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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/16/2026 has been entered.
Status of the Claims
This action is in response to papers filed 05/26/2026 in which claims 7, 16-18, 26, and 28 were canceled; claims 23-25 were withdrawn; and claims 1, 8, 10, 29, and 31 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-6, 8-15, 19-22, 27, and 29-31 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Objections
Claim Objections
Claims 2-6, 8-15, 19-22, 27, and 30-31 are objected to because of the following informalities: please amend all “the composition” to “the agricultural composition” so that there is proper antecedent basis to an agricultural composition recited in the preamble of claim 1. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: please add an “and” after “a glycerol derivative” because “optionally a surfactant” is the last component in the drift control component. Appropriate correction is required.
Claims 5, 6, 8 and 10 are objected to because of the following informalities: please amend “the water-soluble polymer” to the incompletely hydrated water-soluble polymer” so that there is proper antecedent basis to an incompletely hydrated water-soluble polymer recited in claim 1. Appropriate correction is required.
Claim Interpretation
The terms “optionally” in claim 1 are interpreted as not required in the composition. For rejection purposes, the components/elements following the term “optionally” in claim 1 will be interpreted as components/elements that are made optional or not required, and thereby not part of the claimed agricultural composition. Thus, “polyacrylate, ethylenediaminetetraacetic acid, dipotassium hydrogenphosphate (K2HPO₄), potassium dihydrogenphosphate (KH₂PO₄), any salt thereof, or a combination thereof” as recited in claim 1 is made optional and interpreted as not part of the water conditioning component. Likewise, “a pesticide active ingredient” as recited in claim 1 is made optional and interpreted as not part of the agricultural composition.
New Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8-15, 19-22, 27, and 29-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces new matter as the claim recites the limitation: “an agricultural composition consisting of …” There is no support in the specification for the agricultural composition to consist of only the recited elements in claim 1.
It is noted that paragraphs [000145] and [000146], as well as, Table 1 of the specification provides for a formulation which contains a drift control component (water, hydroxypropyl guar, suspending agent, PEG, and alcohol ethoxylate surfactant) and a water conditioning component (DI water, tripotassium citrate monohydrate, choline chloride, and citric acid solution). However, the formulation from Table 1 also contains silicone based antifoam. Thus, there is no support anywhere in the specification for the agricultural composition to “consist of” only the components recited in claim 1, as the formulation disclosed in Table 1 of the specification contains additional ingredient separate from the drift control component and the water conditioning component. As such, Applicant does not have possession of the claimed “an agricultural composition consisting of …”
MPEP §2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments.
Claims 2-6, 8-15, 19-22, 27, and 29-31 are also rejected as they dependent directly or indirectly from claim 1, thereby also containing the new matter material.
As a result, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 1 as amended at the time of filing of the instant application.
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 8 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.
Regarding claim 8, the limitation of “the water-soluble polymer enhances delivery of the pesticide active ingredient from the liquid medium to a target substrate” renders claim 8 indefinite because claim 8 is dependent from claim 1, and as discussed in the Claim Interpretation section above, the pesticide active ingredient was interpreted as not part of the agricultural composition. Thus, the agricultural composition does not contain a pesticide active ingredient as it was optional. As such, it is not clear how the water-soluble polymer can enhance delivery of the pesticide active ingredient from the liquid medium to a target substrate when the pesticide active ingredient is not part/present in the agricultural composition of claim 1.
As a result, claim 8 does not clearly set forth the metes and bounds of patent protection desired.
Claim Rejections - 35 USC § 112
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 29-31 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.
Regarding claims 29-31, the recitation of “comprising” in said claims 29-31 fails to further limit the subject matter of claim 1 because claim 1 have limited to agricultural composition to “consisting of” and thus, “comprising” language in claims 29-31 have broaden from the scope of agricultural composition of claim 1.
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.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 103
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) 1-6, 8-15, 19-22, and 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over McKnight et al (7 January 2016; US 2016/0000070 A1) in view of Di Modugno et al (11 August 2016; US 2016/0227765 A1).
Regarding claim 1, McKnight teaches agricultural composition containing an incomplete hydrated water-soluble polymer suspended in a liquid medium, a suspending agent in an amount effective to impart shear thinning properties to the composition, a glycol or glycerol, a surfactant and choline chloride (abstract; [0003], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0053], [0055]-[0111], [0157]-[0175]; clams 1-10 and 15). McKnight teaches the composition further contains potassium phosphate (dibasic) and potassium hydrogen phosphate ([0008], [0024], [0029], [0058] and [0166]). It is noted that the hydrated water-soluble polymer suspended in a liquid medium, a suspending agent, a glycol or glycerol, and a surfactant meets the claimed “a drift control component.” It is also noted that the choline chloride meets the claimed “a water conditioning component.”
McKnight teaches the agricultural composition contains 10 pbw to 40 pbw of the liquid medium, 15 pbw to 60 pbw of the incomplete hydrated water-soluble polymer, 0.1 pbw to 10 pbw of the suspending agent, 2 pbw to 40 pbw of glycol or glycerol, and 20 pbw to 60 pbw of choline chloride ([0024]-[0025], [0055]-[0111], [0164]-[0175]). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amounts of liquid medium, incomplete hydrated water-soluble polymer, suspending agent, glycol or glycerol, and water conditioning component in the agricultural composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
However, McKnight does not teach the potassium citrate and citric acid of claim 1.
Regarding the potassium citrate and citric acid of claim 1, Di Modugno teaches a stable aqueous agrochemical adjuvant concentrate with superior water conditioning properties containing a mixture of potassium salts including tri-potassium citrate (abstract; [0017]-[0037] and [0054]-[0082]; Table 1; claims 1-8). Di Modugno teaches the aqueous adjuvant concentrate further contains an anti-drift agent, a suspending agent, surfactants and a pH adjuster such as citric acid ([0020]-[0037]). Di Modugno teaches the aqueous agrochemical adjuvant concentrate contains about 15 wt% to about 45 wt% of the mixture of potassium salts containing from 1 to 4 part by weight (pbw) of di-potassium phosphate; from 0.5 to 1.5 pbw of potassium nitrate; and from 0.5 to 1.5 pbw of tri-potassium citrate ([0017]-[0018] and [0052]-[0060]; claim 1). Di Modugno teaches the aqueous agrochemical adjuvant concentrate contains 5 wt% of a 50 wt% water solution of citric acid ([0064]-[0082]; Table 1).
It would have been obvious to one of ordinary skill in the art to include the citric acid and the mixture of potassium salts including tri-potassium citrate of Di Modugno to the agricultural composition of McKnight, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because McKnight and Di Modugno are commonly drawn to an agriculture composition containing an anti-drift component, a suspending agent, a surfactant and water conditioning component, and Di Modugno provided the guidance for including citric acid and a mixture of potassium salts including tri-potassium citrate to the agricultural composition of McKnight, as the addition of citric acid adjust the pH of the agriculture composition to a desired pH from 7.0 to 8.0, and the mixture of potassium salts including tri-potassium citrate provides a resultant stable agricultural composition with superior water conditioning properties (Di Modugno: abstract; [0016]-[0017], [0035], and [0040]), which also are the objectives of McKnight to provide an agricultural composition with storage stability and water conditioning properties (McKnight: [0004], [0192] and [0193]). Thus, "[i]t 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).
With respect to claimed property of “the composition is initially flowable and exhibits a viscosity ranging from 175 cP to less than 4000 cP and is flowable after storage for 1 to 2 weeks at temperatures ranging from room temperature of 20°C to 54°C” as recited in claim 1, it is noted McKnight teaches that the agriculture composition containing a suspending agent is flowable, as the composition exhibits non-Newtonian shear thinning viscosity and the composition also has good storage stability for 3 months at room temperature (McKnight: abstract; [0003], [0006]-[0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Furthermore, like McKnight, Di Modugno also teaches a flowable agriculture composition containing suspending agent (Di Modugno: Abstract; [0002], [0017]-[0037], [0040], [0043], [0059], [0051], [0054]-[0060] and [0091]; Table 1; claims 1-8), wherein Di Modugno provided the guidance for including citric acid and a mixture of potassium salts including tri-potassium citrate to the agriculture composition of McKnight so as to provide a resultant agriculture composition with good storage stability and superior water condition properties (see 103 rejection, pages 5-6 of this office action). Di Modugno showed in Table 1 that the agriculture composition containing suspending agent (ATTAGEL 50), citric acid and the potassium salts, has a low viscosity of 2400 cP and is storage stable at freeze & thaw temperatures (see Example 2). Thus, it would have been obvious to one of ordinary skill in the art that the claimed property of “the composition is initially flowable and exhibits a viscosity ranging from 175 cP to less than 4000 cP and is flowable after storage for 1 to 2 weeks at temperatures ranging from room temperature of 20°C to 54°C” would have been implicit in the agriculture composition of McKnight in view of Di Modugno.
Regarding claims 2 and 3, McKnight teaches the composition is flowable and exhibit a viscosity of less than 1 Pa·s at a shear rate of greater than or equal 10s-1 ([0040] and [0045]-[0049]).
Regarding claim 4, McKnight teaches the suspending agent is fumed silica ([0010], [0016], [0053], [0136]-[0139] and [0149] and claim 6).
Regarding claims 5 and 6, McKnight teaches the water soluble polymer is guar or derivatized guar such as carboxymethyl guar, carboxymethylhydroxypropyl guar, cationic hydroxypropyl guar, hydroxyethyl guar, hydroxypropyl guar and hydroxybutyl guar ([0112], [0118] and [0126]).
Regarding claim 8, McKnight teaches the composition contains a pesticide active ingredient and the water-soluble polymer enhances delivery of the pesticide active ingredient from the liquid medium to a target substrate ([0013] and claim 8).
Regarding claim 9, McKnight teaches the liquid medium is water or a mixture of water and immiscible organic liquid, and the composition is in the form of an emulsion, a microemulsion, or a suspoemulsion ([0015] and [0032]).
Regarding claim 10, McKnight teaches the water-soluble polymer is selected from polyacrylamide polymers, non-derivatized guar polymers, derivatized guar polymers, and mixtures thereof, and the suspending agent is selected from fumed silicas, inorganic colloidal or colloid-forming particles, rheology modifier polymers, water-soluble polysaccharide polymers other than the non-derivatized or derivatized guar polymer, and mixtures thereof ([0016], [0098] and [0104]).
Regarding claim 11, McKnight teaches the surfactant is selected from alkoxylated alcohols, alkyl betaine, alkylamidopropyl betaines, and alkyl sultaines ([0161]).
Regarding claims 12-14, Di Modugno teaches the surfactant is selected from ethoxylated (4-8 EO) C12-C14 natural alcohol and sodium dioctyl sulfosuccinate ([0021]-[0026]).
Regarding claim 15, McKnight teaches the surfactant functions to provide biological activity in an end use application such as pharmaceutical or pesticide composition ([0060]).
Regarding claim 19, McKnight teaches the suspending agent is xanthan gum or rheozan ([0112], [0119] and [0152]).
Regarding claim 20, McKnight teaches the suspending agent is a mixture of fumed silica and clay ([0095]).
Regarding claim 21, McKnight teaches the suspending agent is a hydrophobic associative rheology modifier ([0153]).
Regarding claim 22, McKnight teaches the composition is free or substantially free of ammonium-containing compounds ([0009] and [0030]).
Regarding claims 29-31, as discussed above, McKnight teaches the agricultural composition contains 10 pbw to 40 pbw of the liquid medium, 15 pbw to 60 pbw of the incomplete hydrated water-soluble polymer, 0.1 pbw to 10 pbw of the suspending agent, 2 pbw to 40 pbw of glycol or glycerol, and 20 pbw to 60 pbw of choline chloride ([0024]-[0025], [0055]-[0111], [0164]-[0175]). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amounts of liquid medium, incomplete hydrated water-soluble polymer, glycol or glycerol, and water conditioning component in the agricultural composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over McKnight et al (7 January 2016; US 2016/0000070 A1) in view of Di Modugno et al (11 August 2016; US 2016/0227765 A1), as applied to claim 1 above, and further in view of Goldblum et al (23 June 2016; US 2016/0174552 A1).
The composition of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 27, McKnight teaches the agricultural composition contains a suspending agent, attapulgite, a glycol or glycerol, and ethoxylate surfactant, wherein the suspending agent comprises a rheology modify polymer (abstract; [0003], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0053], [0068]-[0095], [0099], [0105], [0150], [0152]-[0154], [0157]-[0165] and [0172]; clams 1-10 and 15).
Goldblum teaches agriculture composition containing attapulgite, polyethylene glycol, ethoxylated surfactant and a viscosity modulating agent such as diutan gum, wherein the composition is pourable, pumpable or sprayable. ([0005], [0009]-[0010], [0015]-,0021], [0033], [0037]-[0039], [0041]-[0042], [0083], [0100], [0120]-[0213], [0206], [0216], [0232]-[0262], [0278], [0293]-[0304]; claims 8, 37, 61, 69 and 126).
It would have been obvious to one of ordinary skill in the art to include diutan gum as one of the suspending agents and polyethylene glycol as the glycol in the agricultural composition of McKnight, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Goldblum provided the guidance to do so by teaching that aside from the glycol (e.g., glycerol, ethylene glycol and propylene glycol) disclosed in McKnight, polyethylene glycol is also a suitable glycol for incorporation in an agricultural composition (Goldblum: [0015], [0018], [0236], [0278]; claim 27). Furthermore, Goldblum teaches that aside from the rheology modifying polymer (e.g., cellulose polymers, acrylate, an acrylate copolymer, a carrageenan, guar gum, hydroxypropyl guar, and xanthan gum) diutan gum is also a suitable viscosity modulating agent in the agricultural composition (Goldblum: [0020], [0039], [0042], [0261]; claims 69 and 148). Thus, an ordinary artisan provided the guidance from Goldblum would have reasonably motivation to select and use polyethylene glycol as the glycol and diutan gum as one of the suspending agents of McKnight, and achieve Applicant’s claimed invention with reasonable expectation because [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Di Modugno teaches using 15-45 wt% of the composition being mixed salts of potassium (di-potassium phosphate, potassium nitrate and tri-potassium citrate), as well as citric acid, which, when combined with the teachings of McKnight, no longer reads on the agricultural composition, as amended, as it excludes the potassium nitrate of Di Modugno.” (Remarks, page 11).
In response, the Examiner disagrees. Amended claim 1 limiting the agricultural composition to “consisting of” does not remove Di Modugno as prior art, as the obviousness analysis was to include the citric acid and the mixture of potassium salts including tri-potassium citrate of Di Modugno to the agricultural composition of McKnight. See 103 rejection, pages 10-12 of this office action. Furthermore, amended claim 1 does not exclude the addition of “potassium nitrate,” as the water conditional component is opening ended due to “comprising” and thus, allows for additional ingredients/elements not recited including the potassium nitrate. Thus, the combined teachings of McKnight and Di Modugno remain proper to render obvious Applicant’s claimed invention.
Applicant argues:
“assuming arguendo, that the amounts provided in the comparative example
were not identical to Di Modugno’s examples and should have instead been 12%, and 4% for each of the tri-potassium citrate and potassium nitrate, the higher amounts actually provided above still fall within the scope of Modugno’s teaching as a whole since the reference teaches from 15 to 45 wt% of the potassium salt mixture, which includes from 1-4 pbw of the dipotassium phosphate, 0.5-1.5 pbw of the potassium nitrate and 0.5-1.5 pbw of the tripotassium citrate. Thus, Di Modugno still teaches higher amounts of mixtures of the potassium salts while maintaining the ratio of the individual
potassium salts within the mixture. Thus, Example 1 of Modugno’s 25 g of a mixture of potassium salts could have been up to a 45 g mixture, that includes up to 27 wt% of the potassium phosphate, and up to 9 wt% each of the potassium nitrate and the tri-potassium citrate in consideration of the Di Modugno’s taught ratio.
” (Remarks, pages 12-13).
In response, the Examiner disagrees. Even in light of “the amounts provided in the comparative example were not identical to Di Modugno’s examples and should have instead been 12%, and 4% for each of the tri-potassium citrate and potassium nitrate, the higher amounts actually provided above still fall within the scope of Modugno’s teaching as a whole since the reference teaches from 15 to 45 wt% of the potassium salt mixture, which includes from 1-4 pbw of the dipotassium phosphate, 0.5-1.5 pbw of the potassium nitrate and 0.5-1.5 pbw of the tripotassium citrate,” as alleged by Applicant, the comparative examples from Delcaration-3 filed on 12/15/2025, remained insufficient to obviate the standing 103 rejection over McKnight and Di Modugno for at least the reasons previously discussed.
As previously discussed, Applicant alleged and the Declarant declared that Sample #1 (25SKE25-01) as shown in the Table on page 2 of Declaration-3 as being representative of Di Modugno’s inventive examples, is misplaced because Sample 25SKE25-01, for at least the reason that neither Example 1 nor Example 2 of Di Modugno contains Kelcovis DG (Diutan gum). Thus, it is maintained that Applicant’s comparative data in Declaration-3 did not adequately compared to the closest prior art of Di Modugno (comparing to Examples 1 and 2 in Table 1 of Di Modugno. See MPEP §716.02.
As previously discussed, it is maintained that Sample 25SKE25-02 on page 2 of Declaration-3 appeared to be a formulation that reads on the claimed invention of claim 1, as the components and amounts of each components reads on an embodiment of the agriculture composition as recited in claim 1. Thus, this is preponderance of evidence to show that Applicant’s claimed invention as recited in claim 1 remained not adequately commensurate in scope with Applicant’s alleged formulation of 21SKE-15-01 in the Declaration-1 (previously filed 09/24/2021) that was used for showing the alleged unexpected results, as Sample 25SKE25-02 on page 2 from Declaration-3 showed a formulation within the broad scope of claim 1, and said Sample 25SKE25-02 was not stable or flowable. Thus, to the extent Applicant’s attempted to amend claim 1 in the recently filed claim set so as it is commensurate in scope with the alleged unexpected results, said amended claim 1 remained very broad to encompass formulations that was not was not stable and flowable, as evidenced by Sample 25SKE25-02 on page 2 from Declaration-3. As previously discussed, it is reiterated that MPEP §716.02(d) states claim 1 of the instant invention must be commensurate in scope with the evidence of unexpected results.
As previously discussed, it is reiterated that, contrary to Applicant’s Declarations of record, McKnight taught that the agriculture composition containing choline chloride exhibited good storage stability at an elevated storage temperature of up to 54ºC and preferably 45ºC, has low viscosity, is pourable and pumpable (in other words, flowable) (McKnight: abstract; [0003], [0006]-[0007], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Likewise, Di Modugno also taught that the agriculture composition containing potassium citrate and citric acid exhibited superior water conditioning properties, is stable, has low viscosity (i.e., 2400 cP), and sprayable (thereby is flowable) (Di Modugno: abstract; [0017]-[0037], [0040], [0051], and [0054]-[0060]; Table 1; claims 1-8).
Applicant argues:
“The Examiner further alleges that because the comparative example 25SKE25-01 includes diutan gum (Kelcovis DG), and Di Modugno does not, the example is not a prior art comparison. Again, Applicant respectfully disagrees and notes that MPEP § 716.02 does not outline a requirement that the comparative example be identical to the closest prior. Rather, the comparative compositions may be a direct or indirect comparison. See MPEP§ 716.02(b) III.
Further, Di Modugno teaches that use of suspending agents which may include any suitable kind but does not teach or suggest a specific amount of the suspending agent. Exemplified amounts of the suspending agent include 0.2-0.3 wt%, whereas the comparative examples from Declaration-3 use an even lower amount of 0.03 wt%. Thus, there is no indication that the type or amount of the suspending agent of Di Modugno is critical. Therefore, the addition of the diutan gum in the comparative example does not undermine the teachings of Di Modugno. Rather, the comparative example 25SKE25-01 outweighs the evidence of obviousness. Additionally, the addition of the diutan gum in comparative example 25SKE25-01 provides a side-by-side comparison of when Di Modugno’s potassium salt mixture is used with the diutan gum versus the use of the diutan gum in the inventive example.” (Remarks, pages 14-15).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that Applicant alleged and the Declarant declared that Sample #1 (25SKE25-01) as shown in the Table on page 2 of Declaration-3 as being representative of Di Modugno’s inventive examples, is misplaced because Sample 25SKE25-01, for at least the reason that neither Example 1 nor Example 2 of Di Modugno contains Kelcovis DG (Diutan gum). Thus, Applicant’s comparative data in Declaration-3 did not adequately compared to the closest prior art of Di Modugno (comparing to Examples 1 and 2 in Table 1 of Di Modugno. See MPEP §716.02.
It is noted that the MPEP§ 716.02(b) III does not support Applicant’s position in that the comparative examples in the Declaration-3 is not a considered as an indirect comparison in accordance to MPEP§ 716.02(b) III. This is because the two case laws: In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) that were cited as examples of indirect comparative testing are not pertinent to the issue of the claimed invention, as said case laws are drawn to using derivatives of a compound (instead of the exact compound of the prior art) and thus, differed from the issue with the claimed invention and the closest prior art of Di Modugno. The issue of the comparative examples in Declaration-3 is that neither Example 1 nor Example 2 of Di Modugno contains Kelcovis DG (Diutan gum). Diutan gum is not the same as Attagel 50 (attapulgite) used in the Examples of Di Modugno, much less Diutan gum is a derivative of attapulgite. They are two completely different biopolymers. Applicant alleged that “there is no indication that the type or amount of the suspending agent of Di Modugno is critical.” However, Attagel 50 (attapulgite) is a critical component required in the Examples 1 and 2 of Di Modugno, and Applicant have not shown by objective evidence that the type or amount of the suspending agent of Di Modugno not critical, and thus, is merely providing an argument of counsel. Thus, Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) .
As such, as discussed above, it is maintained that Applicant’s comparative data in Declaration-3 did not adequately compared to the closest prior art of Di Modugno (comparing to Examples 1 and 2 in Table 1 of Di Modugno), thereby said comparative evidence are insufficient to obviate the standing 103 rejection over the combined teachings McKnight and Di Modugno.
Applicant argues:
“25SKE25-02 from the Declaration-3 is a composition the explicitly combines McKnight's teachings with the mixture of potassium salts in Di Modugno. Thus, 25SKE25-02 represents a composition that is commensurate with the Examiner's proposed modification - McKnight modified with the potassium salts of Di Modugno. Further, the comparative example 25SKE25-02 from Declaration-3 include potassium
nitrate, whereas the inventive example from Declaration-1 does not. Thus, in view of the amendments filed herewith, which exclude the potassium nitrate from the agricultural composition, and the data of record, the comparative examples which include the potassium nitrate are not in scope with the claimed composition.” (Remark, pages 15-16).
In response, the Examiner disagrees. As previously discussed and discussed above, the closest prior art for comparison was Di Modugno because Applicant’s focused was with the mixture of potassium salts of Di Modugno. As discussed above, it is maintained that Applicant’s comparative data in Declaration-3 did not adequately compared to the closest prior art of Di Modugno (comparing to Examples 1 and 2 in Table 1 of Di Modugno, thereby said comparative evidence are insufficient to obviate the standing 103 rejection over the combined teachings McKnight and Di Modugno.
Furthermore, the commensurate in scope issue is to Applicant’s claimed invention, and not to “commensurate with the Examiner's proposed modification,” as allegedly focused by Applicant. As previously discussed and discussed above, Sample 25SKE25-02 on page 2 of Declaration-3 appeared to be a formulation that reads on the claimed invention of claim 1, as the components and amounts of each components reads on an embodiment of the agriculture composition as recited in claim 1. Thus, this is preponderance of evidence to show that Applicant’s claimed invention as recited in claim 1 remained not adequately commensurate in scope with Applicant’s alleged formulation of 21SKE-15-01 in the Declaration-1 (previously filed 09/24/2021) that was used for showing the alleged unexpected results, as Sample 25SKE25-02 on page 2 from Declaration-3 showed a formulation within the broad scope of claim 1, and said Sample 25SKE25-02 was not stable or flowable. Thus, claim 1 remained broad to encompassed agricultural compositions that would not be stable or flowable, as evidenced by Sample 25SKE25-02 Declaration-3. Another example (among others) that Applicant’s claim 1 is not commensurate in scope with the formulation of 21SKE-15-01 from Declaration-1 is that the formulation of 21SKE-15-01 used particularly water as the liquid medium, as well as, require the presence of particularly alcohol ethoxylate surfactant as the surfactant. Claim 1 recites generically liquid medium and does not require the presence of alcohol ethoxylate surfactant. As such, there is no predictability from Applicant’s evidence of record if an agricultural composition that uses hydrocarbon solution or an alcoholic solution as the liquid medium and no surfactant, which is an agricultural composition within the broad breadth of claim 1 would function to the same extent as formulation of 21SKE-15-01 in the Declaration-1 with respect to stability and flowability.
Applicant argues that “the amendments filed herewith, which exclude the potassium nitrate from the agricultural composition.” However, this is also another example that claim 1 is not adequately commensurate in scope with formulation of 21SKE-15-01 in the Declaration-1. This is because as discussed above, amended claim 1 does not exclude the addition of “potassium nitrate,” as the water conditional component is opening ended due to “comprising” and thus, allows for additional ingredients/elements not recited including the potassium nitrate. Thus, claim 1 as currently presented remained broad and does not exclude the addition of ingredients/elements not recited including the potassium nitrate.
Accordingly, it is reiterated that MPEP §716.02(d) states that claim 1 of the instant invention must be commensurate in scope with the formulation of 21SKE-15-01 that was used for showing evidence of unexpected results.
Applicant argues:
“With the scope of the claims and the explanation set forth above, Applicant maintains that Sample #1 (25SKE25-01) from Declaration-3 uses Di Modugno's amount of potassium salts and in their relative proportions, yet forms a viscous gel that is not flowable and has a viscosity greater than 4000 cP. In view of Sample #1 in Declaration-3, which is representative of Di Modugno’s inventive examples, there would not have been a reasonable expectation of success in forming the instantly claimed composition from the teachings of McKnight and Di Modugno, especially since Di Modugno requires potassium nitrate. Thus, Di Modugno would not provide the skilled person willing to formulate low viscosity compositions, with motivation to combine the teaching of McKnight with Di Modugno.” (Remarks, page 16, 1st paragraph).
In response, the Examiner disagrees. As discussed above, the Sample #1 (25SKE25-01) from Declaration-3 and results shown therein are not sufficient to obviate the standing over the combined teachings of McKnight and Di Modugno for the reasons discussed above on pages 17-23 of this office action, said pages being incorporated herein in its entirety.
Furthermore, as discussed above, it is reiterated that, contrary to Applicant’s Declarations of record, McKnight taught that the agriculture composition containing choline chloride exhibited good storage stability at an elevated storage temperature of up to 54ºC and preferably 45ºC, has low viscosity, is pourable and pumpable (in other words, flowable) (McKnight: abstract; [0003], [0006]-[0007], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Likewise, Di Modugno also taught that the agriculture composition containing potassium citrate and citric acid exhibited superior water conditioning properties, is stable, has low viscosity (i.e., 2400 cP), and sprayable (thereby is flowable) (Di Modugno: abstract; [0017]-[0037], [0040], [0051], and [0054]-[0060]; Table 1; claims 1-8).
Applicant argues:
“Assuming arguendo, that a person of ordinary skill in the art were to combine the teachings of McKnight with Di Modugno, Applicant believes that a person of ordinary skill in the art would not have a reasonable expectation of success in arriving at the instantly claimed composition. As shown in the Declaration-3, Sample 25SKE25-02 demonstrates that the skilled person following the teaching of the prior art would never have reached the instantly claimed composition and its required properties. In particular, Sample 25SKE25-02 clearly demonstrates that the strict combination of McKnight's choline chloride with Di Modugno potassium salts leads to compositions that are not suitable for agricultural applications. As shown in 25SKE25-02, prepared compositions
comprising the same drift control component as the one used in the examples of the pending application, while further including the mixed potassium salts of Di Modugno (instead of potassium citrate, taken alone, as claimed) were prepared. However, in the two formulations: one with choline chloride (Sample 25SKE25-02), and one without choline chloride (Sample 25SKE25-01), it was observed that the initial viscosity and appearance of the obtained formulations are not stable (phase separation) and are not flowable. Particularly, Sample 25SKE25-02 results in a composition that is
non-homogenous with an applesauce like consistency, and experienced greater than 30% separation. Thus, Declaration-3 sample 25SKE25-02 clearly demonstrates that the strict combination of McKnight and Di Modugno leads to unstable and non-flowable compositions that are not suitable for agricultural applications.” (Remarks, pages 16-17).
In response, the Examiner disagrees. As discussed above, comparative evidence shown from Sample 25SKE25-02 from Declaration-3 was not persuasive and insufficient to obviate the 103 rejection over the combined teachings of McKnight and Di Modugno because Sample 25SKE25-02 from Declaration-3 clearly undermines Applicant’s own claimed invention, as comparative Sample 25SKE25-02 is an agricultural formulation within the broad breadth of Applicant’s claim 1. As discussed above, Sample 25SKE25-02 on page 2 of Declaration-3 appeared to be a formulation that reads on the claimed invention of claim 1, as the components and amounts of each components reads on an embodiment of the agriculture composition as recited in claim 1. Thus, this is preponderance of evidence to show that Applicant’s claimed invention as recited in claim 1 remained not adequately commensurate in scope with Applicant’s alleged formulation of 21SKE-15-01 in the Declaration-1 (previously filed 09/24/2021) that was used for showing the alleged unexpected results, as Sample 25SKE25-02 Declaration-3 showed a formulation within the broad scope of claim 1, and said Sample 25SKE25-02 was not stable or flowable.
As discussed above, it is reiterated that, contrary to Applicant’s Declarations of record, McKnight taught that the agriculture composition containing choline chloride exhibited good storage stability at an elevated storage temperature of up to 54ºC and preferably 45ºC, has low viscosity, is pourable and pumpable (in other words, flowable) (McKnight: abstract; [0003], [0006]-[0007], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Likewise, Di Modugno also taught that the agriculture composition containing potassium citrate and citric acid exhibited superior water conditioning properties, is stable, has low viscosity (i.e., 2400 cP), and sprayable (thereby is flowable) (Di Modugno: abstract; [0017]-[0037], [0040], [0051], and [0054]-[0060]; Table 1; claims 1-8).
Applicant argues:
“the combination of citric acid and potassium citrate with the incompletely
hydrated water-soluble polymer, results in a composition that is not flowable. Applicant has demonstrated that the combination of the suspending agent with both the citric acid and an increased amount of tri-potassium citrate relative to Di Modugno, in addition to an incompletely hydrated water- soluble polymer does not result in a stable composition with superior water conditioning properties. This is shown in comparative example 21SKE-15-05 of the Declaration filed on September 24, 2021 - Declaration-1 reproduced for the Examiner's convenience below. The same can be said for the
incorporation of choline chloride alone with the incompletely hydrated water-soluble polymer (21SKE-15-04), which also does not form a flowable composition and results in an initial viscosity greater than 4000 cP.” (Remarks, page 17, last paragraph).
In response, the Examiner disagrees. As previously discussed, Applicant’s alleged evidence of unexpected results shown the “Subramanian Kesavan” Declaration under 37 CFR 1.132 filed 09/24/2021 (hereafter as Declaration-1) remain not persuasive to obviate the standing 103 rejection as set forth in this office action for the reasons discussed pages 12-14 of the Final Rejection dated 09/19/2023, said reasons being incorporated herein in its entirety.
Furthermore, Applicant’s argument focusing on the amounts of citric acid and potassium citrate are not pertinent the claimed invention or the obviousness analysis in the 103 rejection because claim 1 does not require any particular concentrations for citric acid and potassium citrate. Rather, claim 1 recites broadly from 20 to 80 pbw a water conditioning component comprising choline chloride, potassium citrate, and citric acid, and any salt thereof, with not specificity to the concentrations of citric acid and potassium citrate.
As discussed above, it is reiterated that Applicant’s alleged evidence of unexpected results from the Declarations of record are not persuasive evidence of nonobviousness because contrary to Applicant’s Declarations of record, McKnight taught that the agriculture composition containing choline chloride exhibited good storage stability at an elevated storage temperature of up to 54ºC and preferably 45ºC, has low viscosity, is pourable and pumpable (in other words, flowable) (McKnight: abstract; [0003], [0006]-[0007], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Likewise, Di Modugno also taught that the agriculture composition containing potassium citrate and citric acid exhibited superior water conditioning properties, is stable, has low viscosity (i.e., 2400 cP), and sprayable (thereby is flowable) (Di Modugno: abstract; [0017]-[0037], [0040], [0051], and [0054]-[0060]; Table 1; claims 1-8).
Accordingly, it is maintained that the end use composition of McKnight that is flowable/pumpable/sprayable is in diluted form (McKnight: [0169], [0187], and [0190]), just as the end use composition of Di Modugno is in diluted form (Di Modugno: Abstract; [0002], [0018], [0043], [0049], [0051], and [0091]). Accordingly, McKnight and Di Modugno are sufficiently combined to render obvious Applicant’s claimed invention.
Applicant argues:
“individual components when used alone do not prove to be effective water conditioners in agricultural compositions and/or generate flowable compositions (see examples 21SKE-02, 21SKE-03 and 21-SKE-04 in the Declaration-1). Even when combinations of the two out of the three components are paired as shown in 21SKE-05, 21SKE-06 and 21SKE-07, the compositions fail to yield compositions that are flowable. Thus, a person of ordinary skill in the art would not have had a reason to believe that combining these features with the incompletely hydrated water-soluble polymer of McKnight would result in a composition that is flowable and stable when the components alone and in pairs fail to demonstrate those properties. This is further emphasized with the prior art comparison data provided in Declaration-3.” (Remarks, page 18, bottom paragraph to page 19).
In response, the Examiner disagrees. As discussed above, the Declaration-3 and evidence provided therein , are considered, but found insufficient to obviate the pending 103 rejection over McKnight and Di Modugno.
As discussed above, Applicant’s alleged evidence of unexpected results shown the “Subramanian Kesavan” Declaration under 37 CFR 1.132 filed 09/24/2021 (hereafter as Declaration-1) remain not persuasive to obviate the standing 103 rejection as set forth in this office action for the reasons discussed pages 12-14 of the Final Rejection dated 09/19/2023, said reasons being incorporated herein in its entirety.
As previously discussed, it is reiterated that Example 2 from Table 1 of Di Modugno contains citric acid, suspending agent (ATTAGEL 50), and potassium salts, and said Example 2 has a low viscosity of 2400 cP.
With respect to the comparative evidence shown in Declaration-3, as discussed above, the Declaration-3 and evidence provided therein were considered, but found insufficient to obviate the pending 103 rejection over McKnight and Di Modugno.
for the reasons discussed above on pages 17-23 of this office action, said pages being incorporated herein in its entirety.
Accordingly, it is reiterated that Applicant’s alleged evidence of unexpected results from the Declarations of record are not persuasive evidence of nonobviousness because contrary to Applicant’s Declarations of record, McKnight taught that the agriculture composition containing choline chloride exhibited good storage stability at an elevated storage temperature of up to 54ºC and preferably 45ºC, has low viscosity, is pourable and pumpable (in other words, flowable) (McKnight: abstract; [0003], [0006]-[0007], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Likewise, Di Modugno also taught that the agriculture composition containing potassium citrate and citric acid exhibited superior water conditioning properties, is stable, has low viscosity (i.e., 2400 cP), and sprayable (thereby is flowable) (Di Modugno: abstract; [0017]-[0037], [0040], [0051], and [0054]-[0060]; Table 1; claims 1-8).
Applicant argues:
“As noted in the specification, the instantly claimed water conditioning component, provided based on an amount of the liquid medium, and that specifically includes choline chloride, potassium citrate and citric acid, also acts as a hydration inhibitor for the incompletely hydrated polymer. While McKnight teaches the use of the choline chloride as a hydration inhibitor, and Di Modugno teaches the use of a mixture of potassium salts as alternatives to water conditioners, in view of the evidence set forth above, Applicant does not believe that either teaching, alone or in combination, would have suggested to a person of ordinary skill in the art that the use of a water conditioning component that specifically includes choline chloride, potassium citrate and citric acid as claimed and that also acts as a hydration inhibitor for the incompletely hydrated polymer.
McKnight specifies that the degree of hydration of the water-soluble polymer can be characterized by viscosity measurements. While a "non-hydrated" water-soluble polymer makes no significant contribution to the viscosity of the composition, a "completely hydrated" water-soluble polymer makes the maximum contribution to the viscosity of the composition. The instantly claimed incompletely hydrated polymers, however, are in between these extremes in terms of their contribution to the viscosity.
Further, para. [0038] of McKnight teaches that the viscosity of a given amount of a water-soluble polymer, in a given amount of an aqueous medium, in the presence of a given amount of a proposed hydration inhibitor component, and under given shear conditions, can be compared to the viscosity of the same amount of the water-soluble polymer in the same amount of the aqueous medium in the absence of the proposed hydration inhibitor component (the "baseline composition"). If the viscosity of the test composition is equal to that of the baseline composition, then the water-
soluble polymer of the test composition is deemed to be completely hydrated (and the proposed hydration inhibitor component is ineffective in the amount tested to inhibit hydration of the polymer). If the viscosity of the test composition is less than that of the baseline composition, then the water- soluble polymer of the test composition is deemed to be incompletely hydrated (and the proposed hydration inhibitor component is effective in the amount tested to inhibit hydration of the polymer). Thus, Applicant believes that in starting from McKnight, a person of ordinary skill in the art would have only considered choline chloride as a suitable hydration inhibitor capable of lowering the viscosity of a given amount of water-soluble polymer in a given amount of medium.” (Remarks, page 19, middle paragraph to page 20).
In response, the Examiner disagrees. As previously discussed, it is reiterated that McKnight teaches structurally same choline chloride as the claimed invention and thus, would meet the function as “water conditioning component, irrespective if said choline chloride has a secondary function as “hydration inhibitor.”
As previously discussed, it is maintained that while the water conditioning component in claim 1 contains potassium citrate among other components, independent claim 1 does not exclude the inclusion of other potassium salts whether in the water condition component due to claim 1 containing the transitional phrases “comprising.” Thus, it is noted that the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended."). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.). As discussed above, it is reiterated that amended claim 1 does not exclude the addition of “potassium nitrate,” as the water conditional component is opening ended due to “comprising” and thus, allows for additional ingredients/elements not recited including the potassium nitrate. Thus, claim 1 as currently presented remained broad and does not exclude the addition of ingredients/elements not recited including the potassium nitrate. Accordingly, the presence of other potassium salts in the composition of Di Modugno would still form a construct within the broad breath of claim 1.
As previously discussed, it is reiterated that McKnight teaches that the suspending agent plays a role in the lowering the viscosity of fully hydrated water-soluble polymer (McKnight: 0054]). Thus, regardless of Di Modugno using a fully hydrated water-soluble polymer, an ordinary artisan can still look to Di Modugno for guidance on using citric acid and a mixture of potassium salts including tri-potassium citrate in the agriculture composition of McKnight, because McKnight teaches that suspending agent plays a part in lowering the viscosity of the fully hydrated water-soluble polymer, as evidenced by Example 2 of Di Modugno.
Thus, it is maintained that there is reasonable predictability for a person of ordinary skill in the art would have to believe that the potassium citrate and citric acid of Di Modugno would behave similarly with McKnight's incompletely hydrated water-soluble polymer that is suspended in a medium because the composition of McKnight has the presence of suspending agent and choline chloride, in which choline chloride aids in inhibiting hydration of the incompletely hydrated water-soluble polymer, thereby the inclusion of potassium citrate and citric acid would further lower the viscosity of the composition, as it was shown in Di Modugno’s Example, 2, the presence of citric acid, suspending agent (ATTAGEL 50), and potassium salts, in the composition containing fully hydrated water-water polymer exhibited a low viscosity of 2400 cP, which meets the claimed viscosity of less than 4000 cP.
Applicant argues:
“Given the description provided in McKnight, Applicant does not believe that a person of ordinary skill in the art would have considered the citric acid or the potassium citrate of Di Modugno for a water conditioning component that functions as a water conditioner and hydration inhibitor for the water-soluble polymer. In the Examples in the Declaration-1, and as noted above, demonstrate that the individual use of the potassium citrate, citric acid and choline chloride fail to exhibit a combined hydration inhibition and water conditioning effect. This is evidenced by the viscosities of greater than 4000 cP in examples 21SKE-015-02 to 21SKE-015-04. Tests involving the use of two of the components as water conditioner, shown in 21SKE-015-05 to 21SKE-015-07 also
failed to demonstrate the combined effect as shown in the viscosity as well as water conditioning test transmission ratio data. Thus, Applicant believes that there is a sufficient demonstration of objective evidence that a person of ordinary skill in the art would not have reasonably expected to arrive at the instantly claimed composition, particularly the water conditioning component that includes the choline chloride, potassium citrate and citric acid which functions as a water conditioner and hydration inhibitor for the incompletely hydrated water-soluble polymer, nor the agricultural
composition that consists of claimed components.” (Remarks, page 19, last paragraph to page 21).
In response, the Examiner disagrees. As discussed above, it is reiterated that McKnight teaches structurally same choline chloride as the claimed invention and thus, would meet the function as “water conditioning component, irrespective if said choline chloride has a secondary function as “hydration inhibitor.”
As previously discussed, it is maintained that while the water conditioning component in claim 1 contains potassium citrate among other components, independent claim 1 does not exclude the inclusion of other potassium salts whether in the water condition component due to claim 1 containing the transitional phrases “comprising.” Nor does claim 1 exclude inclusion of other unrecited ingredients in the drift control component. Thus, it is noted that the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended."). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.). As discussed above, it is reiterated that amended claim 1 does not exclude the addition of “potassium nitrate,” as the water conditional component is opening ended due to “comprising” and thus, allows for additional ingredients/elements not recited including the potassium nitrate. Likewise, as discussed above, claim 1 also does not exclude inclusion of other unrecited ingredients in the drift control component. Thus, claim 1 as currently presented remained broad and does not exclude the addition of ingredients/elements not recited including the potassium nitrate. Accordingly, the presence of other potassium salts in the composition of Di Modugno would still form a construct within the broad breath of claim 1.
As previously discussed, it is reiterated that McKnight teaches that the suspending agent plays a role in the lowering the viscosity of fully hydrated water-soluble polymer (McKnight: 0054]). Thus, regardless of Di Modugno using a fully hydrated water-soluble polymer, an ordinary artisan can still look to Di Modugno for guidance on using citric acid and a mixture of potassium salts including tri-potassium citrate in the agriculture composition of McKnight, because McKnight teaches that suspending agent plays a part in lowering the viscosity of the fully hydrated water-soluble polymer, as evidenced by Example 2 of Di Modugno.
Thus, it is maintained that there is reasonable predictability for a person of ordinary skill in the art would have to believe that the potassium citrate and citric acid of Di Modugno would behave similarly with McKnight's incompletely hydrated water-soluble polymer that is suspended in a medium because the composition of McKnight has the presence of suspending agent and choline chloride, in which choline chloride aids in inhibiting hydration of the incompletely hydrated water-soluble polymer, thereby the inclusion of potassium citrate and citric acid would further lower the viscosity of the composition, as it was shown in Di Modugno’s Example, 2, the presence of citric acid, suspending agent (ATTAGEL 50), and potassium salts, in the composition containing fully hydrated water-water polymer exhibited a low viscosity of 2400 cP, which meets the claimed viscosity of less than 4000 cP.
Applicant argues:
“Sample-5 (25SKE25-04) provided in Declaration-3 also demonstrates that when the water conditioning component is provided in amounts inside of the 20-80 pbw based on the amount of the liquid medium, but too much liquid medium is present (i.e., using 2+54.27wt% (water 1 + water 2) as liquid medium with 15 wt% of the water conditioning component, thus ~27 pbw relative to the amount of water added) the composition yet again fails to be flowable as required by the present claims. 21SKE-15-01, however, as shown in the Declaration-1, includes the amount of the liquid medium as claimed, as well as the relative amounts of the water conditioning component with respect to 100 pbw of the liquid medium. Thus, when the claimed components are included
within the claimed ranges, the compositions provide a flowable liquid with a viscosity within the claimed range.” (Remarks, page 21, middle paragraph).
In response, the Examiner disagrees. As previously discussed, it is reiterated that it is not clear whether the water condition components from sample 25SKE25-04 are in “amounts inside of the 20-80 pbw based on the amount of the liquid medium,” as Applicant has not explained how these water conditioning components from sample 25SKE25-04 met the amounts inside of the 20-80 pbw based on the amount of the liquid medium as claimed. Nevertheless, this sample 25SKE25-04 is not an adequate comparative evidence of nonobviousness because, sample 25SKE25-04 is not a formulation of Di Modugno. As discussed above, the Samples shown in the Table on page 2 of the Declaration-3 are not representative of a formulation of Di Modugno for at least the reason that neither Example 1 nor Example 2 of Di Modugno contains Kelcovis DG (Diutan gum). Thus, Applicant’s comparative data in Declaration-3 did not adequately compared to the closest prior art of Di Modugno (comparing to Examples 1 and 2 in Table 1 of Di Modugno. See MPEP §716.02. Also see pages 17-23 of this office action for additional reasons why the Samples shown in the Table on page 2 of the Declaration-3 are insufficient to obviate the standing 103 rejection over McKnight and Di Modugno, said pages 17-23 being incorporated herein in its entirety.
As discussed above, it is reiterated that Sample 25SKE25-02 (“Sample #2”) on page 2 of Declaration-3 appeared to be a formulation that reads on the claimed invention of claim 1, as the components and amounts of each components reads on an embodiment of the agriculture composition as recited in claim 1. Thus, this is preponderance of evidence to show that Applicant’s claimed invention as recited in claim 1 remained not adequately commensurate in scope with Applicant’s alleged formulation of 21SKE-15-01 in the Declaration-1 (previously filed 09/24/2021) that was used for showing the alleged unexpected results, as Sample 25SKE25-02 on page 2 from Declaration-3 showed a formulation within the broad scope of claim 1, and said Sample 25SKE25-02 was not stable or flowable. Thus, to the extent Applicant’s attempted to amend claim 1 in the recently filed claim set so as it is commensurate in scope with the alleged unexpected results, said amended claim 1 remained very broad to encompass formulations that was not was not stable and flowable, as evidenced by Sample 25SKE25-02 on page 2 from Declaration-3. Another example (among others) that Applicant’s claim 1 is not commensurate in scope with the formulation of 21SKE-15-01 from Declaration-1 is that the formulation of 21SKE-15-01 used particularly water as the liquid medium, as well as, require the presence of particularly alcohol ethoxylate surfactant as the surfactant. Claim 1 recites generically liquid medium and does not require the presence of alcohol ethoxylate surfactant. As such, there is no predictability from Applicant’s evidence of record if an agricultural composition that uses hydrocarbon solution or an alcoholic solution as the liquid medium and no surfactant, which is an agricultural composition within the broad breadth of claim 1 would function to the same extent as formulation of 21SKE-15-01 in the Declaration-1 with respect to stability and flowability. As previously discussed, it is reiterated that MPEP §716.02(d) states claim 1 of the instant invention must be commensurate in scope with the evidence of unexpected results.
As previously discussed, the inventive formulation (21SKE-015-01) shown in Table 1 of the Declaration-1 (page 2) is drawn to a specific formulation with specific components and concentrations. In contrast, claim 1 is much broader than the inventive formulation used for showing the alleged unexpected results. Thus, claim 1 remains not commensurate in scope the inventive formulation (21SKE-015-01) used for showing unexpected results in the Declaration-1. MPEP §716.02(d) states that evidence of unexpected results much be commensurate in scope with the claimed invention. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness 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) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
As discussed above, it is reiterated that contrary to Applicant’s Declarations of record, McKnight taught that the agriculture composition containing choline chloride exhibited good storage stability at an elevated storage temperature of up to 54ºC and preferably 45ºC, has low viscosity, is pourable and pumpable (in other words, flowable) (McKnight: abstract; [0003], [0006]-[0007], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165], [0172], and [0192]-[0193]; clams 1-10 and 15). Likewise, Di Modugno also taught that the agriculture composition containing potassium citrate and citric acid exhibited superior water conditioning properties, is stable, has low viscosity (i.e., 2400 cP), and sprayable (thereby is flowable) (Di Modugno: abstract; [0017]-[0037], [0040], [0051], and [0054]-[0060]; Table 1; claims 1-8).
As a result, for at least the reasons discussed above and preponderance of evidence of record, claims 1-6, 8-15, 19-22, 27, and 29-31 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the standing 103 rejections as set forth in this office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6, 8-15, 19-22, 27, and 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 11576376 in view of McKnight et al (US 2016/0000070 A1) and Di Modugno et al (11 August 2016; US 2016/0227765 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘376 significantly overlap with the subject matter of instant claims, i.e., an agricultural composition comprising a liquid medium, a pesticide, a drift reduction agent such as guar, suspending agents such as attapulgite and xanthan gum, a glycol or glycerol (glycerin), choline chloride, and a surfactant.
While the claims of instant application does not mention the amount of suspending agent, it would have been obvious to optimize the amount of the suspending agent in the instant claims to an amount of at least 0.5 pbw to 10 pbw based on 100 pbw of the composition, in view of the guidance from McKnight (abstract; [0003], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0052]-[0053], [0068]-[0095], [0136]-[0165] and [0172]; clams 1-10 and 15).
While the claims of the instant application does not mention the pesticide composition contains water-soluble salt of an auxin herbicide, it would have been obvious to incorporate an auxin herbicide as the pesticide active in the composition of the instant claims, in view of the guidance from McKnight ([0006]).
While the claims of the Patent ‘376 do not contain potassium citrate and citric acid, it would have been obvious to include potassium citrate and citric acid in the agricultural composition of the copending Application ‘298 in view of the guidance from Di Modugno ([0017], [0030] and [0036]).
While the claims of the Patent ‘376 do not recite the amounts of water conditioning components, it would have been obvious to optimize the amount of water conditioning components including choline chloride, potassium citrate and citric acid to an amount from 20 pbw to 80 pbw in view of the guidance from McKnight and Di Modugno (McKnight: abstract; [0003], [0009], [0010], [0013]-[0030], [0031]-[0034], [0036], [0037], [0040], [0041], [0049], [0053], [0055]-[0111], [0157]-[0175]; clams 1-10 and 15; Modugno: abstract; [0017]-[0037] and [0054]-[0082]; Table 1; claims 1-8).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11576376 in view of McKnight and Di Modugno.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that the pending claims are patentable for the at least the same reasons as described above regarding the combination of McKnight and Di Modugno. (Remarks, page 22, last paragraph to page 23).
In response, the Examiner disagrees. As discussed above, Applicant’s arguments pertaining to McKnight and Di Modugno were not persuasive for the reasons discussed on pages 17-39 of this office action, said discussion being incorporated herein its entirety.
Accordingly, the double patent rejection over claims 1-6, 8-15, 19-22, 27, and 29-31 of U.S. Patent No. 11576376 (previously copending Application No. 16185298) is maintained for the reason of record and pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DOAN T PHAN/ Primary Examiner, Art Unit 1613
