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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 23-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schnabel et al. (WO2013017402).
Regarding claims 23-24, Schnabel teaches compositions which are a tank mix (e.g. all mixed together in a tank), which comprise combining a buffer with an anionic pesticide, specifically combining 19.23% w/w potassium carbonate (500 g/L) with 19.23% w/w dicamba (500 gae/ha applied in the form of the instantly claimed N,N-bis(3-aminopropyl)methylamine salt)), and ~23% surfactant (300 g/ha Genamin T050® (surfactant) and 300 g/ha Preference® (nonionic surfactant) 600/2600= 23% w/w), and wherein the composition comprises/is used in an application rate 1000 g/ha of potassium glyphosate, 38 w/w% (1000/2600= ~38%) which reads on the claimed (pg. 23, ln. 38-pg. 24, ln. 5; pg. 20, ln. 11-15, etc.; see specifically Example 7 which expressly teaches the composition as a tank mix and table 3). As Schnabel teaches the claimed composition comprising the claimed components in the claimed percentages the it is inherent that this composition would also lead to the claimed reduced loss being observed in improved equipment clean-out in comparison to the dicamba N,N-bis(3-aminopropyl)methylamine salt without buffer because “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Schnabel teaches all limitations of the claim and thereby anticipates the claim.
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.
N,
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 8-13, 16-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnabel et al. (WO2013/1017402).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 3, (claim 3 was missing from this record keeping statement but was clearly covered) 8-9, 16, 18, 21, Schnabel teaches compositions which provide reduced loss, specifically reduced volatility of the pesticide which leads to less loss of the active agent dicamba, which are intended to be applied to fields of crops wherein the crops specifically/preferably are the claimed soy/soybean and cotton, wherein the tank mix composition comprises the claimed anionic pesticide, specifically dicamba, more specifically the bis(3-aminopropyl)methylamine salt of dicamba and a buffer, specifically potassium carbonate, and wherein the composition preferably contains a further herbicide, specifically the claimed potassium glyphosate, and Schnabel teaches that they intend on applying their herbicide and buffer combination/composition to plants, soil, habitat/locus of said plants as is instantly claimed (Example 7; example 5; pg. 22, ln. 40-pg. 23, ln. 2; pg. 23, ln. 16-27; pg. 23, ln. 29-pg. 26, ln. 16; pg. 27, ln. 4-22; pg. 14, ln. 5-pg. 15, ln. 34; pg. 16, ln. 7-15; pg. 16, ln. 26-41; pg. 17, ln. 19-pg. 18, ln. 12; pg. 18, ln. 30-pg. 19, ln. 1; pg. 16-26; pg. 6, ln. 9-11 (may comprise further herbicides); pg. 6, ln. 13-pg. 8, ln. 21; pg. 8, ln. 31-pg. 10, ln. 4; pg. 11, ln. 11-19; pg. 11, ln. 23-24; pg. 11, ln. 26-pg. 12, ln. 31; pg. 12, ln. 27-31; pg. 14, ln. 5-pg. 16, ln. 15).
Regarding claims 17-18 (18 was previously missing from this record keeping statement but was clearly covered) and 20-21 (21 was previously missing from this record keeping statement but was clearly covered), in example 7 for instance, 500 gae/ha of dicamba (in the form of the instantly claimed N,N-bis(3-aminopropyl)methylamine salt which reads on claim 7), 1000 g/ha potassium glyphosate, and 250 g/ha or 500 g/ha or 1000 g/ha of potassium carbonate which reads on the claimed amounts of application of 128 to 1120 g active equivalents per hectare of anionic pesticide and the 100 to 800 g per hectare of buffer compound as claimed in instant claim 17, and reads on the claimed molar ratios of 10:1 to 1:5 of anionic pesticide to buffer, e.g. 500 gae/ha of dicamba (dicamba N,N-bis(3-aminopropyl)methylamine salt is 366.3 g/mol, N-bis(3-aminopropyl)methylamine is 145.25 /mol, dicamba is 221.03 g/mol, which means ~2.26 moles dicamba N,N-bis(3-aminopropyl)methylamine salt to 500/138.21 g/mol potassium carbonate=3.62 moles so ~2.26:3.62 ratio) to 500 g/ha of potassium carbonate which still reads on the ratio range claimed in instant claim 20 (see example 7; pg. 5, ln. 40-pg. 6, ln. 2).
Regarding claims 10-11, Schnabel teaches wherein the secondary pesticides can be the claimed glyphosate or glufosinate (Example 7, pg. 16, ln. 6-11; pg. 6, ln. 9-11; pg. 8, ln. 32-pg. 10, ln. 4; pg. 11, ln. 11-18, pg. 11, ln. 23-24).
Regarding claims 12-13, 19, and 22, Schnabel teaches wherein the composition can be carried on solid carriers/comprise solid fillers, specifically fertilizers, more specifically the claimed ammonium sulfate which is a nitrogen fertilizer (pg. 17, ln. 13-17).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Schnabel does not teach an example wherein loss/volatility of the active agent is reduced with the claimed application/applying step to a plant, seed, soil, or habitat of said plant which are not exemplified in the examples of Schnabel. However, as discussed above Schnabel does teach wherein they intend for their compositions to be applied to crop plants, specifically the claimed soy/soybean or cotton and as such it would have been obvious to one of ordinary skill in the art that when the compositions of Schnabel e.g. example 7, are applied to the claimed crop plants, and/or soil where the plants grow, etc. they would also obviously lead to the reduced loss as claimed and reported in Schnabel’s example 7.
Schnabel also does not teach wherein the reduced loss is observed in improved equipment clean-out in comparison to the anionic pesticide without buffer. However, this is a property of the claimed composition when applied to plant, soil, habitat of said plant, etc. which is only active step of the claimed method and Schnabel teaches that it is known to use equipment to apply their compositions which read-on the instantly claimed compositions and which can be applied via the same active steps. Thus, this property would be result effective of the composition being applied via the claimed method steps which are obviously already taught by Schnabel and as such would obviously lead to the claimed reduced loss effects that are claimed because it is known, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing that one ordinary skill in the art would have obviously achieved the claimed method when applying the combinations as intended/broadly taught by Schnabel, e.g. example 7, to plants and/or soil, or habitat in which the plants are growing because Schnabel teaches they intend their compositions for application to plants, etc. and Schnabel already achieves other forms of reduced loss with their compositions and it would be obvious that when applying to plants, soil, etc. as claimed and as broadly taught/intended by Schnabel they would achieve applicant’s claimed reduced loss effects.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument/Remarks
Applicant’s amendments to the claims have overcome the previous claim objections, 112(b) rejections, and 102 rejections over all claims except 23-24. Applicant’s amendments to the claims have prompted the revised/updated grounds of rejection presented herein.
Applicant’s arguments are not persuasive. However, applicant’s arguments insofar as they pertain to the updated grounds of rejection are addressed herein. Applicants first argue that the 102 is overcome in light of the amendment. The examiner respectfully disagrees because claims 23-24 are to a composition which can be used for anything and this composition is still expressly taught by Schnabel as discussed above, and because Schnabel teaches all of applicant’s claimed components in amounts which read on the instant claims then Schnabel’s composition would inherently have the claimed properties of reducing loss observed in improved equipment clean out because “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Applicants then argue that the 103 rejection is moot because it does not teach that they achieve the claimed reduced loss observed in improved equipment clean-out. The examiner disagrees because Schnabel specifically teaches forming tank mixes of the claimed composition/combination and teaches wherein they intend these compositions to be applied to crops/plants and as such because they do not expressly teach the claimed active step of explicitly applying the composition to a plant, seed, soil, or habitat of said plant the claims are still rendered obvious by Schnabel, even if the claims are no longer actually anticipated since the active step of the method is not clearly being performed in Schnabel as is discussed above and herein.
Applicants then further argue on pg. 6-7 that they have a specific hose assay that measures dicamba retention on equipment and quantitatively measures the dicamba retention which demonstrates that the addition of potassium carbonate buffer significantly improves clean-out efficiency. The examiner respectfully points out that this assay is not claimed. The claimed method only requires the active steps of a) combining the specific dicamba salt and a buffer selected from those specific buffers now claimed and b) applying the resulting composition to a plant, seed, soil, etc. No actual clean-out of the equipment is required by the claimed method. Thus, because Schnabel intends their compositions (which are formed by applicant’s active step a)) to be applied to plants, soil, seeds, and/or the habitat of said plant it clearly renders obvious the claimed method because it is clear that application to plants or seeds with their compositions is intended by Schnabel, and as such the resultant improved clean-out would be result effective and/or property of the claimed composition when used in equipment for application to plants which is envisioned by Schnabel as discussed above and herein.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN E HIRT/Primary Examiner, Art Unit 1617