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 .
Claims Status:
Claims 1-8 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/3/23 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The abstract of the disclosure is objected to because the abstract recites legal phraseology “said”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Applicant is reminded of the proper language and format for an abstract of the disclosure.
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See [0062, 0079, 0256, 0263, 0269, 0271, 0276, 0277]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The factors considered in the Written Description requirement are (1) level of skill and knowledge in the art, (2) partial structure, (3) physical and/or chemical properties, (4) functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the (5) method of making the claimed invention.
While all of the factors have been considered, only those required for a prima facie case are set forth below. MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a pesticide research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from pesticidal compositions and methods of application— without being told to do so. In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Claims 1 and 2 recite: “Sulphated Aromatic condensation product, sodium salt”, which represents a genus of products. A description of a genus may be achieved by means of a recitation of a representative number of species falling within the scope of the genus or of a recitation of structural features common to the members of the genus, which features constitute a substantial portion of the genus. Regents of the University of California v. Eli Lilly & Co., 119 F3d 1559, 1569, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997). Consequently, the claimed invention which is drawn to a genus of condensation products may be adequately described if there is a (1) sufficient description of a representative number of species, or (2) by disclosure of relevant, identifying characteristics sufficient to describe the claimed invention in such full, clear, concise and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. Here, the specification does not appear to disclose a single species within the genus. The condensation product appears to be mentioned only once in Table 3 but the sodium salt structure of what the sulphated aromatic is condensed with is unknown. Therefore, the disclosure of some unknown condensation product does not provide an adequate description of the claimed genus.
Weighing all the factors, one of ordinary skill in the art would not recognize from the disclosure that the applicant was in possession of the genus of sulphated aromatic condensation products sodium salts. That is, the specification does not provide a representative number of condensation products to describe the claimed genus. In essence, the specification simply directs those skilled in the art to go condense sulphated aromatic chemicals with some other material and make the sodium salt. That is not sufficient to satisfy the written description requirement.
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 1-8 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. Claims 1 and 2 recite: “Sulphated Aromatic condensation product, sodium salt”. It is unclear what condensation product Applicant intends to claim. The specification only mentions the term once in Table 3 but provides no guidance for the artisan to determine the chemical identity of the product. No commercial sources are named and no synthetic routes are taught. Therefore, it is left to the imagination of the ordinary artisan as to what it might be and that is unpredictable. A claim term is indefinite if it leave[s] the skilled artisan to consult the unpredictable vagaries of any one person's opinion. (Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed.Cir.2005)). Dependent claims are rejected as indefinite because they are dependent upon an indefinite base claim. Claim 2 will not be further treated on the merits due to the great amount of speculation required to ascertain what product is intended by Applicant. See MPEP 2173.06(II): “As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
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 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(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 and 3-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bristow (US20160249616) and Ammermann et al. (US20050101639) and Messerschmidt et al. (US8153561) and Finch (US8618022) and Damaceno et al. (US20110257166).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Applicant claims:
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The term “m/m” is interpreted as mass/mass percentage.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a pesticide research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from pesticidal compositions and methods of application— without being told to do so. In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 3-8, Bristow teaches compositions and methods of treating soybean rust by applying a composition to a plant comprising a strobilurin fungicide and a triazole fungicide (Claims 1 and 20; [0012]), which would be at the site of infection on the plant, where the strobilurin fungicide is picoxystrobin (Claims 2 and 5) and the triazole fungicide is prothioconazole (Claim 3) where the strobilurin fungicide is present between 5-95% by weight of the composition and the triazole fungicide is present is present between 1-70% by weight of the composition (Claims 10-11) or in a ratio of from 25:1 to 1:25 (Claim 12). Those amounts overlap the amounts claimed. MPEP 2144.05(I): In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Bristow teach adding auxiliaries that will be apparent to the person skilled in the art [0023]. Bristow teach formulations with 0.6% 1,2-benzisothiozolin-3-one and 10% propylene glycol [0105] and water [0076-0077]. The 0.6% of the preservative 1,2-benzisothiozolin-3-one touches on the claimed range of 0.1-0.50% w/w and renders it obvious. See MPEP 2144.05(I): “Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).”
Bristow also teach adding 11.25% of 2% xanthan gum with the balance of water [0099] and 5% tristyrylphenol ethoxylates [0098]. Bristow teach adding polymeric stabilizers known in the art [0026] and anti-foam agents such as polydimethylsiloxanes [0028] and preservatives [0029]. Bristow teach adding one or more surfactants that are known in the art and commercially available [0025].
Regarding claims 1 and 3-8, Ammermann et al. teach a synergistic combination of prothioconazole and picoxystrobin (Claims 1 and 3) in a weight ratio of 20:1 to 1:20 (Claim 7). All sorts of surfactants are named [0069] as well as fillers/solid carriers [0072].
Regarding claims 1 and 3-8, Messerschmidt et al. teach inert ingredients approved by the Environmental Protection Agency that include:
Silicon dioxide (Column 29, line 24);
Xanthan gum (Column 30, line 27);
Propylene glycol (Column 32, line 14);
Polyvinylpyrrolidone (Column 35, line 28);
Dodecanol, ethoxylated monoether with sulfuric acid, sodium salt (Column 35, lines 36-37);
Polyethylene-polypropylene glycol monobutyl ether (Column 36, lines 18-29);
Dimethylsiloxanes (Column 40, lines 47);
Triethanolamine compound with poly(oxyethylene) tristyrylphenyl ether phosphate (Column 44, lines 64-66);
Poly(oxy-1,2-ethanediyl), alpha.sulfo-omega [tris(l-phenylethyl)phenoxy ]-ammonium salt (Column 45, lines 22-24);
Methyl methacrylate-methacrylic acid monomethoxypolyethylene glycol methacrylate copolymer (Column 45, lines 25-27 (The same CAS number as used by Applicant in Table 3);
Polyoxyethylene tristyrylphenol phosphate, potassium salt (Column 46, lines 15-16).
Regarding claims 1, 3-5 and 7, Finch teaches aqueous compositions of picoxystrobin and prothioconazole (Claims 1-2 and 19) with 0.5 to 15% by weight of at least one surfactant where “Suitable surfactants are well known to the skilled person as are processes for the preparation thereof; they are also commercially available, e.g. under the trade names mentioned below in each case. (Column 7, lines 35-45). Surfactants include poly(ethylene glycol block propylene glycol) butylether (Column 22, lines 18-19) and the comb polymer of methyl methacrylate, methacrylic acid (Column 22, lines 23-24) and alkaline metal salts of phosphates of (poly)ethoxylated di- or tristyrylphenols (Column 9, lines 2-3) and name CAS-No. 119724-54-8 which is commercially available as Atlox® 4913 (Uniqema) (Column 13, lines 34-35) with xanthan gum thickener (Column 22, line 34). But see column 7, line 65 through column column 13, line 35.
Regarding claims 1, 5 and 7, Damaceno et al. teach aqueous compositions comprising prothioconazole and picoxystrobin and surfactants such as at least one dispersant selected from the group consisting of methacrylic acid-methyl methacrylate-polyethyleneglycol graft copolymer, tristyrylphenolethoxylates and/or propylene oxide/ethylene oxide block copolymer (Abstract; claims 1-3 and 9; [0055-0057]) and commonly employed additives [0060]. Damaceno et al. teach embodiments with combined surfactants/dispersants and propylene glycol and xanthan gum [0093, 0099, 0106, 0120].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
1. The difference between the instant application and Bristow is that Bristow do not expressly teach the surfactant system and all the claimed additives in the amounts claimed. This deficiency in Bristow is cured by the teachings of Ammermann et al., Finch, Damaceno et al. and Messerschmidt et al.
1. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the composition of Bristow with the surfactant system claimed with the inert ingredients claimed, as suggested by Ammermann et al., Finch, Damaceno et al. and Messerschmidt et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Ammermann et al. establish a synergism between the prothioconazole and picoxystrobin within the ratios taught by Bristow. So, the artisan would select those active agents within those ratios and optimize the amounts to 19.45 to 21.03% prothioconazole and 16.21 to 18.28% picoxystrobin with a reasonable expectation of success. With regard surfactant system, not only does Finch and Damaceno et al. point the artisan to several of the claimed surfactants for use with prothioconazole and picoxystrobin aqueous compositions in an overlapping amount of the claimed range, but also these are simply well-known surfactants available to the ordinary artisan for use as approved by the Environmental Protection Agency. All Applicant appears to have done is select known surfactants and other inert additives from a list of known ingredients for use in the composition to treat soybean rust. "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.” (Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327 65 USPQ at 301 (1945)). Thus, selecting 2-7% m/m of each component in the systems of: polyethylene polypropylene glycol monobutyl ether and phosphated polyoxyethylene trisylphenol, potassium salt or polyethylene polypropylene glycol monobutyl ether and triethanolamine compound with poly( oxyethylene) tristyrylphenol ether phosphate or poly(oxy-1,2-ethanediyl), alpha-sulfo-omega-(2,4,6-tris(lphenylethyl) phenoxy)ammonium salt and methyl methacrylate-methacrylic acid copolymer or dodecanol, monoether ethoxylated with sulfuric acid and triethanolamine compound with poly(oxyethylene) tristyrylphenol ether phosphate or methyl methacrylate-methacrylic acid copolymer; phosphated polyoxyethylene trisylphenol, potassium salt is not inventive without more. Especially when Damaceno et al. teach embodiments with combined surfactants/dispersants as discussed above. Optimizing the amount of each component is well within the skill of the ordinary artisan to obtain the desired product with a reasonable expectation of success. See MPEP 2144.05 (II) (A): “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)…see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). "The mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art." In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). Accordingly, the ordinary artisan can readily select the claimed components and optimize their amount to within the claimed ranges with no change in the synergism of the prothioconazole and picoxystrobin and do so with a reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Y Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613