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 .
Response to Amendment
The Amendment filed 09/11/2025 has been entered. Applicant’s amendments are in response to in the Non-Final Office Action mailed 06/12/2025. Applicant’s claims have been amended in the following manner: the original claim set remains unchanged with the exception minor changes, and new claims 21-22 have been entered to draw a new ground of rejection. The 103 rejection overall maintains the same thrust of rejection from the previous office action, but with the exception of the changes prompted by the new claims added. The following objections/rejections are withdrawn: the 101 rejection (based on argument, see below), 112b (for exemplary language of previous claim 9), objections (for duplicate terminology of previous claim 8), and the objections to the claim 1 and 2 structures.
The Examiner further acknowledges the following:
Claims 1-22 are pending.
Claims 10-15 are withdrawn from consideration as directed to non-elected inventions.
Claims 1-9 and 16-22 are presented for examination and rejected as set forth below.
New 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.
Claims 1-9, and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Coleman (US 20070249699 A1), as evidenced by Cala (US 5593504A) and ACS (Sodium Laureth Sulfate, 2017), and in further view of Cartridge (US6069210) and Rader (US 20160338348 A1).
Applicant’s claims are directed to a composition comprising pelargonic acid, an anionic surfactant, an organic solvent, and a non-ionic surfactant in specific amounts and ratios in claims 1 and 3.
Coleman teaches a pesticide composition for particular use as a fungicide and herbicide (abstract), formulated as a concentrate suitable for dilution (Coleman – claim 19).
Regarding claims 1-3, 9, and 16: Coleman teaches a composition comprising nonanoic acid (reads on pelargonic acid) (30-99.5% v/v) (Coleman – claims 4-5, 7, 34-35), anionic [0033] (Klearfac AA 270 is an “alcohol alkoxylated phosphate ester” surfactant, which is an anionic surfactant with phosphate moiety, as evidenced by Cala (US 5593504A), and non-ionic surfactant mixtures (0.5-70% v/v) (Coleman – claim 10 and 21, [0033]), organic solvents such as a vegetable oil (at 10% v/v in Table 19) [0033], where the ratio of surfactant(s) to pelargonic acid is for example 0.14 (10% emulsifier to 70% C9 ratio) in Table 20. "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Coleman further teaches incorporation of Klearfac AA70 (an anionic surfactant) in 15 wt% [0087] (table 21), where Coleman also teaches anionic and non-ionic surfactant mixtures (0.5-70% v/v) (Coleman – claim 10 and 21, [0033]). Thus, the limitations of instant claims 3 and 16 is prima facie obvious.
Regarding claim 22: Coleman teaches a concentrate supplied as an aqueous solution, a suspension, or emulsion [0012].
In summary, Coleman teaches the instant composition and general inclusion of anionic surfactants except for the specified polymers (instant claims 1 and 6-8) and acid forms of the anionic surfactants (instant claims 1, 4-5 and 17-21). Coleman teaches general incorporation of emulsifiers, dispersants, and surfactants [0011, 0033].
Cartridge teaches phosphate esters of polyoxyalkylene ether block copolymers dispersants (title, col 1), where formula (1) (Col 1, lines 43-55) and salts thereof reads on the formulas of instant claims 1, 4-5, 7, and 17-21 (i.e., the formula encompasses the acid forms of these formulas, where the general term “phosphate ester” from formula (1) is known by a person skilled in the art to describe monoesters, diesters, and triesters, and does not otherwise require a salt form). Cartridge teaches these types of compounds have application to plant protection (col 1, lines 25-32).
Rader teaches sodium lauryl ether sulfate (aka sodium laureth sulfate) [0003] (ACS teaches the structure of sodium laureth sulfate (pg 1), which reads on the formula of instant claim 6, mono-[alkyl-polyethylene glycol] sulfate of instant claim 8, and instant claim 21), as a high active surfactant, for application in pesticide formulations (Rader – claim 8) [0006, 0007].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Coleman with the anionic polymeric phosphate and sulfate species taught by Cartridge and Rader. Where Coleman provides the general teaching of using emulsifying anionic surfactants in the composition (Coleman - claim 21) [0076], Cartridge and Rader disclose the specific species that have the same function of a surfactant with application to pesticides. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It is noted that the anionic polymers (instant claims 6-8 and 21) and the acid forms of the anionic surfactants (instant claims 4-5 and 17-21) found in the art are defined by the claim set to have an emulsifying function for the composition.
Response to Arguments
Applicants arguments, see pg 7-15, filed 09/11/2025, with respect to the 103 rejection of claims 1-9 and 16-20 under rejection have been fully considered, but they are not persuasive. The 103 rejection has been modified with respect to amendments made to the claim set and new added claims.
On page 7, Applicant address the objection to claims 1-2, as follows: Applicant points to examples of the emulsifier in the Specification (i.e., also in Claim 8 for example), so that the meaning of the chemical formulas is understood to a PHOSITA. The Examiner accepts this rationale and with draws the claim objection.
On page 7-8, Applicant addresses the changes made to solve issues with claims 8 (objection) and 9 (112b) to withdraw the claim objection and 112b rejection.
On page 8-9, Applicant address the 101 rejection by stating that the mixture increases the efficacy of the pelargonic acid herbicide, as “something more.” The Examiner accepts this argument and removes the 101 rejection in light of the improved properties of the herbicide within the mixture, as compared to the individual natural product herbicide.
On page 10-13, Applicant argues against the obviousness of the specific combination of ingredients and amounts of independent claim 1. Applicant provides a background that includes discussions of commercial products Finalsan (18.8% pelargonic acid) and Beloukha (72 wt% pelargonic acid). Note that specific embodiments of Finalsan and Beloukha do not represent the entire scope of the known Prior Art (i.e., what has been disclosed by Coleman as alternative embodiments or suggestions to consider additional prior art ). Furthermore, the composition of the high concentration product, Beloukha, has not been disclosed by Applicant nor found in the literature to offer a full comparison with respect to the comparisons Applicant makes between Example 1 and Comparative Example 4 (i.e., Beloukha) throughout the Specification to support of unexpected results. Unexpected results have to compare the invention to the closest prior art, and without a basis of determining what the comparator actually is (i.e., Beoukha), that can’t serve to establish unexpected results. Applicant suggests that concentrated compositions of pelargonic acid require emulsifying stabilizing agents such as in Beloukha (which is stated by Applicant to show extensive phase separation, when immediately emulsified in water at the application rate, and consequently demonstrating poor performance). In this case, the beneficial results are expected based on the teachings of the prior art: “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967), see also In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Note that Coleman demonstrates precisely this concept by teaching an invention of highly concentrated pelargonic acid in the presence of a mixture of anionic and non-ionic emulsifying surfactants (Coleman – claims 10 and 21).
Additionally, arguments treat the references (e.g., Cala, Rader, and Cartridge) piecewise (pg 12-13), which is per se unpersuasive. It is the combined teachings that define the art. The secondary references are incorporated to address dependent limitations.
As written in the last paragraph of pg 11 of the arguments, Applicant claims that the problems of the prior art formulations can be solved by incorporating at least one anionic surfactant, at least on non-ionic surfactant, and at least one organic solvent. The Examiner suggests that this combination is obvious based on the Art, and the results disclosed by the Applicant appear reasonably expected by the Art (see below for more discussion). Again, Coleman teaches highly concentrated pelargonic acid in the presence of a mixture of anionic and non-ionic emulsifying surfactants (Coleman – claims 10 and 21).
Applicant asserts that Coleman does not disclose or suggest the specific combination of ingredients of the instant invention, and that the specific combination of literature does not arrive at the specific invention. However, the primary reference (Coleman) readily suggests compositions of high concentration pelargonic acid, non-ionic surfactants, and organic solvents. In Table 19, Colman demonstrates treatment using a composition of 70% C9 Acid, 10% mineral oil and 20% Cognis Embsorb 6915 (sorbitan monolaurate, a non-ionic surfactant [0042, 0055]), which is remarkably close to Comparative Example 5, which shows no real benefits over inventive Example 6. Furthermore, Coleman shows incorporation of anionic phosphate ester surfactants such as Klearfac in Table 22 (Coleman – claim 23). Furthermore, it should be noted that proper rationale is provided in the 103 rejection to combine the Art and demonstrate obviousness of the instantly claim ed composition to a PHOSITA.
In order to break the obviousness of the rejection, unexpected results would need to be demonstrated in comparison to the closest prior Art Coleman (see further discussion in paragraph below). Note that 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). The Examiner finds the comparison between the Examples and Comparative Examples (as discussed below), as lacking in this respect.
On page 13-15 (including pg 8-9, where surprising results are also discussed), Applicant reiterates surprising results of the composition. The Examiner suggests that the purported surprising results are most clearly represented in Applicant’s Specification, in the comparison of Example 6 (80 wt% pelargonic acid, including 1 wt% anionic surfactant Emulsifier A) vs. Comparative Example 5 (80 wt% pelargonic acid, without Emulsifier A). This exemplifies a high concentration pelargonic acid composition with only a non-ionic surfactant (Example 6) vs a composition that includes an additional anionic surfactant (as the combination is suggested by Applicant is the inventive feature of the instant invention). Note that the difference in herbicidal activity performance is marginal (see Table 5 - Example 6 vs. Comparative Example 5; for example, for the larges difference in Measurement II - 85% vs. 70% represents about an 18% improvement). Applicant provides no comparison of emulsion stability of Example 6 vs. Comparative Example 5 (wherein emulsion stability is as stated as a primary advantage over Beloukha). Thus, Note that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Consequently, we must determine whether the results obtained in the closest prior art and those set forth by Applicants are sufficiently different in kind, and not merely in degree, so as to be unexpected by a person of ordinary skill in the art at the time of invention. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (Unexpected results that are probative of nonobviousness are those that are "different in kind and not merely in degree from the results of the prior art") (citation omitted). In this case, the addition of the anionic surfactant Emulsifier A (where non-ionic and anionic surfactant mixtures are already taught by Coleman) leads to an 18% improvement, which does not constitute an unexpected result, as an improvement in only degree and not kind.
To support the claim that an 18% improvement is merely an improvement in only degree (and not kind) such that it does not constitute an unexpected result, the Examiner refers to Coleman’s results of Example 21 (herbicidal activity of incorporating anionic surfactants in Table 21 on pg 15) and Example 22 (herbicidal activity of incorporating nonionic surfactants in Table 22 on pg 15), where Coleman demonstrates greater than 18% differences in activity between different formulations, employing anionic and nonionic surfactants, based on a visual plant injury score (i.e., herbicidal activity/desiccation [0086]) (similarly to Applicant’s herbicidal activity based on a visual efficacy evaluation score in Table 5 of the Specification on pg 20-21). Additionally, Coleman directly teaches that emulsifiers can be “anionic-nonionic mixtures” (Coleman – claims 10 and 21) and suggesting nonionic surfactants such as Cognis Embsorb 6915 (sorbitan monolaurate [0042, 0055]) and anionic surfactants such as the phosphate ester Klearfac AA 270 (Coleman – claim 23). Just because Coleman does not provide a direct example of combining an anionic and nonionic surfactant in one formulation does not limit this general teaching of mixing a nonionic and anionic surfactant to optimize efficacy. Thus, the difference in activity between Example 6 vs. Comparative Example 5 (at a maximum of 18% difference, shown by Measurement II) appears to reflect the variability of general routine optimization that is similar to the routine optimization conducted by the closest Prior Art Coleman in Tables 21 and 22.
Applicant appears to focus its support for surprising results by comparing Example 1 and Comparative Example 4, where it is noted that the formulation of Comparative Example 4 (i.e., Beloukha) is not disclosed in the arguments or specification, such that a direct comparison to Example 1 is not possible (in Specification - compositions on pg 16-17, and results in Table 5, pg 21). Furthermore, at the moment, the primary reference (Coleman) readily suggests compositions (by way of embodiments) of high concentration pelargonic acid, non-ionic surfactants, and organic solvents. In Table 19, Colman demonstrates treatment using a composition of 70% C9 Acid, 10% mineral oil and 20% Cognis Embsorb 6915 (sorbitan monolaurate, a non-ionic surfactant [0042, 0055]), which is remarkably close to Comparative Example 5, where Example 5 shows no strikingly surprising benefits over Applicant’s inventive Example 6. Furthermore, Coleman demonstrates incorporation of anionic phosphate ester surfactants such as Klearfac in Table 22 (Coleman – claim 23), where combing this anionic phosphate ester with a non-ionic surfactant is obvious because Coleman directly states that emulsifiers can be “anionic-nonionic mixtures” for high concentration pelargonic acid compositions (Coleman – claims 10 and 21). Thus, not only are the elements of the instant composition obvious from Coleman, but the improvement of results is expected.
The comparison of Example 6 vs. Comparative Example 5 shows negligible benefit (i.e., one that would be expected through experimentation by a PHOSITA) of adding an anionic surfactant in addition to a non-ionic surfactant (i.e., the largest difference is portrayed in Measurement II of Table 5, when Example 6 shows 85% efficacy vs. 70% efficacy), wherein the combination of anionic and non-ionic surfactants is a well-known strategy to improve emulsions. As further evidence teaching anionic and nonionic surfactant combinations as known in the field to improve agrochemical efficacy, Tadros (Surfactants in Agrochemicals, 2015) teaches that most emulsifiable concentrates are based on anionic/nonionic surfactant mixtures, where experimentation with the blend can lead to more stable formulations and better performance (pg 63-64, 71). Furthermore, Coleman directly suggests combinations of anionic and non-ionic surfactants in high concentration pelargonic acid agrochemical compositions, by directly stating that emulsifiers can be “anionic-nonionic mixtures” (Coleman – claims 10 and 21) and suggesting nonionic surfactants such as Cognis Embsorb 6915 (sorbitan monolaurate [0042, 0055]) and anionic surfactants such as the phosphate ester Klearfac AA 270 (Coleman – claim 23). Note that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Consequently, we must determine whether the results obtained in the closest prior art and those set forth by Applicants are sufficiently different in kind, and not merely in degree, so as to be unexpected by a person of ordinary skill in the art at the time of invention. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (Unexpected results that are probative of nonobviousness are those that are "different in kind and not merely in degree from the results of the prior art") (citation omitted). In this case, the instant invention does not appear to demonstrate an unexpected result.
Thus, the Art demonstrates that the combination of pelargonic acid, an anionic surfactant, and a non-ionic surfactant in the proposed amounts is obvious, and furthermore, the results provided by Applicant do not represent an unexpected effect. The purported unexpected results disclosed by the Specification and argued in Applicant’s arguments are not enough to demonstrate non-obviousness.
Correspondence
Applicant's amendment necessitated the new ground 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 extension fee 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 date of this final action.
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/R.P./Examiner, Art Unit 1614 10/31/2025
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614