DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 17 February 2026, is acknowledged.
Claims 7 and 9-13 have been amended.
Claims 1-20 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the mixture of alcohols of formula (I) is a C20/C22 linear alcohol mixture, described as “Alcohol B”;
the mixture of alcohol alkoxylates of formula (II) is a C20/C22 linear alcohol alkoxylate mixture with z=2 and x=30;
the additional components are C20-32 paraffins;
the agrochemically active ingredient is a pesticide; and
the subject to which the composition is applied is a tobacco plant.
Objections Withdrawn
Objections to Claims
Applicant’s amendments to claims 5, 9, and 11, submitted on 17 February 2026, has overcome the objection to the claims set forth in the Office Action mailed on 20 August 2025. Accordingly, the relevant objections are withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 112
The rejection of claims 7, 10, and 13 under 35 U.S.C. § 112 is withdrawn in view of Applicant’s amendments to the claims.
Maintained Rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 1, 3-7, and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Goyal et al. (WIPO International Publication No. WO 2015/103192 A1, published on 9 July 2015, provided by Applicant in IDS, hereafter referred to as Goyal) in view of Claude et al. (European Patent Application No. EP 0968649 A1, published on 5 January 2000, provided by Applicant in IDS, hereafter referred to as Claude) and Frank et al. (Langmuir 2007, 23, 6526., hereafter referred to as Frank).
Goyal teaches agricultural compositions which in some embodiments can comprise at least one fatty alcohol, at least one liquid medium, one or more hydrotropes, one or more surfactants, and/or one or more pesticides (Abstract). In one embodiment, Goyal teaches a concentrated pesticide composition comprising a liquid medium, one or more pesticides, and one or more fatty alcohols (para. [0007]). In another embodiment, an “end use” pesticide composition, which is able to be used on plants without further dilution, is taught which comprises water, one or more pesticides, and one or more fatty alcohols (para. [0008]). The fatty alcohol or alcohols are taught to be of the formula R1-OH, where R1 is a C4-30 hydrocarbyl group which may be linear or branched (para. [00032-00033]). The pesticides suitable for use in the compositions of Goyal are taught to be those used to control agricultural pests such as herbicides, fungicides, plant growth regulators, and insecticides (para. [00051]). Goyal also teaches that each of the compositions of their invention may further comprise one or more surfactants (para. [00043]). Suitable surfactants are taught to include, among others, nonionic surfactants such as alcohol alkoxylate surfactants (para. [00043]).
In one embodiment, Goyal teaches a composition that comprises about 1 to about 30 parts by weight of one or more surfactants per 100 parts by weight of the total composition (para. [00046]). In another embodiment, Goyal teaches a composition that comprises 90-98 parts by weight of one or more fatty alcohols per 100 parts by weight of the total composition (para. [00047]). In the embodiment wherein the composition is formulated as a concentrated pesticide composition, the composition is taught to comprise from about 1 to about 65 parts by weight of one or more pesticides based upon 100 parts by weight of the total composition (para. [00060]). Finally, when the composition is formulated as an end use pesticide composition, Goyal teaches that the concentrated pesticide composition is combined with water in a 1 g: 1-10,000 g ratio, resulting in a composition that comprises water in an amount of 50-99.99% by weight, encompassing the ranges recited in claims 16 and 19 (para. [00067]). When the liquid medium of the composition is aqueous and comprises >50% by weight of water, the composition is described as an aqueous emulsion (para. [00028]).
Goyal does not teach the specific alcohol alkoxylate linear C20/22 alcohol alkoxylate with 30 EO units, nor provide a motivation to use an alcohol alkoxylate nonionic surfactant as a surfactant. These deficiencies are offset by the teachings of Claude and Frank.
Claude teaches dry formulations containing fatty alcohol ethoxylated surfactants that enhance the biological activity of agricultural herbicides (Abstract). Herbicides, which are important to controlling unwanted plant growth, can have adverse effects on the environment when used at higher rates/concentrations (para. [0002]). To avoid this drawback, Claude teaches that a dry herbicidal formulation comprising one or more herbicides, one or more fatty alcohol ethoxylated compounds, and optionally one or more additives can enhance the biological activity of said herbicide(s) when used in a water-diluted solution (para. [0005-0006]). Claude teaches that “these surfactants surprisingly provide the enhanced biological effect [of herbicides] at use rates lower than is generally needed with common surfactants” (para. [0012]).
The one or more fatty alcohol ethoxylates of the invention are taught to be of the formula R-(C2H4O)x-OH, where R is a linear or branched C8-26 alkyl group and X is 6-50, which encompasses the ranges of one or more alcohol alkoxylates of formula (II) recited in instant claim 1 (claim 3 and para. [0007]). While the formulations are taught to be dry for ease of spill cleanup, lower weight, and stability, they are taught to be used only following dilution with water (para. [0015-0017]).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the ranges of R1, R2 , z, and x in formulas (I) and (II), the ratios of one or more alcohols to one or more alcohol alkoxylates, and the amount of alcohol(s), alcohol alkoxylate(s), and water. In each case, the ranges recited in the instant claims either significantly overlap with or are encompassed by the ranges taught by Goyal and Claude and are therefore prima facie obvious.
Frank teaches an analysis of the properties of nonionic alcohol ethoxylates as surfactants resulting from the alcohols being branched vs linear and primary vs secondary or tertiary alcohols (Abstract). Alcohol ethoxylates are taught to be widely used as surfactants in a number of fields, but the impact of the hydrocarbon tails is not well understood (pg. 6526-6527, Introduction, para. 1-2). Following synthesis of alcohol ethoxylates that used a linear primary alcohol, a branched primary alcohol, a branched secondary alcohol, and a branched tertiary alcohol, Frank analyzed their phase behavior at the oil-water interface using small-angle neutron scattering experiments (pg. 6527, left column, para. 1 and Scheme 1). Results of the experiments found that “the fully linear surfactant exhibits the most rigid interfacial film” and therefore the highest emulsification capacity (Abstract and Conclusions).
While Goyal, Claude, and Frank do not teach the elasticity, elastic modulus, viscous modulus, or absorption spectra of their compositions, these properties arise from the components contained within the compositions. A chemical composition and its properties are inseparable, and Goyal, Claude, and Frank render obvious compositions containing the same components as the compositions of the instant application. Therefore, the properties claimed by the Applicant in claims 17-18 and 20 are necessarily present. See MPEP § 2112.01.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Goyal, Claude, and Frank to arrive at the invention of instant claims 1, 3-7, and 12-20 because using known components in a similar product to improve the product in the same way yields predictable results. Goyal teaches agricultural compositions that comprise pesticides, one or more fatty alcohols, and one or more surfactants, which in some embodiments may be the nonionic surfactant alcohol alkoxylates. Goyal further teaches that prior to application the compositions should be diluted in an emulsion with water, water comprising 50-99.99% by weight of the emulsion.
In view of the teachings of Claude, the ordinary artisan would be motivated to use the specific surfactant of fatty alcohol ethoxylates of the formula R-(C2H4O)x-OH, where R is a linear or branched C8-26 alkyl group and X is 6-50 because Claude teaches these surfactants to enhance the biological activity of herbicides in the composition. One of ordinary skill would recognize enhanced activity to be desirable in an agricultural composition comprising herbicides as pesticides intended to control the growth of unwanted vegetation. Finally, a person of ordinary skill would be motivated to use alcohol ethoxylates with exclusively linear alkyl chains in view of the teachings of Frank because Frank teaches the best surfactant properties result from ethoxylates produced from linear primary alcohols, rather than secondary or tertiary alcohols with branched alkyl chains. The ordinary artisan would desire a surfactant with superior properties in their composition and therefore select an alcohol ethoxylate with an exclusively linear alkyl chain. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1, 3-7, and 12-20 in view of the teachings of Goyal, Claude, and Frank.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Goyal (WIPO International Publication No. WO 2015/103192 A1, published on 9 July 2015, provided by Applicant in IDS) in view of Claude (European Patent Application No. EP 0968649 A1, published on 5 January 2000, provided by Applicant in IDS) and Frank (Langmuir 2007, 23, 6526.) as applied to claims 1, 3-7, and 12-20 above, and further in view of Dillan (J. Am. Oil Chem. Soc. 1985, 62 (7), 1144.).
Goyal, Claude, and Frank teach the above.
Goyal, Claude, and Frank do not teach the alkyl chain of the alcohol(s) and alcohol alkoxylate(s) to be the same. This deficiency is offset by the teachings of Dillan.
Dillan teaches the effects of ethylene oxide (EO) distribution on the surfactant properties of alcohol ethoxylates (Abstract). Primary alcohols are taught to react with ethylene oxide in the presence of catalysts to produce the nonionic surfactant alcohol ethoxylates (pg. 1144, Introduction, para. 1). Dillan teaches that optimum performance and/or physical properties are generally attained by varying the structure of the primary alcohol or the number of moles of EO used in the reaction, but another important influence comes from variations in the distribution of EO adducts (pg. 1144, Abstract and Introduction, para. 1). After performing experiments on two series of primary alcohol ethoxylates, one with a broad distribution and the other with a narrow distribution, Dillan concluded that the narrow-range distribution alcohol ethoxylates possess better surfactant properties (pg. 1144, Abstract and Introduction, para. 1 and pg. 1145, left column, para. 3). Finally, Dillan teaches that the ethoxylation reaction always leaves some alcohol unreacted, but that narrow-range ethoxylates contain less unreacted alcohol (pg. 1144, Abstract and Introduction, para. 1).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Dillan to use one or more alcohols and one or more alcohol alkoxylates with the same alkyl chain in the invention rendered obvious by the teachings of Goyal, Claude, and Frank because the use of a known technique to improve a product containing a known surfactant yields predictable results. The composition rendered obvious by the teachings of Goyal, Claude, and Frank is an agricultural composition comprising one or more alcohols, one or more alcohol alkoxylate surfactants, and one or more pesticides intended to be used to control unwanted growth of vegetation. An ordinary artisan would be motivated to use an alcohol and an alcohol alkoxylate with the same alkyl chain in view of the teachings of Dillan because Dillan teaches the optimal surfactant properties are achieved with a narrow distribution of alcohol ethoxylate structures, which the artisan would recognize as beneficial in the above described agricultural composition. Further, Dillan teaches that primary alcohol ethoxylates are synthesized via ethoxylation of primary alcohols and that a non-zero amount of the primary alcohol will remain following the ethoxylation reaction. It would be apparent to one of ordinary skill that the distribution of structures would further be narrowed by using an alcohol and alcohol ethoxylate that have the same alkyl chain, producing enhanced surfactant properties in the resulting alcohol ethoxylate. As a result, there is a reasonable expectation of success in arriving at the invention of claim 2 in view of the teachings of Goyal, Claude, and Frank, and further in view of the teachings of Dillan.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Goyal (WIPO International Publication No. WO 2015/103192 A1, published on 9 July 2015, provided by Applicant in IDS) in view of Claude (European Patent Application No. EP 0968649 A1, published on 5 January 2000, provided by Applicant in IDS) and Frank (Langmuir 2007, 23, 6526.) as applied to claims 1, 3-7, and 12-20 above, and further in view of A. M. Agnello (Petroleum-derived spray oils: chemistry, history, refining, and formulation. In: Beattie CGA, Watson DM, Stevens ML, Rae DJ, Spooner-Hart RN (2002) Spray oils beyond 2000: sustainable pest and disease management. University of Western Sydney, Sydney, pp 2–18., hereafter referred to as Agnello).
Goyal, Claude, and Frank teach the above, and particularly relevant to claims 8-11 Claude teaches that an additional component that can increase biological activity of herbicidal compositions is a “crop oil”, which includes mineral (petroleum) oils, and is present in an amount of 0.5-2.0% by weight (para. [0002-0003]). In a composition with 90-98% by weight alcohol(s), this results in a composition that comprises 0.51-2.2% additional component by weight of the alcohol(s) and additional component(s).
Goyal, Claude, and Frank do not teach a composition that comprises paraffins, nor the amount of paraffins in the composition. These deficiencies are offset by the teachings of Agnello.
Agnello teaches an overview of petroleum-derived oils used as agricultural crop protectants, their history, chemistry, and production, and current uses in agriculture (pg. 2, Abstract, para. 1). Petroleum products are taught to have been used as agricultural crop protectants since the 19th century, demonstrating desirable pesticidal activity, but a lack of purification ability led to notable phytotoxicity as well (pg. 2, Abstract, para. 1). Agnello teaches the petroleum oils to contain three basic classes of carbon structures: paraffins, aromatics, and naphthalenes (pg. 2, Abstract, para. 1). Paraffinic hydrocarbons, generally known as alkanes and interpreted to be the same as the paraffins recited in the instant application, are taught to have the general formula CnH2n+2 and typically 16 or more carbons (pg. 4, left column, Paraffinic hydrocarbons). These saturated hydrocarbons are taught to have more impact on the pesticidal action of petroleum-derived oils than aromatics or unsaturated hydrocarbons (pg. 10, Criteria for selecting plant spray oils). The average molecular weight of the paraffins is taught to have an impact on pesticidal efficacy, which is taught to decline above ~310 g/mol, and suitable oils are taught to have an average molecular weight of ~290-330 g/mol, which roughly corresponds to C21-24 paraffins (pg. 10, Criteria for selecting plant spray oils). Finally, Agnello teaches that application of undiluted petroleum oils directly to plants led to severe injury to the plants and that dilution with water is necessary, which requires an emulsifier to prevent separation (pg. 14, Emulsification, para. 1).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Agnello to use a C21-24 paraffin in the compositions rendered obvious by the teachings of Goyal, Claude, and Frank because the use of an element known in the art in a composition to impart known benefits produces predictable results. The composition rendered obvious by the teachings of Goyal, Claude, and Frank is an agricultural composition comprising one or more alcohols, one or more alcohol alkoxylate surfactants, and one or more pesticides intended to be used to control unwanted growth of vegetation. Claude in particular teaches that alcohol alkoxylates and petroleum oils can enhance the biological activity of herbicides, and that petroleum oils may be included in an amount of 0.5-2.0% by weight, but does not teach a specific petroleum oil. An ordinary artisan would be motivated to use a C21-24 paraffin as the petroleum oil in view of the teachings of Agnello because Agnello teaches the paraffin to be the most effective pesticide of the petroleum oils, which the artisan would recognize as beneficial in the above described agricultural composition. The person of ordinary skill would be motivated to use the relatively small quantity range taught by Claude because Agnello does not teach a composition range for paraffins, but does teach that undiluted application would damage the plants that the user intended to protect. Finally, one of ordinary skill would be motivated to use the C21-24 paraffin in the composition rendered obvious above because it comprises one or more alcohol alkoxylate surfactants. Agnello teaches that, following dilution with water, a surfactant is needed to emulsify the paraffin with water, and the artisan would reasonably expect the previously included surfactant(s) to produce a stable emulsion upon addition of a paraffin, as well as desirable enhanced pesticidal activity. As a result, there is a reasonable expectation of success in arriving at the invention of claims 8-11 in view of the teachings of Goyal, Claude, and Frank, and further in view of the teachings of Agnello.
Response to Arguments
The Applicant’s arguments, filed on 17 February 2026, have been fully considered but are not persuasive.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues on pg. 10 that the Goyal reference does not teach the selection of a C20-32 linear or branched alcohol with an alcohol ethoxylate of similar alkyl chain length, teaches in Example 8J that a C11-14 alcohol is used with a branched C13 alcohol, and motivates the use of fatty alcohols to “increase droplet size for drift control” rather than “to create a self-emulsifying concentrate as in Applicant’s invention”. Regarding the first point, as stated above, piecemeal analysis of one reference (in this case Goyal) does not refute an argument of obviousness when the rejection was based upon a combination of references – in this case, the Goyal, Claude, and Frank references. The Goyal reference was not argued to teach the selection of alcohols and alcohol ethoxylates with the same alkyl chain but it was argued to be obvious in view of the teachings of Goyal, Claude, and Frank.
Regarding the argument that Example 8J in the Goyal reference uses “much shorter alkyoxylates”, alternative embodiments still constitute prior art and the reference “may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” See MPEP § 2123 and Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). The mere teaching of another embodiment in Example 8J does not obviate the teachings reference in the rejection under 35 U.S.C. § 103 above. Finally, regarding the motivation for using fatty alcohols to increase droplet size rather than creating “a self-emulsifying concentrate”, 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” (bold added for emphasis). See MPEP § 2144.IV. and, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). As a result, Applicant’s arguments are not found to be persuasive.
In para. 1 of pg. 11, Applicant argues that the Claude reference teaches the use of fatty alcohol ethoxylates as adjuvants to boost herbicide uptake, mentions adding mineral oil as an optional component, and does not teach combining the fatty alcohol ethoxylates with “large amounts of fatty alcohols”. Regarding the use of ethoxylates to boost herbicide uptake and the inclusion of mineral oil, the prior art does not have to teach the use of components for the same purpose as the instant application to motivate their use (vide supra) and this argument is unpersuasive. Regarding the combination of fatty alcohol ethoxylates with “large amounts of fatty alcohols”, the rejection above relied upon the Goyal reference for its teachings of ratios of alcohols and ethoxylates, not the Claude reference, and this argument is also found unpersuasive.
Additionally, Applicant states that their invention requires both a long-chain alcohol and its ethoxylate be present to form a self-emulsifying viscoelastic fluid and while the Claude reference “may motivate the use of some surfactant to help herbicidal efficacy”, it does not motivate the ratio of a C20-32 alcohol and its ethoxylate. As stated above, the motivation to combine prior art references does not necessarily need to be the same as the motivation in the instant application and the Claude reference was not used for its teachings of ratios. This argument too is found to be unpersuasive.
In the para. that spans the bottom of pg. 11 and top of pg. 12, Applicant argues that the Claude reference does not teach including any alcohol in their composition and an ordinary artisan would be motivated to use a fatty alcohol or a fatty alcohol ethoxylate, not both in one composition. The Examiner respectfully disagrees because, as argued above, the Claude reference would motivate one of ordinary skill in the art to choose an alcohol ethoxylate as the surfactant in the composition of Goyal (which teaches alcohol alkoxylates as surfactants in para. [00043]) because the Claude reference teaches the surfactants to enhance the biological activity of herbicides in the composition. One of ordinary skill would recognize enhanced activity to be desirable in an agricultural composition comprising herbicides as pesticides intended to control the growth of unwanted vegetation. In addition, as stated above, the rejection of instant claim 1 was based upon the combination of the Goyal, Claude, and Frank references and the analysis of the Claude reference alone does not demonstrate nonobviousness.
In the section titled “Frank et al. (2007) on branched vs linear tails”, Applicant argues that the Frank reference “does not bridge the gap between the prior art and Applicant’s specific composition” because Frank did not study systems with free alcohols and instead studied “surfactant molecular structure in isolation”, which would not have motivated an ordinary artisan to introduce “a large fraction of non-ethoxylated alcohol into a surfactant system” but instead “might suggest using a linear ethoxylate (alone) for better performance”. The Examiner respectfully disagrees and argues that the Frank reference does not need to perform an analysis in solution conditions that are exactly the same as the claimed composition to motivate the selection of linear over branched alkyl chains in alcohol ethoxylates for improved emulsification ability. The Frank reference is reasonably pertinent to the instant invention as defined in MPEP § 2141.01(a).I. and is therefore analogous art that is proper to use in rejection under 35 U.S.C. § 103.
Applicant argues in the para. that spans the bottom of pg. 13 and top of pg. 14 that their composition achieves unique, unexpected properties. Guidelines on determining whether results are expected or unexpected are provided in MPEP § 716.02. To demonstrate that results are unexpected and significant, the Applicant has the responsibility of presenting evidence that establishes “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims” (bold added for emphasis). See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e).
Applicant points to the comparison of emulsions EW-2 and EW-3 with Comparative EW-1 (pg. 15-16 of instant spec.) which they argue demonstrates that the claimed composition has superior emulsifying ability and rheological properties. Additionally, Applicant directs the reader to field solution FS-2, made by diluting EW-2, and its comparison to comparative FS-1, made by diluting Comparative EW-1 (pg. 16-17 of the instant spec.). Applicant argues that the field solution of their invention “forms a thicker coating on a surface…and retains more material after rinsing” which are beneficial properties for crop protection.
The Applicant has not demonstrated unexpected results commensurate in scope with the claimed invention. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d). Only one example outside the claimed range has been provided (Comparative Composition 1, which is diluted to form Comparative EW-1 and FS-1). In addition, instant claim 1 recites the vast ranges of alkyl chain lengths of 20-32 carbons, linear or branched, and 1-150 EO units, yet Compositions 2 and 3 (which are separately diluted to form EW-2, EW-3, FS-2, and FS-3) provide only two mixtures of different alkyl chain length alcohols (Table 1), with unspecified linear or branched structures, and either 30 or 25 EO units. Two data points within the vast claimed ranges is not sufficient to demonstrate the criticality of the claimed ranges and further, the lack of description regarding the specific alcohols in Compositions 2 and 3 in Table 1 does not allow for sufficient comparison with any other alcohol mixtures. Therefore, Applicant’s arguments do not demonstrate the criticality of the claimed range and are not a persuasive demonstration of unexpected results.
In para. 2 of pg. 15, Applicant argues that the Dillan reference “did not deal with long-chain alcohols or the high alcohol/alcohol ethoxylate ratios of the present invention”. As stated above, an argument against one reference where the rejection is based upon a combination of references is not a persuasive argument. The rejection of instant claim 2 under 35 U.S.C. § 103 was based upon the combination of the Dillan reference with the Goyal, Claude, and Frank references, which rendered obvious the combination of long-chain alcohols with alcohol ethoxylates and ratios which significantly overlapped with those recited in the instant claims (vide supra) and this argument is not found to be persuasive.
In para. 3 of pg. 15, Applicant argues that the Dillan reference also did not disclose that using an alcohol and ethoxylate with the same alkyl chain will depress the melting point. A case of prima facie obviousness is not rebutted by “[m]ere recognition of latent properties in the prior art”. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). See MPEP § 2145.II. “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). The combination of an alcohol and alcohol ethoxylate with the same alkyl chains has been rendered obvious in view of the prior art (vide supra) and recognition of melting point depression does not rebut the argument regarding obviousness.
Finally, from para. 3-4 of pg. 16, Applicant argues that the prior art cited in the rejections under 35 U.S.C. § 103 does not teach that a fatty alcohol and ethoxylate emulsion could stably incorporate paraffins and do not teach how to stably incorporate the paraffins. Regarding the first point, as stated above, analysis of a single reference does not rebut a rejection of a claim as being prima facie obvious when the rejection is based upon a combination of references. As stated in the rejection of claims 8-11 under 35 U.S.C. § 103 above, the combination of fatty alcohols and alcohol ethoxylates is obvious in view of the teachings of Goyal, Claude, and Frank and the Claude reference teaches that petroleum oils may be included in their composition. The Agnello reference was argued to motivate the selection of paraffins as the petroleum oil in particular to add the benefit of pesticidal activity and, as stated above, the motivation for combining the teachings need not be the same as in the instant application.
Regarding the argument that none of the references “teach how to stably incorporate the paraffins”, Applicant is reminded that "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." (bold added for emphasis) Id. at 418, 82 USPQ2d at 1396. The instant claims under consideration are drawn to the crop husbandry composition and given that the inclusion of paraffins in a mixture of fatty alcohols and alcohol alkoxylates is motivated by the teachings of the prior art (vide supra), a person of ordinary skill in the art would be presumed to be capable of taking the creative steps necessary to stably incorporate the components into an emulsion.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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