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 Claims
Claim 1 and 16 are pending. Claims 2-15 and 17-21 are canceled. Claims 1 and 16 are amended.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Objections/Rejections Withdrawn
Claim Status Identifiers
In light of the amendments to the claim status identifiers, the objection is withdrawn.
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claim 16 under 35 U.S.C. 103 as being unpatentable over Macoviak et al. US 2014/0178496 (6/26/2014) in view of Patel et al. WO 2014/126584 (8/21/2014) (8/28/2023 IDS) and Sardella et al. Physiological effects and mode of action of ZnO nanoparticles against postharvest fungal contaminants, Food Research International 101 (2017) 274-279 (8/28/2023 IDS) is withdrawn.
New Rejections/Rejections Maintained
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 16 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The response filed 7/13/2026 added amendments to claim 1 with limitations that introduce NEW MATTER into the claims. The limitation “(i) an oil phase consisting of” and the limitation “(ii) an aqueous phase consisting of” does not have clear support in the specification and claims as originally filed.
There is no disclosure of “(i) an oil phase consisting of” a vegetable oil, a surfactant and a stabilizer in the claimed types and amounts anywhere in the specification or originally filed claims. There is also no disclosure of “(i) an aqueous phase consisting of” a silicate salt and zinc oxide nanoparticles and a dispersant in the claimed type and amounts anywhere in the specification or originally filed claims.
Indeed, there is no discussion or disclosure of what the oil phase consists of at all. There actually is no recitation of the phrase “oil phase” or “aqueous phase” anywhere in the specification or the claims as originally filed.
There is also very little discussion of the emulsion either. All the specification states regarding the emulsion is the following in paragraph [0039]
In one embodiment of the invention, the agrochemical formulation is in the form of an emulsion, consisting of a two-phase system, in which one of the non-miscible liquids is uniformly dispersed in the other. In the present invention, the two phases are formed with the silicate and the vegetable oil, together with the surfactant. This emulsion also comprises zinc oxide nanoparticles. As used in the present application, the term “nanoparticles” refers to a particle with a size between 1 and 999 nm.
Applicant has not pointed to any disclosure that provides either explicit or implicit support for these phrases or their contents. Thus, one skilled in the art would not understand that applicant was not in possession of the currently claimed invention.
Obviousness is not the standard for the addition new limitations to the disclosure as filed. It is noted that entitlement to a filing date does not extend to subject matter, which is not disclosed, but would be obvious over what is expressly disclosed. Lockwood v. American Airlines Inc., 41 USPQ2d 1961 (Fed. Cir. 1977).
Claim 1 recites limitations, which were not clearly disclosed in the specification as filed, and now change the scope of the instant disclosure as filed. Such limitations recited in claim 1, which did not appear in the specification, as filed, introduce new concepts and violate the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in present claim 1 in the specification or claims, as-filed, or remove these limitations from the claim in response to this Office Action.
Claim 16 is rejected as being dependent on claim 1.
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 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.
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Macoviak et al. US 2014/0178496 (6/26/2014) in view of Patel et al. WO 2014/126584 (8/21/2014) (8/28/2023 IDS) and Sardella et al. Physiological effects and mode of action of ZnO nanoparticles against postharvest fungal contaminants, Food Research International 101 (2017) 274-279 (8/28/2023 IDS) is maintained.
Macoviak et al. (Macoviak) teaches compositions that comprise nanoscale particles, a film-forming polymer and a carrier that is suitable for administration to surfaces and that can kill vegetative bacteria. (See Abstract). Macoviak also teaches a method of reducing the population of pathogenic microorganisms on skin or surfaces by applying the composition. (See Abstract). The nanoscale particles can be zinc oxide. (See [0229]). The composition can be in the form of an oil-in-water emulsion. (See [0748]). An oil-in-water emulsion is called for in instant claim 1.
The composition can contain a thickener as called for in instant claim 1. (See [0749]). Since Macoviak teaches that xanthan gum is a thickener, it is taught to be a results-effective variable, so it would be no more than routine experimentation to experiment to arrive at the concentration called for in instant claim 1.
The composition can comprise surfactants such as Tween 80 which is called for in instant claim 1. (See [0702). Surfactants are described as stabilizing agents and as such they are taught to be results-effective variables. Therefore it would be no more than routine experimentation to experiment to arrive at the concentration called for in instant claim 7.
Macoviak teaches that the composition can also comprise a moisturizing agents which can include olive oil. (See [0728]). Olive oil is called for in instant claim 1. Since it is described as a moisturizing agent, palm oil is taught to be a results-effective variable. Therefore it would be no more than routine experimentation to experiment to arrive at the concentration called for in instant claim 1.
The carrier can be glycerol and it is taught to be an inert and nontoxic and does not react adversely with the active compound or target surface. (See [0752]). Glycerol is called for in claim 1. Glycerol is a carrier and is taught to be a result-effective variables. Therefore, it would be no more than routine experimentation to experiment to arrive at the concentration called for in instant claim 1.
Macoviak teaches the addition of water to its antimicrobial composition in the form of a carrier that is suitable for administration to skin or surfaces. (See [0230], [0280]. A dilution of the antimicrobial composition with water is called for in instant claim 16.
Macoviak does not teach potassium silicate. Macoviak teaches zinc oxide nanoparticles but does not expressly teach the numeric size dimensions of the zinc oxide nanoparticles or the properties of the zinc oxide nanoparticles. These deficiencies are made up for with the teachings of Patel and Sardella.
Patel et al. (Patel) teaches basic inorganic compositions and methods for providing antifungal, antibacterial resistance and/or hydrophobicity and/or corrosion resistance by coating surfaces with these compositions. These inorganic coatings provide resistance to the growth of mold and/or bacteria and/or corrosion protection for metallic and non-metallic surfaces. The composition comprises at least one poorly soluble basic metal oxide or hydroxide, one or more poorly soluble inorganic minerals and a basic inorganic salt. The poorly soluble basic metal oxide or hydroxide can be zinc oxide. See [0004]). The poorly soluble inorganic mineral may be an inorganic mineral such as a silicate, or wallastonite. The silicate can be potassium silicate. The composition may contain magnesium hydroxide which is a dispersant. (See Patel claim 2). Patel teaches that its zinc oxide microparticles can be wet milled to a certain size. (See [0043]).
Potassium silicate is called for in instant claim 1. (See Patel claim 4). Patel expressly teaches in paragraph [0031] that the introduction of the potassium silicate, the silicate salt, is not just a filler and provides for a composition with unique properties, namely improved hydrophobicity, improved corrosion resistance and improved microbial resistance. (See [0031]) Since Patel teaches that potassium silicate has effects and is not just a filler, it is taught to be a results-effective variable, so it would be no more than routine experimentation to experiment to arrive at the concentration called for in instant claim 1.
Patel also teaches a method for preventing or reducing the growth of fungi or bacteria on a surface comprising bringing said surface in contact with the composition because after contact the surface provides a basic environment of at least pH 14, thereby reducing or eliminating the growth of fungi or bacteria. The coating also provides hydrophobicity.
Sardella et al. (Sardella) teaches that zinc oxide nanoparticles with a diameter of less than 50 nanometers possess strong antifungal activity by inducing serious physical damage to the fungal structures which can be assumed to be irreversible. (See Conclusion). Zinc oxide nanoparticles are called for in instant claim 1. Less than 50 nanometers overlaps with the between 1 and 100 nm called for in claim 1.
Sardella shows that the zinc oxide nanoparticles are effective at preventing antifungal activity on potatoes. (See Abstract and Sec. 2.3 on page 273). Sardella teaches that the zinc oxide nanoparticles are effective at preventing the antifungal activity of the fungus Bottrytis cinera. Sardella teaches that zinc oxide nanoparticles have pesticidal activity and thus teach that zinc oxide nanoparticles are a results-effective variable. Therefore it would be no more than routine experimentation to experiment to arrive at the concentration called for in instant claim 1.
It would have been prima facie obvious for one of ordinary skill in the art as of the earliest effective filing date making the Macoviak composition to combine glycerol, the dispersant with zinc oxide nanoparticles microparticles and then mix in potassium silicate in light of Patel’s teaching that potassium silicate is not just a filler and provides for a composition with unique properties, namely improved hydrophobicity, improved corrosion resistance and improved microbial resistance.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Macoviak oil-in-water emulsion composition containing polysorbate 80, olive oil and glycerol to use zinc oxide nanoparticles of less than 50 nm in light of Sardella’s teaching that zinc oxide nanoparticles of less than 50 nm have pesticidal activity against Pythium ultimum.
With respect to the recitations of the oil phase and what it consists of and the aqueous phase and what it consists of, the prior art composition with the same components as those claimed in the same amounts (at the overlaps of the ranges) would necessarily have the same properties as those of the claimed composition. See, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements.”
Applicant is reminded that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, it is not necessary that the inherent properties of a prior art reference be recognized in order to render a subsequent invention obvious. As stated in MPEP 2145: “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”
It should be noted that the combination is physically the same, so it must have the same properties. “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.
Response to Arguments
Applicants’ comments of July 13, 2026 have been fully reviewed and are found to be only partly persuasive in light of the amendments to the claims and partly unpersuasive as further described below.
Applicants note the amendments to the claims and where support can be found for the amendments.
Applicants argue that the structure of the formulation is that of an oil in water emulsion consisting of an oil phase formed by the vegetable oil, the surfactant or the mixture of surfactants and the stabilizer, (ii) an aqueous phase formed by the silicate salts in solution and the ZnO nanoparticles stabilized with the dispersant into the aqueous phase. Applicants assert that neither Macoviak, nor Patel or Sardella suggest an oil-in-water emulsion in which the oil phase consists of the recited vegetable oil, surfactant and stabilizer while the aqueous phase contains both the silicate salt in solution and zinc oxide nanoparticles stabilized with the claimed dispersant. These structural limitations define the functional relationships between the claimed components and further distinguish the claimed formulation from the prior art on which the Examiner relies.
Applicant notes that although the cited prior art references disclose components of the formulation individually, they do not teach how to organize those components into the specific oil phase and aqueous phase now described in Claim 1, nor do they teach how to prepare two separate compositions prior to their combination, as currently required by claim 16.
Applicants assert that the rejection is based on an inappropriate retrospective reconstruction of the claimed invention.
Applicants further argue that even if a skilled artisan had considered combining the teachings of Macoviak, Patel and Sardella, the cited references do not provide a reasonable expectation of successfully obtaining the claimed agrochemical formulation.
Applicants argue that Macoviak does not expressly teach the properties of the zinc oxide nanoparticles, but Sardella refers to the physiological effects and the antifungal efficiency of ZnO nanoparticles. However, Sardella does not mention the use of silicate salts, so even if ZnO nanoparticles are sued instead of silver ones, there is no teaching in Sardella of incorporating silicate salts into Macoviak’s composition.
Applicants assert that the structure of the composition obtained from the teachings of Patel is completely different from the structure and usefulness of the present invention. Applicants acknowledge that the prior art does explicitly mention the use of ZnO and sodium and potassium silicate salts in a general manner, but assert that none of the cited prior art intends to specifically develop a composition in which both components are combined as in the present invention.
Applicants further assert that the inventive compositions succeed in meeting the challenges of stability while the cited prior art does not teach any way to overcome these challenges.
Applicants assert that in light of the amendments to claim 16, and the recitation of mixing the zinc oxide nanoparticles with the dispersant in a ball mill and sonicating to obtain a nanofluid, claim 16 is no longer rendered obvious by the combination of Macoviak, Patel and Sardella.
In light of the amendments to claim 16, the obviousness arguments regarding claim 16 are found to be persuasive and the obviousness rejection regarding claim 16 is withdrawn above. The prior art does not teach mixing the zinc oxide nanoparticles with the dispersant in a ball mill and sonicating to obtain a nanofluid.
The obviousness arguments with respect to claim 1 are not found to be persuasive, however. Applicants’ arguments that the prior art does not teach or suggest a liquid formulation with the recited elements in the form of an oil in water emulsion is not found to be persuasive because all of the recited elements are taught in the cited prior art.
Macoviak teaches an oil-in-water emulsion composition containing polysorbate 80, olive oil and glycerol and zinc oxide nanoparticles and potassium silicate is taught by Patel. Zinc oxide nanoparticles of less than 50 nm are taught by Sardella. Therefore, an oil in water emulsion with the recited elements is taught by the combined teachings of the prior art. Applicants even acknowledge that the prior art does explicitly mention the use of ZnO and sodium and potassium silicate salts in page 23 of their February 4, 2026 comments. The claims require an oil in water emulsion for the form of the formulation and that is taught in the prior art of Macoviak.
The only other structural requirements are that the oil phase consist of the vegetable oil in the in the claimed amounts, surfactant in the claimed amounts, and stabilizer in the claimed amount and an aqueous phase consisting of the silicate salt in the claimed amounts, the dispersant in the claimed amounts, and the zinc oxide nanoparticles in the claimed amount and size is required by the claims. The presence of the components in the aqueous phase or the oil phase will be a function of their relative hydrophobicity (presence in the oil phase) or hydrophilicity (presence in aqueous phase). This is a property of the component itself and if the exact component is taught in the same amount (at the overlap of the ranges) it will have the same properties and will be present in the same phase.
Applicant is reminded that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, it is not necessary that the inherent properties of a prior art reference be recognized in order to render a subsequent invention obvious. As stated in MPEP 2145: “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”
It should be noted that the combination is physically the same, so it must have the same properties. “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 relative hydrophobicity or hydrophilicity properties (and consequent presence in the oil or aqueous phase) will necessarily follow.
Applicants argument that hindsight has been employed in making the rejection is not found to be persuasive. Hindsight has not been used in making any obviousness rejections; this is evident in that all of the claimed elements are taught or suggested in the prior art references themselves and so is the motivation to combine them. The rejection relies on only knowledge from the prior art references themselves.
With respect to Applicants’ assertion that there is a lack of motivation to combine the prior art for the instant inventions specific problem or solution, Applicant is reminded that the 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).
It is well established that the prior art does not need to recognize the same problem as the Applicant. In KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court cautioned that, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103." Id. at 419. See also MPEP 2144(IV): The 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) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
The articulated motivation in the rejection applied above for combining the references is more than sufficient to motivate one of ordinary skill in the art to combine the teachings of the references as described in the rejection. 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) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
Respectfully, Applicants have not articulated any persuasive reason why the teachings of the prior art would not successfully result in the claimed invention. Absent evidence to the contrary, one of skill in the art would have a reasonable expectation of success as the prior art is all directed to compositions comprising nanoscale particles for killing bacteria or fungi or providing resistance to bacteria or fungi.
All of the elements of the claimed composition are taught in the combined teachings of the prior art. Applicants even acknowledge that the prior art does explicitly mention the use of ZnO and sodium and potassium silicate salts in page 23 of their February 4, 2026 comments. There really is not much dispute over whether the claimed elements are explicitly taught. Applicants assert that the structure of the invention are not present in the combined teachings of the prior art. However, the structural recitations in the amended claims are all a function of the properties of the components of the claim, and all of these same components as those claimed are taught in the prior art references.
The elements are taught by the cited prior art and there is also powerful motivation to combine the teachings of the prior art. A skilled artisan would have combined glycerol, the dispersant with zinc oxide nanoparticles microparticles and then mix in potassium silicate in light of Patel’s teaching that potassium silicate is not just a filler and provides for a composition with unique properties, namely improved hydrophobicity, improved corrosion resistance and improved microbial resistance. A skilled artisan would have then diluted with a water carrier to make it appropriate for application to skin or surfaces as taught by Macoviak. A skilled artisan would have used zinc oxide nanoparticles of less than 50 nm in order to have pesticidal activity against Pythium ultimum.
Conclusion
Claims 1 and 16 are rejected.
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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
