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 Action/Claims
Receipt of Remarks filed on 7/31/2025 is acknowledged. Claims 18-19 and 22-23 are currently pending. Claims 20-21 have been newly cancelled. Accordingly, claims 18-23 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn.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/Maintained Rejections Necessitated by the Amendments filed on 7/31/2025
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 22-23 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 ratio of endothall to PVA is from about 104:1 to about 206:1, while the cited prior art references do not teach this particular ratio 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
Applicant argued that Connick, Masser, Gutsmann and Levy are silent with respect to a ratio of endothall to polyvinyl alcohol. It was argued that the ratio of endothall salt to PVA disclosed in Levy is grossly different to the ratio of endothall salt to PVA in the claimed invention.
In response, as discussed supra, the examiner acknowledges that the cited prior art references do not teach the particular ratio recited in the instant claims, however, 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). The instant specification do not provide evidence of unexpected results with the specifically claimed ratio. Therefore, the amended claims which recite the specific ratio do not overcome the prior art rejection at this time.
Applicant argued that Connick only achieves about 6-7% endothall loading and Levy only achieves up to about 24% endothall loading. It was argued that the instantly claimed beads include endothall from 50% wt/wt to 99% wt/wt.
In response, the examiner argues that Connick teaches that the concentration of the bioactive material (i.e., endothall) can be as high as 50% by weight (col. 4, line 3-6). Thus, even in the absence of polyvinyl alcohol, Connick teaches an amount of endothall (e.g., 50%) in the gel beads which overlaps the claimed amount of endothall. Further, Levy teaches that significantly higher loading level of endothall can be obtained with the inclusion polyvinyl alcohol and therefore, including polyvinyl alcohol into the composition of Connick would allow for an amount of endothall which is greater than 50% and also read on the claimed amount of endothall.
It was also argued that Applicant has had significant commercial success with their product JETTISON, which comprises the instantly claimed beads (Exhibit A). Applicant argued that commercial success constitutes secondary indicia of non-obviousness.
In response, the examiner respectfully draws applicant’s attention to MPEP 716.01. “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.“ In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); see also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (2006) (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”). In evaluating whether the requisite nexus exists, the identified objective indicia must be directed to what was not known in the prior art, including patents and publications, which may well be the novel combination or arrangement of known individual elements. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007); Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d 1406, 1414-15 (Fed. Cir. 2016). MPEP 716.01. As discussed supra, all of the claimed elements were known in the prior art and the inclusion of polyvinyl alcohol providing high loading of endothall was also known as taught in Levy. If commercial success is due to an element in the prior art, then no nexus exists. Further, 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) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. MPEP 716.01(c). While applicant make a statement of commercial success, it is not considered as an evidence and must be supported with affidavit or declaration. Therefore, applicant’s argument that commercial success constitutes secondary indicia of non-obviousness is not found persuasive at this time.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.S/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1617