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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/25/2025 has been entered.
Election/Restrictions
Newly submitted claims 21, 23-32, 34-36, 38, 40, 41-44 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the prior independent claim 21 required at least one co-surfactant being a low molecular weight alcohol from methanol to butanol, which has now been eliminated from claim 21. Accordingly, the claimed method now embraces a broader group of compositions, not requiring the prior claimed range of co-surfactant low MW alcohols. This new group of methods is independent from and distinct from the original claimed methods. New claim 41 recites a required binary mixture of surfactants, not previously required, distinct from the original claim 21 combination. New claim 42 recites specific percentages of 4 components, but the claim still removes the co-surfactant low MW alcohol, previously required by claim 21.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 41-42 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicants' arguments, filed 12/17/2024, have been fully considered but they are not deemed to be persuasive. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 (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 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.
Claim(s) 21, 23-27, 29, 31, 32, 34, 35, 36, 40, and 43-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (WO 2008/141252 A1, Published 11/20/2008; cited in a prior Office action); in view of Lameri et al. (WO 03/086073 A1, Published 10/23/2003; cited in a prior Office action); Long et al. (Chinese Patent 1309303 C, Published 40/11/2007; cited in a prior Office action); and Bristow (French Patent 3001105 A1, Published 07/25/2014; cited in a prior Office action).
Hsu et al. teach an herbicidal composition comprising cinnamon oil as an active herbicide, clove oil as an active herbicide, milk casein as a surfactant, whole egg powder as an active herbicide, water, and konjac glucomannan (page 9, lines 17-22 and page 10, line 1-2). A stable oil-in-water emulsion is formed (page 6, lines 8-11). Organic herbicides are typically represented by combinations of several plant oils including clove oil, citronella oil and cinnamon oil (page 1, lines 16-18). The composition is applied to the leaves of a plant (page 5, line 19). The composition is a concentrate (prior art claim 1).
Hsu et al. lacks a teaching wherein the composition also comprises an oily substance such as vegetable oil that isn’t the essential oil. Hsu et al. does not teach a composition comprising citric acid and/or methanol.
Lameri et al. teach use of vegetable oil such as soybean oil as adjuvant for substances having herbicidal activity (abstract). The composition is a stable oil-in-water emulsion (prior art claims 12 and 13).
Long et al. teach an herbicidal composition comprising methanol and citric acid (prior art claims 1 and 3).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to add soybean oil to the emulsion of Hsu et al. and have a reasonable expectation of success. One would have been motivated to do so in order to provide an adjuvant to the herbicidal composition.
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to combine the compositions of Hsu et al. and Long et al. and have a reasonable expectation of success. One would have been motivated to do so since Hsu et al. and Long et al. are both directed to herbicidal compositions. “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).
Bristow teaches the present invention comprises an active ingredient having herbicidal activity (paragraph 014). Aqueous and organic phases are mixed such that droplet sizes of 1-100 microns are produced based on desire and intended use (paragraph 041).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to adjust the droplet of the emulsion to the instant claimed droplet size and have a reasonable expectation of success. One would have been motivated to do so through the particular desire and intended use and also the overlapping range taught by Bristow. For the forgoing reasons the instant claims are rendered obvious by the teachings of the prior art. The range taught by Bristow encompasses amounts including 1-5 µm, (5 µm or inferior) and overlaps with the range of claim 36, and encompasses the sizes of claim 43 and 44, rendering each size or size range prima facie obvious (MPEP 2144.05 (I): In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
With regard to the limitations of claim 21, directed to “obtaining phytotoxic activity including at least one of: (a) inhibiting or preventing seed germination, (b) inhibiting or preventing resumption of underground or aerial meristem and bud development, or (c) inhibiting or preventing at least one of: (1) development and growth of roots, (2) development and growth of hypocotyls, (3) development and growth of epicotyls, (4) development and growth of plantlets, or (5) development and growth of aerial parts of the plant” and “further including penetrating through epicuticular waxes of a plant leaf with the composition”, are inherent to the composition since the instant herbicide and the prior art are identical and would have the same effect when applied according the method steps of the teachings of Hsu et al.
It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter which there is reason to believe inherently includes functions that are newly cited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to "prove that subject matter shown to be in the prior art does not possess characteristic relied on" (205 USPQ 594, second column, first full paragraph).
For the forgoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Claim(s) 30 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (International Application Published Under the PCT WO 2008/141252 A1, Published 11/20/2008; cited in a prior Office action) in view of Lameri et al. (International Application Published Under the PCT WO 2003/086073 A1, Published 10/23/2003; cited in a prior Office action) and Long et al. (Chinese Patent 1309303 C, Published 40/11/2007; cited in a prior Office action) and Bristow (French Patent 3001105 A1, Published 07/25/2014; cited in a prior Office action), as applied to claims 21, 23-27, 29, 31, 32, 34, 35, 36, 40, and 43-44 above, and further in view of Elisk (International Application Published Under the PCT WO 2012/145177 A1, Published 10/26/2012; cited in a prior Office action).
The teachings of Hsu et al. and Lameri et al. are discussed above.
Hsu et al. and Lameri et al. do not teach the instantly claimed HLB values.
Elsik teaches a composition comprising an herbicide (abstract). Oil-in-water emulsifiers have an HLB range of 8-18. (paragraph 0007).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to use emulsifiers/surfactants having and HLB of the instant claims and have a reasonable expectation of success. One would have been motivated to do so in order to form oil-in-water emulsions and also the overlapping range taught by Elsik. For the forgoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (International Application Published Under the PCT WO 2008/141252 A1, Published 11/20/2008; cited in a prior Office action) in view of Lameri et al. (International Application Published Under the PCT WO 2003/086073 A1, Published 10/23/2003; cited in a prior Office action) and Long et al. (Chinese Patent 1309303 C, Published 40/11/2007; cited in a prior Office action), and Bristow (French Patent 3001105 A1, Published 07/25/2014; cited in a prior Office action), as applied to claims 21, 23-27, 29, 31, 32, 34, 35, 36, 40, and 43-44 above, and further in view of Yang et al. (Chinese Patent 104770406 A, Published 07/15/2015; cited in a prior Office action).
The teachings of Hsu et al. and Lameri et al. are discussed above.
Hsu et al. and Lameri et al. do not teach a composition comprising eucalyptus oil.
Yang et al. teach eucalyptus oil is an herbicide (abstract).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to add eucalyptus oil and have a reasonable expectation of success. One would have been motivated to do so in order to add additional herbicidal essential oils. For the forgoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Applicant argues that none of the references cited describe a method of applying a composition in the form of an emulsion presenting droplets having a droplet size distribution D50 equal or inferior to 5 µm to at least one part of a plant, a seed, or soil.
Regarding the size of emulsion particles, Bristow teaches the present invention comprises an active ingredient having herbicidal activity (paragraph 014). Aqueous and organic phases are mixed such that droplet sizes of 1-100 microns are produced based on desire and intended use (paragraph 041).
It would have been prima facie obvious to one of ordinary skill in the art at the time of the instant invention to adjust the droplet of the emulsion to the instant claimed droplet size and have a reasonable expectation of success. One would have been motivated to do so through the particular desire and intended use and also the overlapping range taught by Bristow. For the forgoing reasons the instant claims are rendered obvious by the teachings of the prior art.
The 1-100 micron range taught by Bristow encompasses amounts including 1-5 µm, (5 µm or inferior) and overlaps with the range of claim 36, and encompasses the sizes of claim 43 and 44, rendering each size or size range prima facie obvious (MPEP 2144.05 (I): In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Applicant further argues that the claimed composition yields unexpected properties and unexpected results; when the composition is in the form of an emulsion presenting droplets having D50 equal or inferior to 5 µm, its efficacy in increased (improvement of the herbicidal activity) in comparison to the same composition having D50 larger than 5 µm. In addition, the composition having D50 equal or inferior to 5 µm, it is stable over time (no phase separation, for example no decantation), which is not observed for larger D50 droplet sizes.
The Examiner has reviewed the evidence presented in the Declaration of Haissam Jijakli under 37 CFR 1.132, and agrees that there are unexpected properties in terms of improved herbicidal activity and improved stability. However, the evidence is for two specific formulations, which do not correspond to the full scope of claim 21. The formulations with better properties are set forth in Table 1, Compo 1 and Compo 2.
The ingredients of essential oil is limited to
3% Cinnamomum cassia (from bark),
3% sunflower oil,
0.5% soy lecithin,
balance water,
having droplet size distribution D50 of 1.9 or 5 µm.
None of the claims are limited to these two formulations, in terms of specific ingredients, nor concentrations; claim 21 is generic reciting at least one essential oil as active compound, at least one surfactant, at least one oily substance, and mixtures thereof (what does this require/permit?). Claim 21 does not even recite water, let alone at the tested concentration. The claimed method presents droplets of size similar to those tested to at least one part of a plant, a seed or soil, whereas the test reports on application to a single plant; to leaves of crimson clover, at a specific applied application rate (which is also not claimed). There are no such limitations in the claims. Claim 21 recites a series of phytotoxic activities; none of these claimed results are part of the experiments conducted.
While the declaration establishes unexpected properties, the scope of the evidence is very limited, and not supportive of the much broader claims, for claim 21 or any dependent claim.
MPEP 716.02(d) establishes that unexpected results must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). This is not currently the case.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P THOMAS whose telephone number is (571)272-8994. The examiner can normally be reached M-Th 6:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TIMOTHY P. THOMAS
Primary Examiner
Art Unit 1614
/TIMOTHY P THOMAS/Primary Examiner, Art Unit 1614