DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim interpretation
The examiner is interpreting greater than at least about as any amount about 540 gae/L and above which ranges are recognized by the prior art Pallas.
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.
Claims 1, 3, 5-8, 13-14, 16-17, 19-23, 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-24 of copending Application No. 16009702 in view of Pallas (US20030087764). ‘702 teaches forming agricultural composition (which reads on the claimed agricultural plant formulation since this is the intended use of the formulation) comprising the same amido amide adjuvants instantly claimed (i.e. wherein all of the variables instantly claimed are claimed in ‘702, e.g. reads on claims 1, 14, 16, 23-24, 26-27) as ‘702 does not require anything except wherein these adjuvants are mixed with pesticides specifically in the later claims they require the pesticide to be the same as is instantly claimed (i.e. reads on claims 1, 3, 6-7, 16-17, 20-21, 24, 26-27). ‘702 merely does not require Y to always be the ethylene or propylene or butylene oxide group instantly claimed although it can always be as instantly claimed and in their independent claims the pesticide can still be anything with pesticidal activity and they do not claim the claimed stabilities or loadings of herbicides/concentrations or water in the formulation. However, it would have been obvious to form the claimed high load glyphosate and/or glufosinate aqueous compositions at the claimed concentrations with the claimed amounts of the claimed amidoamine alkoxylates because Pallas teaches that it was known to use homologous/very structurally similar amidoamine alkoxylates in amounts which overlap those instantly claimed to form aqueous solution concentrates and aqueous emulsion concentrates which have the same loading of glufosinate and/or glyphosate as is instantly claimed and wherein the compositions of Pallas also exhibit the same stability instantly claimed with their very structurally similar/homologous amidoamine alkoxylates (see entire document; [0003]; [0069]; [0113-0114, formula (37) read entire description which clearly shows that the first mention of (R6O)yR7 is clearly a typo and should be (R6O)xR7]; [0002]; [0043]; [0064]; [0004-0010], Claim 123; [0048]; [0053]; [0177]; 0046]; [0050-0053]; [0198]; [0154-0155]; [0029, aqueous solution concentrates]; [0041-0042, aqueous herbicidal concentrate comprising water soluble herbicide dissolved in aqueous medium/water, and a surfactant]; [0003]; [0069-0070 particularly concentrates with potassium…glyphosate]; [0162]; etc. as cited below) as those claimed and disclosed by ‘702. Thus, it would be obvious to form the claimed amidoamine alkoxylate formulations with water and the claimed pesticides when looking to ‘702 and Pallas and to combine them with the claimed herbicides in the claimed loadings/concentrations, e.g. at least about 540 gae/L, more specifically 600 gae/L because Pallas teaches these loadings of these herbicides with their homologous very structurally similar amidoamine ethoxylate surfactants in aqueous formulations which can consist of only the components claimed in claims 24 and 26 and which can contain the claimed degrees of ethoxylation and wherein these compositions exhibit the same stability instantly claimed and as such one of ordinary skill in the art would be motivated to form the claimed formulation when looking to the combined references in order to form additional effective and stable high load formulations of the claimed herbicides with the claimed adjuvants based on the combined teachings of the prior art. It also would have been obvious to form the claimed methods of killing/controlling a pest, e.g. weeds, when looking to the combination of ‘702 and Pallas because glyphosate and glufosinate are well known herbicides for controlling/killing weeds (e.g. pests) and Pallas teaches controlling weeds with their related/structurally similar amidoamine ethoxylate glyphosate/glufosinate compositions ([0162]). Thus, one of ordinary skill in the art would conclude that the instantly claimed formulations and methods are obvious variants of the formulations prepared in copending 16009702 in view of Pallas (US20030087764) for the reasons discussed above.
Regarding the limitation to claims 1, 16, and 28-29 wherein the adjuvant is obtained by reacting an amidoamine with an alkylene oxide, specifically ethylene oxide, and/or the amidoamine is obtained by reacting a triglyceride and an alkylamine these limitations are product-by-process limitations, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. Thus, in the instant case, as the claims are to the product and the product is rendered obvious by the combined prior art as discussed above these product-by-process limitations are not being given patentable weight because determination of patentability is based on the product itself, and the patentability of a product does not depend on its method of production. Thus, because the combination of the prior art teaches applicant’s claimed agricultural formulation with the claimed amidoamine alkoxylate/ethoxylate surfactant it reads on these claims, because the claims are to the agricultural formulation not the method of making the agricultural formulation and determination of patentability is based on the product itself and not the method of production.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC §103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1, 3, 5-8, 13-14, 16-17, 19-23, and 27-29 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pallas et al. (US20030087764, previously cited), IUPAC (http://sitem.herts.ac.uk/aeru/iupac/Reports/372.htm#:~:text=Glufosinate%2Dammonium%20is%20a%20herbicide,considered%20to%20be%20a%20neurotoxin introduced circa 1982 cited previously), and Danner (US4572721).
Determination of the scope and content of the prior art (MPEP 2141.01)
Regarding claims 1, 3, 5-7, 14, 16-17, 19-21, 23, and 27, Pallas teaches high load agricultural plant compositions/agricultural compositions comprising a pesticide, and specifically prefers water soluble glufosinate salts and water soluble glyphosate salts, including potassium glyphosate, isopropylamine salts of glyphosate, etc. (which reads on the instantly claimed water soluble glyphosate salts, specifically potassium and isopropylamine salts from claims 1, 3, 6, 16-17, 20, and 27) in concentrations of at least about 540 or at least about 600 g.a.e./L, which reads on the claimed high load/high concentration and concentrations claimed in claims 5, 19, and 27) and other herbicides, and an adjuvant having a homologous/very structurally similar to applicant’s claimed structure, see Pallas’ formula (37) wherein R1 is a C1-to C30 hydrocarbyl and X is -C(O)N(R9) wherein R9 is hydrogen and z is 1, which reads on the left-most amide in applicant’s formula; Pallas’ (R8)n is -CH2-CH2 (corresponds to applicant’s (CH2)c wherein applicant’s c =2; y = 0); Pallas’ R2 is CH2CH2, and R4 and R3 and R5 are (R6O)xR7 (The (R6O)yR7 in the first part of the description is clearly a typo because they define two different (R6O) groups an x (R6O) and a y (R6O) and based on the rest of the description which defines various R1, R3, R4, R5 as the formula (R6O)xR7 thus the initial definition which includes a y instead of an x is a clear typo when the entire section describing the formula (37) is read) wherein R6 is C2-C4 alkylene, x = 1-30 and applicant’s a is 1 (which reads on the instantly claimed b= 2-10, and b=5-10 in claims 1, 14, 16, 23, 27), and Pallas’ R7 is H (see entire document; [0003]; [0069]; [0113-0114, formula (37) read entire description which clearly shows that the first mention of (R6O)yR7 is clearly a typo and should be (R6O)xR7]; [0002]; [0043]; [0064]; [0004-0010], etc.). Pallas further teaches wherein these structurally similar/homologous surfactants/adjuvants, which are homologous to the claimed reaction products, are preferably present in their compositions in amounts of from about 0.5 to about 30% by weight of the total composition (See [0053]) which reads on the claimed range of from about 1 to about 25 wt% based on the weight of the formulation.
Regarding wherein applicant’s a is 2 or 3, which would correspond to 2-3 CH2 groups and an N-Y group being repeated, Pallas teaches wherein their R8 can be hydrocarbylene or substituted hydrocarbylene of from 2 to about 30 carbon atoms, and they teach wherein substituted hydrocarbylene to include wherein at least one carbon atom is substituted with at least one atom other than carbon and include wherein carbon chain atom is substituted with a heteroatom such as nitrogen and wherein the substituents include amino groups, thus clearly triamines and 4-amine, etc. containing groups are broadly envisioned as surfactants which read on the now claimed reaction products ([0177]; see entire document; [0003]; [0069]; [0113-0114, formula (37) read entire description which clearly shows that the first mention of (R6O)yR7 is clearly a typo and should be (R6O)xR7]; [0002]; [0043]; [0064]; [0004-0010], etc.).
Regarding claims 1, 3, 5-7, 14, 16-17, 19-21, 22-23, and 27, specifically claims 1, 16, and 27, Pallas teaches wherein the agricultural compositions can further comprise water and specifically wherein the glyphosate salts, e.g. potassium, or glufosinate salts, e.g. ammonium are dissolved in water to form a solution which reads on the instantly claimed solution and wherein their formulations do not have to contain a water-immiscible organic solvent, e.g. the formulation does not have to be an emulsion/microemulsion (see entire document; [0041-0042]; [0046]; [0050-0053]; [0198]; [0154-0155]; etc.). Pallas further teaches wherein these surfactants/adjuvants (which read on the claimed reaction product) are preferably present in their compositions in amounts of from about 0.5 to about 30% by weight of the total composition (See [0053]) which reads on the newly claimed range of from about 1 to about 25 wt% based on the weight of the formulation.
Regarding claims 8, 22, 27, Pallas teaches wherein their agricultural composition is physically stable over the temperature range of -10 eC to 50 eC, more preferably from -20 eC to 60 eC, which is the same as the instantly claimed temperature range (See entire document; Claim 123; [0048]). Pallas teaches wherein the agricultural compositions comprise water (see entire document; [0046]; [0050-0053]; [0198]; [0154-0155]; etc.).
Regarding claim 13, Pallas teaches a method of killing or controlling a pest wherein the method comprises contacting the agricultural composition of claim 1 to a pest, specifically a weed which are the same pests which are being controlled by the instantly claimed method because the compositions of Pallas contain the same herbicidal active agents instantly claimed (see [0162]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 7 and 21, Pallas does not specifically teach wherein the water soluble salts of glufosinate are the ammonium salts, etc. However, Pallas teaches using water soluble glufosinate salts thereof in their invention as a particularly preferred group of herbicides which (includes water soluble salts of three herbicides: bialaphos, glufosinate (contains a phosphorous acid moiety and a carboxylic acid moiety thus the salt will form at the phosphoric acid group with a cation, e.g. K+) and glyphosate (also contains a carboxylic acid)) and then specifically discloses that preferred water soluble salts of glyphosate include the potassium salt, ammonium salt, etc. which reads on claims 1, 3, 6, 16-17, 20, 27. It would have been obvious to use the well-known water soluble ammonium salt of glufosinate (see IUPAC summary and general information section) which was introduced around 1982 in Pallas’ invention since that is a well-known/common water soluble salt of their preferred herbicides glufosinate and glyphosate.
Regarding claims 1, 3, 5-8, 13-14, 16-17, 19-23, and 27, Pallas does not teach wherein applicant’s a in their formula is more than 1, specifically the instantly claimed 2-3. However, Pallas does teach that pentamines, quadamines, triamines and diamines and other ethoxylated amidoamines were known to be useful for formulating their stable concentrated glyphosate/glufosinate agricultural compositions (see [0121, wherein X is C(O)N(R12), R7 and R8 are both –(R11) wherein s 0, (R3O)v wherein R3 is ethylene and v is 1-50, R4 is CH2CH2 or substituted hydrocarbylene which means N can be present in the chain ([0177]), and q is 1-5), and discussed above they clearly broadly teach wherein their R8 can be substituted hydrocarbyl which is defined to include wherein chain carbon atoms are replaced with Nitrogen atoms, e.g. forming triamines, and higher amines. Pallas also teaches at [0130] wherein amidoamine ethoxylates as a genus are preferred cationic surfactants for their compositions. Thus, because the prior art teaches that a=1 are useful as additives for formulating high load/concentrated herbicidal/pesticidal formulations it would have been obvious for one of ordinary skill in the art to have formed compounds wherein applicant’s a=2 and/or a=3, e.g. repeat 1-2 of the same amine unit in the surfactant to form additional surfactants for formulating effective and stable/concentrated pesticidal compositions especially since it is known, “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. ‘An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.’” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). “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). In the instant case, the claimed compounds differ only by the addition of 1-2 additional “a” group(s) to the compounds already disclosed in Pallas for the same purpose. Especially since Pallas teaches that other diamines, triamines, quadamines and pentamines including other amidoamine alkoxylates as discussed above are known to be useful for forming stable glufosinate and glyphosate compositions and they teach that amidoamine ethoxylates in general are preferred cationic surfactants for forming their invention. Especially since, the examiner notes that the amidoamine surfactant compounds wherein a=1, a=2, and a=3 are known amidoamide ethoxylate surfactant molecules as taught by Danner (see col. 2, ln. 59-Col. 3, ln. 29, specifically wherein X is formula α as defined; abstract) which are all known to exhibit the same type of surfactant/degreasing behavior.
Finding of prima facie obviousness Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant invention to form the claimed composition with the claimed adjuvant/surfactant because Pallas broadly teaches homologous amidoamines, wherein a =1, to those that are claimed in the instant claims were already known in the art for use in formulating stable high concentration potassium glyphosate formulations and/or high concentration glufosinate ammonium formulations having the same temperature stability and methods of using these compositions for controlling/killing weeds which are the homologous/very similar compositions and methods of using these compositions which are instantly claimed. One of ordinary skill in the art would have had motivation to form the claimed amidoamines wherein a=2 or a=3 as claimed because Pallas teaches that all of their diverse grouping of amines and amidoamine surfactants allow for the formulation of storage stable potassium glyphosate compositions and these surfactants include amines, diamines, triamines, quadamine, etc. as Pallas teaches wherein their R8 hydrocarbyl group in formula 37 can be interrupted/have carbon chain atoms replaced with nitrogen atoms which would form triamines and higher amines and the courts have previously determined that, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Merck & Co. v.Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Further, as the instant claims 1, 3-8, 13-14, 16-17, 19-23 are currently written they do not exclude additional agents or solvents or anything from the composition because they use comprising as the transitional phrase.
Regarding claims 1, 3, 5-8, 13-14, 16-17, 19-23, and 27, it also would have been obvious to one of ordinary skill in the art at the time of the instant filing to form agricultural compositions which comprise the claimed ethoxylated/propoxylated amidoamines having 2 and/or 3 of applicant’s a groups because it was known in the art to use homologous ethoxylated amidoamines in concentrated stable glyphosate compositions which are the same type of compositions instantly claimed and Pallas teaches forming ethoxylated amidoamines wherein applicant’s a is 1 and wherein all of the other variables are the same and/or overlap in scope with applicant’s instantly claimed ranges as is discussed above. Thus, it would have been obvious to one of ordinary skill in the art to formulate agricultural compositions comprising applicant’s ethoxylated amido amines wherein a is 2 or a is 3 because it is known, “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. ‘An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.’” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). “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). This is relevant to the instant case, because the claimed compounds differ only by the addition of 1-2 additional “a” groups to the compounds already disclosed in Pallas for the same purpose, e.g. it is the addition of 1 more the same chemical group to the surfactant of Pallas which forms the compounds of claims 1, 3, 5-8, 13-14, and 16-17, 19-23, and this would be an obvious modification to perform since Pallas teaches that the number of ethoxylated amine groups can be varied in a surfactant that is used to formulate highly concentrated herbicide compositions.
Further it would have been obvious to use surfactants (which read on the claimed reaction products) wherein a=2 or a=3 in the formulation of Pallas and expect the same result that Pallas teaches with their amidoamine surfactants of formula (37) which are homologous and/or very structurally similar to the claimed amidoamines wherein a is 2 or a is 3 because Danner teaches that the amidoamines of applicant’s claims wherein a=1, 2, or 3 were known in the art to function as surfactants, and Pallas broadly teaches that the genus of amidoamine ethoxylates is preferred for forming their stable high load glyphosate compositions. As such it would be obvious to substitute the a=2 and/or a=3 amidoamine ethoxylate surfactants of Danner which are homologous to the amidoamine surfactants of Pallas and expect that they too would allow for increased temperature stability of the solutions because they are known surfactants and Pallas teaches that the homologous surfactant wherein a=1 is useful for formulating their stable high load glyphosate compositions.
Regarding the newly added limitation to claims 1, 16 and new claims 28-29 wherein the adjuvant is obtained by reacting an amidoamine with an alkylene oxide, specifically ethylene oxide, and/or the amidoamine is obtained by reacting a triglyceride and an alkylamine these limitations are product-by-process limitations, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. Thus, in the instant case, as the claims are to the product and the product is rendered obvious by the combined prior art as discussed above these product-by-process limitations are not being given patentable weight because determination of patentability is based on the product itself, and the patentability of a product does not depend on its method of production. Thus, because the combination of the prior art teaches applicant’s claimed agricultural formulation with the claimed amidoamine alkoxylate/ethoxylate surfactant it reads on these claims, because the claims are to the agricultural formulation not the method of making the agricultural formulation and determination of patentability is based on the product itself and not the method of production.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/ Remarks
Applicant’s arguments with respect to the 103 rejection over the combined references have been fully considered but were not persuasive at this time. Applicants amendments have prompted the revised/new grounds of rejection presented herein. Applicants arguments insofar as they pertain to the revised grounds of rejection are addressed herein.
Applicants argue that the cited combination of references would not render the claimed composition obvious because the disclosures are from different disciplines. The examiner respectfully disagrees because all of the disclosures of the prior art relate to agricultural applications and while applicants have added intended uses to their formulation/composition specifically that the composition be and “agricultural plant formulation” this limitation does not structurally change/limit the composition in any way as glyphosate and/or glyphosate are both non-selective herbicides and will kill crops, weeds, and other plants to which it is applied. Further, the prior art Danner teaches the same amidoalkylamines which are instantly claimed and wherein a= 1, 2, 3, or even 4 and all function as surfactants in agricultural formulations. Pallas teaches formulating the claimed surfactants wherein applicant’s a is 1 with the claimed active agents in the claimed amounts and specifically prefers water soluble glufosinate salts and water soluble glyphosate salts, including potassium glyphosate, isopropylamine salts of glyphosate, etc. and as such because each of the compounds wherein a is 1, 2, or 3 are known to be effective surfactants as per Danner would be obvious to substitute in the compositions of Pallas in order to develop the instantly claimed composition for the reasons of record which are discussed above. Specifically, Regarding wherein applicant’s a is 2 or 3, which would correspond to 2-3 CH2 groups and an N-Y group being repeated, Pallas teaches wherein their R8 can be hydrocarbylene or substituted hydrocarbylene of from 2 to about 30 carbon atoms, and they teach wherein substituted hydrocarbylene to include wherein at least one carbon atom is substituted with at least one atom other than carbon and include wherein carbon chain atom is substituted with a heteroatom such as nitrogen and wherein the substituents include amino groups, thus clearly triamines and 4-amine, etc. containing groups are broadly envisioned ([0177]; see entire document; [0003]; [0069]; [0113-0114, formula (37) read entire description which clearly shows that the first mention of (R6O)yR7 is clearly a typo and should be (R6O)xR7]; [0002]; [0043]; [0064]; [0004-0010], etc.), and Danner teaches that the amidoamines of applicant’s claims wherein a=1, 2, or 3 were known in the art to function as surfactants, and Pallas broadly teaches that the genus of amidoamine ethoxylates is preferred for forming their stable high load glyphosate compositions. As such it would be obvious to substitute the a=2 and/or a=3 amidoamine ethoxylate surfactants of Danner which are homologous to the amidoamine surfactants of Pallas and expect that they too would allow for increased temperature stability of the solutions because they are known surfactants and Pallas teaches that the homologous surfactant wherein a=1 is useful for formulating their stable high load glyphosate compositions.
Applicants further argue that it would not be obvious to form an amidoamine reaction product by their method. The examiner respectfully points out that as long as the final amidoamine compound is present which is all that is required by applicant’s claims it does not matter how the amidoamine is made for incorporation into the composition with the glyphosate. The amidoamine component as claimed of which only one is required to be present in the composition is the same compound whether it is made by a different than the process applicants are claiming. The claims are to the composition not the method of making the composition and as such the courts have previously determined, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Applicants then argue that even if the combined disclosures teach known chemical reactions to make the amidoamine alkoxylates/amidoamines instantly claimed that does not make the claims unpatentable. The examiner respectfully disagrees with this interpretation of the rejection. Pallas teaches homologous amidoamine alkoxylates being used to formulate the same actives in the same concentrations for stability, etc. Pallas merely does not teach wherein a is 2 or 3. However, this is rendered obvious based on the teachings of Danner which are detailed above which clearly teaches that the claimed amidoamine alkoxylates wherein applicant’s a is 1, 2, 3, or 4 are all known surfactants which are useful in other agricultural formulations.
Applicants then further argue that their amidoamine alkoxylate is a reaction product not a homogenous material. The examiner respectfully disagrees with this interpretation based on the current claim language because the claim recites that the reaction product can comprise a single compound having the claimed formula and nothing else has to be present. The reaction product can clearly be purified before being added to the water and pesticide in solution as nothing in the instant claims requires crude reaction mixtures nor discloses or claims exactly what is present in these reaction mixtures, e.g. other solvents, residual reactants, etc. all of which are not actually required to be present in the instantly claimed composition as the claims are currently written. The examiner also notes that the amidoamine/amidoamine alkoxylate is being formed and any excess ethylene oxide is removed and then this mixture is mixed with water and the pesticides in applicants examples. The examiner further notes that these examples are not commensurate in scope with applicants claims as they are currently written. Further, applicants have not demonstrated that their amidoamines/amidoamine alkoxylate reaction products are other than the claimed compounds of the formula disclosed in the instant claims as the claims need only claim 1 compound having the claimed formula as is instantly claimed and as such applicants are arguing features which are not actually required by applicant’s claims as they are currently written.
The examiner also notes that as discussed above Pallas does teach wherein N atoms can be inserted into their carbon chain/R8 group which are independently selected, and n can be more than 1. Thus, it would be obvious to add 1-2 additional a groups which are the middle amines in Pallas in order to develop the instantly claimed composition and one of ordinary skill in the art would have reason to expect that these adjuvants would provide the same improved stability observed with the other amidoamines and amidoamine alkoxylates taught by Pallas. Additionally, as discussed above, Danner teaches that the claimed amidoamines wherein a is 1, 2, or 3 as claimed were known in the art to function as surfactants and as discussed above Pallas teaches that amidoamine ethoxylates in general are preferred cationic surfactants for formulating the concentrated high load herbicide formulations instantly claimed and as such it would be obvious to add and/or substitute the known amido amine ethoxylate surfactants wherein a is 2 or 3 as taught by Danner as the surfactants in Pallas in order to form the claimed combination because they are known surfactants and are very structurally similar to the amidoamine ethoxylates of (37) as is taught by Pallas and as such based on the teachings that other triamines, etc. were useful in Pallas it would be obvious to try the claimed structurally similar amidoamine ethoxylate surfactants of Danner in Pallas since they are homologous to the compounds of formula (37) and expect that they would also lead to the same effects observed by Pallas, e.g. increased stability.
The examiner also notes that there were no arguments beyond applicant’s asking for the double patenting to be held in abeyance and as such this rejection is maintained. Applicant’s request for the double patenting rejection of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the revised/updated ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616