DETAILED ACTION
This Office Action is responsive to the amendment filed on 1/8/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Rejections - 35 USC § 103
Claims 1-5, 7, and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bennis et al, US2019/0343987 (of record).
Bennis discloses a lubricious coating composition comprising a copolymer of sodium acrylate and acrylamide, corresponding to the claimed acrylamide copolymer (A) (for claims 1, 15, 16); a high molecular weight polyvinylpyrrolidone, corresponding to additive (B)(iii) (for claims 1, 15, 16); a low molecular weight polyvinylpyrrolidone, also corresponding to additive (B)(iii) (for claims 1, 15, 16); and a solvent comprising water, corresponding to claimed component (C) (for claims 1, 15, 16) (¶0013-0014, 0071). Bennis further teaches the inclusion of antimicrobial agents (¶0080), corresponding to the claimed agrochemical which is a pesticide (for claims 1, 7, 15, 16). The prior art composition is prepared by combining the components with one another (for claims 10, 11, 13) (¶0071).
Regarding the requirement that the acrylamide copolymer (A) is hydrated: The prior art discloses a composition wherein an acrylamide copolymer is combined with water; it is therefore reasonably expected that the acrylamide copolymer of the composition of Bennis is hydrated (for claims 1, 15, 16).
Regarding the amount of additive: Bennet teaches the prior art composition may contain as little as 1 wt% solids which comprise the high and low molecular weight polyvinylpyrrolidones, the acrylate/acrylamide copolymer, and the crosslinking agent (¶0072). The solids may in turn contain as much as 50 wt% of the acrylate/acrylamide copolymer (¶0061). The sum of the amounts of the high and low molecular weight polyvinylpyrrolidones and the crosslinking agent therefore can be as little as 50 wt% of the solids. Given that the solids can be as little as 1 wt% of the overall composition, an ordinary artisan can therefore calculate that the sum of the amounts of the high and low molecular weight polyvinylpyrrolidones and the crosslinking agent can be as low as 0.5 wt% of the overall composition.
Furthermore, the ratio of total amount of polyvinylpyrrolidones to crosslinking agent may be as low as 0.5:1 (¶0066). Given this ratio, an ordinary artisan can calculate that if the sum of the amount of crosslinking agent (x) and the total amount of polyvinylpyrrolidones (0.5x) is 0.5 wt% of the overall composition (i.e., x + 0.5x = 0.5), an ordinary artisan can calculate that the prior art reads on a composition wherein the overall composition has a crosslinking agent content (x) of about 0.33 wt% and the total amount of polyvinylpyrrolidones is about 0.17 wt%.
Finally, Bennis teaches that the weight ratio of high molecular weight polyvinylpyrrolidone to low molecular weight polyvinylpyrrolidone may be 90:10 (¶0058). Given that 1) the overall coating composition can contain as little as 0.33 wt% total of polyvinylpyrrolidones and 2) that the amount of low molecular weight polyvinylpyrrolidone may be as low as 10% of the total amount of polyvinylpyrrolidones, it is calculated that the low molecular weight polyvinylpyrrolidone may be present in the prior art coating composition in an amount as low as about 0.033 wt%, overlapping the claimed range (for claims 1, 15, 16).
Regarding claims 2-4: The instant claims depend from claim 1 and recite additional limitations regarding recited additive (B)(i) (claim 2) or additive (B)(ii) (claims 3,4). Note, however, that the claims do not contain any language requiring the additive to be either (B)(i) or (B)(ii). The prior art composition therefore corresponds to the claimed invention when the additive is species (B)(iii).
Regarding claim 5: Bennis defines the low molecular weight polyvinylpyrrolidone as having a molecular weight in the range of 2000 to 95000 (¶0055); note that this range is entirely encompassed by the claimed range.
Regarding claim 9: As noted above, both the high molecular weight polyvinylpyrrolidone and the low molecular weight polyvinylpyrrolidone of the prior art composition fall within the scope of claimed additive (B)(iii). The prior art composition therefore comprises more than one additive (B) as required.
Bennis does not particularly point to a process comprising the steps of combining recited components (A), (B), and (C) to form a composition, followed by combining said composition with an aqueous solution of acrylamide (co)polymer or a composition having at least one additive in an amount of 0.01 to 0.05 wt%.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). 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; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
As discussed above, the prior art teaches the production of a composition which can comprise low molecular weight polyvinylpyrrolidone in an amount as low as 0.033 wt%, overlapping the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition wherein the low molecular weight polyvinylpyrrolidone is present in an amount in the claimed range (for claims 1, 15, 16).
Regarding the claimed process (for claims 11, 12): As discussed earlier in this Action, Bennis discloses a composition comprising the same components as the product obtained from the recited process. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the teachings of Bennis by combining the ingredients in the required order, with the reasonable expectation of obtaining a final aqueous composition suitable for use as a lubricious coating.
Regarding the claimed reduced shear effects (for claim 10), rate of droplet size distribution change (for claim 12), stabilization of the interaction of the long strands of the polyacrylamide (for claim 13) and slower rate of droplet size distribution increase (for claim 14): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). The burden is therefore shifted to the applicant to prove that the properties used to define the interpolymers of the instant application would not be present in the block copolymers disclosed by Turner.
As discussed in the previous paragraphs, Bennis renders obvious a composition comprising the same components in the same amounts as used to define the claimed invention. As the composition rendered obvious by the prior art appears to be identical to the claimed composition, it is reasonably expected that its properties would be the same as those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed invention would not be present in the prior art.
Response to Arguments
Applicant's arguments filed 1/8/2026 have been fully considered but they are not persuasive.
Applicant argues that Bennis does not teach the claimed composition comprising an agrochemical, stating that the prior art composition comprises a therapeutic agent for use in treating the human body instead. In response, applicant’s specification teaches that the term agrochemical reads on the use of pesticides (specification ¶0003), and that the term “pesticide” in turn includes compounds having antibacterial activity (see specification ¶0005) and fungicides (specification ¶0003). Bennis specifically teaches that the prior art composition may comprise antibiotic agents (¶0080); the term “antibiotic” refers to compounds that kill bacteria or inhibit their growth. Furthermore, Bennis teaches that the prior art composition may comprise antimicrobial agents (¶0080); the term “antimicrobial” is used to broadly refer to compounds that kill or inhibit the growth of microorganisms including bacteria, viruses, and fungi. Bennis therefore teaches the inclusion of antibiotics and/or antimicrobial agents that perform the function(s) disclosed in applicant’s specification for the claimed agrochemical.
In response to applicant's argument that the prior art is directed towards a different use, a recitation of the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As discussed in the previous paragraph, Bennis discloses the inclusion of antibiotic and/or antimicrobial agents that are capable of performing the same function-i.e., killing or inhibiting the growth of microbes such as bacteria and fungi- as the claimed agrochemical. The burden is therefore shifted to applicant to provide evidence that the prior art compounds would not be capable of performing this function.
To the extent that applicant argues that Bennis is directed towards a different field than the disclosed invention, it is noted that the features upon which applicant relies (i.e., work in an agricultural area) 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). As written, the claimed invention is merely a composition comprising the recited components and a method of making said composition. The claimed invention do not recite any steps requiring that the composition be used in a specific manner. The rejection is therefore maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765