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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 4, 2026 has been entered.
Status of Claims
Claim 1 and 16 are pending. Claims 2-15 and 17-21 are canceled. Claim 1 is 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 1 and 16 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
New Objections
Claim Status Identifiers
The claim status identifier for claim 16 is missing. Appropriate correction is required.
Rejections Maintained
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 claims 1 and 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 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 or a method for preparing the formulation. 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 teaches a method of making the composition that comprises combining about 30-50 wt% sparing soluble basic metal oxide/hydroxide such as magnesium hydroxide and zinc oxide, about 10 to about 50 wt% sparing soluble potassium silicate and about 3 to about 30 wt% acidic inorganic salt, such as tri potassium phosphate. (See [0051]). Patel thus teaches combining magnesium hydroxide, the dispersant with zinc oxide microparticles and then mixing in calcium silicate. This reads on the steps of preparing a nanofluid comprising zinc oxide particles and a dispersant (magnesium hydroxide) and then mixing this combination with the silicate salt solution as called for in claim 16. Patel teaches that rheology modifiers can be added, so xanthan gum would be added to the composition, and additional additives could be added as well.
Although Patel does not teach the steps in the exact order they are laid out in claim 16, it is prima facie obvious when the prior art steps are disclosed in any order. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.)
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 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 and then to dilute with a water carrier to make it appropriate for application to skin or surfaces as taught by Macoviak.
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.
Response to Arguments
Applicants’ comments of February 4, 2026 and the Affidavit of Dr. Blanco-Tirado 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 assert that these amendments address the indefiniteness rejections and the Examiner agrees. The indefiniteness rejections are withdrawn above.
Applicants argue that the structure of the formulation is that of an oil in water emulsion comprising 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 these are the essential characteristics of the liquid agrochemical formulation and argue 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.
Applicants point out that the technical problem addressed in the instant invention consists of providing agrochemical compositions of ZnO nanoparticles and sodium silicate and potassium silicate salts in which the latter remain in solution and in stable form, thus aiding their inclusion by the plants treated with these formulations. Applicants note that this technological challenge that has not been addressed in any of the cited prior art is that potassium or silicate salts for agricultural uses in their application in the field polymerize easily due to their alkaline nature. Applicants refer to the Affidavit of Dr. Blanco-Tirado on this point.
Applicants assert that altering the addition of the components during the preparation of the formulations of the invention may lead to the formation of anything other than the formulation of claim 1.
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 point to the assertion of Dr. Blanco-Tirado that a skilled artisan would not have found motivations in the cited documents to make the adjustments proposed in the present inventions with a reasonable expectation of success.
The obviousness arguments are not found to be persuasive. 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. No other structural requirements other than the presence of the silicate salt in the claimed amounts, the vegetable oil in the claimed amounts, surfactant in the claimed amounts, dispersant in the claimed amounts, zinc oxide nanoparticles in the claimed amount and size and stabilizer in the claimed amount is required by the claims. Further, the method of claim 16 is not commensurate in scope with the formulation of claim 1, the process steps are generic and do not require the components as recited in claim 1.
Applicants’ argument that the technological challenge that has not been addressed in any of the cited prior art is that potassium or silicate salts for agricultural uses in their application in the field polymerize easily due to their alkaline nature is not found to be persuasive because the prior art does not need to recognize the same problem as the Applicant.
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 and properties of the invention are not present in the combined teachings of the prior art. However, there are no structural recitations in the language of the claims. There are no property recitations in the language of the claims. Respectfully, Applicants’ arguments fail to persuade because the distinctions that Applicants make between the cited prior art and the claimed invention are not captured in the language of the claims.
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.
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
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