DETAILED ACTION
Claims 1-4, 6-7 and 16-19 were rejected in the Office Action mailed 10/30/2023.
Applicants filed a Request for Continued Examination, and canceled claim(s) 8-15, and added claim(s) 20-26 on 06/06/2025.
Claims 1-4, 6-7 and 16-26 are pending, and claims 22-26 are withdrawn.
Claims 1-4, 6-7 and 16-26 are rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/06/2025 has been entered.
Election/Restrictions
Newly submitted claims 22-26 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Claims 1-4, 6-8, 16-21, drawn to a process, classified in C01B 35/1063.
II. Claim 22, drawn to a product, classified in C01D 13/00.
III. Claims 23-26, drawn to a process, classified in C05G 5/27 .
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, e.g., a process comprising ball milling potassium pentaborate solids in an aqueous suspension medium to produce a stable aqueous suspension comprising particles of potassium pentaborate that exhibits (i) no potassium pentaborate particles visibly perceptible to the naked eye; and(ii) no settlement of potassium pentaborate particles visibly perceptible to the naked eye after the stable aqueous suspension has been stored at ambient conditions for at least 14 days, instead of the process as required in Invention I.
Inventions I and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function, or effect, Invention I requires no settlement of potassium pentaborate particles visibly perceptible to the naked eye after the stable aqueous suspension has been stored at ambient conditions for at least 14 days, which is not required in Invention III; Invention III requires a process comprising: first adding a first viscosity modifying agent and a second viscosity modifying agent to water in a reaction tank to form an aqueous medium; second adding, in the absence of sodium, boric acid and potassium carbonate to the aqueous medium at a boric acid to potassium carbonate molar ratio from 5:1 to 15:1; and forming a stable aqueous suspension comprising from 30% to 60% (w/w) particles of potassium pentaborate having an average particle size less than 100 microns, which is not required in Invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, e.g., a process comprising ball milling potassium pentaborate solids in an aqueous suspension medium to produce a stable aqueous suspension comprising from 70% to 75% (w/w) particles of potassium pentaborate having an average particle size less than 100 microns, instead of the process as required in Invention III.
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 22-26 are 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.
Claim Objections
Claims 3, 7 and 16 are objected to because of the following informalities:
Each of line 3 of claim 3; lines 2, 6-8 of claim 7; line 2 of claim 16 and line 2 of claim 21, it is suggested to amend “(w/w)” to “, w/w,”.
Claim 7, line 5, it is suggested to amend “stable” to “the stable” to ensure proper antecedent basis and clarity.
Appropriate correction is required.
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.
Claim 21 is 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.
Claim 21 is recited to depend on claim 21, which is itself. It is unclear what claim 21 is referring to, given that a claim cannot depend on itself. The examiner interprets that claim 21 depends on claim 1. Interpretation is speculative. Clarification is requested.
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.
Claims 1-4, 6 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Galina et al., RU2063380C1 (Galina) (provided in IDS received on 05/19/2021) in view of Hayati et al., US 6,273,928 B1 (Hayati).
The examiner has provided a machine translation of Galina et al., RU2063380C1. The citation of the prior art set forth below refers to the machine translation.
Regarding claims 1-2, 4 and 19, Galina discloses a method for the preparation of potassium pentaborate (Galina, page 1, 2nd paragraph), a reaction of boric acid with potassium carbonate in an aqueous medium which produced potassium pentaborate; boric acid is mixed in a stoichiometric ratio with potassium carbonate (i.e., a molar ratio of boric acid to potassium carbonate of 10:1 according to the reaction equation, and reacting the boric acid with the potassium carbonate to the exclusion of potassium hydroxide, and reacting the boric acid with the potassium carbonate to the exclusion of sodium), (Galina, page 1, 5th paragraph); the reactants react in accordance with the reaction with the evolution of carbon dioxide and the formation of a crystalline precipitate of potassium pentaborate (Galina, page 1, 6th paragraph).
Further regarding claims 1 and 3, Galina does not explicitly disclose forming a stable aqueous suspension comprising particles of potassium pentaborate that exhibits (i) no potassium pentaborate particles visibly perceptible to the naked eye; and (ii) no settlement of potassium pentaborate particles visibly perceptible to the naked eye after the stable aqueous suspension has been stored at ambient conditions for at least 14 days, or forming a stable aqueous suspension comprising potassium pentaborate having at least 8% (w/w) boron and at least 5% (w/w) potassium oxide (K2O).
With respect to the differences, Hayati teaches a pourable aqueous borate-containing suspension (Hayati, Abstract). Hayati specifically teaches highly stable yet readily pourable aqueous borate-containing formulations having a high boron content; they can be prepared using an anti-settling system comprising a swellable clay and a polysaccharide; the compositions of this invention comprise a pourable aqueous borate-containing suspension which suspension in water contains 8 to 13% by weight boron (Hayati, column 1, bottom paragraph); a sufficiently high viscosity at low stresses, e.g., under stable storage and transport conditions so as to prevent particle sedimentation (Hayati, column 2, lines 24-27).
As Hayati expressly teaches, the aqueous compositions are physically stable, yet pourable and therefore readily handled; they may be used directly or, if appropriate, diluted for use; they may be used as a source of boron for crops or for other applications where there is a need for aqueous soluble borate suspensions (Hayati, Abstract).
Hayati is analogous art as Hayati is drawn to a borate-containing composition.
In light of the motivation of preparing a highly stable yet readily pourable aqueous borate containing formulation, as taught by Hayati, it therefore would have been obvious to a person of ordinary skill in the art to prepare the potassium pentaborate crystals of Galina into a highly stable yet readily pourable aqueous borate containing formulation (i.e., a stable aqueous suspension comprising particles of potassium pentaborate that exhibits (i) no potassium pentaborate particles visibly perceptible to the naked eye; and (ii) no settlement of potassium pentaborate particles visibly perceptible to the naked eye after the stable aqueous suspension has been stored at ambient conditions for at least 14 days, according to examiner’s interpretation in item 5), e.g., which suspension in water contains 8 to 13% by weight boron, in order to obtain a product that is readily handled, and may be used as a source of boron for crops or for other applications where there is a need for aqueous soluble borate suspensions, and thereby arrive at the claimed invention in claim 1.
Further regarding claim 3, in Galina in view of Hayati, given the chemical formula of potassium pentaborate KB5O6(OH)4·2H2O, atomic mass of boron 10.8 g/mol, and molecular weight of potassium oxide of 94.2 g/mol, 8 to 13% by weight boron would corresponds to 7.0 to 11.3% by weight of potassium oxide (i.e., 8%*94.2/10.8/2/5= 7.0%; 13%*94.2/10.8/2/5= 11.3%), which overlaps the range of the presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 6, as applied to claim 1, Hayati further teaches in Example 1, a pourable aqueous borate-containing suspension was prepared as follows: Water was added to a reaction vessel and stirred; Dispex N40 acrylic polymer dispersant was added followed by IGB clay (product of IMV Nevada). Stirring was continued and then xanthan gum was added and stirring was continued (reading upon adding a viscosity modifier to water to form an aqueous suspension medium, wherein the IGB clay and xanthan gum read upon a viscosity modifier); the mixture was transferred to a reaction vessel and stirred, TG boric acid was added and this was immediately followed by Neobor borax pentahydrate (Hayati, column 5, 3rd and 4th paragraphs).
Given that Galina discloses a reaction of boric acid with potassium carbonate in an aqueous medium which produces potassium pentaborate, in Galina in view of Hayati, it therefore would have been obvious to a person of ordinary skill in the art to add the boric acid and the potassium carbonate to the aqueous medium prepared above in order to produce the highly stable yet readily pourable aqueous borate containing formulation.
Regarding claims 16-17, as applied to claim 1, Galina in view of Hayati further teaches the amount of swellable clay (reading upon a first viscosity modifier) employed in the suspensions is 0.1 to 3% by weight based a total composition of the composition (Hayati, column 2, lines 51-54); a particularly preferred polysaccharide (reading upon a second viscosity modifier) in the compositions is xanthan gum; the amount of polysaccharide, e.g., xanthan gum, used may be 0.05 to about 0.2% (Hayati, column 2, bottom paragraph).
Therefore, a total amount of the amount of swellable clay and the polysaccharide (together reading upon a viscosity modifier) corresponds to 0.15% to 3.2% by weight based a total composition of the composition.
Galina in view of Hayati further teaches the clay is dispersed in water at about 25°C; the polysaccharide is then added to the suspension and dissolved (Hayati, column 3, bottom paragraph).
Regarding claim 18, as applied to claim 1, Hayati further teaches boric acid was added and this was immediately followed by neobor borax pentahydrate (Hayati, column 5, Example 1). It therefore would have been obvious to a person of ordinary skill in the art that in Galina in view of Hayati, to add the boric acid first and immediately followed by the potassium carbonate to the aqueous medium prepared above in order to produce the highly stable yet readily pourable aqueous borate containing formulation.
Alternatively, Galina in view of Hayati teaches a reaction of boric acid with potassium carbonate in an aqueous medium which produced potassium pentaborate; boric acid is mixed in a stoichiometric ratio with potassium carbonate, (Galina, page 1, 5th paragraph). It has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Regarding claim 20, as applied to claim 1, Galina in view of Hayati further teaches the amount of the anti-settling system incorporated obviously depends on the size and concentration of the resulting suspended particles. Generally speaking, the suspension comprises particles less than 10 microns in size (Hayati, column 3, 3rd paragraph), which is within the claimed range.
Regarding claim 21, as applied to claim 1, Galina in view of Hayati further teaches the compositions comprises a pourable aqueous borate-containing suspension which suspension in water contains 8 to 13% by weight boron (Hayati, column 1, bottom paragraph). Given the chemical formula of potassium pentaborate KB5O6(OH)4·2H2O, atomic mass of boron 10.8 g/mol, molecular weight of potassium pentaborate of 293.2 g/mol, and molecular weight of potassium oxide of 94.2 g/mol, 8 to 13% by weight boron would corresponds to 43.4 to 70.6% by weight of potassium pentaborate (i.e., 8*293.2/10.8/5=43.4%; 13*293.2/10.8/5=70.6%), and 7.0 to 11.3% by weight of potassium oxide (i.e., 8%*94.2/10.8/2/5= 7.0%; 13%*94.2/10.8/2/5= 11.3%), which overlap with the ranges of potassium pentaborate particles and potassium oxide of the presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Galina in view of Hayati as applied to claim 6 above, and further in view of Goldberg, Reactions of boron with soil, Plant and Soil, 193, 35-48, 1997 (Goldberg).
Regarding claim 7, as applied to claim 6, Galina in view of Hayati further teaches 0.1 to 3% by weight, based on the total weight of the composition, of a swellable clay, and 0.05 to 0.2% by weight, based on the total weight of the composition, of a polysaccharide (Hayati, column 1, bottom paragraph), wherein the swellable clay and the polysaccharide read upon a viscosity modifier and correspond to 0.15 to 3.2% by weight of a viscosity modifier.
Galina discloses boric acid is mixed in a stoichiometric ratio with potassium carbonate (i.e., a molar ratio of boric acid to potassium carbonate of 10:1 according to the reaction equation), (Galina, page 1, 5th paragraph), as set forth above.
Galina in view of Hayati further teaches the compositions comprises a pourable aqueous borate-containing suspension which suspension in water contains 8 to 13% by weight boron (Hayati, column 1, bottom paragraph). Given the chemical formula of potassium pentaborate KB5O6(OH)4·2H2O, atomic mass of boron 10.8 g/mol, molecular weight of potassium pentaborate of 293.2 g/mol, and molecular weight of potassium oxide of 94.2 g/mol, 8 to 13% by weight boron would corresponds to 43.4 to 70.6% by weight of potassium pentaborate (i.e., 8*293.2/10.8/5=43.4%; 13*293.2/10.8/5=70.6%), and 7.0 to 11.3% by weight of potassium oxide (i.e., 8%*94.2/10.8/2/5= 7.0%; 13%*94.2/10.8/2/5= 11.3%), which overlap with the ranges of potassium pentaborate particles and potassium oxide of the presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Galina in view of Hayati further teaches the compositions are pourable and, at the same time, physically stable, that is the compositions have: a sufficiently high viscosity at low stresses (shear rates) e.g. under stable storage and transport conditions so as to prevent particle sedimentation or significant separation; and a sufficiently rapid decrease in viscosity at a particular stress (depending on the application) e.g. under pouring, pumping or spraying conditions that ensures the pourability of the product on application (Hayati, column 2, 3rd paragraphs).
Although there are no disclosures on the amounts of dynamic viscosity at 19.3°C as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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 Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of dynamic viscosity at 19.3°C, including over the amounts presently claimed, in order to ensures the pourability of the product on application, and thereby arrive at the claimed limitation.
Galina in view of Hayati does not explicitly teach a pH from 6.5 to 8.5.
With respect to the difference, Goldberg teaches boron as an essential micronutrient for plants (Goldberg, Abstract). Goldberg specifically teaches pH 6 to 8 and pH 7 to 9 (Goldbert, page 4, left column, 1st paragraph).
As Goldberg expressly teaches, aluminium and iron oxides play an important role in boron adsorption behavior on soils and boron adsorption is highly significantly correlated with the aluminium oxide content of soils (Goldberg, page 3, right column, 2nd paragraph); Boron adsorption on both crystalline and amorphous aluminium and iron oxides increased with increasing pH up to an adsorption maximum at pH 6 to 8 for aluminium oxides and pH 7 to
9 for iron oxide (Goldbert, page 4, left column, 1st paragraph).
Goldberg is analogous art as Goldberg is drawn to born as an essential micronutrient for plants.
In light of the motivation of controlling pH values on the absorption of boron, it therefore would have been obvious to a person of ordinary skill in the art to control the pH of the pourable aqueous borate-containing suspension of Galina in view of Hayati, e.g., to pH 7 to 8 (i.e., an overlap of pH 6 to 8 and pH 7 to 9), in order to increase boron adsorption on soils, and thereby arrive at the claimed limitation.
Furthermore, given that Galina in view of Hayati and Goldberg are identical or substantially identical in structure or composition with that of the presently claimed, specifically a pourable aqueous borate-containing suspension which suspension in water contains 0.15 to 3.2% by weight of a viscosity modifier, 8 to 13% by weight boron, 43.4 to 70.6% by weight of potassium pentaborate, and 7.0 to 11.3% by weight of potassium oxide, therefore it is clear that Galina in view of Hayati and Goldberg would necessarily and inherently meet the claimed limitation of a bulk density from 1.2 to 1.4 g/ml. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
In response to the PTAB opinion issued on 04/29/2025, specifically on pages 3-4, the previous 35 U.S.C. 112(b) rejections are withdrawn.
However, the amended necessitates a new set of claim objections and 35 U.S.C. 112(b) rejection(s) as set forth above.
Applicant primarily argues:
“Galina produces solid potassium pentaborate crystals-not an aqueous suspension-by reacting boric acid powder and potassium carbonate powder in as little water as possible (water : powder ratio 0.05-0.1:1) to produce potassium pentaborate crystals that are insoluble in water, the potassium pentaborate crystals subsequently heated and dried. Wawrzos Declaration, ¶7. Galina provides no information about the solubility of potassium pentaborate in water. Id.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Galina does not expressly teach the claimed stable aqueous suspension. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Galina does not disclose the entire claimed invention. Rather, Hayati is relied upon to teach claimed elements missing from Galina, with proper motivation to combine, namely, to obtain a product that is readily handled, and may be used as a source of boron for crops or for other applications where there is a need for aqueous soluble borate suspensions (Hayati, Abstract). See pages 6-7 of the Office Action mailed 07/19/2023.
Applicant further argues:
“Hayati fails to fulfill the deficiencies of Galina. Hayati is directed to an aqueous sodium pentaborate suspension-not a potassium pentaborate suspension as claimed by Applicant.
Indeed, completely absent in Hayati is the term "potassium," let alone the term "potassium pentaborate." To the skilled person, "[n]either Galina nor Hayati provide any indication that potassium pentaborate would provide a stable aqueous suspension." Wawrzos Declaration, ¶7.
Indeed, Hayati col. 3 lines 23-25 states: "[t]he nature and interaction between the sodium pentaborate and clay and polysaccharide, leading to reduced viscosity is not fully understood" conveying to the skilled person that Hayati is uncertain whether borates other than sodium pentaborate would lead to suitable pourable suspensions with reduced viscosity. Id.”
Remarks, p. 7
Affidavit, #4
The Examiner respectfully traverses as follows:
Firstly, it is noted that while Hayati does not disclose all the features of the present claimed invention, Hayati is used as teaching reference, namely preparing a highly stable yet readily pourable aqueous borate containing formulation, in order to obtain a product that is readily handled, and may be used as a source of boron for crops or for other applications where there is a need for aqueous soluble borate suspensions, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Secondly, a person of ordinary skill in the art would have been able to arrive at a stable aqueous suspension of potassium pentaborate particles given the teachings from Galina and Hayati. “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. Therefore, the Examiner’s position remains, it would be obvious to one of ordinary in the art to achieve a successful modification, absent evidence to the contrary.
Applicant further argues:
“Moreover, the skilled person understands that potassium pentaborate is four times (4x) less soluble in water than is sodium pentaborate. Wawrzos Declaration, ¶8 ("[I]n 20°C water, potassium pentaborate is four times (4x) less soluble than sodium pentaborate."), Chart B. Given that (i) Galina discloses potassium pentaborate crystals that are insoluble in water, (ii) Hayati discloses only sodium pentaborate, (iii) Hayati expresses uncertainty whether other borates would work, (iv) neither Galina nor Hayati provide any indication to the skilled person that potassium pentaborate would produce a stable aqueous suspension, and (v) the skilled person's knowledge that potassium pentaborate is four times less soluble than sodium pentaborate, no rational basis exists to replace the sodium pentaborate in Hayati with Galina's water insoluble potassium pentaborate crystals.”
Remarks, p. 7-8
Affidavit, #8
The Examiner respectfully traverses as follows:
Firstly, the fact that potassium pentaborate is four times less soluble in water than is sodium pentaborate does not prevent one of ordinary skill in the art the combine the Galina and Hayati to arrive the claimed stable aqueous suspension comprising particles of potassium pentaborate.
In fact, the fact the potassium pentaborate is four times less soluble in water than is sodium pentaborate also confirms that the ability of potassium pentaborate to form a suspension, because if potassium pentaborate is highly solubility, potassium pentaborate could form a solublution instead.
Secondly, it is unclear where in Galina discloses that potassium pentaborate in insoluble in water. Even if Galina does disclose that potassium pentaborate in insoluble in water, it does not prevent one of ordinary skill in the art the combine the Galina and Hayati to arrive the claimed stable aqueous suspension comprising particles of potassium pentaborate.
Thirdly, regarding applicant’s interpretation of Hayati, column 3, lines 23-25 appears to be taken out of context. Hayati discloses “The nature of the interaction between the sodium pentaborate and clay and polysaccharide, leading to reduced viscosity, it not fully understood” (columns 3, lines 23-25). The examiner interprets that this disclosure to refer to that there is no clear understanding for the mechanism behind the observation of reduced viscosity due to the interaction between the sodium pentaborate and clay and polysaccharide. This disclosure does not express uncertainty whether other borates would work, or teach away from using other borates, such as potassium borates.
Fourthly, a person of ordinary skill in the art would have been able to arrive at a stable aqueous suspension of potassium pentaborate particles given the teachings from Galina and Hayati. “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. Therefore, the Examiner’s position remains, it would be obvious to one of ordinary in the art to achieve a successful modification, absent evidence to the contrary.
Applicant further argues:
“PTAB's allegation that Hayati's "teaching to use sodium pentaborate is only a preference and not required by Hayati's invention" is inconsistent with the knowledge of the skilled person.
PTAB Decision, p. 5. The skilled person reading Hayati in its entirety (as required by MPEP § 2143) recognizes Hayati discloses only sodium pentaborate-and no other borate. "Hayati makes no mention of any other borate. Hayati provides no indication that other borates would yield a pourable and physically stable borate-containing suspension." Wawrzos Declaration, ¶4.
Indeed, Hayati's disclosure at 3:23-25, which states "[tihe nature and interaction between the sodium pentaborate and clay and polysaccharide, leading to reduced viscosity is not fully understood" conveys to the skilled person that Hayati is uncertain "whether borates other than sodium pentaborate would lead to suitable pourable suspensions with reduced viscosity." Wawrzos Declaration, ¶¶5, 7.
PTAB's conclusion that Hayati is "open to other borates" because Hayati claim 1 recites "borate-containing suspension" instead of "sodium pentaborate" lacks rational basis. The skilled person understands (i) the "only borate mentioned in Hayati is sodium pentaborate" and (ii) "Hayati makes no mention of any other borate." Wawrzos Declaration, ¶4. The skilled person understands that (iii) Hayati expresses uncertainty whether borates other than sodium pentaborate would work, and (iv) not all borates are alike because "solubilities differ significantly across the different types of borates...." Wawrzos Declaration, ¶¶4-6 and Chart A.
The skilled person understands potassium pentaborate is four times (4x) less soluble in water than sodium pentaborate. Wawrzos Declaration, ¶¶8-9. Hayati provides the skilled person "no guidance for which types of other borates would produce a stable suspension." Wawrzos Declaration, ¶6. Thus, the mere fact that the term "sodium pentaborate" is absent from Hayati claim 1 fails to provide a rational basis for the assertion that Hayati is "open to other borates.”
Remarks, p. 8
Affidavit, item #4-9
The Examiner respectfully traverses as follows:
Firstly, potassium borate is already taught by Galina. It is noted that while Hayati does not disclose all the features of the present claimed invention, Hayati is used as teaching reference, namely preparing a highly stable yet readily pourable aqueous borate containing formulation, in order to obtain a product that is readily handled, and may be used as a source of boron for crops or for other applications where there is a need for aqueous soluble borate suspensions, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Secondly, the fact remains that Hayati recites in claim 1, “a pourable aqueous borate-containing suspension composition comprising … boron”, i.e., not limiting to a specific boron. Therefore, Hayati is not limiting to a specific boron, and certainly is not teaching away from using other borates. Also see PTAB Decision to Appeal, paragraph spanning pages 5-6.
Thirdly, a person of ordinary skill in the art would have been able to arrive at a stable aqueous suspension of potassium pentaborate particles given the teachings from Galina and Hayati. “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. Therefore, the Examiner’s position remains, it would be obvious to one of ordinary in the art to achieve a successful modification, absent evidence to the contrary.
Fourthly, regarding applicant’s interpretation of Hayati, column 3, lines 23-25 appears to be taken out of context. Hayati discloses “The nature of the interaction between the sodium pentaborate and clay and polysaccharide, leading to reduced viscosity, it not fully understood” (columns 3, lines 23-25). The examiner interprets that this disclosure to refer to that there is no clear understanding for the mechanism behind the observation of reduced viscosity due to the interaction between the sodium pentaborate and clay and polysaccharide. This disclosure does not express uncertainty whether other borates would work, or teach away from using other borates, such as potassium borates.
Fifthly, the fact that potassium pentaborate is four times less soluble in water than is sodium pentaborate does not prevent one of ordinary skill in the art the combine the Galina and Hayati to arrive the claimed stable aqueous suspension comprising particles of potassium pentaborate.
In fact, the fact the potassium pentaborate is four times less soluble in water than is sodium pentaborate also confirms that the ability of potassium pentaborate to form a suspension, because if potassium pentaborate is highly solubility, potassium pentaborate could form a solution instead.
Applicant further argues:
“Goldberg is directed to boron desorption reactions in soil and is wholly void to potassium pentaborate-let alone a stable aqueous suspension of potassium pentaborate particles with unique liquid optics.”
Remarks, p. 9
The Examiner respectfully traverses as follows:
It is noted that while Goldberg does not disclose all the features of the present claimed
invention, Goldberg is used as teaching reference, namely to control the pH of the pourable
aqueous borate-containing suspension of Galina in view of Hayati, e.g., to pH 7 to 8, in order to
increase boron adsorption on soils, and therefore, it is not necessary for this secondary reference
to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179
USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981).
Rather this reference teaches a certain concept, and in combination with the primary reference,
discloses the presently claimed invention.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732