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 11/10/2025 is acknowledged.
Claims 1-30 and 33-54 remain cancelled. Claims 55-61 which were withdrawn due to nonelected group are now cancelled.
Claims 31-32 and 65 are amended. Claims 66-71 are new.
Claims 31-32 and 62-71 are pending and being examined on 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Withdrawn Objections/Rejections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the previous Office action (mailed 07/14/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 11/10/2025.
Claim Objections
Claims 64-65 are objected to because of the following informalities:
Claim 64 recites “aliphatic polyosicyanate” in line 2. The word “polyosicyanate” has a typo because it is supposed to be polyisocyanate. Appropriate correction is required.
Claim 65 recites “the polyamine component comprises of one or more polyamine components”. The “components” in phrase “one or more polyamine components” is recommended to change to “compounds” so that it reads as “the polyamine component comprises of one or more polyamine compounds”.
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.
Claims 31-32 and 62-71 are 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 31 recites “from about 0.5 to about 5% by weight” without defining the calculation base. It is unclear whether the emulsifiers percentage calculation is based upon the total weight of aqueous solution, or the emulsifier stock solution, or the total weight of the final microcapsule formulation.
Claims 32 and 62-71 are rejected accordingly because they are directly or indirectly depending on claim 31 and they do not further clarify the issue addressed above in claim 31.
Claim 32 recites “from 1:01 to about 1.2:1” at the end of the claim. It is unclear whether it means “1:1” or “1:0.1” when a “0” is unusually added in front of the number “1” in the ratio “1:01”. If it us supposed to mean “from 1.01 : 1 to about 1.2 : 1”, the current language does not express clearly. The claim scope renders indefinite.
Claim 66 recites “of claim 31, wherein the mixture …”. There are at least three different “mixture” mentioned in claim 31, e.g., “a liquid mixture”, “a mixture comprising acetamide herbicide(s)”, “or mixture of organic non-polar solvents”, and theoretically, the final mixture of the composition. It is unclear which mixture is referred to, especially unclear whether it is from first or second mixtures: whether it is the first liquid mixture that can dissolve a further herbicide, or the second mixture comprising acetamide herbicide. If it is the first liquid mixture, then it is unclear whether the further herbicide has to be also acetamide herbicide; if it is meant to be the second mixture, it is unclear whether “a further herbicide” can be a different herbicide from acetamide herbicide or not. Further, the final mixture diflufenican being dissolved in claim 31 contains other agents, e.g., organic non-polar solvents, however, current claim 66 as a dependent claim of claim 31, the language “in which diflufenican is dissolved consists of acetamide herbicide(s)” excludes all other contents (e.g., excluding organic non-polar solvents) in the mixture. The claim metes and bounds are not definite.
Claims 68-71 each recites “comprises or consists”. The language of “comprises or consists”. “Comprises” refers to open-ended language and does not exclude additional unrecited elements, while “consists” refers to close-ended language and excludes any element, step or ingredient not specified in the claim. These two terms cannot be used together in the same sentence because the claim scope becomes unclear whether other components can be included or not. The current language of using both terms together renders every claim scope indefinite. See MPEP 2111.03 I & II.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 67 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 67 recites “ the polyamine component consists of one or more polyamine components”. Claim 67, as a dependent claim of claim 31, fails to further limit “a polyamine component” in claim 31, because “one or more polyamine components” in claim 67 are more than “a polyamine component” in claim 31. The phrase of “consists of one or more polyamine components” should be deleted to overcome the rejection, and the language reads as such “wherein the polyamine component is selected from the group consisting of substituted or …’.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
Claims 32 and 66-71 are interpreted as following.
Claim 32 is interpreted, in light of applicant remark filed on 11/10/2025, as the method of claim 31, wherein the ratio of amine molar equivalents contained in the polyamine component to isocyanate molar equivalents contained in the polyisocyanate component is from 1.01 : 1 to about 1.2 : 1.
Claim 66 is interpreted as the method of claim 31, diflufenican is dissolved in the mixture comprising organic non-polar solvent(s) and herbicides selected from the group consisting of acetamide herbicide(s).
Claim 67 is interpreted as the method of claim 31, the polyamine component is selected from the group consisting of substituted or unsubstituted polyethyleneamine, polypropyleneamine, diethylene triamine, triethylenetetramine (TETA), and combinations thereof.
Claim 68-71 are interpreted as “comprises of” open-ended language, not close-ended language of “consists of”, which means, the claim does not exclude other additional unrecited agents.
The term "about" in claims is interpreted as having its ordinary and customary meaning to a POSITA as "approximately" (see MPEP 2111.01 IV A), i.e. in general, within a range of plus or minus 10%, which interpretation is consistent with the instant specification usage of the term.
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 and 62-69 are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al. (CA2754931 or WO2010093970, 08/19/2010, PTO-892).
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.
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), in diluents such as, paraffin oil, mineral oil, plasticizing oils (e.g., Pg. 52, 2nd paragraph), which are non-polar solvents known 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, wherein the total amount of emulsifiers is in the range of from about 0.5 to about 5% by weight.
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 below: 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 in light of interpretation of 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, 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 that the mixture comprises a first co-herbicide and a second-herbicide, wherein the encapsulated acetamide herbicide can be acetochlor and others (e.g., Claims 131-132).
Regarding instant claims 68 and 69, 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.
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 and 71 are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al. (CA2754931 or WO2010093970, 08/19/2010, PTO-892) as applied to Claims 31-32 and 62-69 above, in view Hechavarria et al. (CA2716917, 09/17/2009, PTO-892).
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), 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 and 62-69 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 claim 70, the organic non-polar solvent comprising N, N-dimethyloctanamide, N,N-dimethyldecanamide and mixtures thereof as recited in instant claim 71.
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 claim 70. 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 claim 71.
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 and 62-71 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, PTO-892) and Herchavarria et. al. (CA2716917, 09/17/2009, PTO-892).
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 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 68-71.
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.
Claims 31-32 and 62-71 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 11, 19, 21-22, 24, 30-31, 33-34, 36-37, and 55 of copending Application No. 17406007 (Hereafter App’007) in view of Becher et al. (CA2754931 or WO2010093970, 08/19/2010, PTO-892) and Herchavarria et. al. (CA2716917, 09/17/2009, PTO-892).
App’007 claim 1 recites a microcapsule comprising a polymeric shell wall and a water-immiscible core material comprising an acetamide herbicide comprising acetochlor, diflufenican, and organic non-polar solvents (corresponding to instant claims 31, 63 and 66). Claim 11 recites one or more further herbicides comprising a photosystem inhibitor in the microcapsule. Claim 19 recites the organic non-polar solvent comprising aromatic hydrocarbons, fatty acid dimethylamides and mixtures thereof (corresponding to instant claims 68-69), or comprising N, N-dimethyloctanamide, N, N-dimethyldecanamide and mixtures thereof in claim 21 (corresponding to instant claim 71). Claim 22 recites total weight of organic non-polar solvent. Claim 24 recites shell wall comprising polymers selected from the group consisting of polyurea, polyurethane etc. (corresponding to polyurea shell in instant claim 31). Claim 30 recites the polymeric polyurea shell wall formed in a polymerization with polyisocyanate and polyamine components, wherein the ratio of amine molar equivalents of polyamine to isocyanate molar equivalents of polyisocyanate is from about 1.01:1 to about 1.3:1 (corresponding to components in instant claim 31 and ratio in claim 32). Claim 31 recites a method of making a microcapsule of claim 1, which represents the same method as recited in instant claim 31. Claim 33 and 34 recite the herbicidal composition comprises microcapsule and is in the form of a concentrate. Claims 36 and 37 recite that the herbicidal composition comprises an aqueous phase and multiple microcapsule are dispersed within. Claim 55 recites that the composition comprises an acetamide herbicide, diflufenican, and an organic non-polar solvent, and optionally metribuzin (corresponding to components in instant claims 31, 62 and 67-71).
App’007 does not recite aliphatic polyisocyanate as recited in instant claim 64, or polyamine species in instant claims 65 and 67, C10-C16 aromatic hydrocarbons as recited in instant claim 70.
Becher and Herchavarria teaches the method steps of making the microcapsule with details, aliphatic polyisocyanate and polyamine species, and aromatic hydrocarbons having carbon numbers from 10 to 16, as discussed in great detail above and incorporated herein.
It would have been obvious to incorporate specific components taught by Becher and Herchavarria into the method and composition of App’007 to arrive at current invention. Because all the methods/compositions of Becher, Herchavarria and App’007 share the method for same intended use, it would have provided reasonable expectation of success to select proper components from these references for reasonable expectation of success. This renders obviousness as combining prior art elements according to known methods to yield predictable results, see In Supreme Court KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 method is the same as in App’007, and aromatic hydrocarbon carbon numbers 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 and arguments filed 11/10/2025 have been fully considered.
Claim Objections
Applicant submitted amendments to address these informalities.
Previous claim objections regarding claims 32 and 64 are partially remained because some issues, e.g., typo in claim 64, is not fixed, and some new claim objections are raised due to amendments.
35 U.S.C. 112 Rejections
Applicant amended claims 31-32 and 62-65 to address previous rejections.
Most of the previous rejections are withdrawn, however, the previous rejection regarding claim 32 remains because the ratio “1:01” is not 1.01 as applicant shows in remark. This ratio “1 : 01” remains unfixed and still renders the claim scope unclear.
New 35 U.S.C. 112 rejections are presented above necessitated by applicant’s amendments.
Art Rejections
Applicant argued that rejections based on Urch miss some critical method elements.
Applicant’s arguments are moot because rejections have been made based on new grounds. Please refer to the entire office action presented above as a complete response to remarks and arguments.
Double Patenting
Applicant will address the provisional rejections if/when they remain the final rejections in the subject applications, including by possibly submitting Terminal Disclaimer.
The non-statutory provisional double patenting rejections remain, and are updated to current copending applications’ claims and amendments, as presented above in this office action.
Conclusion
No claim is allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616