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 .
Status of the Claims
Claims 1, 8-11, 13-27, and 29-31 are pending.
Claims 21-27 and 29-31 are withdrawn from consideration as directed to non-elected inventions.
Claims 10, 11, and 14-18 are withdrawn from consideration as directed to non-elected species of the elected invention.
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, L3-7). 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 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 23 January 2026 have been fully considered but they are not persuasive.
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.
Applicants argue that the Sahah reference does not recognize the “problem” of isomer transformation which applicants allegedly address. This is irrelevant to the establishment of a prima facie case of obviousness. 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). As a result, applicants arguments on this point are unpersuasive.
Applicants assert that Sahah’s teaching that each of citric acid and sodium citrate may be incorporated into agricultural compositions is somehow “fundamentally different” 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).
For at least these reasons, applicants arguments are unpersuasive.
Conclusion
No Claims are allowable.
THIS ACTION IS MADE FINAL. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614