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 .
Status of Claims
Amendment filed on 06/04/2026 is acknowledged.
Claims 1-30 and 33-61 remain cancelled. Claim 68 is now cancelled.
Claims 31-32, 64-67, and 69-71 are amended. Claims 72-74 are new.
Claims 31-32, 62-67, and 69-74 are pending and being examined on the merits herein.
Priority
This instant application 18021841, filed on 02/17/2023, is a 371 of PCT/US2021046572, filed on 08/18/2021, which claims benefit of 63223264, filed on 07/19/2021, and claims benefit of 63068264, filed on 08/20/2020.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 03/10/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 06/04/2026.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 31-32, 62-67, 69 and 72 are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al. (CA2754931 or WO2010093970, 08/19/2010, in record of 03/10/2026).
Becher throughout the reference directs to methods of making microcapsules comprising acetamide herbicides for weed control (e.g., Abstract).
Regarding instant claim 31:
A method of making a microcapsule, wherein the microcapsule is a polyurea core-shell microcapsule, comprising the steps of:
Becher describes a method of making a microcapsule encapsulating acetamide herbicides via a polyurea core-shell microcapsule (e.g., Claim 132) in great detail (e.g., Pg. 32, 2nd-4th paragraph -Pg. 60 top).
(a) preparing a liquid mixture by dissolving diflufenican, and optionally a further herbicide, in a mixture comprising acetamide herbicide(s), and an organic non-polar solvent or mixture of organic non-polar solvents at a temperature in the range of from about 50 to 75 °C, wherein the organic non-polar solvent or mixture of organic non-polar solvents comprises one or more aromatic hydrocarbons, one or more fatty acid dimethylamides, or a mixture thereof.
Becher teaches preparing the water-immiscible core material liquid solution, as oil phase or internal phase (Pg. 53 top), comprising acetamide herbicides (e.g., Claim 132), e.g., acetochlor (e.g., Pg.171, Claim 65), diflufenican (Pg. 173, Claim 77), metribuzin (e.g., Pg. 172, Claim 74), and others (e.g., Claims 70-78). Becher specifies that the core material can comprise a diluent to change the solubility parameter characteristics of the core material to increase or decrease the release rate of the active from the microcapsule (Pg. 51 bottom -Pg. 52 top), with exemplary diluents including alkyl-substituted biphenyl compounds (containing benzene rings corresponding to aromatic hydrocarbons), paraffin oil, mineral oil, aliphatic fluids or oils, aromatic fluids or oils, citrate esters, plasticizing fluids or oils (e.g., Pg. 52, 2nd paragraph), which are known as organic non-polar solvents in the field. Preferably, the oil phase liquid mixture of herbicides is prepared by melting or dissolving the herbicide core materials at temperatures of less than about 65 ° C, typically from about 25 C to about 65 C, preferably from about 40 C to about 60 C (e.g., Pg. 49, bottom paragraph; Pg. 57, 2nd-3rd paragraphs) (temperature range overlapping with from about 50 to 75 C), prior to addition of the polyisocyanate reactant (Pg. 57, 2nd paragraph; Claim 132).
(b) adding a polyisocyanate component, into the liquid mixture of step (a),
Becher teaches adding the isocyanate reactant or polyisocyanate to the herbicide core materials after the herbicide or other active ingredients is melted or dissolved at heated temperature (e.g., Pg. 57, 2nd paragraph and bottom line; Claim 132).
(c) preparing an emulsifier-containing aqueous solution,
Becher teaches preparing an emulsifying-agent containing aqueous solution, as external or aqueous phase (Pg. 53, 3rd paragraph), “the continuous aqueous phase to which an emulsifying agent has been added (e.g., previously dissolved therein). The emulsifying agent is selected …”. In Becher example 1 (Pg. 79-80) the amount of emulsifying agent Sokalan CP9 (maleic acid-olefin copolymer at 25% solution, Pg. 75, Table) is at about 1.5% in formulations 5291 and 5297 as calculated by weight of emulsifier/formulation total weight= 25% * 23.0)/(278.2+0.45+81.1+23.0+1.64)*100%, or by (25%*46.63)/ (556.32+0.93+162.27 +46.63+3.23)*100%.
(d) heating the emulsifier-containing aqueous solution of step (c) to a temperature in the
range of from about 50 to 75 °C.
Becher teaches that the emulsifying-agent containing external phase is typically heated from about 25 C to about 65 C, preferably from about 40 C to about 60 C (e.g., Pg. 56 bottom-Pg. 57, top), overlapping with the instantly claimed temperature range.
(e) adding the liquid mixture resulting from step (b) into the heated emulsifier containing aqueous solution of step (d), under mixing.
Becher teaches that preferably adding the oil phase comprising the herbicides and polyisocyanates (corresponding to the liquid mixture resulting from step (b) above) to the continuous aqueous phase comprising an emulsifying agent, which is typically heated (e.g., Pg. 56 bottom-Pg. 57, top), to form the microcapsule oil-in-water emulsion (e.g., Pg. 53, 3rd paragraph), with the two phases typically under mixing (e.g., Pg. 55, 1st paragraph).
(f) adding a polyamine component, into the emulsion resulting from step (e) under agitation and keeping the emulsion at a temperature in the range of from about 50 to 75°C, for about 30 minutes to about 120 minutes.
Becher teaches that it is preferable to add the amine source after the preparation of the emulsion (Pg. 56, 2nd paragraph), wherein the amine source can be polyamine component triethylenetetramine TETA, being added to the emulsion with a blending and stirring (corresponding to “under agitation”), and the reaction vessel (keeping the emulsion) is maintained at about 50 C for approximately two hours (Example 1, Pg. 81, 1st paragraph), overlapping with instantly claimed temperature and time duration.
(g) cooling the mixture resulting from step (f) to a temperature in the range of 10 to 35 C.
Becher teaches that the capsule slurry formed after polyamine component being added to the emulsion and the reaction is essentially completed, is then allowed to cool to close to room temperature (which is normally about 20-25 C) (Pg. 81, 2nd-3rd paragraph), overlapping with instantly claimed temperature range.
Regarding the method steps in instantly claimed order of claim 31, Becher teaches the instantly claimed method in the right order, as Becher exemplifies in example 1 preparation of aqueous dispersions of acetochlor in polyurea core-shell microcapsule method (Pg. 79), comprising the steps of preparing the internal phase first mixing acetochlor with Norpar 15, which is n-pentadecane internal phase solvent (Pg. 75, Table) in the mixing vessels, then adds Mistaflex, which is a blend of polyisocyanates, at temperature of 50 C in an oven (Pg. 80, top); preparing external aqueous phases comprising Sokalan CP9 as emulsifier at heated temperature to 50 C in oven (Pg. 80, 3rd paragraph); and then the internal phase is added to the heated external phase comprising emulsifier under blending and mixing (Pg. 80, bottom); after that, polyamine TETA component is added to the emulsion under agitation and keeping the emulsion at about 50 C for approximately two hours (Pg. 79-81), and finally allowing the formulation to cool down to room temperature (Pg. 81, beneath Table).
Regarding instant claim 32, Becher teaches that ratio of amine molar equivalents contained in the polyamine component to isocyanate molar equivalents contained in the polyisocyanate component is at least 1.1:1 (e.g., Claim 52; Claim 132), or from 1.1:1 to 1.7:1, from 1.15:1 to 1. 7: 1, from 1.1: 1 to 1. 6: 1, from 1. 1: 1 to 1. 5: 1, from 1. 2: 1 to 1.5:1 or from 1.1:1 to 1.4:1 (Claim 133), overlapping with range from 1.01 : 1 to about 1.2 : 1 as recited in claim 32.
Regarding instant claims 62-63, Becher teaches that the core material in the oil phase or internal phase (Pg. 53 top) may comprise multiple compounds for release (e.g., an acetamide and one or more additives compatible therewith which act to enhance its bioefficacy on weeds and/or reduce crop injury) (Pg. 50, bottom), which can be acetamide herbicides, e.g., acetochlor (e.g., Pg.171, Claim 65), and co-herbicides including metribuzin (e.g., Pg. 172, Claim 74), diflufenican (Pg. 173, Claim 77), and many others (e.g., Claims 70-78).
Regarding instant claim 64, Becher teaches that aliphatic can be one of the groups linking isocyanate groups together (e.g., Pg. 35, top), resulting a wide variety of aliphatic diisocyanates, cycloaliphatic diisocyanates, corresponding to aliphatic polyisocyanate components, and aromatic diisocyanates, that can be employed in the invention (Pg. 35, 2nd paragraph).
Regarding instant claims 65 and 67, Becher teaches polyamine component can comprise substituted or unsubstituted polyethyleneamine, polypropyleneamine, diethylene triamine and triethylene tetramine (Pg. 44, 1st paragraph).
Regarding instant claim 66, Becher teaches that diflufenican as carotenoic biosynthesis inhibitor can be a co-herbicide (e.g., Claim 77) to be dissolved in the core material with acetamide herbicide in the mixture (e.g., Claims 68-69). Becher specifies the microencapsulated acetamide herbicide in the core comprises a water-insoluble organic solvent (e.g., Claim 9) as paraffinic hydrocarbon (e.g., Claim 11), which is an organic non-polar water-insoluble solvent.
Regarding instant claims 69 and 72, Becher specifies that the core material can comprise a diluent to change the solubility parameter characteristics of the core material to increase or decrease the release rate of the active from the microcapsule (Pg. 51 bottom -Pg. 52 top), with exemplary diluents including alkyl-substituted biphenyl compounds (containing benzene rings corresponding to aromatic hydrocarbons), paraffin oil, mineral oil, aliphatic fluids or oils, aromatic fluids or oils, citrate esters, plasticizing fluids or oils (e.g., Pg. 52, 2nd paragraph), corresponding to non-polar solvents known in the field. Becher indicates that the solvent can be a water-insoluble solvent such as a paraffinic hydrocarbon (e.g., Claims 9 and 11), suggesting that when a solvent is chosen, it can consist of one type of hydrocarbons, e.g., non-polar organic solvent aromatic hydrocarbons.
It would have been prima facie obvious for one with ordinary skills in art prior to filing date to implement the polyurea core-shell microencapsulation method to include diflufenican and other herbicides, with acetamide herbicide taught by Becher to arrive at current invention. Because Becher teaches the details of the method that can comprise multiple herbicides in the core material as oil phase such as diflufenican, metribuzin, acetochlor, especially Becher teaches that multiple active herbicides, e.g., an acetamide including acetochlor and one or more additives compatible therewith which can act to enhance its bioefficacy on weeds and/or reduce crop injury, it provides motivation for artisans in the field to implement same preparation method with multiple selected known herbicides for reasonable expectation of success. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the heating temperatures, time duration, and ingredient amounts overlap with those taught by prior art.
Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 70-74 are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al. (CA2754931 or WO2010093970, 08/19/2010, in record of 03/10/2026) as applied to Claims 31-32, 62-67, 69 and 72 above, in view of Hechavarria et al. (CA2716917, 09/17/2009, in record of 03/10/2026).
Becher throughout the reference teaches preparation method steps using polyurea core-shell microcapsule that can comprise adding multiple herbicides into heated acetamide core material of oil phase, e.g., diflufenican and metribuzin, with non-polar organic solvents, e.g., alkyl-substituted biphenyl compounds (aromatic hydrocarbons, corresponding to instant claim 72), mineral oil, aliphatic fluids or oils, aromatic fluids or oils, citrate esters, etc., followed by adding polyisocyanate component, prepare an emulsifier-containing aqueous solution with heating, and making the emulsion by adding the core material oil phase into the aqueous phase under mixing, then add polyamine component to the emulsion at heated temperature with agitation, stirring for about 2 hours, and eventually cool down the reaction completed microcapsule dispersion to room temperature, as discussed above in detail as applied to claims 31-32, 62-67, 69 and 72 above, and incorporated herein.
Becher does not explicitly teach the organic non-polar solvent aromatic hydrocarbons comprising one or more C10-C16 aromatic hydrocarbons as recited in instant claims 70 and 73, the organic non-polar solvent comprising one or more fatty acid dimethylamides selected from the group consisting of N, N-dimethyloctanamide, N,N-dimethyldecanamide and mixtures thereof as recited in instant claims 71 and 74,
Hechavarria throughout the reference teaches a method for production of microcapsules comprising active ingredients in the core enclosed within a shell (e.g., Claim 1; Abstract; Pg. 1, lines 19-27), wherein biocides can include herbicides (Pg. 5, item n), Line 22).
Herchavarria teaches that core material mixture in the form of a solution or suspension can preferably comprise aliphatic and aromatic hydrocarbon compounds, fatty acid esters and others (e.g., Claim 4; Pg. 3, bottom), while aromatic hydrocarbon compounds such as benzene (6 carbons), naphthalene (10 carbons), biphenyl (12 carbons), tetradecylbenzene (12 carbons), hexylnaphthalene (16 carbons), diisopropylnaphthalene (10 carbons), etc., (Pg. 4, item b), Lines 13-16), overlapping with C10-C16 aromatic hydrocarbon carbon numbers in instant claims 70 and 73. Being non-polar is the inherent property of the compounds which have been taught by prior art.
Herchavarria teaches that the organic solvent for the core material can be C4-C30-mono-, C4-C30-di- and C4-C30-polyesters, such as C,-C10-alkyl esters of C1-C20-carboxylic acids, such as propyl palmitate, methyl stearate or methyl palmitate, and also preferably their eutectic mixtures or methyl cinnamate and primary, secondary or tertiary C4-C3o-carboxamides, such as N-dimethyloctanamide and N-dimethyldecanamide (Pg. 4, item f), Lines 30-34), corresponding to instant claims 71 and 74.
It would be prima facie obvious for a person with ordinary skills of art prior to filing date to incorporate the teaching of Herchavarria into the method of Becher to arrive at current invention. Because both Herchavarria and Becher use core-shell microcapsule method to encapsulate active agricultural ingredients, e.g., herbicides, and both uses protective colloid as emulsifying agent (e.g., Pg. 54 top, Becher; Pg. 2, item a), Lines 33-35) for the oil-in-water emulsion, and Becher already teaches that aromatic hydrocarbons and organic non-polar solvents, e.g., aliphatic fluids and oils, are suitable for the oil phase core material, while Herchavarria teaches suitable solvents e.g., aromatic hydrocarbons containing carbon numbers from 6 to 16, N, N-dimethyloctanamide and N,N-dimethyldecanamide, it would have provided reasonable expectation of success for the preparation. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
A prima facie case of obviousness typically exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art". 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). For this instance, the carbon numbers taught by Herchavarria overlaps with the carbon numbers in instant claim.
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 31-32, 62-67 and 69-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 29, 36, 38, and 58 of copending Application No. 18818843 (hereafter, App’843) in view of Becher et al. (CA2754931 or WO2010093970, 08/19/2010, in record of 03/10/2026) and Herchavarria et. al. (CA2716917, 09/17/2009, in record of 03/10/2026).
App’843 claim 1 recites an aqueous herbicidal microcapsule concentrate composition comprising a polyurea shell wall encapsulating core material comprising an acetamide herbicide, and the composition comprises an emulsifier and solvent alkylene glycol (corresponding to instant claim 31). Claim 29 recites the composition of claim 1 is formed in polymerization medium by a polymerization reaction between a polyisocyanate component comprising a polyamine or mixture of polyamines to form the polyurea and the ratio of amine molar equivalents contained in the polyamine component to isocyanate molar equivalents contained in the polyisocyanate component is at least about 1.1 : 1 (corresponding to instant claim 31 (b) and claim 32). Claim 36 recites acetamide herbicide species selected from a group including acetochlor. Claim 38 recites that acetamide herbicide in the composition comprises acetochlor (corresponding to instant claim 63). Claim 58 recites that an application mixture is formed by mixing water with the aqueous herbicidal concentrate composition for controlling weeds in field.
App’843 does not recite the method steps preparing the microcapsule composition with diflufenican or emulsifier amount or organic non-polar solvents as recited in instant claim 31. It also does not recite the further herbicide metribuzin as recited in instant claim 62, or polyisocyanate comprises aliphatic polyisocyanate as recited in instant claim 64, or the polyamine component comprises or is selected from polyethyleneamine, polypropyleneamine, diethylene triamine, triethylenetetramine, and combinations as recited in instant claims 65 or 67, or diflufenican with acetamide herbicide in instant claim 66, or organic non-polar solvent species in instant claims 69-74.
Combined teachings of Becher and Herchavarria, teaches preparation method and use of microcapsule herbicide compositions, diflufenican and metribuzin, emulsifier amounts, aliphatic polyisocyanate, and polyamine species diethylene triamine and triethylenetetramine, as well as organic non-polar solvent species as discussed above in great detail and incorporated herein.
It would have been obvious to incorporate Becher and Herchavarria teaching of the microcapsule preparation method with the components in App’843 to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the emulsifier amount range, the reaction temperature ranges of the emulsion comprising polyamine and polyisocyanate, and the emulsion reaction duration time, carbon numbers of aromatic hydrocarbons overlap with those in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s remarks/arguments filed on 06/04/2026 have been fully considered.
35 U.S.C 112 Rejections
In light of claim amendments, the rejections have been overcome and accordingly they are withdrawn.
Art Rejections
Applicant asserts that Becher does not teach a method where the organic non-polar solvent or mixture of organic non-polar solvents comprising one or more aromatic hydrocarbons, one or more fatty acid dimethylamides, or a mixture thereof; meanwhile the instantly claimed invention directs to improvement dissolution of diflufenican in acetamide herbicide such as acetochlor such that the amount of diflufenican that is microencapsulated may be increased, which allows high loading of the acetamide herbicides and diflufenican in the core of the microcapsule.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., improvement dissolution of diflufenican, increased microencapsulation of diflufenican, or high loading of acetamide herbicides and diflufenican in the core of the microcapsule) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As presented in office action, Becher teaches organic non-polar solvents including aromatic hydrocarbon. Becher and Herchavarria in combined teaching teaches the organic non-polar solvents including fatty acid dimethylalmides. The most relevant paragraphs are copied below for reference:
Becher teaches preparing the water-immiscible core material liquid solution, as oil phase or internal phase (Pg. 53 top), comprising acetamide herbicides (e.g., Claim 132), e.g., acetochlor (e.g., Pg.171, Claim 65), diflufenican (Pg. 173, Claim 77), metribuzin (e.g., Pg. 172, Claim 74), and others (e.g., Claims 70-78). Becher specifies that the core material can comprise a diluent to change the solubility parameter characteristics of the core material to increase or decrease the release rate of the active from the microcapsule (Pg. 51 bottom -Pg. 52 top), with exemplary diluents including alkyl-substituted biphenyl compounds (containing benzene rings corresponding to aromatic hydrocarbons), paraffin oil, mineral oil, aliphatic fluids or oils, aromatic fluids or oils, citrate esters, plasticizing fluids or oils (e.g., Pg. 52, 2nd paragraph), which are known as organic non-polar solvents in the field. Preferably, the oil phase liquid mixture of herbicides is prepared by melting or dissolving the herbicide core materials at temperatures of less than about 65 ° C, typically from about 25 C to about 65 C, preferably from about 40 C to about 60 C (e.g., Pg. 49, bottom paragraph; Pg. 57, 2nd-3rd paragraphs) (temperature range overlapping with from about 50 to 75 C), prior to addition of the polyisocyanate reactant (Pg. 57, 2nd paragraph; Claim 132).
Herchavarria teaches that core material mixture in the form of a solution or suspension can preferably comprise aliphatic and aromatic hydrocarbon compounds, fatty acid esters and others (e.g., Claim 4; Pg. 3, bottom), while aromatic hydrocarbon compounds such as benzene (6 carbons), naphthalene (10 carbons), biphenyl (12 carbons), tetradecylbenzene (12 carbons), hexylnaphthalene (16 carbons), diisopropylnaphthalene (10 carbons), etc., (Pg. 4, item b), Lines 13-16), overlapping with C10-C16 aromatic hydrocarbon carbon numbers in instant claims 70 and 73. Being non-polar is the inherent property of the compounds which have been taught by prior art.
Herchavarria teaches that the organic solvent for the core material can be C4-C30-mono-, C4-C30-di- and C4-C30-polyesters, such as C,-C10-alkyl esters of C1-C20-carboxylic acids, such as propyl palmitate, methyl stearate or methyl palmitate, and also preferably their eutectic mixtures or methyl cinnamate and primary, secondary or tertiary C4-C3o-carboxamides, such as N-dimethyloctanamide and N-dimethyldecanamide (Pg. 4, item f), Lines 30-34), corresponding to instant claims 71 and 74.
Applicant asserts that Becher presents only one herbicide (acetochlor) working example, combining with another herbicide is not included in the working example, and non-polar solvent or mixture of organic non-polar solvents specifically as instantly claimed is not tested in the working examples of Becher.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "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). As presented in the office action, combined teachings of Becher and Herchavarria teaches the instantly claimed method using the specific organic non-polar solvents.
Applicant exhibits that the solubility of diflufenican in acetochlor shows improvement in organic solvents Aromatic 200 or Armid DM810 compared to other organic non-polar solvents such as paraffinic solvents, Conosol C-170, Norpar 15 and Isopar M, and their usefulness for production of microcapsules based on specification [0238]-[0241] and Table 4A. The teachings of Becher would not have led one skilled in the art to consider any advantages to be associated with use of such specific solvents as claimed method.
The specific features, e.g., diflufenican solubility or microcapsulation efficacy upon which applicant relies upon are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, as presented in office action, combined teaching of Becher and Herchavarria teaches the organic non-polar solvents in the encapsulation method comprising the composition of encapsulated acetochlor and diflufenican. The solubility and microcapsulation efficacy as the property of the composition and as outcome of the taught method, it would necessarily present in prior art. Whatever advantages or benefits of implementing such non-polar organic solvents would be capable of being achieved in prior art as well.
Applicant asserts that Hechavarria does not provide specific herbicidal active ingredients, and there is no reason from the teachings of Hechavarria to combine diflufenican and an acetamide herbicide as instantly claimed; the teachings of Hechavarria is not relevant to the claimed method combining diflufenican and an acetamide herbicide.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012).
In response to applicant's argument that Hechavarria does not provide relevant teaching, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, Becher and Herchavarria in combined teaching teaches the current invention, and Herchavarria is combined with Becher to teach the specific solvents, because Becher also teaches the combination of diflufenican with an acetamide herbicide. Each reference does not have to teach every element because it is obviousness type of rejection, not anticipated rejection. Moreover, as presented in office action, Hechavarria throughout the reference teaches a method for production of microcapsules comprising active ingredients in the core enclosed within a shell (e.g., Claim 1; Abstract; Pg. 1, lines 19-27), wherein biocides can include herbicides (Pg. 5, item n), Line 22). Therefore, Herchavarria is obviously relevant to teach the specific solvents suitable for herbicides, while Becher already teaches specific suitable herbicide combinations as instantly claimed.
In summary, the arguments are not persuasive, art rejections remain.
Nonstatutory Double Patenting
Applicant asserts that US Application No. 18/818843 does not describe the combination of diflufenican, and acetamide herbicide, and an organic non-polar solvent or mixture of organic non-polar solvents as defined in claim 31, and as discussed above, Becher and/or Hechavarria do not teach the claimed method, therefore, the rejection should be withdrawn.
Since nonstatutory double patenting rejection is an obviousness type rejection, the pending application 18/818843 is not required to recite all elements as instantly claimed; as discussed above, the arguments regarding art rejections over Becher and/or Hechavarria are not persuasive. Therefore, this double patenting rejection remain.
Applicant points out that double patenting rejection over Application No. 17/406007 is moot, because that application is abandoned.
Accordingly, the double patenting rejection over US Application No. 17/406007 (now abandoned) has been withdrawn.
Please refer to the entire office action as presented above as the complete response to the remarks/arguments.
Conclusion
No claim is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
Prosecution Insights