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 .
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12071578 (‘578) in view of JP2008524153 (of record).
‘578 teaches an overlapping scope of the exact same surfactant compounds of applicants formula which are claimed herein in for the intended use of pre-texturing agent comprising solvents, and wherein the intended use does not structurally limit the composition. ‘578 merely does not teach wherein these surfactants are formulated into pesticide, herbicide, insecticide and fungicide formulations with water, co-surfactants, additional herbicides, antifoam agents, antifreezing agents, water-insoluble solvents, carriers as are instantly claimed. However, these deficiencies in ‘578 are addressed by JP2008524153.
JP2008524153 teaches synergistic herbicidal combinations which can further comprise insecticides and/or fungicides (all of which read on the claimed pesticides as well), and which can use as surfactants quaternary ammonium/quaternary amine surfactants which they teach diluting with carrier prior to application (these quaternary ammonium/quaternary amine surfactants would broadly include the instantly claimed surfactants) as well where the composition can comprise antifoaming and antifreezing agents (See first seven paragraphs in English translation; also paragraphs starting with “A number of surfactants can be…” and “Other adjuvants commonly used in insecticides…” and “the formulation may also contain other active substances…”). JP2008524153 further teaches where it is known to use combinations of surfactants and/or surfactants and dispersants (another type of surfactant) (which read on the claimed co-surfactant claimed in claim 5) and other additives to formulate pesticides/herbicide compositions (See paragraph starting with “The preparation can be produced, for example, by mixing…”)
JP2008524153 further teaches wherein the formulations which comprise a synergistic combination of herbicides, can further comprise oils or organic solvents, e.g. non-water miscible solvents, i.e. solvesso (aromatic solvent/toluene), and water as diluent all of which are known formulation adjuvants suitable for preparing herbicidal/pesticidal compositions (See entire document; see paragraph starting with “Herbicidal formulations generally contain…” and paragraph starting with, “The formulation adjuvants that are suitable for preparing the compositions according to the invention are known per se.”). Thus, it would have been obvious that the instantly claimed compositions are obvious when taken in view of U.S. Patent No. 12071578 (‘578) in view of JP2008524153 because JP2008524153 teaches that it was known to use cationic quaternary amine/quaternary ammonium surfactants (which would broadly include the claimed surfactants) to formulate herbicide, pesticide, insecticide, and fungicidal active agents in compositions with the claimed solvents, carriers, water, co-surfactants, additional herbicides, etc. as is instantly claimed and as such it would be obvious to substitute the cleaning agents of ‘578 for the herbicide, pesticide, insecticide, and fungicidal active agents in compositions with the claimed solvents, carriers, water, co-surfactants, additional herbicides, etc. instantly claimed in order to form the claimed compositions because it was known to use cationic quaternary amine/quaternary ammonium surfactants to formulate agrochemical formulations such as those instantly claimed.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous 112(b) rejections and the amendments and arguments have also overcome the previous grounds of rejection over 103. Applicant’s amendments to the claims to change the scope of the compounds within the claimed composition and to limit the counterions have prompted the new grounds of rejection under double patenting presented herein. Applicant’s amendments to the claims and arguments were persuasive with respect to the newly amended claim scope of surfactants especially since applicants demonstrate that the specifically claimed surfactants have very low CMC values which offer excellent wetting properties for the claimed surfactants which allows for lower amounts of surfactant to be used when formulating pesticides. Specifically, nothing in Ebert and Sakata would prompt one of ordinary skill in the art to make now the specifically claimed changes to their surfactants, specifically changing the chain length of Sakata and/or changing the counterions of detergent additive compounds of Ebert and/or changing the H atoms bound to the nitrogen atom to the claimed methyl/alkyl groups to form the specifically claimed compounds without the use of impermissible hindsight because laundry and detergent surfactants are not necessarily useful in pesticidal and agricultural applications as they are used under different conditions and as such one of ordinary skill in the art would not be motivated to make the claimed changes to the compounds of Sakata and/or Ebert and expect them to still be useful for use in their intended use of fabric softening and detergent additives for cleaning nor that by making these changes that they would be useful for making effective agriculture formulations with their now specifically narrowed instant R3 and R4 chain lengths and the narrowed counterions, etc. nor would one of ordinary skill in the art expect the instantly claimed solvents to be as effective as applicants have demonstrated specifically that the instantly claimed surfactants have low CMC values and offer excellent wetting properties to the claimed pesticidal, herbicidal and/or fungicidal, etc. compositions which allows for lower amounts of surfactant to be used when formulating effective pesticidal, etc. compositions.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
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 would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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