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 .
Formal Matters
Applicant’s claim amendments and arguments in the reply filed on 07 April 2026 are acknowledged. Claims 1, 3, 12, 27, 31, 37-38, 44, and 63-76 are pending. Claims 1, 3, 12, 27, 31, 37, 63-72, and newly added claims 73-76 are under consideration in the instant office action. Claims 38 and 44 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claims. Claims 73-76 are newly added. Claims 2, 4-11, 13-26, 28-30, 32-36, 39-43, and 45-62 are cancelled. Applicant’s arguments and new claims did not overcome the rejections under 35 USC 103 for reasons set forth in the previous office action and herein below.
Withdrawn Objections/Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.
Rejections Maintained
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Note: The claims are examined with respect to the elected species of folpet as pesticide type and block copolymer of 2-acrylamido-2-methylpropanesulfonate and ethyl acrylate as the polyelectrolyte layer.
Claims 1, 3, 12, 27, 31, 37, 63-72, and newly added claims 73-76 remain rejected under 35 U.S.C. 103 as being unpatentable over Kober et al. (US 2009/0170704, IDS reference).
Applicant Claims
Applicant claims an agricultural material.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Kober et al. teach a solid plant protection compositions comprising: a) liquid or low melting point polyalkoxylate; and b) a carrier based on relatively high molecular weight sulfonate, wherein (i) the weight ratio of liquid or low melting point polyalkoxylate to plant protection active agent is at least 1:2; (ii) the proportion of liquid or low melting point polyalkoxylate, based on the total weight of the relatively high molecular weight sulfonates, is at least 30% by weight; and (iii) the weight ratio of liquid or low melting point polyalkoxylate to relatively high molecular weight sulfonate is at most 3:1. The invention also relates to processes for their preparation and the use of the plant protection compositions for the treatment of plants and their habitat as well as corresponding processes, and also spray mixtures comprising such a plant protection composition (see abstract). Solid plant protection compositions, in particular those based on dust-free solid granules, offer considerable advantages in comparison with liquid plant protection compositions, which affects use, storage, transportation, stability and waste disposal of packaging materials. However, the low melting point of the abovementioned alkoxylates, which leads to problems on incorporation in solid plant protection compositions, is frequently disadvantageous. Thus, conventional solid plant protection compositions can only include small amounts of liquid, oily or low melting point additives, such as those represented by the alkoxylates, since otherwise agglutination and aggregation of the granules occur. Typically, less than 15% by weight merely of such additives can be added without harming the storage stability (paragraph 12). An object of the present invention is accordingly a solid plant protection composition comprising a plant protection active agent which comprises:
a) liquid or low melting point polyalkoxylate; and b) a carrier based on relatively high molecular weight sulfonate, wherein (paragraph 24) (i) the weight ratio of liquid or low melting point polyalkoxylate to plant protection active agent is at least 1:2; (paragraph 25) (ii) the proportion of liquid or low melting point polyalkoxylate, based on the total weight of the relatively high molecular weight sulfonate, is at least 30% by weight; (paragraph 26) and (iii) the weight ratio of liquid or low melting point polyalkoxylate to relatively high molecular weight sulfonate is at most 3:1 (paragraph 27). An additional embodiment of relatively high molecular weight sulfonates provides copolymers CP synthesized from ethylenically unsaturated monomers M, the monomers M constituting the copolymer CP comprising ) at least one monoethylenically unsaturated monomer M1 exhibiting at least one sulfonic acid group, and (paragraph 139) ) at least one neutral monoethylenically unsaturated monomer M2. The copolymers CP are generally "random copolymers", i.e. the monomers M1 and M2 are randomly distributed along the polymer chain. In principle, alternating copolymers CP and block copolymers CP are also suitable. The monomers M constituting the copolymer CP comprise according to the invention at least one monoethylenically unsaturated monomer M1 exhibiting at least one sulfonic acid group. The proportion of the monomers M1 to the monomers M in this context generally amounts to from 1 to 90% by weight, frequently from 1 to 80% by weight, in particular from 2 to 70% by weight and especially from 5 to 60% by weight, based on the total amount of monomers M. In this context, all monoethylenically unsaturated monomers exhibiting at least one sulfonic acid group are suitable in principle as monomers M1. The monomers M1 can exist both in their acid form and in the salt form. The parts by weight given are based in this context on the acid form (paragraphs 141-144).
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Examples of monomers M1 of the general formula (V) are 2-acrylamido-2-methylpropanesulfonic acid, 2-methacrylamido-2-methylpropanesulfonic acid, 2-acrylamidoethanesulfonic acid, 2-methacrylamidoethanesulfonic acid, 2-acryloyloxyethanesulfonic acid, 2-methacryloyloxyethanesulfonic acid, 3-acryloyloxypropanesulfonic acid and 2-methacryloyloxypropanesulfonic acid (paragraph 151). In addition to the monomers M1, the monomers M constituting the copolymer CP comprise at least one neutral monoethylenically unsaturated monomer M2. "Neutral" means that the monomers M2 possess no functional group which reacts as an acid or base under aqueous conditions or is present in ionic form. The total amount of the monomers M2 generally comes to from 10 to 99% by weight, frequently from 20 to 99% by weight, in particular from 30 to 98% by weight and especially from 40 to 95% by weight, based on the total weight of the monomers M (paragraph 152). Examples of monomers M2 are those with limited solubility in water, e.g. a solubility in water of less than 50 g/l and in particular of less than 30 g/l (at 20.degree. C. and 1013 mbar), and those with an elevated solubility in water, e.g. a solubility in water .gtoreq.50 g/l, in particular .gtoreq.80 g/l (at 20.degree. C. and 1013 mbar). Monomers with limited solubility in water are also described subsequently as monomers M2a. Monomers with elevated solubility in water are also described subsequently as monomers M2b (paragraph 153). The monomers M2a are preferably chosen from vinylaromatic monomers, esters of acrylic acid with C.sub.2-C.sub.10-alkanols, such as ethyl acrylate, n-butyl acrylate, 2-butyl acrylate, isobutyl acrylate, tert-butyl acrylate or 2-ethylhexyl acrylate, esters of acrylic acid with C.sub.4-C.sub.10-cycloalkanols, such as cyclohexyl acrylate, esters of acrylic acid with phenyl-C.sub.1-C.sub.4-alkanols, such as benzyl acrylate, 2-phenylethyl acrylate and 1-phenyl-ethyl acrylate, esters of acrylic acid with phenoxy-C.sub.1-C.sub.4-alkanols, such as 2-phenoxyethyl acrylate, esters of methacrylic acid with C.sub.1-C.sub.10-alkanols, in particular with C.sub.1-C.sub.6-alkanols, such as methyl methacrylate, ethyl methacrylate, n-butyl methacrylate, 2-butyl methacrylate, isobutyl methacrylate, tert-butyl methacrylate or 2-ethylhexyl methacrylate, esters of methacrylic acid with C.sub.4-C.sub.10-cycloalkanols, such as cyclohexyl methacrylate, esters of methacrylic acid with phenyl-C.sub.1-C.sub.4-alkanols, such as benzyl methacrylate, 2-phenylethyl methacrylate and 1-phenylethyl methacrylate, and esters of methacrylic acid with phenoxy-C.sub.1-C.sub.4-alkanols, such as 2-phenoxyethyl methacrylate. In a particularly preferred embodiment, the monomers M2a comprise up to at least 80%, based on the total amount of the monomers M2a, of and in particular exclusively esters of acrylic acid and/or of methacrylic acid with C.sub.1-C.sub.6-alkanols (paragraph 155). Preferably, the monomers M2 comprise at least one of the abovementioned monomers M2a exhibiting, at 20.degree. C. in water, a solubility of less than 50 g/l and in particular of less than 30 g/l. The proportion of the monomers M2a in the monomers M constituting the copolymer CP typically ranges from 10 to 99% by weight, frequently ranges from 20 to 99% by weight, in particular ranges from 30 to 98% by weight and especially ranges from 40 to 95% by weight, based on the total weight of the monomers M (paragraph 157). In a first preferred embodiment of the invention, the monomer M2a is sole or virtually sole monomer M2 and amounts to at least 95% by weight and in particular at least 99% by weight of the monomers M2 9paragraph 158). In a second preferred embodiment of the invention, the monomers M2 comprise, in addition to the monomer M2a, at least one monomer M2b exhibiting, at 20.degree. C. in water, a solubility of at least 50 g/l and in particular of at least 80 g/l. Correspondingly, the monomers M constituting the copolymer CP comprise, in addition to the monomer M1, both at least one of the abovementioned monomers M2a, in particular at least one of the monomers M2a mentioned as preferred, and at least one of the abovementioned monomers M2b, in particular at least one of the monomers M2b mentioned as preferred (paragraph 159). The total amount of the monomers M1+M2b will frequently not exceed 90% by weight, in particular 80% by weight and especially 70% by weight, based on the total amount of the monomers M, and ranges in particular from 10 to 90% by weight, in particular from 20 to 80% by weight and especially from 30 to 70% by weight, based on the total amount of the monomers M. Correspondingly, the monomers M2a frequently come to at least 10% by weight, in particular at least 20% by weight and especially at least 30% by weight, e.g. from 10 to 90% by weight, in particular from 20 to 80% by weight and especially from 30 to 70% by weight, based on the total amount of the monomers M (paragraph 160). In this second particularly preferred embodiment, the monomers M1 preferably come to from 1 to 80% by weight, in particular from 2 to 70% by weight and particularly preferably from 5 to 60% by weight, the monomers M2a preferably come to from 10 to 90% by weight, in particular from 20 to 80% by weight and particularly preferably from 30 to 70% by weight, and the monomers M2b preferably come to from 5 to 89% by weight, in particular from 10 to 78% by weight and particularly preferably from 20 to 65% by weight, based on the total amount of the monomers M. Particular preference is given among these to copolymers CP, the constituent monomers M of which comprise, as monomers M1, at least one monomer of the formula (V), as monomers M2a, at least one monomer chosen from esters of acrylic acid with C.sub.2-C.sub.10-alkanols and esters of methacrylic acid with C.sub.1-C.sub.10-alkanols and, as monomers M2b, at least one monomer chosen from hydroxy-C.sub.2-C.sub.4-alkyl esters of acrylic acid and of methacrylic acid (paragraph 161). In this context, it is particularly preferable for the plant protection composition to comprise at least 15% by weight, preferably at least 25% by weight and in particular at least 30% by weight of relatively high molecular weight sulfonate (paragraph 180). The following are suitable in particular as component (c): c1) surface-active auxiliaries; c2) suspension agents, antifoaming agents, retention agents, pH buffers, drift retardants and other auxiliaries for improving the handleability and/or physical properties of the composition; and c3) chelating agents (paragraph 200-203). The pesticide for use according to the invention is chosen in particular from fungicides (e1), herbicides (e2) and insecticides (e3) (paragraph 0256). Fungicides comprise, for example folpet or thiochlorfenphim etc. (paragraph 257). According to a particular embodiment of the invention, fungicides (e1) comprise: sulfonates, such as captafol, captan, dichlofluanid, folpet or tolylfluanid (paragraph 272). The proportion of the active agent component (e) in the total weight of the composition generally comes to more than 1% by weight, preferably more than 2% by weight and in particular more than 2.5% by weight. On the other hand, the proportion of the component (e) in the total weight of the composition generally comes to less than 50% by weight, preferably less than 40% by weight and in particular less than 35% by weight, based on the total weight of the composition (paragraph 337). In a particular embodiment of the invention, the composition is a particulate solid, in particular a granule or powder. In this context, it is particularly preferable for the granule to be coarse-grained (paragraphs 340-341). The copolymers CP according to the invention are in some cases known from PCT/EP04/011797 or can be prepared according to conventional methods by radical polymerization of the monomers M. The polymerization can be carried out by free radical polymerization or by controlled radical polymerization processes. The polymerization using one or more initiators and can be carried out as solution polymerization, as emulsion polymerization, as suspension polymerization, as precipitation polymerization or as bulk polymerization. The polymerization can be carried out batchwise, semicontinuously or continuously (paragraph 169).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.012)
Kober et al. teach the claimed invention in obvious manner in terms of the monomer types and their amounts as well as the agricultural active agent and its amounts in its broader teaching. This is further addressed by the prima facie argument set forth below.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the instant invention to produce the instant invention by following the teachings of Kober et al. because Kober et al. teach all of the elements of the claimed invention in its generic teachings. Kober et al. teach a solid plant protection compositions comprising: a) liquid or low melting point polyalkoxylate; and b) a carrier based on relatively high molecular weight sulfonate, wherein (i) the weight ratio of liquid or low melting point polyalkoxylate to plant protection active agent is at least 1:2; (ii) the proportion of liquid or low melting point polyalkoxylate, based on the total weight of the relatively high molecular weight sulfonates, is at least 30% by weight; and (iii) the weight ratio of liquid or low melting point polyalkoxylate to relatively high molecular weight sulfonate is at most 3:1. The invention also relates to processes for their preparation and the use of the plant protection compositions for the treatment of plants and their habitat as well as corresponding processes, and also spray mixtures comprising such a plant protection composition (see abstract). Solid plant protection compositions, in particular those based on dust-free solid granules, offer considerable advantages in comparison with liquid plant protection compositions, which affects use, storage, transportation, stability and waste disposal of packaging materials. However, the low melting point of the abovementioned alkoxylates, which leads to problems on incorporation in solid plant protection compositions, is frequently disadvantageous. Thus, conventional solid plant protection compositions can only include small amounts of liquid, oily or low melting point additives, such as those represented by the alkoxylates, since otherwise agglutination and aggregation of the granules occur. Typically, less than 15% by weight merely of such additives can be added without harming the storage stability (paragraph 12). An object of the present invention is accordingly a solid plant protection composition comprising a plant protection active agent which comprises:
a) liquid or low melting point polyalkoxylate; and b) a carrier based on relatively high molecular weight sulfonate, wherein (paragraph 24) (i) the weight ratio of liquid or low melting point polyalkoxylate to plant protection active agent is at least 1:2; (paragraph 25) (ii) the proportion of liquid or low melting point polyalkoxylate, based on the total weight of the relatively high molecular weight sulfonate, is at least 30% by weight; (paragraph 26) and (iii) the weight ratio of liquid or low melting point polyalkoxylate to relatively high molecular weight sulfonate is at most 3:1 (paragraph 27). An additional embodiment of relatively high molecular weight sulfonates provides copolymers CP synthesized from ethylenically unsaturated monomers M, the monomers M constituting the copolymer CP comprising ) at least one monoethylenically unsaturated monomer M1 exhibiting at least one sulfonic acid group, and (paragraph 139) ) at least one neutral monoethylenically unsaturated monomer M2. The copolymers CP are generally "random copolymers", i.e. the monomers M1 and M2 are randomly distributed along the polymer chain. In principle, alternating copolymers CP and block copolymers CP are also suitable. The monomers M constituting the copolymer CP comprise according to the invention at least one monoethylenically unsaturated monomer M1 exhibiting at least one sulfonic acid group. The proportion of the monomers M1 to the monomers M in this context generally amounts to from 1 to 90% by weight, frequently from 1 to 80% by weight, in particular from 2 to 70% by weight and especially from 5 to 60% by weight, based on the total amount of monomers M. In this context, all monoethylenically unsaturated monomers exhibiting at least one sulfonic acid group are suitable in principle as monomers M1. The monomers M1 can exist both in their acid form and in the salt form. The parts by weight given are based in this context on the acid form (paragraphs 141-144).
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Examples of monomers M1 of the general formula (V) are 2-acrylamido-2-methylpropanesulfonic acid, 2-methacrylamido-2-methylpropanesulfonic acid, 2-acrylamidoethanesulfonic acid, 2-methacrylamidoethanesulfonic acid, 2-acryloyloxyethanesulfonic acid, 2-methacryloyloxyethanesulfonic acid, 3-acryloyloxypropanesulfonic acid and 2-methacryloyloxypropanesulfonic acid (paragraph 151). In addition to the monomers M1, the monomers M constituting the copolymer CP comprise at least one neutral monoethylenically unsaturated monomer M2. "Neutral" means that the monomers M2 possess no functional group which reacts as an acid or base under aqueous conditions or is present in ionic form. The total amount of the monomers M2 generally comes to from 10 to 99% by weight, frequently from 20 to 99% by weight, in particular from 30 to 98% by weight and especially from 40 to 95% by weight, based on the total weight of the monomers M (paragraph 152). Examples of monomers M2 are those with limited solubility in water, e.g. a solubility in water of less than 50 g/l and in particular of less than 30 g/l (at 20.degree. C. and 1013 mbar), and those with an elevated solubility in water, e.g. a solubility in water .gtoreq.50 g/l, in particular .gtoreq.80 g/l (at 20.degree. C. and 1013 mbar). Monomers with limited solubility in water are also described subsequently as monomers M2a. Monomers with elevated solubility in water are also described subsequently as monomers M2b (paragraph 153). The monomers M2a are preferably chosen from vinylaromatic monomers, esters of acrylic acid with C.sub.2-C.sub.10-alkanols, such as ethyl acrylate, n-butyl acrylate, 2-butyl acrylate, isobutyl acrylate, tert-butyl acrylate or 2-ethylhexyl acrylate, esters of acrylic acid with C.sub.4-C.sub.10-cycloalkanols, such as cyclohexyl acrylate, esters of acrylic acid with phenyl-C.sub.1-C.sub.4-alkanols, such as benzyl acrylate, 2-phenylethyl acrylate and 1-phenyl-ethyl acrylate, esters of acrylic acid with phenoxy-C.sub.1-C.sub.4-alkanols, such as 2-phenoxyethyl acrylate, esters of methacrylic acid with C.sub.1-C.sub.10-alkanols, in particular with C.sub.1-C.sub.6-alkanols, such as methyl methacrylate, ethyl methacrylate, n-butyl methacrylate, 2-butyl methacrylate, isobutyl methacrylate, tert-butyl methacrylate or 2-ethylhexyl methacrylate, esters of methacrylic acid with C.sub.4-C.sub.10-cycloalkanols, such as cyclohexyl methacrylate, esters of methacrylic acid with phenyl-C.sub.1-C.sub.4-alkanols, such as benzyl methacrylate, 2-phenylethyl methacrylate and 1-phenylethyl methacrylate, and esters of methacrylic acid with phenoxy-C.sub.1-C.sub.4-alkanols, such as 2-phenoxyethyl methacrylate. In a particularly preferred embodiment, the monomers M2a comprise up to at least 80%, based on the total amount of the monomers M2a, of and in particular exclusively esters of acrylic acid and/or of methacrylic acid with C.sub.1-C.sub.6-alkanols (paragraph 155). Preferably, the monomers M2 comprise at least one of the abovementioned monomers M2a exhibiting, at 20.degree. C. in water, a solubility of less than 50 g/l and in particular of less than 30 g/l. The proportion of the monomers M2a in the monomers M constituting the copolymer CP typically ranges from 10 to 99% by weight, frequently ranges from 20 to 99% by weight, in particular ranges from 30 to 98% by weight and especially ranges from 40 to 95% by weight, based on the total weight of the monomers M (paragraph 157). In a first preferred embodiment of the invention, the monomer M2a is sole or virtually sole monomer M2 and amounts to at least 95% by weight and in particular at least 99% by weight of the monomers M2 9paragraph 158). In a second preferred embodiment of the invention, the monomers M2 comprise, in addition to the monomer M2a, at least one monomer M2b exhibiting, at 20.degree. C. in water, a solubility of at least 50 g/l and in particular of at least 80 g/l. Correspondingly, the monomers M constituting the copolymer CP comprise, in addition to the monomer M1, both at least one of the abovementioned monomers M2a, in particular at least one of the monomers M2a mentioned as preferred, and at least one of the abovementioned monomers M2b, in particular at least one of the monomers M2b mentioned as preferred (paragraph 159). The total amount of the monomers M1+M2b will frequently not exceed 90% by weight, in particular 80% by weight and especially 70% by weight, based on the total amount of the monomers M, and ranges in particular from 10 to 90% by weight, in particular from 20 to 80% by weight and especially from 30 to 70% by weight, based on the total amount of the monomers M. Correspondingly, the monomers M2a frequently come to at least 10% by weight, in particular at least 20% by weight and especially at least 30% by weight, e.g. from 10 to 90% by weight, in particular from 20 to 80% by weight and especially from 30 to 70% by weight, based on the total amount of the monomers M (paragraph 160). In this second particularly preferred embodiment, the monomers M1 preferably come to from 1 to 80% by weight, in particular from 2 to 70% by weight and particularly preferably from 5 to 60% by weight, the monomers M2a preferably come to from 10 to 90% by weight, in particular from 20 to 80% by weight and particularly preferably from 30 to 70% by weight, and the monomers M2b preferably come to from 5 to 89% by weight, in particular from 10 to 78% by weight and particularly preferably from 20 to 65% by weight, based on the total amount of the monomers M. Particular preference is given among these to copolymers CP, the constituent monomers M of which comprise, as monomers M1, at least one monomer of the formula (V), as monomers M2a, at least one monomer chosen from esters of acrylic acid with C.sub.2-C.sub.10-alkanols and esters of methacrylic acid with C.sub.1-C.sub.10-alkanols and, as monomers M2b, at least one monomer chosen from hydroxy-C.sub.2-C.sub.4-alkyl esters of acrylic acid and of methacrylic acid (paragraph 161). In this context, it is particularly preferable for the plant protection composition to comprise at least 15% by weight, preferably at least 25% by weight and in particular at least 30% by weight of relatively high molecular weight sulfonate (paragraph 180). The following are suitable in particular as component (c): c1) surface-active auxiliaries; c2) suspension agents, antifoaming agents, retention agents, pH buffers, drift retardants and other auxiliaries for improving the handleability and/or physical properties of the composition; and c3) chelating agents (paragraph 200-203). The pesticide for use according to the invention is chosen in particular from fungicides (e1), herbicides (e2) and insecticides (e3) (paragraph 0256). Fungicides comprise, for example folpet or thiochlorfenphim etc. (paragraph 257). According to a particular embodiment of the invention, fungicides (e1) comprise: sulfonates, such as captafol, captan, dichlofluanid, folpet or tolylfluanid (paragraph 272). The proportion of the active agent component (e) in the total weight of the composition generally comes to more than 1% by weight, preferably more than 2% by weight and in particular more than 2.5% by weight. On the other hand, the proportion of the component (e) in the total weight of the composition generally comes to less than 50% by weight, preferably less than 40% by weight and in particular less than 35% by weight, based on the total weight of the composition (paragraph 337). In a particular embodiment of the invention, the composition is a particulate solid, in particular a granule or powder. In this context, it is particularly preferable for the granule to be coarse-grained (paragraphs 340-341). The copolymers CP according to the invention are in some cases known from PCT/EP04/011797 or can be prepared according to conventional methods by radical polymerization of the monomers M. The polymerization can be carried out by free radical polymerization or by controlled radical polymerization processes. The polymerization using one or more initiators and can be carried out as solution polymerization, as emulsion polymerization, as suspension polymerization, as precipitation polymerization or as bulk polymerization. The polymerization can be carried out batchwise, semicontinuously or continuously (paragraph 169).
The examiner brings applicant’s attention to the whole concept of picking and choosing of the elected block copolymer monomers and the agricultural active agent and its amount from the broader teachings of Kober et al. The specific combination of features claimed are disclosed within the broad generic ranges taught by the reference but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). If applicants resort to argue the reference does not provide any motivation to select this specific combination of ingredients and their amounts, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients and their workable amounts and ratios from within a prior art disclosures, to arrive compositions “yielding no more than one would expect from such an arrangement.” In the case where the claimed range of amounts of monomers, block copolymer, and agricultural active "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). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Furthermore, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here the general conditions of a claim are teach in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955). An ordinary skilled artisan would have had a reasonable chance or expectation of success in producing the instant invention by following the teachings of Kober et al. because Kober et al. teach all of the claimed elements of the instant invention as described above.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 07 April 2026 have been fully considered but they are not persuasive.
Applicant argues Fig. 3B compares an embodiment of the claimed invention with the Kober stated preferred embodiment. Kober at [0110] stated "According to a preferred embodiment of the invention, lignosulfonates are used." But a lignosulfonate polymer used in the comparative examples shown in the specification, namely Borrespere (Fig. 3B), was far inferior to the block copolymers tested and encompassed in the claims. See the results of PolyAgroA2 - a block copolymer exemplifying the claims – versus Borrespere on suspensions tests in Fig. 3B. Dramatically different results are visually represented, with the lignosulfonate polymer clearly inadequate compared to the PolyAgroA2.
The above assertions are not found persuasive because a stated preference for one species (lignosulfonates) within a disclosed genus does not constitute a teaching away from other members of the genus or from the overall combination of polyalkoxylate + high-molecular weight sulfonate carrier. Teaching away requires that the reference criticize, discredit, or otherwise discourage the claimed solution. Kober does not discourage the use of other sulfonates or of polyalkoxylates (including block copolymers) in the recited solid compositions; it simply identifies lignosulfonates as preferred. The existence of a preferred embodiment therefore does not negate the broader teaching that renders the claimed subject matter obvious. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994 ).
Furthermore, even assuming, arguendo, that the data in Fig. 3B demonstrate superior performance certain block copolymers relative to Borresperse lignosulfonate, the showing is insufficient to rebut the prima facie case of obviousness. The examiner maintains that unexpected result must be commensurate in scope with the claims as a whole. The claims are not limited to the specific block copolymers or the precise formulation conditions tested in Figure 3B. Where the claims encompass a genus broader than the tested embodiments, evidence of unexpected results limited to a few species does not establish non-obviousness of the entire claimed genus. Applicant has not shown that the alleged superiority holds across the full scope of the claims (including all recited block copolymers, concentrations ranges, active ingredients, and formulation types). Nor Applicant has established a pattern that can be extrapolated to the entire scope of the claim. Moreover, the comparison must be against the closest prior art. Kober already teaches the combination of polyaloxylates with high molecular weight sulfonates (including lignosulfonates) in solid crop protection compositions. A showing that one particular claimed polymer outperforms one commercial lignosulfonate does not demonstrate that the claimed subject matter as a whole would have been unexpected in view of Kober’s broader disclosure. It should be noted that Kober provides an explicit reason to combine a polyalkoxylate (component a) with a high molecular weight sulfonate carrier (component b) in order to obtain stable solid (especially granular) plant protection compositions that can accommodate relatively high loadings of liquid or low-melting polyalkoxylates without agglomeration. A person of ordinary skill in the art would have been motivated to select or optimize the polyalkoxylate component (including known block copolymers of the type claimed) within the framework taught by Kober, with a reasonable expectation of success in obtaining functional solid compositions. The fact that Applicant later identified particular copolymers that perform better than one commercial lignosulfonate does not negate the motivation already present in the prior art or the predictability of the overall combination.
Kober clearly teach in its disclosure Applicant’s elected block copolymer. Indeed it would have been prima facie obvious to a person of ordinary skill in the art at the time of the instant invention was filed to produce the instant invention by following the teachings of Kober et al. because Kober et al. teach all of the elements of the claimed invention in its generic teachings. Kober et al. teach a solid plant protection compositions comprising: a) liquid or low melting point polyalkoxylate; and b) a carrier based on relatively high molecular weight sulfonate, wherein (i) the weight ratio of liquid or low melting point polyalkoxylate to plant protection active agent is at least 1:2; (ii) the proportion of liquid or low melting point polyalkoxylate, based on the total weight of the relatively high molecular weight sulfonates, is at least 30% by weight; and (iii) the weight ratio of liquid or low melting point polyalkoxylate to relatively high molecular weight sulfonate is at most 3:1. The invention also relates to processes for their preparation and the use of the plant protection compositions for the treatment of plants and their habitat as well as corresponding processes, and also spray mixtures comprising such a plant protection composition (see abstract). Solid plant protection compositions, in particular those based on dust-free solid granules, offer considerable advantages in comparison with liquid plant protection compositions, which affects use, storage, transportation, stability and waste disposal of packaging materials. However, the low melting point of the abovementioned alkoxylates, which leads to problems on incorporation in solid plant protection compositions, is frequently disadvantageous. Thus, conventional solid plant protection compositions can only include small amounts of liquid, oily or low melting point additives, such as those represented by the alkoxylates, since otherwise agglutination and aggregation of the granules occur. Typically, less than 15% by weight merely of such additives can be added without harming the storage stability (paragraph 12). An object of the present invention is accordingly a solid plant protection composition comprising a plant protection active agent which comprises:
a) liquid or low melting point polyalkoxylate; and b) a carrier based on relatively high molecular weight sulfonate, wherein (paragraph 24) (i) the weight ratio of liquid or low melting point polyalkoxylate to plant protection active agent is at least 1:2; (paragraph 25) (ii) the proportion of liquid or low melting point polyalkoxylate, based on the total weight of the relatively high molecular weight sulfonate, is at least 30% by weight; (paragraph 26) and (iii) the weight ratio of liquid or low melting point polyalkoxylate to relatively high molecular weight sulfonate is at most 3:1 (paragraph 27). An additional embodiment of relatively high molecular weight sulfonates provides copolymers CP synthesized from ethylenically unsaturated monomers M, the monomers M constituting the copolymer CP comprising ) at least one monoethylenically unsaturated monomer M1 exhibiting at least one sulfonic acid group, and (paragraph 139) ) at least one neutral monoethylenically unsaturated monomer M2. The copolymers CP are generally "random copolymers", i.e. the monomers M1 and M2 are randomly distributed along the polymer chain. In principle, alternating copolymers CP and block copolymers CP are also suitable. The monomers M constituting the copolymer CP comprise according to the invention at least one monoethylenically unsaturated monomer M1 exhibiting at least one sulfonic acid group. The proportion of the monomers M1 to the monomers M in this context generally amounts to from 1 to 90% by weight, frequently from 1 to 80% by weight, in particular from 2 to 70% by weight and especially from 5 to 60% by weight, based on the total amount of monomers M. In this context, all monoethylenically unsaturated monomers exhibiting at least one sulfonic acid group are suitable in principle as monomers M1. The monomers M1 can exist both in their acid form and in the salt form. The parts by weight given are based in this context on the acid form (paragraphs 141-144).
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Examples of monomers M1 of the general formula (V) are 2-acrylamido-2-methylpropanesulfonic acid, 2-methacrylamido-2-methylpropanesulfonic acid, 2-acrylamidoethanesulfonic acid, 2-methacrylamidoethanesulfonic acid, 2-acryloyloxyethanesulfonic acid, 2-methacryloyloxyethanesulfonic acid, 3-acryloyloxypropanesulfonic acid and 2-methacryloyloxypropanesulfonic acid (paragraph 151). In addition to the monomers M1, the monomers M constituting the copolymer CP comprise at least one neutral monoethylenically unsaturated monomer M2. "Neutral" means that the monomers M2 possess no functional group which reacts as an acid or base under aqueous conditions or is present in ionic form. The total amount of the monomers M2 generally comes to from 10 to 99% by weight, frequently from 20 to 99% by weight, in particular from 30 to 98% by weight and especially from 40 to 95% by weight, based on the total weight of the monomers M (paragraph 152). Examples of monomers M2 are those with limited solubility in water, e.g. a solubility in water of less than 50 g/l and in particular of less than 30 g/l (at 20.degree. C. and 1013 mbar), and those with an elevated solubility in water, e.g. a solubility in water .gtoreq.50 g/l, in particular .gtoreq.80 g/l (at 20.degree. C. and 1013 mbar). Monomers with limited solubility in water are also described subsequently as monomers M2a. Monomers with elevated solubility in water are also described subsequently as monomers M2b (paragraph 153). The monomers M2a are preferably chosen from vinylaromatic monomers, esters of acrylic acid with C.sub.2-C.sub.10-alkanols, such as ethyl acrylate, n-butyl acrylate, 2-butyl acrylate, isobutyl acrylate, tert-butyl acrylate or 2-ethylhexyl acrylate, esters of acrylic acid with C.sub.4-C.sub.10-cycloalkanols, such as cyclohexyl acrylate, esters of acrylic acid with phenyl-C.sub.1-C.sub.4-alkanols, such as benzyl acrylate, 2-phenylethyl acrylate and 1-phenyl-ethyl acrylate, esters of acrylic acid with phenoxy-C.sub.1-C.sub.4-alkanols, such as 2-phenoxyethyl acrylate, esters of methacrylic acid with C.sub.1-C.sub.10-alkanols, in particular with C.sub.1-C.sub.6-alkanols, such as methyl methacrylate, ethyl methacrylate, n-butyl methacrylate, 2-butyl methacrylate, isobutyl methacrylate, tert-butyl methacrylate or 2-ethylhexyl methacrylate, esters of methacrylic acid with C.sub.4-C.sub.10-cycloalkanols, such as cyclohexyl methacrylate, esters of methacrylic acid with phenyl-C.sub.1-C.sub.4-alkanols, such as benzyl methacrylate, 2-phenylethyl methacrylate and 1-phenylethyl methacrylate, and esters of methacrylic acid with phenoxy-C.sub.1-C.sub.4-alkanols, such as 2-phenoxyethyl methacrylate. In a particularly preferred embodiment, the monomers M2a comprise up to at least 80%, based on the total amount of the monomers M2a, of and in particular exclusively esters of acrylic acid and/or of methacrylic acid with C.sub.1-C.sub.6-alkanols (paragraph 155). Preferably, the monomers M2 comprise at least one of the abovementioned monomers M2a exhibiting, at 20.degree. C. in water, a solubility of less than 50 g/l and in particular of less than 30 g/l. The proportion of the monomers M2a in the monomers M constituting the copolymer CP typically ranges from 10 to 99% by weight, frequently ranges from 20 to 99% by weight, in particular ranges from 30 to 98% by weight and especially ranges from 40 to 95% by weight, based on the total weight of the monomers M (paragraph 157). In a first preferred embodiment of the invention, the monomer M2a is sole or virtually sole monomer M2 and amounts to at least 95% by weight and in particular at least 99% by weight of the monomers M2 9paragraph 158). In a second preferred embodiment of the invention, the monomers M2 comprise, in addition to the monomer M2a, at least one monomer M2b exhibiting, at 20.degree. C. in water, a solubility of at least 50 g/l and in particular of at least 80 g/l. Correspondingly, the monomers M constituting the copolymer CP comprise, in addition to the monomer M1, both at least one of the abovementioned monomers M2a, in particular at least one of the monomers M2a mentioned as preferred, and at least one of the abovementioned monomers M2b, in particular at least one of the monomers M2b mentioned as preferred (paragraph 159). The total amount of the monomers M1+M2b will frequently not exceed 90% by weight, in particular 80% by weight and especially 70% by weight, based on the total amount of the monomers M, and ranges in particular from 10 to 90% by weight, in particular from 20 to 80% by weight and especially from 30 to 70% by weight, based on the total amount of the monomers M. Correspondingly, the monomers M2a frequently come to at least 10% by weight, in particular at least 20% by weight and especially at least 30% by weight, e.g. from 10 to 90% by weight, in particular from 20 to 80% by weight and especially from 30 to 70% by weight, based on the total amount of the monomers M (paragraph 160). In this second particularly preferred embodiment, the monomers M1 preferably come to from 1 to 80% by weight, in particular from 2 to 70% by weight and particularly preferably from 5 to 60% by weight, the monomers M2a preferably come to from 10 to 90% by weight, in particular from 20 to 80% by weight and particularly preferably from 30 to 70% by weight, and the monomers M2b preferably come to from 5 to 89% by weight, in particular from 10 to 78% by weight and particularly preferably from 20 to 65% by weight, based on the total amount of the monomers M. Particular preference is given among these to copolymers CP, the constituent monomers M of which comprise, as monomers M1, at least one monomer of the formula (V), as monomers M2a, at least one monomer chosen from esters of acrylic acid with C.sub.2-C.sub.10-alkanols and esters of methacrylic acid with C.sub.1-C.sub.10-alkanols and, as monomers M2b, at least one monomer chosen from hydroxy-C.sub.2-C.sub.4-alkyl esters of acrylic acid and of methacrylic acid (paragraph 161). In this context, it is particularly preferable for the plant protection composition to comprise at least 15% by weight, preferably at least 25% by weight and in particular at least 30% by weight of relatively high molecular weight sulfonate (paragraph 180). The following are suitable in particular as component (c): c1) surface-active auxiliaries; c2) suspension agents, antifoaming agents, retention agents, pH buffers, drift retardants and other auxiliaries for improving the handleability and/or physical properties of the composition; and c3) chelating agents (paragraph 200-203). The pesticide for use according to the invention is chosen in particular from fungicides (e1), herbicides (e2) and insecticides (e3) (paragraph 0256). Fungicides comprise, for example folpet or thiochlorfenphim etc. (paragraph 257). According to a particular embodiment of the invention, fungicides (e1) comprise: sulfonates, such as captafol, captan, dichlofluanid, folpet or tolylfluanid (paragraph 272). The proportion of the active agent component (e) in the total weight of the composition generally comes to more than 1% by weight, preferably more than 2% by weight and in particular more than 2.5% by weight. On the other hand, the proportion of the component (e) in the total weight of the composition generally comes to less than 50% by weight, preferably less than 40% by weight and in particular less than 35% by weight, based on the total weight of the composition (paragraph 337). In a particular embodiment of the invention, the composition is a particulate solid, in particular a granule or powder. In this context, it is particularly preferable for the granule to be coarse-grained (paragraphs 340-341). The copolymers CP according to the invention are in some cases known from PCT/EP04/011797 or can be prepared according to conventional methods by radical polymerization of the monomers M. The polymerization can be carried out by free radical polymerization or by controlled radical polymerization processes. The polymerization using one or more initiators and can be carried out as solution polymerization, as emulsion polymerization, as suspension polymerization, as precipitation polymerization or as bulk polymerization. The polymerization can be carried out batchwise, semicontinuously or continuously (paragraph 169).
Applicant further argues as stated in the MPEP 2164.02 (III), "it may suffice to give an example (or a few examples) if the specification also discloses 'some general quality running through' the class that gives it 'a peculiar fitness for the particular purpose Amgen Inc. et al. V. Sanofi et al., 598 U.S. 594, 611, 2023 USPQ2d 602 (2023) (citing Incandescent Lamp, 159 U.S., at 475, 16 S. Ct. 75, 40 L. Ed. 221, 1895 Dec. Comm'r Pat. 675). Further, the MPEP states, "Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103." MPEP 716.01(a) (emphasis added). Applicant also reiterated the arguments made in the declaration asserting how the results are unexpected.
The above assertions are not found persuasive the cited MPEP 2164.02(III) concerns the enablement requirement of 35 USC 112(a). It discusses when representative examples, together with a disclosed general quality running through a claimed genus, may be sufficient to enable a person of ordinary skill to make and use the full scope of the claimed genus without undue experimentation (citing Amgen Inc. et al. V. Sanofi et al., 598 U.S. 594, 611, 2023 USPQ2d 602 (2023) (citing Incandescent Lamp, 159 U.S., at 475, 16 S. Ct. 75, 40 L. Ed. 221, 1895 Dec. Comm'r Pat. 675). The examiner indicates that the standard has no directapplication to the evaluation of evidence offered to rebut a prima facie case of obviousness under 35 USC 103. The requirement for unexpected results are set forth in PMEP 716.02 et seq., and in particular MPEP 716.029d), which requires that any showing of unexpected results be comeensurate in scope with the claims. The enablement principles of 2164.02(III) do not relax or displace the commensurate in scope requirement applicable to secondary considerations. Assuming, solely for the sake of argument, that the language of MPEP 2164.02(III) could be analogized to the present situation, Applicant still fails to satisfy it. Applicant has not pointed to any specific disclosure in the specification of a “general quality running through the class” of claimed block copolymers that (a) is actually disclosed, (b) runs through the entire claimed genus, and (c) accounts for the alleged superior performance relative to lignosulfonates (or other higher molecular weight sulfonates taught by Kober). A conclusory assertion that such a quality exists is insufficient. Without identification of the quality and a showing that it is both disclosed and applicable across the claim scope, the limited examples in Figure 3B cannot be treated as representative of the entire claimed genus for purposes of establishing unexpected results. Furthermore, the examiner indicates that the examiner indeed considered the declaration provided in the previous response and found the declaration not persuasive for substantially similar reasons stated above which are incorporated herein by reference. In the declaration although Applicant points to the data in the instantly claimed invention, the data is not persuasive to overcome the prior art rejection of record. The data in the instant specification compares the PolyAgro dispersant system according to the instantly claimed invention to several other dispersants—none of which are the polymers found in the cited prior art reference of Kober et al. Applicants should compare the instantly claimed invention to the closest prior art. Applicant relying upon comparative showing to rebut prima facie case must compare his claimed invention with closest prior art In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961). Additionally, the tested PolyAgroA2 dispersant is not commensurate in scope with the instantly claimed invention. The comparison data shown in figures 1-5 of the instant specification appears to select a single PolyAgro dispersant polymer. However, the claim limitation regarding the dispersant system is broader than a single particular polyelectrolyte layer-forming block copolymer. Limitation (ii) of claim 1 merely specifies that the polyelectrolyte layer-forming block copolymer comprises (A) a hydrophobic anchoring moiety and (B) at least one hydrophilic charged stabilizing moiety comprising at least one charged monomer. The polyelectrolyte layer-forming block copolymer recited in the claim, therefore, is broader than the particular PolyAgro dispersant polymer used in the comparisons of the instant specification. Even the newly presented limitations a), b) and c) regarding the polyelectrolyte layer-forming are connected by the conjunction “and/or”. Furthermore, the molar ratio, molecular weights, weight ratio, and percentage of monomers specified in limitations a)-c) are ranges. A single exemplary dispersant polymer used for comparison cannot be extrapolated to the entire scope of polyelectrolyte layer-forming block copolymer recited in instantly claimed invention. Instant claim 23 contains additional limitations regarding the polyelectrolyte layer-forming block copolymer; however, limitations a)-f) are also connected by the conjunction “and/or”. Additionally, claim 23 limitation a) specifies either a linear block copolymer or a comb block copolymer. Claim 28 specifies selection hydrophobic monomer from three different groups of hydrophobic monomer derivatives and combinations thereof and ten additional hydrophobic monomers. Claim 29 does, however, specify the hydrophobic monomer is ethyl acrylate. Claim 33 only specifies the charged monomers are anionic monomers and claim 34 specifies the anionic monomers has a sulfonate group. Claim 35 does, however, specify at least one of the anionic monomers is 2-acrylamido-2-methylpropage sulphonate (AMPS). Claim 36 specifies selection of neutral hydrophilic monomer from four neutral hydrophilic monomer. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The examiner reminds Applicant that the evidence relied upon should establish "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). Additionally, the examiner reminds Applicant 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).
Obviousness Type Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 12, 27, 31, 37, and 63-68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of 1-9 and 12-16 of U.S. Patent No. 11,533,910. Although the claims at issue are not identical, they are not patentably distinct from each other because 910’ claims a substantially similar subject matter that is species of the currently claimed invention.
The difference between the instant application and the issued 910’ patent is applicant in the current application tried to broaden the scope of claim 1 of 910’ by reciting “wherein the at least one charged monomer is an anionic monomer”. In 910’ claim 1 recites “wherein the at least one charged monomer is an anionic monomer having a sulfonate group”. Independent claim 1 of 910’ anticipates instant claim 1. All the other dependent claims of the composition claims match between the instant application and the issued patent. Claim 3 of the instant application matches with claim 3 of 910’. Claim 12 of the instant application matches claim 3 of 910’. Claim 27 matches claim 4 of 910’. Claim 31 matches claim 5 of 910’. Claim 37 matches claim 9 of 910’. Claim 63-68 matches claim 6-8 and 12-16 of 910’.
Response to Arguments
Applicant requests that the non-statutory obviousness type double patenting rejection be held in abeyance until allowable claims have been identified.
The above assertions are not found persuasive because a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejections of record have been maintained as no action regarding these rejections has been taken by applicants at this time.
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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/TIGABU KASSA/ Primary Examiner, Art Unit 1619
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