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 .
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.
Election/Restrictions
Applicant’s election in the reply filed on 12 January 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicants provided a compliant species election of an agrochemical formulation comprising the following species (ingredients):
The active ingredient: fluoxapiproline (a fungicide); and
Drift reducing agent: sunflower oil (a “vegetable oil”); and
Uptake enhancing agent: ethoxylated mono- or diesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 10-40 EO units; and
Rain-fast additives: polymer dispersion of a copolymer of acrylic acid and styrene; and
Other formulants: xanthan gum (a “rheological modifier”); and
Water (“carriers to volume”).
A search for the elected formulation comprising the elected ingredients, above, retrieved prior art.
Therefore, per Markush search practice, the Markush search will not be extended unnecessarily to additional species of ingredients (of instant claim 1) that comprise the agrochemical formulation of instant claim 1 in this Office Action.
The elected species read on claims 1, 5, 7-11, 13, and 15-22.
Claims 2, 4, 12, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 January 2026.
Current Status of 18/251,506
This Office Action is responsive to the amended claims of 12 January 2026.
Claims 1, 5, 7-11, 13, and 15-22 have been examined on the merits. Claims 1, 5, 8-11, 13, 15-16, and 18-22 are currently amended. Claims 7 and 17 are previously presented.
Priority
The effective filing date is 8 November 2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The 6-page amendment to the Specification of 2 May 2023 is formally entered into the record.
The title of the invention is not descriptive since it contains “Improved”. Titles cannot contain “Improved”, “Improvement of”, “New”, and “Novel” (see list of prohibited words in MPEP 606). A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: -- AGROCHEMICAL COMPOSITION WITH [[IMPROVED]] DRIFT, UPTAKE AND RAINFASTNESS PROPERTIES -- .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 27 February 2026; 20 October 2025; and 2 May 2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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, 5, 7-11, 13, and 15-22 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 contains “including” followed by various limitations. This renders the metes and bounds of claim 1 undefined (hence rendering claim 1 indefinite under 35 USC 112(b)). The artisan does not know whether the limitations following “including” are merely exemplary or are required limitations of the claim. Claim 5 also contains “including” and is rejected as indefinite under 35 USC 112(b) for the same rationale.
Claims 7-11, 13, and 15-22 are similarly rejected as indefinite under 35 USC 112(b) since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for rejecting claim 1.
Claim 1 contains the phrase: “selected from the group comprising” (at least two occurrences within claim 1). This phrase renders the metes and bounds of claim 1 undefined (hence rendering claim 1 indefinite under 35 USC 112(b)). Markush groupings are supposed to be closed groups of alternatives. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should be rejected under 35 USC 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h). Please also note claim 5 is rejected as indefinite under 35 USC 112(b) for not containing a proper transition word -- consisting of -- which would indicate the claim 5 oils or esters are alternative lists of embodiments.
Claims 5, 7-11, 13, and 15-22 are similarly rejected as indefinite under 35 USC 112(b) since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for rejecting claim 1.
Claim 1 contains a list of ingredients of the agrochemical formulation labeled: a), b), d), e), f), and g). This order renders the metes and bounds of the claim 1 undefined (hence rendering claim 1 indefinite under 35 USC 112(b)) since the list is missing c). While normally Applicant is his own lexicographer, claims can be rendered indefinite for having labels such as “first” without a successive “second” in the same claim. By the same reasoning, a missing c) makes the reader/artisan wonder what limitations remain undisclosed that should be disclosed within the independent claim 1 to fully understand the metes and bounds of patent protection sought.
Claims 5, 7-11, 13, and 15-22 are similarly rejected as indefinite under 35 USC 112(b) since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for rejecting claim 1.
Claim 15 recites the limitations "f1), f2), f3), f4), and f5)". There is insufficient antecedent basis for this limitation in the claim.
As drafted, the limitations "f1), f2), f3), f4), and f5)" of claim 15 render the metes and bounds of claim 15 undefined (hence rendering claim 15 indefinite under 35 USC 112(b)). The artisan has no idea where antecedent basis can be found for "f1), f2), f3), f4), and f5)" within claims 1 or 15. Claim 1 has no range of concentrations for “f)” from which to judge "f1), f2), f3), f4), and f5)" of claim 15.
Do Applicants intend "f1), f2), f3), f4), and f5)" of claim 15 to be alternative embodiments of “f)” of claim 1?
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 15 and 18-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Dependent claim 15 contains the limitations "f1), f2), f3), f4), and f5)". However, dependent claim 15 fails to properly further limit parent claim 1 since claim 1 has no range of concentrations from which to judge "f1), f2), f3), f4), and f5)" of claim 15. Also, claim 1 has no "f1), f2), f3), f4), and f5)". Hence, claim 15 is rejected under 35 USC 112(d).
Dependent claim 18 contains the limitation “wherein b) is a polymer” and contains a range 0.005 to 1 g/l each of which render claim 18 rejected under 35 USC 112(d). The “wherein b) is a polymer” technically is more broad and of a different scope than parent claim 1’s “drift reducing polymer” AND 0.005 of claim 18 is smaller than parent claim 1’s 0.05 (of 0.05 to 3 g/l).
Dependent claim 18 is also rejected under 35 USC 112(d) since “b) is an oil” is of a different scope than parent claim 1’s “b) is a vegetable oil”.
Dependent claim 18 is rejected under 35 USC 112(d) since “d from 1 to 20 g/l” of claim 18 is outside the scope of parent claim 1’s “d) from 10 to 180 g/l”. The same is true for claim 18’s “e) from 0.5 to 10 g/l” being outside the scope of parent claim 1’s “e) from 5 to 150 g/l”.
Dependent claims 19-20 are similarly rejected under 35 USC 112(d) because “polymer” and “oil” are more broad/different scope than parent claim 1’s “drift reducing polymer” and “vegetable oil”, respectively.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5, 7-11, 13, and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over:
BAYER (“Fungicides.” Bayer Crop Science Canada. Available to the public: 4 April 2018. Accessed on 27 April 2026. Available from: < https://www.cropscience.bayer.ca/d/fungicide-bcs-xivana-prime-en-ca/ > ),
in view of:
MILLER (Miller, P. and Westra, P. “Herbicide Surfactants and Adjuvants no. 0.559”. Colorado State University Cooperative Extension. (1996), Available from: < https://erams.com/static/wqtool/PDFs/bmps_colorado/00559.pdf / >),
in view of:
CRODA (“Crovol CR70G-LQ-(CQ).” Safety Data Sheet. Croda. First made available to public: 18 June 2020. Accessed 27 April 2026. Available from: < https://msds.crodadirect.com / >),
in view of:
RAIN (“Styrene-Acrylic Emulsion Polymers.” MCP Mallard Creek Polymers. (1 September 2015). Accessed 27 April 2026. Available from: https://web.archive.org/web/20191213112706/http://www.mcpolymers.com/library/styrene-acrylic-emulsion-polymers / > ),
in view of:
XANTHAN (Lachke, Anil. “Xanthan – A Versatile Gum.” Resonance. (October 2004). Available from: < https://www.ias.ac.in/article/fulltext/reso/009/10/0025-0033 / >),
in view of:
WATER (Schilder, Annemiek. “How to get the most out of your fungicide sprays.” Michigan State University. (8 July 2014). Accessed 27 April 2026. Available from: < https://www.canr.msu.edu/news/how_to_get_the_most_out_of_your_fungicide_sprays / > ),
in further view of:
CLARKE (Clarke, Adam. “5 ways new tech can improve pesticide applications.” Farmers Weekly. (20 December 2018). Accessed 28 April 2026. Available from: < https://www.fwi.co.uk/arable/five-ways-new-tech-can-improve-pesticide-applications / >),
and in further view of:
DISC (“Controlled Droplet Application.” Micron Sprayers. (10 September 2011). Accessed 28 April 2026. Available from: < www.microngroup.com/controlled-droplet-application/ / > ).
The instant claims are drawn to an agrochemical formulation comprising:
a) fluoxapiproline (Applicants’ elected species of fungicide); and
b) sunflower oil (a “vegetable oil”) which is Applicants’ elected drift reducing ingredients; and
d) ethoxylated mono- or diesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 10-40 EO units (Applicants’ elected one or more uptake enhancing agents—referred to as “Croda Crovol 70G” within Specification pages 27 and 42); and
e) polymer dispersion of a copolymer of acrylic acid and styrene, Applicants’ elected “one or more rain-fast additives”, and
f) xanthan gum, Applicants’ elected “optional other formulants”, and
g) “Water”, Applicants’ elected “one or more carriers to volume”.
Determining the scope and contents of the prior art:
The chemical compound fluoxapiproline, which is marketed as Xivana® Prime (Applicants’ elected species of fungicide) is a known fungicide marketed by Bayer (see prior art reference “Bayer” pages 1-2).
The prior art reference MILLER teaches that sunflower oil is commonly used as surfactant for agrochemical formulations comprising herbicides and fungicides (see pages 1-2) (“sunflower oil” is Applicants’ elected species of “drift reducing ingredients”). The Examiner interprets “surfactant” of MILLER to be the same thing as Applicants’ “drift reducing ingredient” since “surfactants or surface active agents improve the dispering/emulsifying, absorbing, spreading, sticking, and/or pest-penetrating properties of the fungicide spray mixture” (page 1). Thus, MILLER’s “surfactant” acts to improve the dispersing, absorbing, spreading, sticking, and/or pest-penetrating properties of the fungicide spray mixture (page 1) much as Applicants’ “drift reducing ingredients” act to reduce drift and improve “spreading, sticking, and/or pest-penetrating” properties of the agrochemical formulation.
The prior art reference CRODA teaches the product Crovol 70G™ made by Croda® contains ethoxylated mono- or diesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 10-40 EO units” (according to Applicants’ Specification pages 27 and 42), which is Applicants’ elected “one or more uptake enhancing agents”. Crovol 70G is a well-known surfactant (CRODA reference page 1).
The prior art reference RAIN teaches that styrene-acrylic copolymers (interpreted as “polymer dispersion of a copolymer of acrylic acid and styrene”, which is Applicants’ elected “one or more rain-fast additives”), act as surfactants and promote good adhesion to substrates (page 1).
The prior art reference XANTHAN teaches that xanthum gum (Applicants’ elected “other formulants”) is used in agriculture to control the drift of fungicide and herbicide and promotes prolonged contact of herbicide and fungicide with crops by forcing the fungicide/herbicide to “cling” to the crops during spraying (Table 1 page 32). Thus, xanthan gum acts much as the aforementioned surfactants to reduce drift and improve “spreading, sticking, and/or pest-penetrating” properties of the agrochemical formulation. The prior art reference WATER teaches that water should be added to the fungicide application (this is Applicants’ elected “one or more carriers to volume”) to obtain thorough coverage (page 1).
The prior art reference CLARKE teaches that pesticides/fungicides are commonly applied in the agriculture industry using tractor-mounted boom sprayers fitted with either pulse width modulation (PWM) or conventional nozzles (see pages 1-3 and 7); and unmanned aerial vehicles and/or unmanned guided vehicles (see page 4). This helps to teach instant claim 22.
The prior art reference DISC teaches that pesticides/fungicides can be applied using spinning disc rotary atomisers (see page 2), which Examiner interprets as synonymous with instant claim 22’s “rotating disc droplet applicators”. This helps to teach instant claim 22.
Ascertaining the differences between the prior art and the claims at issue:
While the chemical compound fluoxapiproline, which is marketed as Xivana® Prime (Applicants’ elected species of fungicide) is a known fungicide marketed by Bayer (see prior art reference “Bayer” pages 1-2), the BAYER prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
While the prior art reference MILLER teaches that sunflower oil is commonly used as surfactant for agrochemical formulations comprising herbicides and fungicides (see pages 1-2) (“sunflower oil” is Applicants’ elected species of “drift reducing ingredients”), the MILLER prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
While the prior art reference CRODA teaches the product Crovol 70G™ made by Croda® contains ethoxylated mono- or diesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 10-40 EO units” (according to Applicants’ Specification pages 27 and 42), which is Applicants’ elected “one or more uptake enhancing agents”; and Crovol 70G is a well-known surfactant (page 1), the CRODA prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
While the prior art reference RAIN teaches that styrene-acrylic copolymers (interpreted as “polymer dispersion of a copolymer of acrylic acid and styrene”, which is Applicants’ elected “one or more rain-fast additives”), act as surfactants and promote good adhesion to substrates (page 1), the RAIN prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
While the prior art reference XANTHAN teaches that xanthum gum (Applicants’ elected “other formulants”) is used in agriculture to control the drift of fungicide and herbicide and promotes prolonged contact of herbicide and fungicide with crops by forcing the fungicide/herbicide to “cling” to the crops during spraying (Table 1 page 32), the XANTHAN prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1. While the prior art reference WATER teaches that water should be added to the fungicide application (this is Applicants’ elected “one or more carriers to volume”) to obtain thorough coverage (page 1), the WATER prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
While the prior art reference CLARKE teaches that pesticides/fungicides are applied using tractor-mounted boom sprayers fitted with either pulse width modulation (PWM) or conventional nozzles (see pages 1-3 and 7); and unmanned aerial vehicles and/or unmanned guided vehicles (see page 4), the CLARKE prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
While the prior art reference DISC teaches that pesticides/fungicides can be applied using spinning disc rotary atomisers (see page 2), the DISC prior art reference does not teach an agrochemical formulation comprising each ingredient a), b), d), e), f), and g) of instant claim 1.
Resolving the level of ordinary skill in the pertinent art:
The artisan is knowledgeable in the design and production of agrochemical formulations comprising fungicide active ingredients and surfactants/drift reducing agents designed to maximize a fungicidally effective amount of active ingredient on the plants/crops while minimizing loss due to drift. The artisan is also knowledgeable in hardware (tractor booms, UAV/drones, spinning disc droplet applicators; pulse width modulation spray nozzles; and/or conventional nozzles—to name a few) useful to maximize fungicide application while minimizing loss due to drift.
Considering objective evidence present in the application indicating obviousness or nonobviousness:
The instant claims are prima facie obvious in light of the combination of references BAYER, in view of: MILLER, CRODA, RAIN, XANTHAN, WATER, and in further view of: CLARKE and DISC.
The artisan would be expected to add the known surfactants: sunflower oil (MILLER pages 1-2); Crovol 70G™ made by Croda® containing ethoxylated mono- or diesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 10-40 EO units” (page 1 of CRODA); styrene-acrylic copolymers (interpreted as “polymer dispersion of a copolymer of acrylic acid and styrene” (RAIN page 1); and xanthan gum (XANTHAN Table 1 page 32) to the active fungicidal ingredient: fluoxapiproline (BAYER pages 1-2) to form an agrochemical formulation of instant claim 1 since surfactants are commonly added to fungicidal active ingredients to control the drift of fungicide and herbicide and promotes prolonged contact of herbicide and fungicide with crops by forcing the fungicide/herbicide to “cling” to the crops during spraying (XANTHAN Table 1 page 32), and to improve the dispersing, absorbing, spreading, sticking, and/or pest-penetrating properties of the fungicide spray mixture (MILLER page 1).
The artisan would be motivated to combine the aforementioned surfactants with the active fungicidal ingredient: fluoxapiproline adding water (as “carriers to volume”) since industry practice is to add water to the fungicidal application (WATER page 1) and since the aforementioned surfactants are known to force the fungicide/herbicide to “cling” to the crops during spraying (XANTHAN Table 1 page 32; MILLER page 1). The surfactants would therefore be expected to reduce drift of fluoxapiproline fungicide just as the surfactants are used in industry to reduce drift of other fungicides/herbicides. Thus, this helps teach instant claim 1.
Furthermore, the artisan would be expected to use either unmanned aerial vehicles and/or unmanned guided vehicles and/or tractor-mounted boom sprayers fitted with either pulse width modulation (PWM) or conventional nozzles as these are the commonly utilized fungicide application methods in the agricultural industry (see CLARKE pages 1-7). The artisan would also be expected to use rotating disc droplet applicators/”spinning disc rotary atomisers” (see DISC page 2) for the same rationale. Moreover, the artisan would be motivated to use the commonly-utilized fungicide application methods: unmanned aerial vehicles and/or unmanned guided vehicles and/or tractor-mounted boom sprayers fitted with either pulse width modulation (PWM) or conventional nozzles as these are routinely utilized in the agricultural industry (see CLARKE pages 1-7) and/or rotating disc droplet applicators (DISC page 2). This teaches instant claim 22. The artisan would be expected to and motivated to use one or more of these commonly-utilized fungicide applicators to apply the agrochemical formulation on crops thereby helping to teach instant claim 21. These applicators are also interpreted as “in-can” (instant claim 17) since these applicators all store the fungicide formulation in a tank (“can”) before spraying (“spraying” encompasses “spray liquid” of instant claims such as claim 18).
The claims 1, 5, 7-11, 15-16, and 18-21 contain variables such as concentrations/volume of individual ingredients of the agrochemical formulation, ratios, (molecular) weight, and temperatures that the artisan would be expected to routinely optimize in order to increase fungicidal effectiveness and decrease loss due to drift.
The artisan would be expected to routinely optimize concentrations/volumes of ingredients of the agrochemical formulations to maximize the fungicidal effectiveness and minimize the loss of fungicide due to drift. The artisan would be motivated to routinely optimize the concentrations/volumes of agrochemical formulation ingredients in order to maximize fungicidal application since this is routinely done in industry by diluting the ingredients in a sufficient volume of water to obtain thorough coverage but not to run-off (WATER page 1). Reasoning further by analogy: if one can dilute the concentrations (with water), one can also make the concentrations of ingredients within the agrochemical formulation more (or less) concentrated. This routine optimization in industry supports the Examiner’s argument of optimization of concentrations/volumes in the aforementioned claims, above.
Also, the artisan would be expected to vary other variables: such as ratios, (molecular) weight, and temperatures. The artisan would be motivated to routinely optimize ratios, (molecular) weight, and temperatures to maximize fungicidal application and minimize drift.
Moreover, patent law views differences in routinely optimized variables (herein concentrations/volume of individual ingredients of the agrochemical formulation, ratios, (molecular) weight, and temperatures) as not supporting the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentrations or temperature is critical. Moreover, neither the instant claims nor the Specification define these (routinely optimized) variables as 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); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) (Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). See MPEP 2144.05(II)(A).
Thus, instant claims 1, 5, 7-11, 13, and 15-22 are rejected under obviousness.
Conclusion
No claims are presently allowable as written.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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