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 11/03/2025 is acknowledged.
Claims 12-16 were withdrawn without traverse, and Claims 13-16 are now cancelled.
Claim 1 is amended. Claims 17-26 are new.
Claims 1-11 and 17-26 are pending and being examined on merits herein.
Priority
This instant application 18023204, filed on 02/24/2023, is a 371 of PCT/AU2021050981, filed on 08/26/2021, which claims foreign priority of Australia 2020903066, filed on 08/27/2020.
Withdrawn Rejections
Previous rejections under 35 U.S.C. 102 are withdrawn because applicant’s amendment has overcome these rejections.
New Rejections
The following is the new set of rejections necessitated by applicant’s amendment.
Claim Interpretation
Claim 1 is interpreted as a herbicide composition having an acidic pH, comprising water, a C6-C12 fatty acid in an amount ranging from about 1 wt% to about 60 wt% of the total amount of composition, an alcohol alkoxylate, a hydrophobic liquid, a pH sensitive hydrogel forming polymer, and fumed silica.
Claim 17 is interpreted as a herbicide composition having an acidic pH, comprising water; a C6-C12 fatty acid selected from caproic acid, enanthic acid, caprylic acid, nonanoic acid, capric acid, udecylic acid, lauric acid and sebacic acid; an alcohol alkoxylate; a hydrophobic liquid; a pH sensitive hydrogel forming polymer; and fumed silica.
Regarding “the pH of the composition does not promote hydrogel formation of the pH sensitive hydrogel forming polymer” in claims 1 and 17, it is interpreted as the property of pH sensitive hydrogel forming polymer or intended use of the pH of the composition, since it does not provide structural contribution to the composition subject matter.
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 17 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 17 recites “a C6-C12 fatty acid selected from …lauric acid and sebacic acid, an alcohol alkoxylate, a hydrophobic liquid, a pH sensitive hydrogel forming polymer, and fumed silica, …”. The language seems to include the alcohol alkoxylate, hydrophobic liquid etc. as part of the “fatty acid” Markush group. Reciting “fatty acid” component as the last ingredient (i.e. after the “fumed silica”) would make the claim subject matter clear and definitive.
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.
Claims 1-11 and 17-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US20120122688, 05/17/2012, IDS of 08/04/2023), in view of Parrish et al. (US20050170967, 08/04/2005), Kilian et al. (CN102098919, 06/15/2011, English copy uploaded, PTO-892) and Messerschmidt et al. (US8153561, 04/10/2012).
Wu throughout the reference teaches agricultural compositions comprising pesticide, e.g., water-insoluble pesticide (e.g., [0026]; [0031]; [0052]) which can be herbicide (e.g., [0048]).
Regarding instant claims 1 and 17, Wu discloses a herbicide composition, comprising 41.12% of water- insoluble fungicide (as hydrophobic liquid), 45.84% of water, 1.20% polyalkoxylated fatty acid ester (surfactant A), 0.4 wt% alcohol ethoxylate (surfactant C), 3.3 wt% vegetable oil (containing fatty acid), 1.2 wt% water-soluble polysaccharide polymer (nonderivatized guar), 0.16 wt% silicone antifoam agent (as another hydrophobic liquid), 0.08% suspending agent I such as xanthan gum and 0.30% suspending agent II such as bentonite clay ((Example 3, [0254], Table IV). Wu discloses alternative suspending agents including fumed silica ([0034], [0075], [0160-0163], [0173], [0241-242], [0248-0249]; Table I, III; and Claims 7- 8, 12, 15, 19, 24). Wu also teaches that nonionic surfactants such as alkoxylated fatty acids, e.g., poly(ethylene glycol)monostearates (having C18 stearic acid), are suitable for the composition (e.g., [0186]), and such surfactant can be in an amount typically from greater than 0%, or from about 2% to about 8% or to about 6% in the composition (e.g., [0209]), overlapping to fatty acid amount range from about 1 wt% to about 60 wt% in instant claim 1.
Wu specifies that suitable rheology modifier polymers are used to thicken aqueous compositions and typically fall within three general classes, that is, alkali swellable pH-responsive polymers, hydrogen bridging rheology modifiers (e.g., natural gum like guar), and hydrophobic associative thickeners in the composition (e.g., [0174]-[0176]). Wu indicates that pH responsive polymers that swell when placed in an alkali medium and include, homopolymers and copolymers comprising units derived from ethylenically unsaturated carboxylic acid monomers such as acrylic acid, methacrylic acid (e.g., [0175]) (corresponding to pH sensitive hydrogel forming polymer, as evidenced by instant specification Pg. 18, Lines 1-14). Wu teaches that the composition comprises water soluble polymers including polyacrylamide polymers as deposition aids, such as, e.g., drift control agents, anti-rebound agents, and/or spreader-stickers, in spray applied agricultural pesticide compositions (e.g., [0002]; Claim 3), which can be 2-hydroxy ethyl acrylate, diamino alkyl methacrylate or diamino alkyl methacrylamide, or methacrylamide (e.g., [0159]).
Regarding water in instant claims 2-5, 18-19, and 20-21, Wu indicates that the composition comprises greater than 0 to about 10% of an aqueous liquid medium comprising water (e.g., [0208]), overlapping with water amount ranging from about 0.1 wt% to about 10 wt% in instant claims 2, 4, 18, and 20. Wu exemplifies water amount in the compositions range from 45.84 % to 64.1% (Examples 1-8), overlapping with range from about 50 % to about 98% in instant claims 3, 5, 19 and 21.
Regarding alcohol alkoxylate in instant claims 4-5 and 20-21, Wu teaches alcohol alkoxylate ranges from 0.4% (Example 3, Table III) to 10% (as ethoxylated castor oil, surfactant E, Example 8, Table VIII) (overlapping with alcohol alkoxylate amount range from about 10 % to about 25 % in instant claims 4 and 20, or from about 0.5 % to about 10 % in instant claims 5 and 21).
Regarding fatty acid and hydrophobic liquid in instant claims 4-5 and 20-21, Wu also teaches that nonionic surfactants such as alkoxylated fatty acids, e.g., poly(ethylene glycol)monostearates (having C18 stearic acid), are suitable for the composition (e.g., [0186]), and such surfactant can be in an amount typically from greater than 0%, or from about 2% to about 8% or to about 6% in the composition (e.g., [0209]), or from greater than 0% to about 30% in the compositions (e.g., [0135]; [0213]), overlapping with fatty acid range from about 30 % to 60 % in instant claims 4 and 20, or about 1% to about 10% in instant claims 5 and 21. Wu teaches that in the composition comprising from greater than 0 to 10 %, or greater than or equal to about 30% of a water immiscible organic liquid (e.g., [0214-0215]) and from 0-70 % water insoluble pesticide (e.g., [0216]). As exemplified in example 6, Wu teaches vegetable oil in the composition ranging from 0.75 % (Example 5, Table VI ) to 67.7 % (Example 6, Table VII), overlapping with hydrophobic liquid amount from about 15 % to 30 % in instant claims 4 and 20, or about 0.1 % to about 10 % instant claims 5 and 21.
Regarding pH sensitive polymer in instant claims 4-5 and 20-21, Wu teaches that water soluble polymers, e.g., polyacrylamide polymer (Claims 24, 28, 32) (corresponding to pH sensitive polymer) amount can be from great than 0 to about 30% (e.g., [0211]; [0217]; Claim 23), corresponding to pH sensitive polymer from about 0.001% to about 0.01 % in instant claims 4 and 20, or 0.0002 % to about 0.001 % in instant claims 5 and 21.
Regarding fumed silica in instant claims 4-5 and 20-21, herbicide compositions example 2 includes 0.7 % fumed silica (Table III), corresponding to fumed silica amount from about 0.001 % to 0.01 % in instant claims 4 and 20, or from about 0.0003 % to about 0.001 % in instant claims 5 and 21.
Regarding instant claims 6 and 22, Wu exemplifies in example 3 a composition comprising insoluble fungicide (as hydrophobic liquid), 3.3 wt% vegetable/rapeseed oil, 45.84 wt% water, 0.16 wt% silicone antifoam agent (as another hydrophobic liquid), a surfactant/emulsifier blend comprising 0.4 wt% alcohol ethoxylate, suspending agents, 0.08 wt% xanthan gum (suspending agent I) and 0.30 wt% bentonite clay (suspending agent II) (Example 3, [0254], Table IV), wherein surfactant C, Rhodasurf 860/P, Rhodia Inc., is an iso-decyl (10 carbons) alcohol ethoxylate, within range of C6-C24 alcohol alkoxylate in instant claims 6 and 22.
Regarding instant claims 7 and 23, Wu discloses multiple surfactants including alkoxylated polyarylphenol (2.78 %) and ethoxylated alcohol (Rhodasurf 860/P, Rhodia Inc., 0.46%) in concentrated tebuconazole and copper oxychloride composition Example 4 (Table VI), of which mixture of C9-C11 and C16-C18 alcohol alkoxylate can coexist.
Wu does not explicitly teach the composition having an acidic pH and the fatty acid containing carbon numbers as C6-C12 as recited in instant claims 1 and 17. Wu does not teach the C6-C12 fatty acid is selected from caproic acid, enanthic acid, caprylic acid, nonanoic acid, capric acid, udecylic acid, lauric acid, and sebacic acid as recited in instant claims 8 and 17, or the fatty acid is nonanoic acid as recited in instant claims 9 and 24. Wu also does not teach the hydrophobic liquid comprises one or more terpenes selected from pinene, nerol, citral, menthol, limonene, careen, cineol, camphene, dipentene, terpinolene and combinations thereof as recited in instant claims 10 and 25, or the herbicide composition comprising acetic acid as recited in instant claims 11 and 26.
Parrish throughout the reference directs to herbicide compositions containing herbicide compounds, e.g., water-insoluble diphenyl ether type herbicides (e.g., [0004]), in acid form and further including an acidifying agent to achieve acidic composition (e.g., Abstract; [0002]; [0020]).
Parrish teaches that the composition can be microemulsions (e.g., [0042]; Claim 3) comprising water (e.g., [0043]; Claim 2), surfactants such as ethoxylated fatty acids/oils (hydrophobic liquid) (e.g., castor oil ethoxylate 10.0%, [0109]), alcohol ethoxylate (a species of alcohol alkoxylate) (e.g., [0045], [0049]; [0056]), silica (e.g., [0173]), thickeners as well known in the chemical and polymer arts including polyacrylic acids, e.g., commercially available example include Carbopol 910 polyacrylic acid polymer, as pH sensitive hydrogel forming polymer (evidenced by instant specification Pg. 18, Lines 1-14). Parrish specifies the herbicide composition having an acidic pH (e.g., below 7, 6, or 5, or below the pKa of a herbicide compound, or lower) (e.g., [0020]; Claim 6), which reads into instant herbicide composition having acidic pH in instant claims 1 and 17. Parrish indicates many suitable acidifying agents in the composition including acetic acid (e.g., [0012]), corresponding to instant claims 11 and 26.
Kilian throughout the reference teaches method for weed control in lawn comprising compound with formula (I) in combination with other active ingredients including herbicides (e.g., Abstract; [0104]), in composition that can be oil-in-water emulsions using an aqueous organic solvent and surfactants (e.g., [0301-0302]).
Kilian teaches fatty acids can be used as one or more herbicides in the composition, such as acetic acid (corresponding to instant claims 11 and 26), and fatty acids having C6-C12 carbons, including hexanoic acid, heptanoic acid, nonanoic acid, octanoic acid, decanoic acid and others, preferably nonanoic acid and decanoic acid (e.g., [0126]) (corresponding to C6-C12 fatty acid in instant claims 1, 8-9, 17 and 24).
Messerschmidt throughout the reference teaches making and using limonene-containing organic herbicide compositions for controlling or suppressing a plant by administering the organic composition to surfaces of the plant (e.g., Abstract).
Messerschmidt teaches the organic composition having pH greater than 5 comprising a herbicidally effective limonene component, an emulsifying agent, an oil, and wetting agents in an aqueous emulsion (e.g., Abstract). Messerschmidt exemplifies the composition with limonene, pine oil (containing terpenes), castor oil, nonylphenol ethoxylated, octylphenol ethoxylate, and water (Examples 8 & 9, Col. 25-26) (corresponding to instant claims 10 and 25).
It would have been prima facie obvious for one with ordinary skills in the art prior to filing date to incorporate the teaching of Parrish selecting acidic pH along with acetic acid for the composition into the herbicide composition disclosed by Wu to arrive at current invention. Because both Parrish and Wu share main ingredients for herbicide composition, and Parrish teaches that an acidic pH and a pH below the pKa of the herbicide compound is the most preferred, while Wu indicates that water soluble polymers such as pH sensitive polymers in the composition such as polyacrylamide polymers, derived from ethylenically unsaturated carboxylic acid monomers such as acrylic acid, methacrylic acid, swell when placed in an alkali medium, that would have motivated artisans in the field to choose acidic pH to maintain the water soluble polymer in soluble form, for obtaining the improved desirable herbicide composition, showing advantages in processing, application, non-volatile, or efficacy, as indicated by Parrish (e.g., [0006]; [0104]). 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). In light of claim interpretation as presented above, the pH of the composition does not promote the pH-sensitive polymer to form hydrogel is a property necessarily present when the pH-sensitive polymer is included in the herbicide composition having an acidic pH, or when the acidic herbicide composition intended use is present, both of which have been taught by prior art.
It would have been obvious for one with ordinary skills of the art prior to filing date to incorporate the specific fatty acid and limonene taught by Kilian and Messerschmidt into the herbicide composition taught by Wu and Parrish to arrive at current invention. Because Kilian and Messerschmidt teach additional herbicidal activities of the C6-C12 fatty acid species and hydrophobic liquid limonene or pine oil respectively, while they belong to general ingredients of the composition taught by Wu and Parrish, combining these teachings flow naturally in order to maximize the herbicidal effect of the composition. Moreover, Messerschmidt indicates the composition is organic herbicide composition, integrating organic materials would be obviously advantageous for safety concerns on consumable vegetables and crops. Implementing organic ingredient would have provided reasonable expectation of success. 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 amount ranges of ingredient amounts overlap with those taught by prior art. Both Wu and Parish do not specify fatty acid carbon numbers, however, the teaching of general fatty acid, e.g., vegetable oils in Wu, would have contained the fatty acids having the specific carbon ranges. “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). Especially Kilian provides C6-C12 fatty acid species suitable for the composition. 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).
Therefore, the claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Response to Arguments
Applicant remarks/arguments filed on 11/03/2025 have been fully considered, but they are moot because of the new ground of rejections.
Please refer to the entire office action as presented above as a complete response to the remarks/arguments.
Conclusion
No claim is 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 DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616