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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/2/2026 has been entered.
Claims Status
Receipt of Remarks/Amendments filed on 4/2/2026 is acknowledged. Claims 1-2 and 5-6 are currently pending. Claim 5 has been withdrawn. Accordingly, claims 1-2 and 6 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The IDS’s filed on 4/2/2026 and 5/22/2026 have been considered. See the attached PTO 1449 form.
Modified Claim Objection(s) / Rejection(s) Necessitated by Amendments
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
The recitation “temperature between -10 C. and 4 C.” should delete the periods after C and should recite “temperature between -10 C and 4 C”.
Appropriate correction is required.
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.
Claim 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Messerschmidt et al. (US 2006/0199739 A1) in view of Schlotterbeck et al. (US 2011/0195839 A1).
Messerschmidt teaches emulsion compositions formulations for killing, controlling or suppressing a plant by administering to surfaces of the plant a herbicide composition comprising a herbicidally effective limonene component (see abstract), and emulsifying agent and a wetting agent (see abstract). The composition preferably includes from about 8 percent to about 100 percent by weight of the limonene from a natural oil such as a citrus oil (paragraphs 51, 55, 56, and 57). Limonene obtained from citrus oils such as orange, typically 80-90% limonene (paragraph 3 and 53; addresses claims 3 and 4). Nonionic surfactants such as alcohol ethoxylate can be added from about 8 to about 12 percent (paragraph 61). Many wetting agents such as anionic surfactants (e.g., alkyl sulphates, alkyl ether sulphonates and alkyl aryl sulphonate) are suitable for use in herbicides and are known to a person of ordinary skill in the art (see paragraph 61 and 67; claim 15; ). The wetting agent can be in the composition from about 0.02% to about 1.0 w/w% (see paragraph 67). A solvent can be used to balance the composition by weight. The solvent can be hydrophilic solvent such as ethanol. (see paragraph 0063 and 0068). As such, Messerschmidt teaches a non-aqueous solvent such as ethanol can be used rather than water. In one example, 94% w/w of limonene is used with surfactants to make an emulsion (see paragraph 99; example 1; i.e. less than 6% solvent which merely overlaps claimed less than 5%; more than 50 wt% limonene; and emulsion concentrate). Additionally, Messerschmidt teaches that the term “herbicide composition” encompasses compositions that can be ready to spray and encompasses compositions wherein said herbicide composition can be mixed by the end user at or near the place wherein the herbicide composition will be used by diluting said formulation and optionally adding other ingredients. Moreover, the term herbicide composition can also be called herbicide concentrate and refers to a formulation of ingredients that can be diluted to provide a herbicide concentrate. Messerschmidt teaches an herbicide concentrate with emulsifying agent and the emulsifying agents should be capable of forming an emulsion, as such, Messerschmidt teaches an emulsifiable concentrate (para 0059; 0049).
Messerschmidt does not specifically exemplify the claimed composition. Specifically, Messerschmidt does not teach the alcohol ethoxylate is a fatty alcohol ethoxylate and the wetting agent such as anionic surfactants (e.g., alkyl sulphates, alkyl ether sulphonates and alkyl aryl sulphonate) is an alkylbenzoate sulfonate. However, these deficiencies are cured by Schlotterbeck.
Schlotterbeck teaches a composition for plant protection. The composition comprises nonionic surfactants such as isotridecanol oligoethoxylate (i.e., fatty alcohol alkoxylate) (see paragraph 80) and anionic surfactants such as ammonium salts of dodecylbenzenesulfonate (i.e., alkylbenzoate sulfonate) and further teach the use of said surfactants in an amount ranging 0.5% to 25% (see paragraphs 109, 112 and 146).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the composition of Messerschmidt comprises at least 50 wt% and/or 600-650 g/l limonene as an active ingredient, fatty alcohol ethoxylate (nonionic surfactant) between 5 and 40 wt% and/or 240-260 g/l, and alkylbenzoate sulfonate (anionic wetting agent) between 5 and 25 wt% and less than 5 wt% non-aqueous solvent based on the total weight of the composition because of the following teachings: 1) Messerschmidt teaches an emulsion concentrate composition comprising more than 50% limonene as an active ingredient, nonionic surfactants such as alcohol ethoxylate from about 8 to about 12 percent, and wetting agents (anionic surfactant) and less than 6 wt% of non-aqueous solvent can be added based on the total weight of the composition (see paragraph 93; paragraph 61; paragraph 67); 2) Schlotterbeck teaches a composition for the same use that comprises nonionic surfactants such as isotridecanol oligoethoxylate (i.e. alcohol ethoxylate; see paragraph 80) and anionic surfactants such as ammonium salts of dodecylbenzenesulfonate in an amount ranging from 0.5% to 25% (see paragraph 109); 3) it is well within the skill of the art to determine the range and mixture of surfactants in the composition through routine experimentation because Messerschmidt and Schloterbeck teach overlapping amounts of the claimed ingredients and as it is noted that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955.) Therefore, the amount of the emulsifying non-ionic polymeric surfactant, solvent, and anionic wetting agent taught by Messerschmidt et al. and Schlotterbeck overlaps the claimed ranges. Further, as discussed supra, Messerschmidt teaches the composition includes nonionic surfactants (e.g., ethoxylate alcohol) and anionic surfactants (e.g., alkyl sulphates, alkyl ether sulphonates and alkyl aryl sulphonate) and it would have been obvious to one skilled in the art to include the specifically claimed ethoxylate alcohol and alkyl sulphates as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Further, the claimed recitations wherein the composition is suitable for application by fogging, and wherein the composition prevents germ presence when applied to tubers are intended uses of the composition claimed and the prior art teaching the same composition would necessarily be capable of the intended use recited in the instant claims. Specifically, the combination of the cited references teach the same composition recited in the instant claims and therefore, the composition of the prior art would necessarily be suitable for application by fogging, and wherein the composition prevents germ presence when applied to tubers.
With respect to the consisting of language recited in the claims, as discussed supra, Messerschmidt teaches wherein the concentrate can have only limonene, alcohol ethoxylate and the wetting agent without requiring any additional ingredients, which reads on the consisting of language recited in the claims.
Regarding the claimed limitation wherein the composition is cold storage stable for at least 7 days at a temperature between -10 C and 4 C as measured by CIPAC MT 39.3 and wherein less than 10 ppm of residue remains on tubers following application by fogging, as mentioned above, the combination of the cited references render obvious a composition which consists of and specifically an emulsifiable concentrate consisting of the claimed components and concentrations thereof, and therefore, the prior art teaching the same composition would necessarily be capable of the storage properties recited in the instant claims, absence any evidence to the contrary.
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant's arguments filed 4/2/2026 with respect to the 103 rejections have been fully considered but they are not persuasive.
Applicant argued Gouda does not provide motivation for using limonene for sprout control in potatoes as sole active ingredients.
In response, applicant’s attention is respectfully drawn to the modified 103 rejection above which does not utilize Gouda as the amended claims do not recite the composition prevents or removes sprouts when applied to tubers. Moreover, Gouda was merely utilized because it teaches that limonene is known to prevent or remove tuber sprouts and a composition consisting of the same components as instant claims would necessarily be able to provide this function of preventing or removing tuber sprouts when applied to tubers.
Applicant argued that Messerschmidt teaches that every example is an aqueous solution with a pH modifier. Messerschmidt as a diluted aqueous solution would likely destabilize at the 10 – 4 C storage temperature range claimed by applicant. Further, all teachings were directed to towards mature plants, already germinated and with leaves which is different from tuber storage of claimed composition.
In response, firstly as discussed supra, Messerschmidt teaches solvent can be used to balance the composition by weight. The solvent can be hydrophilic solvent such as ethanol. (see paragraph 0063 and 0068). As such, Messerschmidt teaches a non-aqueous solvent such as ethanol can be used rather than water. Further, while a pH modifier can be used, Messerschmidt does not require that a pH modifier be included in the composition. (see e.g. claim 1). “Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiment.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123. As such, it would have been obvious to one skilled in the art to use a non-aqueous solvent such as ethanol and a composition without a pH modifier because Messerschmidt does not require these components as essential to its composition. Further, the examiner again reiterates that use of the composition for preventing tuber sprouts and tuber storage is an intended use and the prior art rendering obvious a composition which consists of the claimed components would necessarily be capable of this intended use.
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 1-2 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-9 of U.S. Patent No. 11109587 B2 in view of Schlotterbeck et al. (US 2011/0195839 A1).
The ‘587 patent claims a composition comprising an emulsifiable concentrate comprising more than 50% (500 g/l) limonene, between 12-20 wt% (120-200 g/l) of an emulsifying fatty alcohol ethoxylate surfactant, less than 10 wt% or less than 1 wt% solvent, and between 15-25 wt% of an anionic surfactant wetting agent. The composition having a cold storage stability at a temperature between −5° C. to +4° C. for at least one day.
The ‘587 patent does not claim the anionic surfactant wetting agent is particularly an alkylbenzoate sulfonate. However, this deficiency is cured by Schlotterbeck.
Schlotterbeck teaches a composition for plant protection. The composition comprises nonionic surfactants such as isotridecanol oligoethoxylate (i.e., fatty alcohol alkoxylate) (see paragraph 80) and anionic surfactants such as ammonium salts of dodecylbenzenesulfonate (i.e., alkylbenzoate sulfonate) and further teach the use of said surfactants in an amount ranging 0.5% to 25% (see paragraphs 109, 112 and 146).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘587 to incorporate the teachings of Schlotterbeck and include dodecylbenzenesulfonate as the anionic surfactant wetting agent. As discussed supra, ‘587 already teaches the composition includes an anionic surfactants wetting agent and it would have been obvious to one skilled in the art to include the specifically dodecylbenzenesulfonate as the anionic surfactant wetting agent because Schlotterbeck teaches dodecylbenzenesulfonate is a known anionic surfactant used in the art and as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
With respect to the amounts/concentrations of the ingredients claimed, the prior art teaches amounts which overlap or merely overlap. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, the claimed recitations wherein the composition is suitable for application by fogging and leaving less than 10 ppm of residue on tubers, and wherein the composition prevents germ presence when applied to tubers are intended uses of the composition claimed and the prior art teaching the same composition would necessarily be capable of the intended use recited in the instant claims. Specifically, the combination of the cited references teach the same composition recited in the instant claims and therefore, the composition of the prior art would necessarily be suitable for application by fogging and leaving less than 10 ppm of residue on tubers, and wherein the composition prevents germ presence when applied to tubers.
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 1-2 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8 and 10 of U.S. Patent No. 10638769 B2 in view of Messerschmidt et al. (US 2006/0199739 A1) and Schlotterbeck et al. (US 2011/0195839 A1).
The ‘769 patent claims a method for an anti-sprouting treatment of tubers comprising applying a composition which comprises limonene wherein limonene is applied by fogging. ‘769 also claims the composition comprising one or more surfactants.
The ‘769 patent does not claim the particular amount of limonene and the particular one or more surfactants and amounts thereof as a required in the instant claims. ‘769 also does not teach the composition comprising less than 5% solvent. However, these deficiencies are cured by Messerschmidt and Schlotterbeck.
As discussed supra, Messerschmidt teach an emulsion composition comprising a herbicidally effective limonene component (see abstract), and emulsifying agent and a wetting agent (see abstract). The composition preferably includes from about 8 percent to about 100 percent by weight of the limonene (paragraphs 51, 55, 56, and 57). Nonionic surfactants such as alcohol ethoxylate can be added from about 8 to about 12 percent (paragraph 61). A mixture of surfactant or other emulsifying agents known in the art can be used (paragraph 59). Messerschmidt teaches the composition will contain from about 0.05 percent to about 10 percent by weight of one or more emulsifying agent (paragraph 0062). Many wetting agents such as anionic surfactants (e.g., alkyl sulphates, alkyl ether sulphonates and alkyl aryl sulphonate) are suitable for use in herbicides and are known to a person of ordinary skill in the art (see paragraph 61 and 67; claim 15; ). The wetting agent can be in the composition from about 0.02% to about 1.0 w/w% (see paragraph 67). A solvent such as water or other selected hydrophilic solvents such as ethanol are used to balance the composition by weight (see paragraph 68). In one example, 94% w/w of limonene is used with surfactants to make an emulsion (see paragraph 99; i.e. less than 6% solvent; more than 50 wt% limonene; and emulsion concentrate).
Schlotterbeck teaches a composition for plant protection. The composition comprises nonionic surfactants such as isotridecanol oligoethoxylate (i.e., fatty alcohol alkoxylate) (see paragraph 80) and anionic surfactants such as ammonium salts of dodecylbenzenesulfonate (i.e., alkylbenzoate sulfonate) and further teach the use of said surfactants in an amount ranging 0.5% to 25% (see paragraphs 109, 112 and 146).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘587 to incorporate the teachings of Messerschmidt and Schlotterbeck and include limonene in the amount taught by Messerschmidt with less than 5% solvent and also include the surfactants taught by Messerschmidt and Schlotterbeck. ‘587 already teaches including limonene in the composition but is silent with respect to the amount of limonene and it would have been obvious to include the amounts known in the art as shown in Messerschmidts. Further, ‘587 teaches one or more surfactants added in the composition and it would have been obvious to include the surfactants taught in Messerschmidt and Schlotterbeck since both references teach herbicidal compositions and disclose the claimed surfactants are commonly used surfactant in the art. Further, it would have been obvious to include less 5% non-aqueous solvent because Messerschmidts, which also teaches herbicidal composition comprising limonene, discloses that such amounts of non-aqueous solvents are commonly known in the art.
Regarding the claimed limitation wherein the composition is cold storage stable for at least 7 days at a temperature between -10 C and 4 C as measured by CIPAC MT 39.3, as mentioned above, the combination of the cited references render obvious a composition which consists of and specifically an emulsifiable concentrate consisting of the claimed components and concentrations thereof, and therefore, the prior art teaching the same composition would necessarily be capable of the storage properties recited in the instant claims, absence any evidence to the contrary.
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant's arguments filed 4/2/2026 with respect to the double patenting rejections have been fully considered but they are not persuasive.
Applicant argued the prior arguments render the double patenting rejection improper and should be withdrawn.
In response, as discussed supra, applicant’s prior arguments are not found persuasive and thus the double patenting rejections are maintained.
Conclusion
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/ALI S SAEED/Examiner, Art Unit 1616
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