*DETAILED ACTION*
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on June 15, 2026 has been entered.
Priority
This application is a 371 of PCT/JP2020/028744 filed on 07/27/2020, and claims foreign
priority in Japanese application JP2019- 143474 filed on 08/05/2019.
Claim Status
Claims 1, 3, 7-9, 11, and 13-18 are pending and examined. Claims 2, 4-6, 10, and 12
were cancelled. Claims 15-18 were newly added and read on the examined invention. Claims 1, 9, 11, and 13 were amended.
Withdrawn Claim Rejections - 35 USC§ 103
Rejections of claims 1, 3, 7-9, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Frisch (US 2005/0266998 Al Published December 1, 2005) and Ikeda (EP I 944 330 Al Published July 16, 2008) are withdrawn because claim 1 was amended to require the active ingredient (a) to be selected from four specific active ingredients, which are not obvious over the cited references.
Rejection of claim 13 over Frisch (US 2005/0266998 Al Published December 1, 2005), Ikeda (EP I 944 330 Al Published July 16, 2008) and lshihara (US 2011/0028528 Al Published February 3, 2011) is withdrawn because the claim was amended to require cyclaniliprole, which is not obvious over the cited references.
Claim Objections
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The claim requires a specific active agent, a combination of specific surfactants and a combination of specific solvents. In view of the prior art of record, it would not have been obvious to a person skilled in the art to combine the claimed elements and arrive at the subject matter of claim 18 with a reasonable expectation of success.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C.
102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a
new ground of rejection if the prior art relied upon, and the rationale supporting the rejection,
would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35
U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the
claims the examiner presumes that the subject matter of the various claims was commonly
owned as of the effective filing date of the claimed invention(s) absent any evidence to the
contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
effective filing dates of each claim that was not commonly owned as of the effective filing date
of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 7-9, 11, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Frisch (US 2005/0266998 Al Published December 1, 2005), Ikeda (EP I 944 330 Al
Published July 16, 2008), and Weiss (CA 3 007 969 Published June 15, 2017).
The claims encompass an agricultural formulation comprising components a, b, c, and d,
wherein components a, b, and c and dissolved in component d.
The teachings of Frisch are related to liquid aqueous formulations of water-soluble crop
protectant ingredients which comprise:
(a) one or more water-soluble active ingredients,
(b) if desired, one or more water-insoluble active ingredients,
(c) if desired, polar organic solvents
(d) anionic surfactants,
(e) if desired, nonionic, cationic, and/or zwitterionic surfactants,
(f) silicone based defoamers from the group of linear polydimethylsiloxanes,
(g) if desired, other customary formulation assistants, and
(h) water.
The composition is suitable as low-foam formulation for application in crop protection
(Abstract). Paragraphs 0041-0051 teach suitable organic solvents. In the case of single-phase
aqueous-organic solutions the wholly or largely water-miscible solvents or solvent mixtures are
appropriate (paragraph 0052). Examples of customary formulation assistants (g) are inert
materials, such as stickers, wetters, dispersants, emulsifiers, penetrants, preservatives, and frost
protectants, fillers, carriers and colorants, evaporation inhibitors and pH modifiers (buffers, acids
and bases) or viscosity modifiers (e.g., thickeners) (paragraph 0085). With the aid of mixtures of
components, it is possible to prepare concentrated low-foam liquid aqueous preparations of
saltlike active crop protectant ingredients, which comprise
(a) 1-40 wt.% of one or more water-soluble active ingredients,
(b) 0-40 wt. % of one or more water-insoluble active ingredients,
(c) 0-50 wt. % of polar organic solvents,
(d) 1-80 wt. % of anionic surfactants,
(e) 0-20 wt. % of nonionic, cationic, and/or zwitterionic surfactants,
(f) 0.02-10 wt.% of silicone based defoamers from the group of linear polydimethylsiloxanes,
(g) 0-30 wt. % of other customary formulation assistants, and
(h) 0.1-90 wt.% of water (paragraphs 0087-0095).
By way of example the formulations are distinguished by a low tendency to foam when
diluted with water, as for example when preparing tank mixes or when the formulations are
applied by spraying (paragraph 0129).
Frisch does not teach the silicone compound c of formula (II).
The teachings of Ikeda are related to a low-foaming silicone composition (Abstract). The
low-foaming silicone composition comprises components A, B, and C in ranges of
concentrations, where component C has the formula
PNG
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142
444
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wherein each R13 and R15 independently represent unsubstituted monovalent hydrocarbon group of 1-18 carbon atoms, Rl4 represents a chemical structure of formula
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81
305
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Greyscale
wherein each R16 represents an unsubstituted bivalent hydrocarbon group of 2-8 carbon atoms, r
is integer of 0-6, and s is an integer of 0-2 (paragraph 0010). The composition exhibits powerful
surfactant action and low foaming properties, and is consequently useful as a spreading agent
such as an agrichemical spreading agent (paragraph 0015). Specific example of component C
includes a compound
PNG
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117
316
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(paragraph 0046), which is termed C1 (paragraph 0057).
Frisch and Ikeda do not teach the claimed active ingredients.
The teachings of Weiss are related to liquid formulations comprising prothioconazole and omega-unsaturated fatty acid amides as solvent (Abstract). The formulation provides a stable emulsion concentrate formulation of prothioconazole, optionally in combination with further organic, water-insoluble active ingredients, preferably selected from fungicides and insecticides, for treatment of plants (page 5 lines 22-24). The formulation comprises a) prothioconazole, b) at least one organic solvent characterized by formula I, c) at least one nonionic emulsifier, and d) one more further active agrochemical ingredients (page 7 lines 1-8), and additional components such as defoamers (page 7 lines 11-13). The active ingredients include fungicides, insecticides, and herbicides. The active ingredients are preferably water-insoluble, and preferred active ingredients include cyclaniliprole and flonicamid (page 9 line 19-26). Suitable defoamers are all substances which can typically be used for this purpose in agrochemicals. Preference is given to silicone oils and silicone oil formulations (page 15 lines 4-8).
The teachings of Frisch, Ikeda, and Weiss are related to compositions suitable for use in
agrochemical compositions and it would have been obvious to have combined their teachings
because they are in the same field of endeavor.
It would have been prima facie obvious to a person of ordinary skill in the art before the
effective filing date of the claimed invention to have formed a single phase concentrated solution
comprising 1-40 wt. % of one or more water-soluble active ingredients, 0-50 wt. % of polar
organic solvents, 1-80 wt. % of anionic surfactants, 0-20 wt. % of nonionic, cationic, and/or
zwitterionic surfactants, 0.02-10 wt.% of silicone based defoamers from the group of linear
polydimethylsiloxanes, 0-30 wt. % of other customary formulation assistants, and 0.1-90 wt. %
of water, with a reasonable expectation of success because Frisch teaches a single phase
concentrated solution comprising said components. According to the teachings of Frisch, the
concentrated solution is intended to be diluted with water prior to use. It would have been
obvious to have formed the concentrated solution with 0.1 wt.% water because 0.1 wt.% is the
lowest suitable concentration of water in the composition. Similarly, it would have been obvious
to have used the organic solvent in a concentration of up to 50 wt. % because 50 wt. % is the
highest suitable concentration of organic solvent in the composition. It would have been obvious
to have selected N-methylpyrrolidone as the polar organic solvent because Frisch teaches Nmethylpyrrolidone as a suitable polar organic solvent (paragraph 0053).
It would have been obvious to have modified Frisch' s composition by adding Ikeda' s
composition, with a reasonable expectation of success because Frisch teaches that the
composition optionally comprises nonionic surfactants in a concentration of up to 20 wt. % and
optionally comprises customary formulation assistants in a concentration of up to 30 wt.%; and
Ikeda' s composition is described as a powerful surfactant and a spreader suitable for use in
agricultural compositions. It is apparent from chemical structures of components A, B, and C
that the components are nonionic. It would have been obvious to have formed Ikeda' s
composition with compound C1 because Ikeda teaches compound C1 as suitable for making the
composition. The selection of known material, such as Ikeda' s composition, based on its
suitability for its intended purpose, such as a surfactant and a spreader, supports obviousness. One of skill in the art would have been motivated to use Ikeda' s composition as a spreader and a
surfactant in Frisch's composition because Ikeda's composition is known for its low-foaming
properties and the purpose of Frisch is to form a composition with low foaming properties.
It would have been obvious to have formed Frisch's modified composition by having the
active ingredient, the surfactants, and Ikeda' s composition dissolved in the polar organic solvent
N-methylpyrrolidone because Frisch requires the composition to be a single-phase solution.
Frisch's composition modified by Ikeda is a single-phase concentrated solution comprising 1-40
wt.% of one or more water-soluble active ingredients, up to 50 wt.% of polar organic solvents
(N-methylpyrrolidone), 1-80 wt.% of anionic surfactants, 0.02-10 wt.% of silicone based
defoamers, up to 30 wt.% of lkeda's composition (other customary formulation assistants and
surfactant), and 0.1 wt.% of water. N-methylpyrrolidone is an amide and a pyrrolidone organic solvent.
It would have been obvious to have selected anionic derivatives of copolymers composed
of EO, PO, and/or BO units in the form of ether carboxylates, sulfonates, sulphates, and
phosphates, with a reasonable expectation of success because Frisch teaches that the anionic
surfactant is selected from anionic derivatives of copolymers composed of EO, PO and/or BO
units with a molecular weight of 400 to 108 in the form of ether carboxylates, sulfonates,
sulfates and phosphates and their inorganic (e.g., alkali metal and alkaline earth metal) and
organic salts (e.g., those based on amine or alkanolamine) (paragraph 0056). The claimed polyoxyalkylene surfactant and a sulfonate surfactant are obvious over this teaching.
Ikeda's compound Cl is the same as claimed compound of formula II.
It would have been obvious to have formulated Frisch’s formulation with cyclanilinprole or flonicamid as the water insoluble active agent with a reasonable expectation of success because Weiss teaches that cyclanilinprole and flonicamid are water insoluble agrochemical active agents suitable for making agrochemical compositions comprising an organic solvent and defoamers such as silicones. The selection of a known material based on its suitability for its intended purpose supports obviousness.
Frisch does not teach transmittance of light of the single-phase solution. The claim
requires at least 94% transmittance to light at a wavelength of 660 nm. It would have been
reasonable to expect the prior art genus of solutions to encompass a solution having the claimed
transmittance when measured at 660 nm because the solutions are described as a single phase
and contain the same elements as claimed in a range of concentrations. The Office is not
equipped to test prior art compositions in order to determine whether or not they have the same
properties as claimed compositions.
Regarding the limitation that requires a weight ratio of the agriculturally active ingredient
(a) to the silicone compound (c), it would have been obvious to have used Ikeda's composition in
example I (Table I in paragraph 0058) in Frisch's composition because Ikeda teaches example I
composition as a suitable composition for making a low foaming composition. Composition in
example I contains 90 wt.% of component Al, 5 wt.% of component B 1, and 5 wt.% of
component CI (relevant to claimed silicon compound (c) of formula I).
Frisch's composition contains 1-40 wt.% of one or more water-soluble active ingredients and up to 30 wt.% of lkeda's composition comprising Al, Bl, and Cl. A 100 g composition comprising 40g active and 30g of lkeda's composition is used for calculation purpose. Said composition would contain 27g of component Al, 1.5g component B 1, and 1.5g of component Cl. The weight ratio of (a) to (c) would be 40:1.5, which is encompassed by the claimed range of from 200:1 to 1:1 in claim 1, and claimed range of from 100:1 to 1:1 in claims 15-17.
Similarly, compositions having 40 wt. % of active and Ikeda' s composition in a range of
concentrations below 30 wt.% would also contain (a):(c) in a range of weight ratios that
overlaps with the claimed range. Furthermore, when active is used in a concentration of less than
40 wt.% and Ikeda's composition in a range of concentrations less than 30 wt.%, the range of
weight ratios of the two would overlap with the claimed range. Thus, the claimed range of
weight ratios is obvious.
The composition contains l-40g of the active, 1-80 g of anionic surfactants, and 0-20 g of
nonionic, cationic, and/or zwitterionic surfactants. When active agent is present in an amount of
40 g, the ratio of active to surfactant ranges from 40:1 to 40:100, which is equivalent to 40:1 to
1:2.5, which overlaps with the claimed ranges of weight ratios. When active agent is present in an amount of l g, the ratio of active to surfactant ranges from 1:1 to 1:100, which also overlaps with the claimed ranges of weight ratios.
The composition contains 1-80 g of anionic surfactants, and 0-20 g of nonionic, cationic,
and/or zwitterionic surfactants, and 0-50g of the organic solvent. When the composition contains
l g of surfactant and 50 g of organic solvent, the ratio of surfactant to solvent would be 1:50. The
organic solvent amount ranges from 0 to 50g, therefore all of the ratios in between 0 g and 50 g
relative to l g of solvent would have provided a range of weight ratios that overlaps with the
claimed range.
A 100 g composition comprising 50g organic solvent and 30g of lkeda's composition
would contain 27g of component Al, 1.5g component B1, and 1.5g of component Cl. The
weight ratio of component Cl (c) to organic solvent (d) would be 1.5: 50, which is encompassed
by the claimed range. Similarly, compositions having 40 wt. % of active and Ikeda' s
composition in a range of below 30 wt.% would also contain (c):(d) in a range of weight ratios
that overlaps with the claimed range. Furthermore, when organic solvent is used in a
concentration of less than 50 wt.% and Ikeda's composition in a range of concentrations less
than 30 wt.%, the range of weight ratios of (c):(d) would overlap with the claimed range. Thus,
the claimed range of weight ratios is obvious.
The claimed ranges of weight ratios are obvious because they overlap with the prior art
ranges of weight ratios. The specification was reviewed and there is no evidence that the claimed
ranges of weight ratios are critical.
Regarding claim 3, Frisch teaches anionic surfactants in the composition.
Regarding claim 7, Frisch teaches polar organic solvents and specifically
Nmethylpyrrolidone.
Regarding claim 8, the composition described above is a soluble concentrate.
Regarding claims 9 and 11, it would have been prima facie obvious to have formed the
composition of Frisch modified by Ikeda by mixing the components, with a reasonable
expectation of success because Frisch teaches preparing the liquid formulation by methods which
are customary in principle, i.e. by mixing components with stirring or shaking or by means of
static mixing methods (paragraph 0112). Frisch does not limit the order in which the components
are combined prior to mixing, and it would have been obvious to have combined the components
in any order. The claimed order of combining components is obvious over Frisch because it
would have been obvious to have added Ikeda's composition, which contains Cl, to Frisch's
composition which is a mixture comprising the active agent, the surfactant, and the organic
solvent. It would have been obvious to have dissolved Ikeda' s composition in the mixture
because the purpose of Frisch is to form a single-phase solution concentrate. Frisch's modified
method of making the composition would have accomplished suppressing foaming of a water
dilution of an agricultural formulation comprising elements a, b, c, and d because Frisch' s
modified method teaches the same steps and same components as claimed.
Combining prior art elements according to known methods to obtain predictable results
supports obviousness, and the selection of a known material based on its suitability for its
intended purpose supports obviousness. The present application was reviewed and there is no
evidence of criticality and unexpected results.
Regarding claim 14, the claim describes composition properties when placed under
certain conditions. The prior art composition meets all of the structural limitations of the claimed
composition and, absent evidence of unexpected results, it would have been reasonable to expect
the prior art composition to have the same properties as claimed because a chemical composition
and its properties are inseparable.
Response to Arguments
Applicant's arguments submitted in the remarks dated June 15, 2026, were fully
considered but are not persuasive for the following reasons.
The claims are still not commensurate in scope with the example that has asserted unexpected properties. Applicant amended claim 1 to limit each component by a range of concentrations, however this amendment is not sufficient to overcome the obviousness rejections with unexpected results for reasons of record.
Conclusion
No claims are allowed.
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/ALMA PIPIC/Primary Examiner, Art Unit 1617
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