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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 13, 2025 has been entered.
Claims 1, 3-10 and 12-17 are pending.
Claims 2 and 11 are cancelled.
Claims 1, 3-5 and 7 are currently amended.
Claims 16 and 17 are new.
Claims 12-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1, 3-10, 16 and 17 as filed on November 13, 2025 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn.
Applicant’s arguments and the 132 Declaration of Wen Xu have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 8, 2025 was considered.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 3-7, 9, 10, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shafer et al. (US 6,074,987, published June 13, 2000, of record) as evidenced by Evonik “Aerosil® R 972,” accessed 2024, of record in view of Soergel et al. (WO 2018/041665, published March 8, 2018, of record) as evidenced by CAS “Dimpropyridaz,” accessed 2024, of record.
Shafer teaches low viscosity water-based pesticide suspensions comprising about 0.003 to 50 wt% of a pesticide and about 1 to 8 wt% of a hydrophobic fumed silica (title; abstract; claims), as required by instant claims 3-5, 16, 17. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. The suspensions further comprise an antimicrobial agent to prevent the growth of bacteria, fungi or other microbial organisms (fungicide) (abstract; paragraph bridging columns 2 and 3), as required by instant claim 10.
The pesticide is selected from an insecticide, a fungicide and an herbicide (column 2, lines 35-37), as required by instant claim 10.
Hydrophobic fumed silicas are made by treating the surface of hydrophilic fumed silicas with a substance that chemically bonds and thereby changes the surface; the preferred silica is treated with dimethyldichlorosilane (methyl = C1) (abstract; column 3, lines 16-24), as required by instant claim 9. The silica may be Aerosil R-972 (Example 2 [A] at column 5, lines 40-60). As evidenced by Evonik, Aerosil R-972 is characterized by a BET specific surface area of 90 to 130 m2/g and a carbon content of 0.6 to 1.2%, as required by instant claims 6 and 7.
Shafer does not teach dimpropyridaz as required by claims 1, 5, 16 and 17.
This deficiency is made up for in the teachings of Soergel.
Soergel teaches pesticides compounds of formula (I) selected from compounds I-1 to I-3 which are 1-(1,2-dimethylpropyl)-N-ethyl-5-methyl-N-pyridazin-4-yl-pyrazole-4-carboxamide (dimpropyridaz as evidenced by CAS and by the instant specification at page 36, lines 1-2), 1-[1-(1-cyanocyclopropyl)ethyl]-N-ethyl-5-methyl-N-pyridazin-4-yl-pyrazole-4-carboxamide, and N-ethyl-1-(2-fluoro-1-methyl-propyl)-5-methyl-N-pyridazin-4-yl-pyrazole-4-carboxamide (title; abstract; claims, in particular 1 and 15). The pesticides can be formulated as inter alia a suspension (page 19, lines 23-32). Agricultural compositions generally comprise 0.01 to 95 wt% of the pesticide (page 22, lines 34-37).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute any of the pesticide compounds of formula (I) of Soergel inclusive of compound I-1 (dimpropyridaz) for the pesticide in the suspensions of Shafer because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Claims 1, 3-10, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shafer et al. (US 6,074,987, published June 13, 2000, of record) as evidenced by Evonik “Aerosil® R 972,” accessed 2024, of record in view of Soergel et al. (WO 2018/041665, published March 8, 2018, of record) as evidenced by CAS “Dimpropyridaz,” accessed 2024, of record as applied to claims 1, 3-7, 9, 10, 16 and 17 above, and further in view of Auweter et al. (WO 2016/016042, published February 4, 2016, of record).
The teachings of Shafer and Soergel have been described supra.
They do not teach a mean particle diameter of 0.5 to 20 microns as required by claim 8.
This deficiency is made up for in the teachings of Auweter.
Auweter teaches agrochemical suspoemulsions comprising hydrophobic modified silica particles; the emulsions comprise a pesticide which is suspended in a continuous aqueous phase (title; abstract; claims). The suspended pesticide has a particle size of 0.1 to 10 microns (page 2, lines 10-19), as required by instant claim 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the suspended pesticide / dimpropyridaz particles of the compositions of Shafer in view of Soergel to 0.1 to 10 microns as taught by Auweter because particles of this size are suitable for pesticides suspended in a continuous aqueous phase. There would be a reasonable expectation of success because Shafer does not delimit the size of the particles.
Response to Arguments and 132 Declaration: Claim Rejections - 35 USC § 103
Applicant’s arguments and the Declaration have been fully considered but they are not persuasive. Applicant’s Remarks are addressed herein to the extent they diverge from the Remarks of record.
Applicant’s expanded allegation at page 5 of the Remarks that one would not consider silica as a solution to Ostwald ripening with respect to highly water soluble pesticides is acknowledged but not found persuasive at least because (1) one would not consider a solubility of 28.7 g/L at 20 ºC as evidenced by Hodges as particularly “high” and (2) [t]he reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144 IV.
Applicant’s expanded allegation at page 5 that Shafer does not address highly water soluble pesticides is unpersuasive because Shafer embraces all pesticides. Applicant’s allegation at page 6 that this is “an overly broad reading” is unpersuasive because Shafer is silent as to any solubility criteria and one nominally skilled in the art would understand all that that is required for particles of any given pesticide to be present in water is a concentration above the solubility limit. A solubility of 28.7 g/L is about 3 wt%, assuming a solution density near that of water. Given that Shafer embraces pesticides in amounts up to about 50 wt% it is reasonable to conclude dimpropyridaz exists as particles within the range of Shafer.
Applicant’s allegation at page 6 that the substitution rationale is conclusory is unpersuasive because Applicant at page 6 acknowledges dimpropyridaz is a known pesticide. This is the only finding that is required to employ the KSR substitution rationale, e.g., a finding that the substituted components and their functions were known in the art. See MPEP 2143. The allegation that all pesticides are not fungible due to extensive difference in mode of action overlooks the fact that Shafer embraces all pesticides. The citation to random case law does not address these facts. In re Stepan is wildly off point because the facts of that case required a specific cloud point or physical property limitation in the claims. The second citation is not related to chemistry and appears to be relied upon to bolster Applicant’s flawed allegation that there is no motivation to combine. There is no need for the applied prior art to “overcome Ostwald ripening” as alleged. Applicant’s further citation to case law that they need not claim their alleged results is unpersuasive because the scope of the claims is not limited to the scope of the Examples. The claims do not require a milled conglomerate of dimpropyridaz with silica and additional excipients as exemplified.
Applicant’s statement at page 7 that the Examiner argues any pesticide would be saved from Ostwald ripening by silica is unpersuasive because it is Applicant that is fixated on Ostwald ripening. The prior art set forth in the rejection need render obvious that which is actually claimed.
Applicant’s citation to the Declaration at page 8 of the Remarks is acknowledged. The new comparison experiment with a pesticide having a water-solubility of 3800 g/L is noted but does not weigh against prima facie obviousness of the compositions actually claimed because the Declaration does not illustrate this pesticide cannot be used in the compositions of Shafer. See MPEP 716. That a pesticide which is presumably entirely dissolved at the tested concentration of 42 wt% results in a product according the Examples of the instant specification that is deemed not flowable is noted but lacks nexus with the claims and with the prior art.
Therefore, the rejections over Shafer are properly maintained in modified form as necessitated by Applicant’s amendments.
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, 3-10, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over (1) claims 1-7 of copending Application No. 17/602,822, and (2) claims 1 and 4-9 of copending Application No. 17/602,910, and are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,279,616 (Application No. 17/773,087) in view of Shafer et al. (US 6,074,987, published June 13, 2000, of record) as evidenced by Evonik “Aerosil® R 972,” accessed 2024, of record.
Although a Notice of Allowance has been mailed in the ‘822 Application and the issue fee has been paid, the rejection remains provisional because the ‘822 Application has not yet issued as a Patent
The instant claims are drawn to aqueous compositions comprising suspended particles of dimpropyridaz at a concentration of at least 10 wt% and hydrophobically modified fumed silica. The compositions may comprise up to 95 wt% dimpropyridaz, 10 to 90 wt% dimpropyridaz, 0.01 to 10 wt% silica, at least 0.1 wt% silica, or dimpropyridaz and silica in a weight ratio of 500:1 to 5:1. The silica may have a surface area of 10 to 500 m2/g, a carbon content of at least 5 wt%, or at least one covalently attached C1-C20 carbon. The dimpropyridaz particles may have a diameter of 0.5 to 20 microns. The compositions may further comprise a second active comprising an insecticide, fungicide or herbicide.
The copending ‘822 claims are drawn to aqueous compositions comprising suspended particles of dimpropyridaz and ethoxylated ricinolein. The compositions may comprise 1 to 65 wt% dimpropyridaz. The dimpropyridaz particles may have a diameter of 0.5 to 20 microns. The compositions may further comprise a second active.
The copending ‘910 claims are drawn to aqueous compositions comprising suspended particles of dimpropyridaz and lignosulfonate. The compositions may comprise at least 5 wt% dimpropyridaz. The dimpropyridaz particles may have a diameter of 0.5 to 20 microns. The compositions may further comprise a second active comprising a fungicide, insecticide or herbicide.
The ‘616 Patent claims are drawn to aqueous compositions comprising suspended particles of dimpropyridaz and triethylammonium chloride. The compositions may comprise at 5 to 40 wt% dimpropyridaz. The dimpropyridaz particles may have a diameter of 1 to 5 microns. The compositions may further comprise a second pesticide active.
The conflicting copending claims and the conflicting Patent claims differ from the instant claims with respect to the hydrophobically modified silica and the second active. However, these differences would have been obvious in view of the teachings of Shafer as described supra. It would have been obvious to modify the suspensions of the compositions of the conflicting claims to further comprise 1 to 8 wt% of hydrophobic fumed silica such as Aerosil R-972 (treated with dimethyldichlorosilane, BET surface area of 90 to 130 m2/g, carbon content of 0.6 to 1.2% as evidenced by Evonik) as taught by Shafer in order to inhibit phase separation of the suspension (e.g., Shafer, column 1, lines 10-20). It would have also been obvious to modify the compositions of the conflicting claims comprising the pesticide dimpropyridaz to further comprise antimicrobial agents active against fungi (fungicide) or/and pesticides selected from insecticides, fungicides and herbicides as taught by Shafer because it is prima facie obvious to combine equivalents known for the same purpose. See MPEP 2144.06.
Response to Arguments: Double Patenting
Applicant’s statement at page 10 of the Remarks that it would be premature to address the provisional rejections is noted, however, Applicant has already been advised that a complete response to a nonstatutory double patenting (NDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional. MPEP 804 I(B)(1). Because Applicant’s Remarks are non-responsive to these rejections, these rejections are properly maintained and made again.
Applicant’s statements at pages 10-11 that the instant claims are not an obvious variant of those of the ‘616 Patent are noted but not found persuasive because Shafer renders obvious the modification of the aqueous pesticidal compositions of the ‘616 Patent claims comprising suspended particles comprising dimpropyridaz to further comprise 1 to 8 wt% of hydrophobic fumed silica such as Aerosil R-972 (treated with dimethyldichlorosilane, BET surface area of 90 to 130 m2/g, carbon content of 0.6 to 1.2% as evidenced by Evonik) in order to inhibit phase separation of the suspension (e.g., Shafer, column 1, lines 10-20). The rejection does not articulate a substitution rationale as argued by Applicant.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schnabel et al. (BR 112013027781, as evidenced by the Google translation) is the closest prior art as identified by USPTO artificial intelligence and teaches an agricultural composition comprising a pesticide and a solvent (title; abstract; claims).
Hodges “Discovery, research and development of axalion® active insecticide: dimpropyridaz,” Pest Management Science, 2024 teaches dimpropyridaz has a water solubility of 28.7 g/L at 20 ºC at pH 7 (Table 9).
Lindfors (US 7,473,693) teaches particle size growth resulting from Ostwald ripening would be eliminated if all particles in the dispersion were the same size (paragraph bridging columns 1 and 2).
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600