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 Objections
Claim 1 is objected to because of the following informalities: The claim contains a period immediately before the newly added wherein clauses which should instead be a comma or semi-colon, as this is clearly a typo since the claim does not end where the period is found. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 is indefinite because it recites the composition according to any of the claims 1 to 12 because claims 2-10 and 12 have been canceled and as such the claim dependency is incorrect since a claim cannot depend from claims which are canceled as it makes it unclear if applicants intended to actually cancel those claims or not. The examiner is interpreting this claim to depend from claim 1 for the purposes of compact prosecution.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 11, 13, 16, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP0095242 (‘242, from IDS) as evidenced by Abbott (https://www.stevenabbott.co.uk/practical-solubility/hsp-basics.php) and further in view of JP2011517461.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 16, ‘242 teaches a composition comprising a solvent system, specifically a first component comprising lactic acid (δd = 17, δp = 8.3, δh = 28.4) which reads on the claimed/elected organic acid, specifically the now claimed D,L-lactic acid, and is a substituted C3 carboxylic acid; and a polar solvent, which is not specifically limited but they exemplify tetrahydrofurfuryl alcohol (THFA) which has a different Hansen solubility parameter from the lactic acid, and the composition further comprises compound A, which is flutriafol (a fungicide) wherein the solvent system is present in amounts of 95% and the fungicide was present in amounts of 5% which reads on the instant claim, and wherein the lactic acid is present in 35% and the alcohol/polar solvent up to 100%, i.e. 60%, which falls within the claimed molar ratios range with simple calculations by the examiner, and wherein the total amount of the solvent system and the biocide/fungicide is 100% by weight of the composition (See Example 1 (h)).
Regarding claims 11 and 13, these claims do not actually require the presence of the organic ester (A2c) and/or the organic ether (A2d) they merely further limit these components when they are present. Thus, the composition of ‘242 discussed above reads on these claims.
Regarding claim 22, ‘242 does not teach the viscosity of their composition however a viscosity of from 1 cp to 2000 cp at 25 C at atmospheric pressure, a 2000 cp liquid composition would be thicker than honey, and as ‘242 teaches their liquid compositions are useful for seed treatments they would inherently have a viscosity within this claimed range because in order to treat seeds and be able to use the seeds without them agglomerating into clumps the viscosity of the composition would fall within the claimed range (See entire document; claims; Example 1 (h); abstract; [0007-0008]).
Regarding the instant claims, ‘242 teaches that the invention composition may contain up to 30% by weight of the fungicidal compound or compounds which reads on the instantly claimed amount of greater than or equal to 15.0 to less than or equal to 50 wt% based on the total weight of the composition, and wherein the acid, e.g. the organic acid, which includes the claimed lactic acid is present in the formulation is not less than a molar equivalent with respect to the total molar amount of basic pesticides present and wherein the Hansen solubility parameters of the lactic acid of ‘242 read on those instantly claimed (δd = 17, δp = 8.3, δh = 28.4) and THFA (δd = 17.4, δp = 7.6, δh = 15.1) also read on those instantly claimed, and the weight ratio of A1 to A2 falls within the claimed molar ratio in their example (see entire document; [0021]; example 1 (h)). Further, as ‘242 teaches compositions which only comprise the fungicide, lactic acid and THFA, it would be obvious that when the fungicide/flutriafol is used in higher amounts that the solvent amounts would decrease accordingly. Further, it would have been obvious to one of ordinary skill in the art to optimize the amounts of the solvent system and fungicide biocide to fall within the claimed ranges because these ranges are broadly taught by ‘242 when they allow for the active to be present in amounts of up to 30 wt%, so that the entire composition is formed from the lactic acid, the THFA and flutriafol/compound A as claimed. Additionally, in the case where the claimed ranges and molar ratios of A1 to A2 because ‘242 teaches these ratios and teaches amounts which overlap those instantly claimed and it is known that for amounts which "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), and "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1, 11, 13, 16, and 22, ‘242 does not teach wherein their polar solvent, which is not particularly limited and which they disclose to include alcohols, is any of the now specifically claimed alcohols in amended claim 1. However, while naming preferred polar solvents ‘242 does not specifically teach away from other polar solvents being useable in their invention. However, this deficiency in the combined references is addressed by JP2011517461.
JP2011517461 teaches that it was known to use polar solvents to formulate fungicides and other pesticidal compositions with water and acids to form an aqueous formulation for spraying and seed dressing as in ‘242 and that these polar solvents include the claimed ethanol (δd = 15.8, δp = 8.8, δh = 19.4, isopropanol (δd = 15.8, δp = 6.1, δh = 16.4), etc. which are known as polar water-miscible solvents useful for formulating fungicides and other pesticides (See entire document; abstract; claims; paragraphs beginning: “A further objection of the present invention is that the polar…”, “A further object of the present invention is to provide at least one chemical substance…”, “A further objection of the present invention is to (A)…see specifically (H) which recites flutriafol”, “In one embodiment, the formulation comprises…flutriafol (should be flutriafol)…”).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have switched out the THFA for a claimed aliphatic alcohol solvent which read on the claimed Hansen solubility parameter ranges, because these are known effective Hansen values for formulating effective flutriafol compositions, and because it was known to use aliphatic alcohols, furfuryl alcohol and other polar organic solvents (which would include the claimed ethanol, isopropanol, etc. which are liquids at room temperature and therefore can function as solvents) to formulate flutriafol and other pesticides for effective delivery in liquid formulations. One of ordinary skill in the art would want to do this in order to provide additional effective flutriafol formulations for use in agricultural applications.
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 amendments to the claims have overcome the previous 102 rejections and claim objections.
Applicant’s amendments to the claims have prompted the new grounds of rejection under 103, and 112(b), and the new claim objections presented herein. As applicants arguments state that the combined prior art does not teach the newly amended claim scope. The examiner respectfully disagrees for the reasons discussed above as it would be obvious to replace the polar solvent, e.g. THFA of ‘242, with the claimed polar solvents which are expressly taught by JP2011517461 to be useful for formulating fungicides and other pesticidal compositions with water and acids to form an aqueous formulation for spraying and seed dressing as in ‘242. Thus, the combination of the prior art remains proper and still renders the compositions of the instant claims prima facie obvious at this time.
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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