DETAILED ACTION
Claims 1-5 are pending and under consideration on the merits.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/11/25 was filed prior to the mailing date of a first Action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, it was considered by the Examiner.
Election/Restriction
Applicant’s election of ethylene glycol dimethacrylate as the species of multifunctional (meth)acrylate monomer, prepolymer, or oligomer, and a polysaccharide of Formula I wherein A is an adduct of Formula II or Formula IV as the species of polysaccharide, is acknowledged. Since Applicant did not point to any alleged deficiencies in the election requirement, the election has been treated as having been made without traverse. The election requirement it is still considered proper and is made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 6, “dispersing one or more oil phases” should be “dispersing in one or more oil phases.” 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 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Claim 1, line 6 recites “a core material,” but line 2 already recites “a core material.” If the core material of line 6 is the same core material as recited by claim 2, then line 6 should recite “the core material” for clarity. Since dependent claims 2-5 do not clarify the point of confusion, they are also rejected.
Claim 3 recites “the modified polysaccharide.” There is no antecedent basis for this limitation in base claim 1, which recites only a “polysaccharide.” Clarification is required. Additionally, claim 3 recites “the emulsifier,” but there is no antecedent basis for this limitation. Clarification is required.
Claim 4 recites in line 2, and again in line 3, that the multifunctional (meth)acrylate “can be selected” followed by a list of species, which renders the claim indefinite because “can be” could be interpreted as not requiring the presence of any of the species. Clarification is required. It is suggested that claim 4 should recite “is selected from.”
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Malle et al. (WO 2016/005250; of record in IDS) as evidenced by the English translation thereof and in view of Duarte et al. (Journal of Materials Science: Materials in Medicine 8 (1997) 321-323; of record in IDS) and Neuman et al. (US Pat. 2020/0222873; published 7.16.20 and of record in IDS).
As to claims 1-5, Malle discloses a microcapsule comprising a core comprising a beneficial agent (a “core material”) and an envelope around the core (a “shell”), wherein the shell comprises a hydrophobically modified polysaccharide such as starch octenyl succinate (which is within the scope of the elected species of polysaccharide of claims 1 and 5 comprising Formula II of claim 5 wherein R1 equals 8, and having an active hydroxyl group as recited by claim 2)(paragraphs 2-3 and 83-85), some of which will be present on the hydroxy groups of the polysaccharide. Malle teaches that the hydrophobically modified microcapsules make it possible to encapsulate fragile beneficial agents without degradation due to the capsules being sufficiently resistant and impermeable to moisture (paragraph 25). The beneficial agent may be a fragrance (the elected species of benefit agent of claim 18) (paragraph 20).
Regarding claim 3, the starch octenyl succinate can function as the emulsifier, and Malle does not require the presence of another emulsifier.
As to claims 1-5, Malle does not further expressly disclose that the hydrophobically modified polysaccharide is crosslinked with a multifunctional methacrylate which is the elected species, (i.e., ethylene glycol dimethacrylate of claims 2 and 4), or that the microcapsules are formed by a process comprising dispersing an initiator, core material, and a multifunctional (meth)acrylate monomer, prepolymer, or oligomer in an oil phase, dispersing a polysaccharide in a water phase, emulsifying the oil phase into the water phase under high shear agitation to form an oil in water emulsion comprising droplets of the core material and oil phase monomer, prepolymer, or oligomer dispersed in the water phase, and activating the initiator by heat or actic radiation to react the multifunctional (meth)acrylate monomer, prepolymer, or oligomer and polysaccharide by free radical addition polymerization so as to form a polymer shell surrounding the droplets of the emulsion as recited by claims 1 and 5.
Duarte discloses microcapsules compressing a shell formed from starch modified by the introduction of vinyl groups, and wherein the microcapsules were prepared by interfacial crosslinking of the modified starch with dipropyleneglycol diacrylate (DPGDA, which is one of the non-elected species of multifunctional methacrylate monomer recited by claim 4)(see Abstract). Duarte teaches that the use of the DPGDA crosslinker has been reported to improve the stability of microcapsules (page 321, 2nd paragraph of the Introduction). The Office notes that the structure of dipropyleneglycol diacrylate differs from the elected species of methacrylate monomer (i.e., ethylene glycol dimethacrylate) only by 1) the presence of two acrylate groups instead of two methacrylate groups, and 2) the presence of a propylene group instead of an ethylene group bridging the two (meth)acrylate groups.
Neuman discloses a process of forming a population of microcapsules comprising a core material and a wall material surrounding the core material (“shell”), the shell formed by the reaction product of a polysaccharide and a multifunctional (meth)acrylate monomer, the microcapsules formed by dispersing the (meth)acrylate monomer, the core material, and an initiator in an oil phase, dispersing the polysaccharide in a water phase, emulsifying the oil phase into the water phase under high shear agitation to form an oil in water emulsion comprising droplets of the core material and oil phase monomer dispersed in the water phase, and activating the initiator by heat or actinic radiation to react the monomer and polysaccharide by free radical addition polymerization to form a polymer shell surrounding the droplets of the emulsion (paragraph 78 and claim 9 of Neuman). The multifunctional (meth)acrylate monomer may be the elected species within the scope of claims 2 and 4, i.e., diethylene glycol dimethacrylate (paragraph 44).
As to claims 1-5, it would have been prima facie obvious to modify the Malle microcapsules by crosslinking the hydrophobically modified polysaccharide with ethylene glycol dimethacrylate, because Duarte expressly teaches that crosslinking the hydrophobically modified polysaccharide shell of a microcapsule with dipropyleneglycol diacrylate has been reported to improve the stability of the microcapsule, and the skilled artisan reasonably would have expected that using ethylene glycol dimethacrylate also would have improved the microcapsule’s stability because it differs from dipropyleneglycol diacrylate only by the successive addition of a methylene group to the ethylene moiety as well as the successive addition of a methylene group to the two acrylate groups, such that the close structural similarity between the two crosslinkers would lead to a presumption that they possess similar functional properties, and further because Neuman expressly teaches that ethylene glycol dimethacrylate may be used as the type of methacrylate monomer that is used to crosslink a polysaccharide to form the shell of a microcapsule, providing additional evidence that it could be used in place of the dipropyleneglycol diacrylate taught by Duarte to achieve the advantages taught by Duarte. Similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made.”). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Additionally, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art (as is the case here as demonstrated by the teachings of Duarte) or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves”).
It further would have been prima facie obvious to form the microcapsules by a process comprising dispersing an initiator, core material, and a multifunctional (meth)acrylate monomer, prepolymer, or oligomer in an oil phase, dispersing a polysaccharide in a water phase, emulsifying the oil phase into the water phase under high shear agitation to form an oil in water emulsion comprising droplets of the core material and oil phase monomer, prepolymer, or oligomer dispersed in the water phase, and activating the initiator by heat or actic radiation to react the multifunctional (meth)acrylate monomer, prepolymer, or oligomer and polysaccharide by free radical addition polymerization so as to form a polymer shell surrounding the droplets of the emulsion as recited by claims 1 and 5, because Neuman expressly teaches that microcapsules comprising a core material and a shell surrounding the core material that is formed by the reaction product of a polysaccharide and a multifunctional (meth)acrylate monomer, can be formed using such steps. Such a modification is merely the combining of known elements according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as unpatentable over all claims of U.S. Past. Appl. 18/772,390 and in view of Neuman et al. (US Pat. 2020/0222873) where indicated below.
The teachings of the secondary reference are relied upon as discussed above.
The reference claims recite a microcapsule comprising a core material and a shell encapsulating the core material and comprising ethylene glycol dimethacrylate crosslinked with a hydroxyl group of starch alkenyl succinate having a formula within the scope of claims 1 and 5, wherein the starch alkenyl succinate can serve as the emulsifier.
Although the reference claims do not recite a method of forming the microcapsules comprising the presently claimed steps, it would have been prima facie obvious to do so because Neuman expressly teaches that microcapsules comprising a core material and a shell surrounding the core material that is formed by the reaction product of a polysaccharide and a multifunctional (meth)acrylate monomer, can be formed using such steps.
Conclusion
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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