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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of group I, claims 1, 2, 5, 8, 11, 13, 16, 20, and 22 in the reply filed on 09/18/25 is acknowledged. Applicants elected species of A1—organic acid and A2-alcohol are acknowledged. Applicants then give examples of these, but do not appear to actually select a specific organic acid and alcohol. The examiner notes that claims 11 and 13 do not actually require A2 to be and ester it merely limits the organic esters if A2 is A2c, and the same can be said for claim 13 which respect to A2 and A2d. Thus, these claims will be examined since they do not actually require these non-elected components at this time. However, if applicant’s amend their claims to actually require A2 to be A2c or A2d respectively, via future amendments these claims will be withdrawn at that time as being drawn to a non-elected invention.
Claim Objections
Claims 5, 8, 16 are all objected to because of the following informalities: the claims recite “organic acids (A1a) and (A2a)” and/or “organic alcohols (A1b) and (A2b)” The word “and” in these limitations should be and/or because the presence of both A1a and A2a or both A1b and A2b are not necessarily required by the instant claim 1 because claim 1 uses selected from language as recited in the instant claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 11, 13, 16, and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP0095242 (‘242, from IDS) as evidenced by Abbott (https://www.stevenabbott.co.uk/practical-solubility/hsp-basics.php).
Regarding claims 1, 5, 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 and is a substituted C3 carboxylic acid, and tetrahydrofurfuryl alcohol (THFA) which both have different Hansen solubility parameters from each other. THFA (δd = 17.4, δp = 7.6, δh = 15.1) is an alcohol and which read on/anticipate applicant’s claimed elected A1 and A2, and which 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 anticipates the instant claim, and wherein the lactic acid is present in 35% and the THFA 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 and anticipates 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]).
‘242 teaches all limitations of the claims and thereby anticipates the claims.
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 2, 8, and 20 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), as applied to claims 1, 5, 11, 13, 16, and 22 above, and further in view of JP2011517461, and as evidenced by EP1276554.
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the composition of claims 1, 5, 11, 13, 16, and 22 as discussed above and incorporated herein.
Regarding claim 2, ‘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 A! 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).
Regarding claim 20, ‘242 teaches wherein their compositions can further comprise surfactants ([0019]; [0021]), and specifically exemplifies SYNPERONIC NPE 1800 in multiple examples which is used in amounts which read on the claimed range of 1.0 to 50.0% by weight based on the total weight of the composition ([0028-0029]). As evidenced by EP1276554 this surfactant is a known emulsifier ([0053]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claim 8, ‘242 does not teach wherein the polar solvent which is an alcohol is other than tetrahydrofurfuryl alcohol. 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 furfuryl alcohol which is related to the THFA of 242 and would exhibit similar polarity since THFA is merely the product of hydrogenation of furfuryl alcohol, and the instantly claimed aliphatic alcohols which reads on instant claim 8 and that both 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…flutriahol (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, having similar Hansen values to THFA and which read on the claimed ranges, because these are known effective Hansen values for formulating effective liquid flutriafol compositions, and because it was known to use aliphatic alcohols, furfuryl alcohol and other polar organic solvents (which would include the C1-C11 linear alcohols 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.
Conclusion
No claims are allowed.
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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/ERIN E HIRT/Primary Examiner, Art Unit 1616