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 .
Applicants’ arguments, filed 10/23/2025, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP 2020-00723 1A, publication date 01/16/2020; citing English machine translation) in view of Ueda et al. (EP 1283009A1, publication date 02/12/2003; cited in PTO-892 of 06/27/2025 and copy provided with Non-Final Office Action 06/27/2025) as evidenced by Webb (Chapter 9: Herbicide Formulations and Delivery, Weed Management Handbook, 2002, p. 171, 178-9).
Regarding instant claims 1-8, Sato discloses a compound with the structure described by “Compound(I)” (see Figure 1; i.e., compound of instant claim 1, formula (I)) having pest control activity [p. 3, para. 1].
Figure 1. Pesticide structure according to Sato at page 3 (Compound(I)).
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The compound is provided in a pesticidal composition which may include formulations such as milk suspensions (EW) (i.e., oil-in-water emulsion according to Webb at page 177, second full paragraph) and emulsions [p. 10, second full paragraph]. Suitable liquid carriers for the pesticidal composition include toluene and xylene (i.e., aromatic organic solvents with water solubility of 10 mass% at 25°C, according to instant specification at paragraph 17) [p. 13, para. 1]. Furthermore, the composition may include nonionic surfactants [p. 10, last paragraph]. In the examples, Sato discloses a composition comprising 5 parts by mass compound (I) and 63 parts by mass xylene was emulsified (i.e., active:organic solvent ratio of 1:12.6) [p. 59, first two paragraphs].
Sato does not teach the oil phase particle size of the emulsion.
Ueda discloses an insecticidal (i.e., pesticidal) composition comprising a dihaloprpene compound (i.e., active agent), a dispersant (i.e., surfactant), an organic liquid and water [abstract]. According to Ueda the organic liquid is the solvent [p.3 line 43] suitable examples of which include aromatic solvent such as xylene [p. 4, lines 21-22]. The composition may be formulated as an emulsion wherein the droplets of organic solvent contain “the present compound [active agent] and the present solvent are emulsified in an aqueous phase” [p. 5, line 35-36]. The diameter of the emulsified solvent droplets is usually 0.1-50 µm [p. 5, lines 47-49].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the emulsion taught by Sato to have an oil phase droplet size of 0.1-50 µm because Ueda discloses that is a suitable oil phase droplet size for a composition comprising a pesticide dissolved in an aromatic solvent (xylene), dispersed in an aqueous phase which further comprises a surfactant. See MPEP 2144.07. As such, the instantly claimed range would have been obvious to one of ordinary skill in the art, at the time of filling, because the claimed ranges (i.e., 0.10-11 µm and 0.15-9 µm) lie inside the range of the prior art. See MPEP 2144.05(I).
Additionally, Sato teaches the component of the instantly recited pesticide composition and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment. However, given the disclosure of each component individually, it would have been prima facie obvious to combine them. MPEP 2143 and 2144.06(I).
Finally, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range for the ratio of active agent to organic solvent (1:5 to 1:15) overlaps with the range taught by the prior art (1:12.6) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have formulation a pesticidal composition comprising a surfactant and an oil phase dispersed in an aqueous phase wherein the oil phase contains the compound of formula (I) (i.e., Compound(I))) dissolved in an aromatic solvent having a water solubility at 25°C of 10 mass% or less. Wherein the median diameter of the oil phase particles is within the instantly claimed ranges. Wherein the ratio of active agent to solvent is within the instantly claimed range.
Response to Arguments
The Examiner thanks applicant for identifying a typo in the rejections statements of the Office Action mailed 06/27/2025. Ueda, which was relied to support the showing of obviousness, was cited in the Notice of Reference Cited (PTO-892) and a copy was provided in the Office Action mailed 06/27/2025.
1) On page 6 of their remarks, Applicant argues that a skilled artisan would not have been motivated to optimize the ratio of active agent to solvent because none of the “references [of record] alone or in combination do not recognize that the mass ratio
of organic solvent to Compound (I) is a result-effective variable with respect to emulsion
stability, duration of emulsion stability, or temperature range of emulsion stability.”
This argument is moot. The mass ratio of active agent to solvent was not rendered obvious because the ratio was recognized as a result effective variable and therefore optimizable. Rather, the ratio is obvious because Sato exemplifies an active to solvent ratio within the instantly claimed range.
2) on pages 6-7 of their remarks, Applicant asserts the claimed mass ratios of active agent to solvent provide unexpected results, namely unexpected emulsion stability. Applicant cites the Declaration under 37 C.F.R. § 1.132 filed 10/23/2025.
This argument is not persuasive. First, the application as originally filed disclose the mass ratio of active to solvent can be adjusted to effect emulsion stability [0021], but not that it provides unexpected results.
Second, overcoming a rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the results must truly be unexpected and the claims must be commensurate in scope. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b).
In the present case applicant has not shown that the results are truly unexpected because it is not clear what it responsible for the emulsion stability when the mass ratio is above the claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). (MPEP 716.02(d)). To demonstrate the effect of an active:solvent mass ratios above the claimed range, applicant compared the inventive composition to comparative example II. However, comparative composition II of the declaration has a particle size of 11.5 microns, which is outside the claimed range of 0.10-11 microns. As such, comparative composition II differs from the claimed compositions in mass ratio of active agent to organic solvent and in droplet size. This is important because composition 9 in Table 1 of the instant specification (reproduced below), demonstrates reduced stability when a composition differs from the claimed composition only by droplet size, i.e., droplet size of 11.4 microns.
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Therefore, it is not clear if comparative composition II of the declaration forms precipitates due the active:solvent ratio or due to the droplet size. In other words, applicant has not provided a fair comparison of the inventive composition to a composition with mass ratio greater than the claimed mass ratio, i.e., a composition that differs only in the mass ratio of active to solvent.
Furthermore, droplet size is recognized by the prior art as important parameters that influences emulsion stability. See, for example, Goodarzi et al. (Canadian Journal of Chemical Engineering (abstract), 11/18/2018, v. 97, no. 1) which discloses “[t]he droplet size variation is an important parameter that influences the stability and rheological characteristics of the emulsions” [abstract].
The "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case, the claims are not commensurate in scope with the evidence. The compositions of the Declaration comprise only non-ionic emulsifiers in specific amounts. One of ordinary skill in the art would not have expected the non-ionic surfactants in the amounts disclosed in the Declaration to reasonably represent all surfactants in any amount, as instantly claimed. Furthermore, the Declaration only discloses compositions comprising 1 part active agent and does not explain how this reasonably represent the scope of the claimed composition which encompasses any amount of active agent. Similarly, the Declaration does not explain how Solvesso 200ND (containing C10~C13 alkylnaphthalene as its main aromatic hydrocarbon) reasonably represents all organic solvents having a water solubility at 25 deg C of 10%mass or less. Finally, every example composition in the Declaration comprises propylene glycol which is not required by the claims. Therefore, the claims are not commensurate in scope with the showing of objective evidence.
Conclusion
THIS ACTION IS MADE FINAL. 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 COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./ Examiner, Art Unit 1612
/WALTER E WEBB/ Primary Examiner, Art Unit 1612