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 .
Claim Rejections - 35 USC § 103
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 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 1, 3-4, 6-7, 11-13, 15-17, 20, 23-24, 26, 30-32, 34, and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huggett et al. (US20130149382) as evidenced by EPA (https://www3.epa.gov/pesticides/chem_search/reg_actions/reregistration/fs_PC-080402_1-Sep-93.pdf, 1993), and Ehrhardt et al. (CA02359491).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 3-4, 6-7, 11-13, 20, 24, 30-31, and 36, Huggett teaches methods of spraying aqueous liquid compositions comprising electrostatically charged particles which comprise pesticides and adhere to plant surfaces specifically leaves, stems and flowers which are aerial parts of the plant as is instantly claimed, and wherein the particles are comprised of a wax/made substantially of wax (e.g. solid wax particles) which readily accept an electrical charge, specifically wherein the waxes are selected from natural and synthetic waxes, specifically carnauba wax, beeswax, candelilla wax, rice bran wax, ouricury wax, etc. and which have melting points which are ≥40°C (and greater than ≥50°C) as is instantly claimed because they are the same waxes which are instantly claimed, specifically carnauba wax, and wherein these waxes are used to carry pesticides, specifically pesticides which are known in the art to function both as arthropod insecticides and fungicides (e.g. thymol/thyme oil as evidenced by EPA) and wherein the pesticide is incorporated into the wax particle/encapsulated into the wax particle (claim 35) and/or on the surface of the particle, in amounts of around 1%-2% by weight, which reads on the claimed pesticide being present at up to 50% w/w of the carrier particles, e.g. reads on the claimed effective amounts (See Huggett: [0008]; [0010-0015]; [0016, plant surfaces: leaves, stems, flowers]; [0019, tea tree oil, thyme oil, etc.]; [0028]; [0029]; Claims 39-48; [0056-0084]; [0085-0092]; [0088]; See EPA: (use profile); see Experiment 2).
Further regarding claim 1, Huggett teaches wherein their particles are electret particles which can adhere to the surface of plants, via internal electrostatic charges ([0008]; [0015]; [0057]). Additionally, the carrier particles of Huggett are the same carrier particles instantly claimed, made of the same waxes and having the same size and as such these particles will adhere to plant is in the same manner as is instantly claimed when applied to plants and allowed to dry there as this is a property of these particles having the claimed sizes and made of the claimed waxes as is taught by Huggett, especially since Huggett teaches applying their wax particles containing pesticides to plants, and as such is allowing them adhere electrostatically over the claimed drying off period as the formulations containing the wax particles are allowed to dry on the plant surface ([0019]; [0088-0089]; [0224]).
Regarding the limitation that the pesticide is distributed throughout a matrix of the carrier particles, Huggett teaches wherein the active agent can be combined with/fused with the particles to form a solid matrix and or added to melted wax, i.e. a matrix formulation with the active throughout ([0030]; [0094]).
Regarding claims 4, 26, 32, 34, Huggett expressly teaches that their particles generally have a particle size in the range of 10-40 microns as mean volume diameter which reads on the claimed mass median diameter of up to 300 microns, and the optionally claimed MMD of 1 micron to 200 microns and the claimed median diameters of up to 300 microns ([0029], Claims 39-48). Huggett teaches methods of applying to aerial parts of plants compositions comprising particles comprising natural waxes, etc. having a melting point of ≥50°C, and/or wherein the particles are solid wax particles made throughout of wax or mixtures of waxes, pesticide, and optional components at low levels (See [0008]; [0010-0015]; [0016, plant surfaces: leaves, stems, flowers]; [0019, tea tree oil, thyme oil, etc.]; [0028]; [0029]; Claims 39-48; [0056-0084]; [0085-0092]; [0088]). Huggett teaches forming their particles comprise carnauba wax ([0015, waxes having melting points ≥50°C, preferably ≥60°C, e.g. carnauba wax]; [0029]; Claims 39, 47, 56-57, 62, 64-66)).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 3-4, 6-7, 11-13, 15-17, 20, 23-24, 26, 30-32, and 34, 36, Huggett does not specifically teach wherein the pesticide is a systemic fungicide which does not have activity against arthropods, or wherein pesticidally effective amounts of the systemic pesticides are delivered via aerial application as is now instantly claimed and does not specifically teach concentrations of the active agents in the composition except in the examples, e.g. the instantly claimed up to 50% w/w of the particles. However, these deficiencies in Huggett are addressed by Ehrhardt.
Ehrhardt teaches that it was known to form liquid formulations of wax particles for applications to plants wherein the wax particles can comprise the same waxes as are instantly claimed, e.g. carnauba wax, candella wax (which reads on the claimed candelilla wax), sugar cane wax, montan wax, etc. (See entire document; abstract, pg. 9) and wherein these wax particles can comprise the same systemic fungicides that are instantly claimed, e.g. kresoxim-methyl, metomiostrobin, azoxystrobin (all systemic strobilurins) (pg. 4, ln. 34-pg. 6, ln. 3), and have particle sizes of less than 100 microns (See claim 7, pg. 9, ln. 15-25). Ehrhardt teaches wherein these compositions having the actives in the wax particles allow for release of the active agents and increased effectiveness and as such are delivering/comprise effective amounts of the claimed systemic pesticides (pg. 1, ln. 34-pg. 2, ln. 12; Abstract), the mixtures comprise generally contain 0.1-95% of wax and 5 to 99% of the plant treatment medium, which includes the active agents/kresoxim-methyl and reads on the claimed pesticidally effective amount (see entire document; pg. 2, ln. 21-28). Ehrhardt teaches wherein the particles are solid wax particles with the active agent contained therein (See entire document; abstract; claims; pg. 9, ln 15-25; pg. pg. 4, ln. 34-pg. 6, ln. 3) and these wax particle mixtures are applied to plants in a field (which obviously includes leaves, stem), such as wheat to control fungal pathogens (See example 10; claim 11) and wherein the wax particles and actives can be applied as an aqueous formulation (Example 12/dispersion 2/example 14; examples; sections cited herein).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to substitute the effective amounts of systemic fungicides of Ehrhardt into the matrix wax particles of Huggett as the active agents/pesticides in order to develop the instantly claimed method because Ehrhardt teaches liquid formulations comprising matrix wax particles comprising/made up of the same waxes, e.g. carnauba wax and having sizes of less than 100 microns can contain/carry the instantly claimed systemic fungicides, e.g. kresoxim-methyl and allow for effective release of the active agent when applied to plants, e.g. wheat plants in a field (and as such reads on treating/applying to aerial parts of plants as it is applied to plants at growth stage 31-32 in a field in example 10/12). Thus, it would have been obvious for one of ordinary skill in the art to substitute the systemic fungicides of Ehrhardt into the formulation of Huggett in order to develop the instantly claimed method because Ehrhardt teaches that systemic fungicides can be delivered to plants via the claimed liquid formulations comprising the wax particles made via melting and combining the wax with the active agents (which are the claimed matrix carrier particles) of the same size and made with the same waxes and which contain the active agents, e.g. kresoxim-methyl and that these formulations allow for extended/slow delivery and are more rainfast, and Huggett teaches that liquid formulations of these same wax particles can be used to adhere/provide active agents, which are not particularly limited, to the aerial parts of plants (flowers, leaves, and stems) and it would have been obvious to form the claimed combination because it allows for the systemic fungicide to be delivered in an extended/delivery system which is rainfast. Further, it is known that, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
It also would have been obvious to one of ordinary skill in the art to optimize the amounts of pesticide present in the wax particles because it was known to optimize the amounts of pesticide in a formulation in order to form the most effective formulation for delivering a selected active agent and it was known in the art to incorporate the actives into/with the wax particles in amounts which overlap those and/or fall within the instantly claimed range, which are therefore effective amounts, as is taught by Huggett and Ehrhardt. “[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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the limitations, “allowing the plant to take up the pesticidally effective amount of the non-arthropod systemically acting pesticide through the cuticle of the plant” and “wherein the non-arthropod systemically acting pesticide is as effective as a conventional formulation”, this limitation is result effective of delivering the claimed pesticides comprising the claimed/disclosed amounts of active agents via wax particles to plant foliage as was known in the art and rendered obvious by the combined references as is discussed above. Further, as the only active step of the instantly claimed method is applying the claimed liquid composition to one or more aerial parts of the plant, because as discussed above the allowing step is merely what naturally occurs upon the application of the claimed formulation to the aerial parts of the plant. Thus, because Huggett and Ehrhardt teach applying to plants growing in a field, which would obviously include application to the aerial parts of the plants, the claimed liquid formulations of wax particles which contain the claimed non-arthropod systemically acting pesticides to a plant, wherein the wax particles comprise the same waxes as are instantly claimed and as such are capable of carrying an electrostatic surface charge and have the claimed melting points of ≥40°C and ≥50°C that are instantly claimed (i.e. carnauba wax, candella wax (which reads on the claimed candelilla wax), sugar cane wax, montan wax, etc.) (See entire document; abstract, pg. 9) and wherein these wax particles contain the same non-arthropod systemically acting pesticides, specifically systemic fungicides that are instantly claimed, e.g. kresoxim-methyl, in amounts which are pesticidally effective as Ehrhardt teaches that the effectiveness of the active substances can be increased (pg. 4, ln. 34-pg. 6, ln. 3; abstract), and have the claimed particle sizes and diameters (See claim 7, pg. 9, ln. 15-25). Ehrhardt teaches wherein these compositions having the actives in the wax particles allow for extended/slow release of the active agents and increased effectiveness and as such the composition are as effective as conventional formulations and are uptaken through the cuticle of the plant because these are result effective properties of the claimed composition which is obviously taught by the combination of Huggett and Ehrhardt and therefore would exhibit the same properties that are instantly claimed.
Regarding the limitation electrostatically adhering the carrier particles to a cuticle of the plant during a drying off period as claimed, the methods as disclosed by Huggett would be achieving this adherence when being sprayed on plants as is taught by both Huggett and Ehrhardt and discussed above because electrostatic adherence was known to occur with the claimed wax particles which are taught by Huggett and Ehrhardt because Huggett teaches that their particles have this property.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments/Remarks
Applicant’s amendments to the claims and cancelling of claim 35 have overcome the previous claim objections and 112 rejections which are hereby withdrawn. Applicant’s amendments and declaration have prompted the examiner to withdraw the second 103 rejection of Ehrhardt in view of Huggett. The examiner has also removed the repugnant portion of the first rejection which states, “and therefore the particles of Ehrhardt which are made of the
same waxes would also have this property after being sprayed onto the plants as is discussed
above”. As this statement does not change the rejection in any way and was only an incorrect conclusory statement having nothing to do with the actual rejection and the cited portions of Huggett and Ehrhardt used in the rejection. This statement is being removed in light of the scientific opinions/findings discussed by Dr. Rozek in the declaration submitted on 06/29/26 and upon further consideration by the examiner.
Applicants first argue in their response that they have included the declaration of Dr. Annett Rozek which establishes that the particles of Ehrhardt would not be electrostatically charged as is now required of the instant claims. The contents of the declaration by Dr. Rozek will be further addressed below in the section dedicated to analysis of the declaration. Applicants then argue that the combination of Ehrhardt and Huggett is not appropriate as the particles of Ehrhardt would not be electrostatic and would change the function of Huggett’s particles when used as a secondary reference to Huggett and further that Huggett cannot be used to modify Ehrhardt because that would result in particles which are not electrostatic. This argument with respect to the rejection using Huggett as a primary reference is not persuasive because Ehrhardt is only used to teach the active agent and that it was known to deliver the claimed active agents from wax particles comprising the same waxes which are sprayed onto the aerial parts of plants and as such it would be obvious to use the claimed actives which are taught by Ehrhardt as the actives in Huggett in order to develop the claimed particles especially since as discussed above Huggett teaches that their particles are electret particles and as such would have improved adherence to the aerial parts of plants as is evidenced by Howse (US6221375) which teaches that it was known to use electrostatic particles to improve delivery of agricultural actives/adherence of particles for delivery to the surfaces to which they are applied (Col. 4, ln. 5-39; Col. 3, ln. 6-10). Thus, such particles would have improved effect for delivery of actives to the plants/aerial parts of plants to which they are sprayed as is taught by Huggett in view of Ehrhardt and their combination remains obvious for the reasons discussed above which are incorporated herein.
Declaration under 1.132
Dr. Annett Rozek provided a declaration under 1.132, filed 06/29/26. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents the conclusions of Dr. Rozek, who is the CSO of Catalera which is a subsidiary of the assignee/applicant of the instant application. In the most relevant part the declaration discusses that Ehrhardt’s process of melting the waxes and making their wax particles would not inherently/necessarily lead to electrostatically charged particles, and because the particles of Ehrhardt would not inherently/necessarily have an electrostatic charge they would not read on the instant claims which require electret particles and because of this Dr. Rozek is of the opinion that the combination of Huggett and Ehrhardt is not proper as they argue that the particles of Ehrhardt when substituted into the method of Huggett would not lead to electrostatically charged particles.
A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the
Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than
merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
Cir. 2007)). The relevant criterion here is 5)
whether the prima facie case is sufficiently strong that allegedly superior results are insufficient
to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed.
The examiner has carefully reviewed the Declaration, including the opinion of Dr. Rozek as stated in the Declaration.
In the most relevant part the declaration discusses that Ehrhardt’s process of melting the waxes and making their wax particles would not inherently/necessarily lead to electrostatically charged particles, and because the particles of Ehrhardt would not inherently/necessarily have an electrostatic charge they would not read on the instant claims which require electret particles and because of this Dr. Rozek is of the opinion that the combination of Huggett and Ehrhardt is not proper as they argue that the particles of Ehrhardt when substituted into the method of Huggett would not lead to electrostatically charged particles. The examiner respectfully points out that nothing in the instant 103 rejection of Huggett in view of Ehrhardt discusses replacing the particles of Huggett with the particles of Ehrhardt. The rejection is to replace the active agent in the particles of Huggett with the instantly claimed active agents which are taught by Ehrhardt. Specifically as is expressly discussed above, the obviousness is because it would have been obvious for one of ordinary skill in the art to substitute the effective amounts of systemic fungicides of Ehrhardt into the matrix wax particles of Huggett as the active agents/pesticides in order to develop the instantly claimed method because Ehrhardt teaches liquid formulations comprising matrix wax particles comprising/made up of the same waxes, e.g. carnauba wax and having sizes of less than 100 microns can contain/carry the instantly claimed systemic fungicides, e.g. kresoxim-methyl and allow for effective release of the active agent when applied to plants, e.g. wheat plants in a field (and as such reads on treating/applying to aerial parts of plants as it is applied to plants at growth stage 31-32 in a field in example 10/12). Thus, it would have been obvious for one of ordinary skill in the art to substitute the systemic fungicides of Ehrhardt into the formulation of Huggett in order to develop the instantly claimed method because Ehrhardt teaches that systemic fungicides can be delivered to plants via the claimed liquid formulations comprising the wax particles made of the same waxes that are instantly claimed and taught by Huggett, and Huggett teaches that liquid formulations of these same wax particles can be used to adhere/provide active agents, which are not particularly limited, to the aerial parts of plants (flowers, leaves, and stems) and it would have been obvious to form the claimed combination because it allows for the systemic fungicide to be delivered in an extended/delivery system which is rainfast.
The standard for an obviousness rejection is a reasonable expectation of success. In the instant case, it was known to deliver the claimed active agents via wax particles of the same size comprising the same waxes as is taught by Ehrhardt. Thus, it would be obvious to place these actives in the particles of Huggett in order to form the claimed method in order to more effectively deliver these actives to the aerial parts of plants as discussed above because the electret particles of Huggett would better adhere to the leaves/aerial parts of plants for delivery as is evidenced by Howse as discussed above and the particles as taught by Huggett when including the actives of Ehrhardt would provide rainfast delivery of the claimed actives to the aerial parts of plants to which they are applied as is discussed above. Thus, the examiner is not persuaded by Dr. Rozek’s scientific opinion/evidence at this time for the reasons which are already discussed above and are hereby maintained.
Thus for the above reasons, the examiner maintains that it would have been obvious to one of ordinary skill in the art at the time of the instant filing to have developed the claimed method when looking to the prior art references as combined at this time.
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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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