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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5 June 2026 has been entered.
Status of the Claims
Claims 1, 8-11, 13-27, and 29-31 are pending.
Claims 10, 11, 14-18, 21-27 and 29-31 are withdrawn from consideration as directed to non-elected inventions.
Claims 1, 8, 9, 13, 19, and 20 are presented for examination and rejected, as set forth below.
Claim Interpretation
Applicants claims are directed to compositions which combine lambda-cyhalothrin in defined concentrations with the elected imidacloprid of Claim 13 in defined concentrations, and a mixture of a weak acid and its salt, which applicants have elected the combination of citric acid and sodium citrate as set forth in dependent claims 8, 9, and 18. Claim 19 indicates the compositions is provided in the form of a liquid, and Claim 20 either of a suspension concentrate or capsular suspension.
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, 9, 13, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sahah (WO2013/105107).
Sahah describes water dispersible granular compositions containing microcapsules of agrochemical active agents, which when combined with water for dispersion represents a “capsular suspension” of Claims 19 and 20. (Abs.; Pg.3, L.3-7). The elected combination of lambda cyhalothrin and imidacloprid represents a particularly disclosed combination of first and second active agents, respectively. (Pg.7, L.27-28). Sahah indicates that concentrations of the first active in aqueous suspension, in that case lambda cyhalothrin, usually fall within the range of about 0.1-50% of the composition, and of the second active, in this case imidacloprid, falling within the range of 0.1-50% of the composition. (Pg.8, L.9-16). Sodium citrate is described by Sahah as a filler for use in the compositions described, as are each of clays and precipitated silica. (Pg.6, L.25-28). In fact, Sahah describes a particular embodiment of such a composition which contains 7.8% lambda cyhalothrin, 13.2% imidacloprid, citric acid, and each of precipitated silica and China clay as fillers. Because Sahah indicates that each of sodium citrate, clays, and precipitated silicas represent equivalent fillers for use in the compositions described, it would have been prima facie obvious for a skilled artisan to substitute sodium citrate for either or both of the China clay and precipitated silica of the Sahah composition to arrive at the compositions of the present claims, provided as water-dispersible capsular suspensions. This is because each and every element of the compositions claimed is described by the teachings of Sahah as usefully combined to provide water-dispersible capsular suspensions of active agents. Applicants are reminded that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.).
Response to Arguments
Applicant's arguments filed 5 June 2026 have been fully considered but they are not persuasive.
Applicants again assert that the Sahah reference does not recognize the “specific technical problem” of isomer transformation which applicants allegedly address. This remains irrelevant to the establishment of a prima facie case of obviousness, and applicants arguments no more persuasive upon their repetition. This is because the reason or motivation to modify a prior art reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). Here, applicants claims are directed to compositions which combine lambda-cyhalothrin in defined concentrations with imidacloprid in defined concentrations, and a mixture of citric acid and sodium citrate. Art providing a rationale for combining these components in the amounts recited by the claims is sufficient to render the composition claimed obvious. As a result, applicants arguments on this point remain unpersuasive.
Because of this, it cannot accurately be said, as applicants assert, that Sahah is directed to a different invention and different technical problem, as the exact composition recited by the claims is suggested by the disclosure of Sahah when properly considered as a whole.
That water-dispersible granules may represent a preferred form of the Sahah compositions, a position the Examiner does not concede, is irrelevant to the obviousness analysis. This is because it has long been held that art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Indeed, Applicants arguments acknowledge the Sahah disclosure of aqueous suspensions of compositions combining imidacloprid and cyhalothrin when attempting to distinguish the formulation approaches which eliminate the need for anti-settling or anti-caking agents such as xanthan gum while preserving excellent suspension and dispersion properties when dissolved in water. See Applicants response, page 9/15.
That each of citric acid and sodium citrate are recited as embodiments among a variety of alternatives does nothing to diminish the obviousness of their selection. That is because it is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Applicants next move on to a discussion of how different patent offices, concerned with different applicants and their claims, have proceeded in determining the patentability of those technologies. This is irrelevant to the matter of the obviousness of the present application. Patentability decisions made during previous proceedings before the Office concerning the claims of any given patent have no bearing on patentability decisions made with respect to future proceedings concerning different patents having different claims. The Office must decide each case on its own merits, and the similarity of claims found patentable by another Examiner, or even another patent office operating under different patent laws, is not material to this proceeding. See In re Wertheim, 541 F.2d 257, 264 (CCPA 1976) (“it is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others”); see also In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir. 2001) (“The Board must decide each case on its own merits [and] the PTO’s allowance of prior registrations does not bind the Board or this court”).
Applicants assertion that Sahah’s teaching that each of citric acid and sodium citrate may be incorporated into agricultural compositions differs from the present claims requirement that the composition contain an acid/salt pair as a buffer system. As a threshold matter, this is not what applicants claim. Applicants claims simply require the presence of “a mixture of a weak acid and its salt,” so applicants arguments on this point are directed to a limitation which has not been claimed and are unpersuasive as a result. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.). Furthermore, even if applicants were to indicate that the mixture of citric acid and sodium citrate would act as a buffer, the inclusion of such functional language would not distinguish applicants claims from art which suggests that each of sodium citrate and citric acid can be included in such formulations. This is because a compound and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (indicating that a chemical composition and its properties are inseparable, and that if the prior art teaches the identical chemical composition, the properties applicant discloses and/or claims must necessarily be present). Put another way, if art suggests incorporating each of citric acid and sodium citrate in an aqueous composition, regardless of the rationales employed for their inclusion, these chemicals will, in that aqueous composition, behave as applicants “buffer system” or, as the claims actually recite, represent “a mixture of a weak acid and its salt.”
Applicants once more attempt to assert that the “invention considered as a whole” is a means of preventing isomeric transformation of lambda-cyhalothrin, rather than what the claims actually require. To remind applicants, their invention is simply a composition which combines lambda-cyhalothrin in defined concentrations with imidacloprid in defined concentrations, a mixture of a weak acid and its salt, which applicants have elected the combination of citric acid and sodium citrate, which in dependent claims is provided in the form of a liquid, and are even further narrowed to either of a suspension concentrate or capsular suspension. To be sure, as Applicants assert, Sahah does not disclose this identical composition; However, as put forth previously and again above, Sahah certainly does suggest such an arrangement.
Applicants assertion that the compositions which combine lambda-cyhalothrin with imidacloprid and a combination of citric acid and sodium citrate present unexpected benefits in terms of the stability of lambda-cyhalothrin are unpersuasive, for lambda-cyhalothrin is known to be stable at a pH of less than 8. See Li-Ming He, et al, Environmental Chemistry, Ecotoxicity, and Fate of Lambda-Cyhalothrin, in Reviews of Environmental Contamination and Toxicology, 71, 74, 77, (D.M. Whitacre, ed.) Springer (2008). As such, applicants finding of stability of lambda-cyhalothrin when combined with the kind of acidic buffer solution which would result from combining the pesticide with each of sodium citrate and citric acid cannot be said to represent an unexpected result. “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967), see also In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Indeed, if an applicant merely submits evidence to establish the obtention of a result which would have been expected based upon the knowledge of the worker in the art, the evidence merely buttresses the Examiner’s case for obviousness. In re Skoll, 523 F.2d 1392, 187 USPQ 481, 484 (CCPA 1975).
Applicants argue that the Examiner has employed hindsight reasoning to reconstruct from the Sahah reference applicants compositions. To be sure, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Here, Sahah quite literally describes in a single embodiment a composition combining lambda cyhalothrin, imidacloprid, and citric acid, requiring to arrive at applicants compositions only the inclusion of sodium citrate which Sahah indicates is commonly employed as a filler for such agricultural compositions. As such, nothing other than the disclosure of Sahah is relied on to arrive at the conclusion applicants compositions are prima facie obvious. Because of this, improper hindsight reconstruction has been avoided, and applicants arguments to the contrary unpersuasive.
For at least these reasons, applicants arguments are unpersuasive.
Conclusion
No Claims are allowable.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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