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 05/29/2026, 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 Rejections and/or objections not reiterated from previous office action are hereby withdrawn.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 – New by Amendment
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.
1) Claims 1-7, 9-11 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Winkelman et al. (US 2018/0297001 A1, publication date 10/18/2018).
Regarding instant claims 1-4, 6, 7, 9 and 10, Winkelman discloses a “microparticles containing a water-insoluble, solid, non-polymeric, organic active material M, which is selected from the group consisting of agriculturally active compounds, and an aminoplast resin A which surrounds or embeds the material M” [0020]. Wherein the aminoplast resin is the polycondensation product of pre-condensate compounds [0023] and wherein “[t]he pre-condensates are especially selected from the group consisting of melamine-formaldehyde pre-condensates” [0052]. In example 9, Winkelman discloses a microparticle composition, as described above, comprising “66.7 g saflufenacil, 5.0 g surfactant 1, 24.1 g protective colloid 1, 15.2 g aminoplast pre-condensate P 1, 539 g deionised water” (i.e., 22.8% w/w pre-condensate P1 based on the weight of the active) [0175]. Wherein protective colloid 1 is poly(2-acrylamido-2-methylpropane sulfonic acid) sodium salt [0140] which is an anionic polymeric surfactant comprising homo- or copolymers made from (meth)acrylamide monomers having sulfonic acid group (i.e., instant claims 6 and 7) [0075-0076]. Wherein surfactant 1 is sodium dodecyl sulfate (i.e., sodium lauryl sulfate; instants claim 9 and 19) [0142]. Wherein pre-condensate p1 is etherified melamine formaldehyde pre-condensates (i.e., a melamine formaldehyde resins; instant claim 2) [0143]. Wherein the d(0.5) value was 19 um (i.e., instant claim 5) [0177]. Wherein the composition is an aqueous suspension (i.e., instant claim 10) [0177]. Winkelman also discloses, with respect to the compositions generally, that suitable agriculturally active compounds (M) “include in particular the following compounds: herbicides, such as saflufenacil, pyroxasulfon, water-insoluble salts of dicamba, diuron, trifludimoxazin and pendimethalin” [0038]. As a note “average particle diameters can be determined by dynamic light scattering” [0029]. Winkelman also discloses that “the molar ratios of melamine to formaldehyde [pre-condensates] are generally in the range of 1:1.5 to 1:10” [0049].
Winkelman does not anticipate the instant claims because trifludimoxazin is not disclosed in the examples and Winkelman does not explicitly disclose the amount of formaldehyde with respect to the active agent.
However, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, before the effective filling date of the claimed invention, to have selected and combined known components for their established functions with predictable results by following the teachings of Winkelman. MPEP 2143 and 2144.06(I).
Specifically, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have simply substituted the saflufenacil of example 9 for trifludimoxazin because Winkelman discloses both actives are suitable herbicides for the agriculturally active material (M). One would have been motivated to make this substitution, and had an expectation of success in making this substitution, because Winkelman suggests a composition comprising trifludimoxazin as the active material (M) and discloses saflufenacil and trifludimoxazin as equivalent agriculturally active materials (M). The skilled artisan would have been motivated to substitute the trifludimoxazin of the broader disclosure in place of the saflufenacil of Example 9 for the agriculturally active compound with a reasonable expectation of success. The simple substitution of one known element (e.g., the trifludimoxazin of the broader disclosure) in place of another (e.g., the saflufenacil of Example 9) in order to achieve predictable results (agriculturally active compound) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
It also would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have modified to the pre-condensate disclosed by Winkelman at example 9 to include melamine and formaldehyde at the ratios desired by Winkelman. One would have been motivated to, and had an expectation of success in modifying the pre-condensate of example 9 in this way because Winkelman discloses the molar ratios are desired and suitable for the melamine-formaldehyde per-condensates. See MPEP 2143, Exemplary Rationale A.
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). The combined teaching of the melamine-formaldehyde molar ratios and the melamine-formaldehyde in example 9 of Winkelman results in a composition comprising 5.9-15.96% w/w formaldehyde based on the weight trifludimoxazin. The molar mass of melamine is about 126g/mol1 and the molar mass of formaldehyde is about 30g/mol2, thus the mass ratio range of melamine to formaldehyde (based on the disclosed melamine to formaldehyde 1:1.5 to 1:10 molar ratios) is about 126:45 to about 126:300. Therefore, the prior art teaches the melamine-formaldehyde pre-condensates may comprise about 26% to about 70% w/w formaldehyde based on the weight of the pre-condensates. Additionally, the composition of Example 9 comprises 22.8% w/w pre-condensate based on trifludimoxazin (i.e., 15.2/66.7*100%). Thus, Winkelman teaches the composition may comprises about 5.9-15.96% w/w formaldehyde based on the weight of the active (i.e., trifludimoxazin).
Accordingly, the instantly claimed ranges of formaldehyde based on the total weight of trifludimoxazin (0.1-20% w/w, 1-15% w/w and 3-10% w/w; instant claims 1, 20 and 21, respectively) overlap with the range taught in the prior art (about 5.9-15.9% w/w), and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated an aqueous suspension (claim 10) comprising trifludimoxazin embedded in (or encapsulated by) a polycondensation product of a melamine formaldehyde resin (claims 1-2), an anionic polymeric surfactant made from homo- copolymers of a (meth)acrylamide monomer having sulfonic acid groups (claims 6-7) and sodium lauryl sulfate (claim 9 and 19). Wherein the formaldehyde is present within the instantly claimed amount (claims 1, 20 and 21). Wherein the D50 is within the instantly claimed range at 19 µm as determined by light scattering (claim 4). Wherein the composition comprises 66.7 grams active and 15.2 grams aminoplast polymer, or 22.8% aminoplast polymer based on the total of aminoplast polymer and active (claim 3).
Regarding instant claim 5, Winkelman discloses that “the microcapsules/microparticles obtained by the process of the present invention are discrete particles having usually a particle size of … particular less than 50 μm, given as d(0.9) value” [0119]. Winkelman also discloses milling to control particle size [0022].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the teaching of particles with a D90 of 50 um or less with the trifludimoxazin composition taught above. One would have been motivated to combine these elements because Winkelman desires particles with a D90 of 50 um or less. One would have had an expectation of success because Winkelman teaches milling to control the particle size. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the trifludimoxazin microparticle composition taught above wherein less than 10% by weight of the particles have a particle diameter of more than 50 um (i.e., D90 50 or less).
Regarding instant claim 11, Winkelman discloses “[f]rom the aqueous suspension obtained by the process as described herein, the microparticles can be isolated, e.g. by filtration or centrifugation, or the aqueous suspension may be spray-dried, granulated or freeze-dried, to obtain a solid composition in the form of a powder or granules” [0122].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have further processed the composition of Example 9, as taught above, to obtain a solid composition. One would have been motivated to, and had an expectation of success in doing so because Winkelman suggest isolating the microparticles. See MPEP 2143, Exemplary Rationale A.
2) Claims 6, 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Winkelman et al. (US 2018/0297001 A1, publication date 10/18/2018) as applied to claims 1-7, 9-11 and 19-21 above, and further in view of Winowiski (US 2010/0278890 A1, publication date 11/04/2010).
Winkelman, which is taught above, differs from the instant claims insofar as it does not disclose a molecular weight of the lignosulfonic acid. Broadly, Winkelman discloses that aqueous suspension comprising a microparticle of trifludimoxazin embedded in, or encapsulated by, an aminoplast condensation product of an amino and aldehyde compound (see rejection above and Winkelman at [0020], [0023] & [0046]) may comprise a protective colloid which “are principally any water-soluble polymers which are known to stabilize suspensions of water-insoluble material” [0055]. Suitable anionic polymers include “liginin based sulfonic acid, such as lignosulfonic acid” (i.e., instant claim 18) [0059]. Winkelman also discloses the suspensions may be dried to obtain a powder [0122].
Winowiski relates to suspo-emulsions pesticide compositions and discloses “suspo-emulsions comprising pesticide actives may be prepared using a high purity, high molecular weight lignosulfonate as a stabilizer. The resulting suspo-emulsions may then be dried to obtain a powder or granular concentrate where the high molecular weight lignosulfonate acts as a solid matrix for the pesticide actives. The powder or granular concentrate formulations thus formed have high loading rates, good storage properties and are easily reconstituted when added to water” [abstract]. Winowiski discloses that the suspo-emulsions are formed by separately preparing an emulsion comprising the lignosulfonates (see lines 5-13 of [0010]) and a suspension comprising the lignosulfonates (see lines 21-32 of [0010]), then combining the separate emulsions and suspension (see last 5 lines of [0010]). More directly, Winowiski discloses “high molecular weight lignosulfonate as an emulsion stabilizer and suspension stabilizer for the first and second pesticide active, respectively” [0024]. The molecular weight of the lignosulfonic acid, or its salts, used for the suspension is between about 20kDa and about 100kDa (see line 38 of [0010]).
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the lignosulfonic acids of Winowiski for the lignosulfonic acids desire by Winkelman because Winowiski discloses they are suitable for the purpose of stabilizing suspensions of pesticides that may be dried. One would have been motivated to make this selection because Winowiski discloses the lignosulfonates provide desirable effects such as high loading rates, good storage properties and are easily reconstituted when added to water.
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 making this selection the molecular weight of the lignosulfonic acid recited in instant claim 8 (at least 10kDa) would have overlapped with the range in the prior art (20-100 kDa) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a suspension comprising a microparticle of trifludimoxazin embedded in, or encapsulated by, an aminoplast condensation product of melamine and formaldehyde to further comprise lignosulfonic acids with molecular weight within the claimed range.
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.
1) Claims 1-11, 18 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 and 22-23 of copending Application No. 18/265,460 in view of Winkelman et al. (US 2018/0297001 A1, publication date 10/18/2018) and Winowiski (US 2010/0278890 A1, publication date 11/04/2010).
The instant claims and the copending claims both disclose a microparticle composition comprising an active, wherein the active is present in the form of microparticles, which is surrounded or embedded by an aminoplast polymer, which is a polycondensation product of one or more amino compound and one or more aldehyde [instant claim 1; copending claim 1]. Wherein the aminoplast polymer is selected from the groups consisting of melamine formaldehyde resins and urea formaldehyde resins [instant claim 2; copending claim 5]. Wherein the amount of aminoplast polymer in the microparticle composition is from 0.5 to 40% by weight, based on the total weight of aminoplast polymer and active [instant claim 3; copending claim 4]. Wherein the microparticles have a weight average particle diameter d50 in a range from 1 to 25 um, as determined by dynamic light scattering of an aqueous dispersion of the microcapsules [instant claim 4; copending claim 8]. Wherein the microparticles comprise less than 10% by weight of particles having a particle diameter of more than 50 um [instant claim 5; copending claim 9]. Further comprising anionic polymeric surfactant is a homo- or copolymer of a (meth)acrylate monomer or a (meth)acrylamide monomer having a sulfonic acid group [instant claims 6-7; copending claims 10-11]. Wherein the composition may be a suspension or solid [instant claims 10-11; copending claims 13-14]. The copending claims also disclose the composition may comprise auxiliaries conventionally employed in plant protection formulations [copending claim 15] and that the aminoplast pre-condensate is initiated in the presence of at least one anionic polymeric surfactant having a plurality of sulfate or sulfonate groups [copending claim 20]. The copending claims disclose the active may be fluxapyroxad [copending claim 3].
The copending claims differ from the instant claims insofar as they do not disclose trifludimoxazin, lauryl sulfate, lignin sulfonic acids and an amount of formaldehyde based on the weight of the active agent.
Winkelman discloses that aqueous suspension comprising a microparticle of trifludimoxazin embedded in, or encapsulated by, an aminoplast condensation product of an amino and aldehyde compound (see rejection above and Winkelman at [0020], [0023] & [0046]) may comprise a protective colloid which “are principally any water-soluble polymers which are known to stabilize suspensions of water-insoluble material” [0055]. Suitable anionic polymers include “liginin based sulfonic acid, such as lignosulfonic acid” [0059]. Winkelman also discloses the suspensions may be dried to obtain a powder [0122] and that compositions may comprise sodium dodecyl sulfate (i.e., sodium lauryl sulfate) [0142]. Finally, Winkelman discloses the active may be fluxapyroxad or trifludimoxazin [0038]. Winkelman also discloses that the aminoplast pre-condensate is present “in an amount in the range of 1 to 50% by weight … based on the material M” [0045] and that “the molar ratios of melamine to formaldehyde [pre-condensate] are generally in the range of 1:1.5 to 1:10” [0049].
Winowiski relates to suspo-emulsions pesticide compositions and discloses “suspo-emulsions comprising pesticide actives may be prepared using a high purity, high molecular weight lignosulfonate as a stabilizer” [abstract]. The molecular weight of the lignosulfonic acid, or its salts, used for the suspension is between 20kDa and about 100kDa (see line 38 of [0010]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have simply substituted the fluxapyroxad of the copending claims for the trifludimoxazin of Winkelman because Winkelman discloses them both as suitable active agents to be embedded in aminoplast polymers. The skilled artisan would have been motivated to have substituted the trifludimoxazin of Winkelman in place of the fluxapyroxad of copending claims for active agent with a reasonable expectation of success. The simple substitution of one known element (e.g., the trifludimoxazin of Winkelman) in place of another (e.g., the fluxapyroxad of copending) in order to achieve predictable results (active agent) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the lignosulfonic acids of Winowiski for the anionic polymer surfactant desired by the copending claims because Winowiski discloses them as suitable for the purpose of stabilizing suspensions of pesticides, and Winkelman discloses lignosulfonates are suitable for use with aminoplast pre-condensates.
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 making this selection the claimed molecular weight of the lignosulfonic acid (more than 10kDa) would have overlapped with the range in the prior art (20-100 kDa) and so a prima facie case of obviousness exists.
Similarly, the combined teaching of the pre-condensate melamine-formaldehyde molar ratios of the pre-condensates melamine-formaldehyde of the copending claims results in a composition comprising 0.26-35% formaldehyde w/w based on the total weight of trifludimoxazin. The molar mass of melamine is about 126g/mol3 and the molar mass of formaldehyde is about 30g/mol4, thus the weight ratio of melamine to formaldehyde is about 126:45 to about 126:300. Therefore, the prior art teaches the pre-condensates comprise about 26% to about 70% w/w formaldehyde based on the weight of the pre-condensates and 22.8% w/w pre-condensate based on trifludimoxazin, and so the compositions comprises about 5.9-15.96% w/w formaldehyde based on the weight trifludimoxazin. Accordingly, the instantly claimed ranges of formaldehyde based on the total weight of trifludimoxazin (0.1-20% w/w, 1-15% w/w and 3-10% w/w; instant claims 1, 20 and 21, respectively) overlaps with the range taught in the prior art (about 5.9-15.9% w/w), and so a prima facie case of obviousness exists.
Therefore it, would have been obvious for one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising a microparticle of trifludimoxazin and an aminoplast polymer, wherein the aminoplast is the product of pre-condensates and wherein formaldehyde is present within the instantly claimed amounts.
Finally, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have added the lauryl sulfate of Winkelman to the composition of the copending claims because the copending claims desire conventional auxiliaries. See MPEP 2143, Exemplary Rationale A.
This is a provisional nonstatutory double patenting rejection.
2) Claims 1-11, 18 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,330,128 B2 in view of Winkelman et al. (US 2018/0297001 A1, publication date 10/18/2018) and Winowiski (US 2010/0278890 A1, publication date 11/04/2010).
The instant claims and the copending claims both disclose an aqueous suspension of an agricultural active and an aminoplast resin that surrounds or embeds the active [instant claim 1 and 10; copending claim 1]. Wherein the aminoplast pre-condensate is selected from melamine formaldehyde, urea formaldehyde, and mixtures thereof [instant claim 2; copending claim 2]. The instant claims and copending claims overlap with respect to the amount of pre-condensate [instant claim 3; copending claim 5] and the particle size [instant claims 4-5; copending claim 7]. The copending claims disclose a protective colloid such as a homo-or copolymer of a (meth) acrylate monomer having a sulfonic acid group, a (meth)acrylamide monomer having a sulfonic acid group [instant claims 6-7; copending claim 1].
The copending claims differ from the instant claims insofar as they do not disclose trifludimoxazin a lignin sulfonic acid, a solid composition and lauryl sulfate.
Winkelman discloses that aqueous suspension comprising a microparticle of trifludimoxazin embedded in, or encapsulated by, an aminoplast condensation product of an amino and aldehyde compound (see rejection above and Winkelman at [0020], [0023] & [0046]) may comprise a protective colloid which “are principally any water-soluble polymers which are known to stabilize suspensions of water-insoluble material” [0055]. Suitable anionic polymers include “liginin based sulfonic acid, such as lignosulfonic acid” [0059]. Winkelman also discloses the suspensions may be dried to obtain a powder [0122] and that compositions may comprise sodium dodecyl sulfate (i.e., sodium lauryl sulfate) [0142], which was employed to stabilize protective colloids [0084-0085]. Winkelman also discloses that the aminoplast pre-condensates are present “in an amount in the range of 1 to 50% by weight … based on the material M” [0045] and that “the molar ratios of melamine to formaldehyde [pre-condensate] are generally in the range of 1:1.5 to 1:10” [0049]. Finally, Winkelman discloses the active may be trifludimoxazin [0038].
Winowiski relates to suspo-emulsions pesticide compositions and discloses “suspo-emulsions comprising pesticide actives may be prepared using a high purity, high molecular weight lignosulfonate as a stabilizer” [abstract]. The molecular weight of the lignosulfonic acid, or its salts, used for the suspension is between 20kDa and about 100kDa (see line 38 of [0010]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have simply substituted the fluxapyroxad of the copending claims for the trifludimoxazin of Winkelman because Winkelman discloses them both as suitable active agents to be embedded in aminoplast polymers. The skilled artisan would have been motivated to have substituted the trifludimoxazin of Winkelman in place of the fluxapyroxad of copending claims for active agent with a reasonable expectation of success. The simple substitution of one known element (e.g., the trifludimoxazin of Winkelman) in place of another (e.g., the fluxapyroxad of copending) in order to achieve predictable results (active agent) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have to have selected the trifludimoxazin of Winkelman as the water insoluble agricultural active of the copending claims because Winkelman discloses trifludimoxazin is suitable for embedding in aminoplast polymers as disclosed by the copending claims
Similarly, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the lignosulfonic acids of Winowiski for the anionic polymer surfactant desired by the copending claims because Winowiski discloses them as suitable for the purpose of stabilizing suspensions of pesticides, and Winkelman discloses lignosulfonates are suitable for use with aminoplast pre-condensates.
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 making this selection the claimed molecular weight of the lignosulfonic acid (more than 10kDa) would have overlapped with the range in the prior art (20-100 kDa) and so a prima facie case of obviousness exists.
Similarly, the combined teaching of the pre-condensate melamine-formaldehyde molar ratios of the pre-condensates melamine-formaldehyde of the copending claims results in a composition comprising 0.26-35% formaldehyde w/w based on the total weight of trifludimoxazin. The molar mass of melamine is about 126g/mol5 and the molar mass of formaldehyde is about 30g/mol6, thus the weight ratio of melamine to formaldehyde is about 126:45 to about 126:300. Therefore, the prior art teaches the pre-condensates comprise about 26% to about 70% w/w formaldehyde based on the weight of the pre-condensates and 22.8% w/w pre-condensate based on trifludimoxazin, and so the compositions comprises about 5.9-15.96% w/w formaldehyde based on the weight trifludimoxazin. Accordingly, the instantly claimed ranges of formaldehyde based on the total weight of trifludimoxazin (0.1-20% w/w, 1-15% w/w and 3-10% w/w; instant claims 1, 20 and 21, respectively) overlaps with the range taught in the prior art (about 5.9-15.9% w/w), and so a prima facie case of obviousness exists.
Finally, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have added the lauryl sulfate of Winkelman to the protective colloid of the copending claims because Winkelman discloses it stabilizes the protective colloid. See MPEP 2143, Exemplary Rationale A.
3) Claims 1-11, 18 and 19-21 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 8,709,975 B2 in view of Winkelman et al. (US 2018/0297001 A1, publication date 10/18/2018) and Winowiski (US 2010/0278890 A1, publication date 11/04/2010).
The instant claims and the copending claims disclose an aqueous composition comprising an agricultural active encapsulated in a microparticle of a polymeric material, wherein the polymeric material may be an aminoresin (i.e., aminoplast) [instant claim 1; copending claim 1 and 4]. The instant claims and copending claims overlap with respect to the amount of polymeric material [instant claim 3; copending claim 5] and particle size [instant claims 4-5; copending claim 6]. The copending claims also disclose lignosulfonates [copending claim 1]. The copending claims disclose the active is pendimethalin [copending claim 1].
The copending claims differ from the instant claims insofar as they do not disclose trifludimoxazin, the specific aminoresin, the molecular weight of lignosulfonates, a polymeric surfactant from methacrylate or methacrylamide monomers, a solid composition and lauryl sulfate.
Winkelman discloses that aqueous suspension comprising a microparticle of trifludimoxazin embedded in, or encapsulated by, an aminoplast condensation product of an amino and aldehyde compound, e.g., melamine and formaldehyde (see rejection above and Winkelman at [0020], [0023] & [0046]) may comprise a protective colloid which “are principally any water-soluble polymers which are known to stabilize suspensions of water-insoluble material” [0055]. Suitable anionic polymers include “liginin based sulfonic acid, such as lignosulfonic acid” [0059] and homo- or copolymer of a (meth)acrylate monomer or a (meth)acrylamide monomer having a sulfonic acid group [claim 7]. Winkelman also discloses the suspensions may be dried to obtain a powder [0122] and that compositions may comprise sodium dodecyl sulfate (i.e., sodium lauryl sulfate) [0142], which was employed to stabilize protective colloids used in the condensation of the aminoplast [0084-0085]. Winkelman also discloses that the aminoplast pre-condensates are present “in an amount in the range of 1 to 50% by weight … based on the material M” [0045] and that “the molar ratios of melamine to formaldehyde [pre-condensate] are generally in the range of 1:1.5 to 1:10” [0049]. Finally, Winkelman discloses the active may be trifludimoxazin or pendimethalin [0038].
Winowiski relates to suspo-emulsions pesticide compositions and discloses “suspo-emulsions comprising pesticide actives may be prepared using a high purity, high molecular weight lignosulfonate as a stabilizer” [abstract]. The molecular weight of the lignosulfonic acid, or its salts, used for the suspension is between 20kDa and about 100kDa (see line 38 of [0010]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have simply substituted the pendimethalin of the copending claims for the trifludimoxazin of Winkelman because Winkelman discloses them both as suitable active agents to be embedded in aminoplast polymers (aminoresins). The skilled artisan would have been motivated to have substituted the trifludimoxazin of Winkelman in place of the pendimethalin of copending claims for active agent with a reasonable expectation of success. The simple substitution of one known element (e.g., the trifludimoxazin of Winkelman) in place of another (e.g., the pendimethalin of copending) in order to achieve predictable results (active agent) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the aminoplast (aminoresin) polymeric walls of Winkelman for the aminoresin desired by the copending claims because Winkelman discloses they are suitable for microparticles encapsulating an agriculture actives, e.g., pendimethalin. In making this selection the (methy)acrylate and (meth)acrylamide polymers would have been obvious to add as the protective colloid and sodium lauryl sulfate would have been obvious to add to stabilize that colloid. Furthermore, it would have been obvious to provide the composition as a solid powder following the teachings of Winkelman.
Similarly, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the molecular weights for the lignosulfonic acids of Winowiski for the lignosulfonic acids of the copending claims because Winowiski discloses that range is suitable for the purpose of stabilizing suspensions of pesticides.
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 making this selection the claimed molecular weight of the lignosulfonic acid (more than 10kDa) would have overlapped with the range in the prior art (20-100 kDa) and so a prima facie case of obviousness exists.
Similarly, the amount of formaldehyde suggested by Winkelman for similar compositions would have been obvious to use because it was disclosed as a suitable range. The combined teaching of the pre-condensate melamine-formaldehyde molar ratios of the pre-condensates melamine-formaldehyde results in a composition comprising 0.26-35% formaldehyde w/w based on the total weight of trifludimoxazin. The molar mass of melamine is about 126g/mol7 and the molar mass of formaldehyde is about 30g/mol8, thus the weight ratio of melamine to formaldehyde is about 126:45 to about 126:300. Therefore, the prior art teaches the pre-condensates comprise about 26% to about 70% w/w formaldehyde based on the weight of the pre-condensates and 22.8% w/w pre-condensate based on trifludimoxazin, and so the compositions comprises about 5.9-15.96% w/w formaldehyde based on the weight trifludimoxazin. Accordingly, the instantly claimed ranges of formaldehyde based on the total weight of trifludimoxazin (0.1-20% w/w, 1-15% w/w and 3-10% w/w; instant claims 1, 20 and 21, respectively) overlaps with the range taught in the prior art (about 5.9-15.9% w/w), and so a prima facie case of obviousness exists.
Technological Background
1) The prior art made of record is considered pertinent to applicant's disclosure. National Center for Biotechnology Information (2026). PubChem Compound Summary for CID 7955, Melamine. Retrieved February 2, 2026 from https://pubchem.ncbi.nlm.nih.gov/compound/Melamine. NCBI Melamine is pertinent for teaching the molar mass of melamine.
2) The prior art made of record is considered pertinent to applicant's disclosure. National Center for Biotechnology Information (2026). PubChem Compound Summary for CID 712, Formaldehyde. Retrieved February 2, 2026 from https://pubchem.ncbi.nlm.nih.gov/compound/Formaldehyde. NCBI Formaldehyde is pertinent for teaching the molar mass of formaldehyde.
Response to Arguments
1) On page 5 of their Remarks, Applicant argues that Winkelman fails to teach or suggest the amount of formaldehyde in the aminoplast polymer relative to the total weight of trifludimoxazin.
This argument is not persuasive. The Examiner respectfully disagrees with Applicant’s assertion that Winkelman does not teach the instantly claimed formaldehyde relative to trifludimoxazin for reasons discussed above. Additionally, the Examiner will also point to Winkelman at paragraphs 45 and 48 which teach a preferred range of 5-25% w/w of pre-condensate based on material M and teach a preferred molar ratio of melamine to formaldehyde of 1:4 and 1:6, respectively. The corresponding mass ratio range would therefore be 126:120 to 126:180 because the molar mass of melamine is about 126g/mol and the molar mass of formaldehyde is about 30g/mol (see Technical Background on p. 26 of this Action). Therefore, the pre-condensate would have comprised about 49% - 59% w/w formaldehyde and so Winkelman teaches a composition comprising about 2.45% - 14.75% w/w formaldehyde.
2) On page 6 of their Remarks, Applicant argues the Winkelman does not motivated a skilled artisan to formulated capsule compositions comprising low amounts of formaldehyde in the aminoplast polymer, as allegedly claimed, because Winkelman does not teach the effect of formaldehyde on microcapsule wall thickness.
This argument is not persuasive. As discussed above, the instantly claimed ranges for formaldehyde all overlap with the ranges taught by the prior art (see this Action directly above and at pages 6-7). Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Therefore, even though applicant asserts a skilled artisan would not have understood that formaldehyde relates to wall thickness, the instantly claimed ranges are nevertheless obvious because they overlap with the prior art ranges.
3) On page 6 of their Remarks, Applicant argues that the instantly claimed amount of formaldehyde in the aminoplast polymer is a critical feature of the claimed invention.
This argument is not persuasive. The instant specification discloses formulations with different amounts of “pre-condensate P1” which is defined at page 42, lines 4-5 as “Pre-condensate P1: 70% w/w aqueous solution of etherified melamine formaldehyde pre-condensate, CAS 68002-20-0.” CAS 68002-20-0 is a methylated melamine-formaldehyde resin with the formula (C3H6N6.CH2O)x, i.e., a 1:1 molar ratio of melamine (C3H6N6) to formaldehyde (CH2O), as evidenced at page 1 of Parchem (Parchem, CAS 68002-20-0; 2026 [retrieved 7/22/2026], https://parchem.com/chemical-supplier-distributor/melamine-formaldehyde-resin-methylated-041610).
Specifically, pages 42-43 of the instant specification disclose Example 1 comprises 462 g trifludimoxazin and 134.7 g P1 (29.1% w/w P1 based on trifludimoxazin), Example 2 comprises 462 g trifludimoxazin and 193.12 g P1 (42% w/w P1 based on trifludimoxazin), and Example 3 comprises 462 g trifludimoxazin and 235.72 g P1 (51% w/w P1 based on trifludimoxazin). Considering P1 has a melamine-formaldehyde molar ratio of 1:1 and therefore a weight ratio of 126:30 (see molar masses at Technical Background at page 26 of this Action), then the amount of formaldehyde in Examples 1, 2 and 3 with respect to trifludimoxazin is 5.6% w/w, 8.1% w/w and 9.8% w/w, respectively.
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)). In the present case, Applicant has not provided result outside the claimed range. The comparison of the inventive examples to the trifludimoxazin SC (vulcarus) does not suffice because the trifludimoxazin SC (vulcarus) is not a capsule suspension and does not comprise any aminoplast polymer. Accordingly, the Examiner is not able to determine if the claimed ranges are truly critical to the function of the invention.
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)). The instantly claimed range is recited such that the range reads on both a range of total aminoplast polymer with a set amount of amino compound and a range of formaldehyde in a set amount of aminoplast polymer. On the other hand, as discussed above, the objective evidence only demonstrates variations due to changes in the total amount of aminoplast resin. In other words the claims are not commensurate in scope with the showing of objective evidence because instant claims may read on high amounts of aminoplast resin with low amounts of formaldehyde and low amounts of aminoplast resin with high amounts of formaldehyde, i.e., the independent claim does not recite the total amount of aminoplast resin. The independent claim also recites amino compounds generally which is not commensurate in scope with the narrow showing of melamine.
Additionally, while applicant does not explicitly allege unexpected results, the Examiner respectfully reminds Applicant that according to MPEP 716.02(e) any showing of unexpected results should be compared to the closest prior art. In the present case, the closest prior art is Example 9 of Winkelman.
4) On page 7 of their Remarks, Applicant argues that the secondary reference does not remedy the alleged deficiencies of the primary reference.
This argument is not persuasive for the reasons above and of record.
5) On page 8 of their Remarks, Applicant argues the conflicting claims of the ‘975 patent, as discussed in the double patenting rejections, do not cover the same subject matter as the instantly claims. Applicant further alleges that the subject matter covered by the conflicting claims and the subject matter covered by the instant claims are mutually exclusive.
This argument is not persuasive. As discussed above, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have simply substituted the pendimethalin of the conflicting claims for trifludimoxazin and to have selected the aminoresin of Winkelman for the aminoresin desired by the conflicting claims. The obvious type double patenting rejection stands because the instant claims would have been obvious from the disclosure of the conflicting claims and in view of Winkelman and Winowiski for the reasons discussed above and of record.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.T.W./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
1 NCBI. PubChem Compound Summary for CID 7955, Melamine.
2 NCBI. PubChem Compound Summary for CID 712, Formaldehyde.
3 NCBI. PubChem Compound Summary for CID 7955, Melamine.
4 NCBI. PubChem Compound Summary for CID 712, Formaldehyde.
5 NCBI. PubChem Compound Summary for CID 7955, Melamine.
6 NCBI. PubChem Compound Summary for CID 712, Formaldehyde.
7 NCBI. PubChem Compound Summary for CID 7955, Melamine.
8 NCBI. PubChem Compound Summary for CID 712, Formaldehyde.
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