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 .
Election/Restrictions
Applicant’s election without traverse of group II, claims 11-20 in the reply filed on 12/12/25 is acknowledged.
Claims 1-10 (group I) are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected soil enhancement method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/12/25.
The examiner would be amenable to rejoinder of the withdrawn method claims upon finding the composition claims allowable.
Claim Interpretation
The term “acid-based” as it relates to the claims is being interpreted broadly as long as it affords the dehydration of invasive plants as claimed and generates/provides nutrients to the soil. This term will be interpreted to include acids, salts of acids, and complexes of acids, any compound that is derived from an acid, e.g. esters, etc. which have the above properties/functions.
The term “silicone-based” as it relates to the claimed “non-ionic silicone based delivery agent” is being interpreted broadly to read on any non-ionic Si containing surfactant.
The term “non-ionic insulating element” is being interpreted to comprise a pure solution or element configured to insulate the acid-based compound from unwanted or unexpected reaction with unknown chemicals as per [0029] of the instant specification.
Claim Objections
Claims 11-20 are objected to because of the following informalities: the claims have no proper status identifier, e.g. (original). Appropriate correction is required.
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 11-19 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 11 is indefinite because it recites “non-toxic” and it is unclear what the composition is non-toxic to and additionally non-toxic is a term of degree which is not defined by the instant specification or claims because for instance water which is consumed by humans all the time and would be generally regarded as safe/non-toxic for handling, etc. can be toxic when consumed in large amounts and/or when aspirated into the lungs, and as such small amounts of herbicides, etc. are routinely handled and applied by users and as such are not immediately toxic. Further, it is clear from the claims that the claimed acid-based compound is toxic to invasive plants and sulfuric acid one component of applicant’s preferred acid-based compound/combination is known to be toxic to humans and as such it is clear that the non-toxic acid-based compound as claimed is not non-toxic to everything. Thus, it is unclear to what the acid-based solution is non-toxic or what degree of non-toxicity applicants are trying to encompass with this limitation. For purposes of applying prior art the examiner is interpreting any aqueous acid-based solution comprising applicants preferred urea sulfonic acid to be non-toxic, and as long as any further reagents contained in the solution are generally regarded as safe, but requests applicant’s clarify this limitation in their next response. Applicant’s could remove the non-toxic language from claim 11 which would overcome this rejection.
Claims 12-19 are also rejected because they depend from claim 11 and do not resolve the above ambiguities.
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) 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Young (EP0243522).
Regarding claim 20, Young specifically teaches example 16 for instance which is an aqueous composition which comprises a nonionic surfactant, T-MULZ 891 which reads on the claimed nonionic member, and urea sulfuric acid, and Furloe (Chlorpropham), this composition is configured to dehydrate invasive plants since it is the same acid-based compound/combination that is instantly claimed/disclosed and compounds are inseparable from their properties, and this solution generates one or more beneficial nutrients for soil, including N (from the urea) and S (from the sulfuric acid), and delivers these nutrients to the soil (see entire document; abstract; claims; [0002]; [0009-0013]; [0020-0021]; [0029]; [0061]; [0065]; [0091]; Example 16).
Young teaches all limitations of the claims and thereby anticipates the claims.
Claim(s) 11 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Young (US4522644) “Young II”.
Regarding claim 11 and 19, Young II teaches, claims and exemplifies an aqueous urea sulfuric acid solution which is applied to control invasive plants in the soil/on desired vegetation and provide nutrients to the soil, which reads on the claimed configured to be applied to one or more invasive plants in a soil and is non-toxic to the soil and the solution is configured to dehydrate invasive plants since it is the same acid-based compound/combination that is instantly claimed/disclosed, and wherein this solution generates one or more beneficial nutrients for soil, including N (from the urea) and S (from the sulfuric acid), and delivers these nutrients to the soil (see entire document; abstract; claims; Col. 4, ln. 3-9; Col. 4, ln. 41-59; examples, etc.).
Young II teaches all limitations of the claims and thereby anticipates the claims.
Claims 11, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Young (US5034046) “Young III”.
Regarding claim 11 and 19, Young III teaches, claims and exemplifies an aqueous urea sulfuric acid solution which is applied to control invasive plants in the soil/on desired vegetation and provide nutrients to the soil, which reads on the claimed configured to be applied to one or more invasive plants in a soil and is non-toxic to the soil and the solution is configured to dehydrate invasive plants since it is the same acid-based compound/combination that is instantly claimed/disclosed, and wherein this solution generates one or more beneficial nutrients for soil including N (from the urea) and S (from the sulfuric acid), and delivers these nutrients to the soil and Young III teaches wherein the urea sulfuric acid composition are relatively non-hazardous (e.g. non-toxic to the applicators (user applying the formulation) and environment (see entire document; abstract; claims; Example 10; Examples 1-9; Col 2, ln. 5-29; Col. 11, ln. 27-29).
Regarding claim 20, Young III specifically teaches examples 10 for instance which is an aqueous solution composition which comprises a nonionic surfactant, T-MULZ 891 which reads on the claimed nonionic member, and urea sulfuric acid, this composition is configured to dehydrate invasive plants since it is the same acid-based compound/combination that is instantly claimed/disclosed and compounds are inseparable from their properties, and this solution generates one or more beneficial nutrients for soil, including N (from the urea) and S (from the sulfuric acid), and delivers these nutrients to the soil and teaches wherein the urea sulfuric acid composition are relatively non-hazardous (e.g. non-toxic to at least some degree to the applicators (user applying the formulation) and environment (see entire document; abstract; claims; Example 10; Col 2, ln. 5-29; Col. 11, ln. 27-29).
Young III teaches all limitations of the claims and thereby anticipates the claims.
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.
Claim(s) 12-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young II (US4522644) as applied to claims 11 and 19 above, and further in view of Jibrin et al. (Plant Pathology, 2021, 70(3), 495-510, first published online 11/20/20) and Diebold et al. (US20070197386).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Young II teaches the soil enhancement solution of claims 11 and 19 as discussed above and incorporated herein.
Regarding claims 12 and 15, Young II teaches wherein their formulations can comprise non-ionic surfactants, an acid based compound specifically urea-sulfuric acid mixture/combination, and which can further comprise water which reads on the non-ionic insulating element (See entire document; abstract; claims; Col. 4, ln. 3-9; Col. 4, ln. 41-59; Claims 10, ln. 9-54 inclusive)
Regarding claim 14, Young II teaches wherein their applied solutions can comprise preferably about 5 to about 80 wt% urea and sulfuric acid, and that concentrated compositions of higher amounts of urea-sulfuric acid are very active sucker control agents and wherein their compositions can preferably comprise at least about 0.2 wt% of surfactant, wherein non-ionic surfactants are preferred and they teach wherein the solution can be diluted with/contain water e.g. for dilution of up to 200 parts water to 1 part of urea-sulfonic acid (See entire document; abstract; Col. 9, ln. 41-Col. 10, ln. 54; claims; Col. 4, ln. 3-9; Col. 4, ln. 41-59; Col. 12, ln. 33-58).
Regarding claim 20, Young II teaches compositions comprising urea-sulfonic acid in amounts which dehydrate the invasive sucker plants and as it is the same acid-based compound instantly disclosed and a non-ionic member, specifically a non-ionic surfactant are preferred, and the composition would be configured to dehydrate invasive plants since it is/comprises the same acid-based compound/combination that is instantly claimed/disclosed, and wherein this solution generates one or more beneficial nutrients for soil, including ammonium sulfate (a decomposition product of urea-sulfuric acid), N (from the urea) and S (from the sulfuric acid), and delivers these nutrients to the soil (see entire document; abstract; claims; Col. 4, ln. 3-9; Col. 4, ln. 41-59; Claims 10, ln. 9-54 inclusive; examples, etc.).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 12-17, Young II does not teach wherein their non-ionic surfactant can be the claimed non-ionic silicone based delivery agent, specifically a silicone surfactant, nor does Young II teach wherein non-ionic insulating element comprises deionized water (which is configured to inhibit a premature reaction of the acid-based compound prior to application of the acid-based compound to the invasive plants wherein the acid-based compound reacts with organic material in the invasive plants). However, these deficiencies in Young II are addressed by Jibrin and Diebold.
Regarding claims 12 and 16, Jibrin teaches organosilicone and silicone surfactants are two major types of nonionic surfactants and Jibrin teaches that organosilicone surfactants which read on the claimed nonionic silicone based surfactant, is a type of the claimed silicone surfactant, and organosilicone surfactants are known to be more efficient than other silicone surfactants and can “superspread” the pesticide on leaf surfaces (section 2.1, 4th full paragraph (pg. 496-498) about nonionic surfactants) and as such it would be obvious to select organosilicone surfactants for use as the nonionic surfactant of Young II since organosilicone surfactants are more effective and can superspread the herbicides/pesticides on the invasive plants/weeds to promote more effective weed control and more effective spreading on the soil to provide the nutrients, N and S to the soil.
Regarding claims 13 and 17, Diebold teaches herbicidal compositions which comprise/utilize deionized water as a carrier ([0042]). Deionized water by definition does not contain ions and as such there are no ions to interfere with the active agents/herbicides in the composition. Thus, deionized water is common/known in the art to be useful for carrying/delivering pesticidal actives.
Regarding claim 18, these are properties/function of the claimed composition when it is formed and applied and as such it would be obvious to optimize the amount of the urea-sulfuric acid combination in Young II so that within 4 hours the organic material in the invasive plants is killed/dehydrated/terminated and the solution is inert within 24 hours because Young II already teaches that when effective concentrations and dosage rates are employed, significant necrosis and plant wilting are evident within 1 hour or less and will provide an adequate indication of effectiveness. The full extent of plant kill will usually be apparent within approximately 2 to 24 hours. Adequate control is clearly indicated within 24 hours by the disappearance, darkening and/or desiccation of the treated plant tissue. The speed and degree of vegetation control increase as dosage rate is increased, and the dosage rate of the urea-sulfuric acid component is the primary variable in this regard so long as the applied volume is not so high that significant runoff occurs from the treated foliage, and Young II further teaches wherein optimization by field testing, etc. can be used to determine the most effective rates/amounts/concentrations of the urea-sulfuric acid for achieving the desired level of control, etc. (see Young II entire document; Col. 12, ln. 33-58). Thus, it would be obvious to optimize the amount of the active agent urea-sulfuric depending upon what weeds are to be killed and/or if all plants in the area are to be killed as it is known in the art to optimize the amounts of herbicidal active agents in order to effect the desired level of termination of the invasive plants and it would be obvious to optimize the amounts of urea-sulfuric acid in the composition in order to achieve the fastest termination of the invasive plants possible while quickly breaking down in the soil to provide nutrients to the soil for later plantings, etc. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to optimize the amounts of urea-sulfonic acid, water, non-ionic silicone surfactant, specifically an organosilicone surfactant in order to form the claimed composition having the amounts each component as recited in claim 14 because Young II teaches overlapping amounts of water, urea-sulfonic acid, and non-ionic surfactant for controlling invasive weeds and providing N and S to the soil as claimed and it is known, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and it would be obvious to replace/select organosilicones as the non-ionic surfactant for use in the compositions of Young II in order to form the claimed compositions because as discussed above Jibrin teaches that organosilicone surfactants are known to be more efficient than other silicone surfactants and other nonionic surfactants because it can “superspread” the pesticide on leaf surfaces and as such it would be obvious to select organosilicone surfactants for use as the nonionic surfactant of Young II since organosilicone surfactants are more effective and can superspread the herbicides/pesticides on the invasive plants/weeds to promote more effective weed control and more effective spreading on the soil to provide N and S to the soil.
It also would have been obvious to use as the water of Young II, the instantly claimed deionized water which would be configured to inhibit a premature reaction of the acid-based compound prior to a reaction of the acid-based compound with organic material in the invasive plants because Diebold teaches that deionized water is a common carrier/water type used for formulating herbicidal compositions for delivery to plants/soil ([0042]).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young III (US5034046) as applied to claims 11 and 19-20 above, and further in view of Jibrin et al. (Plant Pathology, 2021, 70(3), 495-510, first published online 11/20/20) and Diebold et al. (US20070197386).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Young III teaches the soil enhancement solution of claims 11 and 19-20 as discussed above and incorporated herein.
Regarding claims 12 and 15, Young III teaches wherein their formulations can comprise non-ionic surfactants, an acid based compound specifically urea-sulfuric acid mixture/combination, and which can further comprise water which reads on the non-ionic insulating element (See entire document; abstract; claims; Example 10; Col. 2, ln. 64-Col. 3, ln. 2; Col. 3, ln. 41-53; Col. 4, ln. 19-51; Col. 4, ln. 65-Col. 6, ln. 2; Col. 10, ln. 23-Col. 11, ln. 20; Col. 11, ln. 38-55; Col. 13, ln. 30-Col. 14, ln. 30; Claims 10, ln. 9-59 inclusive, Col. 15, ln. 63-Col. 16, ln. 24; etc.)
Regarding claim 14, Young III teaches wherein their applied solutions can comprise preferably about 5 to about 80 wt% urea and sulfuric acid, and that concentrated compositions of higher amounts of urea-sulfuric acid are very active sucker control agents and wherein their compositions can preferably comprise at least about 0.2 wt% of surfactant, wherein non-ionic surfactants are preferred and they teach wherein the solution can be diluted with/contain water e.g. for dilution of up to 200 parts water to 1 part of urea-sulfonic acid (See entire document; abstract; Example 10; Col. 11, ln. 38-47; Col. 9, ln. 55-59; Col. 10, ln. 20-59; Col. 15, ln. 63-Col. 16, ln. 24).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 12-17, Young III does not teach wherein their non-ionic surfactant can be the claimed non-ionic silicone based delivery agent, specifically a silicone surfactant, nor does Young III teach wherein non-ionic insulating element comprises deionized water (which is configured to inhibit a premature reaction of the acid-based compound prior to application of the acid-based compound to the invasive plants wherein the acid-based compound reacts with organic material in the invasive plants), nor does it teach the specific amounts by volume claimed in instant claim 14. However, these deficiencies in Young III are addressed by Jibrin and Diebold.
Regarding claims 12 and 16, Jibrin teaches organosilicone and silicone surfactants are two major types of nonionic surfactants and Jibrin teaches that organosilicone surfactants which read on the claimed nonionic silicone based surfactant, is a type of the claimed silicone surfactant, and organosilicone surfactants are known to be more efficient than other silicone surfactants and can “superspread” the pesticide on leaf surfaces (section 2.1, 4th full paragraph (pg. 496-498) about nonionic surfactants) and as such it would be obvious to select organosilicone surfactants for use as the nonionic surfactant of Young III since organosilicone surfactants are more effective and can superspread the herbicides/pesticides on the invasive plants/weeds to promote more effective weed control and more effective spreading on the soil to provide the nutrients, N and S to the soil.
Regarding claims 13 and 17, Diebold teaches herbicidal compositions which comprise/utilize deionized water as a carrier ([0042]). Deionized water by definition does not contain ions and as such there are no ions to interfere with the active agents/herbicides in the composition. Thus, deionized water is common/known in the art to be useful for carrying/delivering pesticidal actives.
Regarding claim 18, these are properties/functions of the claimed composition when it is formed and applied and as such it would be obvious to optimize the amount of the urea-sulfuric acid combination in Young III so that within 4 hours the organic material in the invasive plants is killed/dehydrated/terminated and the solution is inert within 24 hours because Young III already teaches that when effective concentrations and dosage rates are employed, significant necrosis and plant wilting are evident within 10 minutes and will provide an adequate indication of effectiveness. The full extent of plant kill will usually be apparent within approximately 2 to 24 hours. Adequate control is clearly indicated within 24 hours by the disappearance, darkening and/or desiccation of the treated plant tissue. The speed and degree of vegetation control increase as dosage rate is increased, and the dosage rate of the urea-sulfuric acid component is the primary variable in this regard so long as the applied volume is not so high that significant runoff occurs from the treated foliage, and Young III further teaches wherein optimization by field testing, etc. can be used to determine the most effective rates/amounts/concentrations of the urea-sulfuric acid for achieving the desired level of control, etc. (see Young III entire document; Col. 15, ln. 63-Col. 16, ln. 24). Thus, it would be obvious to optimize the amount of the active agent urea-sulfuric depending upon what weeds are to be killed and/or if all plants in the area are to be killed as it is known in the art to optimize the amounts of herbicidal active agents in order to effect the desired level of termination of the invasive plants and it would be obvious to optimize the amounts of urea-sulfuric acid in the composition in order to achieve the fastest termination of the invasive plants possible while quickly breaking down in the soil to provide nutrients to the soil for later plantings, etc. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to optimize the amounts of urea-sulfonic acid, water, non-ionic silicone surfactant, specifically an organosilicone surfactant in order to form the claimed composition having the claimed amounts each component as claimed in claim 14 because Young III teaches overlapping amounts of water, urea-sulfonic acid, and non-ionic surfactant for controlling invasive weeds and providing N and S to the soil as claimed and it is known, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and it would be obvious to replace/select organosilicones as the non-ionic surfactant for use in the compositions of Young III in order to form the claimed compositions because as discussed above Jibrin teaches that organosilicone surfactants are known to be more efficient than other silicone surfactants and other nonionic surfactants because it can “superspread” the pesticide on leaf surfaces and as such it would be obvious to select organosilicone surfactants for use as the nonionic surfactant of Young III since organosilicone surfactants are more effective and can superspread the herbicides/pesticides on the invasive plants/weeds to promote more effective weed control and more effective spreading on the soil to provide N and S to the soil.
It also would have been obvious to use as the water of Young III, the instantly claimed deionized water which would be configured to inhibit a premature reaction of the acid-based compound prior to a reaction of the acid-based compound with organic material in the invasive plants because Diebold teaches that deionized water is a common carrier/water type used for formulating herbicidal compositions for delivery to plants/soil ([0042]).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616