DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Specification and Claims and Arguments/Remarks filed 22 December 2025, in response to the Office Correspondence dated 02 October 2025, are acknowledged.
The listing of Claims filed 22 December 2025, have been examined. Claims 21-40 are pending. Claims 1-20 are canceled and new claims 21-40 have been added.
Response to Amendment
Claims 1-20 are cancelled, therefore all prior rejections of the claims are moot. The applicant’s arguments with respect to claims have been considered and are addressed in the Response to Arguments section below. New grounds of rejection are made in view of the newly added claims 21-40, as detailed below.
The 35 USC § 103 rejections previously applied to claims 1-20 remain applicable to the newly presented claims, which largely recast prior limitations into a single independent composition claim with ranges and specific surfactant subclasses that are already taught or suggested by the prior art.
New Objections/Rejections
The following new rejections are made from the previous Office Correspondence dated 02 October 2025, as the Applicant's amendment necessitated the new grounds of rejection presented below based on the newly presented claims.
Claim Objections
Claims 21-23, 26 and 32-35 objected to because of the following informalities:
Claim 21 recites “2-ethyhexanol”, the correct spelling is “2-ethylhexanol”. Claim 24 recites “salts of a C8-C10”, which should properly be “salts of C8-C10”.
Claims 22, 23, and 32-35 depend from claim 21 and refer to the alkoxylated phosphate ester, however the alkoxylated phosphate ester is presented as an alkoxylated phosphate ester surfactant in claim 21. Thus, to provide clear antecedent basis and maintain consistency with the terminology in the base claim, the alkoxylated phosphate ester recited in claims 22, 23, and 32-35 should be amended to the alkoxylated phosphate ester surfactant. The inconsistent use of terminology here creates unnecessary ambiguity that should be corrected (see MPEP § 2173.05(e)).
Claim 26 recites “a melting point of less or equal to about 5 °C”, wherein the “than” after “less” is missing and should recite “a melting point of less than or equal to about 5 °C”.
Accordingly, claims 21-23, 26 and 32-35 are objected to and 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 Applicant regards as his invention.
Claims 21-40 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, regards as the invention.
Claims 21-40 are rejected as being indefinite because the term “actives” is indefinite. Claim 21 recites weight percentages “wt% actives based on a total weight of the composition.” However, the term “actives” is ambiguous because it is unclear whether pelargonic acid is the only active ingredient, surfactants are considered actives, or the percentage excludes solvent content. The claim therefore fails to clearly define how the percentage is calculated.
In addition, claim 21 recites “a C5-C9 monocarboxylic acid mixture”. The claim fails to specify the identity of the acids, relative proportions, and whether branched acids are included. Thus, the scope of the claim is unclear.
Dependent claims 22-40 are included in this rejection because they do not cure the defect noted above. To overcome this rejection, the applicant is advised to amend claim 21 to provide clear definition of “actives” and “a C5-C9 monocarboxylic acid mixture”.
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 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 21-40 are rejected under 35 U.S.C. § 103 as being unpatentable over Puritch et al. (WO-1991005471-A1; published 02 May 1991, hereinafter referred to as “Puritch”), in view of Klug et al. (US-20110003010-A1; published 06 January 2011, hereinafter referred to as “Klug”) and in further view of Hess et al. (US-20070275854-A1; published 29 November 2007, hereinafter referred to as “Hess”).
Puritch teaches herbicidal agrochemical compositions comprising a C5-C10 alkyl chain linear fatty acid, specifically pelargonic acid (C9) from 1-94% (page 6, lines 2-19; claims 1-3, 9, 10, 15); approximately 2-60% surfactant components (claims 1 and 13) of, including ethoxylated phosphate esters (claims 11, 12, 15, and 16), covering subtypes of alkoxylated phosphate esters which would encompass those including those derived from alkoxylated C12-C22 alkyl chains (page 7, lines 15-20; page 11, lines 6-12); and, a balance of the diluent water (claim 1) or “the addition of a suitable amount of water to dilute the active ingredient to desired concentration levels” (page 3, lines 15-17). The active components (fatty acid and surfactant together) may comprise 40-80 wt.% fatty acid component and 20-60 wt.% surfactant component (page 4, lines 15-20). Puritch teaches fatty acid component of each of the herbicidal compositions of this invention can comprise one or a mixture of alpha monocarboxylic fatty acids having a hydrocarbon chain with between 8 and 12 carbon atoms (page 6, lines 8-12), wherein in addition to the pelargonic acid (C9), a mixture of other fatty acids are included (page 6, lines 12-15), including caprylic acid (C8) and (page 6, line 17) and other combinations of monocarboxylic fatty acids having between 8-12 carbon atoms (page 6, line 30- page 7, line 4), which would include 2-ethylhexanoic acid. Puritch further teaches emulsifiable concentrates and their dilution into water for application (page 13, lines 21-27; page 14, lines 18-21).
While Puritch teaches a broad class of ethoxylated phosphate esters, it does not explicitly teach the specific sub-genus of surfactants with the claimed degree of alkoxylation (12-40) and the claimed starting material ratios.
Klug teaches alkoxylated phosphate ester surfactants suitable for agrochemical compositions including alkoxylated C6-C30 alkyl phosphate esters (¶[0014]), including those with a degree of ethoxylation from 10-50 EO units (¶[0034]), and linear C12-C16 alkyl phosphate esters (¶[0068]). Klug teaches the use of beef tallow oils (¶[0131]), and 2-ethylhexyl esters (¶[0136] and ¶[0139]). Klug also teaches surfactant concentrations of 2-30 wt% (¶[0118]). The claimed ranges for surfactant concentration 2.5-40 wt% overlap with the ranges taught by Klug (2-30 wt%; Examples 4, 5, 7, 14 and 21). The preparation examples in Klug satisfy a starting molar equivalent ratio of phosphating agent to hydroxyl group of about 1:3 to about 1:1. For instance, Example 2 (¶[0190]) describes a ratio of 3 mol phosphoric acid to 2 mol polyglycol 4000 (providing 4 OH groups) to 5 mol ceteareth-25 (providing 5 OH groups), yielding a molar ratio of P agent:OH of 3:9, or 1:3. Klug teaches that these surfactants provide advantages in formulation stability and performance (¶[0004]-[0005]).
Hess teaches C13 alkyl phosphate ester surfactants in agrochemical pesticide formulations (¶[0027]), including the branched C13 alkyl phosphate esters, isotridecyl phosphate esters (claim 5), and preparations using phosphating agent:hydroxyl ratios corresponding to the instant claimed range (¶[0053]). Hess also teaches the use of common diluents such as those claimed.
Claim 21 differs from the prior art primarily in that it recites specific concentration ranges of pelargonic acid, diluent, and surfactant, particular subclasses of alkoxylated phosphate esters, and specific diluent types. However, the prior art teaches the same pelargonic acid herbicide, the same class of surfactants, overlapping surfactant concentrations, and conventional formulation solvents.
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to formulate the pelargonic acid composition of Puritch using the specific, known alkoxylated phosphate ester surfactants taught by Klug and Hess. Puritch teaches pelargonic acid herbicides requiring surfactants. Klug teaches alkoxylated phosphate ester surfactants that improve emulsion stability and performance in agrochemical formulations. Hess confirms that C13 alkyl phosphate esters are useful surfactants in pesticide compositions. Thus, it would have been a simple substitution of one known surfactant for another or a combination of prior art elements according to known methods to yield predictable results (see KSR v Teleflex, 550 U.S. 398 (2007) and Graham v. John Deere Co., 383 U.S. 1 (1966)).
The prior art provides a reason to combine these elements. Klug explicitly teaches that the specific alkoxylated phosphate esters improve the stability and distributability of agrochemical formulations (¶[0004]-[0005]). Thus, a person of ordinary skill in the art, seeking to improve the formulation of Puritch, would have been motivated to make the obvious substitution of the specific advantageous phosphate ester surfactants of Klug or Hess into the pelargonic acid compositions of Puritch in order to improve emulsification and formulation stability with a reasonable expectation of success, as they are used for the same purpose in analogous compositions.
The selection of specific diluents such as 2-ethylhexanoic acid, tall oil fatty acid, 2-ethylhexanol, hexanol, heptanoic acid, and d-limonene from the broader list of diluents taught by Puritch (fatty acids, alcohols, mineral oils) would have been a matter of ordinary optimization and routine experimentation for a skilled formulator seeking to lower the melting point of pelargonic acid. The claimed weight percentage ranges represent routine optimization of formulation parameters.
Regarding the limitations of instant claims 22 and 23, Klug teaches the mono/di phosphate ratios and unreacted alcohol limitations in the preparation examples (Examples 1-11). The molar ratio of mono- to di-phosphate esters (about 16:1 to about 1:1) is taught by the through the ³¹P NMR data reported for each preparation example. The column labeled "diester/triester" reports the molar ratio of di-esterified phosphorus atoms to tri-esterified phosphorus atoms. To determine the mono:di ratio, one must consider that the remaining phosphorus atoms not accounted for in the diester/triester are present as monoesters (or free phosphoric acid). The high degree of conversion (>80%, preferably >95%) ensures that the majority of these are monoesters (see the specification general procedure ¶[0188] reciting, "The residual acid number is then <3 mg KOH/g. This corresponds approximately to 93 to 96% conversion...", and ).
In addition, Klug teaches unreacted alkoxylated alcohol <40 wt% based on total weight of the phosphate ester through the high degree of conversion reported for the esterification reaction. The synthesis is driven to a "degree of conversion >80%, ... >90% is particularly preferred and >95% even more particularly preferred" (¶[0061]). A conversion rate of >95% for the alkoxylated alcohol directly implies that less than 5%of the original alkoxylated alcohol remains unreacted. This is far below the 40 wt % threshold. The following examples (¶[0189]-[0199]) demonstrate mono:di ratios that fall within or very close to the claimed range of 16:1 to 1:1 and unreacted alkoxylated alcohol <40 wt% based on total weight of the phosphate ester:
Example
Conversion (%)
Approximate Mono Ester (%)
Approximate Mono:Di Ratio Calculation
Resulting Mono:Di Ratio
Approximate Unreacted Alcohol (%)
1
96 (residual acid number 1.5)
4
4:13
~1:3.25 (0.31:1)
4
2
94
6
6:18
~1:3 (0.33:1)
6
3
93
7
7:18
~1:2.57 (0.39:1)
7
4
93
7
7:20
~1:2.86 (0.35:1)
7
5
94
6
6:16
~1:2.67 (0.375:1)
6
6
94
6
6:13
~1:2.17 (0.46:1)
6
7
95
5
5:13
~1:2.6 (0.38:1)
5
8
95
5
5:13
~1:2.6 (0.38:1)
5
9
95
5
5:11
~1:2.2 (0.45:1)
5
10
93
7
7:16
~1:2.29 (0.44:1)
7
11
93
7
7:19
~1:2.71 (0.37:1)
7
The synthesis conditions in Klug inherently produce products with the characteristics of instant claims.
Regarding the limitations of instant claims 24 and 25, additional surfactants and bases are taught by Hess and common agrochemical formulation practices. Puritch teaches alcohol ethoxylates (page 11, lines 6-12) and Klug teaches alkylamine alkoxylates and other surfactants as part of standard formulations (¶[0118]), wherein the use of a second surfactant such as alkylbenzene sulfonic acid salts would have been an obvious addition to further modify surfactant properties. Additionally, Hess teaches alkylbenzenesulfonates as preferred anionic surfactants and neutralization of phosphate esters with bases such as monoethanolamine (¶[0025]). Specifically, alkylbenzene sulfonic acid (as salts) are taught in ¶[0038] as, "alkylarylsulfonates, for example linear alkylbenzenesulfonates having C5-C20-alkyl chains". The document teaches alkylcarboxylates generally (¶[0035]), but does not specifically mention C8-C10 carboxylic acids or their isopropylamine salts. Isopropylamine salts of alkylbenzene sulfonic acid are inferred in ¶[0036] as, "M is hydrogen or a cation, preferably an alkali metal cation (e.g. sodium, potassium, lithium) or ammonium or substituted ammonium, e.g. a methyl-, dimethyl- and trimethylammonium cation or a quaternary ammonium cation such as tetramethylammonium and dimethylpiperidinium cation and quaternary ammonium cations derived from alkylamines such as ethylamine, diethylamine, triethylamine and mixtures thereof." While isopropylamine is not explicitly named, the document teaches "substituted ammonium" cations derived from alkylamines. Isopropylamine (C3H9N) is a primary alkylamine, and its ammonium salt falls within this general teaching. Alkylamine alkoxylates and alcohol ethoxylates are explicitly taught as a preferred nonionic surfactant (¶[0042]; "fatty amine ethoxylates (alkylaminopolyethylene glycols)” and “fatty alcohol ethoxylates (alkylpolyethylene glycols)").
Hess also teaches monoethanolamine (¶[0025]) and ammonium hydroxide (¶[0025] as "substituted or unsubstituted ammonium compounds", and ¶[0036] as "ammonium or substituted ammonium") bases. Ammonium hydroxide (NH4OH) is a source of ammonium ions (NH4+) and would be encompassed by the teaching of "ammonium compounds" or "ammonium" as a cation.
Regarding instant claim 26, Puritch teaches liquid formulations with melting points approximately 0°C (page 9, Table I, Composition C). The formulation is 90% water which will have a freezing point very close to 0°C, which inherently meets the limitation of ≤5°C.
Regarding instant claim 27-31, Puritch teaches fatty acid component of each of the herbicidal compositions of this invention can comprise one or a mixture of alpha monocarboxylic fatty acids having a hydrocarbon chain with between 8 and 12 carbon atoms (page 6, lines 8-12), wherein in addition to the pelargonic acid (C9), a mixture of other fatty acids are included (page 6, lines 12-15), including caprylic acid (C8) and (page 6, line 17) and other combinations of monocarboxylic fatty acids having between 8-12 carbon atoms (page 6, line 30- page 7, line 4), which would include 2-ethylhexanoic acid. Puritch generally teaches fatty acids and alcohols as useful as diluents (page 7, lines 15-31) and permissible substitution of other fatty acid or surfactant compositions with equal or better efficacy (page 8, lines 16-21).
Klug teaches the use of 2-ethylhexyl esters (¶[0136] and ¶[0139]) beef tallow oils (¶[0131]), thus the combination of 2-ethylhexanoic acid encompassed by the teachings of Puritch for the 2-ethylhexyl esters taught by Klug would have been obvious. Klug also teaches the use of carboxylic acids having an antimicrobial effect (¶[0101] and ¶[0102]), which would include heptanoic acid (C7) medium-chain saturated fatty acid, and the addition of such would be motivated by the desire to control microbes and prevent biofilm formation (e.g., Candida albicans). Klug teaches the use of linear C6 polyhydric diol alcohols including 1,2 hexanediol, 1,3-hexanediol, 1,4-hexanediol, 1,5 hexanediol, 1,6-hexanediol (claim 7), wherein the compositions according to the invention can comprise organic solvents that are mono- or polyhydric alcohols (¶[0174]), which would include the C6 monohydric alcohol hexanol, a common solvent in the art.
The selection of the instant claimed diluents from the broader genus of diluents taught by Puritch would have been an obvious choice for a skilled formulator based on the melting point data presented in Example 1 of Applicant's own specification, which merely confirms what would have been expected.
Regarding instant claims 32-35, The specific alkoxylated phosphate ester sub-genera are explicitly taught by Klug (¶[0068], [0072]) and Hess (claim 5). Klug teaches linear C12-C16 alkyl phosphate esters by general disclosure of C12-C22 alcohols (¶[0014]), which would encompass C12-C16 linear alkyl chains, and specifically linear C16-C18 alkyl phosphate esters (Examples 1-11 (ceteareth-25, ceteareth-11, ceteareth-50); ¶[0034]). Klug also teaches C12-C22 fatty alcohol ethoxylates generally (¶[0014]), however, does not explicitly teach branched C13 alkyl phosphate esters.
Hess teaches alkoxylated branched C13 (isotridecyl) alkyl phosphate esters extensively. The working examples (Adjuvants I-V) are all isotridecyl alcohol polyglycol ether phosphates with 5, 6, or 10 EO units (¶[0053]-[0055], Table 1, Table 2). Thus, claims 32-35 merely recite specific surfactant subclasses already taught by Klug and Hess.
Regarding instant claims 36-40, herbicidal compositions taught by Puritch include glyphosate (page 18, Example II). Puritch teaches concentrated formulations (40-80% fatty acid and 20-60% surfactant; claim 13) and ready-to-use compositions (claims 17, 18). A method of applying the composition to a target without prior dilution by the ready-to-use formulation embodied in claim 1, which, “may be applied directly to the unwanted weeds and grasses” (page 15, lines 5-7). This directly teaches application without further dilution.
In the Summary of the Invention on page 3, Puritch recites, “In one embodiment, the herbicidal composition comprises a ready-to-use microemulsion having the fatty acid active ingredient in combination with water and one or more surfactants, preferably in the form of quaternary ammonium salts.”. Puritch also recites, “The present herbicidal compositions may be prepared through a variety of formulation and mixing techniques well known to those having ordinary skill in the art. One preferred technique for formulating the herbicidal microemulsion involves charging a stainless steel or high density polyethylene tank, equipped with a paddle strirrer, with the batch quantity of water at a temperature range of between 15-30°C, and commencing agitation under low to medium shear conditions. The batch quantity of the surfactant component [which many include quaternary ammonium salts, wherein ammonium sulfate is a type of ammonium salt formed from sulfuric acid] followed by the anti-foaming agent... This process yields a storage-stable, ready-to-use, herbicidal microemulsion.” (page 13, line 19- page 14, line 3). This describes an agricultural tank mixer, which is also a common and standard practice in the art involving combining separate ingredients or formulations in a tank, and thus it would be obvious to one of skill in the art, based on the teachings of Puritch to tank mix the storage-stable concentrated mixture composition, including an ammonium salt encompassing ammonium sulfate. Ammonium sulfate is a common, art-recognized tank-mix adjuvant, and its use would have been obvious. Hence, the additional limitations of instant claims 36-40 are directly taught by or made obvious by Puritch.
In addition to Puritch, Hess teaches compositions comprising pesticides, including herbicides, insecticides, and fungicides (¶[0026]), listing numerous herbicides including acetochlor, clethodim, glufosinate, glyphosate, and imidazolinone as imazapic, imazapyr, imazaquin, imazethapyr, and imazethapyr-ammonium. (¶[0027]). Hess does not use the term "tank-mix”, but discusses preparing test formulations by mixing commercially available pesticide formulations with water and adding adjuvants (¶[0056]), which is analogous to tank-mixing, but the term itself is not used. In addition, adjuvants maybe used in preparing compositions of the invention including ammonium sulfate (¶[0047]). Application to plants in also disclosed (¶[0058]). Furthermore, tank mixing and application methods are conventional in herbicide formulations.
The combination of these known elements from the prior art, each performing its known function, yields nothing more than predictable results. The specific ranges and selections recited in the dependent claims are matters of routine optimization and do not render the claims non-obvious as a whole.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 22 December 2025, have been fully considered but are not persuasive.
The applicant argues that the Office failed to apply the proper legal standard for chemical obviousness by omitting a "lead compound analysis" as required by Takeda, Eisai, and Otsuka. The applicant contends the Office did not explain why a skilled artisan would have selected the ethoxylated phosphate ester of Puritch as a lead for modification, nor did it provide a reason to modify it with the teachings of Klug. However, the applicant’s reliance on the "lead compound" line of cases is misplaced and conflates the analysis for new chemical compounds with the analysis for new compositions of matter. The lead compound analysis is a specific framework applied in cases involving the obviousness of novel chemical compounds (e.g., new molecules, salts, esters) where structural similarity is a primary consideration (see Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007). The instant claims, however, are directed to an agrochemical composition, a mixture of known components (pelargonic acid, a diluent, and a surfactant) in specific ratios. They do not claim a new, structurally novel chemical entity.
The proper inquiry for a composition claim is whether the prior art would have suggested to one of ordinary skill in the art the combination of elements to achieve the claimed subject matter with a reasonable expectation of success. This is the flexible and expansive KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) standard, which the examiner correctly applied (see also In re Kerkhoven, 626 F.2d 846 (CCPA 1980), wherein the combination of known components for their known functions is prima facie obvious).
The prior art references teach each component of the claimed composition and their known function in agrochemical formulations. Puritch teaches herbicidal compositions of pelargonic acid with ethoxylated phosphate ester surfactants and diluents. Klug teaches specific alkoxylated phosphate ester surfactants and their advantageous properties for stability and performance. Hess teaches analogous compositions with specific alkoxylated phosphate esters and bases. The combination of these known elements from the prior art, each performing its known function, to achieve a predictable result (a stable emulsifiable concentrate) is classic obviousness. Therefore, the Office was not required to perform a "lead compound" analysis, and the rejection based on the combination of Puritch, Klug, and Hess was procedurally and legally proper.
Even under the applicant’s proposed framework, Puritch itself provides the logical starting point. Puritch explicitly discloses pelargonic acid herbicidal formulations and surfactants including ethoxylated phosphate esters. Thus, Puritch identifies the same surfactant class recited in the claims. Klug and Hess merely provide specific examples within the same known class. Selecting known species within a known genus for the same function is considered obvious (In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)).
The modification of a routine surfactant substitution is not an unpredictable structural change but rather selection of a known surfactant subclass from a known surfactant category used for the same purpose. Formulators routinely screen surfactants to optimize emulsion stability, wetting, and herbicidal delivery. Thus, the modification represents routine optimization, not inventive discovery.
The applicant argues that the voluminous data in the specification, spanning Examples 1-12, demonstrates superior and unexpected results that rebut any prima facie case of obviousness. The applicant specifically cites data relating to melting point depression, emulsion stability, tank-mix compatibility, wetting synergy, and bioefficacy. The examiner acknowledges the data presented, however, for objective evidence of non-obviousness to be persuasive, it must be shown to be a result of the claimed limitations as a whole and, critically, commensurate in scope with the claims. The experimental data in the specification evaluates specific formulations rather than the full scope of the claims. In addition, the improvements described by the applicant such as improved emulsion stability and enhanced wetting are precisely the expected functions of surfactants, particularly phosphate ester surfactants known for these properties. Thus, the results represent predictable benefits rather than unexpected properties. Furthermore, unexpected results must be shown relative to the closest prior art formulation. The specification does not adequately compare the claimed compositions with Puritch compositions containing similar phosphate ester surfactants.
The data presented is not commensurate in scope with the newly amended claims. The applicant points to numerous examples, but a review of the specification shows that the vast majority of working examples rely on a single alkoxylated phosphate ester surfactant (i.e., Rhodafac PA32, described in ¶[00105] as an alkoxylated branched C13 alkyl phosphate ester with 6 EO, not the claimed 12-40 EO). The specific compositions and results in the specification are tied to this, and a few other, discrete formulations.
In contrast, newly added claim 21 recites a vastly broader genus. It requires three components: pelargonic acid (27-90 wt%), a diluent (7-63 wt%), and an alkoxylated phosphate ester surfactant (2.5-40 wt%); a specific degree of alkoxylation from about 12 to about 40; a specific synthesis parameter formed using a starting molar equivalent ratio of phosphating agent to hydroxyl group of from about 1:3 to about 1:1; and a specific Markush group for the surfactant, chossen from alkoxylated branched C13 alkyl phosphate esters, alkoxylated linear C12-C16 alkyl phosphate esters, alkoxylated linear C16-C18 alkyl phosphate esters, alkoxylated castor oil phosphate esters, alkoxylated tallowamine phosphate esters, and combinations thereof.
The specification does not provide evidence that all, or even a representative number, of the compositions falling within this broad scope are even possessed by the inventor, let alone provide the alleged superior and unexpected properties. Frankly, a case could be made that the inventor does not reasonably convey possession of the full scope of the broad claimed genus of alkoxylated phosphate ester surfactants, including alkoxylated C13 alkyl phosphate esters, alkoxylated C12–C16 alkyl phosphate esters, alkoxylated C16–C18 alkyl phosphate esters, alkoxylated castor oil phosphate esters, and alkoxylated tallowamine phosphate esters via the limited examples of specific phosphate esters in the specification.
The specification primarily exemplifies compositions using a specific alkoxylated branched C13 alkyl phosphate ester (e.g., Rhodafac PA32 in Examples 2-5, corresponding to PE5, PE8, PE9, etc.). While castor oil and tallowamine derivatives are also exemplified, the working examples do not demonstrate a representative number of species for the full breadth of the claimed linear alkyl phosphate esters because there is insufficient data to show that the full range of alkoxylated linear C12-C16 or C16-C18 alkyl phosphate esters, at all points within the broad concentration ranges, and with all possible combinations of the listed diluents, would achieve the same results. The data provided is not commensurate in scope with the full genus now being claimed.
The unexpected results attributed to a narrow subset of embodiments cannot be extrapolated to the entire claimed genus (see In re Greenfield, 571 F.2d 1185 (CCPA 1978) and In re Burckel, 592 F. App'x 923 (Fed. Cir. 2014). Because the evidence is not commensurate in scope, it is insufficient to rebut the prima facie case of obviousness.
Furthermore, claim 21 recites a functional synthesis parameter, wherein the surfactant is "formed using a starting molar equivalent ratio of phosphating agent to hydroxyl group of from about 1:3 to about 1:1". The specification mentions this parameter in general terms (¶[0098]) and in the context of making the phosphate ester samples (¶[0120]), but it does not clearly link this process limitation to each specific species in the Markush group. For example, it is not clear which of the exemplified surfactants in the table in ¶[0120] were made with a starting ratio that falls within the claimed range. The mere recitation of a method of making, without a clear structural or compositional characteristic that results from that method, which could be argued does not provide adequate written description support for the full genus to show possession of every surfactant encompassed by this process parameter (see In re Ruschig, 343 F.2d 965 (CCPA 1965)).
Claims 27-31 narrow the diluent to specific species such as heptanoic acid, hexanol, and combinations thereof. While these diluents are listed in the specification (e.g., ¶[0070], Example 1), their combination with the full scope of the other limitations in claim 21 (e.g., any alkoxylated phosphate ester surfactant meeting the process parameter, any degree of alkoxylation within 12-40, and any concentration within the broad ranges) arguably suffers from this same lack of support and demonstration of possession of a composition comprising any of the thousands of possible surfactants encompassed by claim 21 with heptanoic acid as the sole diluent.
Claims 32-35 narrow the alkoxylated phosphate ester to specific sub-genera, such as ethoxylated branched C13 alkyl phosphate esters (claim 33) and ethoxylated linear C12-C16 alkyl phosphate esters (claim 34). While the branched C13 type is exemplified, the specification could be argued to lack sufficient evidence to demonstrate possession of the entire sub-genus of ethoxylated linear C12-C16 alkyl phosphate esters. The linear esters are listed in the Markush group, but the examples do not provide a representative number of species within this sub-genus (e.g., varying chain lengths and EO numbers across the full 12-40 range; see Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341 (Fed. Cir. 2011)). Claims 36-40 incorporate the limitations of claim 21 and as such, they suffer from the same argued deficiencies identified above.
For claims that encompass a broad genus, the specification must provide a representative number of species or common structural features to demonstrate possession of the entire genus (see In re Alonso, 545 F.3d 1015 (Fed. Cir. 2008) and Ariad Pharmaceuticals v. Eli Lilly, 598 F.3d 1336 (Fed. Cir. 2010)).
In summary, the applicant’s arguments regarding lead compound analysis, lack of motivation, and unexpected results have been fully considered but are not persuasive. The combination of Puritch, Klug, and Hess renders the compositions of claim 21 obvious. Dependent claims 22-40 fall with claim 21 because they merely recite routine formulation parameters, particular surfactant species, optional additives, conventional pesticide combinations, conventional mixing in the art, and methods of applying the composition. All of these features are taught or suggested in the cited references.
Conclusion
No claims are allowed.
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 (87 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 REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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:/Awww.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’ s supervisor, Robert A. Wax can be reached at (571) 272-0623. 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:/Awww.uspto.gov/patents/apply/patent- center for more information about Patent Center and https:/Awww.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.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615