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 .
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 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.
Priority
The instant application, filed 05/30/2023, is a 371 National Stage entry of PCT/JP2021/043750, filed 11/30/2021, and claims foreign priority to JP 2020-199852, filed 12/01/2020.
Status of Application and Claims
Receipt of Remarks/Amendments filed 10/28/2025 is acknowledged. Claims 1-13 are currently pending and are examined on the merits herein.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/10/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Interpretation
Claims 1, 2 and 4 recite a “ratio between a weight of the core material and a weight of the coating (weight of the core material/weight of the coating)” as being either “9 or more and 7999 or less” or “80 or more and 4000 or less”. These will be interpreted as ranges of ratios: for instant claims 1 and 2, the ratio of weight of the core material/weight of the coating is a range of 9-7999, and for instant claim 2 the ratio is a range of 80-4000. The same interpretation applies to claims 8 and 12 which recites the microcapsule wherein a volume median diameter of the microcapsule “is 1 µm or larger and 100 µm or smaller.” This is interpreted to mean that the volume median diameter of the microcapsule is in a range between 1-100 µm.
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 4-5, 10-13 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 4 recites the limitation "the adjuvant" in line 5. There is insufficient antecedent basis for this limitation in the claim. The claim previous to this limitation does not recite an adjuvant and thus it is unclear which previous component of the microcapsule the limitation “the adjuvant” is referring to as the adjuvant. For example, is “the adjuvant” referring to the liquid previously recited in claim 4 or is the adjuvant in addition to the liquid recited in claim 4. As such, claim 4 is rendered indefinite.
Claims 5, 10-13 are included in the rejection as they depend on a rejected base claim and do not clarify the issues discussed above.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda (US20090060966A1; Mar. 5, 2009) in view of Viertelhaus (WO 2018/178039 A1; Oct. 4, 2018) (previously cited), Dave (WO 2013/066950A1; May 10, 2013) (previously cited) and Ogawa (JPH07165505A; 06/27/1995).
Tsuda teaches pesticidal composition comprising a microcapsule in which an oil (liquid) containing a pesticidal active ingredient and an organic solvent (adjuvant) is covered with a wall material made of a thermosetting resin (coating). As the thermosetting resin, a polyurethane or a polyurea resin is preferred. Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. A content of the pesticidal active ingredient in the oil in the microcapsule differs depending on the kind of the pesticidal active ingredient, kind of the organic solvent and the like, and is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As the organic solvent, hydrophobic organic solvents are preferred, and for example, aromatic hydrocarbons, aliphatic hydrocarbons, aromatic carboxylic acid esters, and aliphatic carboxylic acid esters can be recited. Tsuda teaches a wall material capable of forming a wall by interfacial polymerization at the interface is preferred and specifically teaches polyurethane resin or polyurea resin is particularly preferred. The polyurethane resin is a resin generating through a reaction between a polyisocyanate compound and a polyol compound, and the polyurea resin is a resin generating through a reaction between a polyisocyanate compound and a polyamine compound. An average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda teaches the microcapsule containing the pesticidal active ingredient is dispersed in water, which reads on a liquid composition comprising the microcapsule dispersed in water. Regarding the consisting of language in the claims, as discussed supra, Tsuda teaches a microcapsule in which an oil (liquid) containing a pesticidal active ingredient and an organic solvent (adjuvant) is covered with a wall material made of a thermosetting resin (coating). The pesticidal active ingredient include one or more of the active ingredient. As such, Tsuda reads on the consisting of language recited in claims 1 and 4. (see e.g. Abstract; Claims; para 0002, 0008, 0012, 0025-0026, 0032-0033, 0035, 0040, 0046; Entire document).
The teachings of Tsuda have been set forth above.
Tsuda differs from the instantly claimed invention in that it fails to teach the active material within the core is the compound represented by formula (I) (formal name ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate), dissolved in the adjuvant, as recited in instant claim 1. Tsuda doesn’t teach one or more active compounds separate from formula (I) are also dissolved in the adjuvant, particularly flumioxazin, as recited in instant claims 4 and 5.
Viertelhaus teaches crystalline forms of herbicidal active substance ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (also referred to by Viertelhaus as formula (I)) (p. 1 lines 6-20). Viertelhaus teaches the compound of formula (I) in crystalline form A, B, or C, which may be used alone or in combination with other herbicides (page 31, lines 15-42). Viertelhaus teaches combination of the compound of formula (I) in crystalline form A, B, or C, with another herbicidally active compound from a group that includes the PPO-inhibitor flumioxazin, in a composition (p. 2 lines 16-23; p. 32 lines 6-20; p. 35 lines 10-31; p. 54 lines 34-39). Viertelhaus teaches that the compound of formula (I) in its crystalline form may be microencapsulated, alone or with a second herbicidal compound, and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). (p. 108 lines 1-16).
As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda does not expressly disclose the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa addresses this deficiency.
Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. (see e.g. Page 2 and 4; Abstract; Claims; Entire Document).
Tsuda does not expressly disclose the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) as recited in the instant claims. Further, as discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. However, Dave cures these deficiencies.
Dave teaches a stable aqueous pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the average microcapsule size is from about 10-25 µm, the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent (Claim 15). Dave teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers (p. 16 lines 16-17).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate alone or in combination with flumioxazin into the microcapsule taught by Tsuda, and arrive at the instantly claimed invention. As per MPEP 2143 (I(A)), a prima facie case for obviousness exists upon combination of prior art elements according to known methods to yield predictable results. As discussed supra, Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. flumioxazin), and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhaus teaches microencapsulation of the compound of formula I alone or in combination with second herbicide (e.g. flumioxazin) via the well-established encapsulation technique. One of ordinary skill in the art could have combined Viertelhaus’s active ingredients with the microcapsule of Tsuda by the known method of interfacial polymerization encapsulation, and in combination, Viertelhaus’s active ingredients and Tsuda’s microcapsule would be expected to perform the same functions as they would separately based on the above teachings that (1) Tsuda’s microcapsule is effective for encapsulating a wide variety of herbicides, and (2) Viertelhaus’s active ingredients are demonstrably amenable to aqueous microencapsulation chemistry. The results would be predictably successful to one of ordinary skill based on these teachings. As mentioned above, Tsuda teaches the pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. flumioxazin). This reads on the consisting of language of claim 1 and 4 because the combination of Tsuda and Viertelhause teaches including the compound of formula (I) alone (reads on claim 1) or in combination with a second herbicide (reads on claim 4).
Further, regarding the weight ratio of the compound of formula (I) to the adjuvant, as discussed supra, Tsuda taches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As discussed supra, Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). Thus, Viertelhause also teaches wherein the weight ratio of the compound of formula (I) to the adjuvant is 1 or less. It would have been prima facie obvious to one skilled in the art to manipulate the amounts/weight ratio of the herbicide (e.g. compound of formula I) to the adjuvant based on parameters such as the intensity of unwanted vegetation that needs to be treated with the herbicide and amount of the solvent which would dissolve the active herbicide ingredient. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the adjuvant present in the core material in the amount of at least 30 wt% based on the total amount of the core material in the microcapsule of Tsuda. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient. Further, as discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight, which encompasses a ratio of 1:1 between the pesticidal active ingredient and organic solvent. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is preferably about 20 to 50% by weight of the entire oil (i.e. core). Thus, with a ratio of 1:1 between the pesticidal active ingredient and organic solvent and a content of the pesticidal active ingredient in the oil in the microcapsule being about 20 to 50% by weight of the entire oil would equate to 20-50% of organic solvent, which overlaps the amount of adjuvant in the core recited in the instant claims.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) to be between 9 and 7999 or between 80 and 4000 in microcapsule of Tsdua. As discussed supra, Tsuda is silent on the weight ratio between the oil containing the pesticidal active ingredient and organic solvent (i.e. core) and the wall made of thermosetting resin (i.e.coating). As mentioned above, Dave also teaches a pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent. As such, it would have been obvious to one skilled in the art to look towards the teachings of Dave and utilize a weight ratio of the core to the coating material that is known in the art and specifically microcapsules (such as the microcapsule of Dave) which are similar to the microcapsules of Tsuda. Moreover, the weight of the core and the coating is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the weight ratio of the core material to the coating material would have been prima facie obvious to one skilled in the art.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer. As discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. As discussed supra, Dave also teaches the average microcapsule size is from about 10-25 µm and the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Both Tsuda and Dave teach similar microcapsule formulations comprising pesticidal active ingredients and similar average microcapsule size and Dave further teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Therefore, it would have been obvious to one skilled in the art to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer because such volume median diameter of the microcapsule was known in the art to be used for pesticidal microcapsule compositions. Moreover, volume median diameter of the microcapsule is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the volume median diameter of the microcapsule would have been prima facie obvious to one skilled in the art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
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 4, 5, 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11369112 in view of Tsuda (US20090060966A1; Mar. 5, 2009), Viertelhaus (WO 2018/178039 A1; Oct. 4, 2018) (previously cited), Dave (WO 2013/066950A1; May 10, 2013) (previously cited) and Ogawa (JPH07165505A; 06/27/1995).
US’112 claims an herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and flumioxazin at a weight ratio of 1:1 to 1:10 (Claim 1).
US’112 differs from the instantly claimed invention in that it fails to teach the herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and flumioxazin is a microcapsule comprising a core material included in a coating made of a resin, the core material consists of a liquid with ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula I) and one ore more pesticidal active compound different from compound of formula I dissolved or suspended in an adjuvant, wherein a ratio between a weight of the core material and a weight of the coating (weight of the core material/weight of the coating) is 9 or more and 7999 or less; the ratio is between the weight of the core material and the weight of the coating (weight of the core material/weight of the coating) is 80 or more and 4000 or less; the adjuvant comprises one or more ingredients selected from the group consisting of mineral oils, vegetable oils, ester-based solvents and amide-based solvents; the microcapsule resin comprises a resin prepared by polymerizing a monomer ingredient comprising an isocyanate group in the structure; the microcapsule resin comprises one or more resins selected from the group consisting of polyurea and polyurethane; the volume median diameter of the microcapsule is 1 µm or larger and 100 um or smaller; the adjuvant is present in the core material in an amount of at least 30 wt%; weight ratio of the compound represented by formula I to the adjuvant is 1 or less and; the herbicidal composition is a liquid composition comprising the aforementioned microcapsule dispersed in water. Tsuda, Viertelhause, Dave and Ogawa cure these deficiencies.
The teaching of Tsuda, Viertelhause, Dave and Ogawa discussed supra are incorporated herein.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the herbicidal actives within the composition claimed by US’112 into the microcapsule taught by Tsuda, and arrive at the instantly claimed invention. As per MPEP 2143 (I(A)), a prima facie case for obviousness exists upon combination of prior art elements according to known methods to yield predictable results. As discussed supra, Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. flumioxazin), and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhaus teaches microencapsulation of the compound of formula I alone or in combination with second herbicide (e.g. flumioxazin) via the well-established encapsulation technique. One of ordinary skill in the art could have combined US’112 active ingredients (which are also taught by Viertelhause) with the microcapsule of Tsuda by the known method of interfacial polymerization encapsulation, and in combination, US’112 active ingredients and Tsuda’s microcapsule would be expected to perform the same functions as they would separately based on the above teachings that (1) Tsuda’s microcapsule is effective for encapsulating a wide variety of herbicides, and (2) Viertelhaus’s active ingredients are demonstrably amenable to aqueous microencapsulation chemistry. The results would be predictably successful to one of ordinary skill based on these teachings.
Further, regarding the weight ratio of the compound of formula (I) to the adjuvant, as discussed supra, Tsuda taches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As discussed supra, Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). Thus, Viertelhause also teaches wherein the weight ratio of the compound of formula (I) to the adjuvant is 1 or less. It would have been prima facie obvious to one skilled in the art to manipulate the amounts/weight ratio of the herbicide (e.g. compound of formula I) to the adjuvant based on parameters such as the intensity of unwanted vegetation that needs to be treated with the herbicide and amount of the solvent which would dissolve the active herbicide ingredient. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the adjuvant present in the core material in the amount of at least 30 wt% based on the total amount of the core material in the microcapsule. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) to be between 9 and 7999 or between 80 and 4000 in microcapsule. As discussed supra, Tsuda is silent on the weight ratio between the oil containing the pesticidal active ingredient and organic solvent (i.e. core) and the wall made of thermosetting resin (i.e.coating). As mentioned above, Dave also teaches a pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent. As such, it would have been obvious to one skilled in the art to look towards the teachings of Dave and utilize a weight ratio of the core to the coating material that is known in the art and specifically microcapsules (such as the microcapsule of Dave) which are similar to the microcapsules of Tsuda. Moreover, the weight of the core and the coating is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the weight ratio of the core material to the coating material would have been prima facie obvious to one skilled in the art.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the volume median diameter of the microcapsule to be between 1 and 100 micrometer. As discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. As discussed supra, Dave also teaches the average microcapsule size is from about 10-25 µm and the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Both Tsuda and Dave teach similar microcapsule formulations comprising pesticidal active ingredients and similar average microcapsule size and Dave further teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Therefore, it would have been obvious to one skilled in the art to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer because such volume median diameter of the microcapsule was known in the art to be used for pesticidal microcapsule compositions. Moreover, volume median diameter of the microcapsule is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the volume median diameter of the microcapsule would have been prima facie obvious to one skilled in the art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Claims 4, 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11819024 in view of Tsuda (US20090060966A1; Mar. 5, 2009), Viertelhaus (WO 2018/178039 A1; Oct. 4, 2018) (previously cited), Dave (WO 2013/066950A1; May 10, 2013) (previously cited) and Ogawa (JPH07165505A; 06/27/1995).
US’024 claims an herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and another herbicide from a group including bicyclopyrone, mesotrione, tembotrione, isoxaflutole, pyrasulfotole, topramezone, and tolpyralate, at a weight ratio of 1:1 to 1:100 (Claim 1).
US’024 differs from the instantly claimed invention in that it fails to teach the herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and another herbicide is a microcapsule comprising a core material included in a coating made of a resin, the core material consists of a liquid with ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula I) and one ore more pesticidal active compound different from compound of formula I dissolved or suspended in an adjuvant, wherein a ratio between a weight of the core material and a weight of the coating (weight of the core material/weight of the coating) is 9 or more and 7999 or less; the ratio is between the weight of the core material and the weight of the coating (weight of the core material/weight of the coating) is 80 or more and 4000 or less; the adjuvant comprises one or more ingredients selected from the group consisting of mineral oils, vegetable oils, ester-based solvents and amide-based solvents; the microcapsule resin comprises a resin prepared by polymerizing a monomer ingredient comprising an isocyanate group in the structure; the microcapsule resin comprises one or more resins selected from the group consisting of polyurea and polyurethane; the volume median diameter of the microcapsule is 1 µm or larger and 100 um or smaller; the adjuvant is present in the core material in an amount of at least 30 wt%; weight ratio of the compound represented by formula I to the adjuvant is 1 or less and; the herbicidal composition is a liquid composition comprising the aforementioned microcapsule dispersed in water. Tsuda, Viertelhause, Dave and Ogawa cure these deficiencies.
The teaching of Tsuda, Viertelhause, Dave and Ogawa discussed supra are incorporated herein.
Viertelhaus also teaches combination of the compound of formula (I) in crystalline form A, B, or C, with one herbicidally active compound from a group that includes the bleacher herbicide bicyclopyrone, in a composition (p. 2 lines 16-23; p. 32 lines 6-40; p. 35 lines 33-42; p. 55 lines 1-11).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the herbicidal actives within the composition claimed by US’024 into the microcapsule taught by Tsuda, and arrive at the instantly claimed invention. As per MPEP 2143 (I(A)), a prima facie case for obviousness exists upon combination of prior art elements according to known methods to yield predictable results. As discussed supra, Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. bicyclopyrone), and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhaus teaches microencapsulation of the compound of formula I alone or in combination with second herbicide via the well-established encapsulation technique. One of ordinary skill in the art could have combined US’024 active ingredients (which are also taught by Viertelhause) with the microcapsule of Tsuda by the known method of interfacial polymerization encapsulation, and in combination, US’024 active ingredients and Tsuda’s microcapsule would be expected to perform the same functions as they would separately based on the above teachings that (1) Tsuda’s microcapsule is effective for encapsulating a wide variety of herbicides, and (2) Viertelhaus’s active ingredients are demonstrably amenable to aqueous microencapsulation chemistry. The results would be predictably successful to one of ordinary skill based on these teachings.
Further, regarding the weight ratio of the compound of formula (I) to the adjuvant, as discussed supra, Tsuda taches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As discussed supra, Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). Thus, Viertelhause also teaches wherein the weight ratio of the compound of formula (I) to the adjuvant is 1 or less. It would have been prima facie obvious to one skilled in the art to manipulate the amounts/weight ratio of the herbicide (e.g. compound of formula I) to the adjuvant based on parameters such as the intensity of unwanted vegetation that needs to be treated with the herbicide and amount of the solvent which would dissolve the active herbicide ingredient. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the adjuvant present in the core material in the amount of at least 30 wt% based on the total amount of the core material in the microcapsule. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) to be between 9 and 7999 or between 80 and 4000 in microcapsule. As discussed supra, Tsuda is silent on the weight ratio between the oil containing the pesticidal active ingredient and organic solvent (i.e. core) and the wall made of thermosetting resin (i.e.coating). As mentioned above, Dave also teaches a pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent. As such, it would have been obvious to one skilled in the art to look towards the teachings of Dave and utilize a weight ratio of the core to the coating material that is known in the art and specifically microcapsules (such as the microcapsule of Dave) which are similar to the microcapsules of Tsuda. Moreover, the weight of the core and the coating is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the weight ratio of the core material to the coating material would have been prima facie obvious to one skilled in the art.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the volume median diameter of the microcapsule to be between 1 and 100 micrometer. As discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. As discussed supra, Dave also teaches the average microcapsule size is from about 10-25 µm and the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Both Tsuda and Dave teach similar microcapsule formulations comprising pesticidal active ingredients and similar average microcapsule size and Dave further teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Therefore, it would have been obvious to one skilled in the art to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer because such volume median diameter of the microcapsule was known in the art to be used for pesticidal microcapsule compositions. Moreover, volume median diameter of the microcapsule is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the volume median diameter of the microcapsule would have been prima facie obvious to one skilled in the art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Claims 4, 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10624347 in view of Tsuda (US20090060966A1; Mar. 5, 2009), Viertelhaus (WO 2018/178039 A1; Oct. 4, 2018) (previously cited), Dave (WO 2013/066950A1; May 10, 2013) (previously cited) and Ogawa (JPH07165505A; 06/27/1995).
US’347 claims an herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and pyroxasulfone (Claim 1).
US’347 differs from the instantly claimed invention in that it fails to teach the herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and pyroxasulfone is a microcapsule comprising a core material included in a coating made of a resin, the core material consists of a liquid with ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula I) and one re more pesticidal active compound different from compound of formula I dissolved or suspended in an adjuvant, wherein a ratio between a weight of the core material and a weight of the coating (weight of the core material/weight of the coating) is 9 or more and 7999 or less; the ratio is between the weight of the core material and the weight of the coating (weight of the core material/weight of the coating) is 80 or more and 4000 or less; the adjuvant comprises one or more ingredients selected from the group consisting of mineral oils, vegetable oils, ester-based solvents and amide-based solvents; the microcapsule resin comprises a resin prepared by polymerizing a monomer ingredient comprising an isocyanate group in the structure; the microcapsule resin comprises one or more resins selected from the group consisting of polyurea and polyurethane; the volume median diameter of the microcapsule is 1 µm or larger and 100 um or smaller; the adjuvant is present in the core material in an amount of at least 30 wt%; weight ratio of the compound represented by formula I to the adjuvant is 1 or less and; the herbicidal composition is a liquid composition comprising the aforementioned microcapsule dispersed in water. Tsuda, Viertelhause, Dave and Ogawa cure these deficiencies.
The teaching of Tsuda, Viertelhause, Dave and Ogawa discussed supra are incorporated herein.
Viertelhaus also teaches combination of the compound of formula (I) in crystalline form A, B, or C, with herbicidally active compound from a group that includes the VLCFA inhibitor pyroxasulfone, in a composition (p. 2 lines 16-23; p. 32 lines 6-40; p. 36 lines 20-27; p. 55 lines 32-41).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the herbicidal actives within the composition claimed by US’347 into the microcapsule taught by Tsuda, and arrive at the instantly claimed invention. As per MPEP 2143 (I(A)), a prima facie case for obviousness exists upon combination of prior art elements according to known methods to yield predictable results. As discussed supra, Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. pyroxasulfone), and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhaus teaches microencapsulation of the compound of formula I alone or in combination with second herbicide via the well-established encapsulation technique. One of ordinary skill in the art could have combined US’347 active ingredients (which are also taught by Viertelhause) with the microcapsule of Tsuda by the known method of interfacial polymerization encapsulation, and in combination, US’024 active ingredients and Tsuda’s microcapsule would be expected to perform the same functions as they would separately based on the above teachings that (1) Tsuda’s microcapsule is effective for encapsulating a wide variety of herbicides, and (2) Viertelhaus’s active ingredients are demonstrably amenable to aqueous microencapsulation chemistry. The results would be predictably successful to one of ordinary skill based on these teachings.
Further, regarding the weight ratio of the compound of formula (I) to the adjuvant, as discussed supra, Tsuda taches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As discussed supra, Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). Thus, Viertelhause also teaches wherein the weight ratio of the compound of formula (I) to the adjuvant is 1 or less. It would have been prima facie obvious to one skilled in the art to manipulate the amounts/weight ratio of the herbicide (e.g. compound of formula I) to the adjuvant based on parameters such as the intensity of unwanted vegetation that needs to be treated with the herbicide and amount of the solvent which would dissolve the active herbicide ingredient. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the adjuvant present in the core material in the amount of at least 30 wt% based on the total amount of the core material in the microcapsule. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) to be between 9 and 7999 or between 80 and 4000 in microcapsule. As discussed supra, Tsuda is silent on the weight ratio between the oil containing the pesticidal active ingredient and organic solvent (i.e. core) and the wall made of thermosetting resin (i.e.coating). As mentioned above, Dave also teaches a pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent. As such, it would have been obvious to one skilled in the art to look towards the teachings of Dave and utilize a weight ratio of the core to the coating material that is known in the art and specifically microcapsules (such as the microcapsule of Dave) which are similar to the microcapsules of Tsuda. Moreover, the weight of the core and the coating is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the weight ratio of the core material to the coating material would have been prima facie obvious to one skilled in the art.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the volume median diameter of the microcapsule to be between 1 and 100 micrometer. As discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. As discussed supra, Dave also teaches the average microcapsule size is from about 10-25 µm and the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Both Tsuda and Dave teach similar microcapsule formulations comprising pesticidal active ingredients and similar average microcapsule size and Dave further teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Therefore, it would have been obvious to one skilled in the art to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer because such volume median diameter of the microcapsule was known in the art to be used for pesticidal microcapsule compositions. Moreover, volume median diameter of the microcapsule is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the volume median diameter of the microcapsule would have been prima facie obvious to one skilled in the art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Claims 4, 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10701936 in view of Tsuda (US20090060966A1; Mar. 5, 2009), Viertelhaus (WO 2018/178039 A1; Oct. 4, 2018) (previously cited), Dave (WO 2013/066950A1; May 10, 2013) (previously cited) and Ogawa (JPH07165505A; 06/27/1995).
US’936 claims an herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and 2,4-D choline salt (Claim 1).
US’936 differs from the instantly claimed invention in that it fails to teach the herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and 2,4-D is a microcapsule comprising a core material included in a coating made of a resin, the core material consists of a liquid with ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula I) and one re more pesticidal active compound different from compound of formula I dissolved or suspended in an adjuvant, wherein a ratio between a weight of the core material and a weight of the coating (weight of the core material/weight of the coating) is 9 or more and 7999 or less; the ratio is between the weight of the core material and the weight of the coating (weight of the core material/weight of the coating) is 80 or more and 4000 or less; the adjuvant comprises one or more ingredients selected from the group consisting of mineral oils, vegetable oils, ester-based solvents and amide-based solvents; the microcapsule resin comprises a resin prepared by polymerizing a monomer ingredient comprising an isocyanate group in the structure; the microcapsule resin comprises one or more resins selected from the group consisting of polyurea and polyurethane; the volume median diameter of the microcapsule is 1 µm or larger and 100 um or smaller; the adjuvant is present in the core material in an amount of at least 30 wt%; weight ratio of the compound represented by formula I to the adjuvant is 1 or less and; the herbicidal composition is a liquid composition comprising the aforementioned microcapsule dispersed in water. Tsuda, Viertelhause, Dave and Ogawa cure these deficiencies.
The teaching of Tsuda, Viertelhause, Dave and Ogawa discussed supra are incorporated herein.
Viertelhaus also teaches combination of the compound of formula (I) in crystalline form A, B, or C, with herbicidally active compound from a group that includes the auxinic herbicide 2,4-D and its salts, in a composition (p. 2 lines 16-23; p. 32 lines 6-40; p. 37 lines 17-28; p. 56 lines 9-25).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the herbicidal actives within the composition claimed by US’936 into the microcapsule taught by Tsuda, and arrive at the instantly claimed invention. As per MPEP 2143 (I(A)), a prima facie case for obviousness exists upon combination of prior art elements according to known methods to yield predictable results. As discussed supra, Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. 2,4-D), and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhaus teaches microencapsulation of the compound of formula I alone or in combination with second herbicide via the well-established encapsulation technique. One of ordinary skill in the art could have combined US’936 active ingredients (which are also taught by Viertelhause) with the microcapsule of Tsuda by the known method of interfacial polymerization encapsulation, and in combination, US’024 active ingredients and Tsuda’s microcapsule would be expected to perform the same functions as they would separately based on the above teachings that (1) Tsuda’s microcapsule is effective for encapsulating a wide variety of herbicides, and (2) Viertelhaus’s active ingredients are demonstrably amenable to aqueous microencapsulation chemistry. The results would be predictably successful to one of ordinary skill based on these teachings.
Further, regarding the weight ratio of the compound of formula (I) to the adjuvant, as discussed supra, Tsuda taches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As discussed supra, Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). Thus, Viertelhause also teaches wherein the weight ratio of the compound of formula (I) to the adjuvant is 1 or less. It would have been prima facie obvious to one skilled in the art to manipulate the amounts/weight ratio of the herbicide (e.g. compound of formula I) to the adjuvant based on parameters such as the intensity of unwanted vegetation that needs to be treated with the herbicide and amount of the solvent which would dissolve the active herbicide ingredient. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the adjuvant present in the core material in the amount of at least 30 wt% based on the total amount of the core material in the microcapsule. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) to be between 9 and 7999 or between 80 and 4000 in microcapsule. As discussed supra, Tsuda is silent on the weight ratio between the oil containing the pesticidal active ingredient and organic solvent (i.e. core) and the wall made of thermosetting resin (i.e.coating). As mentioned above, Dave also teaches a pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent. As such, it would have been obvious to one skilled in the art to look towards the teachings of Dave and utilize a weight ratio of the core to the coating material that is known in the art and specifically microcapsules (such as the microcapsule of Dave) which are similar to the microcapsules of Tsuda. Moreover, the weight of the core and the coating is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the weight ratio of the core material to the coating material would have been prima facie obvious to one skilled in the art.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the volume median diameter of the microcapsule to be between 1 and 100 micrometer. As discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. As discussed supra, Dave also teaches the average microcapsule size is from about 10-25 µm and the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Both Tsuda and Dave teach similar microcapsule formulations comprising pesticidal active ingredients and similar average microcapsule size and Dave further teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Therefore, it would have been obvious to one skilled in the art to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer because such volume median diameter of the microcapsule was known in the art to be used for pesticidal microcapsule compositions. Moreover, volume median diameter of the microcapsule is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the volume median diameter of the microcapsule would have been prima facie obvious to one skilled in the art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Claims 4, 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10624346 B2 in view of Tsuda (US20090060966A1; Mar. 5, 2009), Viertelhaus (WO 2018/178039 A1; Oct. 4, 2018) (previously cited), Dave (WO 2013/066950A1; May 10, 2013) (previously cited) and Ogawa (JPH07165505A; 06/27/1995).
US’346 claims an herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and one or more dicamba salts selected from the group consisting of dicamba diglycolamine salt and dicamba N,N bis(3-aminopropyl)methylamine salt (Claim 1).
US’346 differs from the instantly claimed invention in that it fails to teach the herbicidal composition comprising ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate and one or more dicamba salt is a microcapsule comprising a core material included in a coating made of a resin, the core material consists of a liquid with ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula I) and one re more pesticidal active compound different from compound of formula I dissolved or suspended in an adjuvant, wherein a ratio between a weight of the core material and a weight of the coating (weight of the core material/weight of the coating) is 9 or more and 7999 or less; the ratio is between the weight of the core material and the weight of the coating (weight of the core material/weight of the coating) is 80 or more and 4000 or less; the adjuvant comprises one or more ingredients selected from the group consisting of mineral oils, vegetable oils, ester-based solvents and amide-based solvents; the microcapsule resin comprises a resin prepared by polymerizing a monomer ingredient comprising an isocyanate group in the structure; the microcapsule resin comprises one or more resins selected from the group consisting of polyurea and polyurethane; the volume median diameter of the microcapsule is 1 µm or larger and 100 um or smaller; the adjuvant is present in the core material in an amount of at least 30 wt%; weight ratio of the compound represented by formula I to the adjuvant is 1 or less and; the herbicidal composition is a liquid composition comprising the aforementioned microcapsule dispersed in water. Tsuda, Viertelhause, Dave and Ogawa cure these deficiencies.
The teaching of Tsuda, Viertelhause, Dave and Ogawa discussed supra are incorporated herein.
Viertelhaus also teaches combination of the compound of formula (I) in crystalline form A, B, or C, with herbicidally active compound from a group that includes the auxinic herbicide dicamba-diglycolamine, in a composition (p. 2 lines 16-23; p. 32 lines 6-40; p. 37 lines 17-28; p. 56 lines 9-25).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the herbicidal actives within the composition claimed by US’346 into the microcapsule taught by Tsuda, and arrive at the instantly claimed invention. As per MPEP 2143 (I(A)), a prima facie case for obviousness exists upon combination of prior art elements according to known methods to yield predictable results. As discussed supra, Tsuda teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent, in particular, in a hydrophobic organic solvent. Tsuda teaches pesticidal active ingredient, compounds which are active ingredients of insect growth regulators, insecticides, fungicides, herbicides, plant growth regulators can be used. The pesticidal active ingredients may be used singly or in combination of two or more kinds. Viertelhaus teaches that the herbicidal active ethyl[3-[2-chloro-4-fluoro-5-(1-methyl-6-trifluoromethyl-2,4-dioxo-1,2,3,4-tetrahydropyrimidin-3-yl)phenoxy]-2-pyridyloxy]acetate (compound of formula (I)) in its crystalline form may be microencapsulated, alone or in combination with a second herbicidal compound (e.g. dicamba salt), and one such microencapsulation technique comprises dispersing an oil phase comprising crystalline form A or B, water insoluble organic solvent (e.g. aromatic hydrocarbon), and an isocyanate monomer into an aqueous solution of a protective colloid, and upon addition of a polyamine, polyurea microcapsules are formed. Viertelhaus teaches microencapsulation of the compound of formula I alone or in combination with second herbicide via the well-established encapsulation technique. One of ordinary skill in the art could have combined US’346 active ingredients (which are also taught by Viertelhause) with the microcapsule of Tsuda by the known method of interfacial polymerization encapsulation, and in combination, US’024 active ingredients and Tsuda’s microcapsule would be expected to perform the same functions as they would separately based on the above teachings that (1) Tsuda’s microcapsule is effective for encapsulating a wide variety of herbicides, and (2) Viertelhaus’s active ingredients are demonstrably amenable to aqueous microencapsulation chemistry. The results would be predictably successful to one of ordinary skill based on these teachings.
Further, regarding the weight ratio of the compound of formula (I) to the adjuvant, as discussed supra, Tsuda taches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. This encompasses a weight ratio of the pesticidal active ingredient to the adjuvant being 1 or less because the pesticidal active ingredient and the organic solvent are included in the core (i.e. oil containing a pesticidal active ingredient and an organic solvent). As discussed supra, Viertelhause discloses using 5-50 wt% of compound of formula (I) according to the invention and 0-40 wt% water insoluble organic solvent (e.g. aromatic hydrocarbon). Thus, Viertelhause also teaches wherein the weight ratio of the compound of formula (I) to the adjuvant is 1 or less. It would have been prima facie obvious to one skilled in the art to manipulate the amounts/weight ratio of the herbicide (e.g. compound of formula I) to the adjuvant based on parameters such as the intensity of unwanted vegetation that needs to be treated with the herbicide and amount of the solvent which would dissolve the active herbicide ingredient. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include the adjuvant present in the core material in the amount of at least 30 wt% based on the total amount of the core material in the microcapsule. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio between a weight of the core material and a weight of the coating (weight of the core material /weight of the coating) to be between 9 and 7999 or between 80 and 4000 in microcapsule. As discussed supra, Tsuda is silent on the weight ratio between the oil containing the pesticidal active ingredient and organic solvent (i.e. core) and the wall made of thermosetting resin (i.e.coating). As mentioned above, Dave also teaches a pesticidal composition comprising a microcapsule consisting of (a) a water insoluble, thin-wall polyurea shell prepared by an interfacial polycondensation reaction between a water-soluble polyamine monomer and an oil soluble isocyanate monomer and (b) a core comprising a low melting active ingredient, wherein the weight ratio of the core to the polyurea shell is from about 2 to about 165, and the core comprises oil solvent. As such, it would have been obvious to one skilled in the art to look towards the teachings of Dave and utilize a weight ratio of the core to the coating material that is known in the art and specifically microcapsules (such as the microcapsule of Dave) which are similar to the microcapsules of Tsuda. Moreover, the weight of the core and the coating is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the weight ratio of the core material to the coating material would have been prima facie obvious to one skilled in the art.
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to have the volume median diameter of the microcapsule to be between 1 and 100 micrometer. As discussed supra, Tsuda teaches an average particle size of a microcapsule is, for example, 1 to 50 micrometer, and preferably 10 to 40 micrometer. Tsuda does not expressly disclose a volume median diameter of the microcapsule as recited in the instant claims. As discussed supra, Dave also teaches the average microcapsule size is from about 10-25 µm and the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Both Tsuda and Dave teach similar microcapsule formulations comprising pesticidal active ingredients and similar average microcapsule size and Dave further teaches the average microcapsule size is measured as volume median diameter by light scattering particle analyzers. Therefore, it would have been obvious to one skilled in the art to have the volume median diameter of the microcapsule of Tsuda to be between 1 and 100 micrometer because such volume median diameter of the microcapsule was known in the art to be used for pesticidal microcapsule compositions. Moreover, volume median diameter of the microcapsule is a result effect variable because it would depend on the amount of the active pesticidal active ingredient included in the core and the amount of pesticidal active ingredient depends on the type and intensity of unwanted pest/vegetation that needs to be controlled. Therefore, absence any evidence of unexpected effect, the volume median diameter of the microcapsule would have been prima facie obvious to one skilled in the art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
Response to Arguments
Applicant argued the previous rejections cannot be sustained in light of the amendments to claims 1 and 4 which recite that adjuvant is present in an amount of at least 30 wt% based on a total weight of core material. It was argued that Dave teaches that the core comprises no more than 5% of oil solvent with respect to the total weight of the core.
In response, applicant’s attention is respectfully drawn to the new 103 rejections above wherein Tsuda et al. is utilized as the primary reference and Tsuda does not teach away from using a solvent in an amount of at least 30 wt%. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is generally about 5 to 90% by weight, preferably about 10 to 60% by weight, and more preferably about 20 to 50% by weight of the entire oil. Further, a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight. Tsuda also teaches the pesticidal active ingredient used in the present invention is not particularly limited insofar as it is able to form a stable liquid state by being dissolved or dispersed in an organic solvent. Tsuda is silent on the amount of adjuvant present in the core material based on the total amount of the core material (e.g. by weight of the entire oil in Tsuda’s microcapsule). However, Ogawa also teaches microencapsulated pesticide compositions wherein a pesticide composition microencapsulated with a polyurea film or a polyurethane film produced by an interfacial polymerization is disclosed. Further, Ogawa teaches various solvents can be added to the pesticide composition of the present invention for the purpose of suppressing crystal precipitation, enhancing pesticidal efficacy, and the like. Examples of the solvent used include phenylxylylethane, methylnaphthalene, and alkylbenzene. Aromatic hydrocarbons such as diisodecyl adipate, dialkyl phthalate (e.g. ditridecyl phthalate) and other esters. As such, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to manipulate the amount of the solvent during routine optimization and select an optimal amount, such as the claimed amount, based on the parameters such selecting an amount that would suppress crystal precipitation, enhance pesticidal efficacy and an amount that would be optimal to dissolve the pesticidal active ingredient.
Similarly, with regards to the double patenting rejections, the combination of Tsuda and Ogawa render obvious the amount of the adjuvant present in the core. Further, as discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the pesticidal composition is generally about 0.0001 to 0.03% by weight and the content of the organic solvent in the pesticidal composition is generally about 0.0002 to 0.06% by weight, which encompasses a ratio of 1:1 between the pesticidal active ingredient and organic solvent. As discussed supra, Tsuda teaches a content of the pesticidal active ingredient in the oil in the microcapsule is preferably about 20 to 50% by weight of the entire oil (i.e. core). Thus, with a ratio of 1:1 between the pesticidal active ingredient and organic solvent and a content of the pesticidal active ingredient in the oil in the microcapsule being about 20 to 50% by weight of the entire oil would equate to 20-50% of organic solvent, which overlaps the amount of adjuvant in the core recited in the instant claims.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI SAEED whose telephone number is (571)272-2371. The examiner can normally be reached M-F 8-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUE X LIU can be reached at 5712725539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALI S SAEED/Examiner, Art Unit 1616
Prosecution Insights