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
This action is in response to papers filed September 3, 2025. Applicant’s reply to the restriction/election requirement of July 3, 2025 has been entered. Claim 44 has been amended; claims 1-43, 55, and 56 have been canceled; and claims 57 and 58 have been newly added. Claims 44-54, 57, and 58 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/CA2020/051783, filed December 21, 2020 under 35 U.S.C. 365(c), which claims the benefit of prior-filed U.S. Provisional Patent Application Nos. 63/104,394 and 62/956,108, filed October 22, 2020 and December 31, 2019, respectively, under 35 U.S.C. 119(e), is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 44-55, is acknowledged. Applicant’s elections of i) “glyphosate” as the species of pesticide compound, ii) “C4-C10 unsaturated aliphatic acid” as the species of complexing agent, and iii) “1:10 to 10:1” as the species of concentration ratio of complexing agent and pesticide are all also acknowledged. The Examiner has determined that claims 44, 50, and 52-54 appear to read on the elected subject matter.
While Applicant elected Group II without traverse, Applicant has indicated that the species elections are made with traverse on the ground that “the Examiner has not presented any evidence supporting that the species require a different field of search”.
This is not found persuasive for the following reasons:
1. The Examiner need not necessarily provide “evidence” that the species require a different field of search.
2. The standard here is whether or not the identified species are “mutually exclusive”. For example, a C4-C10 saturated aliphatic acid is mutually exclusive from a C4-C10 unsaturated aliphatic acid, since one of ordinary skill in the art would no doubt recognize that if the acid is saturated it cannot be unsaturated, and vice versa.
3. It is noted that Applicant themselves have pointed out in their remarks on page 7 of the response filed September 3, 2025 that “given that a C4-C10 unsaturated aliphatic acid has been elected as the species of complexing agent, it is submitted that the requirement for an election of a single disclosed species of salt counterion is rendered moot”. Hence, Applicant recognizes the mutual exclusivity of the identified species, and this is actually the grounds for the election of species in the first place.
Accordingly, claims 45-49, 51, 57, and 58 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected subject matter, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on September 3, 2025. Claims 44, 50, and 52-54 are currently under examination.
Abstract
The abstract of the disclosure is objected to because of the following:
1. The abstract should be a concise summary of the key technical aspects of the invention which are new to the art to which the invention pertains. If the invention is a composition, the abstract should recite the key requisite ingredients. If the invention is a method, the abstract should recite the key requisite active steps.
2. The abstract should not refer to purported merits (e.g. synergy, enhanced efficacy, etc.) or speculative applications of the invention and should not compare the invention with the prior art.
3. The abstract merely informs the reader in a broad and generic manner that the invention pertains to e.g. fungicide, nematicide, and insecticide compositions. These are generally not new to the art at all, but rather have been known for decades. As far as “increased efficacy”, this is not only an arbitrary and relative measure, it appears to be effectively synonymous with “improved” which is a purported merit or even a comparison with the prior art.
4. The abstract thus fails to properly inform the reader what the key features of the actual invention are. Applicant is advised that the abstract should inform the reader what the actual inventive composition is by reciting the key requisite ingredients, or to inform the reader what the actual inventive method is by reciting the key requisite active steps that must be performed by the hand of man.
5. The abstract is not intended to be a promotional advertisement for the product or method.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 44 and 54 are objected to because of the following:
i). Claim 44 is in improper format for a U.S. Patent claim. It appears Applicant intends claim 44 to be a method of making a pesticidal composition. A proper method claim in U.S. Patent law should have a preamble that states what the method is for or intended to accomplish. For example, in this case, the preamble would properly state “A method for making a pesticidal composition” or e.g. “A method for preparing a pesticidal composition”. Then, the body of the claim should enumerate the specific active steps to be performed by the hand of man to make the composition that defines the metes and bounds of the actual method that Applicant regards as the invention. Active steps often include terms like “mixing”, “heating”, etc. In this case, the claim is directed to a method for preparing a pesticidal composition comprising the step of preparing a pesticidal composition, which does not properly define the method being claimed.
ii). In claim 44, the terms “synergistic” and “synergistically” are overly redundant. It would appear that Applicant is overly eager to emphasize that they think this property is present, but the repeated use of the term does nothing to further clarify, or to enhance the patentability prospects of, the claimed method. Stating this property just once is sufficient to convey the property.
iii). In claim 44, there is an extraneous colon between “comprising” and “providing”. The expression “active ingredient active” is awkward, redundant, and appears to be in improper English grammatical form. The phrase “preparing the synergistic pesticidal composition…comprises preparing said synergistic pesticidal complex” appears awkward and redundant.
iv). In claim 54, the expression “between about at least one of” is in improper English grammatical form and is unintelligible. Further, the expression “and 1.25 and 1.25:1” appears to be a typographical error for the intended expression “and 1:1.25 and 1.25:1”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 44, 50, and 52-54 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim 44 is indefinite for the following reasons:
1. Claim 44 appears to be directed to a method for preparing a “synergistic” pesticidal composition by preparing a “synergistic” pesticidal composition. One of ordinary skill in the art cannot definitively ascertain the actual active steps to be performed by the hand of man that defines the method for preparing a “synergistic” pesticidal composition.
2. Moreover, claim 44 seems to lay out the desired properties of the composition that is made, e.g. synergistic, complex, with the recited NMR hydrogen atom peak shift property, without meaningfully defining the required active method steps to actually make this composition. This is like seeking a U.S. Patent for e.g. a method for making a “racing car” that can go 0.7 times the speed of light without disintegrating or burning up, that can fly up to 80,000 ft, and can go invisible, simply by “making the car”. One of ordinary skill in the art would have no idea what required method steps must be performed to make this “racing car” with these properties. Likewise, in the present case, one of ordinary skill in the art cannot definitively ascertain the actual active steps to be performed by the hand of man that defines the method for preparing a composition with the “synergistic” pesticidal complex with the NMR hydrogen atom peak shift property described.
3. Claim 44 recites “synergistically enhancing the pesticidal activity”. This is an arbitrary, relative, and subjective criterion that is not defined by the claim. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of “synergistically enhancing”, e.g. by what standard, and e.g. compared to what, and e.g. under what conditions? For example, in the United States, one of ordinary skill in the art would generally recognize that synergy is present with an FIC value of <0.5. An FIC value of 0.5-4 is representative of an additive or indifferent effect. However, in view of dependent claim 52, in which the FIC value can be up to 1, one of ordinary skill in the art simply cannot definitively ascertain the metes and bounds of “synergy”.
4. Claim 44 stipulates that the pesticidal active ingredient is “adapted to control” a “target pest organism”. The limitation “adapted to control” is not defined by the claim. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of the limitation. For example, the limitation appears to denote an active process for somehow actively and specifically modifying or manipulating the pesticidal active ingredient. One of ordinary skill in the art cannot definitively ascertain whether e.g. the pesticidal active or a modified form of the pesticidal active is required, and in the latter case, how so modified? Moreover, the “target pest” is arbitrary and subjective, and is not defined by the claim. One of ordinary skill in the art cannot definitively ascertain the metes and bound of “target pest”, and thus which pest is the “target” pest, and which pest is not the “target” pest.
5. Claim 44 stipulates “selecting a suitable C4-C10 saturated or unsaturated aliphatic acid”, which is not defined by the claim. One of ordinary skill in the art cannot definitively ascertain which C4-C10 saturated or unsaturated aliphatic acid is “suitable” and which one is not “suitable”. If Applicant wants a U.S. Patent for a method of making a composition, Applicant must clearly define specifically which C4-C10 saturated or unsaturated aliphatic acids are in fact “suitable”. Indeed, if one of ordinary skill in the art must themselves determine which C4-C10 saturated or unsaturated aliphatic acids are “suitable”, it would appear that Applicant’s invention is not yet complete.
6. Claim 44 stipulates that the suitable C4-C10 saturated or unsaturated aliphatic acid is “adapted to form a hydrogen bond” with the pesticidal active ingredient. The limitation “adapted to form” is not defined by the claim. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of the limitation. For example, the limitation appears to denote an active process for somehow actively and specifically modifying or manipulating the C4-C10 saturated or unsaturated aliphatic acid. In effect, one of ordinary skill in the art cannot definitively ascertain whether the C4-C10 saturated or unsaturated aliphatic acid itself is the required component, or rather if an actively and specifically modified or manipulated form of the C4-C10 saturated or unsaturated aliphatic acid that is the required component.
7. Claim 44 makes reference to “a peak corresponding to a hydrogen atom of a constituent”, and also refers to “the peak shifted to a lower frequency”, which are not defined by the claim. Claims must stand alone to define the invention, and should not rely on the specification, drawings, or extraneous materials to give them meaning. Indeed, as currently presented, this is not really any different from claiming that e.g. “there is a little squiggly line that denotes some atom that moves around in some unspecified way”. Moreover, claim 44 then provides that the “constituent” can be “at least one of said pesticidal agent and said C4-C10 saturated or unsaturated aliphatic acid or salt thereof”. One of ordinary skill in the art would understand “at least one of” to include “both”. In the case of “both”, one of ordinary skill in the art would not understand how the very same hydrogen atom can be a constituent of both the pesticidal agent and also a constituent of the C4-C10 saturated or unsaturated aliphatic acid or salt thereof.
Claim 52 is indefinite for the following reasons:
1. Claim 52 recites the acronym “FIC”, which is not defined by the claim. Claims must stand alone to define the invention, and should not rely on the specification, drawings, or extraneous materials to give them meaning. Applicant is advised to first define the acronym by its formal name, and then the acronym can be employed.
2. Claim 52 recites a broad limitation together with at least one narrower limitation that falls within the broad limitation in the alternative in the same claim, which is indefinite.
Claim 53 stipulates that the composition “has a synergistic efficacy factor, according to the Colby formula, of at least 1.1”. The “Colby formula” is not defined by the claim. Claims must stand alone to define the invention, and should not rely on the specification, drawings, or extraneous materials to give them meaning.
Claim 54 is indefinite for the following reasons:
1. Claim 54 stipulates in a wherein clause that “a ratio” is the numbers thus stipulated. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of “ratio”. Is this a weight ratio, or a molar ratio, or a volume ratio, or what? One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
2. Claim 54 stipulates that the ratio is “between about at least one of” those sets of ratios recited. One of ordinary skill in the art cannot make heads or tails out of the expression “is between about at least one of”. The claim is effectively unintelligible.
***For examination at this time, the claim is being interpreted as intending to specify a weight ratio, and that the weight ratios recited are alternatives, and the claim provides that the weight ratio can be one of the specific weight ratios recited.
Claims 50 and 52-54 are (also) indefinite for depending from an indefinite claim.
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 44, 50, and 52-54 are rejected under 35 U.S.C. 103 as being unpatentable over Bugg et al. (U.S. Patent No. 5,994,269), in view of Piccolo et al. (J Agric Food Chem. 1996; 44: 2442-2446).
Applicant Claims
Applicant’s elected subject matter is directed to a method of making a pesticidal composition comprising combining glyphosate with a C4-C10 unsaturated aliphatic acid; wherein the glyphosate and the C4-C10 aliphatic acid are present in a concentration ratio of 10:1 to 1:10, and form a “complex” via a hydrogen bond.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Bugg et al. disclose a method of making a pesticidal composition comprising combining glyphosate with e.g. a C5-C16 saturated or unsaturated straight chain fatty acid; wherein the glyphosate and the C5-C16 acid are present in a ratio of 10:1 to 1:10 (see abstract; Col. 3, lines 17-28, 36-52, 61-64; Col. 4, lines 5-8, 12-19, 23-31; Col. 5, lines 43-47).
Piccolo et al. disclose that glyphosate can form a complex via hydrogen bonding with an acid, via various acidic and oxygen-containing groups on both molecules, and that the order of adsorption correlates with increasing aliphaticity (i.e. decreasing aromaticity) and molecular size of the acid (see e.g. abstract; discussion).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Bugg et al. do not explicitly disclose that the glyphosate and the C5-C16 saturated or unsaturated straight chain fatty acid form a complex via adsorption by hydrogen bonds. This deficiency is cured by the teachings of Piccolo et al.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Bugg et al. and Piccolo et al., outlined supra, to devise Applicant’s claimed method of making a pesticidal composition.
Bugg et al. disclose a method of making a pesticidal composition comprising combining glyphosate with e.g. a C5-C16 saturated or unsaturated straight chain fatty acid, e.g. a C9 or C10 fatty acid; wherein the glyphosate and the C5-C16 acid are present in a ratio of 10:1 to 1:10. Since Piccolo et al. disclose that glyphosate can form a complex via hydrogen bonding with an acid, via various acidic and oxygen-containing groups on both molecules, and that the order of adsorption correlates with increasing aliphaticity (i.e. decreasing aromaticity) and molecular size of the acid, one of ordinary skill in the art would thus reasonably expect that the glyphosate and the C5-C16 saturated or unsaturated straight chain fatty acid, when combined, will successfully form a complex at least in part via hydrogen bonding.
Since the composition one of ordinary skill in the art would thus arrive at in following the teachings and reasonable suggestions of the cited prior art is essentially the same as the claimed composition, the properties must be the same as well, including the “synergistic enhancement of pesticidal activity”, a FIC index value of less than 1, etc.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious 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 was 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.
Potential Double Patenting Issues
It is noted that copending Application Nos. 16/651,293; 17/281,210; and 17/280,144 have claims directed to similar subject matter as the present claims, but have not issued as U.S. Patents. Glyphosate is the elected species of pesticidal active currently being addressed in the present application. Copending Application Nos. 16/651,293 and 17/281,210 require a fungicide active rather than glyphosate. However, the present claims are in fact so broad and generic as to encompass within their purview fungicides rather than glyphosate. Hence, to avoid Double Patenting issues in the future, Applicant is advised to narrow the scope of the present claims.
Conclusion
No claims are allowed.
Inquires
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617