DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-30, and 34-36 are pending.
Claims 19-30 are withdrawn (see restriction below).
Upon Applicant’s Amendment, claims 31-33 are cancelled.
Priority
This application is filed 05/30/2023 and claims the benefit of domestic priority as below:
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Information Disclosure Statements
One IDS(s) received 5/30/2023, and all references from IDS(s) have been considered unless marked with a strikethrough.
Election/Restrictions
Applicant elects group I, claims 1-18, and 34-36 with traverse in the reply filed on 02/03/2026 is acknowledged.
Applicants reason for traversal is based on the fact that both groups share a common technical feature, as recognized by the Examiner. While it is acknowledged that inventions of group I and II require the technical feature of a group I composition, this feature is disclosed in the prior art and therefore does not constitute a special technical feature within the meaning of the unity requirement.
Accordingly, in the present application, the claims share reliance on a known composition does not establish a common inventive concept, and group I and II are considered to lack unity of invention. Further, such lack unity of invention would require multiple, independent search strategies and review of different prior arts, which cannot be reasonably accomplished through a single comprehensive search.
While it is acknowledged that restriction requirements in applications entering the U.S. national phase under 35 USC § 371 do not require a showing of search burden, the present claims nevertheless present issues that would also be applicable under standard U.S. examination practice.
The requirement is deemed proper and is therefore made FINAL.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because:
There is no description provided for F1-F15 in Figure 1. In addition, it is not clear what the 15 vials shown in the figure represent. See 37 CFR 1.84(l) and (q).
Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
Claim 18 is objected to because of the following informalities:
In claim 18, “is of about 8:1” should read “is about 8:1”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bristow et al. (US 2016/0249616 A1, pub’s 09/01/2016).
This rejection applies because the specific embodiment disclosed in Bristow anticipates the broadened genus now recited in claims 1 and 5.
With respect to claims 1 5, and 9, the claim recite that a composition comprising at least one strobilurin fungicide, polar aprotic solvent, non-ionic emulsifier, and optional triazoles in polyhydric alcohol compound.
Bristow teaches a composition comprises: Picoxystrobin as a strobilurin fungicide, N-methylpyrrolidone as a polar aprotic solvent, tristyrylphenol ethoxylates as a polyoxyethylated aromatic non-ionic emulsifier, cypoconazole as an optional additional triazole fungicide, and propylene glycol as a polyhydric alcohol compound (paragraph [0098]). Bristow further teaches a composition comprises with C16-C18 fatty alcohol polyoxyethylene ether (25EO) as a polyalkoxylated alkyl ethers non-ionic emulsifier (paragraph [0105]). Accordingly, Bristow teaches each component (e.g., composition, the selection of non-ionic emulsifier and strobilurin fungicide) of claims 1, 5 and 9.
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 1-4, 6-18 and 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Bristow et al. (US 2016/0249616 A1, pub’s 09/01/2016), in view of Brown et al. (WO 2013/126948 A1, pub’d 09/06/2013).
Claim 1 is rejected under 35 USC § 102(a)(1) as anticipated by Bristow. These 103 rejections are expanded additional limitations for claims 2-4, 6-8, 10-18, and 34-36 not expressly disclosed by Bristow.
With respect to claims 1-4, the claim recite that a composition comprising at least one strobilurin fungicide, polar aprotic solvent, non-ionic emulsifier, and optional triazoles in polyhydric alcohol compound, and the specific composition of polar aprotic solvents and the polyoxyethylated aromatic.
Bristow teaches a composition comprises: Picoxystrobin as a strobilurin fungicide, N-methylpyrrolidone as a polar aprotic solvent, tristyrylphenol ethoxylates as a polyoxyethylated aromatic non-ionic emulsifier, cypoconazole as an optional additional triazole fungicide, and propylene glycol as a polyhydric alcohol compound (paragraph [0098]).
Bristow fails to teach the use of benzyl acetate as the polar aprotic solvent.
Brown teaches that an agrochemical emulsifiable concentrate (EC) formulation comprising a benzyl acetate based solvent system including ethoxylated tristyrylphenol (e.g., TERSPERSE® 2218) as a polyoxyethylated aromatic non-ionic emulsifier (claim 1, page 5 lines 21-30, and page 11 lines 21-32). Brown further teaches the use of glycol or DMSO as a co-solvent that is a polyhydric alcohol compound, (page 2 lines 10-15). Accordingly, Brown teaches benzyl acetate as a solvent serving the same functional purpose as N-methylpyrrolidone in Bristow, namely dissolving active ingredients and improving formulation performance in EC system (page 2, lines 10-15).
It would have been obvious to a PHOSITA at the time of the invention to substitute benzyl acetate, as taught by Brown, for N-methylpyrrolidone in the composition of Bristow. Both N-methylpyrrolidone and benzyl acetate are indicated as polar aprotic solvents used in agrochemical EC formulations for solubilizing active ingredients and enhancing formulation stability. Brown expressly teaches that benzyl acetate based system improve solubility and formulation stability (page 1 lines 3-8, and page 3 lines 25-33).
The references is directed to the same field of endeavor and address related to the application. The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Applying KSR example rationale (B) in the claims 2-4, it would have been prima facie obvious to substitute benzyl acetate as taught by Brown for use in the composition of Bristow. Both references are directed to similar EC agrochemical formulations and employ these components for their established functions as solvents and emulsifiers. Simple substitution of one known element for another for certain formulation components according to the recognized purpose would have yielded predictable results. (see MPEP 2141)
With respect to claims 6-8, the claims recite the non-ionic emulsifier and polyhydric alcohol compound, and their amount in the composition.
Bristow teaches that tristyrylphenol ethoxylates as polyoxyethylated aromatic non-ionic emulsifiers, and EO25 as polyalkoxylated alkyl ethers. The experimental examples disclose amount of the emulsifiers ranging from about 5.7 % to 12.2 % by weight, based on the total weight of the composition (paragraph [0091], [0093], [0095], [0097], [0098], and [0130]). These amounts fall within the claimed range of about 1 % to about 20 % by weight, and within the narrower range of about 8 % to about 15 % by weight, as required in claims 6 and 7.
Bristow further teaches polyhydric alcohol compound is present in an amount of 50 % by weight based on the total amount of the non-ionic emulsifier. (paragraph [0091], [0093], [0095], [0097], [0098], and [0130]). This corresponds to the upper end of the range recited in claim 8 that cites about 5 % to about 50 % by weight based on the total amount of the non-ionic emulsifier.
Brown also teaches ethoxylated tristyrylphenol as a polyoxyethylated aromatic non-ionic emulsifier (page 5 lines 21-30), and discloses non-ionic emulsifiers in amount that about 3 % to about 20 % by weight per total volume of a combination of benzyl acetate and substantially water-immiscible co-solvent combination (page 10 lines 31-33). These disclosures further encompass the claimed ranges.
Accordingly, the claimed ranges overlap with, the ranges disclosure in Bristow and Brown. Where the claimed range overlaps with a range disclosed in the prior art, the claimed subject matter is obvious, and yielded predictable results. (see MPEP 2144.05)
With respect to claims 9-11, the claims recite the selection and amount of strobilurin fungicide in the composition.
Bristow teaches strobilurin fungicides, including azoxystrobin, as required in instant claims 9 and 10 (claim 3). Bristow further discloses fungicidal compositions comprising strobilurin fungicides in amount ranges from 5 % to 95 % by weight of the composition (claim 10). These amounts fall within the claimed range of about 5 % to about 30 % by weight, as required in claim 11.
Accordingly, the ranges in claim 11 overlap with, or are fully encompassed by, the ranges disclosure in Bristow. Where the claimed range overlaps with a range disclosed in the prior art, the claimed subject matter is obvious, and yielded predictable results. (see MPEP 2144.05)
Applying KSR example rationale (B) in the claims 9-10, it would have been prima facie obvious to select a known strobilurin fungicide such as azoxystrobin as taught by Brown. Simple select ion or substitution of one known element for another for a known elements according to the recognized purpose would have yielded predictable results. (see MPEP 2141)
With respect to claims 12-13, and 18, the claims recite that the polar aprotic solvent, including benzyl acetate, is present in an amount of about 40 % to about 70 % by weight, based on the total weight of the composition, and the ratio between the polar aprotic solvent and the polyhydric alcohol compound is about 8:1 to about 350:1.
Brown teaches the primary solvent system comprises benzyl acetate used on its own (page 4, lines 32-33). Brown further teaches that emulsifiable concentration formulations in which benzyl acetate constitutes the principal solvent component of the formulation, optionally in combination with a substantially water-immiscible solvent, and discloses the benzyl acetate is preferably used with the substantially water-immiscible co-solvent in a mixing ratio range of from 10:90 to 90:10 (page 4 lines 12-19). For examples, benzyl acetate is used about 47 % by weight, based on the total weight of the composition, and the ratio between the polar aprotic solvent (i.e., benzyl acetate) and the polyhydric alcohol compound (i.e., Solvesso® 15) is 80:20 in one of the Brown’s compositions (page 13 example 1).
Accordingly, the claimed ranges overlap with, or are fully encompassed by, the ranges disclosure in Brown. Where the claimed range overlaps with a range disclosed in the prior art, the claimed subject matter is obvious, and yielded predictable results. (see MPEP 2144.05)
With respect to claims 14-17, the claims recite one or more additional fungicides selected from triazoles, including prothioconazole, and their amounts based on the total weight of the composition.
Bristow teaches triazole fungicides, including prothioconazole (paragraph [0005], and claim 4), as required in claims 14 and 15. Bristow further teaches such triazole fungicides are generally present in an amount of from 1 % to 70 % by weight of the composition (paragraph [0020]), as required in claims 16 and 17 that recite prothioconazole ranges about 1 % to about 30 % by weight.
Accordingly, the ranges in claims 16 and 17 overlap with, or are fully encompassed by, the ranges disclosure in Bristow. Where the claimed range overlaps with a range disclosed in the prior art, the claimed subject matter is obvious, and yielded predictable results. (see MPEP 2144.05)
Applying KSR example rationale (B) in the claims 14 and 15, it would have been prima facie obvious to select a known triazole fungicides such as prothioconazole as taught by Bristow. Simple selection or substitution of one known element for another for a known elements according to the recognized purpose would have yielded predictable results. (see MPEP 2141)
With respect to claims 34-36, the claims recite those specific numerical compositions comprising defined amounts of (1) a strobilurin fungicides including azoxystrobin; (2) a polar aprotic solvent including benzyl acetates; (3) a non-ionic emulsifier selected from polyoxyethylated aromatics, polyalkoxylated alkyl ethers; (4) an optional triazole fungicide including prothioconazole; (5) a polyhydric alcohol compound (e.g., propylene glycol).
As discussed above, Bristow teaches compositions comprising a strobilurin fungicide, a polar aprotic solvent, a non-ionic emulsifier, an optional additional triazole fungicide, and a polyhydric alcohol compound (paragraph [0098]). Bristow further teaches concentration ranges for the fungicides and formulation components that encompass or overlap with those recited in claims 34-36.
Brown teaches benzyl acetate based solvent systems in agrochemical emulsifiable concentrate formulations with ethoxylated tristyrylphenol emulsifiers and glycol co-solvents (page 2 lines 10-15, and page 5 line 17-30). Brown further teaches that solvent level, emulsifier level, and co-solvent proportion are formulation variables adjusted to achieve solubility and stability of the active ingredients as reviewed above.
As previously reviewed, each individual component recited in claims 34-36 is disclosed in Bristow and Brown, and the recited numerical amounts either fall within the ranges taught by Bristow and Brown. Moreover, the teaching from Bristow and Brown recognizes that solvent concentration, emulsifier loading, active ingredient level, and co-solvent proportion are interdependent formulation variables in EC system. Claims 34-36 are result effective variables routinely adjusted to balance solubility, stability, and emulsification performance. Selecting specific component and values within disclosed workable ranges to produce a stable formulation would have constituted routine optimization.
Optimization of result effective variable, such as component elements, and concentration, thorough routine experimentation does not confer patentability. (see MPEP 2144.05) Furthermore, where the claimed workable elements and concentration ranges constitutes choosing from prior arts, the claimed subject matter is obvious, and yielded predictable results.
Conclusion
Claims 1-18, and 34-36 are rejected.
Claim 8, 18, and 34-36 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEONG JONG KIM whose telephone number is (571)272-6918. The examiner can normally be reached 7:00am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A. Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEONG JONG KIM/ Examiner, Art Unit 1621
/CLINTON A BROOKS/ Supervisory Patent Examiner, Art Unit 1621