical chemical compositions cannot have mutually exclusive properties.” In re Sprada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The microcapsule of Ortais and instant invention have the same chemical composition, and as such their properties are inseparable. Therefore the properties applicant discloses and/or claims are necessarily present. These properties include the microcapsules’ stability in different environments with varying pH, as in instant claims 28-34.
Regarding claims 36 and 39, Ortais discloses that the microcapsule has a surface coating (see claim 17) and an average diameter between 100 nm to 100 µm (see claim 16).
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.
Claim(s) 3-5, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ortais (US 20200360889 A1), as applied above to claims 1, 18-35, and 39
The claims of Ortais teach instant claims 1, 18-35, and 39 as described above.
Regarding claims 3 and 4, Ortais teaches that the microcapsules can be composed of poly-ß-amino esters (hereafter PBAE) that are synthesized in a Michael addition single reaction step by an addition reaction of amine functions (i.e. amine donor) on acrylate functions (i.e. acceptor, para. [0016]). The amine of Ortais (i.e. donor) can be selected from meta-xylylene diamine, tris(2-aminoethyl)amine, and tetraethylene pentamine (see claim 13), which each have a functionality of at least 2 and 3. Ortais further teaches that the acrylates (i.e. acceptors) can be selected from the group of triacrylates, tetra acrylates, pentaacrylates, and hexaacrylates, which each have a functionality of at least 2 and 3 (para. [0035]).
Regarding claim 5, Ortais teaches that crosslinked PBAEs are relatively stable in a medium (para. [0020]).
Regarding claims 9-11, Ortais teaches that the triacrylate (i.e. acceptor, as above) can be selected from a group consisting of trimethylolpropane triacrylate (i.e. multifunctional acrylate, see claim 11), teaching the acceptor selected in election of species filed on 07/14/2026.
Regarding claim 12, Ortais describes that to modify the surface of the shell of the microcapsules the amine functions on the surface of the shell can react with monofunctional acrylates (i.e. monofunctional acceptor, para. [0054]). Further, the second monomer (i.e. donor) is selected from a group consisting of primary amines of the type R-NH2 (see claim 5) which are monofunctional.
Regarding claim 13, Ortais teaches that the shell of the microcapsule can be modified by monofunctional acrylates (i.e. monofunctional acceptors) reacting with residual amine functions (para. [0095]). Further, Ortais describes that the second monomer (i.e. donor) is selected from a group consisting of primary amines of the type R-NH2 (see claim 5) which are monofunctional and have a pH responsive functional group.
Ortais does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Ortais with a reasonable expectation of success to obtain the formulation of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method of the instant claims with predictable results.
Claim(s) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ortais (US 20200360889 A1) in view of Langer (US 20130302392 A1).
Ortais teaches the claimed invention as above, but fails to describe that the amine donor is 4,4' trimethylenepiperidine (TMPP), as selected in the election of species filed on 07/14/2026.
Regarding claims 6-8, Langer teaches polymeric capsules of PBAEs that are used to deliver active substances. Langer teaches that the PBAEs are synthesized via an addition reaction of 4,4'-trimethylenedipiperidine with an acrylate (para. [0128]).
Ortais and Langer are considered to be analogous to the claimed invention because they are in the same field of polymeric microcapsules for the use of delivering active agents. The amines of both Ortais and Langer have the same function, to react in an addition reaction with an acrylate to synthesize PBAEs. One of ordinary skill in the art would have had a reasonable expectation of success in substituting the amine of the addition reaction in Ortais, with that of Langer, to yield predictable results. Both amines have the same function, and Langer teaches the 4,4'-trimethylenedipiperidine is effective in an addition reaction with an acrylate, and is used to form a polymeric capsule. MPEP § 2143(I)(b).
Claim(s) 14, 17, and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Ortais (US 20200360889 A1) in view of Xu (WO 2020131890 A1).
Ortais teaches the claimed invention as above, but fails to teach that polymeric shell can further comprise components as listed in instant claim 14, 17, and 37-38, specifically octenyl succinate modified starch as elected in species election filed on 07/14/2026.
Regarding claims 14, 17, and 37-38, Ortais teaches that the coating on the surface of the microcapsule can be polysaccharides such as cellulose and starch (para. [0053]). Xu teaches a microcapsule that encapsulates an active material such as a fragrance or cosmetic active, where the shell of the microcapsule is formed of a polymeric network (see abstract). The microcapsule of Xu comprises a dispersant selected from a group comprising octenyl succinate-modified starch (see claim 3).
Ortais and Xu are considered to be analogous to the claimed invention because they are in the same field of microcapsules that encapsulate active ingredients. As above, Ortais teaches that there can be a coating on the surface of the microcapsule with polysaccharides such as starch. While Ortais does not teach specifically octenyl succinate-modified starch, one of ordinary skill in the art would have a reasonable expectation of success in substituting the starch in the microcapsule of Ortais, with the octenyl succinate-modified starch of Xu. Further, Xu teaches that octenyl succinate-modified is effective as a dispersant or coating on a microcapsule. MPEP § 2143(I)(b).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 1, 3-11, 18-36, and 39 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 11-12, 15, 17, 21, 22, 27-35, 37-39, and 41 of U.S. co-pending Application 18/015,689 (hereafter App. ’689).
Regarding claim 1 of instant invention, App. ‘689 teaches a microcapsule comprising a lipophilic core and a polymeric microcapsule shell, where the shell comprises a crosslinked polymer of an aliphatic polyester or a poly-ß-amino ester polymer that is storage stable and biodegradable (see claim 1)
Regarding claims 3 and 4 of instant invention, App. ‘689 teaches that the polymer of the microcapsule shell is derived from a Michael or conjugate addition reaction of a donor and acceptor, where the donor or acceptor has a reactive functionality of at least two or three (see claim 11).
Regarding claim 5 of instant invention, App. ‘689 teaches that the polymers of the shell are crosslinked (see claim 12).
Regarding claims 6-8 of instant invention, App. ‘689 teaches that the amine is a difunctional primary amine, a multifunctional primary amine, a difunctional secondary amine, or a multifunctional secondary amine (see claim 15). The amine is selected from a group consisting of 4,4’ trimethylenepiperidine (see claim 17).
Regarding claim 9-11 of instant invention, App. ‘689 describes that the acceptor is selected from the group consisting of an acrylate, methacrylate, maleate, fumarate, itaconate, malonate, crotonate, citraconate, maleimide, and mixtures thereof (see claim 21). The acceptor is further selected from a group consisting of trimethylol propane triacrylate (see claim 22).
Regarding claim 18 of instant invention, App. ‘689 teaches that the microcapsule core is selected from the group consisting of agrochemicals, aliphatic esters, anti-microbial agents, anti-fungal, anti-fouling agents, antioxidants, anti-viral agents, biocides, catalysts, cosmetic actives, dyes, colorants, detergents, edible oils, emollient oils, essential oils, fats, fatty acids, fatty acid esters, food additives, flavors, fragrances, hair care actives, halogenated compounds, hydrocarbons, insecticides, insect repellants, lipids, lipophilic scale inhibitors, mineral oil, oral care actives, organic solvents, organic esters, chlorinated solvents, pesticides, perfumes, preservatives, skin care actives, UV absorbers, vegetable oils and combinations thereof (see claim 27).
Regarding claims 19-21 of instant invention, App. ‘689 teaches that the core of the microcapsule is a fragrance, perfume, or an essential oil (see claim 28), and that it can be used in consumer care composition such as laundry care compositions, oral care compositions, hair care compositions, skin care compositions, cosmetic care compositions, and home care and cleaning (see claim 29). The microcapsule of App. ‘689 can specifically be used in a fabric conditioner or a laundry detergent.
Regarding claims 22-25 of instant invention, App. ‘689 teaches a polymeric shell that is biodegradable in an aquatic or solid medium, or is compostable (see claim 31). App. ‘689 further teaches that the solid medium is selected from the group consisting of activated sludge, secondary effluent, river water, surface water, fresh water, sea water soil, and compost (see claim 32). The biodegradable shell material shows a biodegradation rate of at least 20% in an aquatic medium when measured by an OECD test method 301, 302, or 306 (see claim 33). Evidence of biodegradation occurs within 120, 60, 40, or 28 days (see claim 34).
Regarding claims 26-27 of instant invention, App. ‘689 teaches that the microcapsule is stable in an aqueous slurry, in a water-based formulation, or in a solvent based formulation, and where the microcapsule is storage stable as a core-shell capsule in a solid formulation or in a printed product (see claim 35).
Regarding claims 28-34 of instant invention, App. ‘689 teaches each element of the composition as above, and therefore would have the same chemical properties as those of instant invention. It is noted that “[p]roducts of identical chemical compositions cannot have mutually exclusive properties.” In re Sprada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The microcapsule of App. ‘689 and instant invention have the same chemical compositions, thus their properties are inseparable. Therefore, since App. ‘689 teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. The properties that would be shared between instant invention and invention of App. ‘689 include the retained triggered release of cargo after storing the microcapsule in a respective medium, as in instant claims 28-32. Further, the stability in an aqueous slurry or in a water-based formulation as recited in instant claims 33-34 would also be shared.
Regarding claim 35 of instant invention, App. ‘689 teaches that the formulation is selected from the group consisting of laundry detergent, fabric softener, fabric conditioner, shampoo, hair conditioner, liquid soap, solid soap, skin deodorant, skin moisturizer, skin conditioner, hair protectant, skin protectant, cleanser, sanitizer, cleaning fluid, dishwashing washing fluid or tablet, washing powder, washing tablet, washing liquid, and cosmetic formulation (see claim 37).
Regarding claims 36 and 39 of instant invention, App. ‘689 describes that the microcapsule is part of a double layered microcapsule, multi-layered microcapsule, or an overcoated microcapsule (see claim 39). The microcapsule of App. ‘689 has an average diameter of about 100 nm to 100 µm, or of about 1 µm to 100 µm (see claim 41).
Claim(s) 1-4, 6-7, 9-11, 14, 18-36, and 39 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 4, 6, 10, 12, 14, 19, 21, 24, 26, 30, 32, and 54 of U.S. copending Application 19/502,101 (hereafter App. ‘101).
Regarding claim 1 of instant invention, App. ‘101 teaches a biodegradable polymeric microcapsule shell comprising a ß-amino ester with a lipophilic core (see claim 1). App. ‘101 teaches each component of claim 1, and as above, it is inherent that the both the microcapsule of App. ‘101 would have the same properties (such as stability) as that of instant invention.
Regarding claim 2 of instant invention, App. ‘101 teaches that the microcapsule further has a hydrophobic group (see claim 6).
Regarding claim 3 and 4 of instant invention, App. ‘101 teaches that the ß-amino ester in the shell are formed from Michael or conjugate addition reactions of at least one amine and at least one acceptor, where the acceptor has a functionality of at least two (see claim 10). Further, the amine donor is difunctional or multifunctional (i.e. functionality of at least two or three, see claim 12).
Regarding claim 6 and 7 of instant invention, App. ‘101 teaches that the amine donor is difunctional or multifunctional with respect to primary or secondary amine, wherein one or more of the amine donors has C2-C20 aliphatic chain functionality, a C4-C7 cyclic ring functionality or a C4-C7 heterocyclic ring functionality (see claim 12).
Regarding claims 9-11 of instant application, App. ‘101 discloses that the acceptor is selected from the group consisting of an acrylate, methacrylate, maleate, fumarate, itaconate (see claim 4). App. ‘101 specifically teaches the acceptor can be selected from a group comprising trimethylol propane triacrylate (see claim 14).
Regarding claim 14 of instant application, App. ‘101 teaches that the microcapsule comprises a hydrophobically modified starch in the outer coating of the crosslinked microcapsule (see claim 54).
Regarding claims 18-21 of instant invention, App. ‘101 describes that the lipophilic core is selected from the group consisting of agrochemicals, aliphatic esters, anti-microbial agents, anti-fungal, anti-fouling agents, antioxidants, anti-viral agents, biocides, catalysts, cosmetic actives, dyes, colorants, detergents, edible oils, emollient oils, essential oils, fats, fatty acids, fatty acid esters, food additives, flavors, fragrances, hair care actives, halogenated compounds, hydrocarbons, insecticides, insect repellants, lipids, lipophilic scale inhibitors, mineral oil, oral care actives, organic solvents, organic esters, chlorinated solvents, pesticides, perfumes, preservatives, skin care actives, UV absorbers, vegetable oils and combinations thereof (see claim 19). The core is further a fragrance, perfume, or an essential oil (see claim 19). The microcapsule of App. ‘101 is used in consumer care compositions selected from a group consisting of laundry care composition, fabric care composition, oral care composition, hair care composition, skin care composition, cosmetic care composition, home care composition, and cleaning compositions (see claim 26). App. ‘101 further discloses the use of the microcapsule in laundry detergent or fabric conditioner (see claim 26).
Regarding claims 22-25 of instant invention, App. ‘101 teaches that the formulation is biodegradable in an aquatic or solid medium, or is compostable (see claim 21). The aquatic or solid medium can be activated sludge, secondary effluent, river water, surface water, fresh water, sea water, soil, and compost where material shows evidence of biodegradation within 120 days or within 60 days or within 40 days or within 30 days or within 28 days (see claim 21). Further, the formulation of App. ‘101 shows a biodegradation rate of at least 20% in an aquatic medium when measured by an OECD test method 301, 302, or 306 (see claim 24).
Regarding claims 26-34 of instant invention, App. ‘101 teaches each element of the composition as above, and therefore would have the same chemical properties as those of instant invention. It is noted that “[p]roducts of identical chemical compositions cannot have mutually exclusive properties.” In re Sprada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The microcapsule of App. ‘101 and instant invention have the same chemical compositions, thus their properties are inseparable. Therefore, since App. ‘101 teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. The properties that would be shared between instant invention and invention of App. ‘101 include the stability of the microcapsule in different environments with varying pH, as in instant claims 26-34.
Regarding claim 35 of instant invention, App. ‘101 describes that the microcapsules can be used in laundry detergent, or fabric conditioner (see claim 26).
Regarding claims 36 and 39 of instant invention, App. ‘101 teaches that the microcapsule is double layered, multilayered, or overcoated (see claim 30) and has a diameter of about 100 nm to 100 µm, or of about 1 µm to 100 µm (see claim 32).
Conclusion
Claims 1-39 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Makenna Miller whose telephone number is (571)272-9852. The examiner can normally be reached Mon-Fri 7:30-5:00 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, Bethany Barham can be reached at (571) 272-6175. 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.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
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