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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/01/2025 has been entered.
Applicants’ arguments, filed 12/01/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 recites “azoles fungicides” which is a minor informality because it appears to be a typo of ‘azole fungicides’.
Appropriate correction is required.
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 10 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.
Instant claim 10 recites “wherein the hydrophobic solid agrochemical active is selected from the herbicides flufenacet, or metribuzin; azoles fungicides difenoconazole, cyproconazole, prothioconazole; or insecticides buprofezin or azoxystrobin.” Because the species of the azole fungicides (i.e., difenoconazole, cyproconazole, prothioconazole) are not recited in combination or in the alternative, it is unclear if the claim intends for the composition to comprise all three fungicides in combination or one selected from the group of three. The Examiner suggests amending the claim to include an “and” or an “or” in the group of the three azole fungicides, similar to the herbicide and insecticide groups.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (WO 2019/185851 A1, publication date 10/03/2019; previously cited) and Dimitrova (US 6559156 B1, publication date 08/09/2019; previously cited) in view of Goodwin et al. (Anionic Polymerization, Springer, 2015, p. 625-658; previously cited).
Regarding instant claims 1, 3, 4-7, 10-12, 14 and 15, Knight relates to a "copolymer dispersant having acrylic acid, hydrophobic monomer, alkyl acrylate of a monoalkyI polyethylene glycol, and optionally strong acid derivatives of (meth)acrylic acid combined with [an] agrochemical active" (i.e., limitation of instant claims 1, 11 and 12) [abstract]. At Table 4 of page 33 Knight discloses a composition comprising the active buprofezin (i.e., hydrophobic solid active according to instant claim 10):
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Wherein “C1 - copolymer of acrylic acid/styrene/ AMPS/methoxy (polyethylene glycol) methacrylate” (i.e., instant claims 3, and 4-7), “C3 - copolymer of acrylic acid/styrene/methoxy (polyethylene glycol) methacrylate (MW 500)” and “C4 - copolymer of acrylic acid/p-methyl styrene/AMPS/ methoxy (polyethylene glycol) methacrylate” [p. 30, lines 14-25]. Additionally, Knight discloses the composition may further comprise dispersants such as a comb copolymer having capped polyethylene glycol side chains on a polyacrylic backbone [p. 13, line 24-26].
Knight does not disclose a non-ionic polymethyl methacrylate-polyethylene oxide graft copolymer.
Goodwin describes the difference between graft and comb copolymers: "Comb structures are the simplest form of these branched architectures, where both the main chain and branches have the same chemical composition. In contrast, graft copolymers are comprised of a backbone and side chains that differ in chemical composition" (emphasis added) [p. 626-627, last and first paragraph].
Dimitrova discloses an aqueous suspension concentrate comprising solid pyrimethanil (i.e., solid agrochemical active) [abstract and col. 1, line 9]. Dimitrova discloses the “formulation also comprises a dispersant, such as a polymethyl methacrylate-polyethylene glycol graft copolymer … in amounts of 1 to 10% w/v” (emphasis added) [col. 1, lines 51-54].
The Examiner is interpreting “the copolymer dispersant and the graft copolymer are present in a weight ratio in a range between 1:1 and 3:1” of instant claim 1 to mean a weight ratio of the copolymer dispersant to the graft copolymer in a range between 1:1 and 3:1 (i.e., copolymer dispersant:the graft copolymer of 1:1 to 3:1). Support for this interpretation can be found page 13, lines 23-24 of the instant specification (i.e., paragraph cited by applicant to support amendment).
Knight teaches the components of the instantly recited suspension type agrochemical formulation, concentrate agrochemical formulation and agrochemical dispersant and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment. However, given the disclosure of each component individually, it would have been prima facie obvious to combine the composition of Table 4 with the comb copolymer having capped polyethylene glycol side chains on a polyacrylic backbone dispersant. See MPEP 2143 I (A).
Additionally, it is generally prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the graft copolymer dispersant of Dimitrova as the comb copolymer desired Knight. While Knight refers the copolymer dispersant as a ‘comb copolymer’, in view of the structural description provided by Goodwin, one of ordinary skill in the art would have appreciated that Knight was referring to the structure of graft copolymers. As such, Dimitrova discloses polymethyl methacrylate-polyethylene glycol graft copolymer as a suitable dispersant agrochemical suspensions having capped polyethylene glycol side chains on a polyacrylic backbone, as desired by Knight.
Similarly, when selecting the polymethyl methacrylate-polyethylene glycol graft copolymer of Dimitrova, it would have also been obvious to one of ordinary skill in the art, at the time of filling, to have provided the graft copolymer in amounts from 1-10% w/w, as disclosed by Dimitrova. This selection would have been obvious because Dimitrova discloses concentrations between 1 and 10% w/v are suitable for the polymethyl methacrylate-polyethylene glycol graft copolymer when used as a dispersant in agrochemical suspension concentrates.
One of ordinary skill in the art would have understood that combining the 1-10%w/v of Dimitrova with the composition of Table 4 means adding 1-10 grams graft copolymer to the composition because the total solution volume of Table 4 is 100 ml (i.e., 1-10% w/v of 100mL is 1-10 grams). With the addition of 1 gram graft copolymer the total weight of composition taught by Dimitrova and Table 4 of Knight would have been 108.78 grams, making the graft copolymer present at 0.92% w/w. And, with the addition of 10 grams graft copolymer, the total weight of composition taught by Dimitrova and Table 4 of Knight would have been 108.78 grams, making the graft copolymer present at 8.5 % w/w.
Finally, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the prior art teaches a range for the amount of graft copolymer present in composition from 0.92%w/w to 8.5% w/w, as well as a weight ratio of copolymer dispersant (3.03 grams; Knight) to graft copolymer (1-10 grams; Dimitrova) of about 3:1 to about 3:10. As such, the instantly claimed range for the amount of graft copolymer (2-2.5 %w/w and 1-1.5 %w/w; instant claims 14 and 15, respectively) and range for the weight ratio of copolymer dispersant to graft copolymer (1:1 to 3:1; instant claim 1) overlap with the ranges taught by the prior art and so a prima facie case of obviousness exists for each.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a suspension type water medium, a suspension concentrate and a dispersant comprising copolymer dispersant, polymethyl methacrylate-polyethylene glycol graft copolymer (i.e., non-ionic polymethyl methacrylate polyethylene oxide graft copolymer) and hydrophobic solid active (i.e., buprofezin). Wherein the copolymer dispersant comprises acrylic acid, styrene, methoxy polyethylene glycol methacrylate (alkylacrylate of a monoalkyl polyethylene glycol) and acrylamido methyl propyl sulphonate (AMPS; strong acid). Wherein the graft copolymer is present within the instantly claimed amounts and the weight ratio of copolymer dispersant to graft copolymer is within the instantly claimed range. Additionally, considering Knight discloses the copolymer (C1/C3/C4) of Table 4 is the desired copolymer dispersant having acrylic acid, hydrophobic monomer, alkyl acrylate of a monoalkyI polyethylene glycol, and optionally strong acid derivatives of (meth)acrylic acid, the copolymer (C1/C3/C4) of Table 4 reads on the copolymer dispersants of claims 11 and 12.
Regarding instant claim 3, Knight discloses the acrylic acid component may be methacrylic acid (i.e., limitation of instant claims 2 and 3) [p. 4, lines 22-23].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the acrylic acid component of the copolymer discloses in Table 4 for the methacrylic acid because Knight discloses they are both suitable for the same intended purpose. See MPEP 2144.06 II. Furthermore, the skilled artisan would have been motivated to have substituted the methacrylic acid of Knight in place of the acrylic acid of Table 4 (disclosed by Knight) as the acrylic acid monomer of the copolymer dispersant with a reasonable expectation of success. The simple substitution of one known element (e.g., the methacrylic acid monomer of Knight) in place of another (e.g., the acrylic acid monomer of Table 4; Knight) in order to achieve predictable results (acrylic acid monomer) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to formulated the composition as taught by Knight and Dimitrova wherein the copolymer dispersant comprises a methacrylic acid monomer as the acrylic acid monomer.
Regarding instant claim 8, Dimitrova discloses the polymethyl methacrylate-polyethylene glycol graft copolymer dispersant has a molecular weight between 20,000 and 30,000 [col. 1, line 53]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case the claimed range for the molecular weight (5,000 to 40,000) overlaps with the range in the prior art and so a prima facie case of obviousness exists.
Regarding instant claim 13, Knight discloses a method of treating plants comprising applying a formulation comprising the dispersant and agrochemical active to the vegetation, or the surrounding environment [p. 36, lines 19-21]. It would have been obvious to one of ordinary skill in the art, at the time of filling, to have applied the formulation taught by Knight and Dimitrova to vegetation or the surrounding environment (e.g., the soil around the plants) because Knight discloses that is the intended method of use for the agrochemical formulation.
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 1-8 and 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, 9 and 10 of copending Application No. 17/042,632 in view of Dimitrova (US 6559156 B1, publication date 08/09/2019).
The claims of ‘632 disclose an agrochemical formulation comprising a copolymer dispersant and at least one agrochemical active [claim 1]. The copolymer dispersant comprises methacrylic acid (i.e., instant claims 2 and 3), styrene (i.e., instant claims 4 and 5) and an alkyacrylate of a monoalkyl polyethylene glycol (i.e., instant claim 1) [claim 1]. The alkyacrylate of a monoalkyl polyethylene glycol may be methoxy polyethylene glycol methacrylate (i.e., instant claim 6) [claim 4]. Additionally, the copolymer dispersant may comprise acrylamido methyl propyl sulphonate (i.e., instant claim 7) [claim 5].
The claims of ‘632 do not disclose a polymethyl methacrylate-polyethylene oxide graft copolymer.
Dimitrova discloses an aqueous suspension concentrate comprising solid pyrimethanil (i.e., agrochemical composition) [abstract and col. 1, line 9]. Dimitrova discloses the “formulation also comprises a dispersant, such as a polymethyl methacrylate-polyethylene glycol graft copolymer” (emphasis added) [col. 1, lines 51-54].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have combined the dispersant of Dimitrova with the composition disclosed in the claims of ‘632. One would have been motivated to do so in order to provide additional dispersants to the formulation. One would have had an expectation of success because Dimitrova discloses the dispersant is useful in agrochemical formulations. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Furthermore, in combining these elements one would have been motivated to determine the optimal working ranges of each dispersant. Accordingly, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising the copolymer dispersant and graft copolymer within the instantly claimed weight ratios through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the amount of graft copolymer dispersant to find the optimal working ranges and because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a suspension type water medium, a suspension concentrate and a dispersant comprising copolymer dispersant, polymethyl methacrylate-polyethylene glycol graft copolymer (a non-ionic graft copolymer of acrylic ester and oxyalkylene) and flufenacet. Wherein the copolymer dispersant comprises methacrylic acid, styrenes (hydrophobic monomer), methoxy polyethylene glycol methacrylate (alkylacrylate of a monoalkyl polyethylene glycol) and acrylamido methyl propyl sulphonate (strong acid). Wherein the copolymer dispersant and graft copolymer are within the instantly claimed weight ratios.
The claims of ‘632 also disclose a method of use comprising applying the composition to vegetation or the immediate environment.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
1) On page 6 of their remarks, applicant asserts the Knight, Dimitrova and Goodwin do not disclose the claimed combination of the copolymer dispersant and graft copolymer, much less the instantly claimed weight ratios.
This argument is moot in view of the new rejections necessitated by amendment.
2) On page 7 of their remarks, applicant asserts formulations C1 and C2 of Table 2, which comprise the copolymer dispersant and graft copolymer at the claimed weight ratio, demonstrate improved results over comparative formulations A1 and A2 which comprise only the copolymer dispersant or only the graft copolymer.
This argument is not persuasive. In Table 2 of the specification, Applicants appear to show that formulations comprising a combination of copolymer dispersant “D1” (MPEG-MA, AMPS, acrylic acid and styrene) and the nonionic graft copolymer “D2” (methyl methacrylate polymer with methacrylic acid and methoxy polyoxyethylene methacrylate) display an improvement in suspensibility over 14 days, when compared to the closest prior art. However, the examples in the specification (See Table 1) that illustrate these results do not disclose any structural information about the copolymers (e.g., copolymer molecular weights, ratios of monomers, monomer arrangements, molecular weight of the monomers, etc.) beyond identifying the monomers. As such, it is unclear if the invention would demonstrate the same improved suspensibility across all copolymer molecular weights, ratios of monomers, monomer arrangements, monomer molecular weights, etc. Similarly, it does not appear that the instant claims are commensurate in scope with the formulations of Table 1, which display the improved suspensibility in Table 2, because it is unclear what molecular weights, ratios of monomers, monomer arrangements and molecular weight of the monomers of the D1 and D2 copolymers would have improved the suspensibility over 14 days. Without any structural information, beyond the class of copolymer, it does not appear that the results reasonably represent the invention as claimed. MPEP 716.02(d).
Furthermore, the result of improved suspensibility does not seem to be unexpected. One of ordinary skill in the would have expected some improvement in suspensibility upon the addition of another dispersing agent, in this case the polymethyl methacrylate-polyethylene oxide graft copolymer dispersant of Dimitrova. Similarly, improved viscosity does not appear to be unexpected in view of the prior art. See, for example, Warrington et al. (US 20040014800 A1, publication date 01/22/2004). Warrington discloses an aqueous pesticide suspension which shows less variation in viscosity [abstract]. According to Warrington “an acceptable consistency of viscosity is obtained using amounts of 0.1 to 0.9%, preferably 0.1 to 0.5% w/v of component (d), typically 0.3 to 0.4% w/v. Any non-ionic polymethyl methacrylate-polyethylene oxide graft copolymer may be used” [0023].
With respect to the weight ratio, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). (MPEP 716.02(d)). In the present case applicant has not provided results outside the claimed weight ratio.
3) On page 7 of their remarks, applicant argues the cited reference fail to disclose, teach or suggest all the features of claim 12. Specifically, the claimed weight ratio.
This argument is moot in view of the new rejections necessitated by amendment.
4) on page 8 of their remarks, Applicant asserts the claimed weight ratio of the copolymer dispersant to the graft copolymer distinguishes the instant claims from the copending claims.
This argument is moot in view of the new rejections necessitated by amendment. The claims stand rejected for the same reasons above and of record.
Conclusion
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612