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 .
Status of Claims
Amendment filed on 08/26/2026 is acknowledged.
Claims 1, 78, and 82 have been amended.
Claims 2-6, 9, 14, 17 and 19-75 remain cancelled.
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.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 08/26/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 02/27/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of appeal brief filed on 08/26/2026.
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 “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 have 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 ...” 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.
Claims 7-8, 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.
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, which is one of the four statutory categories.
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.”
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; 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 of the droplets comprising oil, 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 exist 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 therefore “ 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, comprising oil-in-water emulsion on plant surface, since oil-in-water emulsion occurs in nature, so does plant surface with various and vastly abundant features and properties, the invention exists 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 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. As discussed above, the instantly claimed article, comprising oil-in-water emulsion on plant surface, since oil-in-water emulsion occurs in nature, so does plant surface with various and vastly abundant features and properties, further defining the naturally occurring properties or leaf surface features or angles of contact, or surface holding liquid volume, do not add additional significantly more elements to the natural existing counterparts. Therefore, the invention exists 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 plant surface contains a composition, an active agent, an agricultural chemical, or pesticide, which appearing to be additional elements, 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 direct 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.
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).
Regarding independent claims 1, 78 and 82, 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 a portion of a plant surface and an oil-in-water emulsion, wherein:
the oil-in-water emulsion is dispersed on the surface,
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 plant 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,
(process of making, or 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.
Ehr teaches a mesocapsule suspension comprising oil-in-water emulsion, comprising epoxiconazole (sample 15), fluoroxypyr-meptyl (sample 16B) via preparing oil phase and aqueous phase (corresponding to composition comprising water in instant claims 1, 18, 78 and 82) to eventually make a stable oil-in-water emulsion at the meso scale (e.g., [0085]) (corresponding to oil-in-water emulsion of claims 1, 78 and 82). Ehr teaches that the oil-in-water emulsion 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) (corresponding to the surface comprising a portion of plant in instant claims 1, 78 and 82, or plant leaf in instant claim 10).
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]). Among the droplets, oil would inevitably be deposited on the surface, and the droplets comprising the fungicide or active ingredient composition would subsequently and naturally be retained on the plant surface within the droplets. 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).
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).
In light of claim interpretation, the properties, or process of making or using, or intended use of the article in instant claims 1, 11-13, 15-16, 78 and 82, since the article comprising oil-in-water emulsion on plant surface 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.
Ehr teaches that oil-in-water emulsion comprising the active ingredients is disposed on (e.g., [0063]) wild oats, black grass, redroot pigweed, wild buck wheat, field violet, common lamb squarters, common chick weed, or velvet leaf (e.g., Figure 14). 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). Even the smoothest leaves contain protrusions under microscopes if not visible by naked eyes; let alone most leaves are not smooth containing uneven roughness as protrusions or natural hairs on surface generating protrusions, artisans in field can anticipate such varieties of plant leaves and/or plant parts naturally comprise one or more protrusions as recited in instant claims 1, 78 and 82.
Further, such vast leaf varieties and leaf variations would inevitably comprise the surface roughness as in instant claims 11-12, 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, and would be capable of holding the oil-in-water emulsion amount as indicated in instant claims 15-16. The contact angle of water with the surface without oil-in-water emulsion disposed on the surface would depend upon the natural position of the surface, e.g. plant leaf, in horizontal or tilted position, would naturally overlap with the contact angle from 90 to 180o as instantly claimed in claim 13. 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.
Further regarding 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.
Further regarding claim 82, Ehr teaches an article comprising plant leaf surface and 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.
Ehr lists the suspension comprising fungicide epoxiconazole or active ingredient fluroxy-pyrmeptyl useful in agriculture (e.g., [0076]; Figure 3) (corresponding to active agent, pesticide, or composition in instant claims 7-8, 76-77 and 84-85).
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]).
The diameter at 500 nm of droplets in Ehr (e.g., [0022]) anticipates the droplet comprising oil equals to 500 nm in instant claims 81 and 83 and anticipates the claimed ranges.
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 Arguments
Applicant’s remarks/arguments filed on 08/26/2026 have been fully considered.
Claim Interpretation
Applicant points out that Claim Interpretation Option No. 1 in previous office action mailed on 02/27/2026 does not apply to the amended claims filed on 08/26/2026.
In light of applicant’s remarks and claim amendment, the claims are interpreted as drawn to an article comprising oil-in-water emulsion and a portion of plant surface with specific features, presented in detail in this office action above. Arguments related to Claim Interpretation Option No. 1 have been therefore considered persuasive, and the corresponding rejections, e.g., rejections under 35 U.S.C. 112d, are coordinately withdrawn as presented above in this office action.
Rejections under 35 U.S.C. 112(b)
Rejection #A: Applicant asserts that claims 1 and 82 are clear and definite for a skilled person viewing the application as a whole, for the limitation of “the oil forms oil deposits on the surface ...” in claims 1 and 82, because the specification discloses that “’’Certain methods comprise depositing oil onto a surface and/or comprise one or more steps that result in the deposition of oil onto a surface. Fig. 1B shows one non-limiting embodiment of a step in which oil is deposited from an emulsion onto a surface.”
The oil which forms oil deposits on the surface in claims 1 and 82 only could have come from the previously mentioned “an oil” which is comprised in “the oil-in-water emulsion comprises droplets comprising an oil dispersed within a fluid comprising water”. The oil cannot be other oil from “ certain methods depositing oil onto a surface and/or comprise one or more steps that result in deposition of oil onto a surface” as described in specification. It is noted that the features upon which applicant relies (i.e., one or more steps that result in deposition of oil onto a surface) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore the rejection is proper.
Rejections #B and #D: Applicant asserts that the limitation “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”, or the “surface holds greater than or equal to 0.5 ml ... per cm2” is distinguishable from the limitation in Ex parte Brummer, because unlike the Ex Parte Brummer, the feature of the claims is determined “on the basis of the structural elements and their interrelationships”.
As presented in office action, 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) Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989).
Ex Parte Brummer case has very narrow external variables regarding human riding bicycle, because it is limited to human height and weight, while the undefined narrow range variable still renders the claim indefinite. For this instance, due to the vast varieties of leaves with indefinite numbers or protrusions on leaf surface, the internal variables used in calculation such as average height of one or more protrusions would be so variable, and the ranges are certainly unknown, and therefore, a ratio based upon such broad distribution would be impossible to convey a definite meaning. Similarly, the leaf surface features can be as smooth as lotus leaf, as rough or even like pitcher leaf holders, the leaf surface holding how much volume of the emulsion does not have weight or definite meaning when the leaf species is not disclosed, especially, leaf contact angles or natural positions on the ground/plant also play significant role in terms of holding volume on surface. The claim limitation therefore remains to be indefinite.
Rejection #C: Applicant asserts that a person of ordinary skill in the art would understand in claim 1 it requires the surface as a whole holding at least 0.5 mL per cm2 of its area, which is disclosed in specification that is measured by image analysis.
The claim language does not disclose the measurement method, and the features or method in specification cannot be read into claims. 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, as presented in office action. The rejection remains.
Rejection of claim 7: Applicant asserts that claim 7 as the emulsion further comprising the composition, the oil from the oil-in-water emulsion can enhance retention of the composition is clear.
The argument is found persuasive, and the rejection is withdrawn.
Rejections under 35 U.S.C. 101
Applicant asserts that Diverse Daily does not support the Patent Office’s position that milk does not comprise surfactants, because Diverse Daily teaches surfactants can be natural and may be found in natural products, e.g., lecithin in egg yolk shown in Diverse Daily page 3; and office action statement based upon milk “is a natural product free of additional or artificial ingredients, such as what we call today surfactants” does not cover the ground of natural surfactants, which milk contains.
Diverse Daily recites “milk is classic example of an oil-in-water emulsion, where fat droplets are dispersed in water, stabilized by proteins”. Diverse Daily does not teach milk contains surfactants, no matter whether it is additional, artificial, or natural. Because Diverse Daily does not teach adding any ingredients such as surfactants into milk, the milk as a natural product in Diverse Daily explicitly contains fat droplets dispersed in water, stabilized by proteins, therefore, Diverse Daily teaches the natural oil-in-water emulsion, milk, with essentially free of surfactant.
Diverse Daily teaches egg yok can contain surfactants, or the surfactants in oil-in-water emulsions being important, however, these teachings are not relevant to the natural milk Diverse Daily exemplifies. There is no evidence in Diverse Daily showing milk contains surfactant, and it is further free of additional or artificial ingredients, such as what we call today surfactants, as office action indicated. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). That is, Diverse Daily does not teach surfactant in natural milk.
Applicant asserts that the retention behavior recited in the claims, as well as other features of the claims are characteristics caused by the inventor’s formulation and application thereof, not innate properties of any plant surface or any naturally occurring emulsion, as demonstrated in specification that inventor’s emulsion on the hydrophobic host leaf being covered with a uniform layer of liquid.
In response to applicant’s argument that certain features of the invention, it is noted that the features upon which applicant relies (i.e., hydrophobic leaf surface being covered with uniform layer of liquid of the emulsion; the retained volume is 10 times higher in case of emulsions compared to counterpart) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim limitations have been thoroughly examined as presented above, and since the claimed composition occurs in nature, all the properties, phenomena, or retention volume resulted from such composition would necessarily present or be capable of occurring under natural circumstances.
Applicant asserts that Patent Office fails to provide support for many of premises cited in the rejection and fail to demonstrate comparable invention features, e.g., claim 82 recites a bimodal distribution of radii of the oil droplets dispersed within the emulsion, not of macroscopic droplets emerging from an orifice; leaf surface covered with emulsion, not pitcher plant holding volume as cavity; surface having protrusions being disposed with emulsion carrying active agent in the retained composition, not natural phenomenon.
Office action has given full consideration thoroughly to examine all elements of the current invention, and as presented in the office action, all the features of current invention can be found comparable natural counterparts, with no additional significant elements of current invention. For example, the bimodal distribution of radii of oil droplets from natural milking sources when being dispersed oil droplets on leaf surface, as presented in office action, which is totally comparable to the oil droplets bimodal distribution of radii dispersed within the emulsion in instant claim. If applicant believes the claim language expresses that the bimodal distribution of radii of the oil droplets dispersed within the emulsion is not macroscopic droplets emerging from an orifice, rather a microscopic droplets emerging from an orifice, or not from an orifice, then apparently the claim language does not express such meaning; such features, e.g., microscopic droplets emerging or not emerging from an orifice, are not claimed. For pitcher plant leaf surface as cavity, claim language does not exclude any plant leaf, therefore, any shape of leaf having any protrusions are included in the claim language, including pitcher leaf in cavity shape, especially because all plant leaves contain bumps as protrusions. For the active ingredient as agricultural chemical or pesticide, as presented in office action, neem oil is an example that being a natural product functions as active agricultural chemical or pesticide. Therefore, the current invention does not constitute elements more than nature provides.
Applicant asserts that the rejection treats the dependent claims collectively without addressing the specific structural and functional limitations each adds, and the Step 2B analysis indicating no additional elements amounting to significantly more because each ingredient in the composition exists in nature.
As discussed in office action and copied below for reference, the dependent claims are addressed more specifically in addition to the independent claims, claiming the article comprising portion of plant leaf and an oil-in-water emulsion together with active ingredient-containing composition exists in nature.
In instant claims, there are no additional elements that would amount to significantly more than the judicial exception. As discussed above, the instantly claimed article, comprising oil-in-water emulsion on plant surface, since oil-in-water emulsion occurs in nature, so does plant surface with various and vastly abundant features and properties, further defining the naturally occurring properties or leaf surface features or angles of contact, or surface holding liquid volume, do not add additional significantly more elements to the natural existing counterparts. Therefore, the invention exists 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 plant surface contains a composition, an active agent, an agricultural chemical, or pesticide, which appearing to be additional elements, 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.
Rejections under U.S.C. 102
Applicant asserts that Ehr’s oil-in-water emulsion is a transient intermediate that is chemically consumed and does not dispose on a plant surface as an oil-in-water emulsion, because the process makes the oil-in-water emulsion into a mesocapsule suspension; applicant asserts subsequently Ehr cannot disclose the oil forms deposits on the surface that enhance retention of a composition on the surface as instantly claimed in amended claims 1 and 82, or one or more droplets contacting one or more oil deposits in amended claim 78.
Ehr explicitly teaches the oil-in-water emulsion as “eventually make a stable oil-in-water emulsion at the meso scale” (e.g., [0085]) and it is disposed on plant leaves. The most relevant paragraph as presented in office action is copied below for reference. Therefore, the argument about Ehr’s oil-in-water emulsion is transient intermediate that is chemically consumed does not based upon solid foundation in Ehr. Moreover, the process of how the oil-in-water emulsion is made and what materials are used or crosslinked, and the particles in the oil-in-water emulsion being mesocapsule, do not change the fact that Ehr makes a stable oil-in-water emulsion as the prior art explicitly indicates, as shown in detail in Ehr paragraph [0085] (copied below for details with bold emphasis on important terms). Especially, current claims do not disclose how the oil-in-water emulsion is made or what materials are included, and therefore, there is no evidence that Ehr’s oil-in-water emulsion differs from the oil-in-water emulsion in instant claims. Ehr’s emulsion thus necessarily presents the same properties and would be capable of achieving same functions and intended use, because it is an oil-in-water emulsion being sprayed and disposed on plant leaves to achieve pest control properties.
Ehr teaches a mesocapsule suspension comprising oil-in-water emulsion, comprising epoxiconazole (sample 15), fluoroxypyr-meptyl (sample 16B) via preparing oil phase and aqueous phase (corresponding to composition comprising water in instant claims 1, 18, 78 and 82) to eventually make a stable oil-in-water emulsion at the meso scale (e.g., [0085]) (corresponding to oil-in-water emulsion of claims 1, 78 and 82). (corresponding to oil-in-water emulsion of claims 1, 78 and 82). Ehr teaches that the oil-in-water emulsion 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) (corresponding to the surface comprising a portion of plant in instant claims 1, 78 and 82, or plant leaf in instant claim 10).
[0085] The following procedure was utilized with the ingredients and quantities listed in FIG. 3 to make mesocapsule suspensions of epoxiconazole ( sample 15), fluoroxypyrmeptyl (sample 16B) and 328255-92-1 (sample 14). An oil phase and aqueous phase were prepared separately. The active ingredient 328255-92-1 was dissolved in the solvent mixture to make 77% of the oil phase, followed by the addition of 3% of the hydrophobe and 20% of the isocyanate (1st monomer) to provide the complete oil phase. To the aqueous phase were added Proxel™ GXL (Arch UK Biocides, Ltd.; 0.1 % of total formulation) and sodium lauryl sulfate (3% of oil phase). The aqueous phase was combined with the oil phase, and the mixture was magnetically stirred for 2 minutes to make a pre-emulsion, which was subsequently sonicated for 4-5 minutes using a Vibra Cell™ (Sonics & Materials, Inc.) at 750W and 24-25% amplitude in an ice/water bath to make a stable oil-in-water emulsion at the mesa scale. Upon stirring, polyamine (2nd monomer) was added to react with the isocyanate to form the polyurea shell. The formulation samples 14, 15 and 16B referenced in FIG. 6 were tested on plants to determine their pest control properties.
Applicant also asserts that Ehr actual working examples, e.g., samples 15 and 16B, contain surfactant, even though statement in [0063] indicating surfactant be detrimental in some applications; Applicant asserts that Ehr’s hexadecane and silicone oil are only optional ultra-hydrophobe additives to the oil phase, present in an amount not greater than 10 weight percent based on the weight of the dispersed phase, and these are components dissolved within the capsule core, they are not oil deposits on any plant surface;
“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 in the art, including nonpreferred embodiments.” Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As applicant notices as well, Ehr teaches that the oil-in-water emulsion does not have to always contain surfactant. The working examples contain surfactant do not constitute a teaching away from a broader disclosure.
Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). There is no evidence in Ehr that the oil species, e.g., hexadecane and silicone oil, are dissolved within the capsule core; and even if they are enclosed in the core, there is no teaching in Ehr that these oil or other oil in the emulsion would not form oil droplets on plant surface to enhance composition retention. Because Ehr teaches oil-in-water emulsion, the same as instantly claimed; and same oil species added to the oil phase, further taking into consideration that enhancement of retention of agricultural pesticide chemical is the common intention during chemical spray practice, the oil-in-water emulsion comprising same species of oil with active ingredients, e.g., pesticide in the composition, being deposited on plant leaf, has been taught by prior art, and therefore, the deposit of oil droplets on the surface would necessarily present in prior art. Regarding the specific oil weight percent not greater than 10 weight percent based on the weight of the dispersed phase in Ehr’s oil-in-water emulsion, there is no evidence that these are the only oil species, and total oil amount can be higher. Furthermore, current claims do not disclose any information of oil weight amount in the emulsion, and oil weight amount being at 10% would not become oil deposits is not indicated in current claims either; on the contrary, instant specification, e.g., Fig. 5C clearly shows the 10% oil is applied in the oil droplet radius test.
Applicant asserts that the surface holding volume and surface coverage of emulsion calculated based on tracksprayer amount 100 L/Ha in Ehr, which is 500 times less than the 0.5 mL/cm2 minimum recited in instant claim 1 as amended. Ehr is also silent on coverage percentage. The inherency is legally insufficient.
As established above as in office action, Ehr teaches the same article as instantly claimed, comprising the oil-in-water emulsion on plant leaf surface with active chemical in the composition, the article properties or the intended use of the article, or process of making would not differentiate the current invention from the prior art, because the functions, properties, and intended use of such an article is anticipated by prior art. Moreover, even if Ehr uses tracksprayer amount 100 L/Ha, Ehr does not disclose how many plants/Ha, and how many leaves/plant, when the 2-leaf stage of growth (e.g., [0089]) of such plants growing in a sparse field, all the spray may have to be held on total leaf surface as very small area, and the holding volume and spray coverage actually can still result in as high as those instant claims. Again, the plant leaf species and surface in instant claims are not well defined, and prior art teaches the same article as instantly claimed, and consequently, the spray in Ehr would result in the same outcome and features/properties as instantly claimed.
Applicant asserts that Ehr does not disclose a bimodal distribution of radii as recited in instant claim 82, because the emulsion in instant specification is prepared from water and oil alone, while Ehr’s oil emulsion uses other ingredients [0085], therefore, by using same sonication emulsion method, due to different ingredients, different energy inputs, still would result in a different end product; especially Ehr seeks tight size control implying single volume-average diameters.
In instant specification, only Figs. 5A-5D showing DLS measurements of oil droplet size in emulsion according to certain embodiments that directly relate to bimodal distribution of radii of the droplets in the emulsion. Therefore, the droplets comprising the oil have a bimodal distribution of radii are not an indication of the dispersed droplets comprising oil on the plant surface, rather, they are in the emulsion before dispersion. Therefore, Ehr seeks tight size control of single volume-average diameter during spray is not relevant to this feature. Moreover, there is no direct working example of such bimodal radii forming on plant leaf surface in instant specification, because the emulsion generated on Pg. 24 lines 1-5 in instant specification is applied on an artificially prepared surface, while the claim indicates plant surface. Because Ehr has described the same article as in instant claim, comprising plant leaf surface and an oil-in-water emulsion generated by the same sonication method with the same species of oil, even if the producing method were not the same, due to the essential ingredients being identical, the oil droplet features would result in similar fashion, especially if water and oil in oil-in-water emulsion as applicant asserts to be the critical ingredients generating the droplet bimodal radii, there is no doubt the emulsion in prior art would necessarily generate such oil droplet bimodal radii in the emulsion or being disposed on natural plant leaf, if instant claim indicates such. Ehr emulsion contains the same species of oil and water, which was sonicated by same method. There is no evidence in Ehr indicating that the droplets in oil emulsion would be different from the droplets shown in instant claims or instant specification.
In conclusion, the art rejections remain.
Please refer to the entire office action as a complete response to the remarks/arguments.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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