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 Status
Claims 1, 4-5, 7-12, 15 and 17 are pending.
Claim 1 is currently amended.
Claims 2-3, 6, 13-14 and 16 have been canceled.
Claims 15 and 17 are withdrawn.
Claims 1, 4-5 and 7-12 are currently under consideration.
Claims 1, 4-5 and 7-12 are rejected.
Acknowledgement of Receipt
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/26/2026 has been entered.
Withdrawn Objections/Rejections
In light of the new amendments and/or upon further consideration, the rejection of claim 1 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement is withdrawn.
Claim Rejections - 35 USC § 112(b)
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 1 and all dependent claims thereof are 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.
The term “about” in claim 1 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The amount of colloidal silicon dioxide or fumed silica present by weight of the formulation has been rendered indefinite by the use of the term “about.”
Thus, claim # and all dependent claims thereof are also rejected for being indefinite as they are dependent on an indefinite claim.
For the purposes of this office action, prior art teaching any amount of colloidal silicon dioxide or fumed silica will be considered to be read on the claim limitation.
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 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 (a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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. Applicants are 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, 4-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 102986718 A, pub. 03/27/2013, Espacenet MT) in view of Herrick et al. (US 2009/0131518, pub. 05/21/2009, cited on IDS) and Alwabel et al. (US 10,011,536, pub. 07/03/2018) herein referenced Chen, Herrick, and Alwabel. Citations for Chen are taken from the document previously provided.
Chen provides a high-concentration oil-based pesticide preparation with improved stability and increased content when serving as an emulsifiable concentrate in which the water free composition can be sprayed directly or after being diluted (pg. 1, last para.). Chen teaches formulations with acetamiprid from 1-30%. Chen teaches that the formulations further comprise bifenthrin present in amounts from 1-30% mixed with thickeners, defoamers and antifreeze additives; the balance being vegetable oil (pg. 2, para. 3; pg. 3, para. 8; pgs. 5-8, Examples 1-5; pg. 9, para. 1; claim 1). Chen demonstrates the use of penetrating agent in formulation (template) at an amount of 0.5-10% range (pg. 2, para. 2), teaching that the agent can help the oil suspending agent to penetrate into the water to achieve the purpose of rapid use (pg. 3, para. 9). Chen teaches that due to its high water solubility, acetamiprid is generally made into a low content of emulsifiable concentrate or a soluble liquid with a content of less than 30% and a high content of solid dosage form; bifenthrin dissolves in xylene (pg. 2, para. 2).
To reiterate, the prior art of Chen is teaching an oil dispersion (OD) free of water, neonicotinoid acetamiprid (in a suspended), pyrethroid bifenthrin (solubilized), and solubilizing medium; with a mentioning of aromatic hydrocarbons (i.e., xylene).
The Examiner notes that the term “optionally” recited in element (e) of claim 1 and that which follows this term, i.e., excipients, will not be considered required.
Regarding particle size distribution (PSD) limitation, it would have been obvious to one of ordinary skill in the art to determine the distribution D10, D50 and D90 as a matter of experimentation and optimization. Chen teaches that the average particle size (i.e., D50) of the particles is generally below 3 microns (µm), and suggests that this size enhances delivery of the actives (bridging pgs. 1-2). One of ordinary skill in the art would have been motivated to use experimentation to determine the optimal PSD to achieve the desired outcome(s).
Chen does not teach amounts for the hydrocarbon.
Herrick discloses an insecticidal composition comprising bifenthrin and a cyano-pyrethroid (e.g., fenvalerate, alpha-, beta-, zeta-cypermethrin, deltamethrin, cyfluthrin, lambda-cyhalothrin) with at least one agriculturally acceptable extender or adjuvant (claims 1, 3-4, 6). Herrick teaches that emulsifiable concentrates (ECs) are homogeneous liquid compositions dispersible in water or other dispersant, and may consist entirely of the insecticidal compound and a liquid or solid emulsifying agent, or may also contain a liquid carrier, such as xylene, heavy aromatic naphthas ([0036]). Herrick teaches that typical carriers for wettable powders include silicas ([0035]).
Herrick discloses a preparation of bifenthrin to zeta-cypermethrin emulsifiable concentrate formulation in which 42.32 grams of Aromatic 200 ND is added to 8.34 grams of melted bifenthrin (95.9% active ingredient) and 11.11 grams of zeta-cypermethrin (36% active ingredient) ([0044]). Aromatic 200 ND taught in amount of about 53% (42.32 ÷ 79.72 grams) which falls within the claimed 1-60% limitation, the oil is present at about 30% and bifenthrin is present at about 10% of the composition ([0045]).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate Herrick’s teaching of an aromatic hydrocarbon in the composition of Chen with expected results. One would be motivated to do so with a reasonable expectation of success because Herrick provides a mixture which contains less bifenthrin and less cyano-pyrethroid to achieve insecticidal activity superior to either insecticidal compound alone, wherein an ecological and mammalian safety benefit is realized ([0007]). This complements Chen using vegetable oil as a dispersion medium to reduce the harm to the applicator and to the environment (pg. 4, para. 3).
Regarding element (d), the MPEP § 2112.01 states that if a composition is physically the same, it must have the same properties. Chen in view of Herrick allows the skilled artisan to expect a result that would necessarily flow with the intended purpose and properties, i.e., effective to prevent the active in the partly solubilized form from freezing at sub-zero°C. One would have been motivated to use routine experimentation and optimization to determine the optimal amount of aromatic hydrocarbon to use in the formulation to formulate a liquid agrochemical formulation that is stable at a temperature below 0°C.
With respect to the colloidal silicon dioxide or fumed silica present and considering the indefinite issue discussed above, looking to the instant specification, Applicants describe silicas as rheological modifiers and name Aerosil R812 as a commercially available fumed silica (see Spec., pgs. 9-10). Chen discloses thickeners (i.e., rheological modifier) (pg. 3, para. 3) but does not mention silica. Herrick teaches silica as a carrier but does not teach an amount ([0035]).
Alwabel is provided to teach an amount of fumed silica to read on the claims.
Alwabel discloses an encapsulated sustained release urea fertilizer comprising a urea fertilizer and a stabilizer encapsulated in fumed silica (abstract, col. 2, lines 65-66, claim 1). Alwabel discloses the use of Aerosil® R812 (col. 3, line 28, Example 1) and that the fumed silica comprises 5% wt/vol of the composition (col. 1, line 64, Fig. 2A; col. 3, line 53, claim 4). Here, Alwabel teaches an amount that is close to the claimed 3%. MPEP 2144.05 states that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to apply Alwabel’s teaching of fumed silica in the composition of Chen in view of Herrick with expected results. All of the cited prior art references teach modifiers (see Chen, pg. 3, para. 3; Herrick, claim 6; Alwabel, col. 7, line 26). One would be motivated to do so with a reasonable expectation of success because Alwabel shows that by using fumed silica (i.e., Aerosil® R812) improved sorption, slow release, and environmentally friendly properties can be achieved (col. 5, lines 5-8).
Regarding claims 4-5, and claims 7-8, Chen teaches acetamiprid from about 1-30% and bifenthrin from about 1-30% (claim 1).
Regarding claims 9-10, Chen teaches vegetable oil as the balance (claim 1).
Regarding claims 11-12, Herrick teaches xylene, heavy aromatic naphthas ([0036]), and provide an example in which Aromatic 200 ND is present at about 53% of the total composition ([0045]).
For the foregoing reasons the instant claims are rendered obvious by the teachings of the prior art.
Response to Arguments
Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive.
Applicants argue that Chen expressly identifies anti-freezing agents as hydrophilic polyols and does not teach an aromatic hydrocarbon as the component to prevent freezing and that Herrick does not teach the use of an aromatic hydrocarbon to prevent freezing at sub-zero temps (Remarks, pg. 6, para. 1-2).
The prior art teaches hydrocarbon species recited in the claims (i.e., xylene, aromatic 200). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., aromatic hydrocarbon to prevent freezing below zero) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argue that Chen disclose silicon dioxide or fumed silica at about 3%, and that Alwabel’s fumed silica is higher (%) and thus the cited art discloses fundamentally different matrices and processing environments compared to the claimed non-aqueous, water-free pesticide ODs. (Remarks, pg. 6, para. 1-2). Applicants further argue that there is not teaching to “exceed Chen’s (2%) cap or to substitute colloidal silicon dioxide or fumed silica specifically in pesticide ODs.” (Remarks, pg. 6, last para.).
The Examiner respectfully disagrees because considering the indefiniteness 112(b) issue discussed above, and that the MPEP 2144.05 states that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Alwabel teaches an amount (5%) that is close to the claimed “about 3%” (see Aerosil® R812, Example 1, claim 4).
Applicants argue that Hopkins is focused on alternative structuring agents such as dibenzylidene sorbitol (pg. 7, para. 1).
Hopkins is no longer applied.
For these reasons, Applicants’ arguments are found unpersuasive.
Conclusion
Claims 1, 4-5 and 7-12 are rejected; no claims are currently allowable.
The Examiner asks Applicant to provide support for the amendments in the application disclosure by referencing page numbers, paragraphs, figures, etc. for the sake of compact prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 900-500 ET.
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/Karen Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614