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 Applicant’s amendment filed April 15, 2026 in reply to the First Office Action on the Merits mailed December 17, 2025. Claims 44 and 52-54 have been amended; claims 1-43, 55, and 56 have been canceled; and claims 59-61 have been newly added. Claims 45-49, 51, 57, and 58 have been withdrawn. Claims 44, 50, 52-54, and 59-61 are under examination.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the First Office Action on the Merits mailed December 17, 2025 is hereby withdrawn.
Claim Objections
Claims 44, 53, and 54 are objected to because of the following:
i). In claim 44, there is an extraneous colon between “comprising” and “providing”.
ii). In claim 53, the expression “determined according Colby formula is” is in improper English grammatical form. Applicant is advised to amend the expression to “determined according to the Colby formula is”.
iii). In claim 54, the expression “between about” all of the recited ratios is in improper English grammatical form and is unintelligible.
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 directed to a method of “synergistically enhancing the pesticidal activity of at least one pesticidal active ingredient”, which requires “providing at least one pesticidal active ingredient”, then requires “selecting a C4-C10 saturated or unsaturated aliphatic acid…that forms a hydrogen bond with…pesticidal active ingredient”, then requires simply combining the two, then appears to require “determining that the pesticidal complex has a specific 1H-NMR spectrum” with a peak corresponding to some hydrogen atom that has been shifted to a lower frequency compared to “a reference peak” of “the constituent” when not in the complex, wherein “the constituent” can be either the pesticidal active or the C4-C10 aliphatic acid; which renders the claim indefinite. One of ordinary skill in the art cannot make heads or tails out of the metes and bounds of the claimed subject matter, for the following reasons:
1. The required active step of actually making the composition is simply combining the pesticidal active with the C4-C10 aliphatic acid. If this claim was directed to a method of making a composition comprising combining a pesticidal active with a C4-C10 aliphatic acid, and that’s it, the claim would not be indefinite. However, the claim appears to require only certain pesticidal actives and only certain C4-C10 aliphatic acids, which when combined form synergistic complexes. These specific combinations are not properly defined by the claim.
2. The claim requires “providing at least one pesticidal active” and “selecting a C4-C10 aliphatic acid”. These are arbitrary and subjective criteria generally, and the required pesticidal active and the required C4-C10 aliphatic acid are not properly defined by the claim, but rather are arbitrary variables dependent on the whims of a third party participant who decides which pesticidal active is provided and which C4-C10 aliphatic acid is selected. To compound the indefiniteness, the pesticidal active is limited to one that controls or kills a “target pest”, which itself 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. Moreover, the C4-C10 aliphatic acid is necessarily limited to one that “forms a hydrogen bond” with the pesticidal active. Hence, it appears only a subset, perhaps even a small subset, of all C4-C10 aliphatic acids known to man are suitable for selection. However, the claim never defines which C4-C10 aliphatic acids form hydrogen bonds with any pesticidal active generally. Yet, the claim is even more particular, and requires one to “select” a C4-C10 aliphatic acid that forms a hydrogen bond with the specific pesticidal active that was “provided”, which is in fact an undefined and unknown variable and dependent on the whims of a third party participant who makes the decision which particular pesticidal active to provide, and this is based on the arbitrary and subjective “target pest”.
3. As if all this was not whimsical and cryptic enough, the claim also appears to require the step of verifying that a complex is indeed formed, or that the complex formed is indeed “synergistic”, after the step of combining the specific pesticidal active provided and the specific C4-C10 aliphatic acid selected, by determining whether the complex shows a 1H-NMR spectrum with a peak corresponding to some arbitrary hydrogen atom that has been shifted in a particular way. However, the claim does not define specifically which peak must shift, and the reference peak appears to be another arbitrary and subjective criterion, being some random peak corresponding to some random hydrogen atom on ether the pesticidal active or the C4-C10 aliphatic acid. It’s unclear how many NMR peaks correspond to hydrogens in either compound, and how they may all shift in the presence of the complex. Perhaps some shift to a lower frequency and some shift to a higher frequency.
4. Moreover, even for the specific hydrogen selected and the specific NMR peak that corresponds to this hydrogen, one of ordinary skill in the art thus cannot definitively ascertain what the presence or absence of the NMR peak shift to a lower frequency determines. For example, does the presence of the NMR shift establish whether the complex exists or not? Or alternatively, does a complex form, and the presence of the NMR shift establishes whether or not the complex is in fact “synergistic”. What if there is no NMR peak shift for any hydrogen atom? Presumably in this context there is no complex formation and no synergy, which is incongruent with the method itself of “synergistically enhancing the pesticidal activity of at least one pesticidal active ingredient”. The claim appears to provide that the 1H-NMR shift can be present or not.
5. It appears Applicant is attempting to claim a fishing expedition, or at best a roadmap to determine what the actual invention should in fact be, which is not a proper invention that can be patented in the United States. Arbitrarily select some random pesticidal active and some random C4-C10 aliphatic acid, combine them, then test for this arbitrary NMR hydrogen peak shift to a lower frequency to see of the combination is purportedly “synergistic”. This fishing expedition requires a third party participant to select the test compounds and go through the experimentation to determine the metes and bounds of the claimed subject matter, specifically which pesticidal active-C4-C10 aliphatic acid combinations form synergistic complexes. Applicant seems not capable of properly defining the metes and bounds of the invention since the particular combinations selected are arbitrary variables and the required compounds and their combinations are yet to be determined until all the testing is completed. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 52, which depends from claim 44, stipulates in a wherein clause that the composition has “an FIC index value less than 1”. 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. Claim 52 thus provides that the composition exhibits within the scope of its purview either synergy or an additive or indifferent effect (i.e. not synergy). However, claim 44 is directed to “a method of synergistically enhancing the pesticidal activity”. On the one hand, it would appear that claim 44, and thus any claim dependent from claim 44, would require the presence of synergy and thus an FIC value of <0.5. On the other hand, claim 52 provides that the FIC value can be ≥0.5 up to but not including 1. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 54 stipulates that the weight ratio of the pesticidal active and the C4-C10 aliphatic acid is “between about” all of the ratios recited. The claim is effectively unintelligible, and one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter.
***For examination at this time, the claim is being interpreted as intending the weight ratio to be one of those recited in the alternative. However, even with this interpretation being applied, the claim is indefinite for reciting at least one broad limitation together with at least one narrower limitation that falls within the purview of the broad limitation in the alternative in the same claim.
Claim 59, which depends from claim 52, and ultimately from claim 44, stipulates in a wherein clause that the composition has “an FIC index value less than 0.75”. 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. Claim 52 thus provides that the composition exhibits within the scope of its purview either synergy or an additive or indifferent effect (i.e. not synergy). However, claim 44 is directed to “a method of synergistically enhancing the pesticidal activity”. On the one hand, it would appear that claim 44, and thus any claim dependent from claim 44, would require the presence of synergy and thus an FIC value of <0.5. On the other hand, claim 59 provides that the FIC value can be ≥0.5 up to but not including 0.75. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claims 50, 52-54, and 59-61 are (also) indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 52, 59, and 60 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 52 and 59, which depend ultimately from claim 44, stipulate in a wherein clause that the composition has “an FIC index value less than 1” and “an FIC index value less than 0.75”, respectively. 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 (i.e. no synergy). Claims 52 and 59 thus provide that the composition exhibits within the scope of its purview either synergy or an additive or indifferent effect (i.e. no synergy). However, claim 44 is directed to “a method of synergistically enhancing the pesticidal activity”, and presumably the composition is intended to have synergy. Hence, claims 52 and 59 are broader in scope than claim 44 from which they (ultimately) depend.
Claim 60, which depends ultimately from claim 44, stipulates in a wherein clause that the composition has “an FIC index value less than 0.5”. 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. Claim 44 is directed to “a method of synergistically enhancing the pesticidal activity”, and presumably the composition is intended to have synergy, which is understood to be “an FIC index value less than 0.5”. Hence, claim 60 does not appear to further limit claim 44 from which it (ultimately) depends.
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, 52-54, and 59-61 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.
Response to Arguments
Applicant's arguments filed April 15, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “the person skilled in the art would be taught away from trying to improve the pesticidal efficacy of a pesticidal active ingredient such as glyphosate by trying to identify a compound that forms a hydrogen bond with glyphosate through the teachings of Piccolo”; that “the purpose of Bugg in combining a fatty acid with glyphosate is not to generate any synergy between such compounds” and “Bugg is principally concerned with avoiding any negative interactions between the fatty acid and the glyphosate”.
The Examiner, however, would like to point out the following:
1. Bugg discloses 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. Hence, Bugg alone essentially discloses the claimed method, whose active step of making a composition is simply to combine a pesticidal active, such as glyphosate, with a C4-C10 aliphatic acid, wherein the weight ratio of the two is 10:1 to 1:10.
2. Piccolo has not been cited for providing the motivation to combine the glyphosate with the acid. Bugg already discloses this. Piccolo is cited merely for establishing that the glyphosate and the acid will form a complex via a hydrogen bond.
3. Bugg need not combine the glyphosate with the C5-C16 saturated or unsaturated straight chain fatty acid for the explicit purpose of forming a complex or synergy. Moreover, just because Bugg does not mention the complex or synergy or even knew about any of this does not mean that the complex and the synergy are not present in reality.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue 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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/DAVID BROWE/Primary Examiner, Art Unit 1617
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