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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/1/2026 has been entered.
Status of Action/Claims
Receipt of Remarks filed on 4/1/2026 is acknowledged. Claims 18-19 and 22-27 are currently pending and are presented for examination on the merits for patentability.
Receipt of Declaration by Stephen Skorczynski, filed on 4/1/2026, is acknowledged.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18-19 and 22-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 18 recites the ratio of endothall to PVA is from about 104:1 to about 206:1. Newly added claims 24-27 recite specific concentrations of endothall and PVA. The instant specification do not provide literal support for this ratio and the concentrations recited in the new claims. While the claims can recite these ratios and concentrations without the specification providing literal support, however, when the applicant argue these ratios and concentrations are critical, then these limitations represent new matter. Applicant in the remarks argue that the concentrations of PVA and endothall and the ratios thereof are critical. By arguing criticality, applicant are saying that these specific concentrations and ratios are distinct from the broader concentration and ratio. Thus, without literal support, the ratio of endothall to PVA is from about 104:1 to about 206:1 (claim 18) and the specific concentrations of endothall and PVA in claims 24-27 represent new matter.
Modified Rejections Necessitated by the Amendments filed on 4/1/2026
Claim Rejections - 35 USC § 103
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 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 18-19 and 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Connick, Jr. (US 4,400,391; Aug. 23, 1983)(Previously Cited) in view of Masser (Southern Regional Aquaculture Center, Publication No. 361, February 2001), Gutsmann (US 2012/0017491 A1) and Levy (US 6,001,382; Dec. 14, 1999).
Connick teaches a controlled release of bioactive materials using alginate gel beads, wherein the bioactive material comprise of endothall (Title; Col. 3, line 58-60).
Connick teaches gel bead composition, wherein a solution of 99 grams of Aquathol, a commercial herbicide formulation containing 40.3% endothall dipotassium salt, dissolved in water was added sodium alginate while stirring. The mixture was added dropwise into CaCl2 solution which resulted in the formation of gel beads (Example 12, Col. 8, line 45-58). Connick teaches the gel beads comprising endothall as a bioactive, calcium as the alkaline earth metal and the beads having a diameter of 3 mm (see: Table III; Example 12). Connick teaches the resulting beads stored in a container which reads on a kit comprising the alginate bead (see: Example 7; Example 11, Example 12).
With regards to the amount of endothall in the beads, Connick teaches that the concentration of the bioactive material can be as high as 50% by weight (col. 4, line 3-6).
Connick does not teach the composition further comprises a polymer and particularly polyvinyl alcohol as recited in the instant claims. However, this deficiency is cured by Levy.
Levy teaches controlled release compositions of matter comprising complexes for treating population of one or more aquatic organisms (Abstract).
Levy teaches an aqueous formulation of the aquatic herbicide Aquathol (endothall) admixed with a joint-function polyvinyl alcohol. Results of the admixing procedure indicated that high levels of Aquathol can be agglomerated into solid polyvinyl alcohol base compositions for fast release application into an aquatic habitat for control of nuisance vegetation. It teaches that significantly higher loading level can be obtained with the polyvinyl alcohol base protocol and therefore lesser amount per acre would be required to treat an acre of aquatic weeds when compared to Aquathol without polyvinyl alcohol base.
While Connick teaches endothall dipotassium salt, Connick does not teach a mono (N,N-dimethylalkylamine) salt of endothall. However, Masser cures this deficiency.
Masser teaches two salts of endothall are used for aquatic weed control which include a dipotassium salt of endothall and a mono (N,N-dimethylalkylamine) salt of endothall. Masser teaches the mono (N,N-dimethylalkylamine) salt of endothall controls algae and many submerged weeds. (section: Endothall).
Connick does not expressly teach the bead comprises an internal zone (comprising endothall) and external zone (comprising alkaline earth metal alginate shell), wherein the internal zone is a solution entrapped in the external zone and the external zone, upon hydration, releases endothall. However, Gutsmann cures this deficiency.
Gutsmann teaches gel bait compositions wherein spherical capsules are made by dissolving sodium alginate and an active ingredient (insecticide/phagostimulant) in water, followed by mixing to obtain an aqueous solution. The solution is dripped into cation containing solution (CaCl2) to obtain spherical capsules by crosslinking sodium alginate with calcium ions. (para 0052; 0059; 0063; 0068). The constituents which present in the aqueous sodium alginate solution (i.e., active agent) are enclosed inside the alginate matrix (para 0059).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Connick, Masser, Gutsmann and Levy and include polyvinyl alcohol into the mixture of Connick which comprises endothall before adding dropwise into CaCl2 solution to form gel beads. One would be motivated to do because Levy teaches that by admixing polyvinyl alcohol with the endothall, significantly higher loading level can be obtained and lesser amount of endothall/polyvinyl alcohol per acre would be required to treat an acre of aquatic weeds when compared to endothall without polyvinyl alcohol. Since Connick’s teachings are also directed towards controlling aquatic weeds (See: Col. 5, line 28-37; Examples), one would have been highly motivated to incorporate the teachings of Levy and include polyvinyl alcohol along with endothall.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Connick, Masser, Levy and Gutsmann and particularly include a mono (N,N-dimethylalkylamine) salt of endothall as taught by Masser. As discussed supra, Connick teaches endothall dipotassium salt as the bioactive. Connick also teaches the composition is used to kill submerged aquatic weeds (col. 5, line 29-36). Masser teaches two salts of endothall are used for aquatic weed control which include a dipotassium salt of endothall and a mono (N,N-dimethylalkylamine) salt of endothall. Masser teaches the mono (N,N-dimethylalkylamine) salt of endothall controls algae and many submerged weeds. Therefore, it would have been obvious to one skilled in the art to use a mono (N,N-dimethylalkylamine) salt of endothall in place of the dipotassium salt of endothall to control submerged aquatic weeds.
With regards to the claimed limitation wherein the bead comprises an internal zone (comprising endothall) and external zone (comprising alkaline earth metal alginate shell), wherein the internal zone is a solution entrapped in the external zone and the external zone, upon hydration, releases endothall, the combination of cited references teach all the elements (e.g., endothall and calcium as alkaline earth metal alginate) comprised in the bead composition. Furthermore, the instant specification states the process of preparing the bead composition involves mixing the endothall and sodium alginate and dispensing it dropwise into the mixture comprising calcium chloride to form herbicidal beads entrapping the endothall in the internal zone. (see: para 0013-0015). Connick also teaches the same process of preparation of beads as stated above and therefore the bead composition taught by the above references would necessarily comprise of the limitations wherein the bead comprises an internal zone (comprising endothall) and external zone (comprising alkaline earth metal alginate shell), wherein the internal zone is a solution entrapped in the external zone and the external zone, upon hydration, releases endothall. Moreover, Gutsmann also teaches the same method of preparing gel capsules as disclosed by Connick and instant specification. As discussed supra, Gutsmann teaches gel bait compositions wherein spherical capsules are made by dissolving sodium alginate and an active ingredient (insecticide/phagostimulant) in water, followed by mixing to obtain an aqueous solution. The solution is dripped into cation containing solution (CaCl2) to obtain spherical capsules by crosslinking sodium alginate with calcium ions. (para 0052; 0059; 0063; 0068). The constituents which present in the aqueous sodium alginate solution (i.e., active agent) are enclosed inside the alginate matrix (para 0059). In view of the teachings of Gutsmann, it would have been obvious to one skilled in the art to recognize that the method of crosslinking sodium alginate/active ingredient solution with calcium chloride would yield capsule/beads in which active ingredient (e.g., endothall) is enclosed inside the alginate matrix (external zone).
With regards to the amount of endothall in the beads, as discussed supra, Connick teaches that the concentration of the bioactive material can be as high as 50% by weight, overlapping 50-99% of endothall recited in the instant claims. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art to comprise an amount of endothall based on the desired herbicidal activity required (e.g., amount of area and concentration of aquatic weed needed to be controlled).
Regarding the concentrations of endothall and PVA recited in claims 24-25, 27, while Connick teaches that the concentration of the bioactive material can be as high as 50% by weight, this falls short of the 60%-80% w/w concentration recited in claims 24-25 and 27. However, Connick teaches endothall as a bioactive herbicide used to control aquatic weed and absence any evidence of criticality or unexpected effect, it would have been obvious to one skilled in the art to increase the concentration of the herbicide depending on the severity of the aquatic weed that needs to be controlled. Further, Connick does not teach away from using higher amounts of endothall and therefore, one skilled in the art would not have been dissuaded from using higher concentration of the endothall herbicide.
Regarding the ratio of endothall to PVA is from about 104:1 to about 206:1 and the specific concentrations of PVA recited in claims 26-27, while the cited prior art references do not teach this particular ratio and concentration of PVA recited in the instant claims, Levy teaches that high levels of Aquathol can be agglomerated into solid polyvinyl alcohol base compositions for fast release application into an aquatic habitat for control of nuisance vegetation. It teaches that significantly higher loading level can be obtained with the polyvinyl alcohol base protocol and therefore lesser amount per acre would be required to treat an acre of aquatic weeds when compared to Aquathol without polyvinyl alcohol base. Therefore, absence any evidence of criticality of the specifically claimed ratio, it would have been obvious to one skilled to manipulate the amount and ratio of endothall or polyvinyl alcohol and determine an optimal amount/ratio that would yield the desired and/or highest loading of the endothall because Levy teaches that significantly higher loading level of endothall can be obtained with the polyvinyl alcohol base protocol and therefore lesser amount per acre would be required to treat an acre of aquatic weeds when compared to endothall without polyvinyl alcohol base. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments/Declaration
Applicant in the remarks and declaration argued that while Connick discloses concentration of the bioactive can be as high as 50% by weight, one skilled in the art would not expect that it would be possible to prepare alginate gel bead comprising 50% of endothall because Connick’s dilution process reduces the amount of endothall to an amount significantly lower than 50%.
In response, Connick teaches the concentration of the bioactive material formulated in the alginate/bioactive material/water mixture can be as high as 50% (col. 4, line 1-5). Thus, even diluted with water, Connick teaches the concentration of the bioactive material can be 50%. Further, applicant have not shown evidence of criticality/unexpected effect of the claim concentration. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant argued Levy’s higher loading level is a result of the PVA being used as a carrier produced using mutual insolubility of PVA and the dipotassium salt of endothall in acetone. Levy’s use of PVA as a carrier based on mutual insolubility provides no reason or motivation to add PVA to an alginate gel bead. Applicant argue that one skilled in the art would not combine Connick’s gelling procedure with Levy’s mutual insolubility procedure and it is unlikely that a functional alginate gel bead would be produced by combining these procedures. It was argued that the dipotassium salt is insoluble in acetone whereas the claimed mono (n,n-dimethylalkylamine) salt of endothall is soluble in acetone and therefore ineffective in combination with Levy’s procedure because Levy relies on the mutual insolubility of the dipotassium salt of endothall and acetone to entrap the endothall.
In response, the 103 rejection above is over Connick in view of Levy, wherein Levy is utilized as a secondary reference to render obvious the inclusion of PVA into the alginate beads of Connick. As discussed supra, Connick teaches gel bead composition, wherein endothall dissolved in water was added sodium alginate while stirring. The mixture was added dropwise into CaCl2 solution which resulted in the formation of gel beads (Example 12, Col. 8, line 45-58). Levy teaches PVA is soluble in water insoluble in acetone (see: example 4 and 9). Thus, one of ordinary skill in the art would expect that adding PVA along with endothall would be dissolved in water and when the mixture is added into CaCl2 solution, the resulting gel bead would incorporate PVA and endothall inside the gel bead. Further, as discussed supra, Levy teaches that by admixing polyvinyl alcohol with the Aquathol (endothall dipotassium), significantly higher loading level can be obtained and lesser amount of Aquathol/polyvinyl alcohol per acre would be required to treat an acre of aquatic weeds when compared to Aquathol without polyvinyl alcohol. Levy does not require that the solvent used must be acetone and it would have been obvious to one skilled in the art to manipulate the solvent used for precipitation in Levy and utilize a solvent that is immiscible with endothall alkyl amine salt so that polyvinyl alcohol is admixed with the endothall for the purpose of obtaining higher loading level.
Applicant argued Levy does not teach using PVA in the claimed endothall:PVA ratio, which are considerably higher (indicating a small amount of PVA relative to endothall) relative to the composition disclosed in Levy (which contain a large amount of PVA relative to endothall).
In response, while Levy in the examples does disclose using higher amounts of PVA relative to endothall, Levy does not require or teach that PVA must be higher than or used in larger amounts relative to endothall. As discussed supra, Levy teaches that high levels of Aquathol can be agglomerated into solid polyvinyl alcohol base compositions for fast release application into an aquatic habitat for control of nuisance vegetation. It teaches that significantly higher loading level can be obtained with the polyvinyl alcohol base protocol and therefore lesser amount per acre would be required to treat an acre of aquatic weeds when compared to Aquathol without polyvinyl alcohol base. Therefore, absence any evidence of criticality of the specifically claimed ratio, it would have been obvious to one skilled to manipulate the amount and ratio of endothall or polyvinyl alcohol and determine an optimal amount/ratio that would yield the desired and/or highest loading of the endothall because Levy teaches that significantly higher loading level of endothall can be obtained with the polyvinyl alcohol base protocol and therefore lesser amount per acre would be required to treat an acre of aquatic weeds when compared to endothall without polyvinyl alcohol base. Applicant have not provided any evidence of the criticality of the claimed ratio of endothall to PVA. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant also argued that alginate beads comprising PVA release endothall at a higher rate than those that do not contain PVA. It was argued that effectiveness of PVA in increasing the release rate of endothall is only likely to be effective in alginate gel beads when there is a relatively small amount of PVA present relative to endothall.
In response, as discussed in the 103 rejection above, the Levy reference discloses that the admixing of endothall with polyvinyl alcohol indicated that high levels of endothall can be agglomerated into solid polyvinyl alcohol base compositions for fast release application into an aquatic habitat for control of nuisance vegetation. Thus, the faster release of endothall in the presence of polyvinyl alcohol argued by the applicant was known in the art before the effective filing date of the claimed invention. Thus, this does not appear to be an unexpected effect. Further, while applicant argue that effectiveness of PVA in increasing the release rate of endothall is only likely to be effective in alginate gel beads when there is a relatively small amount of PVA present relative to endothall, applicant have not provided any evidence (data/results) which shows this to be the case. “The arguments of counsel cannot take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 145 USPQ 716, 718 (CCPA 1965), In re Huang, 40 USPQ 2d 1685 (Fed. Cir. 1996), In re De Blauwe et al., 222 USPQ 191, (Fed. Cir. 1984). There is no comparative data provided by the applicant which shows that having PVA to endothall ratio outside of the claimed ratio does not produce the alginate beads or does not provide the increase in release rate of endothall. Thus, absence any evidence, applicant’s argument made regarding the amount of PVA being critical are not persuasive at this time.
Applicant argued that the claimed mono(n,n-dimethylalkyl amine) salt and dipotassium salt are different compounds having numerous differences and one can predict the same outcome by replacing dipotassium salt with mono(n,n-dimethylalkyl amine) salt.
In response, mono(n,n-dimethylalkyl amine) salt and dipotassium salt are both endothalls having the same core structure and used for controlling aquatic weed as taught by Masser. They are different salts of endothall and while applicant make the argument of these different salts having different viscosities, pH, etc., no evidence is provided that mono(n,n-dimethylalkyl amine) salt would not produce the same effect as dipotassium endothall. Moreover, applicant’s specification also disclose the endothall can include either salt and there is no evidence in the specification that the dipotassium salt of endothall does not result in a alginate gel bead or does not provide the same control of aquatic weed.
Conclusion
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/ALI S SAEED/Examiner, Art Unit 1616
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