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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 Apr 2026 has been entered.
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 27 Apr 2026 has been entered.
Claims 1, 4, 6-12, and 15-24 remain pending in the application.
Claims 1 and 24 are amended.
Claims 5, 13 and 14 are cancelled.
Claims 6-12, 15 and 17-23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1-4, 16 and 24 are under consideration to the extent of the elected species, i.e., that the solvent is water and the binder is polyethylene glycol.
Rejections Withdrawn
Rejections Pursuant to 35 USC § 112
The rejection pursuant to 35 U.S.C. 112(b) set forth in the Final Office Action mailed 25 Feb 2026 are hereby withdrawn in light of applicants amendment of the claims.
Rejections Maintained
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 1-4, 16 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Fechner et al. (US 2011/0185781, published 04 Aug 2011, as listed in IDS filed 25 May 2023) as evidenced by the instant specification.
Fechner teaches organic pigment compounds such as Pigment Red 254 ([0047]). As evidenced by the instant specification, PR 254 is the name for 3,6-bis(4- chlorophenyl)-2,5-dihydropyrrolo[3,4-c]pyrrole-1,4-dione (page 16 lines 5 and 6). This compound has the structure
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which matches the R1 and R2 -of hydrogen and the R3 and R4 of 4-chlorophenyl of formula (I) as recited in claims 1-4 and 16.
Fechner further teaches aqueous pigment preparations comprising components including at least one organic pigment ([0008]), one or more hydrotropic substances ([0030]) and water ([0032]). Fechner teaches that the water-soluble hydrotropic substances may be polyethylene glycol (i.e. the elected species of binder) ([0063]). Fechner teaches that the organic pigment component is present from 5-80 weight% ([0036]) and that component (E) of the formulation (i.e. hydrotropic substance such as polyethylene glycol) is present from 0-30 weight% ([0040]), rendering obvious the 3-20% of a compound of formula (I) and 5-50% of binder as in the instant claims.
Fechner further teaches that the pigment preparations of the invention are useful for coloration of macromolecular materials such as seed ([0068]), rendering obvious that the pigment composition is used as a seed surface composition.
Fechner does not expressly teach selecting the Pigment Red 254 compound as part of a composition with polyethylene glycol and water in the amounts above with sufficient specificity to rise to the level of anticipation.
However, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have formed a composition for coloring seeds where the composition comprises 5-80 weight % pigment red 254, 0-30 weight % polyethylene glycol and water. One of ordinary skill in the art would have been motivated to do so as pigment preparations are taught by Fechner as suitable for coloring seeds and each of the components of pigment red 254, polyethylene glycol and water are suitable for such compositions and the amounts described above are taught as suitable for such compositions. One of ordinary skill in the art would have a reasonable expectation of successfully forming a seed coloring composition with pigment red 254, polyethylene glycol and water, as taught by Fechner, since the modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Fechner.
Response to Arguments
Applicant's arguments filed 27 Apr 2026 have been fully considered but they are not persuasive.
Applicant argues that Fechner addresses a separate goal of colloidal stability from the problem of the instant invention which is film formation and adhesion (page 2 of remarks). The examiner is not persuaded by this as the teachings of Fechner render obvious the composition presently claimed and the having a goal of colloidal stability for the composition does not detract from the obvious composition. The examiner notes that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.").
Applicant argues that the rejection relies on impermissible hindsight reconstruction by “cherry-picking” from several lists within Fechner to recreate the invention (page 2 of remarks). This is not persuasive as 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). In the instant case, it is obvious to form compositions comprising pigment PR254 and polyethylene glycol as these are components taught as suitable for the compositions by Fechner. Applicant argues that one would not be taught by Fechner to use polyethylene glycol in a seed coating system as a binder (page 2 of remarks). This is not persuasive as Fechner clearly teaches polyethylene glycol as an example for component (E) of the composition ([0063]), rendering it obvious to include it in such compositions. Referring to the glycol component as a binder does not render it non-obvious to include the glycol as Fechner teaches the same component for the compositions.
Applicant argues that the rejection does not follow the actual teaching of Fechner but instead assembles a mosaic of isolated disclosures with no teaching to select the specific combination identified in the rejection while simultaneously ignoring Fechner’s core teaching using a copolymer dispersant (pages 2-3 of remarks). Applicant argues that one would not replace the dispersant system taught by Fechner with an optional additive (page 3 of remarks). This argument is not persuasive as the rejection is not based on replacing the dispersant system of Fechner with an optional additive but instead is based on the obviousness of forming compositions comprising the pigment, glycol and water components as taught by Fechner. The examiner acknowledges that Fechner teaches other components to include in the compositions (e.g. [0034-0042]) but the instant claims are broad enough from use of the open ended comprising language to encompass additional components. While the identified components of PR254 and polyethylene glycol are selected from lists including other alternative components, each of the components are understood as obvious to include as they are known to be suitable for such compositions as taught by Fechner. The use of the identified components along with additional components of Fechner such as a dispersant system renders obvious the instantly claimed composition.
Applicant argues that Fechner only discloses a broad range of the pigment (5-80% or 10-70) and argues that this does not render obvious the specific claimed range (page 3 of remarks). This is not persuasive as the range taught by Fechner overlaps with the claimed range (3-20%) and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Applicant argues that the working examples of Fechner have a high pigment concentration and one would have no reason to explore the low end of the pigment range and would expect performance to fail at such low levels (page 3 of remarks). This is not persuasive as it is not necessary for Fechner to provide a working example at the low concentration range as the rejection was made under 35 U.S.C. 103 which requires that “a patent for a claimed invention may not be obtained… if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been prima facie 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.” “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at ___, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. At, 82 USPQ2d at 1396. While Fechner may not provide a specific embodiment of the instantly claimed invention, the examiner maintains that the invention as claimed is nonetheless made obvious over Fechner.
Applicant presents data comparing a formulation of 50% PR254 with 10% PR254 applied to seeds and notes that the high concentration formulation resulted in a coating that was less evenly distributed, less homogenous, and brittle in comparison to the coating formed with the low concentration of pigment (page 4 of remarks). Applicant argues that the results are counter-intuitive and surprising that the less pigment yielded a better coating and better color quality and that one would not be motivated to optimize the concentration (page 4 of remarks). This is not persuasive as the applicant has presented new data in the remarks but the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). The objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP 2144.05(III)(A) and 716.01(c). Therefore, in the absence of an appropriate showing, comparing the claimed invention to the closest prior art to establish criticality, applicants’ arguments and alleged distinction are not found persuasive. Further, the data presented are not commensurate in scope with the claims. For example, the claims have the compound of formula (I) from 3-20%. Only one compound (PR254) at one concentration (10%) within the claimed range is tested. No evidence has been presented to indicate that the result purported to be unexpected would extend across the claimed range of 3-20% and be applicable for compounds other than PR254 that are encompassed by formula (I). Further, the assertion by the applicant that the results are counter-intuitive and that one would not optimize the concentration has not been clearly established from the data. The concentration of the pigment is taught by Fechner to be variable and showing one data point in the claimed range and one data point outside the claimed range does establish why better performance with the lower pigment concentration is counter intuitive and why one would not optimize to reach the lower concentration.
New Grounds of Rejections
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.
Claim 16 is 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 16 is indefinite as it depends from canceled claim 3.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWIN COLEMAN MITCHELL/Examiner, Art Unit 1619
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