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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/06/2025 has been entered.
Applicants' arguments, filed 10/06/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 1, 7, 9, and 14-25, are pending and under examination.
Claim Objections
Claim 16 is objected to because of the following informalities: a comma is missing following “claim 14” in line 1. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: a comma is missing following “claim 1” in line 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or pre-AIA 2nd ¶
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.
Claims 15-25 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.
Claim 15 as newly amended recites “the composition of claim 14, further comprising…,” and it is unclear if components (a)-(i) of claim 15 are in addition to the (a)-(g) of claim 15, as suggested by the “further comprising”, or if claim 15 is intended to simply define the amounts of the components of claim 14. Also, claim 15 recites additional components not recited in claim 14 which adds to the lack of clarity. Further, the letters for each component are not consistent across claims 14 and 15. For example, claim 14 recites “(f) optionally one or more formulation assistants” and claim 15 refers to the same component as “(h)”. Likewise, claim 14 as newly amended refers to water as component “(g)”, and claim 15 refers to water as component “(i)”. For purposes of examination, the components recited in claim 15 that are also recited in claim 14 are interpreted to define the amount of the components of claim 14; the additional components that are not recited in claim 14 are interpreted as further additional components.
Claim 16 recites the limitation " mixing… optionally, component (h), with water " in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 16 depends from claim 14, where newly amended claim 14 does not recite a component “(h)”. For purposes of examination, component (h) is interpreted as the one or more optional formulation assistants.
Claim 17 recites the limitation "the defoaming composition of claim 1" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 17 depends from claim 1, where there is no recitation of a “defoaming composition”. For purposes of examination, the limitation is interpreted as “the composition of claim 1”.
Claims 18-25 are also rejected to for the same reasons as depending from claim 15.
Claim Rejections - 35 USC § 112(d) or pre-AIA 4th ¶
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14-16 and 18-25, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In the present instance, claims 14 and 15 recite “wherein the ratio of 1) to 2) is from 1:50 to 1:10”, which is broader than the newly amended limitation of “from 1:20 to 1:10”, as claimed in claim 1. Examiner notes that claims 16 and 18-25 are also rejected for the same reasons for depending upon claims 14 or 15.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7, 9, and 17, stand rejected under 35 U.S.C. 103 as being unpatentable over Bramati et al (US 20050164884 A1) in view of PubChem (“3,5,5-trimethylhexyl 3,5,5-trimethylhexanoate”, 2005, hereinafter referred to as PubChem 1), as evidenced by Frisch et al (US 20050266999 A1).
Bramati et al disclose a defoaming composition for a plant protection formulation comprising PHYTOROB 810.01 (a mixture of C8-10 methyl esters, solvent) and RHODORSIL 481 (silicone based defoamer, linear polydimethylsiloxanes, see pg 4 of the instant specification) (¶¶ 225-234). The ratio of PHYTOROB 810.01 to RHODORSIL 481 used in the particular embodiment was 99/1 (¶ 227). Suitable solvents include esters of linear or branched mono- or dicarboxylic acids comprising 2 to 15 carbon atoms (¶¶ 25, 31), and alcohol moieties comprising linear or branched mono-alcohol or polyol comprising 1-13 carbon atoms (¶ 25). As evidenced by Frisch et al, RHODORSIL 481 is a medium viscosity linear silicone oil from the group of linear polydimethylsiloxanes, comprises silica, and has a dynamic viscosity at 25 deg C of about 4500 mPas (¶¶ 95, 96, 98). Bramati et al disclose that it was observed, unexpectedly, that a synergy exists between the solvent and the associated antifoam substance (¶¶ 14, 15), resulting in a higher defoaming compared to either component used alone (¶¶ 233, 234). The solvent to antifoam substance ratio is between 99.95/0.05 and 90/10 (abs, ¶ 107).
Bramati et al do not specifically disclose the fatty acid esters as instantly claimed, nor a specific embodiment with the ratios instantly claimed.
PubChem 1 discloses 3,5,5-trimethylhexyl 3,5,5-trimethylhexanoate was a known fatty acid ester with a carboxylic acid moiety and an alcohol moiety, each comprising 9 carbon atoms. The structure is as follows:
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Regarding the silicone based defoamer of claim 1, it would have been obvious to select a silicone based defoamer that is a linear polydimethylsiloxane, such as RHODORSIL 481, as taught by Bramati et al. Further, while not explicitly stated as being an emulsion, where the linear polydimethylsiloxanes and fatty acid esters are added to an aqueous plant protection formulation, it would be expected that an emulsion would form.
Regarding the fatty acid ester of claims 1 and 9, where Bramati et al teach a broad genus of suitable fatty acid esters discussed above, it would have been obvious to include a known species of fatty acid ester that falls within the genus taught by Bramati et al, such as 3,5,5-trimethylhexyl 3,5,5-trimethylhexanoate as taught by PubChem 1, where the carboxylic acid and alcohol moiety each comprise 9 carbon atoms.
Regarding the ratio, it would have been obvious to adjust the ratio of silicone based defoamer to fatty acid ester to those taught to be suitable for antifoam compositions, such as between 0.05/99.95 and 10/90 (i.e., between 1:1999 and 1:9), as taught by Bramati et al, thereby overlapping the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Further, it would have been well within the relative skills of the skilled artisan to routinely adjust the ratio of silicone based defoamer to fatty acid ester, in order to achieve desired and optimal antifoaming properties, etc. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where 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. See MPEP 2144(II)(A).
Regarding claim 7, RHODORSIL 481 is made obvious above and has a dynamic viscosity at 25 deg C of about 4500 mPas, as evidenced by Frisch et al.
With regards to claim 17, where the defoaming composition is added to an aqueous plant protection formulation, the defoaming composition reads on a product, as instantly claimed.
Response to Arguments
Applicants assert that as newly amended, the cited references, alone or in combination, do not teach or suggest the claimed composition.
Respectfully, this argument is not persuasive. The combination above makes obvious a comprising a silicone based defoamer and 3,5,5-trimethylhexyl-3,5,5-trimethylhexanoate, and in ratios as instantly claimed. The examiner notes that 3,5,5-trimethylhexyl-3,5,5-trimethylhexanoate comprises a C9 carboxylic monoacid moiety and an isononyl alcohol moiety, thereby meeting the newly amended claim limitations.
Claims 1, 7, 9, and 14-25, stand rejected under 35 U.S.C. 103 as being unpatentable over Bramati et al (US 20050164884 A1) and PubChem (“3,5,5-Trimethylhexyl 3,5,5-trimethylhexanoate”, 2005, hereinafter referred to as PubChem 1) as applied to claims 1, 7, 9, and 17 above, and further in view of Frisch et al (US 20050266999 A1).
Bramati et al are discussed above and further teach a plant protection formulation comprising 1 wt% of the 99/1 ratio defoamer discussed above (¶ 227). Further, purely arguendo, if the silicone based defoamer of Bramati et al is not in emulsion, the following also applies.
Bramati et al and PubChem 1 do not directly teach an embodiment comprising components (a)-(g) of claims 14-16, 18-25, nor their amounts.
Frisch et al teach preparations for active ingredients in the crop protectant field (agrochemical active ingredients) (¶ 1), comprising: 1% to 50% by weight of water-soluble active crop protectant ingredients (type (a) active ingredients), 0% to 40% by weight of water-insoluble active crop protectant ingredients (type (b) active ingredients), 0% to 50% by weight of organic solvents (preference given to polar organic solvents (¶ 55)), 1% to 80% by weight of nonionic, anionic, cationic and/or zwitterionic surfactants, 0 to 20% by weight of other nonionic, anionic, cationic and/or zwitterionic surfactants, 0 to 30% by weight of customary formulation assistants (i.e., defoamer, emulsifiers, etc.), 0.1 % to 90% by weight of water (claims 1-3 and ¶ 103-112), wherein it is often advantageous to add defoamers, preferably silicone based defoamers, such as RHODORSIL Antifoam 416 or 481, etc. (¶ 94-98). The defoamers can also be used in the form of emulsions, such as ANTIMUSSOL 4459-2, EM SE 39 (Wacker), etc. (¶ 99). Frisch et al also teach a process for producing a crop protectant composition, which comprises mixing components, and if desired, mixing further components present in the formulation with water (claim 8).
Regarding the linear polydimethylsiloxane in emulsion of claim 1, while it appears that Bramati et al teach the linear polydimethylsiloxane is in an emulsion form, even if not, it would have been obvious to substitute linear polydimethylsiloxane defoamers in the form of emulsion for those of Bramati et al, where both are directed to crop protectant compositions comprising a silicone based defoamer.
Regarding the additional limitations of claims 1, 7, 9, and 17, the claims are rejected for the same reasons above as applied to each and every claim limitation.
Regarding claim 14, it would have been obvious to include the defoaming composition of Bramati et al into the crop protectant composition of Frisch et al, where both are drawn to agrochemical compositions, and where Frisch et al teach the addition of defoamers are advantageous.
Regarding the ratio of claims 14 and 15, it would have been obvious to use known ratios of silicone based defoamer to fatty acid ester to those taught to be suitable for antifoam compositions, such as between 0.05/99.95 and 10/90 (i.e., between 1:1999 and 1:9), as taught by Bramati et al, for the same reasons discussed above. See MPEP 2144.05(I).
Regarding the amount of silicone-based defoamer and fatty acid ester of claims 15, 23, and 24, it would have been obvious to use known amounts of the defoamer disclosed by Bramati et al, that are suitable for plant protection formulations, such as 1 wt%, in the formulations of Frisch et al. From the disclosed embodiment of Bramati et al comprising 1 wt% of the defoamer, the ratio disclosed ratio of silicone based defoamer and fatty acid ester is 1/99, resulting in about 0.01 wt% silicone-based defoamer and about 0.99 wt% of fatty acid ester. Accordingly, upon adjusting the ratios to within those ranges instantly claimed, as made obvious above, the resulting wt% of the components will vary. For example, at a ratio of 1:20 of the defoamer present at 1 wt%, the resulting amount of silicone-based defoamer is about 0.05 wt% and the amount of fatty acid ester is about 0.95 wt%, both falling within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the amounts of the additional components of claims 15, 18-22, and 25, it would have been obvious to adjust the amounts of ingredients in the composition, to those amounts taught by Frisch et al. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
With regards to claim 16, it would it would have been obvious to mix the components of the crop protectant formulation, as taught by Frisch et al.
Response to Arguments
Applicants assert that as newly amended, the cited references, alone or in combination, do not teach or suggest the claimed composition.
Respectfully, this argument is not persuasive for the same reasons discussed above. Accordingly, the claims stand rejected for the same reasons above and of record.
Claims 1, 7, 9, and 17, are rejected under 35 U.S.C. 103 as being unpatentable over Bramati et al (US 20050164884 A1) in view of Abribat et al (US 20040235668 A1), as evidenced by PubChem (“3,5,5-Trimethylhexyl 3,5,5-trimethylhexanoate”, 2005, hereinafter referred to as PubChem 1).
Bramati et al are discussed above but do not specifically teach the fatty acid esters instantly claimed, nor a specific embodiment with the ratios instantly claimed.
Arbribat et al teach agrochemical formulations that can be used as plant-protection compositions, where isononyl isononanoate was a known suitable oil component (abs, ¶¶ 10, 17, 45). As evidenced by PubChem 1, isononyl isononanoate is synonymous with 3,5,5-Trimethylhexyl 3,5,5-trimethylhexanoate (see Synonyms). The formulations may further comprise antifoam agents, such as a silicone based antifoam agents (¶ 50).
Regarding the silicone based defoamer of claim 1, it would have been obvious to select a silicone based defoamer that is a linear polydimethylsiloxane, such as RHODORSIL 481, as taught by Bramati et al. Further, while not explicitly stated as being an emulsion, where the linear polydimethylsiloxanes and fatty acid esters are added to an aqueous plant protection formulation, it would be expected that an emulsion would form.
Regarding the fatty acid ester of claims 1 and 9, where Bramati et al teach a broad genus of suitable fatty acid esters discussed above, it would have been obvious to include a known species of fatty acid ester that was known to be suitable in agrochemical formulations that falls within the genus taught by Bramati et al, such as isononyl isononanoate as taught by Abribat et al, where the carboxylic acid and alcohol moiety each comprise 9 carbon atoms.
Regarding the ratio of claim 1, it would have been obvious to adjust the ratio of silicone based defoamer to fatty acid ester to those taught to be suitable for antifoam compositions, such as between 0.05/99.95 and 10/90 (i.e., between 1:1999 and 1:9), as taught by Bramati et al, thereby overlapping the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Further, it would have been well within the relative skills of the skilled artisan to routinely adjust the ratio of silicone based defoamer to fatty acid ester, in order to achieve desired and optimal antifoaming properties, etc. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where 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. See MPEP 2144(II)(A).
Regarding claim 7, RHODORSIL 481 is made obvious above and has a dynamic viscosity at 25 deg C of about 4500 mPas, as evidenced by Frisch et al.
With regards to claim 17, where the defoaming composition is added to an aqueous plant protection formulation, the defoaming composition reads on a product, as instantly claimed.
Claims 1, 7, 9, and 14-25, are rejected under 35 U.S.C. 103 as being unpatentable over Bramati et al (US 20050164884 A1) and Abribat et al (US 20040235668 A1) as applied to claims 1, 7, 9, and 17 above, and further in view of Frisch et al (US 20050266999 A1).
Bramati et al and Abribat et al are discussed above but do not directly teach an embodiment comprising components (a)-(g) of claims 14-16, 18-25, nor their amounts. Further, purely arguendo, if the silicone based defoamer of Bramati et al is not in emulsion, the following also applies.
Frisch et al teach are discussed above.
Regarding the linear polydimethylsiloxane in emulsion of claim 1, while it appears that Bramati et al teach the linear polydimethylsiloxane is in an emulsion form, even if not, it would have been obvious to substitute linear polydimethylsiloxane defoamers in the form of emulsion for those of Bramati et al, where both are directed to crop protectant compositions comprising a silicone based defoamer.
Regarding the additional limitations of claims 1, 7, 9, and 17, the claims are rejected for the same reasons above as applied to each and every claim limitation.
Regarding claim 14, it would have been obvious to include the defoaming composition of Bramati et al and Aribat et al into the crop protectant composition of Frisch et al, where all are drawn to agrochemical compositions, and where Frisch et al teach the addition of defoamers are advantageous.
Regarding the ratio of claims 14 and 15, it would have been obvious to use known ratios of silicone based defoamer to fatty acid ester to those taught to be suitable for antifoam compositions, such as between 0.05/99.95 and 10/90 (i.e., between 1:1999 and 1:9), as taught by Bramati et al, for the same reasons discussed above. See MPEP 2144.05(I).
Regarding the amount of silicone-based defoamer and fatty acid ester of claims 15, 23, and 24, it would have been obvious to use known amounts of the defoamer disclosed by Bramati et al, that are suitable for plant protection formulations, such as 1 wt%, in the formulations of Frisch et al. From the disclosed embodiment of Bramati et al comprising 1 wt% of the defoamer, the ratio disclosed ratio of silicone based defoamer and fatty acid ester is 1/99, resulting in about 0.01 wt% silicone-based defoamer and about 0.99 wt% of fatty acid ester. Accordingly, upon adjusting the ratios to within those ranges instantly claimed, as made obvious above, the resulting wt% of the components will vary. For example, at a ratio of 1:20 of the defoamer present at 1 wt%, the resulting amount of silicone-based defoamer is about 0.05 wt% and the amount of fatty acid ester is about 0.95 wt%, both falling within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding the amounts of the additional components of claims 15, 18-22, and 25, it would have been obvious to adjust the amounts of ingredients in the composition, to those amounts taught by Frisch et al. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
With regards to claim 16, it would it would have been obvious to mix the components of the crop protectant formulation, as taught by Frisch et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600
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