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 .
Reopening of Prosecution After Appeal Brief
In view of the appeal brief filed on 10/03/2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejections are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
Status of Claims
Claims 1, 7, 10, 13, 15-16, 78-79, 82 have been amended.
Claims 2-6, 9, 14, 17 and 19-75 are cancelled.
Claims 84-85 are new.
Claims 1, 7-8, 10-13, 15-16, 18, and 76-85 are pending and being examined on the merits herein.
Priority
The instant application, filed on 03/12/2019, claims domestic benefit of 62/641789, filed on 03/12/2018.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 07/15/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of appeal brief filed on 11/25/2025.
Claim Interpretation-Two Options
Claim Interpretation Option No. 1:
Claims 1, 7, 10-13, 15-16, 78 and 82 are interpreted as following.
Claim 1 is interpreted as:
An article comprising an oil-in-water emulsion, wherein:
the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water, wherein the oil-in-water emulsion is essentially free of surfactant.
The phrases of “disposed on a surface comprising one or more protrusions”, “the oil forms one or more oil deposits on the surface that enhance retention of a composition on the surface”, “a ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10”, and “the surface holds greater than or equal to 0.5 mL of the oil-in-water emulsion per cm2 of the surface and at least 30% of the surface is covered by the oil-in-water emulsion, and the surface comprises a portion of a plant” are interpreted as properties, process of making or using, or intended use of the oil-in-water emulsion, because they do not structurally contribute to the article comprising an oil-in-water emulsion. Based on the broadest reasonable interpretation, they are interpreted as following:
(intended use, or process of using) disposed on a surface comprising one or more protrusions,
(intended use, or process of making or using) the deposited oil-in-water emulsion droplets on the surface enhance retention of a composition,
(property of surface/droplet) a ratio of an average radius of the droplets to an average height of the one or more protrusions is from 0.01 to 10,
(property of surface/emulsion) at least 30% of the total surface is covered by the oil-in-water emulsion, and the surface can hold greater than or equal to 0.5 mL per cm2 of the oil-in-water emulsion on the surface where is covered by oil-in-water emulsion,
(intended use) the surface comprising a portion of a plant.
Claim 7 is interpreted as the article as in claim 1, wherein the oil-in-water emulsion comprises the composition.
Claims 10-13 and 15-16 are interpreted as “intended use” of the oil-in-water emulsion on the surface.
Claim 78 is interpreted as:
An article comprising one or more oil deposits and one or more droplets contacting the one or more oil deposits, wherein the one or more droplets comprise water and an active agent.
The phrases of “disposed on a surface comprising one or more protrusions, wherein the surface comprises a portion of a plant” and “such that the one or more droplets are retained on the surface” are interpreted as properties, or process of making or using, or intended use of the article, because they do not structurally contribute to the article limitation.
Claim 82 is interpreted as:
An article comprising an oil-in-water emulsion, wherein the oil-in-water emulsion comprising droplets comprising an oil dispersed within a fluid comprising water, the droplets comprising the oil have a bimodal distribution of radii.
The remaining are interpreted as properties, or process of making or using, or intended use of the article, and they are interpreted as following:
(intended use, or process of using) disposed on a surface comprising one or more protrusions,
(process of making or using, or intended use) the droplets on the surface enhance retention of a composition on the surface,
(property of surface/droplet) a ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10.
(intended use) the surface comprising a portion of a plant.
Claim Interpretation Option No. 2:
Claims 1, 11-13, 15-16, 78 and 82 are interpreted as following.
Claim 1 is interpreted as:
An article comprising an oil-in-water emulsion on a plant surface, wherein:
the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water, wherein the oil-in-water emulsion is essentially free of surfactant.
The rest of the phrases in claim are interpreted as properties, or process of making or using, or intended use, because they do not provide structural limitation to the article. They are interpreted and rephrased as following:
(surface property) comprising one or more protrusions,
(intended use) the droplets of the oil-in-water emulsion on the surface enhance retention of a composition on the surface,
(process of making, or property of droplet/surface) the ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10,
(property of surface) the surface holds greater than or equal to 0.5 mL of the oil-in-water emulsion per cm2 on the surface where is covered by oil-in-water emulsion, and at least 30% of the surface is covered by the oil-in-water emulsion.
Claim 7 is interpreted as the article as in claim 1, wherein the oil-in-water emulsion comprises the composition.
Claims 11-13 and 15-16 are interpreted as properties and capabilities of the surface.
Claim 78 is interpreted as:
An article comprising one or more oil deposits on a plant surface comprising one or more protrusions, and one or more droplets in contact with the oil deposits, wherein the one or more droplets comprise water and an active agent.
The effect of retention out of the description “such that the one or more droplets are retained on the surface” is interpreted as property or intended use of the article, because it does not structurally contribute to the article limitation.
Claim 82 is interpreted as:
An article comprising an oil-in-water emulsion on a plant surface, wherein:
the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water,
the droplets comprising the oil have a bimodal distribution of radii.
The rest of the phrases in claim are interpreted as properties, or process of making or using, or intended use, because they do not provide structural limitation to the article. They are interpreted and rephrased as following:
(surface property) comprising one or more protrusions,
(process of making, or intended use) the oil-in-water emulsion forms droplets on the surface,
(intended use) the droplets of the oil-in-water emulsion on the surface enhance retention of a composition on the surface,
(property of surface/droplet) a ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10.
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, 7-8, 10-13, 15-16, 18, 76-77, 79-80 and 81-83 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 82 each recites “an article comprising an oil-in-water emulsion disposed on a surface comprising one or more protrusions …” and “the surface comprises a portion of a plant”. It is unclear whether the article is just an oil-in-water emulsion, while being deposited on a surface, e.g., a plant surface, as intended use of the emulsion, or it is meant to be an article comprising both an oil-in-water emulsion and a plant surface.
Claims 1 and 82 each recites “the oil forms one or more oil deposits on the surface”. Because the oil is previously defined in the claim as “dispersed within a fluid comprising water”, it is unclear how the oil forms oil deposits on the surface out of the fluid comprising water, since the oil is in the emulsion, there should not have oil droplets forming on surface by oil alone.
Claims 1 and 82 each recites “ a ratio of average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10”. MPEP 2173.05(b) II. states “[A] claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. That is, where the elements of a claim have two or more plausible constructions such that the examiner cannot readily ascertain positional relationship of the elements, the claim may be rendered indefinite.” See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). Miyazaki, 89 USPQ2d at 1212. In Brummer, the Board held that a limitation in a claim to a bicycle that recited "said front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider that the bicycle was designed for" was indefinite because the relationship of parts was not based on any known standard for sizing a bicycle to a rider, but on a rider of unspecified build. Brummer, 12 USPQ2d at 1655. For the instant claims, because the ratio is depending on a plant part, e.g., protrusions , which having unknown standard of height, and therefore the ratio of average radius is a relative term without clear definition, and it renders the claim indefinite.
Claim 1 recites “the surface holds greater than or equal to 0.5 ml … per cm2 of the surface and at least 30% if the surface is covered by the oil-in water emulsion”. Because there is no indication that 30% coverage is evenly distributed on the surface, and also there is no indication that the calculation base of holding volume is based on covered surface, it is unclear how the surface holds greater than or equal to 0.5 ml per cm2 on the 70% uncovered surface, if 70% of surface can be totally free of the oil-in-water emulsion.
Claim 1 recites “the surface holds greater than or equal to 0.5 ml … per cm2 of the surface and at least 30% if the surface is covered by the oil-in water emulsion” and “the surface comprises a portion of a plant”. MPEP 2173.05(b) II. states “[A] claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. That is, where the elements of a claim have two or more plausible constructions such that the examiner cannot readily ascertain positional relationship of the elements, the claim may be rendered indefinite.” See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). For this instance, because the surface referring to a portion of a plant is not sufficiently defined, the volume of the surface capability of holding cannot be readily ascertained without specification of the surface.
Claim 7 recites “in claim 1, the oil-in-water emulsion further comprises the composition”, while claim 1 which claim 7 is depending upon, recites “the oil forms one or more oil deposits …enhance retention of a composition on the surface”. If the composition is in the oil-in-water emulsion, it is confusing how the emulsion comprising the oil and the composition can enhance retention of itself.
Claims 8, 10-13, 15-16, 18, 76-77, 79-81 and 83 are rejected accordingly because they are directly or indirectly depending on either claim 1 or claim 82, and they do not clarify the issues in claim 1 or claim 82 as addressed above.
In light of claim interpretation option No. 1:
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10-13 and 15-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 10-13 and 15-16 recite features, properties, or intended use of the surface. While claim 1, which the claims 10-13 and 15-16 depending upon, is interpreted in claim interpretation option No. 1 as an article comprising an oil-in-water emulsion, wherein: the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water, wherein the oil-in-water emulsion is essentially free of surfactant. Therefore, the surface features, properties, or intended use do not contribute to the structure of the composition in claim 1, and thus fail to further limit the subject matter of claim 1 which they depend upon.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 7-8, 10-13, 15-16, 18, 76-78 and 81-85 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (natural phenomenon) without significantly more, as evidenced by Diverse Daily (understanding oil-in-water emulsions, 2026, Weblink: https: //diversedaily.com/understanding-oil-in-water-emulsions-a-comprehensive-guide/ , PTO-892), Wikipedia (Neem oil, 2026, https: //en.wikipedia.org/ wiki/Neem_oil , PTO-892)
The claims are evaluated below using the “Subject Matter Eligibility Test for Products and Processes” flow chart as shown in MPEP § 2106 III.
Step 1: Is the claim to a process, machine, manufacture or composition of matter?
If the answer to the question is “no”, then the claim is not eligible subject matter under 35 U.S.C. 101. If the answer to this question is “yes”, then the analysis proceeds to the second step.
The independent instant claims 1, 78 and 82 each is drawn to a composition of matter, as shown below in detail, which is one of the four statutory categories.
Claim interpretation option No. 1:
Claim 1 is interpreted as “an article comprising an oil-in-water emulsion, wherein …”.
Claim 78 is interpreted as “an article comprising one or more oil deposits and one or more droplets contacting the one or more oil deposits, wherein …”.
Claim 82 is interpretated as “an article comprising an oil-in-water emulsion, wherein …”.
Claim interpretation option No. 2:
Claim 1 is interpreted as “an article comprising an oil-in-water emulsion on a plant surface comprising one or more protrusions, wherein …”;
Claim 78 is interpreted as: “an article comprising one or more oil deposits on a plant surface comprising one or more protrusions, and one or more droplets in contact with the oil deposits, wherein …”.
Claim 82 is interpreted as “an article comprising an oil-in-water emulsion on a plant surface comprising one or more protrusions, wherein …”.
The answer to the step 1 question is “yes”. The analysis proceeds.
Step 2A, Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
If the answer to this question is “no,” then the claim qualifies as an eligible subject matter under 35 U.S.C. 101. If the answer to this question is “yes,” then the analysis proceeds to the third step.
As MPEP 2106.04(c) I. A. states that “[w]here the claim is to a nature-based product produced by combining multiple components (e.g., a claim to "a probiotic composition comprising a mixture of Lactobacillus and milk"), the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than its component parts. “ and “[w]here the claim is to a nature-based product in combination with non-nature based elements (e.g., a claim to "a yogurt starter kit comprising Lactobacillus in a container with instructions for culturing Lactobacillus with milk to produce yogurt"), the markedly different characteristics analysis should be applied only to the nature-based product limitation.”
Claim interpretation option No. 1:
Regarding instant claims 1, 78 and 82, as evidenced by Diverse Daily, oil-in-water emulsion comprises oil droplets dispersed throughout a continuous water phase, and milk is the most familiar oil-in-water emulsion. Milk has undoubtfully existed since mammals occurred on earth, and it is a natural product free of additional or artificial ingredients, such as what we call today surfactants. As we know that milk can be held in human or cow’s body, there is no doubt that the article comprising the milk oil-in-water emulsion is natural subject matter, e.g., human or cow comprising milk as oil-in-water emulsion (corresponding to instant claim 1 by interpretation option No. 1). Because the oil deposits within the milk contain numerous droplets contacting one or more oil deposits, and all droplets comprising water and an active agent, e.g., nutrition for baby growth, human or cow comprising milk reads into instant claim 78 by interpretation option No. 1. When the milk dripping out of the natural openings of the biological body, due to the naturally non-identical opening radii, the droplets would have bimodal distribution of radii, which reads into instant claim 82 by claim interpretation option No. 1.
Further regarding instant claims 1, 78 and 82 by claim interpretation option No. 1, as discussed above, claim interpretation No. 1 interprets surface-related features as properties or intended use of the article comprising oil-in-water emulsion. In detail, the oil-in-water emulsion is disposed on a surface comprising a portion of a plant, the plant surface comprises one or more protrusions, the deposited oil-in-water emulsion droplets on the surface enhance retention of a composition, a ratio of an average radius of the droplets to an average height of the one or more protrusions is from 0.01 to 10, or at least 30% of the total surface is covered by the oil-in-water emulsion, and the surface can hold greater than or equal to 0.5 mL per cm2 of the oil-in-water emulsion on the surface where is covered by oil-in-water emulsion in claim 1; disposed on a plant surface comprising one or more protrusions, such as the one or more droplets are retained on the surface in claim 78, droplets enhance retention of a composition on the surface, surface comprising one or more protrusions and a portion of plant, a ratio of average radius of the droplets to average height of protrusions in claim 82, all of these are properties or intended use of the article comprising oil-in-water emulsion, as long as the article comprising oil-in-water emulsion naturally exists, these properties or intended use are necessarily capable of existing in nature. Especially, as discussed above in 35 U.S.C. 112 rejections, the object of surface, e.g., plant surface, is a relative term without known standard, any natural leaf can read into the claim language, and depositing on a leaf surface with milk would naturally and capably exhibit all the properties or intended use as instantly claimed in claims 1, 78 and 82 by interpretation option No. 1.
Regarding instant claims 7-8, 18, 76-77 and 84-85, the milk contains water and nutrients, which is a natural composition for baby growth (corresponding to instant claims 7-8 and 18). The milk can mix with natural agricultural chemical, e.g., neem oil, as a natural agricultural pesticidal chemical, as evidenced by Wikipedia (corresponding to claims 76-77 and 84-85).
Regarding instant claims 10-13, 15-16, 81 and 83, the surface features in claims 10-13 and 15-16 are interpreted as properties, or process of making or using, or intended use of the article comprising oil-in-water emulsion. The natural plant leaf is a relative object and it can constitute any surface features, and whatever properties claimed in instant claims would be existing in nature, because applicant does not build the plant surface, it is a natural object. Therefore, the features in claims 10-13 and 15-16 are natural phenomena. Similarly, the average radius of the droplets comprising the oil is property of the article comprising oil-in-water emulsion, and as long as the article with oil-in-water emulsion occurs naturally, whatever droplet sizes are capable of naturally forming, which read into claims 81 and 83.
Claim interpretation option No. 2:
Regarding instant claims 1, 78 and 82, as evidenced by Diverse Daily, when the milk is taken out of the source and spread onto an object surface, which can include a natural plant leaf surface, the milk being oil-in-water natural emulsion without additional surfactant on a plant leaf would read into the article in instant claims 1, and multiple droplets spread onto the oily droplets on a leaf surface would read into instant claim 78, in addition, the droplets coming out from two different natural openings would result in bimodal distribution of radii, which reads into instant claim 82. As discussed above in 35 U.S.C. 112 rejections, a portion of plant is a relative term without known standard, and depositing milk droplets on natural plant surface would certainly, naturally and capably exhibit the ratio as claimed in instant claim 82. Regarding the limitation scope on the plant surface comprising one or more protrusions, the ratio of droplet average radius to the height of protrusions on the surface, or emulsion volume and coverage of the surface, because plant is a natural object with no known standard, the natural plant portion can be in any possible format with natural protrusion height, natural shapes, thickness, and hydrophobicity, and therefore, all the properties, or process of making or using, or intended use can naturally occur, for instance, dripping milk into a pitcher plant, the pitfall trap would be able to hold naturally as much as the volume of the trap, which would easily be greater than or equal to 0.5 mL per cm2 of milk. In conclusion, the natural existence of plant surface diversity would allow all the claimed properties exist naturally as claimed in instant claims 1, 78 and 82.
Regarding instant claims 7-8, 18, 76-77 and 84-85, as discussed above, the milk contains water and nutrients, which is a natural composition for baby growth (corresponding to instant claims 7-8 and 18). The milk can mix with natural agricultural chemical, e.g., neem oil, as a natural agricultural pesticidal chemical, as evidenced by Wikipedia (corresponding to claims 76-77 and 84-85).
Regarding instant claims 10-13, 15-16, 81 and 83, the surface features in claims 10-13 and 15-16 would naturally occur due to the vast diversity of natural plants. As discussed above, since the object, a portion of plant, e.g., leaf, is a relative object and it can constitute any surface features, and whatever features or properties claimed in instant claims would be existing in nature, as properties and features of a natural object. Therefore, the features in claims 10-13 and 15-16 are natural phenomena. Similarly, the average radius of the droplets comprising the oil is property of the article comprising oil-in-water emulsion, and as long as the article with oil-in-water emulsion occurs naturally, whatever droplet sizes are capable of naturally forming, which read into claims 81 and 83.
In summary, there is no indication in the instant application that the combination of naturally-occurring components exhibits any markedly different characteristics from any naturally occurring counterparts, and thus, is treated as a product of nature judicial exception.
The answer to step 2A, prong 1 question is “ yes”. The analysis proceeds to next step.
Step 2A, Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
If the answer to this question is “yes,” then the claim is an eligible subject matter under 35 U.S.C. 101. If the answer to this question is “no,” then the analysis proceeds to next step.
As discussed above, the instantly claimed article, either by claim interpretation option No. 1, or option No. 2, the article comprising oil-in-water emulsion with or without plant surface, since oil-in-water emulsion occurs in nature, so does plant surface with various and vastly abundant features and properties, the invention exist as a natural phenomenon in claims 1, 10-13, 15-16, 18, 78, and 81-83. Although, claims 7-8, 76-77 and 84-85 indicate the article comprising the emulsion with or without plant surface contains a composition, an active agent, an agricultural chemical, or pesticide, because all these ingredients can exist naturally as discussed above, the judicial exception is not integrated into a practical application because the ingredients in instantly claimed composition resemble natural products. (see MPEP 2106.04(d)).
In summary, the claims do not recite additional elements that integrate the judicial exception into a practical application.
The answer to step 2A, prong 2 question is “no”. The analysis proceeds to next step.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
If the answer to this question is “yes”, then the claim is eligible subject matter under 35 U.S.C. 101. If the answer to this question is “no,” then the claim is not eligible subject matter under 35 U.S.C. 101. End of analysis.
MPEP 2106.05.II states “[E]xaminers should answer this question by first identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s))”.
In instant claims, there are no additional elements that would amount to significantly more than the judicial exception, because each ingredient in the composition exists in nature, and the combination of these naturally occurring ingredients do not have any indication they would physically change from how they occur in nature as a mixture of naturally-occurring components. The appearing to be additional elements in current claims are the composition, active agents, agricultural chemical, or pesticide, however, it is well known that natural milk comprising natural nutrients, which is a composition comprising active agents, such as natural antibodies, and milk is routinely used for raising human or animal babies, enhancing baby growth for fighting against diseases or pests in a natural way, and often, when a baby gets sick, natural active agents can be added to the milk for disease treatment. Therefore, adding agrochemical agent does not contribute to an inventive concept.
In summary, the claims are directly to laws of nature without significantly more.
The answer to the step 2 B question is “no”. End of analysis.
Final conclusion, the claims 1, 7-8, 10-13, 15-16, 18, 76-78 and 81-85 are not eligible subject matter under 35 U.S.C. 101 and are rejected accordingly under 35 U.S.C. 101.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1, 7-8, 10-13, 15-16, 18 and 76-85 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ehr et al. (US20120035054, Published on 02/09/20212; filed on 08/03/2011).
Ehr throughout the reference directs to pesticide compositions consisting of meso-sized particles to provide enhanced effectiveness for the control of agricultural pests (e.g., Abstract).
Claim interpretation option No. 1:
claim 1 is interpreted as: an article comprising an oil-in-water emulsion, wherein the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water, wherein the oil-in-water emulsion is essentially free of surfactant.
The properties, or process of making or using, or intended use in claim 1 are as following:
(intended use, or process of using) disposed on a surface comprising one or more protrusions,
(intended use, or process of making or using) the deposited oil-in-water emulsion droplets on the surface enhance retention of a composition,
(property of surface/droplet) a ratio of an average radius of the droplets to an average height of the one or more protrusions is from 0.01 to 10,
(property of surface/emulsion) at least 30% of the total surface is covered by the oil-in-water emulsion, and the surface can hold greater than or equal to 0.5 mL per cm2 of the oil-in-water emulsion on the surface where is covered by oil-in-water emulsion,
(intended use) the surface comprising a portion of a plant.
Regarding instant claims 1, 7-8, 18, 76-80, 81 and 83, Ehr teaches mesocapsule suspensions (corresponding to the article in claim 1) of epoxiconazole (sample 15), fluoroxypyr-meptyl (sample 16B) via preparing oil phase and aqueous phase to eventually make a stable oil-in-water emulsion at the meso scale (e.g., [0085]) (corresponding to oil-water-emulsion is comprised in the article of claim 1), Ehr listing the epoxiconazole as fungicide or fluroxypyrmeptyl as active ingredient useful in agriculture (e.g., [0076]; Figure 3) (corresponding to active agent, pesticide, or composition in instant claims 7-8 and 76-77).
Ehr teaches the emulsion can be prepared by a variety of methods, including batch and continuous methods well known in the art, and in a preferred method, the emulsion is prepared using an ultra-high shear device such as an ultrasonicating device or a high-pressure homogenizer to create mesa-size droplets of less than 500 nm, preferably less than 300 nm (e.g., [0056]) (corresponding to the oil-in-water emulsion comprising droplets of instant claim 1), or between about 30 nm and about 500 nm (e.g., [0022]). MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). The diameter 500 nm in prior art anticipates the droplet comprising oil equals to 500 nm in instant claims 81 and 83 and anticipates the claimed ranges.
Ehr teaches that ultra-hydrophobe is added to the oil phase, ostensibly to preserve the stability of an oil-in-water emulsion, and the additive such as hexadecane, silicone oil (corresponding to oil species in instant claims 79-80) is compatible with the dispersed oil phase into the continuous aqueous phase (e.g., [0053]) (corresponding to oil in the oil-in-water emulsion is dispersed within a fluid comprising water in instant claims 1 and 18).
Ehr further teaches that the presence of surfactant may be detrimental in many end use applications. For example, in delivery of agricultural active ingredients into a plant, the surfactant accompanying the polyurea mesocapsules may be toxic to the plant. In other applications, the surfactant may also cause unwanted foaming in the final product. Accordingly, it is beneficial to develop a method for efficiently synthesizing micro- and mesocapsules that requires no surfactant (e.g., [0063]) (corresponding to oil-in-water emulsion is essentially free of surfactant in instant claim 1).
Regarding the properties, or process of making or using, or intended use of the article in instant claims 1, 10-13 and 15-16 as interpreted in option No. 1, since the article comprising oil-in-water emulsion is taught by Ehr, the properties, or process of making or using, or intended use would necessarily present by the article as inherent properties, or would be capable of making or using as claimed. For instance, the oil-in-water emulsion would be able to be disposed on a surface comprising a portion of a plant, which is also taught by Ehr indicating that the active ingredients in the mesocapsule suspension is delivered to a plant (e.g., [0063]) such as wild oats, black grass, redroot pigweed, wild buck wheat, field violet, common lamb squarters, common chick weed, or velvet leaf (e.g., Figure 14); the plant surface naturally comprising one or more protrusions, and the oil-in-water emulsion droplets on the surface would be capable to enhance retention of a composition, as the purpose and intended use of the mesocapsule emulsion. As discussed previously, a portion of plant, or plant surface is not sufficiently defined object (see MPEP 2173.05(b) II., e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989)), therefore, as relative terms encompassing vast diversity of surface possibilities, the ratio of radius of droplets to protrusions on plant surface, surface roughness, contact angle of water with the surface, or the holding volume of oil-in-water emulsion on the surface would be inevitably achievable, as intended use on such surface of the oil-in-water emulsion which has been taught by prior art.
Claim 78 is interpreted as: an article comprising one or more oil deposits and one or more droplets contacting the one or more oil deposits, wherein the one or more droplets comprise water and an active agent.
The properties, or process of making or using, or intended use in claim 78 are as following:
(one or more oil deposits are) disposed on a surface comprising one or more protrusions, wherein the surface comprises a portion of a plant,
(droplets containing oil deposits) such that the one or more droplets are retained on the surface.
Regarding instant claim 78, Ehr teaches a mesocapsule oil-in-water emulsion comprising hexadecane and silicone oil, which are oil deposits in the agricultural useful composition with active agents and water, and the emulsion contain droplets which are in meso scale sizes as discussed above. With no doubt, the one or more droplets would be in contact with the one or more oil deposits since they are contained in the same emulsion. Also as discussed above, Ehr teaches using the composition in field plant treatment, and therefore, the one or more oil deposits can be disposed on a plant surface comprising one or more protrusions, and one or more droplets containing oil deposits would allow one or more droplets being retained on the surface, since Ehr teaches the instantly claimed article, the properties, or process of making or using, or intended use of the taught article would be necessarily capable of such process or intended use, as well as inherent property of the article taught by prior art.
Claim 82 is interpreted as: an article comprising an oil-in-water emulsion, wherein the oil-in-water emulsion comprising droplets comprising an oil dispersed within a fluid comprising water, the droplets comprising the oil have a bimodal distribution of radii.
The following are the properties, or process of making or using, or intended use in claim 82:
(intended use, or process of using) disposed on a surface comprising one or more protrusions,
(process of making or using, or intended use) the droplets on the surface enhance retention of a composition on the surface,
(property of surface/droplet) a ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10.
(intended use) the surface comprising a portion of a plant.
Regarding instant claim 82, Ehr teaches an article comprising an oil-in-water emulsion, wherein the oil-in-water emulsion comprising droplets comprising an oil dispersed within a fluid comprising water, as discussed above regarding instant claim 1. Ehr teaches that the oil comprises hexadecane, silicone oil in the emulsion (e.g., [0053]), and the emulsion can be prepared preferably by sonication process [0056], using Sonicator 400 from Misonix Sonicators [0056], Branson 184 V Ultrasonicator [0084], or Sonics & Materials Vibra Cell 750W (e.g., [0085]). As evidenced by instant specification (Pg. 24, top paragraph), the oils, hexadecane and silicone oil, as well as the emulsion preparation method using Sonics Vibra Cell 750 taught by Ehr would result in the same article comprising the oil-in-water emulsion, and therefore, the droplets comprising the oil would constitute the same property as instantly claimed, e.g., a bimodal distribution of radii.
Regarding the plant surface comprising one or more protrusions, oil droplets on the surface enhancing retention of a composition, ratio of the droplet radius to height of protrusions on surface, they are properties, or process of making or using, or intended use of the article comprising oil-in-water emulsion, similar to those addressed above in instant claim 1 in light of interpretation option No. 1.
Claim interpretation option No. 2:
Regarding instant claims 1, 78 and 82, claims interpreted in option No. 1 as drawn to an article comprising only the oil-in-water emulsion with specific features, not including the plant surface in the article, while in claim interpretation option No. 2 claims are interpreted as drawn to an article comprising oil-in-water emulsion and a portion of plant surface with specific features as shown below.
Claim 1 is interpreted as:
An article comprising an oil-in-water emulsion on a plant surface, wherein:
the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water, wherein the oil-in-water emulsion is essentially free of surfactant.
The properties, or process of making or using, or intended use in claim 1 are interpreted and rephrased as following:
(surface property) comprising one or more protrusions,
(intended use) the droplets of the oil-in-water emulsion on the surface enhance retention of a composition on the surface,
(process of making, or property of droplet/surface) the ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10,
(property of surface) the surface holds greater than or equal to 0.5 mL of the oil-in-water emulsion per cm2 on the surface where is covered by oil-in-water emulsion, and at least 30% of the surface is covered by the oil-in-water emulsion.
Claim 78 is interpreted as an article comprising one or more oil deposits on a plant surface comprising one or more protrusions, and one or more droplets in contact with the oil deposits, wherein the one or more droplets comprise water and an active agent.
The phrase “such that the one or more droplets are retained on the surface” is interpreted as property or intended use of the article, because it does not structurally contribute to the article limitation.
Claim 82 is interpreted as an article comprising an oil-in-water emulsion on a plant surface, wherein:
the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water,
the droplets comprising the oil have a bimodal distribution of radii.
The properties, or process of making or using, or intended use in claim 82 are interpreted and rephrased as following:
(surface property) comprising one or more protrusions,
(process of making, or intended use) the oil-in-water emulsion forms droplets on the surface,
(intended use) the droplets of the oil-in-water emulsion on the surface enhance retention of a composition on the surface,
(property of surface/droplet) a ratio of an average radius of the droplets comprising the oil to an average height of the one or more protrusions is from 0.01 to 10.
As discussed above in claim interpretation option No. 1, Ehr teaches a mesocapsule suspension comprising oil-in-water emulsion that can be delivered on plant surface, including wild oats, black grass, redroot pigweed, wild buck wheat, field violet, common lamb squarters, common chick weed, or velvet leaf, etc. (e.g., Figure 14), therefore, Ehr teaches an article comprising the oil-in-water emulsion on a portion of plant surface as in independent claims 1, 78 and 82, in addition to specific features of the oil-in-water emulsion.
Therefore, regarding instant claims 1, 7-8, 10, 18, 76-85, Ehr teaches mesocapsule suspensions comprising oil-in-water emulsion, comprising active agriculture fungicide epoxiconazole, active ingredient fluoroxypyr-meptyl, via preparing oil phase including hexadecane and silicone oil and water phase using preferable sonication method to make a stable oil-in-water emulsion, with oil-comprising droplet size less than 500 nm, or at about 500 nm, as discussed above in claim interpretation option No. 1 and incorporated herein, and Her teaches the oil-in-water emulsion can be delivered on a plant surface. The properties, or intended use, or process of making or using in the independent claims are addressed above in claim interpretation option No. 1 and incorporated herein.
Regarding instant claims 11-13 and 15-16, they are interpreted as properties and capabilities of the surface. Ehr teaches that the oil-in-water emulsion can be delivered to a plant (e.g., [0063]) such as wild oats, black grass, redroot pigweed, wild buck wheat, field violet, common lamb squarters, common chick weed, or velvet leaf (e.g., Figure 14); the plant surface naturally comprises one or more protrusions, and the oil-in-water emulsion droplets on the surface would be capable to enhance retention of a composition, as the purpose and intended use of the mesocapsule emulsion. Since Ehr teaches the plant surface, the properties of the surface are inherent, or the plant surface would constitute the capabilities of the features as instantly claimed.
MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Response to Appeal Brief
Appellant’s appeal brief filed on 11/25/2025 has been fully considered, and appeal conference participants have made decision to reopen prosecution of the case. The new ground of rejections have presented in this office action as presented above. Please take entire office action as a complete response to the appeal brief.
Conclusion
No claim is allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616