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
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 24 Nov 2025 has been entered.
Claims 1-12 and 15-24 remain pending in the application.
Claim 1 is amended.
Claims 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Claims 6-12, 15 and 17-23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.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 1-5, 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Rejections Withdrawn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 § 102
The rejection of claims 1-5 and 16 pursuant to 35 U.S.C. 102(a)(1) as being upatentable over De Mondt et al. (US 2017/0342287, published 30 Nov 2017) as evidenced by the instant specification as set forth in the Non-Final Office Action mailed 23 Jul 2025 is hereby withdrawn in light of applicant’s amendment of the claims, and in favor of the new grounds of rejection set forth below.
The rejection of claims 1-4 and 16 pursuant to 35 U.S.C. 102(a)(1) as being upatentable 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as evidenced by the instant specification as set forth in the Non-Final Office Action mailed 23 Jul 2025 is hereby withdrawn in light of applicant’s amendment of the claims, and in favor of the new grounds of rejection set forth below.
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.
The rejection below was applied previously and is made again to address the new claim limitations.
Claims 1-5, 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 as 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 24 Nov 2025 have been fully considered but they are not persuasive. Applicant states that the compositions of Fechner are not suitable for a seed surface composition as the compositions of Fechner comprise block copolymers as dispersants but these copolymers are not sufficiently soluble/biodegradable for the environment (page 8 of remarks). This is not persuasive. The applicant may see some of the components taught by Fechner as undesirable for seed compositions but Fechner clearly teaches the compositions for coloring macromolecular materials such as seeds ([0068]) and the claims do not exclude any of these compounds from being present. Further, the requirement of a “seed surface composition” is an intended use of the product claim that does not add patentable weight.
The examiner notes that the components of the formulation of Example 1 shown in Table 1 do not add up to 100% and it is not clear what component is unaccounted for in the formulation. The applicant asserts that table 6 indicates that about the same coloristic properties are reached when 7.5% of compound 1 is used as compared to 15% of the comparative compound. The examiner is unclear as to the significance of this result and if it is intended to show something unexpected. The compound 1 and comparative compound are different pigments and it seems reasonable that different pigment compounds would need different levels of dilution to reach similar colors. The applicant points to data in Table 7 which indicates improved color quality on a seed when PR254 (compound 1) is used in comparison to the comparative compound. The examiner does not find this data convincing in overcoming the rejection as the data is not commensurate in scope with the instant claims. For example, only a single compound was tested (PR254) whereas the claims are open to a variety of pigment compounds of formula (I). Similarly, only four binder components were tested in comparison to the wide variety of binders encompassed by the claims. Likewise, the claims allow for a wide range of binder (5-50%) and pigment formula (I) (3-20%) but data is only shown for a couple percentages of each. Additionally, it is not clearly established from the comparison that the results are to be understood as unexpected. Compound PR254 was compared to a single compound and asserted to have a better color performance. It is not established from the data that the worse color performance is a general trend among comparative compounds and that there is something truly unexpected from the PR254 or if this data merely shows two extremes of performance from different pigment compounds.
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.
Claims 5 and 24 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 5 recites “said seed surface composition further comprises a binder” but it is not clear if this is intended to be in addition to the binder already present in claim 1 or if it is the same as the binder of claim 1. Claim 24 is included in this rejection as they depend directly, indirectly, or include all the limitations of claim 5.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600