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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Status of Claims
Amendment filed on 02/13/2026 is acknowledged.
Claim 1 is amended.
Claims 2-3, 5, and 12 remain cancelled; Claims 14 and 16 remain withdrawn for being drawn to a nonelected Groups; Claims 4, 6-9, 11, 15 and 17-18 are now cancelled.
Claims 1, 10 and 13 are pending and being examined on the merits herein.
Priority
This instant application 18041648, filed on 02/14/2023, is a 371 of PCTIB2021057987, filed on 09/01/2021, which claims foreign priority to India 202011037863, filed on 09/02/2020.
Claim Interpretation
Claim 1 recitation of “low water solubility” and “crystallization controlling” is interpreted as property or intended use of the components, because they do not structurally contribute to the composition; the components of “a carboxylic acid derivative, or an ester or amide derivative of a carboxylic acid” are interpreted as “carboxylic acid derivative” based on BRI (broadest reasonable interpretation).
Claims 10 and 13 recitation of “stable dispersible concentrate” is interpreted as property or intended use of the composition because it does not structurally contribute to the composition.
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, 10 and 13 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 1 recites the broad recitation “a carboxylic acid derivative”, and the claim also recites “an ester or amide derivative of a carboxylic acid”, which is the narrower statement of the range/limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 10 recites “the stable dispersible concentrate composition”. There is insufficient antecedent basis for this limitation in the claim, because the composition in claim 1, which claim 10 depends on, has not been defined as “stable dispersible concentrate composition”.
Claim 13 is rejected accordingly because it is dependent on claim 1 and it does not clarify the issue addressed above in claim 1.
Claim Rejections - 35 USC § 102
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.
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.
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, 10 and 13 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Bayer (EP3178320, 06/14/2017; Machine translation relied upon below; attached, PTO-892).
Bayer throughout the reference directs to stabilized liquid fungicide-containing formulations based on fatty acid amides as solvents for plant protection (e.g., [0001]).
For Claim 1, Bayer teaches the formulations containing a) prothioconazole, b) at least one organic solvent (e.g., Claim 1; [0008]; [0022]) such as amides N-butyl-2-pyrrolidone, N,N-dimethyldecanamide, castor oil (e.g., [0017]), c) at least one non-ionic emulsifier (e.g., [0022]) such as castor oil ethoxylate (e.g., [0026]) and d) one or more other agrochemical active substances (e.g., [0022]). Thus, ethoxylated castor oil (as an ethoxylated type of castor oil) functions as a solvent and emulsifier at the same time.
Bayer indicates that prothioconazole is 1% to 40% by weight in the formulation (e.g., Claim 9) (falling within the range from 0.1% to 70% in instant claim), and the component b) (e.g., organic solvents ethoxylated castor oil, N-butyl-2-pyrrolidone, N, N-dimethyldecanamide [0017]) is 20 wt.% to 95 wt.% in the formulation (e.g., Claim 3) (overlapping with the crystallization controlling mix amount range from 1% to 70%, with the low end point 20 wt.% falling within the claimed range). MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). The claimed amount ranges are therefore anticipated.
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. For this instance, prothioconazole as the same compound in instant claim is taught by prior art, thus low water solubility is its inseparable property being an agrochemical ingredient; N,N-dimethyldecanamide as the same compound in instant claim 1 is taught by prior art, therefore, being a carboxylic acid derivative as instantly claimed is inseparable property of the compound; similar as the instances of N-butylpyrrolidone as a cyclic amide, and ethoxylated castor oil as an alkoxylated vegetable oil.
MPEP 2131 states "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001). For this instance, because N-butylpyrrolidone as a species of cyclic amide, N,N-dimethyldecanamide as a species of carboxylic acid derivative, ethoxylated castor oil as alkoxylated vegetable oil species are taught by prior art, the generic components of a cyclic amide, a carboxylic acid derivative, and an alkoxylated vegetable oil are anticipated.
Further, in light of claim interpretation, low water solubility of the agrochemical ingredient is inherent property of prothioconazole, which has been taught by prior art, and the property would necessarily present; the solvent mix that can comprise N-butylpyrrolidone, N,N-dimethyldecanamide, and ethoxylated castor oil, as taught by prior art, it can apparently disperse low water-soluble fungicides into liquid formulation, and in light of claim interpretation, crystallization controlling is the property or intended use of the mix, which would necessarily present or would be capable of achieving such intended use as prior art teaches such mix.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). For this instance, although Bayer does not exemplify N-butylpyrrolidone in formulation examples which include prothioconazole, exthoxylated castor oil, and N,N-dimethyldecanamide (Examples 1-4, [0073]), N-butylpyrrolidone is expressly taught as a suitable solvent, and the formulations are explicitly claimed to contain one or more solvents. Therefore, it is anticipated for an artisan in the field prior to the filing date to select suitable solvents including N-butylpyrrolidone to arrive at current invention.
For Claim 10, Bayer indicates that prothioconazole is 1% to 40% by weight in the formulation (e.g., Claim 9) (falling within the range from 0.1% to 50% in instant claim), and the component b) as organic solvents (e.g., ethoxylated castor oil, N-butyl-2-pyrrolidone, N, N-dimethyldecanamide [0017]) is 20 wt.% to 95 wt.% in the formulation (e.g., Claim 3) (the low end point 20 wt.% falling within the claimed cyclic amide range 1% to 70%, or carboxylic acid derivative or alkoxylated vegetable oil range of 0.1% to 50%). MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Therefore, the amount ranges are anticipated.
MPEP 2131 states "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001). As discussed above, the solvent species taught by prior art anticipates the generic components in the limitation scope, e.g., prothioconazole anticipates the agrochemical ingredient with low water solubility, N-butylpyrrolidone anticipates cyclic amid, N,N-dimethyldecanamide anticipates carboxylic acid derivative, ethoxylated castor oil anticipates alkoxylated vegetable oil. The generic components are anticipated by prior art teaching.
For claim 13, in light of claim interpretation, the property or intended use of the composition, which has been taught by prior art as discussed above, would necessarily present or be capable of being achieved in prior art. Moreover, Bayer teaches that the object of the invention is to provide stable prothioconazole-containing emulsion concentrates that have high storage stability and do not exhibit significant amounts of degradation products, even over longer periods and under harsh storage conditions such as contact with oxygen, high temperatures or exposure to light (e.g., [0006]-[0007]), in the formulation types including dispersible concentrate or emulsion concentrate (e.g., [0009]).
Response to Arguments
Applicant's arguments filed on 02/13/2026 have been fully considered, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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