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 .
The examiner acknowledges receipt of preliminary amendment and IDS filed 07/19/2024.
Claims 1-11 are canceled.
New claims 12-17 are added and pending.
Priority
This application is a Continuation of 18/146,736 filed 12/27/2022, now US 12065630 B2, which is a Continuation of 16/768,183 filed 05/29/2020, now US 11566208 B2 and which is a 371 or PCT/EP18/85571 filed 12/18/2018 and which claims benefit of UK application 1721585.6 filed 12/21/2017.
Information Disclosure Statement
The IDS filed 07/19/2024 has been considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Page 9, lines 21-23 contains embedded hyperlink/browser-executable code.
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 16 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.
Claim 16 depends on claim 12. Claim 12 does not recite polyfunctional acrylate. Thus “the poly-functional acrylate” does not have antecedent support from claim 12.
Claim 16 recites the limitation "the poly-functional acrylate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 12-17 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by FENG LINSHENG et al. (WO 2016061439 Al).
For claim 12, FENG discloses method for forming melamine resin acrylate microcapsule (abstract, paragraphs [0002], [0009] ); the method comprises forming dual oil/water phase involving emulsion or dispersion of the oil phase disperses in a continuous aqueous phase with the discontinuous oil phase containing the core material to be encapsulated (paragraph [0031]) meeting claim 12 (a), the core material being oil or scented oil or fragrances (paragraphs [0069], [0113]) is milled to form droplet (paragraphs [0017], [0037], [0045], [0078]); the core composition containing wall forming materials are subjected to conditions that enable polymerization of the wall forming material to form the wall around the oil droplet (paragraphs [0017], [0042]); the result is partial or full encapsulation of the oil phase with the wall surrounding the oil droplet (paragraph [0043]); the polymerization of the methacrylate polymer and melamine resin at the oil/water interface meeting claim 12 (b).
For claim 13, the shell-forming material is the polyamine/acrylate system is the
wall/shell forming material and part of the microcapsule. FENG teaches that test samples
were prepared by adding solids of the capsule forming material to form slurry for use (line 2 of page 39).
For claim 14, the reaction of the melamine polyamine and pentaerythritol tetraacrylate (PETA) polyfunctional acrylate (page 12, lines 10-14) forms thermosetting resin.
For claim 15, FENG lists melamine, 1,2-phenylenediamine, 1,3-phenylene diamine and 1,4-phenylediamine as polyamines (page 12, lines 23-24) meeting the requirement of claim 15.
For claim 16, pentaerythritol-tetraacrylate (PETA), pentaerythritol triacrylate (PETIA), 1,4-butanediol diacrylate (BDA-2), ethylene glycol dimethacrylate (EDGMA), trimethylolpropane triacrylate (TMPTA), hexane diol diacrylate (HODA), ((2,4,6-trioxocyclohexane-1,3 ,5-triyl)tris(oxy))tris(ethane-2, 1-diyl) triacrylate (TOCT A), Tris(2-acryloyloxyethyl) Isocyanurate, 1,3,5-triacryloylhexahydro-1,3,5-triazine (TAHHT) (page 12, lines 10-14) are poly-functional acrylate of the claim.
For claim 17, FENG teaches incorporating perfume and other functional ingredients in the core (page 5, lines 20-25; page 17, lines 17-20).
Therefore, FENG LINSHENG teaches claims 12-17.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Claims 12-17 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-8; 1-12; and 1-16 of U.S. Patent Nos. 12065630 B2; 11566208 B2; and 11504689 B2 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because
US 12065630 B2: The issued method teaches the examined method. The comprising language is open.
US 11566208 B2: The issued core-shell microcapsule is prepared by the examined method.
US 11504689 B2: The issued encapsulated composition in claims 1-11 comprising perfume is prepared by the examined method and the issued method claims 12-16 teaches the examined method.
No claim is allowed.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Yong Kwon can be reached at 5712720581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
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