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 .
Claim Rejections - 35 USC § 112
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 5-6 and 10-11 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 5-6 and 10-11 depend from claims 1 or 2 respectively which each already specifically define the amorphous organic pesticide and the crystalline organic pesticide and as such these pesticides must necessarily already have the claimed properties and as such these claims do not further limit claims 1-2 from which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 5-6, 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Finch (US2012128750, from IDS) and further in view of Parambil (Engineering Crystallography (2017)..., IDS 01/26/23), Chen (CN107668063A).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-2, Finch teaches processes of preparing aqueous suspensions of organic pesticides, the process comprising 1) forming a mixture comprising a formulation additive and at least one crystalline organic pesticide, and combining/adding applicant’s mixture 1 with a composition comprising an aqueous emulsion of the same pesticide using agitation/mixing or emulsification to induce crystallization of the amorphous droplets of the pesticide in the aqueous emulsion (see entire document; e.g. [0015]; [0012-0018]; [0029]; [0103-0108]; [0112]; [0115-0118]; [0134]; abstract; claims; Examples). It is just noted that Finch teaches providing the aqueous emulsion of the amorphous compound and adding the aqueous suspension/dispersion of the crystalline form to the aqueous emulsion which appears to be the same steps of applicants claim 2. However, it is known from In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results) and In reGibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). Thus Finch’s opposite addition still renders obvious the claimed method of claim 1 for the above reasons.
Regarding claims 1-2, Finch also teaches wherein the addition is performed at a temperature below the melting temperature of the crystalline form of the organic pesticide compound and Finch teaches wherein their crystalline and amorphous actives are the same compound and wherein the addition step of the amorphous form is a melt and wherein the addition step is performed at a temperature below the melting the temperature of the crystalline form of the organic pesticide, e.g. less than 110° C, and specifically at temperatures wherein the amorphous active is melted generally range of 45-90° C but can be determined depending on the amorphous pesticide used and Finch teaches wherein the amorphous pesticide used can be the now claimed bifenthrin and as such the bifenthrin would have the claimed melting point (See entire document; abstract; claims; [0016-0019]; [0021]; [0101]; [0028]). Nothing in Finch teaches that crystalline active agents having a higher melting point would not work in their method and as discussed above Finch does teach wherein the addition step of the crystalline phase should occur at temperatures below the melting point of the crystalline material (sections cited above) so that the crystalline active material remains crystalline during the addition/suspension formation and this is further addressed below with the incorporation of Parambil.
Regarding claim 3, Finch teaches wherein the formulation additive in the aqueous suspension/dispersion of the crystalline pesticide includes water and can include surfactants (see entire document; Claims; e.g. claim 38; [0012-0018]; [0029]; [0134]; [0103-0108]; [0121]; examples).
Regarding claims 5-6 and 10-11, Finch teaches wherein the amorphous pesticide and their crystalline pesticide (which are the same) have a solubility in water of about 0.01 mg/L to 1 g/L at 20 °C, and 0 to 2 g/L at 20 °C, etc. which read on the claimed ranges ([0023]).
Regarding claim 14, Finch teaches milling their mixture/suspension using the claimed bead mill ([0188]). The examiner notes that claim 14 does not actually require a milling step, it merely limits the type of milling which occurs if the optional milling step of claims 1 or 2 is performed.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Finch does not teach wherein the at least one crystalline organic pesticide is not identical to the at least one amorphous organic pesticide, specifically wherein the crystalline pesticide is the now claimed cyantraniliprole or chlorantraniliprolem though they do teach wherein the amorphous pesticide is/can be the claimed bifenthrin as discussed above. Finch also teaches wherein the crystalline phase can comprise other poorly water soluble pesticides in addition to the crystalline organic pesticide in the suspension and as such the at least one amorphous pesticide can comprise other crystalline poorly water soluble pesticides not identical to the at least one crystalline organic pesticide as instantly claimed, including the claimed chlorantraniliprole ([0112]; [0015]; [0137]). These deficiencies in Finch are addressed by Parambil, and Chen.
Parambil teaches that crystal seeding which is the process of adding homogenous (the same compound’s crystalline form) or heterogenous (a different compound’s crystalline form) to a crystallizing solution, i.e. the amorphous pesticide emulsion, in order to nucleate and/or grow crystals from the solution (Abstract; section 13.20.3).
Chen teaches aqueous suspensions of bifenthrin and chlorantraniliprole and as such aqueous suspensions of the claimed active combinations are known in the art and are known wherein the chlorantraniliprole is crystalline and milled with a ball mill and then bifenthrin are added to form the claimed aqueous suspensions (see entire document; abstract; Suspension (Formulation examples 7-9) section; claims).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would be obvious to use crystalline pesticide which is different from the amorphous pesticide, bifenthrin, as is instantly taught by Finch in their process in order to develop the instantly claimed process and to specifically select chlorantraniliprole because Parambil teaches that crystal seeding which is the process of adding homogenous (the same compound’s crystalline form) or heterogenous (a different compound’s crystalline form) to a crystallizing solution, i.e. the amorphous pesticide emulsion, in order to nucleate and/or grow crystals from the solution (Abstract; section 13.20.3). Thus, it was known in the art to crystalline material of one active agent to crystalize amorphous forms of a completely different active agent as is taught by Parambil. Further it would be obvious to performing the addition step at the claimed temperature range because Finch teaches that it is important to perform the addition step at a temperature below the melting temperature of the crystalline pesticide, which when using a heterogenous crystalline pesticide from the amorphous pesticide as the seeding agent for the crystallization as is generally taught by Parambil it would be obvious to select the claimed chlorantraniliprole because Chen teaches that combinations of chlorantraniliprole and bifenthrin are very effective, and specifically are known to be synergistic for the control of insects, and chlorantraniliprole is poorly soluble and has a higher melting point than bifenthrin and as such would be an obvious choice for forming effective bifenthrin aqueous suspension mixtures because by using crystalline chlorantraniliprole as the seed crystals for promoting the crystallization of the amorphous bifenthrin to form the stable suspension formulations of Finch would allow for synergy when applied to control insects in the field while also forming stable suspensions as in Finch because it was known to heterogenous crystals to seed an amorphous active as is taught by Parambil. Thus, the claimed temperature range of 80-100° C would be obvious to optimize for the most effective crystallization of the bifenthrin with seeding from the chlorantraniliprole as these temperatures are below the melting point of the chlorantraniliprole which is taught to be necessary, i.e. addition temperatures below the melting point of the crystalline pesticide, so that the crystalline pesticide when mixed with/added to the amorphous pesticide remains crystalline and is able to seed the crystal formation of the amorphous pesticide as it cools. These processes/techniques used for seeding crystallizations of amorphous compounds are known in the art as taught by Parambil, and further it would be obvious to optimize the temperatures for crystallization of amorphous bifenthrin by seeding with the claimed chlorantraniliprole based on the combined teachings of the prior art because firstly Finch teaches that common temperatures for such addition steps are from 45-90° C which overlaps the claimed temperature range and because, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, the claimed temperature range is optimization based on the teachings of typical useful addition temperatures as taught by Finch and the claimed method remains obvious based on the combined teachings of the prior art as discussed above and herein.
It also would have been obvious to one of ordinary skill in the art at the time of the instant filing to have made the claimed method when looking to Finch and Parambil because Finch teaches the claimed method except for using crystalline pesticide which is different from the amorphous pesticide as is instantly claimed. However, this was known in the art to do as per Parambil. Thus, one of ordinary skill in the art would be motivated to select crystalline pesticide which is different from the amorphous pesticide as is instantly claimed in the process of Finch in order to develop the instantly claimed process because Parambil teaches that crystal seeding which is the process of adding homogenous (the same compound’s crystalline form) or heterogenous (a different compound’s crystalline form) to a crystallizing solution, i.e. the amorphous pesticide emulsion, in order to nucleate and/or grow crystals from the solution, and by using different crystalline pesticide from the amorphous pesticide allows one to form a mixture of two different crystalline pesticides in combination together which allows for new pesticide combinations to be formed for application to control weeds.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art 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 would have been 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.
Response to Arguments/Remarks
Applicant’s abandonment of previously copending 18848215 has rendered moot the previous double patenting rejection which is hereby withdrawn. Applicant’s amendments to the claims have also rendered moot the previous claim objections. The examiner notes that applicant’s amendments to claims to correct the previous multiple dependency issues have prompted the new grounds of rejection in this final rejection.
Applicant’s amendments to the claims have also prompted the new grounds of rejection under 112(d) and 103 presented herein. Applicant’s arguments with respect to the 103 rejection have been fully considered but are not persuasive at this time. Firstly, applicants argue that Finch discloses a process of preparing an aqueous suspension of an organic pesticide, wherein the amorphous pesticide is the same as the crystalline pesticide used which is different from the instant claims and they argue that their method now requires a specific temperature and specific organic pesticides: bifenthrin as the amorphous pesticide and chlorantraniliprole or cyantraniliprole as the crystalline pesticide, and that the temperature they require is greater than the melting point of the amorphous organic pesticide, and that they argue that that Finch’s method requires that the addition be performed at a temperature below the melting temperature of the crystalline form of the organic pesticide compound. The examiner respectfully points out that the instantly claimed method, the claimed temperatures of 80-100° C are below the melting point of the crystalline organic pesticide. Applicant’s continue that Finch only uses the same pesticide as both the amorphous and crystalline pesticides in their method. The examiner respectfully points out that she never asserted that Finch taught the different crystalline pesticide for seeding the amorphous pesticide. This was taught by Parambil which as discussed above teaches it was known to do the claimed heterogenous (a different compound’s crystalline form) or homogenous (the same compound’s crystalline form as in Finch) seeding to a crystallizing solution, i.e. the amorphous pesticide emulsion, in order to nucleate and/or grow crystals from the solution. Thus, it would be obvious to select other pesticides with higher melting points which are crystalline and have the claimed solubility, e.g. chlorantraniliprole, as the organic pesticide for seeding the amorphous bifenthrin as taught by Finch in order to form the claimed method because combinations of bifenthrin and the chlorantraniliprole were known to be effective and can be formulated as aqueous suspensions as taught by Chen, and because Finch teaches that the addition step should be done at temperatures below the melting point of the crystalline pesticide which make it obvious for one of ordinary skill in the art to select chlorantraniliprole as the crystalline pesticide in Finch since it has a higher melting point and can be used a heterogeneous seeding agent for the amorphous bifenthrin as taught by the combined references above.
Applicants argue that it would not be obvious to select other pesticides from pyraclostrobin. The examiner respectfully disagrees because Finch expressly teaches that bifenthrin can be the claimed amorphous pesticide as discussed and cited above. Applicant’s argue that it would not be obvious to select the claimed combination of pesticides without impermissible hindsight. The examiner respectfully disagrees because the combination of chlorantraniliprole and bifenthrin were already known in the art and were known to be formulated as aqueous suspensions as is instantly claimed, as is taught by Chen. Applicants then further argue that it would not be obvious to change the crystalline pesticide in Finch to a completely different agent instead of the same pesticide as is taught by Finch. The examiner respectfully disagrees because it was known to use a different active agent, e.g. pesticide, to seed crystals of a different substance as this is a well-known concept in crystal seeding as is taught by Parambil as discussed above. Thus, the examiner maintains that this substitution of the same crystalline pesticide for seeding the same pesticide in amorphous form with a different higher melting point crystalline pesticide for seeding the amorphous bifenthrin for crystallization in the method of Finch in order to develop the instantly claimed method based on the combined teachings of Parambil and Chen as is discussed above. Finally, at point 4, applicant’s argue that it would not be obvious to perform the addition step at a temperature below the melting temperature of the crystalline pesticide because Finch is using the same pesticide as both the crystalline and the amorphous pesticide for seeding and the melting temperature of pyraclostrobin is lower than the newly claimed 80-100° C. The examiner respectfully points out that using a different crystalline active agent to seed the crystallization of another amorphous active agent is known in the art and it is necessary for crystal seeding that the temperature at addition be below the melting point of the crystalline agent being added as is taught by Finch, and as such it would be obvious to use a temperature lower than the melting point of chlorantraniliprole when chlorantraniliprole is used as the crystalline pesticide since it has a higher melting point than bifenthrin but has a low solubility as is required by Finch. One of ordinary skill in the art would be motived to select the claimed pesticides for use in the claimed method based on the teachings of Chen, Finch and Parambil as is discussed above. Applicants then argue that there would be no expectation of success that the process of the prior art would lead to a stable suspension of crystalline solids the examiner respectfully disagrees based on the combined teachings of the prior art especially since the instant claims do not require any stability, and further the claimed compositions with which applicants achieve their argued stability contain other components which are not actually required to be present in the claimed method, e.g. specific surfactants, etc.
Finally, applicants argue that Parambil does not teach the claimed temperature ranges now required and fail to overcome the deficiencies in Finch, the examiner respectfully disagrees for the reasons which are discussed above and which are incorporated herein.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art 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 would have been 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X 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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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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