DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-14 are pending and under consideration in this action.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to “use” claims that do not purport to claim a process, machine, manufacture, or composition of matter. See MPEP 2173.05(q): In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)(“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101”). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.”
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 3, 6, 7, 10, and 14 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 3 recites the limitation "the aminopolycarboxylic acid chelating agent" in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 3 depends from claim 1, and claim 1 does not recite “an aminopolycarboxylic acid chelating agent.”
Claim 6 recites the limitation “the fertilizer compatibility agent” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 6 depends from claim 1, and claim 1 does not recite “a fertilizer compatibility agent.”
Claim 7 recites the limitation “the fertilizer compatibility agent” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 7 depends from claim 1, and claim 1 does not recite “a fertilizer compatibility agent.”
Claim 10 recites the limitation "the aminopolycarboxylic acid chelating agent" in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 10 depends from claim 8, and claim 8 does not recite “an aminopolycarboxylic acid chelating agent.”
Claim 14 recites the limitation “the fertilizer compatibility agent” in line 2. There is insufficient antecedent basis for this limitation in the claim because claim 14 depends from claim 8, and claim 8 does not recite “a fertilizer compatibility agent.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alexander (US 2008/0051289 A1; published Feb. 28, 2008).
Alexander discloses the use of phosphate 2-propylheptanol alkoxylate as agricultural adjuvants. Alexander also discloses agricultural formulations comprising such adjuvants (reading on building in a further fertilizer compatibility agent into the formulation) and at least one agricultural active, and to methods of treating a plant with the agricultural formulations (para.0008; Alexander claims 1-3). The adjuvant can effectively be used as a dispersant, emulsifier, hydrotrope, wetting agent, compatibility agent, and/or the like in agricultural formulations. The adjuvants improve wetting and uptake of active ingredients by a plant, resulting in a higher activity at a given application rate. It is also an efficient hydrotrope and activity improver in agricultural formulations (para.0009).
The aqueous agricultural formulations comprise at least one agricultural active, such as herbicides, fungicides, insecticides, plant growth regulators, and the like (para.0010-0011) (reading on the formulation being a crop protection formulation). The adjuvants can be used with any active ingredient in order to improve efficacy by improving the dispersion or emulsions properties in the application tank, or modifying the spreading and/or penetration properties of the spray solution on the plant (para.0011).
The agricultural formulations may also contain alkali and an alkaline complexing agent that may be inorganic or organic. Typical examples of organic complexing agents include sodium EDTA (para.1283) (reading on building a chelating agent into a crop protection formulation).
The composition may be in the form of a concentrate, such as a suspension concentrate, or a ready-to-use solution. To obtain a ready-to-use solution, the concentrates are diluted with water and/or fertilizer solutions up to 1:40 (para.1683-1686) (reading on the alternative of adding a chelating agent when mixing the crop protection formulation with the liquid fertilizer).
Claims 1-4 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lifshitz (US 2002/0160054 A1; published Oct. 31, 2002).
Lifshitz discloses a composition for controlling growth of pathological organisms on a plant. The composition is used to treat plants against diseases that are caused by plant pathogens, such as a fungus or a bacterium (reading on the formulation being a crop protection formulation). The composition comprises an effective amount of one or more metal ions; one or more of chelating agent(s); and phosphorous acid, and/or salt or hydrate thereof, said composition is in an agriculturally compatible carrier or vehicle (abstract; para.0033; Lifshitz claims 1 and 16) (reading on building a chelating agent into a crop protection formulation)..
The chelating agents are used for keeping divalent and polyvalent metal ions in solutions. The chelating agent can be, for example, EDTA, EDDHA, HEDTA, or DTPA (para.0027; Lifshitz claims 5 and 6). The composition is characterized in that the chelating agent is present in an amount from about 1% to about 10% by weight of wet composition (para.0036; Lifshitz claim 30).
The invention is based on the surprising synergistic interaction between a metal ion, a chelating agent, and a phosphorus acid and/or salts and hydrates thereof in controlling plant pathogens. The synergistic interaction enables the use of lower concentrations of each of the components, which is economically preferable (para.0030). The composition enables a soluble complex, wherein none of the ingredients precipitate so as to enhance the absorption of the liquid mixture in the soil or into the plant, and thus is in a form available to the plant (para.0032).
The composition can also contain any kind of other compatible ingredients, such as, for example, stabilizing agents and fertilizers (para.0041).
The composition may be in the form of liquid composition, such as suspension concentrates (para.0044).
The composition shows systemic activity. The composition can further be used in seed disinfection and to treat plant cuttings as well as to combat phytopathogenous fungi occurring in the soil. The composition is particularly attractive due to its good plant tolerance and lack of environmental problems (low application rates) (para.0050).
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.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lifshitz (US 2002/0160054 A1; published Oct. 31, 2002) and Alexander (US 2008/0051289 A1; published Feb. 28, 2008).
The teachings of Lifshitz as they apply to claims 1-4 and 8-11 are set forth above and incorporated herein.
Lifshitz does not appear to explicitly disclose the further inclusion of a further fertilizer compatibility agent into the formulation. Alexander is relied upon for this disclosure. The teachings of Alexander are set forth above and incorporated herein.
Both Lifshitz and Alexander are directed to crop protection formulations and components for such formulations. As discussed above, Lifshitz discloses that their formulation may contain other compatible ingredients, and discloses that their composition shows systemic activity. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Lifshitz with the teachings of Alexander and include Alexander’s adjuvant, i.e., phosphate 2-propylheptanol alkoxylate, include Lifshitz’s composition for controlling growth of pathological organisms on a plant. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantages that Alexander’s adjuvant provides for crop protection formulations, such as improving the emulsion or dispersion properties in the application tank and improving the spreading and/or penetration properties of the formulation, and improving the activity of the agricultural formulation. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Lifshitz and Alexander are directed to crop protection formulations and components for such formulations, Lifshitz discloses that additional compatible ingredients, e.g., stabilizers, may be included in their formulation, and Alexander discloses that their adjuvants are suitable for inclusion into agricultural formulations.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/040,470 (Copending 470).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping crop protection formulations comprising a chelating agent, and their use. The instant claims are directed to building a chelating agent into a crop protection formulation. The claims of Copending 470 are also directed a formulation comprising overlapping chelating agents and an active ingredient (crop protection formulation), thus reading on a building in a chelating agent into a crop protection formulation. Both sets of claims additionally further include a fertilizer compatibility agent, in particular phosphate 2-propylhetanol alkoxylate, and claim the formulation being in the form of a suspension concentrate. Copending 470 also claims the application of their composition to propagation material or site so protect plant propagation material from damage and/or yield loss caused by a pest and/or fungi.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-14 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616