vNotice 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 .
Claims 1-10 are currently pending.
Priority
The instant application claims priority as follows:
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Specification Objection - Title
Applicant is reminded of the proper content of the title of the invention.
The title of the invention should be brief, but technically accurate and descriptive. See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be more descriptive of what is claimed. Currently, the title does not indicate the type of compounds of the invention (prothioconazole and imazalil) A new title is required that is clearly indicative of the invention to which the claims are directed. See MPEP 606.01.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recite “Application of the pesticide composition …in control of what crown rot”. However, since the claims do not set forth any steps involved in the use, it is unclear what the claims are intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q).
Currently, the examiner interprets claim 10 as a composition claim with an intended use. An intended use of the composition does not add patentable weight to the composition.
Claims 3-9 recite “the pesticide composition is prepared from the following raw materials by mass percent…”. This makes the claims unclear because the total final mass percent of the ingredients required in the composition is not recited and there is no active step in these claims that would allow one to figure that out. For example, claim 3 particularly recites “the pesticide composition is prepared from the following raw materials by mass percent: 5%-25% of prothioconazole, 10%-35% of imazalil, 15%-40% of solvent and 5%-25% of emulsifier.” Thus, the composition could be prepared by combining 2 g of 5% protioconazole, 1 g of 10% imazalil, 4 g of 40% solvent and 3 g of 25% emulsifier; or the composition could be prepared by combining 0.3 g of 5% prothioconazole, 0.15 g of 10% imazalil, 8 g of 40% solvent and 1.55 g of 25% emulsifier. Thus, one could make compositions with any total mass percent of each ingredient from the raw material mass percent described in the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-10 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Chen Hongzhou et al. (“Prothioconazole and Imazalil Mixtures: Co-toxicity and Field Control Efficacy on Fungus of Rice Bakanae Disease”, Chinese Agricultural Science Bulletin, Pages: 158-164, ( 2021) Issue: 14).
Hongzhou taught emulsion concentrates of prothioconazole/imazalil in acetone, with 10% Tween-80 and their dilutions with sterile water. Emulsions in water of compositions of 5% prothioconazole/imazalil in acetone and Tween-80 were also disclosed. The ratio of prothioconazole/imazalil that showed the most synergistic effect against Fusarium fujikuroi (fungus of rice bakanae) was 1:1. See at least abstract and page 159 (right column).
Regarding claims 3 and 10, see the claim interpretation in the 112(b) rejection above.
Claim 4 recites “wherein when the formulation of the pesticide composition is a wettable powder, the pesticide composition is prepared from …”. However, the pesticide composition from the prior art is not a wettable powder.
Claim 5 recites “wherein when the formulation of the pesticide composition is water dispersible granules, the pesticide composition is prepared from …”. However, the pesticide composition from the prior art is not water dispersible granules.
Claim 6 recites “wherein when the formulation of the pesticide composition is a suspension concentrate, the pesticide composition is prepared from …”. However, the pesticide composition from the prior art is not a suspension concentrate.
Claim 7 recites “wherein when the formulation of the pesticide composition is an emulsion in water, the pesticide composition is prepared from …”. However, the emulsion concentrate prothioconazole/imazalil in acetone, with 10% Tween-80 from the prior art is not an emulsion in water.
Claim 8 recites “wherein when the formulation of the pesticide composition is a capsule suspension, the pesticide composition is prepared from …”. However, the pesticide composition from the prior art is not a capsule suspension.
Claim 9 recites “wherein when the formulation of the pesticide composition is a a flowable concentrate, the pesticide composition is prepared from …”. However, the pesticide composition from the prior art is not a flowable concentrate.
Regarding the intended use of the claimed composition “for controlling wheat crown rot”, this is currently not considered a limitation of the composition.
See MPEP 2111.02 (II) regarding preamble statements reciting purpose or intended use: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”.
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen Hongzhou et al. as above, in view of Fishel, Frederick M. (2010. “Pesticide Formulations: PI231 PI231, 6 2010” EDIS 2010 (4)), Purdue Extension (“Adjuvants and the Power of the Spray Doplet, Improving the Performance of Pesticide Application”- Sept. 2014; p 1-60), Terry Gouge (Formulation Development Bayer ES – July 7, 2010 https://web.archive.org/web/20100705163643/http://www.cdpr.ca.gov/docs/emon/surfwtr/presentations/ gouge_formulation_050510.pdf), Dipak Kumar Hazra et al. (Arch. Agr. Environ. Sci., 2(3): 232-237 (2017) or/and Knowles, D.A. ((1998). Formulation of agrochemicals. In: Knowles, D.A. (eds) Chemistry and Technology of Agrochemical Formulations. Springer, Dordrecht. https://doi.org/10.1007/978-94-011-4956-3_3).
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Teachings of Hongzhou
Hongzhou taught synergistic fungicidal mixtures of prothioconazole and imazalil at various mass ratios, including 1:1, comprising a solvent, and an emulsifier or surfactant, and emulsions of various dilutions comprising water. The mixtures are active against Fusarium fujikuroi.
Teachings of secondary references
The secondary references are cited to evidence the common use of the claimed inert ingredients in pesticide formulations and suggested mass %.
Fishel
The first page of Fishel discusses that “These concentrated chemicals and active ingredients may not mix well with water, may be chemically unstable and may be difficult to handle and transport. For these reasons, manufacturers add inert substances, such as clays and solvents, to improve application effectiveness, safety, handling, and storage.” Fishel teaches:
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Purdue Extension
Purdue Extension (“Adjuvants and the Power of the Spray Doplet, Improving the Performance of Pesticide Application”- Sept. 2014; p 1-60) teaches a list of adjuvants found in pesticide labels, which includes solvents, wetting agents, emulsifiers, dispersing agents, anti-freezing agents, thickeners, fillers, anti-foams, dyes and fillers, etc., and provides recommendations. (particularly , p.38, 41, 44 and 47).
Terry Gouge
Teaches pesticide formulation development which may consist of:
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Gouge teaches various formulation types as well as suggested % of ingredients.
Dipak Kumar Hazra
Dipak Kumar Hazra et al. (Arch. Agr. Environ. Sci., 2(3): 232-237 (2017) teach
“Seed treatment formulations: As a kind of pesticide preparation with film-forming characteristics used for coating of plants and other plant seeds, the seed coating agent is generally prepared by technical material, dispersant, wetting agent, film former, pH regulator, antifreeze, defoamer, other auxiliaries and water (Dayer et al., 2007)” (p. 235). Suspo-emulsions (SE): Mixed combination formulations are becoming more popular because of their convenience; they ensure that the farmer applies the correct amount of each component pesticide and overcome problems of tank mix incompatibility. Suspo-emulsions can, therefore, be considered to be mixtures of suspension concentrates and oil-in-water emulsions with added surfactants to prevent flocculation and thickeners to prevent separation of the dispersed phases (Tadros, 1995). Surfactants used as dispersing agents for the solid phase are similar to those already mentioned for suspension concentrates” (p. 234).
D. A Knowles
“Many other additives are used for specific purposes, such as anti-settling, anti-freeze and anti-foam agents for water-based formulations, and fillers and disintegrants for powders and water-dispersible granules.” -page 4
“Water-dispersible granules usually contain a wetting agent and a dispersing agent in the same way as a wettable powder or a suspension concentrate. They may also contain a water-soluble salt to act as a disintegrant in the spray tank. The remainder of the formulation is usually a water-soluble or a water-dispersible filler. A typical water-dispersible granule formulation (per cent by weight) is shown below:
Active ingredient 50-90% Wetting agent 1-5% Dispersing agent 5-20% Disintegrating agent 0-15% Soluble or insoluble filler to 100%” – p. 56
“(b) Inert formulation additives. Simply stated, an inert ingredient is any ingredient that is not an active ingredient, as defined in 40 CFR 153.125, and includes, but is not limited to, the following types: attractant, binder, buffer, carrier, coating agent, defoaming agent, diluent, dispersant, dye, emulsifier, encapsulating agent, flocculating agent, preservative, propellant, solvent, stabilizer, surfactant, synergist, thickener and wetting agent.”- p. 394
See alto Table 5.1 for common formulations and their ingredients.
Ascertainment of the Difference Between the Prior Art and the Claims
(MPEP §2141.012)
Chen Hongzhou et al. didn’t exemplify all the fungicidal formulations of the instant claims.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
The fungicidal mixture of prothioconazole and imazalil was known in Hongzhou. The level of ordinary skill in the art is high. Someone using the known fungicidal mixture of prothioconazole and imazalil would be trained in agrochemical science and would recognize that the mixture could be made in any type of common agricultural formulation.The ordinary skilled artisan would have been motivated to make additional known types of formulations of the fungicidal mixture of Hongzhou because this could “improve application effectiveness, safety, handling, and storage.” All the inert ingredients and types of formulations claimed in the instant claims were known and were commonly used in the pesticide arts, as evidenced by the secondary references. Finding the inactive ingredient ratios, % weights and concentrations that would suit a fungicidal mixture of prothioconazole and imazalil for various types of application would have been obvious to one of ordinary skill in the art. Determining the optimal or workable amounts of inactive agents in a composition for the use in agricultural/pesticidal formulations is routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The % weight of the inactive ingredients and active ingredients in the references above would serve as starting point to figure out optimal % weight ranges for effective antifungal formulations. Merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426; In re Hoeschele, 160 USPQ 809.
Where the general conditions of a claim are disclosed
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prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” The motivation arises from “the normal desire of scientists or artisans to improve upon what is already generally known” (Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382) through routine experimentation. (MPEP 2144.05 IIA and B).
Under the Supreme Court rationales in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007), here at least exemplary rationales (A) and (D) apply:
(A) Combining prior art elements according to known methods to yield predictable results;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Regarding the intended use of the claimed composition “for controlling wheat crown rot”, this is currently not considered a limitation of the composition. See MPEP 2111.02 (II) regarding preamble statements reciting purpose or intended use: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”.
Claim Objections
At various instances in the claims the article “a” and “an” are missing. See for example in claim 3, “emulsifiable concentrate” should be preceded by “an”. In claim 4, “wettable powder” should be preceded by “a”. Correction is required.
Conclusion
Claims 1-10 are rejected.
Not every piece of prior art found in the search has been applied against the instant claims. See MPEP 904.03
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-4:30pm.
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/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621