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 .
Formal Matters
Claims 1-20 and 22-23 are pending.
Claim 21 is canceled.
Election/Restriction
Applicant's election with traverse of Group I, claims 1-15, in the reply filed on 01/20/2026 is acknowledged.
Applicant has also elected the following in the reply filed on 01/20/2026:
Fluopyram as the species of the one or more fungicide F;
Melamine formaldehyde resins as the species of the aminoplast polymer;
poly-AMPS and naphthalene sulfonate condensate as the species of the at least one anionic polymeric surfactant having a plurality of sulfate or sulfonate groups;
Copolymers of alkyl(meth)acrylates and alkyleneoxides as the species of the nonionic acrylic polymer;
Aqueous suspensions of the microparticles as the species of the form of the microparticles; and
Xanthan gum as the species of the one or more auxiliaries.
The traversal is on the grounds that all claims 1-20, 22, and 23, and at least claims 1-15, 22, and 23, should be examined at this time because they do not lack unity and that a lack of unity exists only if a common technical feature lacks novelty or is obvious. Applicant argues that unity of invention in the present application is evidenced by the International Search Report wherein all claims are searched. Applicant argues that the Examiner has not provided proper reasons why each group lacks unity with each other group, specifically describing the unique special technical feature in each group, and that the Examiner has considered the type of claims without considering the special technical feature recited in, and common to, each claim. Applicant argues that the inventions of Groups I-IV are not independent and no evidence exists that a search and examination directed to all claims, and at least claims 1-15 and 22, would be a serious burden on the Examiner.
This is not found persuasive because, per PCT Rule 13.1, the international application shall relate to a group of inventions so linked as to form a single general inventive concept or a “unity of invention” (see MPEP 1850). Per PCT Rule 13.2, “unity of invention” is fulfilled by defining a special technical feature that is shared amidst the claimed inventions. The Rule further specifies that “[t]he expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.” Lack of unity of invention may be directly evident “a priori,” or before considering any prior art when no special technical feature is common to each of the independent claims. Alternatively, lack of unity of invention may only become evident “a posteriori,” or after considering the claims in relation to the prior art. By a posteriori analysis, the claimed invention still lacks unity of invention because the special technical feature lacks inventive step in the art as demonstrated by the teaching of Noller et al (WO 2017/021159 A1, published 02/09/2017, cited in IDS dated 06/06/2023) discussed in the instant Office action below (See rejection under 35 USC 103 below). Further, the fact that all claims were search in the International Search Report is not applicable to examination in this Office. The arguments regarding independence of inventions and search burden are not persuasive because these are not criteria for lack of unity of invention for national stage applications per PCT rule 13.1 and 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Upon further search and consideration, the election of species requirement for the nonionic acrylic polymer set forth in the Office action dated 10/21/2025 is hereby withdrawn.
Claims 16-20 and 22-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (the at least one anionic polymeric surfactant having a plurality of sulfate or sulfonate groups was elected as poly-AMPS and naphthalene sulfonate condensate, and naphthalene sulfonate condensate is not “a homo- or copolymer of a (meth)acrylate monomer or a (meth)acrylamide monomer having a sulfonic acid group”), there being no allowable generic or linking claim.
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (the form of the microparticles was elected as aqueous suspensions of the microparticles), there being no allowable generic or linking claim.
Claims 1-10, 12-13, and 15 are under consideration in the instant Office action to the extent of the elected species, i.e., the one or more fungicide F is fluopyram, the aminoplast polymer is melamine formaldehyde resins, the at least one anionic polymeric surfactant having a plurality of sulfate or sulfonate groups is poly-AMPS and naphthalene sulfonate condensate, the form of the microparticles is aqueous suspensions of the microparticles, and the one or more auxiliaries is xanthan gum.
Priority
This application is a 371 of PCT/EP2021/083866 filed 12/02/2021, claiming priority to EPO 20212390.7 filed 12/08/2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) filed 06/06/2023, 07/14/2023, and 06/11/2025 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action.
Claim Objections
Claims 6-7 are objected to because one of claims 6 and 7 should be amended for consistency, i.e., either both claims should recite “wherein an amount” or “wherein the amount” in order to improve the consistency and readability of the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10, 12-13, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(a) Claim 1 recites the limitation “fungicide F" in line 2 and in line 3. There is insufficient antecedent basis for “fungicide F” in the claim because the claim does not earlier recite “a fungicide F”, however the claim earlier recites “one or more fungicide F” spanning lines 1-2. Therefore, it is unclear whether each recitation of ‘fungicide F’ in line 2 and in line 3 refers to just one of the one or more fungicide F, at least one of the one or more fungicide F, all of the one or more fungicide F, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim. Claims 2-10, 12-13, and 15 are rejected for depending from claim 1 without resolving the ambiguity of claim 1. The Examiner suggests amending “fungicide F” in claim 1 (lines 2 and 3), claim 2 (line 1), claim 3 (line 2), claim 4 (line 2), claim 6 (line 4), and claim 7 (line 3) to “the one or more fungicide F” in order to overcome this rejection.
(b) Each of claims 8 and 9 recite the limitation “the microcapsules” in the last line. There is insufficient antecedent basis for “the microcapsules” in each of the claims because in each case, claim 8/claim 9 nor claim 1 earlier recite “microcapsules”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-10, 12-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Noller et al (WO 2017/021159 A1, published 02/09/2017, cited in IDS dated 06/06/2023).
Noller et al teach a microcapsule composition in the form of an aqueous suspension, wherein the microcapsules comprise a core material comprising solid pyrimethanil and a further pesticide compound selected from the group of fungicides and insecticides, wherein suitable fungicides include fluopyram (See entire document, e.g., Abstract, Page 4 Lines 10-11, Page 6 Lines 3-4, 8-9, 13, and 31, Page 10 Lines 11-12, Page 12 Lines 35-36). The core material is surrounded or embedded by at least one aminoplast polymer most preferably selected from the group consisting of melamine-formaldehyde resins (e.g., Page 4 Lines 10-11, Page 5 Lines 18-19 and 34). Noller et al teach that aminoplast polymers are polycondensation products of one or more aldehydes with one or more amino compounds having usually at least 2 primary amino groups (e.g., Page 4 Lines 19-22). The amount of aminoplast polymers is preferably from 1 to 40% by weight based on total capsule weight (e.g., Page 5 Lines 25-27).
The microcapsules of the present invention are discrete particles having usually a particle size of less than 50 microns. Preferably, the particle size of the microcapsule particles, i.e. their diameter, will in general not exceed 40 microns, preferably not exceed 35 microns and in particular not exceed 30 microns. The particle size given is the so called d90-value, which has to be understood as the value that is not exceeded by the diameters of at least 90% by weight of the microcapsule particles. The microcapsule particles have an average particle diameter, herein also termed d50-value, ranging from 1 to 25 microns, in particular from 1.5 to 20 microns, especially from 1 to 10 microns. The d50-value is defined as the value that is above the diameters of 50% by weight of the particles and below the diameters of 50 % by weight of the particles. The d90 value as well as the d50 value can be calculated from the particle size distribution of the microcapsule particles. The particle size distribution of the microcapsule particles (i.e. the diameters) can be determined by conventional methods such as dynamic or static light-scattering of an aqueous dispersion of the microcapsule composition, e.g. at 25 °C and a concentration in the range of 0.1 to 1 % by weight (e.g., Page 9 Line -Page 10 Line 11).
The composition comprises at least one anionic polymeric surfactant having a plurality of sulfate of sulfonate groups selected from lists including naphthalene sulfonic acid formaldehyde condensates (synonymous with naphthalene sulfonate condensate) and homo- or copolymers of 2-acrylamido-2-methylpropane sulfonic acid (e.g., Page 10 Lines 14-15, 25, and 35-41, Page 11 Lines 15-16).
The aqueous composition may also comprise customary formulation auxiliaries usually employed in aqueous formulations of herbicides, wherein examples of suitable auxiliaries which affect flow behavior and assist in stabilizing the aqueous suspension include xanthan gum, e.g. as Kelzan® grades from Kelco or Rhodopol® grades from Rhodia, and acrylic acid polymers, e.g. Carbopol® grades (e.g., Page 13 Lines 36-39, Page 14 Lines 9-14).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Noller et al but such “picking and choosing” within several variables does not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed ingredients of a microcapsule composition from within the prior art disclosure of Noller et al and arrive at a microcapsule composition in the form of an aqueous suspension, wherein the microcapsules comprise a core material comprising solid pyrimethanil and fluopyram, wherein the core material is surrounded or embedded by at least one aminoplast polymer being melamine-formaldehyde resins in an amount of from 1 to 40% by weight based on total capsule weight, wherein the microcapsules are in the form of discrete particles having a particle diameter (i.e., d90-value) of less than 50 microns and an average particle diameter (i.e., d50-value) from 1 to 25 microns as determined by conventional methods such as dynamic or static light-scattering of an aqueous dispersion of the microcapsule composition, wherein the composition further comprises (a) at least one anionic polymeric surfactant having a plurality of sulfate of sulfonate groups being naphthalene sulfonic acid formaldehyde condensates and homo- or copolymers of 2-acrylamido-2-methylpropane sulfonic acid and (b) auxiliaries being xanthan gum, e.g. as Kelzan® grades from Kelco or Rhodopol® grades from Rhodia, and acrylic acid polymers, e.g. Carbopol® grades.
The microcapsule composition of Noller et al renders obvious the composition of instant claims 1-10, 12-13, and 15. Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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