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 .
Claim Status
Claims 1-6 are pending.
Claims 1-6 are currently under consideration.
Claims 1-6 are rejected.
Information Disclosure Statement
No Information Disclosure Statements have been filed with the present application. Applicants are reminded of his/her duty to disclose patents and publications relevant to the patentability of the instant claims.
Specification
The use of the term Dentamet®, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1 is objected to because of the following informalities: the use of bullets is not proper format. Applicant may consider identifying elements with letters, e.g., a), b). Appropriate correction is required. The Examiner notes that copying and pasting complex files containing intricate formatting (i.e., bullets) may result in data loss or formatting inconsistencies.
Claims 2-6 are objected to because of the following informalities: a) there appears to be a verb missing after the recitation of “as” and before “in”. Applicants may consider amending to recite, “as claimed in claim 1”; and b) the “A” in the recitation of “A formulation” should be changed to “The” to prevent indefiniteness.
Claims 3-4 are objected to because of the following informalities: the acronyms PAA and PMAA in claims 3 and 4 respectively, should be spelled out upon their first appearance. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: the recitation of “pantotemid” appears to be a misspelling of pentatomid (see instant Spec., [0005]). 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 2 and 5-6 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.
The term “some” in line 2 of claim 2 is a relative term which renders the claim indefinite. The term “some” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The use of the term “some” has rendered the amount of chelated metal ions and the amount of metal ions that are not chelated. For the purposes of this Office action, prior art that teaches any amount of metal ions that are chelated will be considered to have met the claim limitation.
Claims 5-6 recite the limitation "said pest” in lines 2 of both claims. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Applicant Claims
The instant claims are directed to a formulation comprising an aqueous solution of metal ions and at least one water soluble polymer wherein chelated metal ions are present; wherein the polymer is PAA; and wherein the polymer is PMAA.
Claims 1-3 are rejected under 35 U.S.C. § 102 (a)(1) or (a)(2) as being anticipated by Rohrer et al. (US 10,407,353 B2, issued 09/10/2019) herein referenced Rohrer.
Rohrer discloses a formulation for an aqueous micronutrient fertilizer dispersion composition for both immediate and sustained release of active components within a hydrated polyelectrolyte solution (abstract). The composition is comprised of an insoluble micronutrient, a soluble micronutrient, a polyelectrolyte and a metal complexing agent (claim 1). This formulation is very shelf stable, easily diluted, non-hard packing and highly concentrated (col. 1, lines 56-61). Rohrer teaches that the metal complexing agent renders the ions inert (col. 2, line 4). Rohrer teaches that the micronutrients in the formulation may be one or more of the following: B, N, Mg, Al, Si, P, S, Cl, K, Ca, Cr, Mn, Fe, Co, Ni, Cu, Zn, Se, Mo, Ag, Sn, I , or mixtures thereof (col. 4, lines 9-12). The polyelectrolyte is a polymer that may be soluble in water (col. 5, line 63) to include polyacrylic acid (col. 6, line 23; claim 1). Rohrer teaches that the metal complexing agent is added to the aqueous micronutrient fertilizer composition and forms a complex with a metal (col. 6, lines 49-50 and 54).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. § 102 and § 103 (or as subject to pre-AIA 35 U.S.C. § 102 and § 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103 (a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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. Applicants are 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.
Applicant Claims
The instant claims are directed to a formulation comprising an aqueous solution of metal ions and at least one water soluble polymer wherein chelated metal ions are present; wherein the polymer is PAA; and wherein the polymer is PMAA.
Claims 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable over Tsivion (WO 2020/110110 A1, pub. 06/04/2020) in view of Xing et al. (CN 103435424 B, pub. 03/30/2016, MT Espacenet) herein referenced Xing. Citations from Xing are taken from the translation provided.
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. § 102(a)(2).
Tsivion discloses a compositions for suppressing the population of various pentatomid bugs and fertilizers containing chelated or non-chelated heavy metals known to be otherwise deleterious to bacteria and or fungi ([005], claims 1-3 and 6). Tsivion provides exemplary treatments using mixtures of nutritive heavy metal chelated with organic acids were tested for their effect in suppressing stink bug populations ([009]). Tsivion discloses commercially available micronutrients that comprise copper, zinc and citric acid bio complex (i.e., Dentamet®, copper and zinc combination with citric acid as a complexant) (paragraphs [013], [021]). Tsivion teaches the adding of water (paragraph [020] see water + additive, Table 1; claim 1). Tsivion teaches the symbiotic bacteria maternal stink bug secretions (see pg. 2, lines 13-23) to read on instant claim 6.
Tsivion mentions the addition of poly-1-p-menthene-based pesticide additive to increase active ingredients penetration of maternal secretions ([013]). However, Tsivion does not disclose water soluble polymers.
Xing discloses a novel coating material with unique water solubility that is efficient, environmentally friendly, and economical directed to slow-release fertilizers ([0011], [0032]). Xing discloses that the coating material contains polymeric micro/nanoparticles, preferably comprising ethylene-vinyl acetate copolymer and its blended polymer alloys; polyvinylpyrrolidone (PVP) and its complexed trace elements and drugs; and polymeric micro/nanoparticles ([0015], claim 1).The ethylene-vinyl acetate copolymer polymer is selected from at least one of a group that includes polyacrylic acid (PAA) and polymethacrylic acid (PMAA) ([0018], claim 4). Xing teaches that trace elements complexed with PVP include zinc and copper ([0022]).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to utilize the PAA and PMAA taught by Xing in the compositions of Tsivion with expected results. One would be motivated to do so with a reasonable expectation of success because Xing overcomes the challenges of release profiles of fertilizer nutrients in the art to prolong or control the release of fertilizer nutrients, and coordinate the release of nutrients with the nutrient requirements of crops, thereby improving fertilizer utilization ([0005]) which would contribute to the art, absent a clear showing of evidence to the contrary. Xing teaches a material that exhibits strong complexing ability with metals ([0021-0022]), provides a controlled-release coating for pesticides while reducing environmental pollution (see Xing [0005], claim 10) to suggest an improvement upon the non-water soluble polymer of Tsivion (see Tsivion [013]).
For the foregoing reasons the instant claims are rendered obvious by the teachings of the prior art.
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.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 6 of copending application 17/297,379 herein referenced ‘379 in view of Xing et al. (CN 103435424 B, pub. 03/30/2016, MT Espacenet) herein referenced Xing. Citations from Xing are taken from the translation provided.
Claim 3 of ‘379 recites, “A composition for use for the control of Pentatomid insects consisting of ‘at least one nutritive heavy metal otherwise used for foliar fertilizing of plants.’ wherein the application of said composition to egg masses of said insect induces neonate mortality.”
Claim 6 of ‘379 recites, “A composition as in claim 3 wherein said at least one nutritive metal is chelated.”
However the claims of ‘379 do not recite water soluble polymer, PAA, and PMAA.
Xing discloses polyacrylic acid and polymethacrylic acid ([0018], claim 4).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate the PAA and PMAA of Xing in the composition of patent ‘379 with expected results. One would be motivated to do so with a reasonable expectation of success as Xing teaches that the polymers in the coating material for controlled-release coatings for pesticides is environmentally friendly and provides sustained-release performance ([0004], claim 10).
Conclusion
Claims 1-6 are rejected; no claims are currently allowable.
The Examiner asks Applicant to provide support for the amendments in the application disclosure by referencing page numbers, paragraphs, figures, etc. for the sake of compact prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 900-500 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Karen Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614