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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/05/2026 has been entered.
Status of Claims
Amendment filed on 05/05/2026 is acknowledged.
Claims 3, 7, 11-12, 16, and 19 remain cancelled. Claims 24 and 25 are new.
Claims 1, 2, 4-6, 15, 18, 20, 21 and 23 are amended.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are pending and being examined on the merits herein.
Priority
This instant application 18251509, filed on 05/02/2023, is a 371 of PCT/EP2021080843, filed on 11/05/2021, which claims foreign priority to European Patent Office (EPO) 20206335.0, filed on 11/08/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 02/27/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is 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 2, 5, 8-10, 15, 18, 20 and 23-25 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 2 recites concentration ranges without defining the calculation basis of the concentrations. It is unclear whether these concentrations are based upon total weight of the component f), or the total weight of the agrochemical formulation. For the purpose of compact prosecution, all the concentrations appear in the claim set are interpreted as calculated based upon the total weight of the agrochemical formulation, unless indicated otherwise.
Claims 5, 8-10 and 23 each recites concentration ranges without defining the calculation basis of the concentration. It is unclear whether the concentration is based upon total amount of each category of ingredient, or it is based upon the total weight of the agrochemical formulation.
Claim 15 recites comprising components a) to d), f) and g) in the amounts including f1), f2), f3), f4) and f5). However, claim 2, which claim 15 depends upon, indicates component (f) comprises at least two formulants, while this claim does not mention how many formulants and which corresponding concentrations are supposed to be included. The claim’s metes and bounds are unclear. Further, Claim 15 recites “h) carrier to volume”, there is insufficient antecedent basis for this limitation in the claim because h) is not previously mentioned in the claim, or in claim 1, which claim 15 depends upon. For the purpose of compact prosecution, the claim is interpreted as at least two formulants from f1)-f5) when present, the amount ranges are as defined in the claim; and the “carrier to volume” refers to component g).
Claim 18 recites “the concentration of components b) to d) in a spray liquid prepared from the formulation is …”. It is unclear whether the calculation basis of the concentrations are based upon the final total volume of the spray liquid, or it is based upon the total weight or volume of the formulation prior to preparation of spray liquid, or it is based upon total amount of each individual category of the component in the formulation. For the purpose of compact prosecution, the concentration is interpreted as based upon the total volume of spray liquid.
Claims 18, 20 and 24-25 each recites “b) is a drift reducing polymer”; claims 18 and 20 further recites “b) is an oil”. It is unclear whether they refer to the same species of b) defined in claim 1 or not. If they refer to the same species of claim 1, the language is recommended to present as “where b) is the drift reducing ingredient selected from … according to claim 1” to overcome the rejection. If they refer to different ingredients, then the language requires “an additional …” or “further comprising”. The current claim description fails to express a definite meaning. For the purpose of compact prosecution, the claims are interpreted as they refer to the same species of b) as defined in 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 18 and 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.
Claims 18 and 20 reach recites “b) is a drift reducing polymer” and “b) is an oil”, which claim 1, which claims 18 and 20 depend upon, indicates “drift reducing ingredients … selected from the group consisting of poly(ethylene) oxides with …, hydroxypropyl guar, vegetable oils, and vegetable oil esters and diesters including …”. Because drift reducing polymer encompasses broader scopes than the poly(ethylene) oxide and hydroxypropyl guar, and oil is broader than vegetable oils and esters and diesters, claims 18 and 20 fail to further limit the subject matter, rather broadening the claim 1 scope. For the purpose of compact prosecution, these components are interpreted as the same specified drift reducing ingredients in claim 1.
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
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 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over Bayer (EP3248465, 11/29/2017, in record of 07/28/2025), in view of Bauer et al. (US2020/0060266, 02/27/2020).
Bayer throughout the reference directs to agrochemical compositions based on emulsion polymers; their use for foliar application and their application in aqueous crop protection flowable formulations for controlling agricultural pests, weeds, or diseases and reducing the wash-off of active ingredients by rainfall (e.g., Abstract), to improve the rainfastness of agrochemical active ingredients as well as the resistance to wash-off by rain of an agrochemical active ingredient [0023], teaching a composition of drift-reducing by a current of water.
Regarding instant claims 1a), claim 8, and claim 15a), Bayer teaches the suitable active agrochemical ingredients can be fungicides, herbicides, insecticides (e.g., [0027]-[0028]). Bayer teaches in Example 1 containing active ingredient fluopyram at 500 g/l [0143]. In Example 2 composition, Bayer teaches active ingredients spiroxamine at 200 g/l and fluopyram at 75 g/l [0146] known as fungicide [0031], amounts within the range of from 5 to 500 g/l in instant claim 1a), from 10 to 320 g/l in instant claim 8 and claim 15a).
Regarding instant claims 1b), 5, 15b), 18b), 20b), 23 and 25, Bayer teaches the agrochemical compositions comprising b) an emulsion polymer system comprising stabilizer polymer and core stabilizer copolymer component (e.g., [0018]), and suitable penetration promoters, wetting agents, spreading agents, and/or retention agents, including block-copolymer of polyethylene oxide and polypropylene oxide (e.g., [0124], vegetable oils such as sunflower oil, rapeseed oil, corn oil, soybean oil, olive oil, etc. (e.g, [0126]), rheological modifier such as guar gum [0116] (corresponding to drift reducing ingredients in instant claim 1b), 5, 18b), 20b), 23 and 25). Bayer exemplifies formulation containing active ingredient fluopyram and spiroxamine, oil at 160 g/l, and additive component (b) at 30 g/l [0143], while component (b) refers to polymers as drift reducing ingredients selected from Table 1 [0113] being preferably water soluble and water swellable [0103] with wash-off and stability results shown in Tables 3 and 4 respectively (drift reducing ingredient amount falling within from 0.01 to 50 g/l in instant claim 1b), or from 0.1 to 30 g/l in instant claim 15 b). Bayer further teaches the example formulations are made into 1% dilution in water for determination of aggregation of active ingredient particles and suspension [0142], thus, the resulting formulation containing drift reducing agent present at concentrations as 0.30 g/l for polymer (within the range from 0.05 to 3 g/l in instant claim 23, or from 0.02 to 0.6 g/l in instant claim 20 b) spray liquid), and 1.60 g/l for oil (amount falling within from 1 to 50 g/l in instant claim 5, or from 0.01 to 5 g/l in instant claim 18 b), or from 0.1 to 50 g/l in instant claim 20 b) formulation).
MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991). Bayer does not explicitly teach that the vegetable oils or polyethylene oxide polymers are drift reducing ingredients, the ingredients are evidenced by instant claims that they possess such property.
Regarding instant claims 1c), 6, 9, 15c), 18c) and 20c), Bayer teaches spreading agents can be included in the composition (e.g., [0019], [0118]), and Bayer indicates that ethoxylated branched alcohols with 2-20 EO units and ethoxylated diacetylene-diols, and mono-and diesters of sulfosuccinate sodium salts with branched or linear alcohols comprising 1-10 carbon atoms (8 carbons correspond to dioctylsulfosuccinate) are suitable for the formulation (e.g., [0124-0125] (corresponding to spreading agent species in instant claim 1c) with overlapping carbon numbers and claim 6). Bayer teaches in Example 1 the spreading agent non-ionic dispersants at 60 g/l and anionic dispersants at 15 g/l [0143], and in Example 2 non-ionic dispersants at 37 g/l, with at least one amount falling within from 5 to 150 g/l in instant claim 1c), from 10 to 80 g/l in instant claims 9 and claim 15c), from 10 to 40 g/l in instant claim 20c) formulation. Bayer teaches to make a 1% diluted formulation of the example formulations [0142], resulting in the spreading agents shown above range from 0.15 to 0.6 g/l, overlapping with the range from 0.01 to 5 g/l in instant claim 18c), or from 0.5 to 4 g/l in instant claim 20 c) spray liquid.
Regarding instant claims 1d), 10, 15d), 18d) and 20d), Bayer teaches uptake enhancing agents, e.g., suitable penetration promoters, wetting agents, spreading agents, and/or retention agents, including ethoxylated branched alcohols, ethoxylated mono- or diesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 10-40 EO units (e.g., [0124]-[0125]) (corresponding to uptake enhancing agents with same carbon numbers and overlapping EO units as recited in instant claim 1d)), vegetable oils as penetration promoters (e.g., [0126]) thus enhancing uptake. Bayer exemplifies oils in Example 2 in the amounts of 160 g/l [0146] (falling within the range from 10 to 180 g/l in instant claim 1d), same as the top end range 160 g/l in instant claim 20d) formulation, close to (around 94%) the top end 150 g/l in instant claims 10 and 15d)); Bayer also teaches the 1% diluted water formulation of the example formulations, resulting in amount 1.6 g/l [0142] (falling within from 1 to 20 g/l in instant claim 18 d), and close to low end of 2 g/l in instant claim 20d) spray liquid).
Regarding instant claims 1f), 1g), 2, 14, 15f), 15g) as interpreted, Bayer teaches the composition can include rheological modifiers (e.g., [0018]), and other formulants including antifoams, antifreeze, buffers, stabilizers, etc. (e.g., [0118]) (corresponding to other formulants in instant claims 1f) and 2). Bayer exemplifies in Example 1 [0143] fluopyram composition contains 500 g/l fluopyram, rheological modifier (corresponding to f2) at 2.4 g/l, antifreeze (corresponding to f4) at 80 g/l, antifoam (corresponding to f3) at 2 g/l , non-ionic dispersants (corresponding to f1) 60 g/l, and anionic dispersants (corresponding to f5) 15 g/l, with carrier water added to volume (corresponding to claims 1g), and claim 15g)) [0143]; while Bayer indicates non-ionic dispersants can be suitable non-ionic surfactants (e.g., [0114]), and anionic dispersants can be anionic surfactants (e.g., [0115]). Thus, the formulants in Example 1 correspond to species in instant claim 14), with formulant amounts falling within amount ranges recited in instant claims 2 and 15 f).
Regarding instant claim 13, Bayer specifies that the active ingredient can be preferred insecticides, fungicides, or herbicides including bixafen, prothiconazole, fluopyram, fluopicolide, spirotetramat, tetraniliprole, ethiprole, imidacloprid, flupyradifuron, triafamone, tembotrine, and many others [0028-0032].
Regarding instant claim 17, Bayer indicates that it is most desirable for practical purposes to provide highly storage-stable aqueous pesticide concentrates having no organic solvents or only solvent amounts to dissolve a crystalline pesticide in the form of an emulsion and which can be diluted easily with pure water, thereby forming stable dilute emulsions for application purposes. An aqueous suspension concentrate, suspo-emulsion, aqueous suspension, capsule suspension and concentrated emulsion which is stable under storage for at least two years is desired [0013]. Therefore, Bayer teaches the formulation as an in-can ready to use formulation with no need adding additional adjuvants or other ingredients in a spray tank.
Regarding instant claim 21, Bayer teaches the formulations by dilution with water can be converted into homogeneous spray liquids. These spray liquids are applied by customary methods, i.e., for example, by spraying, pouring or injecting [0128] to treat all plants and plant parts [0132]. Bayer also indicates that the compositions should have an excellent rainfastness and the spray dose in field and interval of spray applications on crops can be adjusted based upon environmental conditions [0014]. Formulation can be diluted and adjusted to whatever concentration needed for field spray.
Regarding instant claim 22, Bayer teaches the agrochemical formulations comprising fungicide, insecticide, or herbicide, and Bayer teaches the product comprising an agrochemical formulation with one or more agrochemical compounds for controlling harmful organisms as presented above. The formulation taught by Bayer would be capable of being applied by a UAV, UGV, PWM sprayers, because capable of being applied by a special spray vehicle is inherent property of the composition, which has been taught by Bayer.
Bayer does not explicitly teach polyalkyleneoxide modified heptamethyltrisiloxanes, or dioctylsulfosuccinate in the agrochemical composition as recited in instant claim 6. Bayer does not teach hydroxypropyl guar, or the average molecular weight from 0.5 to 12 million g/mol of polyethylene oxides as the drift reducing ingredient b) as recited in instant claims 4 and 24.
Bauer teaches throughout the reference of drift-reducing components in compositions for plant treatments (e.g., Abstract).
Bauer teaches that the composition can include active ingredients selected from the group consisting of pesticides, phytohormones, preferably growth regulators, biological pest-control agents, fungicidal copper compounds, and/or repellents (e.g., [0019]). Bauer teaches suitable retention promoters include all substances that reduce dynamic surface tension, for example dioctyl sulfosuccinate (corresponding to instant claim 6), or increase viscoelasticity, for example hydroxypropyl guar polymers (e.g., [0074]), which read into the drift reducing polymers in instant claims 4 and 24.
It is prima facie obvious for one with ordinary skills of art prior to filing date to combine Bauer and Bayer’s teaching to select and implement known components to arrive at current invention. Because Bauer specifies that hydroxypropyl guar and dioctyl sulfosuccinate is an effective retention and drift reducing agent, and Bayer teaches composition with substantial components to work together to reduce wash-off of active ingredients, meanwhile already mentions that guar gum is suitable rheological modifier and mono-and diesters of sulfosuccinate sodium salts with branched or linear alcohols comprising 1-10 carbon atoms (8 carbons correspond to dioctylsulfosuccinate) are suitable for the formulation, it would have provided reasonable expectation of success to incorporate Bauer’s specific information on hydroxypropyl guar and sulfosuccinate and hydroxypropyl guar as a drift-reducing component into the composition. Therefore, the claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding the ingredients taught by prior art do not always present in the same functional categories such as drift reducing ingredients, spreading agents, or uptake enhancing agents as instantly claimed, it is well known in the field of art, ingredients can have multiple functions and the functions do overlap with each other in terms of effects when agrochemical formulation is being applied in field. In addition, 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. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, the functions used for categorizing the ingredients are the properties of the ingredients, while the specific categorized ingredients all have been taught by prior art, and therefore, the functions of ingredients as instantly claimed would necessarily present in prior art. For example, vegetable oils are as instantly claimed as drift reducing ingredients, and therefore, when prior art formulation uses vegetable oils, they can present as drift reducing ingredients, in addition to the penetrating promoter property taught by prior art.
Furthermore, MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.). Therefore, even if some of the functions or properties are not recognized in prior art, as long as the components remain the same, the functional properties exist.
Regarding combining these specific ingredients from prior art teaching into the embodiment as instantly claimed, it must be remembered 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. AG. 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.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is... a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of various disclosed ingredients including all the categorized ingredients as instantly claimed, as discussed above, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Regarding claims 18 and 20 further, diluting the formulation to prepare it as a spray liquid does not provide structural limitations to the actual formulation. Since Bayer teaches the formulation for agrochemical spray and also uses a diluted formulation to examine aggregation of the formulation as presented in detail above, an artisan with ordinary skills in the field can apply the formulation at whatever diluted concentration as needed for the formulation to be applied in field. “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).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, concentrations taught by prior art overlap the ranges of instant claims, carbon numbers and EO units overlap with prior art as discussed above. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
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, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 5-12, 14-15 and 17-18 of copending Application No. 18/251,413 (hereafter, App’413) in view of Bayer (EP3248465, 11/29/2017, in record of 07/28/2025).
Although the claims at issue are not identical, they are not patentably distinct from each other.
App’413 claims direct to an agricultural adjuvant composition for tank-mixture with a crop protection product comprising a) one or more drift reducing ingredients selected from polyethylene oxides having an average molecular weight from 0.5 to 12 million g/mol, a hydroxypropyl guar, vegetable oils and vegetable oil esters and diesters, present from about 2 to about 25% by weight, b) one or more rain-fast additives, d) one or more uptake enhancing agents, selected from ethoxylated alcohols, propoxy-ethoxylated alcohols, ethoxylated carboxylic acids, propoxy-ethoxylated carboxylic acids, or ethoxylated mono,-di or triesters of glycerine comprising fatty acids with 8-18 carbon atoms and an average of 5-40 EO units, from about 30 to about 55% by weight, e) other formulants, f) optionally one or more carriers to 100% with a), b), d), e) component amounts (e.g., claims 1, 9 and 17-18, corresponding to instant claim 1b, 1c, 1d, 1f, and 1g); instant claims 4, 9-10, and 24-25). US’413 recites drift reducing ingredients amount from 4 to 20% or from 5 to 15% (Claim 5) selected from the group comprising vegetable oils and vegetable oil esters and diesters (claim 2), corresponding to instant claim 5; uptake enhancing agents selected from the group comprising ethoxylated alcohols, ethoxylated branched alcohols, and others with carbon atoms and EO units (claim 3, corresponding to spreading agents in instant claims 1 and 6); component e) comprises at least one antifoam substance and at least one antifreeze agent (claim 8, corresponding to other formulant in instant claims 1, 2, and 14-15), while claims 5-7 recite amounts of a), b), d) percentage amounts. US’413 recites active ingredient is selected from a group including trifloxystrobin, bixafen, prothioconazole, inpyrfluxam, isoflucypram, and others (claim 10, corresponding to instant claims 1a) and 13). US’413 recites diluted amount of the formulation being applied (claims 11-12, corresponding to instant claims 17-18 and 20-21) on plant or crops with textured leaf surfaces (claim 14), capable of being applied by a UAV, UGV, PWM for controlling harmful organisms (claim 15, corresponding to instant claim 22).
US’413 does not recite the component amounts in g/l as recited in instant claims, rather in %.
As discussed in detail above and incorporated herein, Bayer teaches the component amounts with concentration in g/l with overlapping amount ranges.
It would have been prima facie obvious for one of ordinary skills in the art to incorporate Bayer’s teaching into US’413 to arrive at current invention. Because both formulations share same components with overlapping functions for the same intended use, one would have reasonable expectation of success to combine them. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-10, 13-15, 17-18 and 20-24 of co-pending Application No. 18/251,816 (hereafter US’816) in view of Bayer (EP3248465, 11/29/2017, in record of 07/28/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
US’816 recites components of a), b), c), f), g) and similar amounts (e.g., claims 1-2) corresponding to instant claim 1, while swapping e) component of rain-fast additives (claim 1) with d) component of one or more uptake enhancing agents in instant claim 1, with US’816 defines component f) (claim 2, corresponding to instant claim 2), component b) comprising polyethylene oxides (claim 3, corresponding to instant claim 3), very similar claims 4-6, 8-10, 13-15, 17-18 and 20-22 as instant claims 4-6, 8-10, 13-15, 17-18, 20-22, except for swapped component e) amount variations differ from those in instant claims of component d). US’816 indicates that component e) is an emulsion polymer or polymer dispersion agent (claim 7). US’816 provides examples of formulations in claims 23 and 24 (corresponding to instant claim 1).
US’816 does not recite component d) of one or more uptake enhancing agents as recited in instant claim 1.
As discussed in great detail above and incorporated herein, Bayer teaches the component d) of uptake enhancing agents including ethoxylated alcohols.
It would have been prima facie obvious for one of ordinary skills in the art to incorporate Bayer’s teaching into US’816 to arrive at current invention. Because both formulations share most components with overlapping functions for the same intended use, one would have reasonable expectation of success to combine them. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 4-6, 8-22 and 24 of co-pending Application No. 18/251,409 (hereafter US’409) in view of Bayer (EP3248465, 11/29/2017, in record of 07/28/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
US’409 recites an agricultural adjuvant composition for tank mixture with a crop protection product, very similar to instant claims, comprising one or more drift reducing ingredients, one or more spreading agents, one or more uptake enhancing agents, other formulants, and carriers to volume (claims 1 and 24; corresponding to instant claim 1), and an active ingredient (claim 17). It recites drift reducing agents from polyethylene oxides (claim 4), spreading agents (claim 5), uptake enhancing agents (claim 6), other formulants (claim 12), component amounts in % of the formulation (claims 8-11 and 13-16), and composition amounts capable of being applied in field (claims 18-20) for application on a plant or crops (claim 21) and for controlling harmful organisms capable of being applied by a UAV, UGV, PWM (claim 22).
US’409 does not use concentrations in g/l, rather in percentage %.
Bayer teaches a composition with the claimed components with amounts in g/l as discussed above in great detail and incorporated herein.
It would have been prima facie obvious to combine Bayer with the composition of US’409 to arrive at current invention, because both share common ingredients and intended use, one would have reasonable expectation to combine the compositions for success. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-7, 9-11, 15-19, and 21-28 of co-pending Application No. 18/251,855 (hereafter, US’855, reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
US’855 recites an agrochemical formulation having all the elements of current invention: the formulation comprising a), b), c), d), f) and g) (claim 1) as components in instant claim 1 with overlapping amounts and claims 23-25. US’855 recites claims 2-7 and 9-11 corresponding to instant claims 2-6 and 8-10 with identical or overlapping amount ranges. Claim 15 in US’855 recites the same ingredients as instant claim 13. Claim 16 corresponds to instant claim 15 with overlapping amount ranges, claims 17 and 22 corresponding to instant claim 21, claim 18 corresponding to instant claim 17, claims 19 corresponding to instant claim 18 with overlapping amount ranges, claim 21 corresponding to instant claim 20 with overlapping amount ranges, claim 23 in US’866 corresponding to instant claim 22. US’855 recites applying the formulation onto crops (claim 24), and provides formulation examples with various active ingredient species in claims 25-28 (corresponding to instant claim 1). US’855 recites component f) comprises rheological modifier, antifoam substances, and antifreeze agent (claims 25-28), corresponding to instant claim 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-2, 4-5, 8-9, 13-18 and 20-22 of co-pending Application No. 18/251,506 (hereafter US’506), in view of Bayer (EP3248465, 11/29/2017, in record of 07/28/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
US’506 recites a composition comprising component of a), b), d), f), and g) (claim 1) and amounts as recited in instant claim 1, except replacing component c) of one or more spreading agents in instant claim 1 with one or more rain-fast additives e) (claim 1). Claims 2, 4-5, 8-9, 13-18, 20-22 in US’506 recite components and overlapping amounts corresponding to those in instant claims 2, 4-6, 8-10, 13-15, 17-18, 20-25, only differing of component c) in instant claim is rain-fast additives and its amount.
US’506 does not recite component c) spreading agents as recited in instant claim 1, and component c) species as recited in instant claim 6, and component c) amount in instant claims 9, 15, 18-20.
Bayer teaches spreading agent and its amounts as disclosed above in detail and being incorporated herein.
It would have been prima facie obvious to combine Bayer and swap the rain-fast additive in US’506 composition with spreading agents to arrive at current invention, because both share common ingredients and intended use, one would have reasonable expectation to combine the compositions for success. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 6-8, and 11-17 of co-pending Application No. 18/863,772 (hereafter US’772), in view of Bayer (EP3248465, 11/29/2017, in record of 07/28/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
US’772 recites a composition comprising component of a)-f) components (claim 1) and amounts (claims 1-2) corresponding to instant claims 1-2, 8-10, 15 and 23-25, except instant component species are not fully defined in US’772 and one or more spreading or uptake promoting additives d) in US’772 is split into component c) as spreading agents and d) uptake enhancing agents in instant claim 1. US’772 claims 3 and 6-8, and 11 recite the component species corresponding to instant claims 1b) and 4-5 with overlapping molecular weight, component d) species with overlapping EO units in instant claims 1d) and 6, and component a) species in instant claims 1a) and 13. US’772 claims 12-13 recites formulants overlapping with those in instant claim 14. Claims 14-17 in US’772 recite formulation diluted amounts and application corresponding to those in instant claims 21-22, differing of component c) in instant claim is rain-fast additives and its amount.
US’772 does not recite the formulation is in can formulation as recited in instant claim 17, or diluted formulation in a spray liquid concentrations as in instant claims 18 and 20.
Bayer teaches the formulation can be in can formulation and the diluted formulation concentrations as discussed above in detail and incorporated herein.
It would have been prima facie obvious to combine Bayer with US’772 composition to arrive at current invention, because both share common ingredients and intended use, one would have reasonable expectation to combine the compositions for success. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-6, 8-10, 13-15, 17-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 6-9, 12-13 and 15 of co-pending Application No. 18/863,767 (hereafter US’767), in view of Bayer (EP3248465, 11/29/2017, in record of 07/28/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
US’767 recites an agrochemical composition comprising component of a)-e) components (claim 1) and amounts (claims 1-2) corresponding to components b), c) or d), f) and g) in instant claims 1-2, 8-10, 15, 18 and 23-25 with overlapping amount ranges, except component a) is not recited and instant component species are not fully defined in US’767 and one or more spreading or uptake promoting additives d) in US’767 is split into component c) as spreading agents and d) uptake enhancing agents in instant claim 1. US’767 claims 3 and 6-9 recite the component species corresponding to instant claims 1, 4-6 and 14 with overlapping molecular weight, or EO units. US’767 claims 12-13 recites spray volume overlapping with those in instant claim 21. Claim 15 recites application vehicles corresponding to instant claim 22.
US’767 does not recite the active ingredient and species in the formulation as recited in instant claim 1 and 13, it does not recite the formulation is in-can formulation as recited in instant claim 17.
Bayer teaches the formulation comprising active ingredients and its species, and the formulation can be in can formulation as discussed above in detail and incorporated herein.
It would have been prima facie obvious to combine Bayer with US’767 composition to arrive at current invention, because both share common ingredients and intended use, one would have reasonable expectation to combine the compositions for success. The claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's remarks/arguments filed on 05/05/2026 have been fully considered.
35 U.S.C. 112 rejections
Applicant remarks that all 35 U.S.C 112 rejections have addressed in claim amendments.
Amended claims still have some previous 35 U.S.C. 112 and new issues that need to be addressed as presented above in detail in the office action.
Art rejections
Applicant asserts that combination of prior art Bauer with Bayer involves impermissible hindsight to select the specific component for use in formulation as defined in claim 1.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant asserts there is no clear teaching in Bayer alone or in view of Bauer of combining component b), c), and d) as defined in claim 1, including where each component is selected from the list and/or definition of each component in claim 1; and components b), c) and d), where all three components are included at the required concentrations.
All components including the concentrations have been taught by prior art, especially concentration alone generally does not constitute patentability. The ingredients vary in definitions, categories, or functions, in prior art appearances compared to instant claims, however, compounds cannot have mutually exclusive properties, these definitions, categories, or functions are basically properties of the compounds, and they are not separable from the compounds. Therefore, they would necessarily present in prior art. The most relevant paragraphs from the office action presented above in detail are copied below for reference:
Regarding the ingredients taught by prior art do not always present in the same functional categories such as drift reducing ingredients, spreading agents, or uptake enhancing agents as instantly claimed, it is well known in the field of art, ingredients can have multiple functions and the functions do overlap with each other in terms of effects when agrochemical formulation is being applied in field. In addition, 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. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, the functions used for categorizing the ingredients are the properties of the ingredients, while the specific categorized ingredients all have been taught by prior art, and therefore, the functions of ingredients as instantly claimed would necessarily present in prior art. For example, vegetable oils are as instantly claimed as drift reducing ingredients, and therefore, when prior art formulation uses vegetable oils, they can present as drift reducing ingredients, in addition to the penetrating promoter property taught by prior art.
Furthermore, MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.). Therefore, even if some of the functions or properties are not recognized in prior art, as long as the components remain the same, the functional properties exist.
Regarding combining these specific ingredients from prior art teaching into the embodiment as instantly claimed, it must be remembered 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. AG. 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.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is... a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of various disclosed ingredients including all the categorized ingredients as instantly claimed, as discussed above, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Applicant asserts that the amended claim 23 and new claims 24-25 are patentable over the cited references.
This office action has addressed all elements in amended claim set filed on 05/05/2026. These claims are taught by prior art as well as the other claims. Even though prior art does not include all the alternative species of options as instantly claimed, because one of the species has been taught by prior art, prior art reads into the claim. MPEP 2131.03.I states “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant remarks on the claimed invention having many benefits, advantages, features, or improvements, such as improve efficacy, storage, reduced size of spray deposits and low spray volumes, improving uptake, spreading and biological efficacy, reduced drifting and avoiding significant loss of the formulation, etc.
It is noted that the above features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, prior art teaches the composition, these features are properties or intended use of the composition, therefore, they would necessarily present in prior art.
Double Patenting Rejections
Applicant does not take action on these rejections for the time being.
The rejections are updated based upon claim amendments and they are remained.
Please refer to the entire office action as a complete response to the remarks/arguments.
Conclusion
No claims are allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
Prosecution Insights