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 .
Election/Restrictions
Applicant’s election with traverse of Group II, claims 128, and 139-146, in reply filed on 11/18/2025 is acknowledged.
Claims 129-131, 133-135, 137-138 and 147-148 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/18/2025.
Applicant traverses the restriction requirement on the grounds that the special technical feature is the “dry solid emulsifiable powder or emulsifiable granule composition”, not only the guest host/ molecular structure comprising tau-fluvalinate and cyclodextrin and at least one agricultural acceptable filler.
Applicant’s traversal is not persuasive. Claim 132 of the claim set filed 11/12/2024, and referenced in the restriction requirement, does not recite an emulsifiable powder. Additionally, both Koren and Teshler desire an emulsion (see Koren at p. 33, para. 2 and Teshler [0019]). Finally, because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. emulsifiable powder.
Claim Objections
Claim 140 is objected to because of the following informalities:
Claim 141 recites “cyclodextrin., and/or” which is a minor informality because of the period in the middle of the claim. Additionally, limitations (ii) and (iii) appear to be the same.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 – New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 128 and 139-146 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 128 recites the amended phrase “wherein the tau-fluvalinate is dispersed homogenously in the water” (emphasis added). The examiner is unable to find support for the tau-fluvalinate being dispersed homogenously in the water.
To satisfy the written description requirement, “the missing descriptive matter must necessarily be present in the [original] application’s specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998).
Even if the recitation were obvious over the disclosure of the Specification, that is not the standard for satisfaction of the written description requirement. See In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (‘“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.’”).
Applicant has cited paragraphs 3, 12, 30, 89 and 110 for support in amending claim 128. Paragraph 30 discloses “a substantial proportion of tau-fluvalinate in the emulsion is dispersed homogeneously in the emulsion.” However, the specification and previous claim sets do not discloses the tau-fluvalinate being dispersed homogenously in the water and such a disclosure is not necessarily present in the disclosure as originally filed.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 141-142 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The following claims disclose broader and narrower limitations and recite “and/or” to separate them. While this includes the limitations in the alternative, in combination (i.e., and) the limitations render the claims indefinite.
Claim 141 discloses recites the narrow recitation of cyclodextrin in an amount of 46%w/w [line 3] and tau-fluvalinate in an amount of about 20% w/w [line 7], and the claim also recites the weight ratio of tau-fluvalinate to cyclodextrin is in a range of 1:1 to 1:4 [line 12] which is the broader statement of the range/limitation.
Claim 142 recites the broad recitation filler in an amount from 1 to about 30% w/w [line 11], and the claim also recites the filler is present at 11.32% w/w [line 16] which is the narrower statement of the range/limitation.
Claim 142 recites the broad recitation “the water immiscible liquid is an oil”, and the claim also recites the “water immiscible liquid is” specific liquids at (iv)-(vi) which is the narrower statement of the range/limitation. The specific liquid constitute a narrower range due to the closed claim language which makes it unclear if, for example, the water immiscible liquid is a mineral oil (iv) or if the water immiscible liquid is methylated soybean oil (vi).
Claim 142 recites the broad recitation the water immiscible liquid is present in amounts from 0.1-10% w/w (vii), and the claim also recites the water immiscible liquid is present at 3.5 % w/w (viii) which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination the claims will be interpreted in the alternative form of the recited “and/or.”
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.
1) Claims 128, 139-143 and 145 are rejected under 35 U.S.C. 103 as being unpatentable over Koren et al. (WO 2019/215645 A1, publication date 11/14/2019; cited in IDS) in view of Wirth et al. (US 2008/0200561 A1, publication date 09/21/2008).
Regarding instant claims 128, and 139-142, Koren “relates to the use of cyclodextrins for increasing biological activity and improving retention and/or bioavailability of agrochemicals such as pesticides” [abstract]. In one example Koren discloses “Cyclodextrin complexation of tau-fluvalinate with CAVASOL® W7M was also performed by the co-precipitation method at pesticide-cyclodextrin weight % ratios of 1: 1 to 1:5. It was prepared by dissolving both the pesticide and the cyclodextrin into acetone. After the reactions, the solvent was evaporated, and the dried cyclodextrin pesticide complex was obtained” (see para. 2 of Ex. 4, on page 87). Koren also discloses that “[t]he agrochemical compositions according to the invention, for example in the dosage forms which are conventional for liquid preparations, can be applied either as such or after previously having been diluted with water, that is to say for example as emulsions” [p. 33, para. 2]. Finally, Koren discloses the compositions may comprise additional agrochemicals [p. 97, claim 16].
According to the instant specification at paragraph 75, CavasolTM W7M is methyl-beta-cyclodextrin (i.e., instant claim 140 (ii)).
Koren does not disclose an emulsifiable powder or granule.
Wirth relates to water emulsifiable granules comprising an agrochemical compound and boron fertilizers, and to their use as novel, advantageous formulations of crop protection [abstract]. Wirth discloses that mixing micronutrients (i.e., boron fertilizer) “with agrochemical products in the same vessel prior to application in order to save time and costs, as well as passing through the field several times, thus to prevent the destruction of the soil texture by the farm equipment” [0003]. Wirth also discloses that “the water emulsifiable granules formulations according to the invention are very
highly suitable for the application of the agrochemical active compounds contained to insects, fungi, plants and/or their habitat” [0013], such as fluvalinate [0045]. Wirth discloses the granules comprise agrochemical active compounds (i.e., pesticide) from 1-70% w/w [0078] and teaches the granules may comprise fillers [0082].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the tau-fluvalinate of Koren with the emulsifiable granules of Wirth. One would have been motivated to make this combination because Wirth discloses it is advantageous to formulate pesticides with micronutrients. One would have also been motivated because Wirth discloses emulsifiable granules and Koren desires emulsions. One would have had an expectation of success because Wirth discloses that the granules may comprise fluvalinate and Koren discloses the cyclodextrin compositions may comprise additional agrochemicals. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
In making this combination, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the granules to comprise 1-70% w/w tau-fluvalinate, because Wirth desires a composition comprising 1-70% w/w agrochemical active. See MPEP 2144.07.
As a result the of the prior art would have overlapped with the instantly clamed range of the guest/host complex, and so a prima facie case of obviousness exists. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). Similarly, the instantly claimed mass ratio of tau-fluvalinate to cyclodextrin (2:1 to 1:10; instant claim 139 and 1:1 to 1:4; instant claim 141) overlaps with the range of the prior art (1:1 to 1:5) and so a prima facie case of obviousness exists.
Finally, considering Wirth, it is directed to a water emulsifiable granule, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have added water to emulsify the composition.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to formulated an oil in water emulsion comprising a dried emulsifiable granule composition and water. Wherein the emulsifiable granule comprises a guest/host molecular structure comprising tau-fluvalinate and methyl-beta-cyclodextrin within the claimed amounts and at the claimed ratios, as well as an additive (boron fertilizer) and a filler. Since the prior art composition contains substantially the same components, i.e., cyclodextrin and tau-fluvalinate, in the same relative proportions as instantly claimed, it would be expected to inherently possess the same chemical and physical properties, such as the tau-fluvalinate being dispersed homogenously in the water.
Regarding instant claim 142, Wirth discloses fillers may be present in amounts from 0 to 20% w/w [0082]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range for fillers (1-30% w/w; instant claim 142) overlaps with the range of the prior art and so a prima facie case of obviousness exists.
Regarding instant claim 143, Wirth discloses the granules may comprise sodium lauryl sulfate as a wetting agent [0070].
Regarding instant claim 145, Wirth discloses the granules may comprise lignosulfonates as dispersing agents [0071].
2) Claims 144 and 146 are rejected under 35 U.S.C. 103 as being unpatentable over Koren et al. (WO 2019/215645 A1, publication date 11/14/2019) in view of Wirth et al. (US 2008/0200561 A1, publication date 09/21/2008) as applied to claims 128, 139-143 and 145 above, and further in view of UA ‘068 (UA 120068 C2, publication date 09/25/2019; citing English machine translation).
Koren and Wirth, which are taught above, differ from the instant claims insofar as they do not teach a linear dodecyl benzene sulfonate in 2-ethylhexanol. Wirth desires a calcium dodecylbenzene sulfonate (see last line of [0071]).
UA ‘068 discloses a fungicidal composition [abstract] preferably in the form of a wettable powder [p 5, para. 8 (middle of page)]. UA ‘068 discloses anionic surfactants which may be used as dispersants [p. 3, penultimate paragraph]. According to UA ‘068 particularly suitable anionic surfactants include linear dodecylbenzenesulfonates in 2-ethylhexanol [p. 4, para. 2].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected the linear dodecylbenzene sulfonate in 2-ethylhexanol of UA ‘068 because UA ‘068 discloses it is a suitable dodecylbenzene sulfonate for solid biocidal formulations.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to formulated a granule, as taught by Koren and Wirth to further comprise a linear dodecyl benzene sulfonate in 2-ethylhexanol.
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 128, and 139-146 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,127,559 B2 in view of Koren et al. (WO 2019/215645 A1, publication date 11/14/2019) in view of Wirth et al. (US 2008/0200561 A1, publication date 09/21/2008).
The conflicting claims of ‘559 disclose a quest host molecular structure of cyclodextrin and folpet at a weight ratio of 1:2 folpet to cyclodextrin [claim 3].
The conflicting claims do not disclose an emulsion and tau-fluvalinate.
Koren “relates to the use of cyclodextrins for increasing biological activity and improving retention and/or bioavailability of agrochemicals such as pesticides” [abstract]. Suitable pesticides include folpet [p. 23, last paragraph] and tau fluvalinate [p. 42, first paragraph]. Koren also discloses that “[t]he agrochemical compositions according to the invention, for example in the dosage forms which are conventional for liquid preparations, can be applied either as such or after previously having been diluted with water, that is to say for example as emulsions” [p. 33, para. 2].
Koren does not disclose emulsifiable granules.
Wirth relates to water emulsifiable granules comprising an agrochemical compound and boron fertilizers, and to their use as novel, advantageous formulations of crop protection [abstract]. Wirth discloses that mixing micronutrients (i.e., boron fertilizer) “with agrochemical products in the same vessel prior to application in order to save time and costs, as well as passing through the field several times, thus to prevent the destruction of the soil texture by the farm equipment” [0003]. Wirth also discloses that “the water emulsifiable granules formulations according to the invention are very highly suitable for the application of the agrochemical active compounds contained to insects, fungi, plants and/or their habitat” [0013], such as fluvalinate [0045]. Wirth discloses the granules comprise agrochemical active compounds (i.e., pesticide) from 1-70% w/w [0078] and teaches the granules may comprise fillers [0082].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the folpet of the conflicting claims with the tau-fluvalinate of Koren because Koren discloses they are suitable for the same purpose. The skilled artisan would have been motivated to have substituted the tau-fluvalinate of Koren in place of the folpet of the conflicting claims for active agent with a reasonable expectation of success. The simple substitution of one known element in place of another in order to achieve predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Additionally, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the tau-fluvalinate of the conflicting claims and Koren with the emulsifiable granules of Wirth. One would have been motivated to make this combination because Wirth discloses it is advantageous to formulate pesticides with micronutrients and Koren desires an emulsion. One would have had an expectation of success because Wirth discloses the granules may comprise fluvalinate and Koren discloses the cyclodextrin compositions may comprise additional agrochemicals. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Conclusion
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612