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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/19/2026 has been entered.
Status of the Claims
Claims 1-11 are pending and under current examination.
Withdrawn Claim Rejections
The provisional nonstatutory double patenting rejections over co-pending application numbers 18/254,828, 18/255,000, and 18/255,334 are withdrawn in view of the terminal disclaimer filed 5/19/2026 and approved 6/9/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites the limitation “ pesticidal composition diluted with water (0.01 mass% as a concentration of the compound represented by the formula (I))”. This renders the claim indefinite because it is not clear is the mass percentage of the compound represented by the formula (I) refers to the undiluted or diluted concentration of the compound.
The term “diluted” in claim 11 is a relative term which renders the claim indefinite. The term “diluted” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. With no definition provided, it is impossible to discern how much the pesticidal composition needs to be diluted in order to render a T20 value within the range embraced by the instant claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li (U.S. Patent Application Publication No. 2015/0105254, publication date: 4/16/2015, of record) in view of Tohyama (U.S. Patent No. 6,537,948, issue date: 3/25/2003, of record), as evidenced by Hartzler (A historical perspective on dicamba, publication date: 12/19/2017, of record) and Merriam-Webster (Emulsion, available 8/2/2006, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Li teaches a stable aqueous herbicidal composition comprising a water-soluble salt of a synthetic auxin herbicide, a second water-insoluble herbicide, at least one ionic and one non-ionic surfactant, a water immiscible organic solvent, and water [0019-0024]. The surfactants may be present at 0g/L to about 150g/L [0015] and the water insoluble herbicide may be present from about 0.1 g ae/L to about 400 g ae/L [0014].
Regarding claim 2, Li teaches that composition may contain at least one ionic and one non-ionic surfactant [0022].
Regarding claim 3, Li teaches that the water immiscible organic solvent may be selected from one or more of petroleum fractions or hydrocarbons such as aromatic hydrocarbons [0076].
Regarding claims 4, 5, 6, and 7, Li teaches that the water-soluble salt of the synthetic auxin herbicide is a water-soluble salt of dicamba [0039]. Hartzler teaches that dicamba is a benzoic acid and carboxylic acid compound (pg. 1, third paragraph).
Regarding claim 8, Li teaches that the water-soluble salt of the synthetic auxin herbicide may be dicamba diglycol ammonium [0039].
Regarding claim 9, Li teaches that the water immiscible organic solvent may serve as a carrier for the second water-insoluble herbicide and provides improved solubility of the water-insoluble herbicide in the aqueous herbicidal compositions [0074]. Li also teaches that the composition readily forms a stable emulsion upon dilution into a spray solution of water [0018]. Merriam-Webster dictionary defines emulsion to mean “a system consisting of a liquid dispersed with or without an emulsifier in an immiscible liquid usually in droplets of larger than colloidal size”. The Examiner therefore considered the stable emulsion embraced by Li to encompass the “aqueous phase and particles of an oil phase dispersed in the aqueous phase” limitation of the instant claim.
Regarding claim 11, Li teaches the relevant limitations of claim 1 as described above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 1, Li does not embrace a compound represented by the formula I of the instant claim or a specific weight ratio of surfactant to water-insoluble pesticide. However, this deficiency is cured by Tohyama.
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Tohyama teaches an herbicidal compound of the formula I:
wherein R1 is preferably a trifluoromethyl (col. 7 line 57) and R2 is preferably a methyl (col. 7 line 61). Q-R3 is preferably 2-(ethoxycarbonyl)methoxy-3-pyridyl (col. 8 line 3). Y is preferably oxygen (col. 7 line 55), X1 is preferably chlorine, and X2 is preferably fluorine (col. 7 lines 66-67). The herbicidal compound may be mixed with a liquid carrier or diluent to give emulsifiable concentrates or concentrated emulsions (col. 50 lines 1-3). The liquid carrier may include aromatic hydrocarbons (col. 50 line 16). The compounds embraced by Tohyama have excellent herbicidal activity can exhibit excellent selectivity between crops and weeds (col. 47 lines 24-26).
Regarding claim 11, Li does not teach the T20 value of the claimed pesticidal composition.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 1, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to utilize the herbicidal compound embraced by Tohyama in the pesticidal composition embraced by Li. One would have understood in view of Tohyama that the compound of formula I is suitable for mixture with an aromatic hydrocarbon liquid carrier and further formulation into an emulsifiable concentrate or concentrated emulsion. It would have been obvious that the compound of formula I, embraced by Tohyama, could be dispersed in the aromatic hydrocarbon and used in the resulting emulsion formulation embraced by Li. One of ordinary skill in the art of filing would have been motivated to include the compound of formula I in the pesticidal formulation embraced by Li to utilize the excellent weed-selective herbicidal activity of the compounds embraced by Tohyama. The artisan of ordinary skill would have had reasonable expectation of success because Li broadly embraces water-insoluble herbicidal compounds that may be dispersed in a water-immiscible organic solvent. See MPEP 2144.07.
Furthermore, it would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of surfactant to water-insoluble herbicide present in the composition embraced by Li to lie within the range embraced by the instant claim. One of ordinary skill would have been motivated to adjust the weight ratio of water-insoluble herbicide to surfactant in order to optimize the formulation and performance of the pesticide composition. The artisan of ordinary skill would have had reasonable expectation of success because the weight ranges of surfactant and water-insoluble herbicide in the composition embraced by Li encompass the weight ratios of the instant claim. See MPEP 2144.05.
Regarding claim 11, Li does not disclose the surface tension properties as recited in claim 11. However, the invention as claimed is not structurally distinguishable from the disclosure of Li and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Li (U.S. Patent Application Publication No. 2015/0105254, publication date: 4/16/2015, of record) in view of Tohyama (U.S. Patent No. 6,537,948, issue date: 3/25/2003, of record) as applied to claims 1-9 and 11 above, and further in view of Leong et. al. (Ultrasonics Sonochemistry, pg. 721-777, publication year: 2009, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Li teaches that that the composition readily forms a stable emulsion upon dilution into a spray solution of water [0018]. Li also teaches that the composition does not exhibit phase separation [0084] and is visually clear to the naked eye [0085].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Li does not teach that a volume mean diameter of the particles of the oil phase is between 1-100nm. However, this deficiency is cured by Leong.
Leong teaches that emulsions with droplet sizes between 20 and 200nm can be optically transparent (pg. 721, Introduction).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The volume mean diameter of the particles of the oil phase in the pesticidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal oil particle size in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Li teaches that the composition does not exhibit phase separation and is visually clear to the naked eye, indicating a small particle size of the oil droplet present within the emulsion. The Examiner considers it prima facie obvious to optimize the volume mean diameter of the particles of the oil phase in order to achieve a visually clear solution, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized in view of Leong that a small droplet size in an emulsion has a direct effect on the transparency of the emulsion and therefore is an optimizable variable.
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive.
On page 6, Applicant argues that Li merely discloses the broad weight ratio of the surfactant and the second herbicide and that Li does not specifically disclose the weight ratio of the instant claim. This is not found persuasive. The Examiner respectfully draws attention to MPEP 2144.05, which states: “in the case where the claimed ranges ‘overlap or lie inside ranges discloses by the prior art’ a prima facie case of obviousness exists”. Li teaches that the surfactants may be present at 0g/L to about 150g/L [0015] and the water insoluble herbicide may be present from about 0.1 g ae/L to about 400 g ae/L [0014]. The weight ratio of surfactant to herbicide recited by the instant claim 1 lies inside the range taught by Li, therefore the claimed weight ratio is obvious over Li and the rejection is maintained.
On page 6, Applicant argues that the instant composition exhibits unexpected results of improved stability and herbicidal efficacy when the weight ratio between the compound (I) and the surfactant is from 1:11 to 1:50. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results is unexpected and unobvious over the prior art.
Differences are of both practical and statistical significance: The evidence of unexpected results is of practical and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The composition of the instant claim 1 embraces any herbicidal active salt, any organic solvent, and any surfactant. Claim 2 further limits the surfactant to comprise a nonionic surfactant and Claims 4-8 further limit the herbicidal active salt to a dicamba salt or a 2,4-D salt. In order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate the stability at the claimed ratio of compound (I) to surfactant for each and every surfactant, every organic solvent, and every herbicidal active salt. However, the evidence of unexpected results in the specification and affidavit are limited to two surfactant systems (the commercial surfactants Induce and Synperonic), dicamba diglycolamine, and a single organic solvent (the commercial solvent Solvesso 200NB). Furthermore, the emulsion is not a required characteristic of the inventive composition. Therefore, the evidence of unexpected results is not in commensurate scope with the claims.
On page 10, Applicant argues that there is no requirement to recite the results themselves in the claims when demonstrating unexpected results. This is found persuasive. However, the evidence of unexpected results is not in commensurate scope with the claims for the reasons stated above.
Response to Affidavit
Applicant’s declaration under 37 C.F.R. 1.132 filed 5/19/2026 has been fully considered but is not persuasive. As explained in the response to arguments above, the evidence amounts to increased stability and emulsion stability of formulations with a surfactant: herbicide ratio in the range embraced by the instant claim 1, therefore the differences are unexpected and unobvious over the prior art and are of practical significance. However, the evidence of unexpected results is limited to two surfactant systems, a single herbicidal active agent, and a single organic solvent. Therefore, the evidence of unexpected results is not in commensurate scope with the claims.
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 1-9 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,624,346, in view of Li (U.S. Patent Application Publication No. 2015/0105254, publication date: 4/16/2015, of record) and Tohyama (U.S. Patent No. 6,537,948, issue date: 3/25/2003, of record), as evidenced by as evidenced by Hartzler (A historical perspective on dicamba, publication date: 12/19/2017, of record) and Merriam-Webster (Emulsion, available 8/2/2006, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘346 patent embrace 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, the same compound embraced by formula (I) of the instant claim 1, and one or more dicamba salts, including dicamba diglycolamine. Hartzler teaches that dicamba is a benzoic acid and carboxylic acid compound (pg. 1, third paragraph).
The claims of the ‘346 patent do not embrace water, a surfactant, a weight ratio between the compound of formula (I) and the surfactant, or a composition that contains an aqueous phase and particles of an oil phase dispersed in the aqueous phase wherein the volume mean diameter of the particles of the oil phase is between 1-100nm or a T20 value. However, these deficiencies are cured by Li. Li teaches a stable aqueous herbicidal composition comprising a water-soluble salt of a synthetic auxin herbicide, a second water-insoluble herbicide, at least one ionic and one non-ionic surfactant, a water immiscible organic solvent, and water [0019-0024]. The surfactants may be present at 0g/L to about 150g/L [0015] and the water insoluble herbicide may be present from about 0.1 g ae/L to about 400 g ae/L [0014]. Li teaches that the water-soluble salt of the synthetic auxin herbicide is a water-soluble salt of dicamba [0039]. Hartzler teaches that dicamba is a benzoic acid and carboxylic acid compound (pg. 1, third paragraph). Li also teaches that the water-soluble salt of the synthetic auxin herbicide may be dicamba diglycol ammonium [0039].
Li also teaches that the water immiscible organic solvent may serve as a carrier for the second water-insoluble herbicide and provides improved solubility of the water-insoluble herbicide in the aqueous herbicidal compositions [0074]. Li also teaches that the composition readily forms a stable emulsion upon dilution into a spray solution of water [0018]. Merriam-Webster dictionary defines emulsion to mean “a system consisting of a liquid dispersed with or without an emulsifier in an immiscible liquid usually in droplets of larger than colloidal size”. The Examiner therefore considered the stable emulsion embraced by Li to encompass the “aqueous phase and particles of an oil phase dispersed in the aqueous phase” limitation of the instant claim. Tohyama teaches that compounds of formula (I) have excellent herbicidal activity can exhibit excellent selectivity between crops and weeds (col. 47 lines 24-26).
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to utilize the herbicidal compounds embraced by the claims of the ‘346 patent in the pesticidal composition embraced by Li. One would have understood in view of the claims of the ‘346 patent that the compound of formula I is suitable formulation with a dicamba diglycolamine salt. It would have been obvious that the compound of formula I, embraced by the claims of the ‘346 patent, could be dispersed in the aromatic hydrocarbon and used in the resulting emulsion formulation embraced by Li. One of ordinary skill in the art of filing would have been motivated to include the compound of formula I in the pesticidal formulation embraced by Li to utilize the excellent weed-selective herbicidal activity of the compounds embraced by the claims of the ‘346 patent, as taught by Tohyama. The artisan of ordinary skill would have had reasonable expectation of success because Li broadly embraces water-insoluble herbicidal compounds that may be dispersed in a water-immiscible organic solvent together with a dicamba diglycolamine salt. See MPEP 2144.07.
The weight ratio of herbicide and surfactant is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight ratio of herbicide to surfactant in order to best achieve the desired results as such would provide advantageous pesticidal effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, the claims of the ‘346 patent embraces a pesticidal formulation containing a compound of formula (I) and a dicamba salt. The Examiner considers it prima facie obvious to optimize the amounts of both herbicidal agent and surfactant present in a pesticidal composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the combination of the herbicide compound of formula (I) and dicamba salt may be used in a formulation embraced by Li that comprises a surfactant in addition to the herbicidal active compounds and that the amount of herbicidal agent and surfactant present in the composition would directly affect the strength and formulation of the composition and therefore be an optimizable variable.
The invention as claimed in the instant claims is not structurally distinguishable from the disclosure of the claims of the ‘346 patent in view of Li, and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over 1-6 of U.S. Patent No. 10,624,346, in view of Li (U.S. Patent Application Publication No. 2015/0105254, publication date: 4/16/2015, of record) and Tohyama (U.S. Patent No. 6,537,948, issue date: 3/25/2003, of record), as applied to claims 1-9 and 11 above, and further in view of Leong et. al. (Ultrasonics Sonochemistry, pg. 721-777, publication year: 2009, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘346 patent teach the relevant limitations as described above. The claims of the ‘346 patent do not teach a volume mean diameter of the particles of the oil phase is between 1-100nm. However, this deficiency is cured by Li and Leong. Li teaches that that the composition readily forms a stable emulsion upon dilution into a spray solution of water [0018]. Li also teaches that the composition does not exhibit phase separation [0084] and is visually clear to the naked eye [0085]. Leong teaches that emulsions with droplet sizes between 20 and 200nm can be optically transparent (pg. 721, Introduction).
The volume mean diameter of the particles of the oil phase in the pesticidal composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal oil particle size in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Li teaches that the composition does not exhibit phase separation and is visually clear to the naked eye, indicating a small particle size of the oil droplet present within the emulsion. The Examiner considers it prima facie obvious to optimize the volume mean diameter of the particles of the oil phase in order to achieve a visually clear solution, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized in view of Leong that a small droplet size in an emulsion has a direct effect on the transparency of the emulsion and therefore is an optimizable variable.
Response to Arguments
Applicant's arguments with respect to the double patenting rejection over claims 1-6 of U.S. Patent No. 10,624,346 filed 11/5/2025 have been fully considered but they are not persuasive.
On page 11, Applicant argues that the ‘346 patent does not teach or suggest an organic solvent, a surfactant, and water in view of the prior art references for the same reasons stated above regarding the rejections under 35 U.S.C. 103. This is not found persuasive. Li teaches an aqueous herbicidal composition comprising a water-soluble salt of a synthetic auxin herbicide, a water insoluble herbicide, a surfactant, a water immiscible organic solvent, and water. It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to utilize the herbicidal compounds embraced by the claims of the ‘346 patent in the pesticidal composition embraced by Li for the reasons described in the double patenting rejection above. As described in the response to arguments above, the evidence of unexpected results is not in commensurate scope with the claims; therefore, the unexpected results are not persuasive and the rejection is maintained.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
