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 .
Status of the Claims
Claims 1-141 had been cancelled in a previous communication. Claims 156-157, and 162-163 have been withdrawn.
Claims 142, 144-155, 159-160, and 165 are currently under examination.
All rejections not reiterated have been withdrawn.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statements (IDS) filed on 12/08/2025, 01/13/2026, 04/06/2026 are attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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.
Claim 152 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In this case, claim 152 does not further limit the claim from which it depends because it does not require all the limitations that are already recited in instant claim 1. Claim 152 recites a broader ratio between the nitrogen-bearing macrocyclic compound and the chelating agent than claim 142 which it depends from.
Claim Rejections - 35 USC § 103-New Rejection
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.
Claims 142, 144-145, 147, 149-150, 152, 159 and 165 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN103232299A, Published 08/07/2013).
The preamble of the claims each recite an intended use for the claimed composition and are not deemed to add any further structural limitations to the instant invention. See MPEP 2111.02(II).
Applicant’s invention
The applicant claims are drawn to a composition for controlling insect pests on a plant, comprising: a nitrogen-bearing macrocyclic compound which is a photosensitizer that generates
reactive oxygen species in the presence of light, wherein the nitrogen-bearing macrocyclic compound is a chlorophyllin and is provided in the composition at a concentration between 5 micromolar (µM) and 10 millimolar (mM); a chelating agent which is an aminopolycarboxylic acid compound or an agriculturally acceptable salt thereof, wherein the chelating agent is provided in the composition at a concentration between about 5 µM and about 5000 µM; and
a carrier fluid, wherein the composition is a liquid, and wherein the weight of the nitrogen-bearing compound and the chelating agent is between about 1:1 and about 1:10.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 142, 147, 149, 152 and 159 Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: Glycerin 10%, amino acid 0.3%, citric acid 4%, multivitamin 0.1%, monosaccharide 0.1%, glycan 0.1%, ethylene glycol 0.1%, ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), urea 8%, Potassium dihydrogen phosphate 18%, sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound), manganese sulfate 0.2%, zinc sulfate 2%, boric acid 6%, ammonium molybdate 0.2% and deionized water 50% (i.e., carrier fluid) (Summary of the invention, Example 1). The examiner points out that 0.8% of ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), divided by 0.1% of sodium chlorophyll copper (i.e., nitrogen-bearing macrocyclic compound) equals 0.125 (i.e., 1:8) which falls within the instantly claimed ratio.
Regarding claims 144-145, Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound) (i.e., metalated nitrogen-bearing macrocyclic formed by complexation) (Summary of the invention, Example 1).
Regarding claim 150, Zhou teaches chelating agent e.g., ethylenediaminetetraacetic acid disodium ( salt of EDTA) (i.e., non-polymeric) (Summary of the invention, Example 1).
Regarding claim 165, Zhou teaches 0.8% of ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), and 0.1% of sodium chlorophyll copper (i.e., nitrogen-bearing macrocyclic compound) (Summary of the invention, Example 1). The examiner points out that Zhou teaches the weight percentages of the chelating agent and the nitrogen-bearing macrocyclic compound, wherein the percentages fall into the claimed ratio of the two components. Therefore, the limitation wherein the amounts are provided in a synergistically effective amount to increase mortality of the insect pest would be an inherent property of Zhou’s liquid organic fertilizer. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). See MPEP 2112 (III).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Zhou does not disclose a single embodiment or example where every limitation recited in the instant claims is taught, explicitly the concentrations of chlorophyllin and the chelating agent.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The claims are considered prima facie obvious to one of ordinary skill in the art at the time of filing because Zhou teaches all of the claimed elements. Regarding claims 142, and 152 it would have been prima facie obvious to one of ordinary skill in the art to use Zhou’s liquid organic fertilizer containing a singlet oxygen-generating agent and chelating agent in the instantly claimed concentration ranges. Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: Glycerin 10%, amino acid 0.3%, citric acid 4%, multivitamin 0.1%, monosaccharide 0.1%, glycan 0.1%, ethylene glycol 0.1%, ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), urea 8%, Potassium dihydrogen phosphate 18%, sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound), manganese sulfate 0.2%, zinc sulfate 2%, boric acid 6%, ammonium molybdate 0.2% and deionized water 50% (i.e., carrier fluid) (Summary of the invention, Example 1). It is obvious to use the weight percentages taught by Zhou and the ratio between the nitrogen-bearing compound and the chelating agent as a starting point because it is obvious to optimize for efficacy of chlorophyllin and the chelating agent. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).
Claim 146 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN103232299A, Published 08/07/2013) in view of Bommer et al. (US20030050296, Published 03/13/2003; cited in the IDS filed 06/10/22).
Applicant’s invention
Zhou render obvious all the limitation of instant claim 142. Claim 146 further adds the limitation wherein the nitrogen-bearing macrocyclic compound comprises a metal-free nitrogen-bearing macrocyclic compound that is selected such that, in response to light exposure, the metal-free nitrogen-bearing compound generates reactive oxygen species.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Zhou is set forth above. Regarding 146 as explained above, Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: Glycerin 10%, amino acid 0.3%, citric acid 4%, multivitamin 0.1%, monosaccharide 0.1%, glycan 0.1%, ethylene glycol 0.1%, ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), urea 8%, Potassium dihydrogen phosphate 18%, sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound), manganese sulfate 0.2%, zinc sulfate 2%, boric acid 6%, ammonium molybdate 0.2% and deionized water 50% (i.e., carrier fluid) (Summary of the invention, Example 1).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Zhou does not teach wherein the nitrogen-bearing macrocyclic compound comprises a metal-free nitrogen-bearing macrocyclic compound. This deficiency is cured by Bommer et al.
Bommer et al. discloses photodynamic therapy (PDT) is based on the use of a photosensitizing molecule that, once activated by light, generates reactive oxygen species (“ROS”) (page 1, paragraph [0007]). Bommer teaches photodynamic antimicrobial agent wherein a porphyrin having four quaternized nitrogens, wherein the porphyrin further comprises a hydrocarbon tail beginning at one of the quaternized nitrogens (page 13, claim 1). Bommer also teaches the porphyrin is a metal chelated porphyrin (page 13, claim 4). Bommer continues to teach in other instances, the porphyrin or reduced porphyrin (i.e., chlorophyllin) is a metal chelated porphyrin. In these instances, metals whose porphyrin chelates are useful as photodynamic antimicrobial agents include Mg (magnesium), Zn (zinc), Al (aluminum), In (indium), Si (silicon), Sn (tin), Pd (palladium), and Pt (platinum) (page 2, paragraph [0020]). Thus, in view of Bommer, one would have recognized that metalated and non-metalated porphyrins are useful as photosensitizers.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 146, it would have been prima facie obvious to one of ordinary skill in the art to use a metal-free nitrogen-bearing macrocyclic compound in Zhou’s liquid organic fertilizer containing a singlet oxygen-generating agent. Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound) (i.e., porphyrin) One of ordinary skill in the art would have understood in view of Bommer that in porphyrin or reduced porphyrin can be used as photosensitizers, so one would have recognized the metal-free porphyrin as suitable.
Claim 148 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN103232299A, Published 08/07/2013) in view of Miles (WO2003101197, Published 12/11/2003).
Applicant’s invention
Zhou render obvious all the limitation of instant claim 142. Claim 148 further adds the limitation wherein the chelating agent is metalated.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Zhou is set forth above. Regarding claims 148 as explained above, Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: Glycerin 10%, amino acid 0.3%, citric acid 4%, multivitamin 0.1%, monosaccharide 0.1%, glycan 0.1%, ethylene glycol 0.1%, ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), urea 8%, Potassium dihydrogen phosphate 18%, sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound), manganese sulfate 0.2%, zinc sulfate 2%, boric acid 6%, ammonium molybdate 0.2% and deionized water 50% (i.e., carrier fluid) (Summary of the invention, Example 1).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Zhou teaches in Example 1, the liquid organic fertilizer of this embodiment includes the following components: by weight ratio: ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), however Zhou does not teach wherein the cleating agent is metalated. However, this deficiency is cured by Miles.
Miles teaches compositions useful in the field of agricultural chemistry and further discloses that the permeabilizing agents are typically one or more chelating agent (abstract). Miles also teaches in the case of insects, bacteria, fungi, viruses and acaricides, the permeabilizing agents can improve the permeability of the cell walls of these agents and improve the passage of the active components into these biological entities, thus improving the efficacy of these compounds (page 6, last paragraph). Miles further teaches that chelating agents are believed to function by sequestering divalent metal ions and keeping them from ordering the lipopolysaccharide layer in the plant cell walls. The voids may then be filled with phospholipids which are much more permeable (page 9). Miles also discloses that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers (page 8, first paragraph). Miles continues to disclose a composition comprising a cleating agent and an insecticide (page 50, claim 39).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 148, it would have been prima facie obvious to one of ordinary skill in the art to use a metalated chelating agent in Zhou’s liquid organic fertilizer containing a chelating agent. Zhou discloses EDTA as a chelating agent but does not specify whether or not chelating agent is bound to a metal. One of ordinary skill in the art would have understood in view of Miles that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers indicating that metal free chelating agents can also be used and also that chelating agents increase the permeability of cell membranes. Thus, one would have recognized the metal-free chelating agent as suitable as well as metalated chelating agent.
Claim 151 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN103232299A, Published 08/07/2013) in view of Ma et al. (CN108218568A, Published 06/29/2018).
Applicant’s invention
Zhou render obvious all the limitation of instant claim 142. Applicants claim 151 further adds the limitation wherein the chelating agent is a polymeric chelating agent.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Zhou is set forth above. Regarding claim 151 as explained above, in Example 1, the liquid organic fertilizer of this embodiment includes the following components: by weight ratio: ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Zhou teaches the composition a chelating agent e.g., ethylenediaminetetraacetic acid disodium (i.e., aminopolycarboxylic acid compound), however Zhou does not teach wherein the cleating agent is polymeric chelating agent. This deficiency is cured by Ma et al.
In the analogous art of fertilizers, Ma teaches The chelating agent is one or a combination of EDTA (i.e., non-polymeric), EDDHA, sodium citrate, polyglutamic acid, sorbitol, complex amino acid, polyaspartic acid (i.e., polymeric), fulvic acid, ammonium polyphosphate, preferably fulvic acid and Ammonium polyphosphate (Summary of the invention, paragraph 9).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 151, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to use a polymeric chelating agent in Zhou’s liquid organic fertilizer containing a chelating agent. Zhou teaches the use of chelating agents in the fertilizer composition. One having ordinary skill in the art would have understood in view of Ma that polymeric chelating agents such as polyaspartic acid can be used because they are both known for chelating agents and would be recognized as a suitable type of chelating agent in this type of composition. See MPEP2144.07.
Claims 153-155, and 160 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN103232299A, Published 08/07/2013) in view of Peltonen et al. (US20060150487A1, Published 07/13/2006).
Applicant’s invention
Zhou render obvious all the limitation of instant claim 142. Applicants claim 153 further adds the limitation wherein the composition further comprises a surfactant. Applicants claim 154 further adds the limitation wherein the surfactant is selected from the group consisting of an ethoxylated alcohol, a polymeric surfactant, a fatty acid ester, a polyethylene glycol, an ethoxylated alkyl alcohol, a monoglyceride, an alkyl monoglyceride and a mixture thereof. Applicants claim 155 further adds the limitation wherein the composition further comprises an oil selected from the group consisting of a mineral oil, a vegetable oil and a mixture thereof. Applicants claim 160 further adds the limitation wherein the carrier fluid comprises an oil-in-water emulsion.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Zhou is set forth above. Regarding claims 153-155 and 160, Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: Glycerin 10%, amino acid 0.3%, citric acid 4%, multivitamin 0.1%, monosaccharide 0.1%, glycan 0.1%, ethylene glycol 0.1%, ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), urea 8%, Potassium dihydrogen phosphate 18%, sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound), manganese sulfate 0.2%, zinc sulfate 2%, boric acid 6%, ammonium molybdate 0.2% and deionized water 50% (i.e., carrier fluid) (Summary of the invention, Example 1).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Zhou does not teach wherein the composition further comprises a surfactant; wherein the surfactant is selected from the group consisting of an ethoxylated alcohol, a polymeric surfactant, a fatty acid ester, a polyethylene glycol, an ethoxylated alkyl alcohol, a monoglyceride, an alkyl monoglyceride and a mixture thereof; wherein the composition further comprises an oil selected from the group consisting of a mineral oil, a vegetable oil and a mixture thereof; and wherein the carrier fluid comprises an oil-in-water emulsion. However these deficiencies are cured by Peltonen.
In the analogous art of fertilizer compositions, Peltonen teaches the invention relates to a fertilizer composition for coating plant seeds, comprising an oil/water emulsion (paragraph [0001]). Peltonen also teaches A seed that has been coated with emulsion or suspension fertilizer is an efficient and economical means of locally spreading the fertilizer (paragraph [0024]). Peltonen continues to teach that By forming an emulsion or an emulsion suspension from the oil, water, surface-active agent (i.e., surfactant) and plant nutrient, i.e. fertilizer, one can ensure that the fertilizer and the fixing agent are homogenously distributed in the coating and that they have the same ratio in each seed. In this way, the detachment of fertilizer from the seed can be minimized (paragraph [0031]). Peltonen further teaches said oil may be a mineral oil or an organic oil. The mineral oil may be e.g. white oil. The organic vegetable oils include e.g. rapeseed oil, linseed oil, olive oil, colza oil, soya oil, sunflower oil, palm oil, coconut oil or maize oil (paragraph [0042]); and that Suitable surface-active agents are e.g. lecitine, lignosulphonate or esters of a fatty acid and polyol (i.e., paragraph [0043]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have a surfactant, an oil, and the carrier fluid to comprise an oil-in-water emulsion in Zhou’s liquid organic fertilizer. Zhou teaches in Example 1, The liquid organic fertilizer of this embodiment includes the following components: by weight ratio: Glycerin 10%, amino acid 0.3%, citric acid 4%, multivitamin 0.1%, monosaccharide 0.1%, glycan 0.1%, ethylene glycol 0.1%, ethylenediaminetetraacetic acid disodium 0.8% (i.e., chelating agent), urea 8%, Potassium dihydrogen phosphate 18%, sodium chlorophyll copper 0.1% (i.e., nitrogen-bearing macrocyclic compound), manganese sulfate 0.2%, zinc sulfate 2%, boric acid 6%, ammonium molybdate 0.2% and deionized water 50% (i.e., carrier fluid) (Summary of the invention, Example 1). The artisan of ordinary skill would have been motivated to have a surfactant, an oil, and an oil-in-water emulsion in Zhou’s liquid organic fertilizer because Peltonen teaches that a seed that has been coated with emulsion or suspension fertilizer is an efficient and economical means of locally spreading the fertilizer (paragraph [0024]) and that by forming an emulsion or an emulsion suspension from the oil, water, surface-active agent (i.e., surfactant) and plant nutrient, i.e. fertilizer, one can ensure that the fertilizer and the fixing agent are homogenously distributed in the coating and that they have the same ratio in each seed. In this way, the detachment of fertilizer from the seed can be minimized (paragraph [0031]). The skilled artisan would have had a reasonable expectation of success because Zhou teaches that the composition is a liquid fertilizer and Peltonen teaches that a fertilizer composition formed as an emulsion which comprises a surfactant, an oil, and plant nutrients causes the fertilizer to be homogenously distributed in the coating.
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.
Claims 142, 147, 150, 152-155, and 159 are rejected under 35 U.S.C. 103 as being unpatentable over Hei et al. (US20030194433A1, Published 10/16/2003) in view of Tikekar et al. (US20160088853A1, Published 03/31/2016).
The preamble of the claims each recite an intended use for the claimed composition and are not deemed to add any further structural limitations to the instant invention. See MPEP 2111.02(II).
Applicant’s invention
The applicant claims are drawn to a composition for controlling insect pests on a plant, comprising: a nitrogen-bearing macrocyclic compound which is a photosensitizer that generates
reactive oxygen species in the presence of light, wherein the nitrogen-bearing macrocyclic compound is a chlorophyllin and is provided in the composition at a concentration between 5 micromolar (µM) and 10 millimolar (mM); a chelating agent which is an aminopolycarboxylic acid compound or an agriculturally acceptable salt thereof, wherein the chelating agent is provided in the composition at a concentration between about 5 µM and about 5000 µM; and
a carrier fluid, wherein the composition is a liquid, and wherein the weight of the nitrogen-bearing compound and the chelating agent is between about 1:1 and about 1:10.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 142, Hei teaches an antimicrobial composition containing a singlet oxygen-generating agent and a lubricant exhibit very effective antimicrobial activity against a variety of organisms, including Gram-positive bacteria, Gram-negative bacteria, fungi and yeast (abstract). Hei continues to teach wide variety of sensitizers can be employed in photochemical generation of singlet oxygen like porphyrin derivatives (i.e., nitrogen-bearing macrocyclic compound) (paragraph [0015]). Hei also teaches the antimicrobial composition can contain at least one chelating agent such as ethylenediamine tetraacetate (EDTA) that can synergistically increase the level of antimicrobial activity (i.e., aminopolycarboxylic acid compound) (paragraph [0045]). Hei further teaches that the antimicrobial composition can be a liquid, wherein if in liquid form, the antimicrobial composition can be aqueous (that is, primarily containing water) or non-aqueous (that is, primarily containing a liquid or liquids other than water) (paragraph [0011]). Hei also teaches the antimicrobial composition contains about 0.1 to about 1000 ppm chelating agent based on the total weight of the antimicrobial composition (paragraph [0045]). Hei further teaches the antimicrobial composition preferably contains at least about 0.1 ppm of a photochemical singlet oxygen-generating agent, more preferably about 0.1 to about 50 ppm (paragraph [0050]).
Regarding claim 147, as noted above, Hei teaches the antimicrobial composition can contain at least one chelating agent such as ethylenediamine tetraacetate (EDTA) (i.e., aminopolycarboxylic acid compound) (paragraph [0045]).
Regarding claim 150, Hei teaches chelating agent e.g., ethylenediaminetetraacetic acid (EDTA) (i.e., non-polymeric) (paragraph [0045]).
Regarding claim 152, Hei teaches the antimicrobial composition contains about 0.1 to about 1000 ppm chelating agent based on the total weight of the antimicrobial composition (paragraph [0045]). Hei further teaches the antimicrobial composition preferably contains at least about 0.1 ppm of a photochemical singlet oxygen-generating agent, more preferably about 0.1 to about 50 ppm (paragraph [0050]).
Regarding claims 153-154, Hei teaches The antimicrobial compositions of the invention can contain at least one surfactant such as alpha-sulfonated fatty acid ester (i.e., fatty acid ester) (paragraph [0046]).
Regarding claim 155, Hei teaches the composition contains at least one lubricant such as vegetable oil or mineral oil (paragraph [0037]).
Regarding claim 159, Hei teaches the antimicrobial composition can be a liquid, wherein it can be aqueous meaning primarily water (i.e., carrier fluid) (paragraph [0012]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Hei does not specifically teach the nitrogen-bearing macrocyclic compound as being chlorophyllin. However this deficiency is cured by Tikekar et al.
In the analogous art of photosensitizers, Tikekar teaches the process for the treatment of a surface comprising associating the surface with one or more photosensitizer selected form photo-porphyrin, and sodium chlorophyllin (paragraph [0014]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to use chlorophyllin as the photosensitizer in Hei’s antimicrobial composition containing a singlet oxygen-generating agent. Hei continues to teach wide variety of sensitizers can be employed in photochemical generation of singlet oxygen like porphyrin derivatives (i.e., nitrogen-bearing macrocyclic compound) (paragraph [0015]). One of ordinary skill in the art would have understood in view of Tikekar that for the treatment of a surface comprising associating the surface with one or more photosensitizer selected from photo-porphyrin, and sodium chlorophyllin (paragraph [0014]). It would have obvious to one of ordinary skill in the art to use chlorophyllin as the photosensitizer in Hei’s antimicrobial composition containing a singlet oxygen-generating agent because Tikekar teaches one or more photosensitizer selected from photo-porphyrin, and sodium chlorophyllin (paragraph [0014]), therefore porphyrin and chlorophyllin are equivalents that can be used for the same purpose as a photosensitizer. See MPEP 2144.06(II).
Regarding claims 142, and 152 it would have been prima facie obvious to one of ordinary skill in the art to use Hei’s antimicrobial composition containing a singlet oxygen-generating agent in the instantly claimed ratio of nitrogen-bearing macrocyclic compound to chelating agent (instant claims 142 and 152) and concentration ranges (instant claims 142). Hei teaches the antimicrobial composition contains about 0.1 to about 1000 ppm chelating agent based on the total weight of the antimicrobial composition (paragraph [0045]). Hei further teaches the antimicrobial composition preferably contains at least about 0.1 ppm of a photochemical singlet oxygen-generating agent, more preferably about 0.1 to about 50 ppm (paragraph [0050]). It is obvious to use the concentration ranges as a starting point because it is obvious to optimize for efficacy of porphyrin and the chelating agent. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).
Claims 144-146 are rejected under 35 U.S.C. 103 as being unpatentable over Hei et al. (US20030194433A1, Published 10/16/2003) in view of Tikekar et al. (US20160088853A1, Published 03/31/2016) further in view of Bommer et al. (US20030050296, Published 03/13/2003; cited in the IDS filed 06/10/22).
Applicant’s invention
Hei render obvious all the limitation of instant claim 142. Applicant’s claim 144 further adds the limitation wherein the nitrogen-bearing macrocyclic compound comprises a metalated nitrogen-bearing macrocyclic compound formed by complexation of the nitrogen-bearing macrocyclic compound with a metal, the metal being selected such that , in response to light exposure, the metalated nitrogen-bearing compound generates reactive oxygen species. Claim 145 further adds the limitation wherein the metal is selected form the group consisting of Mg(II), Zn(II), Pd(II), Sn(IV), Al(III), Pt(II), Si(IV), Ge(IV), Ga(III) and In(III), Cu(II), Co(II), Fe(II), Mn(II), Co(III), Fe(III), Fe(IV) and Mn(III). Claim 146 further adds the limitation wherein the nitrogen-bearing macrocyclic compound comprises a metal-free nitrogen-bearing macrocyclic compound that is selected such that, in response to light exposure, the metal-free nitrogen-bearing compound generates reactive oxygen species.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Hei is set forth above. Regarding claims 144-146 as explained above, Hei teaches an antimicrobial composition containing a singlet oxygen-generating agent and a lubricant exhibit very effective antimicrobial activity against a variety of organisms, including Gram-positive bacteria, Gram-negative bacteria, fungi and yeast (abstract). Hei continues to teach wide variety of sensitizers can be employed in photochemical generation of singlet oxygen like porphyrin derivatives (i.e., nitrogen-bearing macrocyclic compound) (paragraph [0015]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Hei does not teach a metalated nitrogen-bearing macrocyclic compound, wherein the metal is selected from the group consisting of Mg(II), Zn(II), Pd(II), Sn(IV), Al(III), Pt(II), Si(IV), Ge(IV), Ga(III) and In(III), Cu(II), Co(II), Fe(II), Mn(II), Co(III), Fe(III), Fe(IV) and Mn(III). Hei also does not teach wherein the nitrogen-bearing macrocyclic compound comprises a metal-free nitrogen-bearing macrocyclic compound. These deficiencies are cured by Bommer et al.
Bommer et al. discloses photodynamic therapy (PDT) is based on the use of a photosensitizing molecule that, once activated by light, generates reactive oxygen species (“ROS”) (page 1, paragraph [0007]). Bommer teaches photodynamic antimicrobial agent wherein a porphyrin having four quaternized nitrogens, wherein the porphyrin further comprises a hydrocarbon tail beginning at one of the quaternized nitrogens (page 13, claim 1). Bommer also teaches the porphyrin is a metal chelated porphyrin (page 13, claim 4). Bommer continues to teach in other instances, the porphyrin or reduced porphyrin (i.e., chlorophyllin) is a metal chelated porphyrin. In these instances, metals whose porphyrin chelates are useful as photodynamic antimicrobial agents include Mg (magnesium), Zn (zinc), Al (aluminum), In (indium), Si (silicon), Sn (tin), Pd (palladium), and Pt (platinum) (page 2, paragraph [0020]). Thus, in view of Bommer, one would have recognized that metalated and non-metalated porphyrins are useful as photosensitizers.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 144-145, it would have been prima facie obvious to one of ordinary skill in the art to use a metalated nitrogen-bearing macrocyclic compound in Hei’s antimicrobial composition containing a singlet oxygen-generating agent. One of ordinary skill in the art would have understood in view of Bommer that metals whose porphyrin chelates are useful as photodynamic agents, so it is suitable for the purpose of using metalated porphyrin (i.e., chlorophyllin) as a photosensitizer in Hei’s invention.
Regarding claim 146, it would have been prima facie obvious to one of ordinary skill in the art to use a metal-free nitrogen-bearing macrocyclic compound in Hei’s antimicrobial composition containing a singlet oxygen-generating agent. Hei discloses porphyrin but does not specify whether or not porphyrin is bound to a metal. One of ordinary skill in the art would have understood in view of Bommer that in porphyrin or reduced porphyrin can be used as photosensitizers, so one would have recognized the metal-free porphyrin as suitable.
Claims 148 and 149 are rejected under 35 U.S.C. 103 as being unpatentable over Hei et al. (US20030194433A1, Published 10/16/2003) in view of Tikekar et al. (US20160088853A1, Published 03/31/2016) as applied to claims further in view of Miles (WO2003101197, Published 12/11/2003).
Applicant’s invention
Hei render obvious all the limitation of instant claim 142. Applicant’s claims 148 further adds the limitation wherein the chelating agent is metalated. Applicant’s claim 149 further adds the limitation wherein the chelating agent is metal-free.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Hei is set forth above. Regarding claims 148 and 149 as explained above, Hei teaches the antimicrobial composition can contain at least one chelating agent such as ethylenediamine tetraacetate (EDTA) (i.e., aminopolycarboxylic acid compound) (paragraph [0045]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Hei teaches the antimicrobial composition can contain at least one chelating agent such as ethylenediamine tetraacetate (EDTA) (i.e., aminopolycarboxylic acid compound) however Hei does not teach wherein the cleating agent is metalated or metal-free. However, these deficiencies are cured by Miles.
Miles teaches compositions useful in the field of agricultural chemistry and further discloses that the permeabilizing agents are typically one or more chelating agent (abstract). Miles also teaches in the case of insects, bacteria, fungi, viruses and acaricides, the permeabilizing agents can improve the permeability of the cell walls of these agents and improve the passage of the active components into these biological entities, thus improving the efficacy of these compounds (page 6, last paragraph). Miles further teaches that chelating agents are believed to function by sequestering divalent metal ions and keeping them from ordering the lipopolysaccharide layer in the plant cell walls. The voids may then be filled with phospholipids which are much more permeable (page 9). Miles also discloses that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers (page 8, first paragraph). Miles continues to disclose a composition comprising a cleating agent and an insecticide (page 50, claim 39).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 148-149, it would have been prima facie obvious to one of ordinary skill in the art to use a metal-free or metalated chelating agent in Hei’s antimicrobial composition containing a singlet oxygen-generating agent. Hei discloses EDTA as a chelating agent but does not specify whether or not chelating agent is bound to a metal. One of ordinary skill in the art would have understood in view of Miles that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers indicating that metal free chelating agents can also be used and also that chelating agents increase the permeability of cell membranes. Thus, one would have recognized the metal-free chelating agent as suitable as well as metalated chelating agent.
Claim 151 is rejected under 35 U.S.C. 103 as being unpatentable over Hei et al. (US20030194433A1, Published 10/16/2003) in view of Tikekar et al. (US20160088853A1, Published 03/31/2016) as applied to claims further in view of Sambasivam (US20180338945A1, Published 11/29/2018).
Applicant’s invention
Hei render obvious all the limitation of instant claim 142. Applicant’s claim 151 further adds the limitation wherein the chelating agent is a polymeric chelating agent.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Hei is set forth above. Regarding claim 151 as explained above, Hei teaches the antimicrobial composition can contain at least one chelating agent such as ethylenediamine tetraacetate (EDTA) (i.e., aminopolycarboxylic acid compound) (paragraph [0045]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Hei teaches the composition a chelating agent e.g., ethylenediaminetetraacetic acid (EDTA) (i.e., aminopolycarboxylic acid compound), however Hei does not teach wherein the cleating agent is polymeric chelating agent. This deficiency is cured by Sambasivam et al.
In the analogous art of antimicrobial compositions, Sambasivam teaches processes of preparing antimicrobial layers on surfaces and articles (paragraph [0007]) wherein the antimicrobial composition comprises a chelating agent such as ethylenediaminetetraacetic acid (EDTA) (i.e., non-polymeric) and polyaspartic acid (i.e., polymeric) (paragraph [0102]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 151, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to use a polymeric chelating agent in Hei’s composition. Hei teaches the use of chelating agents in the antimicrobial composition. One having ordinary skill in the art would have understood in view of Sambasivam that polymeric chelating agents can be used because they are both known for chelating agents and would be recognized as a suitable type of chelating agent in this type of composition. See MPEP2144.07.
Claim 160 are rejected under 35 U.S.C. 103 as being unpatentable Hei et al. (US20030194433A1, Published 10/16/2003) in view of Tikekar et al. (US20160088853A1, Published 03/31/2016) further in view of König et al (WO2017167992, Published 10/05/2017). US20190111168 is the national stage entry of WO2017167992, and thus serves as an English translation for WO’992; accordingly relevant passages will be cited from the US ‘168 reference.
Applicant’s invention
Hei render obvious all the limitation of instant claim 142. Applicant’s claim 160 further adds the limitation wherein the carrier fluid comprises an oil-in-water emulsion.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Hei is set forth above. Regarding claim 160, Hei teaches the composition contains at least one lubricant such as vegetable oil or mineral oil (paragraph [0037]). Hei further teaches the antimicrobial composition can be a liquid, wherein it can be aqueous meaning primarily water (i.e., carrier fluid) or non-aqueous (that is, primarily containing a liquid or liquids other than water) (paragraph [0012]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Hei does not teach wherein the carrier fluid comprises an oil-in-water emulsion. This deficiency is cured by König et al.
König et al discloses a photosensitizer-containing dispersion wherein the dispersion comprises at least one photosensitizer, at least one liquid polar phase, and at least one surfactant; wherein the dispersion comprises a microemulsion (page 48, claim 1). König further discloses preferably, a microemulsion in accordance with the invention, which is preferably an oil-in-water (O/W) microemulsion (paragraph [0165]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 160, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to have an oil-in-water emulsion in Hei’s composition. Hei teaches the composition contains at least one lubricant such as an oil and the composition can be a aqueous or non-aqueous liquid. It would be obvious to one of ordinary skill in the art to use an oil-in-water emulsion in Hei’s composition because König teaches the dispersed phase forms small domains (“droplets”) which do not scatter incident visible light (page 18, paragraph [0164]).
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
On page 9 of Applicants arguments, Applicants argue that Hei discloses that a 10:1 molar mixture of EDTA and TRIS is “especially preferred” and that EDTA has a molecular weight of 292.24g/mol and TRIS has a molecular weight of 121.14g/mol, therefore, the ratio of toluidine blue to tris-EDTA is 1:892. One would not have arrived at a weight of the nitrogen-bearing compound and the chelating agent between about 1:1 and about 1:10.
This argument is not persuasive. The Examiner reiterates that the mixture of EDTA and TRIS is just one embodiment. Hei teaches the antimicrobial composition contains about 0.1 to about 1000 ppm chelating agent based on the total weight of the antimicrobial composition (paragraph [0045]). Hei further teaches the antimicrobial composition preferably contains at least about 0.1 ppm of a photochemical singlet oxygen-generating agent, more preferably about 0.1 to about 50 ppm (paragraph [0050]). Therefore, it is obvious to use the concentration ranges as a starting point because it is obvious to optimize for efficacy of porphyrin and the chelating agent. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). MPEP 2123 (I). The Examiner also points out that the Applicants have not shown or identify any secondary consideration demonstrating criticality or anything unexpected about the weight ratio of two known prior art agents the nitrogen-bearing compound and the chelating agent.
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 142, 144-145, 147-149, 150, 152-155, 159, 162 and 165 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 168-169, 176-183, 185-189 of copending Application No. 16639398 in view of Hei et al. (US20030194433A1, Published 10/16/2003) further in view of Miles (WO2003101197, Published 12/11/2003).
Inter alia the claims of ‘398 application embraces a composition for inhibiting growth of a microbial pathogen of a plant, comprising a nitrogen-bearing macrocyclic compound which is a singlet oxygen photosensitizer; a chelating agent; and a carrier fluid, wherein upon applying the composition to the plant and exposing the plant to light, the nitrogen-bearing macrocyclic compound is activated and generates reactive singlet oxygen species; wherein the nitrogen-bearing macrocyclic compound is chlorophyllin (i.e. a chlorin and a reduced porphyrin as defined in the instant specification), wherein the nitrogen-bearing macrocyclic compound is complexed with a metal selected from the group consisting of Mg, Zn, Pd, Al, Pt, Sn, Si and mixtures thereof. The claims of ‘398 application further embrace wherein the chelating agent comprising an amino polycarboxylic acid compound selected from the group consisting of ethylenediaminetetraacetic acid (EDTA). The claims of ‘398 application further embrace a surfactant wherein the surfactant is selected from the group consisting of an ethoxylated alcohol, a polymeric surfactant, a fatty acid ester, a polyethylene glycol, an ethoxylated alkyl alcohol, a monoglyceride, an alkyl monoglyceride. The claims of ‘398 application also embrace wherein the plant is a non-woody crop plant, a woody plant or a turfgrass. The claims of ‘398 application further embrace the chelating agent and the nitrogen-bearing macrocyclic compound are provided in amounts that are synergistically effective to inhibit growth of the microbial pathogen. The claims of ‘398 application also embrace wherein the combination is applied to the plant by at least one of soil drenching, pipetting, irrigating, spraying, misting, sprinkling, and pouring (i.e., liquid composition).
The claims do not recite the chelating agent is metalated or metal-free. The claims also do not recite wherein the nitrogen-bearing macrocyclic compound and the chelating agent are present in a relative proportion between about 10:1 and about 1:50 by weight, wherein the weight of the nitrogen-bearing compound and the chelating agent is between about 1:1 and about 1:10 and wherein the chelating agent is provided at a concentration between about 5µm and about 5000µm. The claims do not recite wherein the composition further comprises an oil selected from the group consisting of a mineral oil, a vegetable oil and a mixture thereof. The claims also do not recite wherein the nitrogen-bearing macrocyclic compound is provided at a concentration between about 5µm and about 10µm. The claims also do not recite the carrier fluid comprises water, however these deficiencies are cured by Miles and Hei et al. Miles teaches that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers (page 8, first paragraph). Miles continues to disclose a composition comprising a cleating agent and an insecticide (page 50, claim 39). Miles further discloses EDTA is present at a concentration of at least 10% by weight of the adjuvant composition (page 49, claim 16). One of ordinary skill in the art would have understood in view of Miles that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers indicating that metal free chelating agents can also be used and also that chelating agents increase the permeability of cell membranes. Thus, one would have recognized the metal- free chelating agent as suitable as well as metalated chelating agent.
Regarding claims 142, 152, and 162 one of ordinary skill in the art would have understood in view of Miles to use EDTA at a concentration of at least 10% by weight (page 49, claim 16). It is obvious to use the concentration ranges as a starting point because it is obvious to optimize for efficacy of porphyrin and the chelating agent. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).
Hei teaches the composition contains at least one lubricant such as vegetable oil or mineral oil (paragraph [0037]). Hei further teaches the antimicrobial composition preferably contains at least about 0.1 ppm of a photochemical singlet oxygen-generating agent, more preferably about 0.1 to about 50 ppm (paragraph [0050]). Hei also teaches the antimicrobial composition can be a liquid, wherein it can be aqueous meaning primarily water (i.e., carrier fluid) (paragraph [0012]). It would have been prima facie obvious to use the composition of ‘398 with an oil of Hei’s composition because one would have recognized it as suitable for administration of the composition.
Regarding claim 142, it is obvious to use the concentration range as a starting point because it is obvious to optimize for efficacy of porphyrin. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).
Regarding claim 159, it would have been prima facie obvious to use the of ‘398 with an carrier fluid comprising water of Hei’s composition because one would have recognized water as suitable as a carrier fluid for the administration of composition.
This is a provisional nonstatutory double patenting rejection.
Claim 146 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 168-169, 176-183, 185-189 of copending Application No. 16639398 as applied to claims 142, 144-145, 147, 150, and 153-154 above in view of Bommer et al. (US20030050296, Published 03/13/2003; cited in the IDS filed 06/10/22).
The relevant limitations of ‘398 application are set forth above.
The claims do not recite wherein the nitrogen-bearing macrocyclic compound comprises a metal-free nitrogen-bearing macrocyclic compound that is selected such that, in response to light exposure, the metal-free nitrogen-bearing compound generates reactive oxygen species, however Bommer teaches in other instances, the porphyrin or reduced porphyrin is a metal chelated porphyrin. In these instances, metals whose porphyrin chelates are useful as photodynamic antimicrobial agents include Mg (magnesium), Zn (zinc), Al (aluminum), In (indium), Si (silicon), Sn (tin), Pd (palladium), and Pt (platinum) (page 2, paragraph [0020]). One of ordinary skill in the art would have understood in view of Bommer that in other instances, the porphyrin or reduced porphyrin is a metal chelated porphyrin indicating that metal free porphyrin can also be used, so one would have recognized the metal- free porphyrin as suitable.
This is a provisional nonstatutory double patenting rejection.
Claim 151 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 168-169, 176-183, 185-189 of copending Application No. 16639398 as applied to claims 142, 144-145, 147, 150, and 153-154 above in view of in view of Tidow (US7194964, Published 03/27/2007).
The relevant limitations of ‘398 application are set forth above.
The claims do not recite wherein the chelating agent is a polymeric chelating agent, however Tidow teaches a chemical soil disinfestation comprising applying a insecticidally active amount of mixture M comprising a component of a complexing agents (i.e., chelating agent) selected from the group consisting of non-polymeric complexing compounds like EDTA (ethylenediaminetetraacetic acid) and polymeric complexing agents like polyaspartic acid (claim 1). One having ordinary skill in the art would have understood in view of Tidow in the analogous art of agricultural compositions that polymeric chelating agents can be used because they are both known for chelating agents and would be recognized as a suitable type of chelating agent in this type of composition. See MPEP2144.07.
This is a provisional nonstatutory double patenting rejection.
Claim 160 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 168-169, 176-183, 185-189 of copending Application No. 16639398 as applied to claims 142, 144-145, 147, 150, and 153-154 above in view of König et al (WO2017167992, Published 10/05/2017). US20190111168 is the national stage entry of WO2017167992, and thus serves as an English translation for WO’992; accordingly relevant passages will be cited from the US ‘168 reference.
The relevant limitations of ‘398 application are set forth above.
The claims do not recite wherein the carrier fluid comprises an oil-in-water emulsion, however König teaches preferably, a microemulsion in accordance with the invention, which is preferably an oil-in-water (O/W) microemulsion (paragraph [0165]). It would be obvious to one of ordinary skill in the art to use the ‘398 composition with an oil-in-water emulsion in König’s composition because the dispersed phase forms small domains (“droplets”) which do not scatter incident visible light (page 18, paragraph [0164]).
This is a provisional nonstatutory double patenting rejection.
Claims 142, 143-145, 147-150, 152-153, 155, 162 and 165 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 257-269, 272-275, and 277-282 of copending Application No. 17051666 in view of in view of Miles (WO2003101197, Published 12/11/2003).
Inter alia the claims of ‘666 application embraces a composition for increasing resistance of a plant to one or more abiotic stress, the composition comprising: a macrocyclic tetrapyrrole compound selected from the group consisting of a porphyrin, a reduced porphyrin, and a mixture thereof; an oil selected from the group consisting of a mineral oil, a vegetable oil and a mixture thereof; and a chelating agent which comprises an aminopolycarboxylic acid compound or an agriculturally acceptable salt thereof. The ‘666 application further embraces wherein the reduced porphyrin compound is a chlorin (i.e., chlorophyllin). The ‘666 application also embraces the macrocyclic tetrapyrrole compound is complexed with a metal to form metalated macrocyclic tetrapyrrole compound, wherein the metal is selected such that, in response to light exposure, the metalated macrocyclic tetrapyrrole compound generates reactive oxygen species (ROS). The metal is selected from the group consisting of Mg, Zn, Pd, Sn, Al, Pt, Si, Ni, Ge, Ga and In. The ‘666 application also embraces wherein the macrocyclic tetrapyrrole compound is provided at a concentration between about 5µm and about 100 µm. The macrocyclic tetrapyrrole compound and the chelating agent are applied in a relative proportion between about 50:1 and about 1:1000 by weight. The ‘666 application continues to embrace a surfactant. Wherein the plant is a non- woody crop plant, a woody plant, a turfgrass. The ‘666 application further teaches the aminopolycarboxylic acid compound comprises ethylenediaminetetraacetic acid or an agriculturally acceptable salt thereof. The ‘666 application also teaches wherein the macrocyclic tetrapyrrole compound and the amino polycarboxylic acid compound or salt thereof are present in amounts that are synergistically effective for increasing resistance of the plant to at least one of the one or more abiotic stress.
The claims do not recite the chelating agent is metalated or metal-free. The claims also do not recite wherein the chelating agent is provided at a concentration between about 5µm and about 5000µm, however Miles teaches that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers (page 8, first paragraph). Miles continues to disclose a composition comprising a cleating agent and an insecticide (page 50, claim 39). Miles further discloses EDTA is present at a concentration of at least 10% by weight of the adjuvant composition (page 49, claim 16). One of ordinary skill in the art would have understood in view of Miles that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers indicating that metal free chelating agents can also be used and also that chelating agents increase the permeability of cell membranes. Thus, one would have recognized the metal-free chelating agent as suitable as well as metalated chelating agent.
Regarding claims 142, one of ordinary skill in the art would have understood in view of Miles to use EDTA at a concentration of at least 10% by weight (page 49, claim 16). It is obvious to use the concentration ranges as a starting point because it is obvious to optimize for efficacy of porphyrin and the chelating agent. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).
This is a provisional nonstatutory double patenting rejection.
Claim 146 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 257-269, 272-275, and 277-282 of copending Application No. 17051666 as applied to claims 142, 143-145, 147, 150, 152-153, 155-156 and 162 above in view of Bommer et al. (US20030050296, Published 03/13/2003; cited in the IDS filed 06/10/22).
The relevant limitations of ‘666 application are set forth above.
The claims do not recite wherein the nitrogen-bearing macrocyclic compound comprises a metal-free nitrogen-bearing macrocyclic compound that is selected such that, in response to light exposure, the metal-free nitrogen-bearing compound generates reactive oxygen species, however Bommer teaches in other instances, the porphyrin or reduced porphyrin is a metal chelated porphyrin. In these instances, metals whose porphyrin chelates are useful as photodynamic antimicrobial agents include Mg (magnesium), Zn (zinc), Al (aluminum), In (indium), Si (silicon), Sn (tin), Pd (palladium), and Pt (platinum) (page 2, paragraph [0020]). One of ordinary skill in the art would have understood in view of Bommer that in other instances, the porphyrin or reduced porphyrin is a metal chelated porphyrin indicating that metal free porphyrin can also be used, so one would have recognized the metal- free porphyrin as suitable.
This is a provisional nonstatutory double patenting rejection.
Claim 151 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 257-269, 272-275, and 277-282 of copending Application No. 17051666 as applied to claims 142, 143-145, 147, 150, 152-153, 155-156 and 162 above in view of Tidow (US7194964, Published 03/27/2007).
The relevant limitations of ‘666 application are set forth above.
The claims do not recite wherein the chelating agent is a polymeric chelating agent, however Tidow teaches a chemical soil disinfestation comprising applying a insecticidally active amount of mixture M comprising a component of a complexing agents (i.e., chelating agent) selected from the group consisting of non-polymeric complexing compounds like EDTA (ethylenediaminetetraacetic acid) and polymeric complexing agents like polyaspartic acid (claim 1). One having ordinary skill in the art would have understood in view of Tidow in the analogous art of agricultural compositions that polymeric chelating agents can be used because they are both known for chelating agents and would be recognized as a suitable type of chelating agent in this type of composition. See MPEP2144.07.
This is a provisional nonstatutory double patenting rejection.
Claim 154 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 257-269, 272-275, and 277-282 of copending Application No. 17051666 as applied to claims 142, 143-145, 147, 150, 152-153, 155-156 and 162 above in view of in view of Konate et al. (US20180092843, Published 04/05/2018).
The relevant limitations of ‘666 application are set forth above.
The claims do not recite wherein the surfactant is selected from the group consisting of an ethoxylated alcohol, a polymeric surfactant, a fatty acid ester, a polyethylene glycol, an ethoxylated alkyl alcohol, a monoglyceride, an alkyl monoglyceride and a mixture thereof. However Konate teaches non-phospholipid amphiphilic ingredients are also considered for forming vesicles, and such ingredients are typically amphiphilic lipids such as polyethylene glycol and fatty acid esters (page 4, paragraph [0043]). One having ordinary skill in the art would have understood in view of Konate in the analogous art of compositions for controlling microorganisms that a fatty acid ester or polyethylene glycol can be used as a stabilizing agent (i.e., surfactant) in forming vesicles because the fatty acid ester or polyethylene glycol would be recognized as a suitable type of surfactant to use in this composition. See MPEP2144.07.
This is a provisional nonstatutory double patenting rejection.
Claims 159 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 257-269, 272-275, and 277-282 of copending Application No. 17051666 as applied to claims 142, 143-145, 147, 150, 152-153, 155-156 and 162 above in view of Hei et al. (US20030194433A1, Published 10/16/2003).
The relevant limitations of ‘666 application are set forth above.
The claims do not recite wherein the carrier fluid comprises water, however Hei teaches the antimicrobial composition can be a liquid, wherein it can be aqueous meaning primarily water (i.e., carrier fluid) (paragraph [0012]). Regarding claim 159, it would have been prima facie obvious to use the composition of ‘666 with an carrier fluid comprising water of Hei’s composition because one would have recognized water as suitable as a carrier fluid for the administration of composition.
This is a provisional nonstatutory double patenting rejection.
Claim 160 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 257-269, 272-275, and 277-282 of copending Application No. 17051666 as applied to claims 142, 143-145, 147, 150, 152-153, 155-156 and 162 above in view of above in view of König et al (WO2017167992, Published 10/05/2017). US20190111168 is the national stage entry of WO2017167992, and thus serves as an English translation for WO’992; accordingly relevant passages will be cited from the US ‘168 reference.
The relevant limitations of ‘666 application are set forth above.
The claims do not recite wherein the carrier fluid comprises an oil-in-water emulsion, however König teaches preferably, a microemulsion in accordance with the invention, which is preferably an oil-in-water (O/W) microemulsion (paragraph [0165]). It would be obvious to one of ordinary skill in the art to use the ‘666 composition with an oil-in-water emulsion in König’s composition because the dispersed phase forms small domains (“droplets”) which do not scatter incident visible light (page 18, paragraph [0164]).
This is a provisional nonstatutory double patenting rejection.
Claims 142, 147-150, 152-155, 162 and 165 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 127-146 of copending Application No. 17800776 in view of Miles (WO2003101197, Published 12/11/2003) further in view Hei et al. (US20030194433A1, Published 10/16/2003).
Inter alia the claims of ‘776 application embraces A composition for application to a plant, comprising: a photosensitizer that generates reactive oxygen species in the presence of light and oxygen, the photosensitizer being selected from the group consisting of a porphyrin, a reduced porphyrin and a combination thereof; and a liquid carrier. Wherein the photosensitizer is chlorin e6 or a modified chlorin e6, a protoporphyrin IX (PP IX) or a modified PP IX, or meso-tetra-(4- sulfonatophenyl) porphyrin (TPPS) and wherein a photosensitizer is a chlorophyllin. The ‘776 application also embraces wherein the liquid carrier is an aqueous carrier (i.e., water); wherein the aqueous carrier comprises an oil and is an oil-in-water emulsion. The oil is selected from the group consisting of: a vegetable oil or a mineral oil. The composition further comprises a chelating agent which is selected from the group consisting of ethylenediaminetetraacetic acid (EDTA) (i.e., non-polymeric). The ‘776 application further embraces a surfactant wherein the surfactant is selected from the group consisting of an ethoxylated alcohol, a polymeric surfactant, a fatty acid ester, a polyethylene glycol, an ethoxylated alkyl alcohol, a monoglyceride, an alkyl monoglyceride and a mixture thereof. Wherein the plant is a non-woody crop plant, a woody plant or a turfgrass. The ’766 application teach a composition for application to a plant, comprising: a photosensitizer that generates reactive oxygen species in the presence of light and oxygen, the photosensitizer being selected from the group consisting of a porphyrin, a reduced porphyrin and a combination thereof; and a liquid carrier. Wherein the photosensitizer is chlorin e6 or a modified chlorin e6, a protoporphyrin IX (PP IX) or a modified PP IX, or meso-tetra-(4- sulfonatophenyl) porphyrin (TPPS) and wherein a photosensitizer is a chlorophyllin. The ‘776 application also embraces wherein the liquid carrier is an aqueous carrier (i.e., water), but do not explicitly disclose a synergistically effective amount of the chelating agent and nitrogen-bearing macrocyclic compound as claimed. However, such property must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
The claims do not recite the chelating agent is metalated or metal-free. The claims also do not recite wherein the nitrogen-bearing macrocyclic compound (i.e., porphyrin) and the chelating agent are present in a relative proportion between about 10:1 and about 1:50 by weight, wherein the weight of the nitrogen-bearing compound and the cleating agent is between about 1:1 and about 1:10; wherein the chelating agent is provided at a concentration between about 5µm and about 5000µm; and wherein the chelating agent and the nitrogen-bearing macrocyclic compound are provided in amounts that are synergistically effective to increase mortality of the insect pest, however Miles teaches that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers indicating that metal free chelating agents can also be used and also that chelating agents increase the permeability of cell membranes (page 8, first paragraph). Miles continues to disclose a composition comprising a cleating agent and an insecticide (page 50, claim 39). Miles further discloses EDTA is present at a concentration of at least 10% by weight of the adjuvant composition (page 49, claim 16). One of ordinary skill in the art would have understood in view of Miles that sometimes chelating agents combine with a metal ion to form soluble complexes that help the ions move across barriers indicating that metal free chelating agents can also be used, so one would have recognized the metal- free chelating agent as suitable as well as metalated chelating agent. Regarding claims 142, 152, and 162 one of ordinary skill in the art would have understood in view of Miles to use EDTA at a concentration of at least 10% by weight (page 49, claim 16). It is obvious to use the concentration ranges as a starting point because it is obvious to optimize for efficacy of porphyrin and the chelating agent. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A). Claim 165 requires the limitation wherein the chelating agent and the nitrogen-bearing macrocyclic compound are provided in amounts that are synergistically effective to increase mortality of the insect pest.
The claims do not recite wherein the nitrogen-bearing macrocyclic compound is provided at a concentration about 5 µm and about 10 µm, however Hei teaches the antimicrobial composition preferably contains at least about 0.1 ppm of a photochemical singlet oxygen-generating agent, more preferably about 0.1 to about 50 ppm (paragraph [0050]). It is obvious to use the concentration range as a starting point because it is obvious to optimize for efficacy of porphyrin. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II) (A).
This is a provisional nonstatutory double patenting rejection.
Claims 144-146 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 127-146 of copending Application No. 17800776 as applied to 142, 147-150, 152-155, 162 and 165 above in view of Bommer et al. (US20030050296, Published 03/13/2003; cited in the IDS filed 06/10/22).
The relevant limitations of ‘776 application are set forth above.
The claims do not recite wherein the nitrogen-bearing macrocyclic compound (i.e., porphyrin) comprises a metal-free nitrogen-bearing macrocyclic compound that is selected such that, in response to light exposure, the metal-free nitrogen-bearing compound generates reactive oxygen species, however Bommer teaches in other instances, the porphyrin or reduced porphyrin (i.e., chlorophyllin) is a metal chelated porphyrin. In these instances, metals whose porphyrin chelates are useful as photodynamic antimicrobial agents include Mg (magnesium), Zn (zinc), Al (aluminum), In (indium), Si (silicon), Sn (tin), Pd (palladium), and Pt (platinum) (page 2, paragraph [0020]). One of ordinary skill in the art would have understood in view of Bommer that in other instances, the porphyrin or reduced porphyrin is a metal chelated porphyrin indicating that metal free porphyrin can also be used, so one would have recognized the metal- free porphyrin as suitable.
This is a provisional nonstatutory double patenting rejection.
Claim 151 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 127-146 of copending Application No. 17800776 as applied to 142, 147-150, 152-155, 162 and 165 above in view of Tidow (US7194964, Published 03/27/2007).
The relevant limitations of ‘776 application are set forth above.
The claims do not recite wherein the chelating agent is a polymeric chelating agent, however Tidow teaches a chemical soil disinfestation comprising applying a insecticidally active amount of mixture M comprising a component of a complexing agents (i.e., chelating agent) selected from the group consisting of non-polymeric complexing compounds like EDTA (ethylenediaminetetraacetic acid) and polymeric complexing agents like polyaspartic acid (claim 1). One having ordinary skill in the art would have understood in view of Tidow in the analogous art of agricultural compositions that polymeric chelating agents can be used because they are both known for chelating agents and would be recognized as a suitable type of chelating agent in this type of composition. See MPEP2144.07.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's comment on page 8 of the remarks filed 02/27/2026 requesting that the nonstatutory double patenting rejections be held in abeyance is noted.
Regarding Applicant's argument that the double patenting rejections should be held in abeyance, the double patenting rejections apply to the claims as they are currently written, therefore these double patenting rejections are maintained. Further, Applicants' request to hold the rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the rejection is maintained in the absence of a terminal disclaimer.
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.
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AFUA BAMFOAA BOATENG Examiner, Art Unit 1617
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614
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